Ex Parte Cropper et al

Patent Trial and Appeal Board

Jan 27, 2014

11745835 (P.T.A.B. Jan. 27, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/745,835 05/08/2007 Michael S. Cropper END-5627 1512
21884 7590 01/28/2014
WELSH FLAXMAN & GITLER LLC
2000 DUKE STREET, SUITE 100
ALEXANDRIA, VA 22314
EXAMINER
ORKIN, ALEXANDER J
ART UNIT PAPER NUMBER
3773
MAIL DATE DELIVERY MODE
01/28/2014 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 MICHAEL S. CROPPER,
RICHARD C. SMITH, JOHN P. MEASAMER,
and RICHARD F. SCHWEMBERGER
____________________

Appeal 2012-002646
Application 11/745,835
Technology Center 3700
____________________

Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2012-002646
Application 11/745,835

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-6, 8, 9, 11, and 13.1 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appellants’ invention, as described in the Specification, is a surgical
fastener having sheet metal components, which is less complex and
expensive than current fasteners (Spec., paras. [0001] and [0004]). Claims 1
and 8 are the only independent claims.
EXEMPLARY CLAIM
Claim 1, reproduced below, is representative of the claims on appeal.
1. A surgical fastener for fastening tissue,
the fastener comprising:
a male fastener comprising;
a first piece of sheet material formed
to have a generally planar base and an
elongate first needle portion extending
upward from the base; and
a second piece of sheet material
formed to have a generally planar base and
an elongate second needle portion extending
upward from the base, the second piece of
sheet material being pivotally connected to

1 Our decision will refer to Appellants’ Specification (“Spec.,” filed May 8,
2007), Appeal Brief (“App. Br.,” filed June 20, 2011), and Reply Brief
(“Reply Br.,” filed November 4, 2011), as well as the Examiner’s Answer
(“Ans.,” mailed September 6, 2011).

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Application 11/745,835

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the first piece of sheet material in a manner
biasing the second needle of the second
piece toward the first needle of the first
piece; and
a female fastener shaped and dimensioned
for engagement with the respective first and
second needles of the first piece and the second
piece, wherein the female fastener includes a
spring biased first latch including a flange and an
opening shaped and dimensioned for engaging the
first needle, a spring biased second latch including
a flange and an opening shaped and dimensioned
for engaging the second needle, and a spring
positioned between the flange of the first latch and
the flange of the second latch for biasing the first
latch and the second latch in opposite directions.

REJECTIONS
The following rejections made by the Examiner are under appeal:
Claims 1-6 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Green (US 4,506,671, iss. Mar. 26, 1985), Yoon (US 5,047,047, iss. Sep. 10,
1991), and Anderson (US 2006/0247639 A1, pub. Nov. 2, 2006); and
claims 8, 9, 11, and 13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Green and Yoon.
ANALYSIS
Obviousness rejection of claims 1-6
In the rejection of claim 1, the Examiner relies on Green to teach
limitations of the claimed male fastener, including the limitations of the first
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Application 11/745,835

