Ex Parte Schmieding et al

Patent Trial and Appeal BoardNov 13, 2012

10349099 (P.T.A.B. Nov. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/349,099 01/23/2003 Reinhold Schmieding A8130.0045/P045 9537 24998 7590 11/14/2012 DICKSTEIN SHAPIRO LLP 1825 EYE STREET NW Washington, DC 20006-5403 EXAMINER DOWE, KATHERINE MARIE ART UNIT PAPER NUMBER 3734 MAIL DATE DELIVERY MODE 11/14/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte REINHOLD SCHMIEDING and R.D. GRAFTON __________ Appeal 2011-005592 Application 10/349,099 Technology Center 3700 __________ Before ERIC GRIMES, FRANCISCO C. PRATS, and JACQUELINE WRIGHT BONILLA, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a method for repairing a torn meniscus, which is a cartilaginous structure in the knee (Spec. 1, ¶ 3). The Examiner has rejected the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Claims 2, 5, 6, 8, 9, and 12-17 are on appeal. Claim 15 is the only independent claim on appeal and is directed to a method of repairing a defect Appeal 2011-005592 Application 10/349,099 2 in a meniscus by using an insertion sheath and a device driver to drive a “tissue repair device in the form of a dart” into the torn meniscus. Claim 15 defines the tissue repair device as having, among other structural features, “a proximal end provided with a protrusion having a truncated conical shape for matingly engaging the device driver.” The full text of claim 15 is reproduced in the Claims Appendix of the Appeal Brief (pages 17-18). The Examiner has rejected all of the claims on appeal under 35 U.S.C. § 103: claims 2, 5, and 15-17 based on Bays 1 and Grafton 2 (Answer 3); claims 6, 8, 9, and 12 based on Bays, Grafton, and Neufeld 3 (Answer 6); and claims 13 and 14 based on Bays, Grafton, Neufeld and Whitman 4 (Answer 8). The Examiner finds that Bays discloses a method meeting all of the limitations of claim 15 except that Bays‟ tissue repair device does not include a “groove pattern on one lateral side of the elongated body [that] is longitudinally offset from the pattern on the opposite side of the elongate body” (Answer 5). The Examiner finds that Grafton discloses this limitation (id.), and concludes that it would have been obvious to modify Bays‟ tissue repair device to include such a groove pattern to improve gripping function (id. at 5-6). With regard to the limitation of claim 15 requiring use of a tissue repair device having “a proximal end provided with a protrusion having a truncated conical shape for matingly engaging the device driver,” the 1 Bays et al., US 4,884,572, issued Dec. 5, 1989. 2 Grafton et al., US 6,056,778, issued May 2, 2000. 3 Neufeld, US 3,892,232, issued July 1, 1975. 4 Whitman, US 2002/0052623 A1, published May 2, 2002. Appeal 2011-005592 Application 10/349,099 3 Examiner cites element 15 shown in Bays‟ Figures 2 and 3 (id. at 4). The Examiner reasons that the term “conical” is not limited to a circular base, but rather encompasses a round or oval base (see for example Cambridge online dictionary). Thus a “truncated conical shape” may have a large, flat oval base tapering towards a second flat face of smaller size, since the cone is truncated prior to forming a point. As seen in Figures 3 and 4, the “cross-bar grip portion” (15) has a rounded, oval base which becomes narrower towards a truncated top, and thus may be considered a “truncated conical shape.” (Id. at 9.) Appellants argue that the cited references do not support a prima facie case of obviousness for several reasons; among them, that Bays does not in fact disclose a tissue repair device having “a proximal end provided with a protrusion having a truncated conical shape for matingly engaging the device driver” (Appeal Br. 7-8; Reply Br. 3-4). Appellants point out that “Bays itself describes the cross-bar grip portion 15 of Bays as . . . a generally rectangular parallelepiped with rounded corners” (Reply Br. 4), while “describ[ing] another structural element as having a conical shape (a „frusto-conical‟ shape) when it describes its barb members” (id.). We agree with Appellants that the Examiner has not persuasively shown that a method meeting all of the limitations of claim 15 would have been obvious based on Bays and Grafton. Claim 15 requires use of a tissue repair device having “a proximal end provided with a protrusion having a truncated conical shape” while Bays discloses a tissue repair device having a proximal end shaped as “a generally rectangular parallelepiped with rounded Appeal 2011-005592 Application 10/349,099 4 corners,” not “frusto-conical” like its barb members (Bays, col. 4, ll. 20-23, 32). Although the Examiner argues that a cone can have an oval base, she has not provided persuasive evidence or reasoning to support concluding that the broadest reasonable interpretation of “a truncated conical shape,” as claimed, encompasses “a generally rectangular parallelepiped with rounded corners,” as disclosed by Bays. Nor has the Examiner provided any persuasive reason to conclude that it would have been obvious to modify the cross-bar grip portion of Bays‟ tissue repair device to have a truncated conical shape. Bays discloses that the cross-bar grip portion of its tissue repair device is designed to interact with a slot in Bays‟ applicator in order to retain the tissue repair device in the applicator and restrain it against axial movement and twisting or rotation (see Bays, col. 5, ll. 3-15). The Examiner has not provided persuasive evidence or reasoning to show that modifying Bays‟ cross-bar grip portion 15 to have a truncated conical shape would enhance or even maintain its function. SUMMARY We reverse all of the rejections on appeal. REVERSED alw