Ex Parte Gerber et al

Patent Trial and Appeal Board

Nov 15, 2017

11679446 (P.T.A.B. Nov. 15, 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.
11/679,446 02/27/2007 Christian Gerber 02581-P0907A 3573
131672 7590 11/16/2017
Whitmyer IP Group LLC
600 Summer Street
3rd Floor
Stamford, CT 06901
EXAMINER
TEMPLETON, CHRISTOPHER L
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
11/16/2017 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 CHRISTIAN GERBER, DOMINIK MEYER, and
SASCHA BERBERICH
____________________

Appeal 2015-007915
Application 11/679,446
Technology Center 3700
____________________

Before LYNNE H. BROWNE, JILL D. HILL, and NATHAN A. ENGELS,
Administrative Patent Judges.

ENGELS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 18–27. Claims 1–17 are canceled. We have jurisdiction under 35
U.S.C. § 6(b). Appellants’ representative presented oral arguments on
October 24, 2017.
We affirm.
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ILLUSTRATIVE CLAIM
Appellants’ invention is directed to anchor element for knotless fixing
of tissue to a bone. Abstract. Claims 18, 23, and 27 are independent claims.
Claim 18, reproduced below, is illustrative of the claimed subject matter:
18. An anchor element for knotless fixing of a tissue to a bone
by means of at least one suture threaded through said anchor
element, comprising:
a body having an outer face,
projections projecting from said outer face for preventing
removal of said anchor element when inserted in the bone,
a distal end section of said body being rounded,
a transverse bore arranged in said distal end section of said
body, said transverse bore extending through said body, and
adapted to receive at least one suture completely through said
body,
and an axial bore, said axial bore opening into said
transverse bore and extending from a proximal end of said body
up to said transverse bore, said axial bore having an inner thread;
said transverse bore and said axial bore being positioned
perpendicular to one another; and
an axially extending pin having an outer thread meshing
with said inner thread and being housed axially movable in said
axial bore, an outer diameter of said pin corresponding to an
inner diameter of said axial bore, said pin, when turned in,
adapted to move in a direction towards the transverse bore and
into the latter, said pin having a distal end configured to clamp
the at least one suture inserted through said transverse bore
against a distal wall of said transverse bore;
said pin being longer in an axial direction than in a
transverse direction.

THE REJECTIONS
Claims 18–22 and 27 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of the combined teachings of Dinsdale (US 5,733,307;
issued Mar. 31, 1998), Fanton et al. (U.S. Publication No. 2005/0245932
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A1; published Nov. 3, 2005), and Thein (US 5,356,435; issued Oct. 18,
1994).
Claims 18–22 and 27 additionally stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable in view of the combined teachings of Cerier
et al. (US 5,100,417; issued Mar. 31, 1992), Fanton, and Thein.
Claims 23–26 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of the combined teachings of Dinsdale, Fanton, Thein,
and Gellman et al. (US 6,575,987 B2; issued June 10, 2003).
Claims 23–26 additionally stand rejected under 35 U.S.C. § 103(a) as
being unpatentable in view of the combined teachings of Cerier, Fanton,
Thein, and Gellman.

