Ex Parte Chudik

Patent Trial and Appeal Board

Jan 28, 2019

13998567 (P.T.A.B. Jan. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/998,567
7590
Gregory B. Beggs
Brookdale Lisle# 372
1700 Robin Lane
Lisle, IL 60532
11/12/2013
01/29/2019
FIRST NAMED INVENTOR
Steven C. Chudik
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.
5181-1011.1 1569
EXAMINER
PELLEGRINO, BRIAN E
ART UNIT PAPER NUMBER
3774
MAIL DATE DELIVERY MODE
01/29/2019 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 STEVEN C. CHUDIK
Appeal2018-001997
Application 13/998,567
Technology Center 3700
Before DANIEL S. SONG, JEREMY M. PLENZLER, and
NATHAN A. ENGELS, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's Decision rejecting claims 1-7, 10, 11, and 36. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
Appeal2018-001997
Application 13/998,567
CLAIMED SUBJECT MATTER
Claims 1 and 3 6 are independent. Claims 2-7 depend from claim 1
and claims 10 and 11 depend from claim 3 6. Claim 1 is reproduced below:
1. A cortical loop comprising
a central portion configured to engage a bundle of soft
tissue and capture the bundle against a bone surface, and
attachment ends configured to engage a cortical surface
of the bone at separate locations on the bone.
REJECTIONS
1. Claim 6 is rejected under 35 U.S.C. § 112(a) as failing to comply
with the enablement requirement.
2. Claims 1-7 and 36 are rejected under 35 U.S.C. § I02(a)(2) as
being anticipated by McKay (US 2014/0072934 Al, published Mar. 13,
2014).
3. Claims 10 and 11 are rejected under 35 U.S.C. § 103 as being
unpatentable over McKay.
OPINION
Enablement
Claim 6 depends from claim 1 and recites that "[ t ]he cortical loop of
claim 1 ... is configured to engage the cortical surface without anchors in
the bone." The Examiner rejects claim 6 under 35 U.S.C. § 112(a) as failing
to comply with the enablement requirement. The Examiner asserts that
Appellant "never states how the attachment ends are configured to attach the
graft to the ligament sites without drilling into the bone." Non-Final Act. 2.
When rejecting a claim for lack of enablement, the USPTO bears an
initial burden of setting forth a reasonable explanation as to why the
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Appeal2018-001997
Application 13/998,567
Examiner believes that the scope of protection provided by the claim is not
adequately enabled. In re Wright, 999 F.2d 1557, 1561---62 (Fed. Cir. 1993).
Although Appellant does not identify any particular disclosure of
attachment from the Specification, Appellant responds that the specific
attachment is known "based upon an assumed level of expertise possessed
by persons skilled in the art of orthopedic surgery." Appeal Br. 18. The
Examiner identifies manners in which the attachment ends are configured to
engage the cortical bone, and Appellant agrees. See Non-Final Act. 2
(identifying potential "attach[ment] via sutures, knots, etc."); Appeal Br. 18
( agreeing with the Examiner's identification of "sutures, knots, etc."). These
are the same structures noted by the Examiner and Appellant during
prosecution as providing the attachment between the "attachment ends" and
"cortical surface of the bone." See Pages 9--10 of the Response filed Feb. 2,
2016. Appellant also notes that attachment may be accomplished via
"winding another suture around the bone and over an attachment end, gluing
the end to the bone, or a clip." Appeal Br. 18.
The Examiner asserts that "Appellant fails to indicate and explain how
the claimed configuration is accomplished [based on any disclosure in the
Specification] and thus cannot rely on what may be known in the art when
such a description was not in the [S]pecification." Ans. 9--10. A patent need
not disclose what is well known in the art. In re Wands, 858 F.2d 731, 735
(Fed. Cir. 1988). The Examiner does not dispute that the exemplary ways to
attach without anchors in the bone identified by Appellant are well known in
the art, and fails to offer sufficient explanation as to why the broad
disclosure of "engag[ing] the cortical surface without anchors in the bone" is
insufficient for enablement of claim 6. The Examiner makes no attempt, for
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Appeal2018-001997
Application 13/998,567
example, to explain why it would require undue experimentation for one of
ordinary skill in the art to make and/or use the invention. See In re Wands,
858 F.2d at 737.
Based on the record before us, the Examiner has failed to establish
that the features recited in claim 6 are not enabled.
Anticipation
The Examiner finds that McKay discloses each limitation of
independent claims 1 and 36, including a "central portion [of the cortical
loop] configured to engage a bundle of soft tissue and capture the bundle
against a bone surface." Non-Final Act. 3.
The problem with the Examiner's finding, which Appellant identifies
(see Appeal Br. 15), is that the Examiner has failed to establish sufficiently
that McKay's barrier 18 "engage[ s] a bundle of soft tissue and capture[ s] the
bundle against a bone surface" as required by the claims. McKay describes
barrier 18 as simply being a "device that shields ... the periodontal defect
from material that slows healing of the periodontal defect." McKay ,r 36.
Barrier 18 is a "sheet that is configured to reduce an amount of material
from entering into the periodontal defect." Id. Barrier 18 "prevents saliva,
other liquids, food, bacteria and/or other material that slows healing of the
periodontal defect." Id. ,r 37. The Examiner fails to explain sufficiently,
and it is not apparent to us, how or why barrier 18 "engage[ s] ... and
capture[ s ]" the gingival tissue against the tooth surface. The Examiner
simply asserts, without meaningful explanation, that McKay's barrier 18
"engage[ s ]" and "capture[ s ]" in the manner recited in the claims. See Final
Act. 3; Ans. 8.
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Appeal2018-001997
Application 13/998,567
For at least this reason, we do not sustain the Examiner's decision to
reject claims 1-7 and 36 as being anticipated by McKay.
Obviousness
Claims 10 and 11 depend from claim 3 6. The stated basis for the
rejection of claims 10 and 11 does not cure the deficiency in the rejection of
claim 36 noted above. Accordingly, we also do not sustain the Examiner's
decision to reject claims 10 and 11.
DECISION
We REVERSE the Examiner's decision to reject to reject claim 6
under 35 U.S.C. § 112(a) as failing to comply with the enablement
requirement.
We REVERSE the Examiner's decision to reject claims 1-7 and 36 as
unpatentable under 35 U.S.C. § 102(a)(2).
We REVERSE the Examiner's decision to reject claims 10 and 11 as
unpatentable under 35 U.S.C. § 103.
REVERSED
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