Ex Parte Henderson et al

Patent Trial and Appeal Board

Apr 13, 2016

13030900 (P.T.A.B. Apr. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/030,900 02/18/2011 James Henderson
32804 7590 04/15/2016
JOHNS, PRATT
KILPATRICK TOWNSEND & STOCKTON LLP (CANICA)
1100 PEACHTREE STREET
SUITE 2800
ATLANTA, GA 30309
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.
40198-415095 3673
EXAMINER
HOUSTON, ELIZABETH
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
04/15/2016 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):
ipefiling@kilpatrickstockton.com
j lhice@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES HENDERSON, MICHAEL T. O'MALLEY,
TIMOTHY MAXWELL, and BERT REITSMA
Appeal2013-006048
Application 13/030,900
Technology Center 3700
Before CHARLES N. GREENHUT, LYNNE H. BROWNE, and ERIC C.
JESCHKE, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
James Henderson et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner's decision rejecting claims 46-52. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2013-006048
Application 13/030,900
CLAIMED SUBJECT MATTER
The claims are directed to a button anchor system for moving tissue.
Claim 46, reproduced below, is illustrative of the claimed subject matter:
46. A method for moving and stretching plastic tissue
compnsmg:
(a) threading an elastic force applying component through
the skin and through muscle or fascia, the force applying
component exiting the skin on the opposite side of a wound or
mc1s10n;
(b) securing a first end of the force applying component to
a first anchor and securing a second end of the force applying
component to a second anchor without knotting or tearing the
force applying component; and
( c) adjusting tension by removing and re-securing the
force applying component to at least one of the first anchor or the
second anchor.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wagner
Wasson
Hasson
Broome
Colvin
us 3,454,011
us 3,762,418
us 3,926,193
us 5,009,663
us 6,066, 160
REJECTIONS
July 8, 1969
Oct. 2, 1973
Dec. 16, 1975
Apr. 23, 1991
May 23, 2000
I. Claims 46, 48, and 50 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Broome, Wagner, and Colvin.
II. Claim 47 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Broome, Wagner, Colvin, and Wasson.
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Application 13/030,900
III. Claims 49, 51, and 52 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Broome, Wagner, Colvin, and
Hasson.
DISCUSSION
Rejection I
Claims 46 and 48
Appellants argue claims 46 and 48 together. Appeal Br. 3. We select
independent claim 46 as the representative claim, and claim 48 stands or
falls with claim 46.
The Examiner finds that the combined teachings of Broome, Wagner,
and Colvin disclose or suggest each and every limitation of claim 46. See
Final Act. 3--4. The Examiner finds that:
Broom[ e] discloses a method for moving and stretching
plastic tissue comprising threading a force applying component
(suture S) through the tissues 1,2, the suture exiting the skin on
'1 • ' • 1 ,.. 1 • / T"""'I. -1 '\. •
tne opposne s10e or a wouna or mc1s10n ~see t<1g. iJ; secunng a
first end Sa of the suture to a first anchor 3 and securing a second
end Sc of the suture to a second anchor 4 without knotting or
tearing the suture and adjusting tension by pulling the suture
through the anchor.
Final Act. 3.
The Examiner determines that "Broome is silent with regards to the
suture being elastic, and the step of adjusting the tension by removing and
re-securing the suture to either anchor." Id. The Examiner finds that
"Wagner discloses a suture made of highly elastic materials." Id. (citing
Wagner, 1 :67-70). The Examiner further finds that Wagner explains that
"[ t ]he use of an elastic suture allows for the suture to expand and contract
with the swelling of the tissue, which would prevent the ripping, tearing or
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Application 13/030,900
cutting of the tissue. Id. (citing Wagner, 2:6-15). In addition, the Examiner
finds that "Colvin discloses an anchor 10 for use with a suture." Id. at 3--4.
The Examiner further finds that Colvin explains that "[t]he anchor allows a
surgeon to remove the suture from the anchor to loosen the tension and to
reposition the suture to provide a different tension." Id. at 4 (citing Colvin,
9:31--42).
Missing Elements
Appellants argue that "none of Broom[e], Wagner, or Colvin discloses
or suggests securing the first and second ends of the elastic force applying
component to the first and second anchors without knotting or tearing the
elastic force applying component." Appeal Br. 4. Thus, it appears that
Appellants understand the rejection to rely on one of these references in
isolation to meet the limitations requiring that the force applying component
be elastic and that the ends of the force applying component be secured to
their respective anchors "without knotting or tearing the force applying
component." Appeal Br. 18.
Appellants mischaracterize the rejection. As discussed supra, the
rejection relies upon the combined teachings of Broome, Wagner, and
Colvin to meet these limitations. Nonobviousness cannot be established by
attacking the references individually when the rejection is predicated upon a
combination of prior art disclosures. See In re Merck & Co. 800 F .2d 1091,
1097 (Fed. Cir. 1986).
Again mischaracterizing the rejection, Appellants contend that " [ t ]he
Final Office Action appears to confuse two distinct concepts: (1) prevention
of ripping or tearing of bodily tissue and (2) securing an elastic component
without knotting or tearing the elastic component." Appeal Br. 5. However,
it appears that Appellants misunderstand the rejection. The rejection does
