Ex Parte Hotter et al

Patent Trial and Appeal Board

Jul 18, 2016

12986203 (P.T.A.B. Jul. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/986,203 01107/2011
50855 7590 07/20/2016
Covidien LP
555 Long Wharf Drive
Mail Stop SN-I, Legal Department
New Haven, CT 06511
FIRST NAMED INVENTOR
Joseph Hotter
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.
H-US-02037 (203-7183) 5866
EXAMINER
LYNCH, ROBERT A
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
07/20/2016 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):
mail@cdfslaw.com
SurgicalUS@covidien.com
medtronic_mitg-si_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH HOTTER, JON REINPRECHT,
NORMAN AMINUDDIN, and JONATHAN THOMAS
Appeal2014-003696
Application 12/986,203
Technology Center 3700
Before: BRANDON J. WARNER, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner's final
rejection of claims 1-7 and 14--30. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM-IN-PART.
The claims are directed to implants including a yam. Spec. i-f 6.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
Appeal2014-003696
Application 12/986,203
1. An implant comprising:
a central portion composed of at least one yam
interconnected to form openings therein; and
a peripheral portion extending around the central portion,
the peripheral portion formed solely from at least one high
strength yam interconnected to form openings therein.
Appeal Br. 15 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Shikinami
Rabinowicz
Snijder
Ethicon1
Proxy2
Tyco3
us 5,711,960
US 2004/0009731 Al
US 2006/0014459 Al
EP 0 523 743 Bl
WO 2005/094 721 Al
WO 2006/102374 A2
Jan.27, 1998
Jan. 15,2004
Jan. 19,2006
July 7, 1992
Oct. 13, 2005
Sept. 28, 2006
1 Although the first-named inventor on this European patent is Mark Steckel,
the Examiner and Appellants refer to this reference by the name of the listed
proprietor, Ethicon Inc. ("Ethicon"). See, e.g., Final Act. 8; see also, e.g.,
Appeal Br. 3. We continue this practice for clarity.
2 Although the first-named inventor on this WIPO publication is Peter
Gingras, the Examiner refers to this reference by a shortened version of the
name of the listed applicant, Proxy Biomedical Limited ("Proxy"). See, e.g.,
Final Act. 2; see also, e.g., Appeal Br. 3. We continue this practice for
clarity.
3 Although the first-named inventor on this WIPO publication is Lesley
Fronio, the Examiner and Appellants refer to this reference by a shortened
version of the name of the listed applicant, Tyco Healthcare Group LP
("Tyco"). See, e.g., Final Act. 2; see also, e.g., Appeal Br. 3. We continue
this practice for clarity.
2
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Application 12/986,203
REJECTIONS
(I) Claims 1-3, 5-7, 14--16, 21, 22, and 25-27 are rejected under
35 U.S.C. § 103(a) as unpatentable over Tyco and Proxy.
(II) Claims 4, 17, and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tyco, Proxy, and Snijder.
(III) Claims 19, 20, and 24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tyco, Proxy, and Shikinami.
(IV) Claim 23 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Tyco, Proxy, and Ethicon.
(V) Claims 28-30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tyco, Proxy, and Rabinowicz.
OPINION
Rejection(!)
Claim 1
The Examiner finds that Tyco discloses most of the features required
by claim 1, but does not disclose a peripheral portion formed solely from at
least one high strength yam. Final Act. 4. Nonetheless, the Examiner finds
that "Proxy teaches a soft tissue implant or mesh (p. 4, paragraph 1)
comprising a peripheral portion including at least one higher strength yam in
order to improve the physical properties of this region by preventing pull out
and failure of fixation members (p. 27, paragraph 1)." Final Act. 4--5. The
Examiner reasons that it would have been obvious to provide the periphery
of the device of Tyco with a high strength yam because "it would provide
improved physical properties of this region by preventing pull out and
failure of fixation members, as taught by Proxy." Final Act. 5.
