Ex Parte Asnis et al

Patent Trial and Appeal Board

Aug 9, 2018

14146347 (P.T.A.B. Aug. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/146,347 01/02/2014 Stanley E. Asnis
26294 7590 08/13/2018
TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P.
1300EASTNINTH STREET, SUITE 1700
CLEVELAND, OH 44114
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.
NSLIJ-021303 US ORD 1707
EXAMINER
BOLES, SAMEH RAAFAT
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
08/13/2018 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):
rkline@tarolli.com
docketing@tarolli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STANLEY E. ASNIS and PETER D. ASNIS 1
Appeal2017-008266
Application 14/146,347
Technology Center 3700
Before ERIC B. GRIMES, RICHARD M. LEBOVITZ, and
RYAN H. FLAX, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to
fasteners intended for fastening a ligament to a bone, which have been
rejected as anticipated or obvious. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We reverse.
STATEMENT OF THE CASE
"Often, the ACL [ anterior cruciate ligament] is ruptured or tom as a
result of, for example, a sports-related injury." Spec. ,r 5. "In many
1 Appellants identify the Real Parties in Interest as the Feinstein Institute for
Medical Research and the General Hospital Corporation dba Massachusetts
General Hospital. Br. 3.
Appeal2017-008266
Application 14/146,34 7
instances, the ACL may be reconstructed by replacing the ruptured ACL
with a graft ligament. . . . The two ends of the graft ligament are anchored in
place so that the graft ligament extends between the femur and the tibia."
Id. ,r 6. The Specification discloses a fastener that can be used, e.g., in ACL
replacement to anchor a graft ligament in a bone. Id. ,r 55.
Claims 1--4, 7, 8, and 19--23 are on appeal. Claims 1 and 19 are
illustrative and read as follows ( emphasis added):
1. A fastener, comprising:
an elongate fastener body defining a longitudinal axis
substantially central thereto, the fastener body having a
continuous outer fastener shell laterally surrounding the
longitudinal axis, the fastener shell longitudinally separating a
fastener head end and a fastener tip end;
a tool-engaging feature on the fastener head end; and
a plurality of teeth located on the fastener shell and
extending substantially laterally outward from the longitudinally
axis; wherein
the fastener shell is comprised of at least one undulate face
and at least one substantially flat face, the plurality of teeth being
located only on the undulate faces, each tooth being
longitudinally separated from adjacent teeth along an undulate
face.
19. A fastener, comprising:
an elongate fastener body, having longitudinally spaced
fastener head and fastener tip ends, the fastener body defining a
longitudinal axis;
two elongate flat faces, each flat face extending
substantially parallel to, and laterally spaced from, the
longitudinal axis, the two flat faces being located laterally
opposite one another on the fastener body; and
2
Appeal2017-008266
Application 14/146,34 7
two elongate undulate faces, each undulate face having a
plurality of longitudinally spaced teeth arranged thereupon, each
undulate face extending substantially parallel to, and laterally
spaced from, the longitudinal axis, the two undulate faces being
located laterally opposite one another on the fastener body, and
the two undulate faces being laterally separated from one another
by interposed flat faces;
wherein a fastener perimeter is defined in a lateral plane
by the two flat faces and the two undulate faces, the fastener
perimeter entirely laterally surrounding the longitudinal axis.
The claims stand rejected as follows:
Claims 19, 20, 22, and 23 under 35 U.S.C. § I02(b) as anticipated by
Shapiro2 (Ans. 2) and
Claims 1--4, 7, 8, and 21 under 35 U.S.C. § I03(a) as obvious based
on Shapiro (Ans. 4).
DISCUSSION
The Examiner has rejected all of the claims on appeal as either
anticipated by or obvious in view of Shapiro. The same issue is dispositive
for both rejections.
The Examiner finds that "Shapiro teaches a fastener fig. 9,
comprising: ... at least one substantially flat face 324, 322 ... the two flat
faces being located laterally opposite one another on the fastener body."
Ans. 2-3. That is, Shapiro "define[s] sidewalls 322 and 32[4] 'substantially
flat' ( as claimed in the present application) in lines 14-17 of col. 7." Id. at 6.
