Ex Parte Shipp

Patent Trial and Appeal Board

May 24, 2017

12899781 (P.T.A.B. May. 24, 2017)

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.
12/899,781 10/07/2010 John I. Shipp H-US-01161DIV 6499
7590 05/24/2017
Tyco Healthcare Group, LP
d/b/a Coviden
555 Long Wharf Drive
New Haven, CT 06511
EXAMINER
NGUYEN, TUAN VAN
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
05/24/2017 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 JOHN I. SHIPP
Appeal 2015-005717
Application 12/899,781
Technology Center 3700
Before EDWARD A. BROWN, BRANDON J. WARNER, and
SEAN P. O’HANLON, Administrative Patent Judges.
O’HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John I. Shipp (Appellant)1 appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1—4, 6—12, 14, 16—25, and 27—32.2 We
have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is Covidien LP. App.
Br. 1.
2 Claims 5, 13, 15, and 26 are canceled. Id. at 25, 26, 28 (Claims App.).
Appeal 2015-005717
Application 12/899,781
SUMMARY OF THE INVENTION
Appellant’s “invention relates to surgical fasteners.” Spec. 13. Claim
1, reproduced below from page 24 (Claims Appendix) of the Appeal Brief,
is illustrative of the claimed subject matter:
1. An anchor for penetrating mesh and tissue and for fixing
the mesh to the tissue, the anchor comprising:
a threaded head section defines an outer periphery having
a helical thread formed thereon and a pair of notches formed
therein, wherein the pair of notches extend an entire length of
the head section in a direction parallel to a longitudinal axis of
the anchor, the anchor being configured to be independently
driven by a rotatable actuator engaging the pair of notches
formed in the head section; and
a distal non-cannulated tissue snaring section being
tapered and having a helical thread on at least a distal portion
thereof, wherein a distal tip of the helical thread includes a
tapering defining an angled tip configured to penetrate the
mesh.
REJECTIONS
Claims 1—4, 6, 12, 14, 16, 22—25, and 32 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Dahners (US 2004/0073218 Al,
pub. Apr. 15, 2004) and Henniges (US 2002/0004660 Al, pub. Jan. 10,
2002).3
3 Although claim 32 is not listed in the heading of the rejection in the Final
Action, the Examiner explains that it should have been included here. See
Ans. 3—7; Final Act. 10. We note that Appellant did not comment on the
omission in the Final Action or the correction in the Examiner’s Answer,
and we consider the omission of the claim number to be a harmless error.
We further note that although claim 14 is also not included in the rejection
heading, it is considered in the body of the rejection. See Final Act. 13.
2
Appeal 2015-005717
Application 12/899,781
Claims 7—11, 17—21, 25, and 27—31 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Dahners, Henniges, Ross (US
5,129,906, iss. July 14, 1992), and Jarrett (US 5,080,665, iss. Jan. 14,
1992).4
ANALYSIS
Rejection Based on Dahners and Henniges
Claim 1
The Examiner finds that Dahners discloses an anchor substantially as
recited in claim 1, including, inter alia, a threaded head section (head section
40),5 a distal tissue snaring section (first outer surface 25) that includes a
helical thread (first thread 31) that is tapered to define an angled tip, and a
mesh retention section intermediate the head and tissue snaring sections, but
does not disclose “the head section having notches formed therein and
extending from the distal end to the proximal end thereof.” Final Act. 10—
12. The Examiner finds that Henniges discloses a head portion including
notches that are sized to receive features of a driver, and reasons that it
would have been obvious to one of ordinary skill to include Henniges’s
notches in head 40 of Dahners’s fastener 10 “to reduce failure and improve
the gripping between the screw driver and the screw as taught by
[Henniges].” Id. at 12—13; see also id. at 7—8.
4 Although claim 31 is not listed in the heading of the rejection in the Final
Action, the Examiner explains that it should have been included here. See
Ans. 3, 7—8; Final Act. 14. We note that Appellant did not comment on the
omission in the Final Action or the correction in the Examiner’s Answer,
and we consider the omission of the claim number to be a harmless error.
5 Parentheticals refer to the terminology of the cited references.
3
Appeal 2015-005717
Application 12/899,781
Appellant traverses, first arguing that Dahners and Henniges are not
analogous art. App. Br. 7—10; see also Reply Br. 2—5. In support, Appellant
relies on the Declaration of Dr. B. Todd Heniford (the Heniford
Declaration). App. Br. 7—10.
A reference qualifies as prior art for a determination under § 103
when it is analogous to the claimed invention. In re Clay, 966 F.2d 656, 658
(Fed. Cir. 1992).
