Ex Parte Hayhurst

Board of Patent Appeals and Interferences

Sep 21, 2001

08423963 (B.P.A.I. Sep. 21, 2001)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN O. HAYHURST
____________
Appeal No. 1999-2728
Application No. 08/423,963
____________
ON BRIEF
____________
Before FRANKFORT, STAAB and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's refusal to
allow claims 1-11, which are all of the claims pending in this
application. Claim 6 was amended (Paper No. 23) subsequent to
the appeal brief.
BACKGROUND
The appellant's invention relates to an apparatus for
manipulating and anchoring cartilage and similar fibrous tissue
Appeal No. 1999-2728
Application No. 08/423,963
Page 2
1 The examiner’s omission of claims 9-11 in the statement of the
rejection on page 2 of the answer appears to us to have been an inadvertent
error.
within a joint (specification, p. 1). A copy of the claims under
appeal is set forth in the appendix filed with Paper No. 23.
The examiner relied upon the following prior art reference
of record in rejecting the appealed claims:
Smith 3,845,772 Nov. 5, 1974
The following rejection is before us for review.
Claims 1-11 stand rejected under 35 U.S.C. § 102(b) as being
unpatentable over Smith.1
Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellant regarding the above-noted
rejection, we make reference to the answer and preceding Office
action (Paper Nos. 17 and 14) for the examiner's complete
reasoning in support of the rejection and to the brief and reply
brief (Paper Nos. 16 and 18) for the appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied Smith reference, and to the respective
positions articulated by the appellant and the examiner. For the
reasons which follow, we cannot sustain the examiner's rejection.
Appeal No. 1999-2728
Application No. 08/423,963
Page 3
Smith discloses a retention suture and suture device
arrangement wherein a retention suture 35 is looped around an
incision 31 only in the muscle and fascial tissue layers 34 and
drawn up tightly through a tubular retention suture device 20 on
opposite sides of a dividing wall 24, with the ends 35a, 35b tied
in a knot 36 over a spindle element 25 located at the top end 22
of the device 20. See Figure 6 and col. 4, lines 5-47, of Smith.
It is the examiner's position that claims 1-11 are clearly
anticipated by Smith. In particular, the examiner considers the
device 20 to be an elongated anchor member as recited in claim 1.
The examiner contends that the suture 35 is "attached to the
anchor member between opposite ends of the anchor member" as also
recited in claim 1, "because the suture is inserted through the
retention member and [fastened] to it" and thus "is actually
attached to the retention element at any point" (answer, pp. 3-
4).
Like appellant, we observe that Smith's suture 35 is
attached to the device 20 only by means of the knot 36 tied to
the spindle 25 and that, when the suture is so attached, it lacks
"an end free for manipulating the tissue into which the anchor
member [device 20] is inserted," as required in claim 1. In any
event, the absence of a free end notwithstanding, the suture is
not capable of manipulating the tissue 32, 33 into which the
Appeal No. 1999-2728
Application No. 08/423,963
Page 4
2 Anticipation is established only when a single prior art reference
discloses, expressly or under the principles of inherency, each and every
element of a claimed invention. RCA Corp. v. Applied Digital Data Sys., Inc.,
730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984). In other words,
there must be no difference between the claimed invention and the reference
disclosure, as viewed by a person of ordinary skill in the field of the
invention. Scripps Clinic & Research Found. v. Genentech Inc., 927 F.2d 1565,
1576, 18 USPQ2d 1001, 1010 (Fed. Cir. 1991).
device 20 is inserted. Rather, only tissue beneath the device
20, around which the suture is looped, can be manipulated by the
suture 35. Moreover, we do not share the examiner's view that
the suture is attached between opposite ends of the anchor member
(device 20) simply because it is inserted through the device.
Contrary to the examiner's position, the suture is attached only
at one point, the spindle, which is located at one end of the
device 20, not between opposite ends of the anchor member as
recited in claim 1.
For the foregoing reasons, we conclude that independent
claim 1 is not anticipated2 by Smith. It follows that claims 2-
11, which depend from claim 1 and thus incorporate all of the
limitations thereof, are also not anticipated by Smith.
REMAND TO THE EXAMINER
This application is remanded to the examiner to consider the
patentability of the claims over U.S. Pat. No. 4,235,238 (Ogiu)
and International Patent Application Publication No. WO 87/01270
Appeal No. 1999-2728
Application No. 08/423,963
Page 5
3 These references were cited by appellant in Paper No. 9 and copies are
of record in the application file. The publication date of Richards is March
12, 1987, subsequent to the filing dates of the earliest three applications in
the continuity chain of the instant application. It thus follows that any
determination as to the patentability of the claims over Richards involves a
determination as to the effective filing date to which any such claim is
entitled under 35 U.S.C. § 120.
(Richards).3 With regard to Ogiu, we direct the examiner’s
attention to the suturing thread 9 and cylindrical stop 7, for
example. The surgical fastener of Richards, comprising filament
10 and head 15, discussed on pages 5-11 and illustrated in
Figures 1-6, appears pertinent to appellant’s claimed invention.
Appeal No. 1999-2728
Application No. 08/423,963
Page 6
CONCLUSION
To summarize, the decision of the examiner to reject claims
1-11 under 35 U.S.C. § 102(b) is reversed and the application is
remanded to the examiner for consideration of the above-mentioned
issues.
REVERSED AND REMANDED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 1999-2728
Application No. 08/423,963
Page 7
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