Ex Parte DiMatteo et al

Patent Trial and Appeal Board

May 4, 2018

13249941 (P.T.A.B. May. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/249,941 09/30/2011
27777 7590 05/08/2018
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.
MIT5158USNP 5160
EXAMINER
MCEVOY, THOMAS M
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
05/08/2018 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):
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, ARTHUR G. STEPHEN,
GREGORY R. WHITTAKER, and MARK CAPOBIANCO
Appeal2017-004868
Application 13/249,941 1
Technology Center 1600
Before RICHARD M. LEBOVITZ, ELIZABETH A. LA VIER, and DEVON
ZASTROW NEWMAN Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to a method for attaching a soft
tissue to a bone using a suture anchor body. The Examiner rejected the
claims as obvious under 35 U.S.C. § 103. Appellants appeal the rejections
pursuant to 35 U.S.C. § 134. We have jurisdiction under 35 U.S.C. § 6(b).
The rejections are affirmed.
1 The Appeal Brief ("Appeal Br.") lists DePuy Mitek, LLC, which is a
subsidiary of Johnson & Johnson, a New Jersey corporation, as the real-
party-in-interest. Appeal Br. 2.
Appeal2017-004868
Application 13/249,941
STATEMENT OF THE CASE
Claims 10-14 and 17 stand rejected by the Examiner as follows:
1. Claims 10-14 under pre-AIA 35 U.S.C. § 103(a) as obvious in
view of Berg (U.S. Pat. Appl. Publ. 2009/0281581 Al, publication date Nov.
12, 2009) and Gordon (U.S. Pat. Appl. Publ. 2006/0271060 Al, publication
date Nov. 30, 2006). Final Action ("Final Act.") 2.
2. Claim 17 under pre-AIA 35 U.S.C. § 103(a) as obvious in view of
Berg, Gordon, and Hirotsuka (U.S. Pat. Appl. Publ. 2010/0292732 Al,
publication date Nov. 18, 2010). Final Act. 4.
Claim 10, the only independent claim on appeal, is produced below:
10. A method for attaching a soft tissue to a bone, the method
comprising the steps of:
a) implanting into the bone a distal suture anchor body,
leaving a guide wire extending proximally out of the bone from
the distal suture anchor body;
b) after step a), threading a suture from the soft tissue
through a suture attachment on the distal suture anchor body, the
suture extending from the soft tissue to the distal suture anchor
body and out of the bone when the distal suture anchor body is
implanted into the bone; and
c) implanting over the guide wire and into the bone a
proximal suture anchor body such that at least a portion of the
suture is trapped between the proximal suture anchor body and
the bone.
1. REJECTION BASED ON BERG AND GORDON
The Examiner found that Berg discloses step a) and c) of claim 10, but
not step b) of "after step a), threading a suture from the soft tissue through a
suture attachment on the distal suture anchor body." Final Act. 3. Rather,
the Examiner found that Berg shows the suture is threaded on the anchor
body at the end of step a). Id.
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Appeal2017-004868
Application 13/249,941
Figures lb through le of Berg illustrate Berg's suturing process.
Figure 1 b of Berg, showing step a) of claim 10, is reproduced below:
FIG. 1b
Figure 1 b of Berg, reproduced above with annotations, shows the
distal suture anchor body (14) inserted into the bone hole (16) with the guide
wire (24) (identified by Berg as "inserter rod 24") extending out. Berg i-f 10.
The suture (20) is inserted into the distal suture body (14) at one end and
attached to the tissue (22) at other end. Thus, Figure 1 b shows step a) of
clam 10 of "implanting into the bone a distal suture anchor body, leaving a
guide wire extending proximally out of the bone from the distal suture
anchor body."
Figure 1 d of Berg, showing step c) of claim 10, is reproduced below:
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Appeal2017-004868
Application 13/249,941
L 22
r~~ )
l 4 ,_""'-...:;;+4 t~/j 7
.~~21~0,n
··:._·~<:.·~::,,.; .... ~,,··
FIG.1d
Figure 1 d of Berg, reproduced above with annotations, shows the
proximal suture anchor body (10) (identified by Berg as "cannulated bone
screw 10") inserted and movable over guide wire (24) (Berg i-f 10), meeting
the limitation of step c) of claim 10 of "implanting over the guide wire and
into the bone a proximal suture anchor body."
Figure 1 e of Berg, reproduced below:
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Appeal2017-004868
Application 13/249,941
r_,
(::::-:_ __ L ~----~:.~
guidewue
FIG.1 e
Figure 1 e of Berg, reproduced above with annotations, shows the
proximal suture anchor body (10) (identified by Berg as "cannulated bone
screw 10") inserted into the bone hole and placed on top of the distal anchor
to prevent its movement. Berg ,-r 10. The figure shows the proximal suture
body arranged such that "at least a portion of the suture [20] is trapped
between the proximal suture anchor body and the bone" as recited in step c)
of claim 10.
As indicated above, Figure 1 b of Berg shows the anchor already
threaded with a suture when inserted into the bone hole. Step b of claim 10,
however, requires that the suture is threaded on to the distal suture body
after step a in which the distal body is implanted into the bone. To meet step
b ), the Examiner cited Gordon for its teaching of threading a bone anchor
with a suture when it is within a bone cavity (bone hole 16 of Berg). Final
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Application 13/249,941
Act. 3. The Examiner found that it would have been obvious to one of
ordinary skill to have threaded the distal suture anchor body with a suture,
using a suture threader, after the anchor body had been inserted into the
bone hole "to allow proper tensioning of the suture after the distal anchor
body is implanted." Id. The Examiner also found:
Berg is essentially silent as to how the suture would be tensioned,
except for a vague reference to a sliding knot in claim 13. One of
ordinary skill in the art would look to the prior art for suitable
tensioning means given the lack of any specific disclosure from
Berg. One of ordinary skill in the art would recognize the value
of being able to suture the soft tissue at any time after placement
of the distal anchor.
Final Act. 5.
