Ex Parte Whittaker et alDownload PDFPatent Trial and Appeal BoardDec 21, 201611462419 (P.T.A.B. Dec. 21, 2016) Copy Citation 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. 11/462,419 08/04/2006 Gregory R. Whittaker MIT5086USNP1 5256 27777 7590 12/23/2016 JOSEPH F. SHIRTZ JOHNSON & JOHNSON ONE JOHNSON & JOHNSON PLAZA NEW BRUNSWICK, NJ 08933-7003 EXAMINER OU, JING RUI ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 12/23/2016 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): j nju spatent @ corn s .j nj. com lhowd@its.jnj.com pair_jnj @ firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GREGORY R. WHITTAKER, JOSE E. LIZARDI, DONALD ZINITI, MAKOTO OHIRA, and KEVIN J. RANUCCI Appeal 2015-004003 Application 11/462,4191 Technology Center 3700 Before LYNNE H. BROWNE, MICHELLE R. OSINSKI, and NATHAN A. ENGELS, Administrative Patent Judges. ENGELS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1, 3—8, and 24—30. Claims 2 and 9—23 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. appellants identify DePuy Mitek, LLC, a subsidiary of Johnson & Johnson, as the real party in interest. Br. 2. Appeal 2015-004003 Application 11/462,419 ILLUSTRATIVE CLAIM Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A suture anchor device, comprising: an insert having a sidewall extending between leading and trailing ends and defining an inner lumen extending through the insert, and at least one bore formed in the sidewall and configured to receive a suture therethrough; an outer sleeve disposable over the insert and configured to lock a suture between the outer sleeve and the insert; and a length of suture through the at least one bore; wherein the insert and the outer sleeve include a snap-lock engagement mechanism formed there between for locking the insert and the outer sleeve together, wherein the snap-lock engagement mechanism comprises a plurality of pins formed on at least one of the insert and the outer sleeve, and a plurality of complementary bores formed in the other one of the insert and the outer sleeve. THE REJECTIONS Claims 1, 3—8, and 24—29 stand rejected under 35 U.S.C. § 102(b) as anticipated by King (US 6,051,791; Apr. 18, 2000). Claims 1, 7, 8, 25, and 30 stand rejected under 35 U.S.C. § 103(a) as being unpatentable in view of the combination of Lombardo (US 2005/0055052 Al; Mar. 10, 2005) and Le (US 5,545,180; Aug. 13, 1996). ANALYSIS Claims L 3—8, and 24—29 Appellants contend the Examiner erred in the rejections of claims 1, 3—8, and 24—29 because King does not disclose a suture anchor, a suture, or a suture received through a bore through a sidewall of the insert, as recited in 2 Appeal 2015-004003 Application 11/462,419 claim 1. Br. 4. Specifically, Appellants argue King discloses a connector for electrical wires and surgeons would not use electrical wires in a surgical procedure. Br. 4. Further, Appellants argue King does not disclose a bore formed in the sidewall of the insert and a length of suture through the at least one bore, as claimed. Br. 4. Citing an on-line dictionary, the Examiner interprets the claim term “bore” to mean “a hole or passage made by or as if by use of a drill. Ans. 2 (citing the definition of “bore” found at www.thefreedictionary.com). Applying that interpretation, the Examiner finds the claimed “at least one bore” includes port 70 or slot 34 depicted in the insert of King. Final Act. 3; Ans. 2—3. Having reviewed the Examiner’s rejection in light of Appellants’ arguments and the evidence of record, we agree with Appellants that the Examiner erred in finding King discloses the claimed bore and a length of suture through the at least one bore. While port 70 may be a bore through the sidewall of an insert, King does not disclose a length of suture through port 70. Further, even considering the cited dictionary definition, the Examiner has not explained how the slot of King is a hole or passage made by or as if by use of a drill. See Ans. 3 (stating that slot 34 of King is “clearly a hole or passage” without additional explanation). Contrary to the Examiner’s findings regarding slot 34, the plain language of claim 1 read in light of Appellants’ Specification does not support an interpretation of the claimed bore as including a slot such as slot 34 depicted in King. See, e.g., Spec. Figs 15, 16,1 63 (describing Figures 15 and 16 as depicting “first and second thru-bores 214a, 214b .. . configured to receive the suture therethrough”). 3 Appeal 2015-004003 Application 11/462,419 Accordingly, having reviewed the Examiner’s rejection in light of Appellants’ arguments and the evidence of record, we agree with Appellants that the Examiner erred in finding King anticipates claims 1, 3—8, and 24— 29, each of which requires “at least one bore” and “a length of suture through the at least one bore.” Claims E 7, 8, 25, and 30 Appellants additionally contend the Examiner erred in rejecting claims 1, 7, 8, 25, and 30 as obvious in view of Lombardo and Le. Br. 5. Appellants’ Brief recites the requirements of claim 1 and asserts, without analysis, “Lombardo et al. do[es] not teach an insert having a lumen.” Br. 5. The Examiner’s Answer cites Lombardo’s hole 610 as the lumen of claim 1 (Ans. 3), and Appellants did not file a reply or otherwise rebut that finding. Claim 1 recites “an insert having a sidewall extending between leading and trailing ends and defining an inner lumen extending through the insert.” Lombardo depicts hole 610 as extending transversely through the sidewall of an insert, and Appellants present no evidence that would require an interpretation of claim 1 that would exclude such a hole. Accordingly, we sustain the Examiner’s rejection of claims 1, 7, 8, 25, and 30 as unpatentable in view of Lombardo and Le. DECISION Lor the above reasons, we affirm the Examiner’s rejection of claims 1, 7, 8, 25, and 30 as unpatentable over Lombordo and Le. We reverse the Examiner’s rejection of claims 1, 3—8, and 24—29 as anticipated by King. 4 Appeal 2015-004003 Application 11/462,419 No time period for taking any subsequent action in connection with this appeal maybe extended. 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART 5 Copy with citationCopy as parenthetical citation