Two separate tests define the scope of analogous art:
(1) whether the art is from the same field of endeavor,
regardless of the problem addressed, and (2) if the reference is
not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem
with which the inventor is involved.
In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citing In re Deminski,
796 F.2d 436, 442 (Fed. Cir. 1986)). The field of endeavor is determined
“by reference to explanations of the invention’s subject matter in the patent
application, including the embodiments, function, and structure of the
claimed invention.” Id.', see also Deminski, 796 F.2d at 442 (finding that if a
prior art reference discloses essentially the same structure and function as
the invention, it is likely in the same field of endeavor). Regarding the
scope of analogous art:
The Supreme Court’s decision in KSR International Co. v.
Teleflex, Inc., 550 U.S. 398 (2007), directs us to construe the
scope of analogous art broadly, stating that ‘ familiar items may
have obvious uses beyond their primary purposes, and a person
of ordinary skill often will be able to fit the teachings of
multiple patents together like pieces of a puzzle.” Id. at 402
(emphasis added).
Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010).
4
Appeal 2015-005717
Application 12/899,781
Appellant’s Specification describes surgical fasteners for fastening
material to tissue, such a fastener having a head section, a mesh retention
section, and a threaded tissue-snaring section. Spec. Tflf 3, 70-73, Fig. 1.
Indeed, the preamble of claim 1 recites “[a]n anchor for penetrating mesh
and tissue and for fixing the mesh to the tissue.” App. Br. 24 (Claims
App’x). We, thus, define the field of endeavor as surgical fasteners for
fastening material to tissue.
Similarly, Dahners describes a surgical fastener for fastening material
(bone plate) to tissue (bone) (see, e.g., Dahners Tflf 27—30, Fig. 1), and
Henniges describes a surgical fastener for fastening material (bone plate) to
tissue (bone) (see, e.g., Henniges Tflf 57, 61—64, Fig. 6A). Therefore,
Dahners and Henniges are analogous art because both references are from
the same field of endeavor as Appellant’s claimed invention.6
Appellant next argues that the combination of Henniges with Dahners
is based on “impermissible hindsight” because Henniges includes notches in
the head portion of its fastener “due to the reduced sized of the head of the
screw so that it does not protrude above the plate,” and Dahners’s fastener
“could not have a reduced profile given the variety of insertion angles for
each hole.” App. Br. 11 (citing Henniges 165); see also Reply Br. 6—7.
Continuing, Appellant asserts that “the Examiner’s assertion that the
modification would lead to reduced failure and increased gripping” is
misplaced because “there is no indication that failure of the screw in
6 We note that the Heniford Declaration discusses the particular problem
with which Appellant is involved (namely, fastening mesh to soft tissue for
hernia repair), but does not address the field of endeavor.
5
Appeal 2015-005717
Application 12/899,781
Dahners was an issue or even a concern, which counsels against combining
the two references.” App. Br. 11—12.
We are not persuaded by Appellant’s arguments. Initially, we note
that Appellant’s characterization of the purpose of Henniges’s notches—to
reduce the head profile—is described in Henniges as a secondary reason.
See Henniges 1 65. The primary reason for the notches, as noted by the
Examiner, is to provide a contact surface for the driver so as to result in
greater compressive stresses within the head, thereby reducing the risk of
failure. Id. 1 63. Moreover, Appellant’s argument regarding the purpose of
Henniges’s notches does not address the Examiner’s findings or reasoning,
and therefore fails to apprise us of error.
Appellant next argues that Dahners does not disclose a thread that is
tapered to define an angled tip because “the end of the [Dahners] thread on
[Figure 1] appears to be behind the screw so it is not possible to see what is
causing the point at the bottom. From the figure, it appears to be a feature of
the shaft.” App. Br. 12—13. According to Appellant, because Dahners’s
thread is machined, “it is physically impossible for the tip of the Dahners
screw to meet the plain limitations of the claim.” Reply Br. 10. Continuing,
Appellant asserts that “the point of Dahners is not capable of penetrating
mesh” because it “will only indent the mesh.” App. Br. 14 (referencing the
Heniford Declaration). Appellant also cites In re Giannelli, 739 F.3d 1375
(Fed. Cir. 2014), as supporting the contention that “the Examiner has to
show that the point of the Dahners screw is made to, designed to, or
configured to penetrate mesh.” App. Br. 14—15.
6
Appeal 2015-005717
Application 12/899,781
The Examiner finds that Dahners’s disclosure that its thread 31 is used
to tap into bone material indicates that it is tapered and capable of
penetrating a mesh. Final Act. 7, 11 (quoting Dahners 143); see also Ans.
