Ex Parte Schwartz et al

Patent Trial and Appeal Board

Jan 29, 2013

10758372 (P.T.A.B. Jan. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte HERBERT E. SCHWARTZ, THOMAS C. MAY,
STUART FROMM, ROBERT-JAN ENZERINK, ERIC HUBBARD,
JOHN MARGETTS, KEITH DENLINGER, and DAVID COX
__________

Appeal 2010-012391
Application 10/758,372
Technology Center 3700
__________

Before TONI R. SCHEINER, DEMETRA J. MILLS, and
ERICA A. FRANKLIN, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2010-0012391
Application 10/758,372

2
STATEMENT OF CASE
1. A device for repairing a defect in a soft tissue, comprising:
a first anchor for engaging a first surface of the soft tissue on a first
side of the defect, the first anchor having a locking mechanism and a
cannula defined therein, the cannula including a first lumen, the first anchor
being shaped to seat below the first surface of the soft tissue;
a second anchor for engaging against a second side of the soft tissue
on a second side of the defect; and
a suture adjustably connecting the second anchor to the first anchor,
whereby tension on the suture pulls the second anchor toward the first
anchor through a continuous range of distances, thereby pulling the first and
second sides of the defect together to close the defect, and the locking
mechanism locks the suture in place at any point along the suture,
wherein the second anchor has a hole and the suture connects the first
anchor to the second anchor by passing through the first lumen of the
cannula of the first anchor while traveling in a first direction, by passing
through the hole of the second anchor, and by returning through the first
lumen of the cannula of the first anchor while traveling in a second and
opposite direction.

2. The device of claim 1 wherein the soft tissue is a meniscus.

3. The device of claim 2 whereby proper seating of the device closes
the defect without interfering with joint articulation.

4. The device of claim 2 wherein the locking mechanism is
configured to grip and hold the suture.

6. A device for repairing a defect in a soft tissue, comprising:
a first anchor for engaging a first surface of the soft tissue on a first
side of the defect, the first anchor having a locking mechanism and a
cannula defined therein, the cannula including a first lumen, the first anchor
being shaped to seat below the first surface of the soft tissue;
a second anchor for engaging against a second surface of the soft
tissue on a second side of the defect; and
a suture adjustably connecting the second anchor to the first anchor;
wherein the second anchor has a hole therethrough and the suture
connects the first anchor to the second anchor by passing through the first
Appeal 2010-012391
Application 10/758,372

3
lumen of the cannula of the first anchor while traveling in a first direction,
by passing through the hole of the second anchor, and by returning through
the first lumen of the cannula of the first anchor while traveling in a second
and opposite direction and wherein tension on the suture pulls the second
anchor toward the first anchor, thereby pulling the first and second sides of
the defect together to close the defect, and the locking mechanism locks the
suture in place.

10. A device for repairing a defect in a soft tissue, the device
comprising:
a first anchor for engaging a first surface of the soft tissue on a first
side of the defect, the first anchor having a locking mechanism and a single
lumen defined therethough, the first anchor having a frustoconical end
shaped to bury into and seat below the first surface of the soft tissue;
a second anchor for engaging a second surface of the soft tissue on a
second side of the defect, the second anchor including at least one hole; and
a suture coupled to the first anchor and the second anchor, the suture
passing through the lumen of the first anchor, passing through the at least
one hole of the second anchor, and returning through the lumen of the first
anchor, wherein tension on the suture pulls the second anchor toward the
first anchor such that the first and second sides of the defect are pulled
together and the locking mechanism locks the suture in place.

Cited References

Wilk US 5,391,173 Feb. 21, 1995.
Bonutti et al. US 6,010,525 Jan. 4, 2000

Grounds of Rejection
Claims 1-4 and 6-9 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Bonutti et al.
Claims 10-17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bonutti et al. in view of Wilk.

Appeal 2010-012391
Application 10/758,372

4
FINDINGS OF FACT
The Examiner‟s findings of fact are set forth in the Answer at pages 3-
8. The following facts are highlighted.
1. Figure 26 of Bonutti is reproduced below.

Figure 26 of Bonutti shows base 542 with flange 548 with flat,
circular bottom surface 564. (Col. 27, l. 6-16.)
Appeal 2010-012391
Application 10/758,372

5
2. Figures 2C and 2D of Wilk are reproduced below.

Figures 2C and 2D of Wilk show laparoscopic suturing device with
frustoconical locking device 8. While the locking device is
beneath or below the outer tissue it is on the outer side of INC
(incision) or defect.

Discussion- Anticipation and Obviousness

ISSUE
The Examiner concludes that
Bonutti et al. disclose, at least in figures 26-28 and col. 26,
Appeal 2010-012391
Application 10/758,372

6
line 63 to col. 28, line 23; a device including a first anchor
(540) having a locking mechanism (542) configured to grip and
hold or lock a suture at any point along the suture; and a
cannula (544) including a first lumen (578), the first anchor
being shaped to seat below the first surface of soft tissue (54) or
is capable of seating below the first surface of a meniscus,
whereby proper seating of the device closes a defect without
interfering with joint articulation; a second anchor (602) having
a hole, and a suture (52), where the suture connects and first
and second anchors by passing through the lumen of the
cannula of the first anchor while traveling in a first direction, by
passing through the hole of the second anchor, and by returning
through the lumen of the cannula of the first anchor while
traveling in a second and opposite direction, where tension on
the suture pulls the second anchor toward the first anchor.