ANALYSIS
The Examiner finds each of Dinsdale and Cerier discloses an
apparatus and method for securing soft tissue to bone using an anchor
element that has a transverse bore. Final Act. 2–3. The Examiner notes,
however, that neither Dinsdale nor Cerier disclose the claimed axial bore
(Final Act. 2–3), and the Examiner’s rejections cite Fanton as teaching an
anchor element having an axial bore opening into a transverse bore (Final
Act. 3) and Thein as teaching a pin being longer in the axial direction than in
the transverse direction for insertion through an axial bore into a transverse
bore (Final Act.4).
Without addressing individual claims and without identifying any
limitations missing from the collective disclosures of the cited prior art,
Appellants point to differences between Appellants’ invention and each of
Dinsdale, Cerier, Fanton, Thein, and Gellman in arguing that the claimed
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invention is “novel” over each reference. Appeal Br. 7–14. In particular,
central to Appellants’ arguments is the fact that each of Dinsdale and Cerier
discloses anchor elements that require tying knots in sutures to secure tissue
to bone, as opposed to the Appellants’ knotless anchor, among other
differences. See Appeal Br. 7–10. As an initial matter, Appellants’
arguments directed to differences between the claimed invention and the
prior art references individually do not establish error in the Examiner’s
rejections, which turn on the collective teachings of the prior art. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (one cannot show non-obviousness
by attacking references individually; “the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art”).
Appellants additionally argue the use of knotted sutures to secure soft
tissue to bone is the intended purpose of, and a principle of operation of
Dinsdale (Appeal Br. 14; Reply Br. 2) and Cerier (Appeal Br. 14; Reply Br.
4–5) and that the Examiner’s combinations of references are improper
(Appeal Br. 14–21; Reply Br. 2–5). Specifically, Appellants first argue that
because neither Dinsdale nor Cerier discloses knotless-anchoring
technology, modifying the references for use with knotless-anchoring
technology would have changed the principle of operation of each reference.
Appeal Br. 14. Further, Appellants argue that because Dinsdale or Cerier
lack the structural elements required for a knotless procedure, the references
would have required substantial changes to essentially the entire inner
structure of the references’ anchor elements to arrive at the claimed
invention. Appeal Br. 15–16; Reply Br. 5. Further still, Appellants argue
there would have been no motivation for a person of ordinary skill to make
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the proposed modifications because (i) Dinsdale and Cerier describe
securing a suture with a knot and (ii) the proposed modifications would
render Dinsdale and Cerier inoperable for their intended purposes. Appeal
Br. 16.
The Examiner responds that Dinsdale’s and Cerier’s anchor elements
operate by being screwed into bone with a suture securing soft tissue. Ans.
7. The Examiner explains, and we agree, that a modified, knotless version
of Dinsdale’s or Cerier’s anchors would also screw into bone with a suture
securing soft tissue. Ans. 7. Accordingly, the intended purpose of the
references is, e.g., attaching tissue to bone, and the principle of operation is,
e.g., using an anchor to attach tissue to bone. We disagree with Appellants
that modifying Dinsdale or Cerier from knotted-anchoring technology to its
known alternative of knotless anchors (see Spec. 2–3 (recognizing knotless
anchors as an alternative to anchors that require knotted sutures)) would
change the principle of operation of either reference. See In re Mouttet, 686
F.3d 1322, 1332 (Fed. Cir. 2012) (finding that replacing optical components
with electrical ones did not change a programmable arithmetic processor’s
basic principle of operation).
Although Appellants are correct that the hypothetical modifications of
either Dinsdale or Cerier would require structural changes to the anchor
elements disclosed in each, the Examiner cites Fanton, Thein, and Gellman
as evidencing that such structures were known at the time of Appellants’
invention. See Final Act. 2–7; Ans. 3–5. In particular, as cited by the
Examiner, Fanton teaches an anchor element having an axial bore for
securing tissue to bone with a suture that does not require a knot (Final Act.
3), Thein teaches an elongated clamping element or pin (Final Act. 4), and
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Gellman teaches an anchor having a conical bore and an axially extending
conical pin (Final Act. 6).
Appellants acknowledge the teachings of a knotless anchor in Fanton
but argue that Fanton’s device may not effectively secure a suture. Appeal
Br. 10–11. Appellants provide the sketch copied below that purportedly
“illustrates the construction of Fanton as shown in Fig. 14A and Fig. 14B
with the teaching of para. [0156], i.e. that the flexible member 350 is
omitted.” Appeal Br. 10.

