Ex Parte Frigg

Patent Trial and Appeal Board

Mar 16, 2017

13221577 (P.T.A.B. Mar. 16, 2017)

United States Patent and Trademark Office
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.
13/221,577 08/30/2011 Robert FRIGG 10139/23502 (T01156US1) 3770
76960 7590
Fay Kaplun & Marcin, LLP
150 Broadway, suite 702
New York, NY 10038
03/16/2017 EXAMINER
KU, SI MING
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
03/16/2017 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 ROBERT FRIGG
Appeal 2015-005039
Application 13/221,577
Technology Center 3700
Before LINDA E. HORNER, THOMAS F. SMEGAL, and
ERIC C. JESCHKE, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Robert Frigg (Appellant)1 seeks our review under 35 U.S.C. § 134 of
the Examiner’s decision, as set forth in the Final Office Action, dated May
29, 2014 (“Final Act.”), rejecting claims 1, 2, 5-8, 10-13, and 23-25.2 We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant identifies DePuy Synthes Products, LLC, a subsidiary of
Johnson & Johnson, Inc., as the real party in interest. Appeal Br. 2.
2 Claims 3, 4, and 9 are canceled, and claims 14-22 and 26-33 are
withdrawn from consideration. Final Act. 2.
Appeal 2015-005039
Application 13/221,577
CLAIMED SUBJECT MATTER
Appellant’s claimed subject matter relates to “a device for anchoring a
suture.” Spec., para. 2. Claims 1 and 23 are independent. Claim 1 is
illustrative of the subject matter on appeal and is reproduced below.
1. A device for anchoring a suture to a bone,
comprising:
a suture engaged with an elastically deformable ring
biased toward an unstressed state in which the ring has an outer
diameter of D, the ring being compressible for insertion through
a hole in a bone stabilization device having a diameter smaller
than the outer diameter (D) of the ring, and
a drill bit extending along a longitudinal axis from a boring
distal point to a proximal portion coupled to the ring, wherein a
diameter d of the drill bit is smaller than the outer diameter D of
the ring in the unstressed state.
REJECTIONS
The Final Action includes the following grounds of rejection:
1. Claims 1, 2, 5-7, and 10-13 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Stone (US 5,824,011, issued October 20,
1998) and McIntosh (US 881,819, issued March 10, 1908).
2. Claim 8 is rejected under 35 U.S.C. § 103(a) unpatentable over
Stone, McIntosh, and Gilete Garcia (US 2011/0022098 Al,
published January 27, 2011).
3. Claims 23-25 are rejected under 35 U.S.C. § 103(a) unpatentable
over Stone, McIntosh, and Wenstrom, Jr. (US 5,662,658, issued
September 2, 1997).
2
Appeal 2015-005039
Application 13/221,577
ANALYSIS
First Ground of Rejection
Independent claim 1 recites a device for anchoring a suture to a bone
comprising, in relevant part, a “suture engaged with an elastically
deformable ring” and “a drill bit extending along a longitudinal axis from a
bore distal point to a proximal portion coupled to the ring.” Appeal Br. 20
(Claims App.). The Examiner finds that Stone discloses a device for
anchoring a suture to a bone substantially as recited in claim 1, except that it
“lacks the suture engaged with ... an elastically deformable ring biased
toward an unstressed state in which the ring has an outer diameter of D, the
ring being compressible.” Final Act. 2-3 (citing Stone, Fig. 1). The
Examiner finds that McIntosh teaches “a device (7) having an elastically
deformable ring (9) biased toward an unstressed state in which the ring (9)
has an outer diameter of D . . . and the ring being compressible.” Id. at 3
(citing McIntosh, Figs. 3, 4, col. 1,11. 16-25, col. 2,11. 70-104). The
Examiner determines it would have been obvious to one of ordinary skill in
the art “to modify Stone’s device with an elastically deformable ring
disposed within an opening as taught by McIntosh, since such a modification
would automatically lock the fastener in place, thus providing additional
securement of the device to a working material.” Id. The Examiner further
clarifies in the Examiner’s Answer that “the Examiner modified Stone’s
distal tip region with the elastically deformable ring located at the distal tip
region as shown in figures 3 and 4 of McIntosh.” Ans. 5.