Appellants contend that one of ordinary skill in the art would not have
had reason to modify Berg with Gordon's teaching because the distal suture
anchor in Berg is open and could be loaded easily without the suture
threader of Gordon:
Berg teaches a toggle anchor which loads itself via an open ended
distal suture capture notch - very quick, very easy. Gordon
teaches a suture threader through a closed aperture through a
suture anchor. Threading the suture through such a small, closed
aperture is a challenge and the suture threader being pre-loaded
through the aperture and then having a suture capture loop which
is much larger than the aperture makes loading the suture easier.
Berg does not have a small, closed aperture but rather an open
notch. The notch is easy to load with suture even inside the body
and Berg would have no reason to employ the suture threader of
Gordon.
Appeal Br. 3.
This argument does persuade us that the Examiner erred. As
established by Gordon, it was known to thread a suture into a suture body
after the suture body is placed into the bone hole. Gordon i-fi-179-80.
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Appeal2017-004868
Application 13/249,941
Appellants did not challenge the Examiner's finding with respect to this fact,
but rather acknowledged it. Appeal Br. 3. The "selection of any order of
performing process steps is prima facie obvious in the absence of new or
unexpected results." l\!IPEP § 2144.04(1\/)(C). Thus, it would have been
obvious to have inserted the suture into the bone anchor after the anchor is
placed in the bone hole because such a step was known in the art and the
criticality of performing the insertion step prior to the anchor being placed in
the bone hole has not been demonstrated. As found by the Examiner; such a
step would have allowed tensioning of the suture after insertion in the bone
hole. Appellants have not identified a flaw in this rationale.
Appellants' argument focuses on the structural difforences between
Berg and Gordon, and why the suture threader of Gordon would not be
necessary with Berg. Appeal Br. 3-4. However, as explained by the
Examiner, Gordon's suture shuttle provides an alternative way of tensioning
the suture. Final Act 3. Appellants contend that the open notch on Berg's
anchor body is "easy to load," but as explained by the Exarniner, the "suture
threading mechanism of Gordon allows a suture to be loaded through an
anchor and tensioned during or after implantation of the anchor into bone."
Ans. 2. Thus, it would have been an obvious expedient to use it to load a
suture on Berg's anchor when already present in the bone hole. It is obvious
to utilize a prior art element for its known and established function. KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Appellants have not
provided objective evidence that Gordon's suture threader would not work
with Berg's anchor nor that one of ordinary skill in the art have been led
away from using the two together. An argument made by counsel in a brief
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Application 13/249,941
does not substitute for evidence lacking in the record. Estee Lauder, Inc. v.
L 'Orea!, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997).
Appellants also argue that structure 24 of Berg is a rod, and not a
wire, and it would not be extending out as required by the claim. Appeal Br.
4; Reply Br. 2. While it appears to be correct that structure 24 is a rod, not a
wire as claimed, the Examiner found that the "proposed combination would
essentially modify the rod (24; or guide wire) of Berg to accommodate the
tether of Gordon. The guide wire of Berg is left extending out of the bone
and an anchor is implanted over it after threading of the suture." Ans. 3.
The Examiner's response is logical. There is no reason to eliminate the
guide wire because threading of the proximal anchor body is still necessary.
Moreover, even if a rod is recited in Berg, a wire is stiff like a rod and would
be functionally equivalent to the rod in Berg, and thus would constitute an
obvious variation.
For the foregoing reasons, the obviousness rejection of claim 10 is
affirmed. Claims 11-14 fall with claim 10 because separate arguments for
their patentability were not provided. See 37 C.F.R. § 41.37(c)(l)(iv).
REJECTION BASED ON BERG, GORDON, AND HIROTSUKA
Claim 1 7 depends from claim 10, and further recites that the "step of
implanting the distal suture anchor body into the bone comprises piercing
the bone to create a bone hole via a distal awl tip on the distal suture anchor
body." The Examiner cited Hirotsuka as teaching "a pointed tip (6304) on a
distal suture anchor body in order to pierce bone (paragraph 0199)." Final
Act. 4. The Examiner determined it would have been obvious to one of
ordinary skill in the art "to have provided a pointed awl tip on the distal
suture anchor body of Berg and pierced bone as claimed in order to better
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Application 13/249,941
secure the distal suture anchor body in the pre-drilled hole prior to
placement of the proximal suture anchor body." Id.
Appellants contends that paragraph 199 of Hirotsuka "makes no
mention of piercing bone or an awl tip and instead speaks to a pre-drilled
bone hole" and that "there is no reason for piercing bone if implanting into a
pre-drilled bone hole," "notwithstanding that 6304 is not an awl tip for
piercing bone." Appeal Br. 4.
Appellants' arguments do not persuade us that the Examiner erred.
Paragraph 199 of Hirotsuka teaches that anchor 6304 comprises "a pointed
distal tip 6306 for piercing tissue such as bone, or for directing and centering
the lower anchor 6306 into a predrilled hole in bone." See also Hirotsuka,
Figs. 25A, 25B. Thus, contrary to Appellants' contention, there is explicit
disclosure in Hirotsuka of piercing bone with a pointed tip of a suture anchor
to place it into a predrilled hole. Appellants have not provide evidence that
the claimed "awl tip" is different from the "pointed distal tip" as described in
Hirotsuka. Consequently, the rejection of claim 17 is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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