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and second pieces of sheet material having respective first and second needle
portions (Ans. 5). The Examiner concedes that, “Green is silent about the
second piece of sheet material [being] pivotally connected to the first piece
of sheet material in a manner to bias the needle of the second piece towards
the needle of the first piece” as required by claim 1 (id.). Nevertheless, the
Examiner states that Yoon teaches the pivotal connection (id. at 6-7), and
that it would have been obvious to combine the teachings of Green and
Yoon (id. at 7). For the reasons discussed below, however, we agree with
Appellants that the Examiner does not establish it would have been obvious
to combine the references, and thus on this record we are constrained to
reverse the rejection.
The Examiner’s rationale for combining the references states “[i]t
would have been obvious . . . to use the male fastener of Yoon with the
[pivotal connection] . . . of Green in order to allow for improved accuracy of
tissue approximation” (Ans. 6), and that:
Yoon teaches the biasing nature of the
device allows for the skin engaging members of
the device to “securely and accurately hold the
edges of the wound together with the desired
tension to promote fast healing with minimal
formation of scar tissue. Accuracy of the edge-
edges in approximate is improved ...” (col. 4 ll. 65-
col. 5 ll. 1). Therefore[,] the biasing and the hinge
of the device of Yoon will allow for fast healing,
and improved accuracy in the tissue approximation
of Green.
(Id. at 8.) As pointed out by Appellants, however:
Green includes a rigid base 62 and
extending prongs 64. The fastener part 60 is
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driven for deployment in a linear manner by a
drive mechanism. The fastener part 60 is used in
securing planar tissue 18 upon the actuation of the
drive mechanism causing the fastener part 60 to be
driven through the tissue 18 and into a retainer part
80. See, Green, Col. 3, line 5 et seq.
In contrast, Yoon simply discloses a wound
closure device for holding adjacent, laterally
oriented tissue together, that is, for holding lateral
sides of a wound or incision together.
(App. Br. 12, see also Reply Br. 1-2) (emphasis added). Thus, the
Examiner’s proffered rationale does not sufficiently explain why one of
ordinary skill in the art would use the pivot connection from Yoon’s
fastener, which holds laterally oriented tissue together without a
corresponding female fastener, with Green’s fastener, which holds planar
tissue layers together and uses a corresponding fastener. Restated, Green
and Yoon hold different layers of tissue together in different ways. Thus,
the Examiner’s reasons for combining Yoon with Green, e.g., to “allow for
. . . improved accuracy [of] tissue approximation” when the tissue edges are
held together as taught by Yoon, do not appear to be relevant to Green.
Based on the foregoing, we do not sustain the rejection of claim 1.
We also do not sustain the rejection of claims 2-6 that depend from claim 1.
Obviousness rejection of claims 8, 9, 11, and 13
Appellants’ arguments as to why the rejection of independent claim 8
is erroneous are not entirely clear. Appellants argue, “[t]his rejection [of
claim 8] involves the combination of Green and Anderson in the same
manner discussed above with regard to claim 1. As such, and for the reasons
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discussed above with regard to claim 1, it is Appellants’ opinion the
rejection is improper” (App. Br. 19). In the rejection of independent
claim 1, Appellants argue that the Examiner erroneously relies on Anderson
to teach the limitation “the female fastener having the first and second
latches having the flange and opening to engage with the needles and a
spring positioned between the flanges of the latches” (Id. at 15). Neither
claim 1 nor claim 8 includes this specific language, although claim 8 does
require:
a . . . first latch . . . including flange and an
opening . . . for engaging the needle; and
a . . . second latch . . . including a flange and
an opening . . . for engaging the second needle;
and
a spring positioned between the flange of the
first latch and the flange of the second latch.
Nonetheless, Appellants argue with respect to claim 1:
The Examiner's rationale for replacing the
structure of Green with that of Anderson involves
the need “to have an alternative a more efficient
locking mechanism based [sic] the greater force
the spring of Anderson would be able to apply”.
This rationale is highly flawed. First, the retainer
16 of Anderson is not a locking mechanism as
would be required by Green. Rather, retainer 16 is
a cover preventing bone anchors from backing out
of a threaded aperture. Second, there is nothing in
either the disclosure of Anderson or Green that
would dictate the retainer 16 of Anderson would
be capable of providing greater forces than the lugs
44 of Green.
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(App. Br. 17). Even assuming arguendo the Examiner’s rationale is flawed
in that “there is nothing . . . that would dictate the retainer 16 of Anderson
would be capable of providing greater forces than the lugs 44 of Green,” we
note that Appellants do not sufficiently argue that Anderson does not teach
the structure on which the Examiner relies, i.e., spring-biased latches. In
KSR the Supreme Court rejected the Federal Circuit’s rigid application of its
teaching, suggestion, or motivation test in favor of an expansive and flexible
approach. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007). KSR
emphasized “the need for caution in granting a patent based on the
combination of elements found in the prior art,” id at 415-16, and discussed
circumstances in which a patent might be determined to be obvious without
an explicit application of the teaching, suggestion, motivation test. In
particular, the Supreme Court reaffirmed that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.”
In this case, the Examiner relies on Anderson to teach spring-biased
latches, and Appellants do not argue Anderson does not teach such latches.
Thus, Appellants have not sufficiently established that the rejection is
anything other than the use of a familiar element (i.e., spring-biased latches)
used in a known manner to yield a predictable result.
Based on the foregoing, we sustain the rejection of claim 8. We also
sustain the rejection of claims 9, 11, and 13, which depend from independent
claim 8, and which are not argued separately by Appellants.
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DECISION
The Examiner’s rejection of claims 1-6 under 35 U.S.C. § 103(a) is
REVERSED.
The Examiner’s rejection of claims 8, 9, 11, and 13 under 35 U.S.C.
§ 103(a) 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)(1)(iv).
AFFIRMED IN PART

rvb