Appeal Br. 11 (Appellants’ sketch of Fanton’s Figures 14A and 14B
modified to depict embodiments that omit flexible member 350). Referring
to the sketch, according to Appellants, a suture would be free to slide into
the spaces beside the distal protrusion 362 such that “one practicing the
Fanton invention cannot assure that the suture will be clamped no matter
where it lies within the passage 352.” Appeal Br. 11.
We disagree with Appellants’ characterization of Fanton because, as
the Examiner explains (Ans. 4), Fanton specifically teaches using pin 360 to
pinch a suture, locking it in place (Fanton ¶ 156). Indeed, contrary to
Appellants’ arguments, Fanton specifically states that “threaded cap 360 will
directly pinch the suture in passage 352 to lock the suture in place” (Fanton
¶ 156), and we disagree with Appellants’ suggestion that a person of
ordinary skill applying the teachings of Fanton would produce an ineffective
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device as depicted by Appellants’ sketch. See KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of
ordinary creativity, not an automaton.”); cf. Fanton ¶ 154 (describing
impinging a suture disposed between passage 352 and flexible member 350
to effectively lock the suture in place). We also are not persuaded by
Appellants’ arguments that Fanton does not teach (i) a transverse bore or (ii)
a clamping element “being longer in an axial direction than in a transverse
direction” (Appeal Br. 10) because the Examiner relies on (i) either of
Dinsdale or Cerier for teachings regarding the transverse bore and (ii) Thein
for teaching a clamping element being longer in an axial direction than in a
transverse direction. Final Act. 2–5; Ans. 4–5.
Appellants additionally argue Thein is non-analogous art because
Thein describes using a pin, not a suture, to secure a ligament. Appeal Br.
13. Appellants further argue Thein teaches a lateral pin, not an axial pin as
claimed, such that a person of ordinary skill using the teachings of Thein to
modify Dinsdale, Cerier, or Fanton “would directly clamp a ligament with a
pin, wherein the ligament to be secured has to be inserted into an opening in
a bone.” Appeal Br. 13; see Reply Br. 3–4.
The Examiner responds, and we agree, that Thein’s teachings relate to
securing soft tissue to a bone using an anchor element such that Thein is
reasonably pertinent to the problem faced by the inventors. See Ans. 5.
Moreover, the Examiner cites Thein as evidencing known pins for use as
clamping elements; contrary to Appellants’ arguments, the Examiner’s
rejections do not envision bodily incorporation of Thein’s invention into the
teachings of Dinsdale, Cerier, or Fanton. See In re Mouttet, 686 F.3d 1322,
1332 (Fed. Cir. 2012) (citations omitted) (“It is well-established that a
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determination of obviousness based on teachings from multiple references
does not require an actual, physical substitution of elements.”); In re Nievelt,
482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references
does not involve an ability to combine their specific structures.”). To the
contrary, as explained by the Examiner, Fanton also discloses an axial pin,
and the Examiner’s rejection proposes modifying Fanton’s pin to be longer
in the axial direction than in the transverse direction. Final Act. 4–5.
Appellants similarly point to individual differences between Gellman
and the requirements of claim 23. See Appeal Br. 13–14, 18–19.
Specifically, although Appellants do not dispute the Examiner’s findings
that Gellman teaches a conical axial bore and a conical pin, Appellants argue
“Gellman does not teach the conical axial bore opening into a transverse
bore and extending from a proximal end of an anchor body up to the
transverse bore.” Appeal Br. 13–14. Again, though, individual differences
between the claimed invention and Gellman’s disclosure do not address
what the combined references would have taught or reasonably suggested to
a person of ordinary skill. See Final Act. 5–7; Ans. 10–12.
Finally, Appellants argue none of the references suggests the
combinations proposed by the Examiner and that the Examiner’s rejection
uses impermissible hindsight to select various features from the prior art to
arrive at the claimed invention. Appeal Br. 14–21. We disagree. Any
judgement of obviousness necessarily involves hindsight, and the
Examiner’s rejections evidence, and Appellants do not dispute, that each
element of Appellants’ claims was known in the art and would have been
combined according to its known function with predictable results. See
KSR, 550 US at 416 (“The combination of familiar elements according to
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known methods is likely to be obvious when it does no more than yield
predictable results.”). Further, the Examiner provides reasons for combining
the references that do not require knowledge gleaned only from Appellants’
disclosures. See Final Act. 4–7, 11–14; Ans. 5–9, 11–13Accordingly,
disagree with Appellants that the Examiner’s rejections employ
impermissible hindsight or that the Examiner has otherwise failed to
establish that the Appellants’ claims would have been obvious to a person of
ordinary skill.

DECISION
For the above reasons, we sustain the Examiner’s rejection of claims
18–27.
No time period for taking any subsequent action in connection with
this appeal may be extended. 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED