Ex Parte Sengun

Patent Trial and Appeal Board

Jan 10, 2019

14924754 (P.T.A.B. Jan. 10, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/924,754 10/28/2015
27777 7590 01/14/2019
JOSEPH F. SHIRTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
FIRST NAMED INVENTOR
Mehmet Ziya Sengun
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.
MIT5192USDIV1 8655
EXAMINER
JAMIALAHMADI, MAJID
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
01/14/2019 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):
jnjuspatent@corus.jnj.com
lhowd@its.jnj.com
pairjnj@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MEHMET ZIY A SENGUN 1
Appeal2017-011242
Application 14/924, 7 54
Technology Center 3700
Before ULRIKE W. JENKS, RYAN H. FLAX, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims to an anchor inserter for inserting an anchor into a hole in body
tissue. The Examiner's rejections of claims 1-10 under 35 U.S.C. §§ 102
and 103(a) are appealed. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 The Real Party in Interest is identified as "Medos International Sarl which
is a subsidiary of Johnson & Johnson." Br. 2. We herein refer to the
Specification of Oct. 28, 2015 ("Spec."); Final Office Action of Sept. 6,
2016 ("Final Action"); Appeal Brief of Feb. 13, 2017 ("Br."); and
Examiner's Answer of May 19, 2017 ("Answer"); no Reply Brief was
submitted.
Appeal2017-011242
Application 14/924, 7 54
STATEMENT OF THE CASE
The Specification states "[t]his application relates to anchor inserters
and more particularly to inserters adapted to accommodate insertion of a
suture or other anchor off axis." Spec. ,r 1. Figure 2 of the Specification
illustrates a system of anchor and anchor inserter within the scope of the
invention; Figure 2 ( annotated with red arrow-boxes to identify claim
elements as described in the Specification) is reproduced below:
FIG.2
22
28
36 \..30
~~---+~bfli~li~h>:t{,,fl<'•:it J
The Specification describes Figure 2 as follows:
FIG. 2 [shows] the suture anchor inserter 12 comprises an
elongated shaft 30 having a proximal handle 32. An insertion
tip 34 at a distal end 3 6 of the shaft comprises an elongated
driving tip 38 having an external hexagonal shape adapted to
mate with the proximal portion 24 of the suture anchor
cannulation 22. An inserter axis 39 extends through the shaft 30
and insertion tip 34. The driving tip 38 is affixed at a proximal
end 40 to the shaft distal end 3 6 and extends out to a distal end
42. A collar 44 also attaches to the shaft distal end 36 at its
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Appeal2017-011242
Application 14/924, 7 54
proximal end 46 and coaxially receives the driving tip 38. The
collar 44 extends distally from the shaft distal end 36 about half
of the length of the driving tip 38 end terminates in a free distal
end 48. An annular gap 50 is provided between the collar 44 and
the driving tip 38. A tool cannulation 52 extends through the
driving tip 38, shaft 30 and handle 32. In preparation for use, the
anchor 10 is inserted onto the insertion tip 34 with the driving tip
3 8 inserted and mated into the cannulation proximal portion 24
of the suture anchor 10, and with the suture 28 extending
proximally from the suture bridge 26 through suture anchor
cannulation 22, and the tool cannulation 52. The collar distal
end 48 abuts the suture anchor proximal end 18.
Spec. ,r 17 ( emphasis added to highlight claimed elements). Of particular
relevance, Figure 2 illustrates how an anchor inserter device includes a
driving tip extending from a shaft and terminating in an anchor engaging
surface and also includes an abutment member also extending from the shaft
and having an abutment surface adjacent the driving tip, as set forth in the
claim below.
Independent claim 1, reproduced below, is representative:
1. An anchor inserter for inserting an anchor into a
hole in body tissue, the anchor inserter comprising an elongated
shaft having a first axis and a distal end; and
an insertion tip, the insertion tip comprising:
a driving tip extending distally from the distal end
of the shaft to terminate in an anchor engaging interface
an abutment member extending distally from the
shaft and having a distally facing abutment surface
adjacent the driving tip whereby to abut an anchor and
allow an axial force to be transmitted thereto; and
a resiliency in the driving tip which allows bending
away from the first axis at a location distal of the abutment
member.
Br. 6 (Claims Appendix).
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Appeal2017-011242
Application 14/924, 7 54
The following rejections are on appeal:
Claims 1, 2, 5, and 8 stand rejected under 35 U.S.C. § I02(e) as
anticipated by Sengun. 2 Final Action 2.
Claims 1--4 and 8-10 stand rejected under 35 U.S.C. § I02(b) as
anticipated by Justis. 3 Id. at 3.
Claims 6 and 7 stand rejected under 35 U.S.C. § I03(a) over Sengun
and St. Pierre. 4 Id. at 6.
DISCUSSION
"[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting aprimafacie case ofunpatentability.
[Only once] that burden is met, [does] the burden of coming forward with
evidence or argument shift[] to the applicant." In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992).
"Anticipation requires that all of the claim elements and their
limitations are shown in a single prior art reference." In re Skvorecz, 580
F.3d 1262, 1266 (Fed. Cir. 2009). "The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007). However, "obviousness requires a suggestion of all limitations
in a claim." CFMT, Inc. v. Yieldup Int'! Corp., 349 F.3d 1333, 1342 (Fed.
Cir. 2003) (citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)).
2 US 2013/0079817 Al (published Mar. 28, 2013) ("Sengun").
3 US 2010/0100137 Al (published Apr. 22, 2010) ("Justis").