(Ans. 3.)
Appellants argue that “Bonutti fails to disclose each and every
element of the claimed invention. Indeed, Bonutti fails to disclose a first
anchor that is, amongst other things, „shaped to seat below the first surface
of the soft tissue.‟” (App. Br. 6.)
The issue is: Has the Examiner provided evidence to support the
conclusion that the cited prior art anticipates or renders obvious the subject
matter of the pending claims?

PRINCIPLES OF LAW
In order for a prior art reference to serve as an anticipatory reference,
it must disclose every limitation of the claimed invention, either explicitly or
inherently. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). To
anticipate, every element and limitation of the claimed invention must be
Appeal 2010-012391
Application 10/758,372

7
found in a single prior art reference, arranged as in the claim. Karsten Mfg.
Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001).
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.
Moreover, “obviousness requires a suggestion of all limitations in a
claim.” CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir.
2003) (citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)).

ANALYSIS
We do not find that the Examiner has provided sufficient evidence to
support a prima facie case of anticipation. Appellants argue that
Bonutti clearly teaches a structure designed be positioned on
the largest possible surface area of the body tissue 54. Such a
structure is the very antithesis of an anchor "shaped to seat
below the first surface of the soft tissue." As Bonutti explains at
col. 1, lines 24-29, it is "desirable to be certain that the suture
applies a desired amount of force to the body tissue when the
suture is secured. The overall force transmitting capability of
the suture should be maximized without concentrating the force
at a small area on the body tissue" (emphasis added). To
accomplish that objective, Bonutti discloses that the suture
Appeal 2010-012391
Application 10/758,372

8
retainer 540 has a "bottom side surface 564" that is "pressed
against an upper side surface 98 of the body tissue 54 in the
manner illustrated in FIG. 26." See Bonutti, at col. 28, lines 21-
23. Bonutti then describes that "[t]he flat circular bottom side
surface 564 of the flange 548 transmits force from the suture 52
to a relativelv large area on the surface 98 of the bodv tissue
54." Id. at col. 28, lines 24-27.

(App. Br. 7.)
We agree with Appellants that the Examiner has failed to provide
evidence in Bonutti of “a first anchor for engaging a first surface of the soft
tissue on a first side of the defect, the first anchor having a locking
mechanism and a cannula defined therein, the cannula including a first
lumen, the first anchor being shaped to seat below the first surface of the
soft tissue,” as claimed. [Emphasis added.] The Examiner has failed to
provide evidence that Bonutti‟s anchor is of a shape that is capable of
seating below the surface of the soft tissue, as claimed. (Ans. 5.)
With respect to the obviousness rejection of claims 10-17 over Bonutti
and Wilk, the Examiner admits that “Bonutti et al. do[es] not disclose that
the first anchor has a frustoconical end shaped to bury into and seat below
the first surface of the soft tissue.” (Ans. 4, 7; also, compare anticipation
rejection.) However, the Examiner finds that Wilk discloses a suture anchor
with an external frustoconical shape (id. at 4). The Examiner concludes that
it would have been obvious to modify Bunutti‟s first anchor “so that it has a
frustoconical shape or end-shape” as taught by Wilk, which “would provide
a tapering surface for engagement of the anchor . . . and allow sliding or
pushing of the anchor along a suture and towards (or into) soft tissue” (id.).
Appellants argue that
Appeal 2010-012391
Application 10/758,372

9
the rejection does not propose to modify the tissue contacting
end of Bonutti's suture retainer 540 to have a frustoconical end.
Instead, the rejection proposes to modify the opposite non-
tissue contacting end of the suture retainer 540 to have the
frustoconical end. Appellants submit that such a modification
does not arrive at the claimed invention because the resulting
frustoconical end would not be "shaped to bury into and seat
below the first surface of the soft tissue" as required by the
claims.

(App. Br. 14.)
We agree with Appellants‟ argument. Moreover, while the
frustoconical locking device 8 of Wilk is below the surface of the outermost
soft tissue AW (Fig. 2C), that is not the tissue with the defect. Claim10
requires that the first anchor for engaging a first surface of the soft tissue is
on a first side of the defect, the first anchor having a locking mechanism and
a cannula defined therein, the cannula including a first lumen, the first
anchor being shaped to seat below the first surface of the soft tissue. The
Examiner has not provided sufficient evidence to support a finding of
obviousness in the combination of references of the first anchor being
shaped to seat below the first surface of the soft tissue engaging a first
surface of the soft tissue on a first side of the defect, as claimed.

Appeal 2010-012391
Application 10/758,372

10
CONCLUSION OF LAW
The cited references do not support the Examiner‟s anticipation and
obviousness rejections. These rejections are reversed.

REVERSED

cdc