Ex Parte Ruff et alDownload PDFPatent Trials and Appeals BoardSep 27, 201810908539 - (D) (P.T.A.B. Sep. 27, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 10/908,539 05/16/2005 135715 7590 EthiconLLC c/o Frost Brown Todd LLC 3300 Great American Tower 301 East Fourth Street Cincinnati, OH 45202 10/01/2018 FIRST NAMED INVENTOR Gregory L. Ruff UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. ETH5676USNP.0651903 5539 EXAMINER ANDERSON, GREGORY A ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 10/01/2018 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): patents@fbtlaw.com lgroves@fbtlaw.com jdewar@fbtlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GREGORY L. RUFF, JEFFREY C. LEUNG, ANDREW KAPLAN, MATTHEW A. MEGARO, and STANTON D. BATCHELOR Appeal 2016-002536 Application 10/908,539 Technology Center 3700 Before WILLIAM A. CAPP, LEE L. STEPINA, and PAUL J. KORNICZKY, Administrative Patent Judges. KORNICZKY, Administrative Patent Judge. DECISION ON APPEAL Appeal2016-002536 Application 10/908,539 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellants Gregory L. Ruff et al. 1 appeal from the Examiner's decision, as set forth in the Final Office Action dated November 209, 2014 ("Final Act."), rejecting claims 16, 17, 115-133, 135-142, and 144. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. THE CLAIMED SUBJECT MATTER The claims are directed to suture devices. Claims 16, 13 5, 141, and 142 are the independent claims on appeal. Claim 16, reproduced below with disputed limitations italicized for emphasis, is illustrative of the claimed subject matter: 16. A barbed suture comprising: an elongated body with a cross section, where the cross section has a transverse length; one pointed end; a proximal end, a plurality of staggered cuts in the elongated body providing for a plurality of staggered barbs extending from the periphery of the body, the barbs yielding toward the suture body during movement of the suture through the tissue in the direction of movement of the pointed end and the barbs resisting movement of the suture through the tissue in a direction opposite the direction of movement of the pointed end by engagement of the barbs within the tissue; the proximal end having a loop through which the elongated body may pass to secure tissue as an anchor wherein said anchor does not include barbs on the loop, the anchor preventing movement of the suture in the direction of movement of the pointed end. Appellants identify Ethicon, Inc. as the real party in interest. Appeal Brief, dated April 20, 2015 ("Appeal Br."), at 3. 2 Appeal2016-002536 Application 10/908,539 REFERENCES In rejecting the claims on appeal, the Examiner relied upon the following prior art: Alcamo Wilk Fenton Leung us 3,123,077 us 5,123,913 us 5,964,765 US 2004/0060409 Al REJECTIONS The Examiner made the following rejections: Mar. 3, 1964 June 23, 1992 Oct. 12, 1999 Apr. 1, 2004 1. Claims 16, 17, 115-133, 135-141, and 144 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over Wilk, Alcamo, and Fenton. 2. Claim 142 stands rejected under 35 U.S.C. § I03(a) as being unpatentable over Wilk, Leung, and Fenton. Appellants seek our review of these rejections. DISCUSSION Rejection 1: Claims 16, 17, 115-133, 135-141, and 144 as Unpatentable Over Wilk, Alcamo, and Fenton Appellants argue claims 16, 17, 115-133, 135-141, and 144 as a group. Appeal Br. 5-10. We select independent claim 16 as the representative claim, and claims 17, 115-133, 135-141, and 144 stand or fall with claim 16. 37 C.F.R. § 4I.37(c)(l)(iv). The Examiner finds that Wilk and Alcamo disclose all of the limitations of claim 16 except for an anchor that does not have barbs on the loop. Final Act. 2--4. For this missing limitation, that Examiner finds that Fenton discloses "a suture having a loop for an anchor in at least Fig. 13 wherein the loop has serrations 32 but no barbs, the serrations designed to 3 Appeal2016-002536 Application 10/908,539 provide a frictional retention of the suture." Id. at 4 (citing Fenton 3:9-15). The Examiner determines that it would have been obvious "to modify the device of Wilk et al. in view of Alcamo by replacing the loop and locking mechanism of Wilk et al. with the loop of Fenton et al. in order to create a permanent bond between anchor and suture as taught by Fenton." Id. (citing Fenton 3:4--8). Appellants assert that the Examiner's rejection is erroneous because "it would be improper to modify the Wilk device to include the loop of Fenton, as it would not achieve Wilk's purpose and intent." Appeal Br. 6. According to Appellants, Wilk "requires a locking configuration, which includes an internal aperture with the main loop of Wilk," and "Wilk requires and intends to achieve a permanent locking, whereby after threading the suture through the Wilk loop, it cannot be pulled back in the opposite direction." Id. Appellants contend that Fenton's "serrations allow for increased friction, but that further welding is used." Id. at 7. Appellants contend that the Examiner's proposed combination uses Fenton's serrations to achieve a temporary "friction" connection between the suture and the loop, without welding the suture and loop together to achieve a permanent connection. See id. at 7-8. Thus, Appellants assert that (1) the Examiner's proposed combination does not achieve "Wilk's intended purpose," and (2) there is no factual basis or reasoning that "the substitution of elements would work" and that Fenton's serrations would "inherently" work for Wilk's purpose. Id. at 9. Appellants misunderstand the rejection. As the Examiner correctly explains, the "Fenton device provides a suture having elongated body and an alternative permanent fixation structure comprising a serrated loop that holds 4 Appeal2016-002536 Application 10/908,539 the suture temporarily via friction until the loop and elongated body are [permanently] welded together." Answer, dated November 6, 2015 ("Ans."), at 2; see also Final Act. 8 (citing Fenton 3:9-14). The Examiner further explains that "Fenton is relied upon for an alternative structure for permanently fixing the elongated member and loop (i.e., the elongated body and serrated loop that are welded together)" and "Wilks is modified in view of Fenton to replace the loop of Wilks with the loops of Fenton, [which] has no barbs and allows for permanent locking via welding." Id. at 3. Contrary to Appellants' argument that the Examiner's proposed combination does not achieve Wilk's "intended purpose" and would not work, we agree with the Examiner that because both Wilk and Fenton use a permanent connection between the suture and loop, the proposed combination would also result in a permanent connection. Because Appellants' argument does not address the rejection as articulated by the Examiner, it does not identify error. We sustain the Examiner's rejection of claim 16. Because Appellants do not allege any other patentable distinctions for claims 17, 115-133, 135- 141, and 144, we likewise sustain the Examiner's rejections of these claims. Rejection 2: Claims 142 as Unpatentable Over Wilk, Leung, and Fenton Appellants assert that the Examiner's rejection of claim 142 is erroneous for the identical reasons discussed above with respect to claim 16. For the reasons discussed above with respect to claim 16, Appellants' arguments do not address the rejection as articulated by the Examiner and, thus, do not identify Examiner error. The rejection of claim 142 is sustained. 5 Appeal2016-002536 Application 10/908,539 DECISION For the above reasons, the Examiner's rejections of claims 16, 17, 115-133, 135-142, and 144 are AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 6 Copy with citationCopy as parenthetical citation