4 US 7,063,717 B2 (issued June 20, 2006) ("St. Pierre").
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Appeal2017-011242
Application 14/924, 7 54
The Examiner determined that each of Sengun and Justis anticipates
claim 1. Regarding Sengun, the Examiner pointed to its Figures 3 and 4 as
illustrating a device anticipating claim 1. Final Action 2-3 ( citing Sengun
,r 38). Sengun's Figures 3 and 4 are reproduced below:
FIG. 3 FIG. 4
40"'
~60
Sengun's Figures 3 and 4 show an anchor 60 and an inserter 40 therefore.
Figure 4 shows these two components combined, for example, as they would
be when implanting the anchor.
In the Figures 3 and 4 above, the Examiner points to element 42 as
being the claimed elongated shaft, points to element 44 and element 48 as
being the claimed driving tip, and points to element 50 as being the
abutment member having a distally facing abutment surface whereby to abut
an anchor ( element 60). Final Action 2-3. As for the identified abutment
member ( element 50), the Examiner states "[ t ]he abutment member of
Sengun is fully capable in abutting an anchor and allowing an axial force to
be transmitted thereto." Id. at 3 ( emphasis omitted).
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Appeal2017-011242
Application 14/924, 7 54
Appellant argues the Examiner's determination that Sengun's element
50 is the claimed abutment member limitation is incorrect. Br. 3. We agree.
Sengun's element 50 is not shown as abutting, nor could it abut, Sengun's
anchor element 60. It is apparent that there is an intervening shoulder 46 in
the Sengun device that prevents this claimed arrangement. For at least this
reason, we reverse the anticipation rejection over Sengun.
Regarding Justis, the Examiner points to its Figures 8A-8C as
illustrating a device anticipating claim 1. Final Action 3--4 ( citing Justis
,r 57). The Examiner annotated Justis's Figure 8C to show how the claim
elements were embodied therein. Id. at 4. We reproduce this annotated
version of Justis's Figure 8C below (left), along with Justis's Figure 2
(right), which better shows individual components of Figures 8A-8C:
l!1g. 2
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Appeal2017-011242
Application 14/924, 7 54
Annotated Figure 8C (above-left) shows a portion of an anchor assembly,
similar to the exploded-view of components of an anchor assembly shown in
Figure 2 (above-right). According to Justis, both Figures 8C and 2 show an
anchor member 20 and associated receiver 50 that includes components for
receiving a connecting element, e.g., rods, plates, wires, etc.; the connecting
element connects one anchor to another, e.g., along a spinal column. Justis
,r,r 1-57. The inside of the receiver 50 is configured to receive a ferrule 70,
which is configured to receive a tether 75, which extends through the ferrule
70 and the receiver 50 bottom and into the anchor 20, thereby coupling the
anchor 20 and the receiver 50. Id. Justis discloses that between the anchor
member 20 and the receiver 50 is a flexible member 40. Id. Adding to the
components shown in Figure 2 above, annotated Figure 8C shows an
engaging member 90 (labeled shaft, above), screwed into the receiver 50 and
bearing against a connecting element 101 (the shaded circle, e.g., a rod),
which bears against a crown, which bears against the ferrule 70, which
ultimately connects the anchor 20 to the receiver 50 and to the connecting
member 101 and, thereby, to other, not-shown anchors and receivers. Id.
Referring to the above-reproduced annotated version of Justis Figure
8C, the Examiner points to the tether 7 5 element as being the claimed
driving tip, points to the ferrule 70 element as being the claimed abutment
member, and points to the engaging member 90 element as being the
claimed shaft. Final Action 3--4.
Appellant argues the Examiner's determination that the Justis
engaging member 90 is the claimed shaft limitation is incorrect. Br. 4.
Appellant also argues that the Examiner's determination that the Justis tether
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Appeal2017-011242
Application 14/924, 7 54
7 5 element is the claimed driving tip limitation is incorrect. Id. We agree
with these arguments. The engaging member 90 of Justis is a type of nut ( or
a type of flat, fastening screw or bolt), as noted by Appellant, and not a shaft
and certainly not a shaft having a driving tip extending therefrom. What the
Examiner calls a driving tip in Justis is a tether, that is, a fastener between
Justis's anchor 20 and receiver 50, which does not extend from the engaging
member 90. This tether is seated within a ferrule and is not directly
connected with any shaft, much less the engaging member 90 the Examiner
calls a shaft. Moreover, Justis also does not disclose "an abutment member
extending distally from the shaft and having a distally facing abutment
surface adjacent the driving tip whereby to abut an anchor and allow an axial
force to be transmitted thereto," as claimed. What the Examiner points to as
being such an abutment member is a portion of Justis's receiver and the
ferrule held therein, neither of which abuts Justis's anchor 20. Both the
receiver and ferrule are separated from anchor 20 by a flexible element 40,
which element does not extend from any shaft (as is required by the claim).
For these reasons, we reverse the anticipation rejection over Justis.
The obviousness rejection over Sengun and St. Pierre is in error for
the same reasons the anticipation rejection over Sengun is in error, we,
therefore, also reverse the Examiner's rejection for obviousness.
SUMMARY
The anticipation and obviousness rejections are each reversed.
REVERSED
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