Ex Parte FriggDownload PDFPatent Trial and Appeal BoardMar 16, 201713221577 (P.T.A.B. Mar. 16, 2017) Copy Citation 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 Appeal Br. 2. 2 Claims 3, 4, and 9 are canceled, and claims 14-22 and 26-33 are withdrawn from consideration.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 Copy with citationCopy as parenthetical citation