3
Appeal 2015-005039
Application 13/221,577
Appellant contends that “[t]he proposed modification adds a ring to . .
. Stone’s distal tip region, which is opposite the ‘proximal portion coupled to
the ring’ recited in Appellant’s claim 1.” Reply Br. 4. Appellant argues “the
proposed modification in no way teaches or suggests any interaction
between the suture 30 and the added ring, much less ‘a suture engaged with
an elastically deformable ring,’ as recited in claim 1.” Id.
McIntosh teaches a bolt 7 with means for automatically locking the
bolt to connect two members together and designed to take the place of an
ordinary bolt and locking cotter inserted in the end thereof. McIntosh,
col. 1,11. 16-17, 26-28, col. 2,11. 70-71. Bolt 7 is provided at one extremity
with a web 8 that is formed to receive a spring 9. Id. at col. 2,11. 71-76.
Bolt 7 is provided at the other extremity with a bolt head. Id. at Fig. 1.
During insertion of the bolt through openings in the two members to be
joined, the walls in the openings engage opposite sides of the spring and
force the sides inwardly. Id. at col. 2,11. 90-100, Fig. 4. As soon as the bolt
is fully inserted through the openings, the spring resumes its normal
position, thus locking the bolt securely in place. Id. at col. 2,11. 100-104,
Fig. 1. According to the Examiner, the teaching of McIntosh to place spring
9 in the distal portion of bolt 7 (i.e., on the end opposite the head of bolt 7)
would have suggested to one having ordinary skill in the art, to add a spring
in the distal end of threaded anchor portion 14 (i.e., on the end opposite the
shoulder 17 of cylindrical member 12). Ans. 5.
Although the Examiner’s proposed modification of Stone to add a ring
to the “distal tip region” might result in the ring being located proximal to
4
Appeal 2015-005039
Application 13/221,577
the boring distal point of Stone’s drill bit, and thereby result in the ring being
disposed in a “proximal portion” of the drill bit relative to the distal point,
we fail to understand how the Examiner’s proposed modification would
result in “a suture engaged with an elastically deformable ring” as recited in
claim 1. Rather, the sutures of Stone are located in the eyelet 18 of
suture/drive portion 16 at the proximal end of Stone’s drill bit 10. We agree
with Appellant that the Examiner’s proposed modification of Stone to add
the ring 9 of McIntosh in the distal portion of Stone’s drill bit would not
result in “any interaction between the suture 30 and the added ring.” Reply
Br. 4.
The Examiner states that “the term ‘engaging with’ is defined as
‘occupy, attract, or involve’ by Oxford Dictionaries.” Final Act. 12
(Examiner noting that “applicant has not claimed direct contact between the
ring and the suture”). The Examiner’s interpretation is unreasonably broad
when the claim language is construed in the context of Appellant’s
Specification. The Patent and Trademark Office (“PTO”) determines the
scope of claims in patent applications not solely on the basis of the claim
language, but upon giving claims their broadest reasonable construction “in
light of the specification as it would be interpreted by one of ordinary skill in
the art.” In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).
The on-line Oxford English Dictionary contains several relevant
definitions of “engage,” including: “([0]f a portion of machinery, as a cog­
wheel, etc.: To interlock with, fit into a corresponding part.”)
5
Appeal 2015-005039
Application 13/221,577
http://www.oed.com/view/Entry/62192?rskey=U028zf&result=3#eid
(definition 11 .c). Further, the definition cited by the Examiner from the on­
line Oxford Dictionaries, reads in full, “Occupy, attract, or involve
(someone’s interest or attention).” https://en.oxforddictionaries.com/
defmition/us/engage (definition 1). As such, the Examiner has selected a
definition of “engage” relating to engaging a person’s interest or attention
that is not pertinent to the mechanical context in which the term is used
within the claimed invention. More relevant to our inquiry, the definition of
“engage” provided from this same source “with reference to a part of a
machine or engine” is “move into position so as to come into operation.” Id.
