Ex Parte DiMatteo et al

Patent Trial and Appeal Board

Apr 19, 2016

13241781 (P.T.A.B. Apr. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/241,781 09/23/2011
27777 7590 04/21/2016
JOSEPH F SHIRTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
FIRST NAMED INVENTOR
Kristian DiMatteo
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.
MIT5136USNP 2598
EXAMINER
DAVID, SHAUN L
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
04/21/2016 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):
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 KRISTIAN DIMATTEO, GREGORY R. WHITTAKER, and
NATHAN CAULDWELL
Appeal2014-004589
Application 13/241,781 1
Technology Center 3700
Before STEFAN STAICOVICI, LEE L. STEPINA, and
AMANDA F. WIEKER, Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kristian DiMatteo et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 1-9.2 We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
According to Appellants, the real party in interest is DePuy Mitek,
LLC. Appeal Br. 2 (filed Nov. 15, 2013).
2 Claim 10 is withdrawn from consideration and claims 11 and 12 are
cancelled. See id.
Appeal2014-004589
Application 13/241,781
We REVERSE.
SUMMARY OF DECISION
INVENTION
Appellants' invention relates to "suture anchors for attaching suture to
bone." Spec. 1 i-f 2.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A suture anchor comprising:
an anchor body comprising a longitudinal axis and bone
engaging external threads oriented for rotation about the longitudinal
axis; and
a suture attachment on the anchor body rotational with
respect to the body about the longitudinal axis whereby to help
reduce twisting of one or more sutures which may be attached
to the suture attachment as the anchor body is threaded into a
bone.
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1-9 under 35 U.S.C. § 112, second
paragraph, as being indefinite.
II. The Examiner rejected claims 1, 3, 4, and 6-9 under 35 U.S.C.
§ 102(b) as anticipated by Morgan (US 2005/0267479 Al, pub. Dec.
1, 2005).
III. The Examiner rejected claim 2 under 35 U.S.C. § 103(a) as
unpatentable over Morgan and Justin (US 2002/0173822 Al, pub.
Nov. 21, 2002).
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Appeal2014-004589
Application 13/241,781
IV. The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as
unpatentable over Morgan and Martinek et al. (US 2010/0179592 Al,
pub. July 15, 2010).
ANALYSIS
Rejection I
The Examiner finds that the use of the term "whereby" in independent
claim 1 renders the claim indefinite because it "is unclear what 'helps reduce
twisting of one or more sutures.'" Final Act. 3 (transmitted Apr. 11, 2013).
According to the Examiner, Appellants' use of the term "whereby" is
grammatically improper and thus, it is not clear whether the condition of a
"suture attachment on the anchor body rotational with respect to the body
about the longitudinal axis," or some other condition, will generate the
outcome "to help reduce twisting of one or more sutures which may be
attached to the suture attachment as the anchor body is threaded into a
bone." See Ans. 3-7 (transmitted Dec. 24, 2013).
Appellants argue that the "word 'whereby' is also used in accordance
with its dictionary definition of linking two concepts," namely, "[t]hat the
rotational relationship between the attachment and the body is the means by
which the twisting of the sutures is reduced as the body is rotated." Appeal.
Br. 3--4.
Although we appreciate the Examiner's position that Appellants' use
of the term "whereby" is not ideal, and employing other terms would have
been clearer (see Ans. 7), nonetheless, the test for definiteness under 3 5
U.S.C. § 112, second paragraph, is whether those skilled in the art would
understand what is claimed when the claim is read in light of the
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Appeal2014-004589
Application 13/241,781
specification. Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F .2d
1565, 1576 (Fed. Cir. 1986). In this case, the Specification describes suture
receiver 3 8 (suture attachment of claim 1) as "free to rotate within the axial
bore 30 thus reducing twisting of the suture loops." Spec. 5 i-f 8. As there is
no evidence of any other condition that would result in an outcome to help