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Application 12/986,203
Appellants argue that "Proxy discloses achieving increased strength
by condensing or increasing the material content in part of the mesh, and not
by utilizing at least one high strength yam in his mesh." Appeal Br. 6
(referring to Proxy, 26:26-27:9). Therefore, according to Appellants,
"Proxy does not disclose or suggest, inter alia, a peripheral portion formed
solely from at least one high strength yam interconnected to form openings
therein, as recited in claim 1." Appeal Br. 6-7. Appellants further contend
that modifying Tyco in view of Proxy would not result in the device recited
in claim 1 because "[ c ]ombining the references would produce, at best, an
implant including the mesh of Tyco having condensed regions formed by the
method of Proxy." Appeal Br. 7.
We do not find Appellants' arguments to be persuasive. Although
Appellants quote a portion of Proxy discussing the strength of the material
used in Proxy's device (Appeal Br. 6 (quoting Proxy 26:26-27:9)),
Appellants do not explain persuasively why this portion of Proxy fails to
disclose a peripheral portion formed with high strength yam. Indeed, the
above-noted portion of Proxy states, "[t]he strength of material along the
peripheral edges (e.g., the tensile strength), or at other selected points within
the device, may be higher to improve the physical properties in this region
so that sutures or other fixation devices do not pull out and cause failure."
Proxy 27:4--7. Even assuming, for the purpose of argument, that the
increased strength discussed in the portion of Proxy quoted above is due to
condensing or increasing the material content in this part of the mesh,
Appellants do not explain persuasively why such condensed material (or
higher content of material) does not meet the requirement for high strength
yam. In this regard, we note that claim 1 does not limit how the "high"
strength in the yam is achieved, and Appellants do not explain persuasively
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Application 12/986,203
why condensed material or a higher content of material fails to qualify as
providing high strength yam. 4 Moreover, Proxy teaches that the tensile
strength of the material in the peripheral portion may be higher than other
portions of the device. See Proxy 27:4--7. Accordingly, a preponderance of
the evidence supports the Examiner's finding that Proxy teaches a peripheral
portion formed of high strength yam as required by claim 1, and we sustain
the Examiner's rejection of claim 1 as unpatentable over Tyco and Proxy.
Claim 3
Dependent claim 3 recites, "[ t ]he implant according to claim 1,
wherein the central portion is composed of at least two yams including at
least one primary yam and at least one high strength yam." Appeal Br. 15
(Claims App.). We construe this claim to require two yams of different
strengths composing the central portion. 5
The Examiner finds that Tyco discloses that its central portion "may
comprise at least two yams (p. 7, lines 13-16; p. 9, line 22-p. 10, line 1)
including at least one primary yam and at least one high strength
yarn/transverse member (76; p. 20, lines 17-23)." Final Act. 4.
Appellants argue that Tyco merely discloses two filaments, which do
not correspond to one high strength yam and one primary yam. Appeal Br.
8. We agree with Appellants on this point, inasmuch as the Examiner does
not identify any disclosure in Tyco supporting a finding that the two
filaments necessarily have different strengths.
4 For example, other factors being equal, a thicker of two ropes will have a
higher tensile strength than the other, even if the material of the two ropes is
identical.
5 Paragraph 55 of Appellants' Specification states, "[t]he high strength yams
are stronger than the primary yams used to construct the bulk of the mesh."
5
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As for transverse members 7 6 in Tyco, Appellants assert that these
members would not be understood by a person of skill in the art to be a high
strength yam.
In response, the Examiner states:
Tyco teaches (see Fig. 9b) transverse members 7 6 extending
across and within the central portion of the mesh to provide
added structural strength to the mesh implant (page 20, lines 21-
23). Such higher strength transverse members 76 may connect
and meet the outermost circumferential member 70 composed of
high strength material as taught by Proxy (see above) to comprise
at least one (i.e. one or more) high strength yam at the periphery.
Ans. 4 (emphasis added).
With regard to transverse members 7 6, the portion of Tyco cited by
the Examiner states:
The circumferential members can also be arranged to join
with one another in order to form an integral mesh.
Alternatively, the mesh may additionally comprise transverse
members which extend across the circumferential members
joining the circumferential members.
The transverse members may extend radially from a
central point to the perimeter of the implant. The transverse
members may be arranged to provide substantially even
structural strength and rigidity to the implant.
