Ex Parte EUTENEUER et al

Patent Trials and Appeals Board

Mar 4, 2019

14798921 - (D) (P.T.A.B. Mar. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/798,921 07/14/2015
159934 7590 03/06/2019
SEAGER, TUFTE & WICKHEM LLP
100 South Fifth Street, Suite 600
Minneapolis, MN 55402
FIRST NAMED INVENTOR
CHARLESL.EUTENEUER
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.
1383.1007103 2117
EXAMINER
SNOW, BRUCE EDWARD
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
03/06/2019 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):
smith-nephew _pair@firsttofile.com
gen.uspto@stwiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES L. EUTENEUER,
THOMAS R. HEKTNER, THOMAS A. WESTLING,
REBECCA MCCARVILLE, and DUANE FRION
Appeal2018-005734
Application 14/798,921 1
Technology Center 3700
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's rejection of claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
1 According to Appellants, the "real party in interest is ... Rotation Medical,
Inc." Appeal Br. 3.
Appeal2018-005734
Application 14/798,921
According to Appellants, "the ... invention relates to ... delivery and
fixation of sheet-like implants, such as for treating articulating joints." Spec.
,r 2. Claims 1, 11, and 17 are the independent claims on appeal. Below, we
reproduce claim 1 as illustrative of the appealed claims.
1. A method of implanting an implant in a shoulder region of
a patient comprising:
inserting a distal end of an implant delivery device into a
shoulder region of the patient proximate a supraspinatus muscle,
the implant delivery device comprising:
a sheath defining a lumen; and
an implant disposed within the lumen of the sheath;
transitioning the implant from an undeployed state within
the sheath to a deployed state outside of the sheath;
positioning the implant over a partial thickness tear of a
supraspinatus tendon of the patient;
attaching the implant to the supraspinatus tendon of the
patient while the implant is positioned over the partial thickness
tear of the supraspinatus tendon of the patient.
REJECTION AND PRIOR ART
The Examiner rejects claims 1-20 under 35 U.S.C. § I03(a) as
unpatentable over Zannis et al. (US 2004/0267277 Al, published Dec. 30,
2004). 2
2 The Examiner indicates that teachings in Zannis are "[ e ]videnced by
Trenhaile ([US] 2009/0156997 [Al, published June 18, 2009]),
Jamiolkowski et al[.] ([US] 2005/0113938 [Al, published May 26, 2005])[,]
and Derwin et al[.] ([US] 8,080,260 [B2, issued Dec. 20, 2011])."
Answer 2.
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Appeal2018-005734
Application 14/798,921
ANALYSIS
As set forth above, independent claim 1 recites, in relevant part,
"positioning the implant over a partial thickness tear of a supraspinatus
tendon." Appeal Br., Claims App. (emphasis added). The Examiner finds
that Zannis discloses using an implant to repair a tendon while the tendon is
partially tom, as opposed to treating the tendon after completely separating
the tendon, because Zannis's background section states that "[w]here one of
the tendons is thin, delaminated[,] or frayed to the point that surgical repair
or reconstruction is necessary, the damaged tendon can be reinforced with
graft tissue or with an orthopaedic implant." Answer 3, citing Zannis ,r 11.
"The [E]xaminer interprets 'where one of the tendon[ s] is thin,
delaminated[,] or frayed' as a partial thickness tear" (Answer 3 (emphasis
omitted)), consistent with Appellants' Specification, which states that
"[ d]amaged portion 140 includes ... tear 142 extending partially through
tendon 22. Tear 142 may be referred to as a partial thickness tear.
Tendon 22 of F[igure] 2 has become frayed" (id. at 10, citing Spec. ,r 31
(underlining omitted)). Based on our review of the record, the Examiner's
finding is not supported adequately, however.
Specifically, even assuming arguendo that Zannis' s background
discusses another known treatment procedure that uses an implant to repair a
tendon while the tendon is partially tom, it is not clear that Zannis itself uses
an implant to repair a partially-tom tendon. As Appellants point out, it
appears that "Zannis at Figures 33 and 34 ... discloses ... [tendon repair]
after fully tearing the thin, delaminated, or frayed tendon." Appeal Br. 14--
15 ( emphasis added). Such treatment, according to the Declaration of Craig
L. Van Kampen, is consistent with one of "only [two] medically[-]acceptable
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Appeal2018-005734
Application 14/798,921
surgical procedures for treating partial thickness tears of a supraspinatus
tendon" in use at the time Appellants filed the application, the procedure
being "a completion of [the] tear, followed by [a] standard rotator cuff repair
procedure." Declaration of Craig L. Van Kampen ,r 8.
Alternately, the Examiner finds that "[i]t would have been obvious ...
to have ... repaired a partial thickness tear by positioning an implant over
and secured to the partial thickness tear ... [, as e ]videnced by
Jamiolkowski ... [F]igure[s] 8 [and] 9[,] and par[agraphs] 0086
[and] 0087." Answer 3. The Examiner's finding is not supported
adequately, however. As Appellants point out, "Jamiolkowsi appears to
disclose placing ... implant 60 over ... lesion 54. Even if we assume ...
lesion 54 is a tear, ... such a tear is clearly a full-thickness tear as seen in
Figures 8 and 9 ( e.g., see the bone through ... lesion 54)." Reply Br. 4.
Further, the cited paragraphs of Jamiolkowski do not describe repair of a
tendon while partially tom.
Thus, based on the above, we do not sustain the Examiner's
obviousness rejection of claim 1. We also do not sustain the rejection of
independent claims 11 and 1 7 that include similar recitations, and which the
Examiner rejects based on a similar rationale. Further, do not sustain the
rejection of claims 2-10, 12-16, and 18-20 that depend from the
independent claims.
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Appeal2018-005734
Application 14/798,921
DECISION
We REVERSE the Examiner's obviousness rejection of claims 1-20.
REVERSED
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