11-12.
We are not persuaded by Appellant’s arguments. Indeed, the
Heniford Declaration acknowledges that Dahners’s “screw[ is] capable of
penetrating mesh and tissue” (Heniford Dec. 7), belying Appellant’s
contentions to the contrary and that the Dahners tip will merely indent but
not penetrate a mesh. We also note that Dr. Heniford states that “the tips of
the bone screws in Dahners and [Henniges] would not work on certain
meshes” (id. at 12 (emphasis added)), appearing to indicate that the Dahners
tip would penetrate some meshes. We further note that Appellant does not
characterize the mesh recited in claim 1.
As noted by the Examiner (see, e.g., Final Act. 7, 11 (citing Dahners
143)), Dahners discloses that its body thread 31 is self-tapping and is
configured “to tap into bone material B.” Dahners 28, 43. The Examiner
further finds that, because it is configured to penetrate bone, Dahners’s tip is
also configured to penetrate mesh. Final Act. 7. Appellant does little more
than make conclusory statements that “the point of Dahners is not capable of
penetrating mesh” (App. Br. 14), and therefore fails to apprise us of any
error—we note that the Examiner finds that Dahners’s self-tapping thread 31
is configured to penetrate mesh, not the tip of elongate section 20. We
further note that Dahners’s head thread 51 is similarly described as self-
tapping and is illustrated as including a tapering defining an angled tip.
Dahners 130, Fig. 1. Accordingly, a preponderance of the evidence
7
Appeal 2015-005717
Application 12/899,781
supports the Examiner’s conclusion that the terminal tip of Dahners’s thread
31 is configured to penetrate mesh.
Finally, Appellant asserts Examiner error in finding certain claim
recitations as being intended use because “the claimed anchors are applied
laparoscopically in an applying tool” and “this language is not intended use,
but is functional language.” App. Br. 16—17.
We find Appellant’s argument regarding functional language versus
intended use to be unpersuasive. It is well established that claims directed to
an apparatus must be distinguished from the prior art in terms of structure
rather than function, and in order to satisfy the functional limitations in an
apparatus claim, the prior art apparatus must be capable of performing the
claimed function. See, e.g., In re Schreiber, 128 F.3d 1473, 1477—78 (Fed.
Cir. 1997). Appellant’s reliance on the fact that the Specification describes
the recited anchors being installed laparoscopically is also unavailing, as
“limitations are not to be read into the claims from the specification.” In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). We further note that, as
discussed above, the Examiner finds Henniges to describe its head notches
being sized to receive features of the driver for improved gripping between
the driver and the fastener. Final Act. 12—13. Thus, Appellant’s arguments
fail to apprise us of error.
Accordingly, for the foregoing reasons, we sustain the rejection of
claim 1 as being unpatentable over Dahners and Henniges.
Claim 2
Claim 2 depends from claim 1 and further requires:
8
Appeal 2015-005717
Application 12/899,781
a mesh retention section disposed between the distal non-
cannulated tissue snaring section and the threaded head section,
the mesh retention portion having a diameter less than a
diameter of a proximal-most thread of the distal non-cannulated
tissue snaring section, wherein the mesh retention section
inhibits longitudinal movement of a surgical mesh located
therewithin.
App. Br. 24 (Claims App’x).
Appellant argues that “section 25 of the screw in [Dahners] is not a
mesh retention section and cannot inhibit longitudinal movement of the
surgical mesh located therein.” App. Br. 18. Appellant asserts that “the
threaded head portion of the [Dahners] screw would engage the mesh,
thereby allowing the screw to penetrate fully through the mesh.” Id.
Appellant further asserts that because “the beginning of the thread 31 in
[Dahners] is not visible” in the drawing figures, “the Examiner has failed to
prove that [Dahners] space 25 is of a sufficient size to function as a mesh
retaining section.” Id.
We are not persuaded by Appellant’s arguments, which consist mainly
of unsupported, conclusory statements. See In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974); In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
Additionally, we note that the Examiner provides a copy of Dahners Figure
1, annotated to show a minimum amount of space between head section 40
and first thread 31. See Ans. 13. We further note that, as correctly observed
by the Examiner, claim 2 does not recite any thickness of the mesh. Id. at
12—13. Thus, Appellant has failed to apprise us of error.
Accordingly, for the foregoing reasons, we sustain the rejection of
claim 2 as being unpatentable over Dahners and Henniges.