Tyco, 20: 17-23. Although Tyco discloses that the transverse members
provide substantially even structural strength, Tyco does not teach that the
members themselves have a different strength than yam in any other portion
of the mesh disclosed in Tyco, much less teach that the transverse members
have a different strength than another yam within the central portion, as the
claim requires. Accordingly, the Examiner's finding that Tyco discloses a
central portion composed of at least two yams including at least one primary
yam and at least one high strength yam is not supported by a preponderance
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Application 12/986,203
of the evidence. Further, the Examiner has not explained whether it would
have been obvious to provide two yams of different strength within the
central portion of the implant disclosed in Tyco. Accordingly, we do not
sustain the Examiner's rejection of claim 3 as unpatentable over Tyco and
Proxy.
Rejection (II)
Claim 4, 17, and 18
Dependent claim 4 recites, "[ t ]he implant according to claim 1,
wherein the at least one high strength yam has a tensile strength of at least 1
Gpa." Appeal Br. 15 (Claims App.). Dependent claims 17 and 18 recite,
respectively, "[t] he implant according to claim 1, wherein the at least one
high strength yam is a monofilament yam" and "[t]he implant according to
claim 1, wherein the at least one high strength yam is a multifilament yam."
Id. at 16.
The Examiner relies on Snijder to teach "a surgical soft tissue mesh
compnsmg a high strength yam having a tensile strength of at least l Gpa,"
monofilament yam, and multifilament yam. Final Act. 6. The Examiner
reasons that it would have been obvious to further modify the proposed
combination of Tyco and Proxy to have "a high strength yam having a
tensile strength of at least 1 Gpa and being either a monofilament yam or
multifilament yam as it would provide for high fatigue strength and either
improved resistance to infectious matter or a softer and more flexible mesh,
as taught by Snijder." Final Act. 6.
Appellants argue that the Examiner's rationale for further modifying
the proposed combination of Tyco and Proxy is deficient. Appeal Br. 9-10.
Specifically, Appellants state, "a person of ordinary skill in the art would not
have understood providing higher fatigue strength, improved resistance to
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Application 12/986,203
infectious matter, or a softer and more flexible mesh to be issues that
remained to be improved upon with respect to Proxy's implant." Appeal Br.
10. In this regard, Appellants contend that it would not have been obvious
to "modify the implant of Tyco in view of Proxy to improve characteristics
of the implant which have already been provided by the method of Proxy."
Appeal Br. 10.
In response, the Examiner states, "Snijder is cited as being a prior art
reference that teaches the benefits of incorporating such additional specific
tensile strengths and filamentary compositions to one of ordinary skill in the
art." Ans. 5.
We are not persuaded by Appellants' argument on this point. Snijder
suggests that higher tensile strengths in a surgical soft tissue mesh are
preferred. See Snijder i-f 11 (stating "[t]he mesh comprises polyethylene
yams having a tensile strength of more than 1.0 GP a, preferably more than
1.5, 2.0 or even more than 3.0 GPa"). Snijder also discusses the advantages
and disadvantages of each of monofilament and multifilament yam. Snijder
i-f 13. Thus, the Examiner's reasoning is supported by rational
underpinnings. Appellants do not explain persuasively why yam with a
tensile strength as taught by Snijder would not benefit the Examiner's
proposed combination of Tyco and Proxy. In this regard, we note that Proxy
recognizes the importance of tensile strength in affecting performance of its
soft tissue implant. See Proxy 27:4--7. Appellants identify no persuasive
evidence that the teachings of Tyco or Proxy in any way conflict with further
modifying the Examiner's proposed combination of Tyco and Proxy to
provide the yams having a tensile strength of more than 1.0 GPa and
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Application 12/986,203
monofilament or multifilament yam.6 Accordingly, we sustain the
Examiner's rejection of claims 4, 17, and 18 as unpatentable over Tyco,
Proxy, and Snijder.
Rejection (III)
Claim 19 recites, "[t ]he implant according to claim 1, wherein the at
least one high strength yam is composed of ultra high molecular weight
polyethylene." Appeal Br. 16. Claim 20 recites, "[t]he implant according to
claim 1, wherein the at least one high strength yam is composed of high
molecular weight polyethylene terephthalate." Id. Claim 24 recites, "[t]he
implant according to claim 22, wherein the non-absorbable core is ultra high
molecular weight polyethylene." Id. at 17.
