Ex Parte Sojka et al

Patent Trials and Appeals Board

Jan 18, 2019

15046855 - (D) (P.T.A.B. Jan. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/046,855 02/18/2016
27777 7590 01/23/2019
JOSEPH F. SHIRTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
FIRST NAMED INVENTOR
Erik Sebastian Sojka
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.
MIT5126USCNT1 4780
EXAMINER
JAMIALAHMADI, MAJID
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
01/23/2019 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 ERIK SEBASTIAN SOJKA, ARTHUR G. STEPHEN,
ANDRE FRANCISCO-GUILHERME, MARK W. WOLFSON,
BRIAN HENRI OTRANDO, DANIEL PAUL GAMACHE,
and JUSTIN M. PICCIRILLO
Appeal2018-004258 1
Application 15/046,855 2
Technology Center 3700
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
1---6 and 16-18. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Our decision references the Appeal Brief filed Sept. 18, 2017 ("Br."), the
Examiner's Answer mailed Jan. 11, 2018 ("Ans."), and the Final Office
Action mailed Feb. 15, 2017 ("Final Act.").
2 According to Appellants, the real party in interest is "DePuy Mitek, LLC
which is a subsidiary of Johnson & Johnson." Br. 2.
Appeal2018-004258
Application 15/046,855
BACKGROUND
According to Appellants, the "application relates to suture anchors
and more particularly to knotless suture anchors." Spec. ,r 1.
ILLUSTRATIVE CLAIM
Claim 1 is the only independent claim on appeal and recites:
1. A suture anchor assembly comprising:
a suture anchor comprising a tubular body having an axial
bore therethrough
one or more purchase enhancements on an exterior surface
of the body adapted to enhance purchase of the body within a
bone hole;
a lateral port through the body from the bore to the exterior
surface; and
a driver engaged to a proximal portion of the body and a
suture passer comprising an elongated flexible member passing
along the driver, along an exterior of the body at its proximal
portion, through the lateral port and into the axial bore with a
distal end of the suture passer extending out of a distal section of
the axial bore and bearing a suture engager.
Br. 8, (Claims App.).
REJECTIONS
1. The Examiner rejects claims 1, 2, 4---6, and 16-18 under 35 U.S.C.
§ I03(a) as unpatentable over Caspari3 in view ofNobles. 4
2. The Examiner rejects claim 3 under 35 U.S.C. § I03(a) as unpatentable
over Caspari in view of Nobles and Rahmani. 5
3 Caspari et al., US 6,290,711 B 1, iss. Sept. 18, 2001 ("Caspari").
4 Nobles et al., US 2007/0010829 Al, pub. Jan. 11, 2007 ("Nobles").
5 Rahmani, US 2009/0204147 Al, pub. Aug. 13, 2009.
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3. The Examiner rejects claims 1, 2, 6, 16, and 17 under 35 U.S.C. § I03(a)
as unpatentable over Stokes6 in view of Nobles.
4. The Examiner rejects claim 3 under 35 U.S.C. § I03(a) as unpatentable
over Stokes in view of Nobles and Rahmani.
DISCUSSION
Caspari in view of Nobles
Claims 1, 2, and 4
With respect to claim 1, the Examiner finds that Caspari discloses a
suture anchor as claimed except for the claimed suture passer, for which the
Examiner relies on Nobles. See Final Act. 2-3. More specifically, the
Examiner finds that Caspari teaches a tubular body with an axial bore 23 and
purchase enhancements 21. Id. The Examiner also finds that Caspari' s
device is capable of being used for implantation into the bone in which case
the threads 21 would be adapted to enhance purchase of the body within a
bone hole, as claimed. Id. at 9-10.
We agree with and adopt the Examiner's findings with respect to the
rejection of claim 1 here. See Final Act. 2-3, 9-10; see also Ans. 4--5. As
discussed below, we are not persuaded of reversible error in the rejection of
claim 1 here.
Appellants first argue that Caspari fails to teach purchase
enhancements as claimed. Br. 3. In support, Appellants argue that when
Caspari's nut is in the locking position and the device is deployed via the
driver there is no way for the threads 21 to engage a bone hole. Id.