(definition 4).
Further, Appellant describes in the Summary of the Claimed Subject
Matter portion of the Appeal Brief that “[t]he device 100, 200 comprises a
suture 114 engaged with an elastically deformable ring 104 biased toward an
unstressed state in which the ring 104 has an outer diameter of D.” Appeal
Br. 2 (citing Spec, paras. 7-8, 11-13, 26-27, 30, Figs. 1-5, and 11-12). We
note that despite reference in the Summary of Claimed Subject Matter to
device 200 of Figures 4 and 5, the cited paragraphs of the Specification
discuss only device 100 of Figures 1 through 3, as further shown in Figures
11 and 12. Specifically, the Specification describes, with reference to
Figures 1 through 3, “[t]he device 100 further comprises a suture 114 which
may be looped over the ring 104 prior to insertion of the device 100 into a
body, as will be described in greater detail hereinafter.” Spec., para. 26
6
Appeal 2015-005039
Application 13/221,577
(emphasis added). By contrast, the Specification describes, with reference to
Figures 4 through 6, no interaction between suture 114 and ring 104:
The device 200 differs from the device 100 in that an additional
through opening 218 is provided between the transverse opening
110 and proximal end 106 of the drill bit 102. The through
opening 218 extends substantially orthogonally to the central
axis 105 of the drill bit 102 and transverse to the transverse
opening 110 so that the suture 114 passing through the through
opening 218 does not interfere with the ring 104.
Spec. para. 28 (emphasis added).
The ordinary meaning of “engage” as meaning to interlock or move
into position so as to come into operation is consistent with the description
of device 100 in the Specification in which the suture 114 is “looped over”
ring 104. We interpret “engaged with” when given its broadest reasonable
construction in light of the Specification as it would be interpreted by one of
ordinary skill in the art to mean that the suture interlocks or operates with
the ring.
The Examiner has not explained adequately how the sutures 30 of
Stone, which are looped through eyelet 18 of suture/drive portion 16, would
engage with a ring disposed in the distal portion of drill bit 10, as proposed
by the Examiner. Reply Br. 4 (Appellant arguing that “there is no
reasonable interpretation of the term ‘engaged’ that would encompass the
suture 30 and ring being positioned at opposite ends and having no
interaction with each other.”).
7
Appeal 2015-005039
Application 13/221,577
For these reasons, we do not sustain the rejection of independent
claim 1 and its dependent claims 2, 5-7, and 10-13 under 35 U.S.C. § 103(a)
as unpatentable over Stone and McIntosh.
Second Ground of Rejection
The second ground of rejection of dependent claim 8 relies on the
same proposed modification of Stone with the ring of McIntosh to render
obvious the claimed suture engaged with an elastically deformable ring.
Final Act. 7. For the same reasons discussed above with regard to the first
ground of rejection, we likewise do not sustain the rejection of claim 8 under
35 U.S.C. § 103(a) as unpatentable over Stone, McIntosh, and Gilete Garcia.
Third Ground of Rejection
Independent claim 23, similar to claim 1, recites “a suture engaged
with an elastically deformable ring” and “a drill bit extending along a
longitudinal axis from a boring distal point to a proximal portion coupled to
the ring.” Appeal Br. 23 (Claims App.). The Examiner’s rejection of claim
23 relies on the same proposed modification of Stone with the teaching of
McIntosh to render obvious these claim elements. Final Act. 8. For the
same reasons discussed above with regard to the first ground of rejection, we
find that this proposed modification does not render obvious the subject
matter of claim 23. Accordingly, we do not sustain the rejection of
independent claim 23 and its dependent claims 24 and 25 under 35 U.S.C.
§ 103(a) as unpatentable over Stone, McIntosh, and Wenstrom, Jr.
8
Appeal 2015-005039
Application 13/221,577
DECISION
The decision of the Examiner to reject claims 1, 2, 5-8, 10-13, and
23-25 is REVERSED.
REVERSED
9