The Examiner finds that Shikinami discloses
a woven or knitted implant material comprising polymer fiber
components that may be composed of ultra high molecular
weight polyethylene or high molecular weight polyethylene
terephthalate in order to provide a body implant material having
beneficial properties such as flexibility, abrasion resistance,
impact absorbability, and durability for either replacement or
substitution of soft tissue (Abstract; col. 2, lines 21-27).
Final Act. 7. The Examiner further states:
Therefore, it would have been obvious to one having ordinary
skill in the art at the time the invention was made to modify the
device of Tyco in view of Proxy to have at least one high strength
yam composed of ultra high molecular weight polyethylene or
high molecular weight polyethylene terephthalate and a non-
absorbable core comprising ultra high molecular weight
6 See Tyco 7: 13-19 (stating "[t]he strands of the wide-weave mesh may be
formed by at least two filaments, the major spaces formed between the
strands providing the surgical implant with the necessary strength, the
filaments arranged such that pores are formed in the strands themselves.
Alternatively the strands may be formed by monofilaments that are arranged
to form loops that give rise to the pores in the strands").
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polyethylene as it would provide for a body implant material
having beneficial properties such as flexibility, abrasion
resistance, impact absorbability, and durability for either
replacement or substitution of soft tissue, as taught by Shikinami.
Final Act. 7 (emphasis added).
Appellants argue that the Examiner's rationale for combining
Shikinami with the teachings of Tyco and Proxy is deficient. Appeal Br. 11.
Specifically, Appellants contend that "Proxy describes methods of making
soft tissue implants that have the 'beneficial properties' the Examiner asserts
would be provided by the teachings of Shikinami," and "a person of ordinary
skill in the art would not have understood providing an implant with those
'beneficial properties' to be an issue that remained to be improved upon with
respect to Proxy's implant." Appeal Br. 11-12.
We are not persuaded by Appellants' arguments. The Examiner
found that the materials and fiber structure taught by Shikinami provide
certain benefits. See Final Act. 7. Appellants identify no persuasive
evidence that the teachings of Proxy and the above-noted teachings of
Shikinami regarding materials and fiber structure in any way conflict or that
the proposed combination of Tyco and Proxy would not benefit from
incorporating these teachings from Shikinami as proposed by the Examiner.
Accordingly, we sustain the Examiner's rejection of claims 19, 20, and 24 as
unpatentable over Tyco, Proxy, and Shikinami.
Rejection (IV)
Appellants rely on the same arguments for the patentability of claim
23 as discussed above regarding the rejection of claim 1. See Appeal Br.
12-13. Accordingly, for the same reasons discussed above regarding the
rejection of claim 1, we sustain the Examiner's rejection of claim 23 as
unpatentable over Tyco, Proxy, and Ethicon.
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Rejection (V)
Appellants rely on the same arguments for the patentability of claims
28-30 as discussed above regarding the rejection of claim 1. See Appeal Br.
13-14. Accordingly, for the same reasons discussed above regarding the
rejection of claim 1, we sustain the Examiner's rejection of claims 28-30 as
unpatentable over Tyco, Proxy, and Rabinowicz.
DECISION
(I) The Examiner's rejection of claims 1-3, 5-7, 14--16, 21, 22,
and 25-27 as unpatentable over Tyco and Proxy is affirmed as to claims 1,
2, 5-7, 14--16, 21, 22, and 25-27, and is reversed as to claim 3.
(II) The Examiner's rejection of claims 4, 17, and 18 as
unpatentable over Tyco, Proxy, and Snijder is affirmed.
(III) The Examiner's rejection of claims 19, 20, and 24 as
unpatentable over Tyco, Proxy, and Shikinami is affirmed.
(IV) The Examiner's rejection of claim 23 as unpatentable over
Tyco, Proxy, and Ethicon is affirmed.
(V) The Examiner's rejection of claims 28-30 as unpatentable over
Tyco, Proxy, and Rabinowicz is 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-IN-PART
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