Appellants also argue that Caspari teaches "that the threaded portion 21 is
6 Stokes et al., US 2007/0270907 Al, pub. Nov. 22, 2007 ("Stokes").
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Application 15/046,855
broken off as the nut moves to ... [ the locking] position by breaking the
frangible connection 241," and thus, when the device is employed as taught
by Caspari, "there are no threads exposed for engaging a bone hole." Id. at
4. We are not persuaded of error. The Examiner relies on threads 21 as the
claimed purchase enhancements, which extend either above or below the nut
depending on the position of the nut. See Caspari Figs. 1, 2. Appellants do
not explain adequately why the threads 21 cannot be the claimed purchase
enhancements, as explained by the Examiner. See Ans. 4--5. Even though a
portion of the device may be broken off when used as described in Caspari,
Appellants do not explain how any structure, including the claimed purchase
enhancements, is missing from the combination of art relied upon.
Further, to the extent that Appellants' indicate that Caspari's "blunt
threads" are not adapted to enhance purchase of the body within a bone hole,
we are not persuaded. Although "the phrase 'adapted to' generally means
'made to,' 'designed to,' or 'configured to,' ... it can also be used more
broadly to mean 'capable of' or 'suitable for."' In re Man Machine Interface
Techs. LLC, 822 F.3d 1282, 1286 (Fed. Cir. 2016) (citing In re Giannelli,
739 F.3d 1375, 1379 (Fed. Cir. 2014)). We determine that this is the case
here. The Specification does not provide any meaningful limitation on how
a purchase enhancement may be adapted to enhance purchase. Rather, the
Specification merely lists examples of such enhancements, which include at
least one screw thread, a multi-fluted external thread, thread with "a rounded
or blunted profile," or "other purchase enhancements appropriate for a push-
in anchor versus a threaded anchor." Spec. ,r,r 5, 39. Thus, we find that the
Examiner interpretation of the claim as requiring purchase enhancements
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that are capable of enhancing purchase of the body within a bone hole is
consistent with the broadest reasonable interpretation of the claim.
Finally, Appellants argue that Caspari fails to disclose a tubular body
with an axial bore as claimed. Br. 4. We are not persuaded of error for the
reasons provided by the Examiner. See Ans. 5. Specifically, we agree that
Caspari discloses a tubular body, and, without further explanation from
Appellants, we agree that the claim does not require that the axial bore
extend the entire length of the body.
Based on the foregoing, we are not persuaded of error in the rejection
of claim 1 over Caspari and Nobles. Accordingly, we sustain the rejection
of claim 1 here. We also sustain the rejection of dependent claims 2 and 4,
for which Appellants do not provided separate arguments.
Claim 5
Claim 5 ultimately depends from claim 1 and requires that "a
proximal portion of the body carries a multi-fluted external thread." Br. 8.
The Examiner finds that Caspari teaches a multi-fluted external thread 28.
Final Act. 4. The Examiner indicates that the multiple longitudinal grooves
in between the thread projections make the thread multi-fluted. Ans. 6.
Appellants argue that Caspari does not describe this thread as being multi-
fluted and that this portion of the device is broken off when deployed. Br.
However, Appellants neither explain adequately why Caspari's thread 28
may not be considered multi-fluted nor do they explain why it matters, with
respect to the rejection, whether or not this portion of the device is broken
off. Accordingly, we sustain the rejection of claim 5 here.
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Claim 6
Claim 6 depends from claim 1 and further requires "an engagement
between the driver and the suture anchor to allow the suture anchor to be
torqued into a bone by the driver." Br. 8. The Examiner finds that Caspari
teaches such an engagement. Final Act. 4. We agree with Appellants that
the Examiner has not explained adequately how the driver would engage the
suture anchor such that it may be torqued into a bone. See Br. 4. Caspari
explains that the driver 52 is a nut driver that drives nut 30 into the locking
position before it is removed and the frangible attachment is broken. See
Caspari, col. 6, 11. 61---col. 7, 11. 7. The Examiner indicates that Caspari
would meet the requirements of claim 6 where the driver rotates both the nut
and the body inside a bone hole. However, as shown in Figure 4, it is
unclear how any portion of the device would be engaged in a bone hole with
the driver as depicted. Further, when the nut is in the locked position, it is
not clear that the driver would be capable of torqueing the anchor into bone
rather than simply breaking the frangible attachment. Accordingly, we are
persuaded of error, and we do not sustain the rejection of claim 6 here.