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Application 13/030,900
not rely on Wagner to teach securing an elastic component without knotting
or tearing the force applying component. See Final Act. 3--4. Rather, the
rejection relies on Broome to meet this limitation. Id. The Examiner refers
to Wagner's discussion of the advantageous properties of elastic sutures to
provide reasons for modifying Broome's method to use elastic sutures. Id.
at 3.
Appellants further argue that "[a ]ny combination of Broom[ e] and
Colvin is improper because Colvin only describes securing and positioning a
'standard suture' (Colvin, 8: 1 ), not an elastic force applying component as
recited in claim 46." Appeal Br. 6.
Appellants' argument is not responsive to the rejection, because it
ignores Wagner's teaching of an elastic suture. Further, Appellants do not
explain why Colvin's securing structure would not work equally well with
elastic and non-elastic sutures. Thus, Appellants fail to apprise us of error.
In addition, Appellants argue that "Colvin does not describe or
suggest securing or tensioning a force applying component within first and
second anchors." Id. Again, Appellants' argument is not responsive to the
rejection, which relies upon the combined teachings of Broome and Colvin,
to meet these limitations. Thus, Appellants fail to apprise us of error.
In the Reply Brief, Appellants further argue that the Examiner's
construction of the claim language "without knotting or tearing" on page 4
of the Answer is incorrect. See Reply Br. 21. Although, we agree that the
Examiner's proposed claim construction on page 4 of the Answer is overly
broad, this is an alternative to the construction relied upon to reject claim 46
(See Final Act. 3--4), which arose in response to Appellants'
misunderstanding of the rejection discussed supra. As explained above, the
rejection relies upon Broome's teaching of securing the ends of the force
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Application 13/030,900
applying components "without knotting or tearing." Thus, Appellants do not
apprise us of error.
Teaching Away
Noting that Wagner "teaches that '[s]pandex fibers have also been
found to possess excellent knot properties such as ease of formation, small
size, and knot-holding capability not found in other known suture materials,
especially among the synthetic fibers,"' and that "the 'knot technic [sic] was
facilitated because of the softness and elasticity of the spandex material,'
whereas there is a 'marked tendency' of knots in other known sutures 'to
open because of the inherent stiffness of the respective fibers,"' Appeal Br. 8
(citations omitted), Appellants contend that Wagner teaches away from the
proposed combination.
Appellants' argument is unconvincing because "teaching away"
requires that the reference "criticize, discredit, or otherwise discourage" the
use of other alternatives. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004). Here, the portions of Wagner cited by Appellants do not appear to
criticize, discredit, or otherwise discourage the use of spandex fibers (i.e.
elastic fibers) for sutures. Moreover, these portions make no mention of the
use of anchors. Wagner explicitly explains why the substitution of elastic
sutures for known sutures is advantageous. See, e.g., Wagner, 2:25-29.
Rather than teach away from the proposed combination, Wagner suggests
the proposed combination. Thus, Appellants do not apprise us of error.
Unsatisfactory for Intended Purpose
Noting that Wagner "teaches tying the elastic force applying
component into knots to secure it," whereas "Broome teaches securing the
(non-elastic) ordinary suture by sewing it through two rods," Appellants
argue that "[t]hese two principles of operation (tying knots v. not tying
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Application 13/030,900
knots) are 'antithetical,' and under Uniroyal[, Inc. v. Rudkin-Wiley Corp.,
837 F.2d 1044 (Fed. Cir. 1988)], it is improper to combine the references."
Appeal Br. 9 (citations and emphasis omitted).
Appellants' argument is not responsive to the rejection as articulated
by the Examiner. The rejection does not propose knotting the force applying
component. See Final Act. 3--4. As discussed supra, Wagner is only relied
upon to teach an elastic suture. In the proposed modification the intended
purpose and principle of operation of Broome' s device does not change.
Thus, Appellants' argument is unconvincing.
New Arguments
In the remainder of the Reply Brief, Appellants raise new arguments
that are not responsive to an argument raised in the Answer. See Reply Br.
4--21. In accordance with 37 C.F.R. § 41.41 (b)(2), absent a showing of
good cause, we do not consider the arguments raised in the Reply Brief that
are not responsive to an argument raised in the Answer.
For these reasons, we sustain the Examiner's decision rejecting
independent claim 46, and claim 48, which depends therefrom.
Claim 50
Appellants' arguments with respect to claim 50 are essentially the
same as the arguments regarding claims 46 and 48. These arguments are not
convincing for the reasons discussed supra.
We sustain the Examiner's decision rejecting claim 50.
Rejections II and III
Claims 47, 49, 51, and 52
Appellants do not present separate arguments for the grounds of
rejection set forth in Rejections II and III. Instead, Appellants rely on the
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arguments presented for independent claims 46 and 50. As discussed supra,
these arguments are unconvincing.
We sustain the Examiner's decisions rejecting claims 47, 49, 51, and
52.
DECISION
The Examiner's rejections of claims 46-52 are AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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