This finding underlies both of the rejections on appeal. Id. at 2-5.
2 Shapiro et al., US 6,436,139 Bl, issued Aug. 20, 2002.
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Appeal2017-008266
Application 14/146,34 7
Appellants argue that Shapiro
does not teach, show, disclose, or suggest that two elongate flat
faces are provided, as presently claimed .... [S]idewalls 322
and 324 ... include a very large number of notched cut-outs or
crevices interposed between the flat faces of the threads along
the complete length of those faces. . . . [T]hese are not
incidental or minor inclusions--it is respectfully submitted that
the sidewalls 322 and 324 of [Shapiro] are not truly
substantially flat.
Br. 10.
Appellants argue that "one of ordinary skill in the art, upon review of
at least i10040 of the present specification, would understand that a
'substantially flat' face, as claimed, would be 'substantially planar', which is
emphatically not the case with the sidewalls 322 and 324 of the '139 patent,
at least because the crevices destroy any possible planarity of those sidewalls
322 and 324." Id. at 11.
We agree with Appellants that Shapiro's fastener does not have "flat"
( claim 19) or "substantially flat" ( claim 1) faces, under the broadest
reasonable interpretation of the claim language, when read in light of the
Specification. Shapiro discloses "interbody fusion devices disposed between
two bony structures to maintain spacing therebetween and promote bony
fusion." Shapiro 1: 12-14. Shapiro's Figure 9 is reproduced below:
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Appeal2017-008266
Application 14/146,34 7
Pig. 9
Figure 9 shows an embodiment of Shapiro's interbody fusion device.
Id. at 7:1-3. The device 310 has a tapering outer surface that includes thread
form 312. Id. at 7:3----6. "[O]pposing sidewalls 322 and 324 are substantially
flat and lack concavity necessary to rotate one adjacent device within the
maximum root diameter of the other." Id. at 7: 14--16.
However, the Specification states that "[i]n accordance with the
present invention, Figs. 1 and 2 depict a fastener 100." Spec. ,r 37. Figure 2
is reproduced, in relevant part, below:
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Appeal2017-008266
Application 14/146,34 7
Figure 2 shows a top view of fastener 100 that includes teeth 116 and flat
faces 120. Id. ,r,r 39--40. "[A] 'flat' face 120 ... is substantially planar but
may include some incidental irregularities, such as the tooth 116 notches
shown in Fig. 2." Id. ,r 40.
Thus, the Specification defines a "flat" face, as recited in claims 1 and
19, as one that is "substantially planar," although it can include incidental
irregularities. Shapiro's fastener, however, is threaded continuously from
one end to the other, so each of the faces 322 and 324 that the Examiner
points to is interrupted repeatedly by the cuts formed by the threads. See
Shapiro 7:3----6 ("Interbody fusion device 310 includes a thread form 312
tapering from a smaller diameter thread form adjacent distal end 336 to a
larger diameter thread form opposite end 336."). Even though the sidewalls
between the threads are "substantially flat" (id. at 7: 14--15), the face of
Shapiro's device is not "flat," as defined by the Specification, because the
flat parts of the sidewall are separated from each other by the threads that are
needed for the device to function as intended. Shapiro's Figure 13 is
illustrative:
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Appeal2017-008266
Application 14/146,34 7
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Fig.13
Shapiro's Figure 13 shows a side view of an embodiment of its
device. Id. at 3:9-11. Although it is a different embodiment than the one
cited by the Examiner, Figure 13 shows that Shapiro's device is threaded
continuously from one end to the other, and thus supports Appellants'
argument that the "sidewalls 322 and 324 [of the device shown in Figure 9]
... include a very large number of notched cut-outs or crevices interposed
between the flat faces of the threads along the complete length of those
faces," Br. 10, and are therefore the faces are not "flat" or "substantially
flat," as required by claims 1 and 19 under the broadest reasonable
interpretation of those terms when read in light of the Specification.
We therefore reverse both of the rejections on appeal.
REVERSED
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