Claim 16
Claim 16 depends from claim 1 and requires that "a distal end of the
body tapers whereby to ease insertion of the anchor body into the bone
hole." Br. 9. The Examiner identifies the taper within the axial bore of
Caspari's body as the claimed taper. Final Act. 4. The Examiner also
explains that Caspari' s anchor is fully capable of being used for implantation
into bone. Ans. 7. However, we are persuaded of error because the
Examiner fails to account for the plain meaning of the claim that requires
that the taper is present to ease insertion of the anchor body into the bone
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hole. Even if this language is considered an intended use of the taper (see
Ans. 7), it nonetheless provides a structural requirement in that the body
must have a taper where the taper itself is capable of performing the claimed
function, i.e. the taper must be used to ease insertion into a bone hole. The
identified taper within the axial bore of Caspari's body is not capable of
performing this function. Accordingly, we do not sustain the rejection of
claim 16 here.
Claim 17
Claim 1 7 depends from claim 1 and requires that "the purchase
enhancements comprise annular flanges about the body." Br. 9. The
Examiner finds that the Caspari's threads 21 are annular flanges. Final Act.
5. The Examiner explains that the threads "are rings that project or protrude
outward to some degree," and thus, they may be considered flanges. Ans. 8.
Appellants argue only that "[t]hreads are not annular flanges." Br. 5.
Appellants' assertion, without more, does not persuade us of error in the
Examiner's unrebutted findings presented in the Answer. Accordingly, we
sustain the rejection of claim 17 here.
Claim 18
Claim 18 depends from claim 1 and requires that "at least a portion of
the one or more purchase enhancements are located proximally of the lateral
port." Br. 9. The Examiner finds that the proximal portion of Caspari' s
device is located below the lateral port, as shown in Figure 2. Final Act. 5.
Appellants argue only that "the portion of the device proximal of the nut is
broken off." Br. 5. We are not persuaded of error. Caspari discloses
threads 21 that extend both above and below the lateral port 26. See Caspari
Fig. 1. Accordingly, we sustain the rejection of claim 18 here.
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Caspari in view of Nobles and Rahmani
Appellants do not provide separate arguments regarding the rejection
of claim 3 over Caspari in view of Nobles and Rahmani. See Br. 6. Thus,
because claim 3 depends from claim 1, we also sustain the rejection of claim
3 here for the reasons discussed above.
Stokes in view of Nobles
We are persuaded of reversible error in the rejection of independent
claim 1 over Stokes in view of Nobles. Here, we agree with Appellants that
the Examiner has not identified purchase enhancements in Stokes's device
that are adapted to enhance purchase of the body within a bone hole. See Br.
5. The Examiner identifies indentations 39 as the purchase enhancements in
Stokes. See Final Act. 5---6. As discussed above, the claim requires only that
such purchase enhancements are capable of enhancing purchase of the body
within a bone hole. However, we agree with Appellants that the
indentations in Stokes are not capable of enhancing purchase of the body
within a bone hole because they "would be prevented from even touching
the bone hole wall by the larger diameter flange ... [31] at one end and the
outer locking member 64 at the other end." Br. 5. The Examiner asserts that
the Stokes's device may be disengaged from the driver/locking member 64
and placed in a bone hole with the flange 31 sticking out of the bone hole, in
which case the indentations 39 would enhance purchase of the body within a
bone hole. Ans. 9. However, the Examiner has not explained adequately
how the device is capable of insertion into a bone hole in this manner, i.e.
without the identified driver attached.
Based on the foregoing, we are persuaded of error in the rejection of
claim 1 over Stokes in view of Nobles. Accordingly, we do not sustain the
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rejection of claim 1 here. We also do not sustain the rejection of dependent
claims 2, 6, 16, and 17.
Stokes in view of Nobles and Rahmani
The rejection of claim 3 over Stokes in view of Nobles and Rahmani
does not cure the deficiency in the rejection of claim 1 over Stokes in view
of Nobles. Accordingly, for the reasons discussed above, we also do not
sustain the rejection of claim 3 here.
CONCLUSION
We AFFIRM the rejections of claims 1-5, 17, and 18 over Caspari in
view of Nobles. We REVERSE the rejection of claims 6 and 16 over
Caspari in view of Nobles; we REVERSE the rejection of claims 1, 2, 6, 16,
and 17 over Stokes in view ofNobles; and we REVERSE the rejection of
claim 3 over Stokes in view of Nobles and Rahmani.
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-IN-PART
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