9
Appeal 2015-005717
Application 12/899,781
Claim 3
Claim 3 depends from claim 1 and further requires that “the anchor is
configured to be independently driven by a rotatable actuator having a pair
of elongate drivers that are configured to extend through the pair of
notches.” App. Br. 24 (Claims App’x).
Appellant argues that “the Examiner must show that the notches in the
side of the head portion are configured to be driven by a pair of elongate
drivers that extend through the pair of notches. As noted in paragraph
1 [0069] of [Henniges], that is not the case here.” App. Br. 19—20; see also
Reply Br. 11.
We are not persuaded by Appellant’s arguments. As discussed above,
Henniges’s notches are sized to receive features of a driver for improved
gripping between the driver and the fastener. Appellant’s reliance on
Henniges paragraph 69 is of no avail, as that paragraph describes the driver
fingers as being “designed to fit within the notches 30 along the side of the
head portion 18 of the fastener 12.” The fact that the length and thickness of
the fingers are chosen so as not to interfere with the plate to which the
fastener is coupled further describes the fingers and notches as being
cooperatively configured to drive the fastener, as illustrated in Figure 10. To
the extent that Appellant argues that Henniges’s driver fingers do not extend
completely thorough (or beyond) the notches, the argument is not persuasive
because claim 3 contains no such requirement. See In re Self, 671 F.2d
1344, 1348 (CCPA 1982).
Appellant presents an additional argument in the Reply Brief—
namely, that “the Examiner complete[ly] ignores the protrusion 40 extending
into the [Henniges] notch to engage the driver for better friction.” Reply Br.
10
Appeal 2015-005717
Application 12/899,781
11. This argument is untimely. 37 C.F.R. § 41.41(b)(2). Nonetheless, we
address the argument here and find it to be unpersuasive because Henniges
discloses that protrusion 40 is optional and, if included, facilitates (but does
not solely provide) driver-fastener interaction. Henniges 168.
Accordingly, for the foregoing reasons, we sustain the rejection of
claim 3 as being unpatentable over Dahners and Henniges.
Claim 4
Claim 4 depends from claim 3 and further requires that “the helical
thread of the threaded head section causes the anchor to move axially upon a
rotation of the rotatable actuator and due to an engagement of the helical
thread of the threaded head section with an internal thread of an elongate
tube of an applier.” App. Br. 24—25 (Claims App’x).
The Examiner reasonably concludes that, because Dahners’s fastener
as modified by Henniges satisfies the claimed structural recitations, it is also
capable of performing the use as recited. Final Act. 13; see also Ans. 15.
Appellant argues that “[t]he screws in both Dahners and [Henniges]
are not used with an applier having an elongate tube” and “do not move
axially due to an engagement of the threaded head section with an internal
thread.” App. Br. 21.
We are not persuaded by Appellant’s arguments. As explained above,
claims directed to an apparatus must be distinguished from the prior art in
terms of structure rather than function. Appellant’s arguments do not
identify any structure recited in claim 4 that is alleged to be missing from the
combination of references, and, therefore, fail to apprise us of error.
11
Appeal 2015-005717
Application 12/899,781
Accordingly, for the foregoing reasons, we sustain the rejection of
claim 4 as being unpatentable over Dahners and Henniges.
Claim 12
Appellant addresses independent claim 12 in a separate heading,
expressly relying on arguments advanced with respect to claims 1 and 2.
App. Br. 22. For the same reasons as discussed above, we sustain the
rejection of claim 12 as being unpatentable over Dahners and Henniges.
Claim 22
Appellant addresses independent claim 12 in a separate heading,
expressly relying on arguments advanced with respect to claims 1 and 2.
App. Br. 23. For the same reasons as discussed above, we sustain the
rejection of claim 22 as being unpatentable over Dahners and Henniges.
Claims 6, 14, 16, 23—25, and 32
Appellant does not separately address the rejection of dependent
claims 6, 14, 16, and 23—25, nor of independent claim 32. See App. Br. 5—
23. Accordingly, for the same reasons as discussed above, we sustain the
rejection of these claims as being unpatentable over Dahners and Henniges.
Rejection Based on Dahners, Henniges, Ross, and Jarrett
Appellant does not separately address the rejection of dependent
claims 7—11, 17—21, 25, and 27—31. See App. Br. 5—23. Accordingly, for
the same reasons as discussed above, we sustain the rejection of these claims
as being unpatentable over Dahners, Henniges, Ross, and Jarrett.
12
Appeal 2015-005717
Application 12/899,781
DECISION
The Examiner’s decision to reject claims 1—4, 6—12, 14, 16—25, and
27—32 is 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)(l)(iv).
AFFIRMED
13