reduce twisting, we agree with Appellants that the "linking in claim 1
between the rotational suture attachment and the reduction in twisting would
not leave one of ordinary skill confused." Reply Br. 2 (filed Feb. 24, 2014).
Accordingly, for the foregoing reasons, we do not sustain the rejection
of claims 1-9 under 35 U.S.C. § 112, second paragraph, as being indefinite.
Rejection II
The Examiner finds that Morgan discloses a suture anchor (suture
anchor 130)3 including an anchor body (body 12) having a longitudinal axis
and bone engaging external threads oriented for rotation about the
longitudinal axis; and a suture attachment (retainer 40) "on the anchor body
rotational with respect to the body about the longitudinal axis whereby to
help reduce twisting of one or more sutures which may be attached to the
suture attachment as the anchor body is threaded into a bone." Final Act. 3-
5 (citing Morgan i-f 39, Figs. 12-14).
Appellants argue that Morgan fails to teach a suture attachment
rotational with respect to the suture anchor body, as called for by claim 1,
but rather discloses a retainer that "is meant to be fixed within the body and
not rotate." Appeal Br. 4.
3 Parentheticals refer to nomenclature in Morgan.
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Appeal2014-004589
Application 13/241,781
In response, the Examiner finds that:
Ans. 9-10.
"[W]edging" a circular disc-shaped element
(Morgan's retainer 40) in a circular orifice (inner
wall of Morgan's bore 24) allows for the possibility
that the disc-shaped element is capable of rotation
within the circular orifice. This doesn't require that
the retainer actually rotate, nor did the Examiner
ever claim that Morgan discloses that the retainer
rotates. But the retainer is clearly rotational with
respect to the bore because the retainer is capable of
rotating.
We do not agree with the Examiner that Morgan's retainer 40 "is
capable of rotating" because Morgan teaches that, "retainer 40 is wedged[4J
within an inner wall of the bore 24," and that "retainer 40 contacts ...
shoulder 52 to prevent further movement of the retainer." Morgan i-f 39.
Morgan additionally discloses that the retainer can be "secured to the body
... in a suitable manner, such as by bonding." Id. ~,.1oreover, \'l.;e note that
Morgan clearly indicates in other embodiments when portions of the device
are moveable5 or rotatably6 mounted. See Morgan i-fi-136-38, Figs. 5A-5C,
9-11. Hence, there is no indication in Morgan that retainer 40 is capable of
rotation, as the Examiner opines. "[A] prior art reference is relevant for all
that it teaches to those of ordinary skill in the art." In re Fritch, 972 F .2d
4 An ordinary and customary meaning of the term "wedged" is "to
fasten or tighten by driving in a wedge." Merriam Webster's Collegiate
Dictionary (10th ed. 1997).
5 "[T]he loop 30 is movable between the retainer 40 and an inner
surface of the bore 24." Morgan i-f 36, Figs. 5A-5C.
6 "[P]ulley 50 is rotatably mounted on the retainer 40." Id. i-f 38, Figs.
9-11.
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Appeal2014-004589
Application 13/241,781
1260, 1264 (Fed. Cir. 1992). The Examiner provides no other evidence or
reasoning that might be construed as support for the finding that Morgan's
retainer 40 "is capable of rotating." We thus agree with Appellants that
Morgan's suture attachment, i.e., retainer 40, "is meant to be fixed within the
body and not rotate." Appeal Br. 4.
Accordingly, Morgan fails to teach a suture attachment that is
rotational with respect to the suture anchor body, as called for by claim 1.
Therefore, for the foregoing reasons, we do not sustain the rejection of
independent claim 1, and claims 3, 4, and 6-9 depending therefrom, under
35 U.S.C. § 102(b) as anticipated by Morgan.
Rejection III and IV
The Examiner's use of the disclosures of Justin and Martinek does not
remedy the deficiencies of Morgan as described supra. See Final Act. 5-7.
Accordingly, for the same reasons as discussed above, we also do not sustain
the rejections under 35 U.S.C. § 103(a) of claim 2 as unpatentable over
Morgan and Justin and of claim 5 as unpatentable over Morgan and
Martinek.
SUMMARY
We REVERSE the Examiner's decision to reject claims 1-9.
REVERSED
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