Ex Parte Kirsch

Patent Trial and Appeal Board

Oct 2, 2014

12619008 (P.T.A.B. Oct. 2, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID KIRSCH
____________

Appeal 2012-007584
Application 12/619,0081
Technology Center 3700
____________

Before ANTON W. FETTING, BIBHU R. MOHANTY, and
CYNTHIA L. MURPHY, Administrative Patent Judges.

MURPHY, Administrative Patent Judge.

DECISION ON APPEAL

The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
final rejection of claims 1–19 and 21. We have jurisdiction over this appeal
under 35 U.S.C. § 6(b).

We AFFIRM.

1According to the Appellant, the real party in interest is Tyco Healthcare
Group LP (d/b/a/ Covidien). (Appeal Br. 1.)
Appeal 2012-007584
Application 12/619,008

2
STATEMENT OF THE CASE
The Appellant’s invention relates to suture packages. (Spec. ¶ 1.)

Illustrative Claim
1. A suture package comprising:
a base member having an outer wall and
including a suture retaining area;
at least one needle retainer positioned
adjacent the suture retaining area for receiving at
least one suture needle;
at least one suture retainer positioned
adjacent the suture retaining area for receiving a
distal end of at least one suture; and
a plurality of raised portions formed within
the suture retaining area, each of the raised
portions including a groove for receiving a portion
of at least one suture therein.

Prior Art
Kalinski US 4,961,498 Oct. 9, 1990
Daniele US 5,704,469 Jan. 6, 1998
Steffan DE 26 18 662 A1 Nov. 3, 1977

Rejections
The Examiner rejects claims 1–3, 7–13, 16–19, and 21 under 35
U.S.C. § 103(a) as unpatentable over Steffan in view of Daniele.
The Examiner rejects claims 4–6, 14, and 15 under 35 U.S.C. § 103(a)
as unpatentable over Steffan in view of Daniele, and further in view of
Kalinski.
Appeal 2012-007584
Application 12/619,008

3
ANALYSIS
Independent claim 1
Independent claim 1 recites a “suture package” comprising “a base
member having an outer wall,” and “at least one suture retainer” for
receiving “a distal end of at least one suture.” (Appeal Br. 14, Claims App.)
Independent claim 1 is rejected as obvious over Steffan in view of
Daniele. (Answer 5.) The Examiner finds Steffan discloses the suture
package set forth in claim 1, except that its base member does not have an
outer wall. (Id.) The Examiner concludes that it would have been obvious,
in view of Daniele, to modify Steffan to provide its base member with an
outer wall. (Id.)
The Appellant’s arguments implicate two alleged shortcomings of the
proposed Steffan-Daniele combination. First, the Appellant argues Steffan,
taken alone or in combination with Daniele, fails to “teach or suggest all of
the features of independent claim 1.” (Appeal Br. 6.) And second, the
Appellant argues “it would not have been obvious to modify the packaging
of Steffan to include the outer wall of Daniele.” (Id. at 7.)
With respect to the missing-feature shortcoming, the Appellant asserts
“neither Steffan nor Daniele discloses, teaches, or suggests a suture retainer
for receiving a distal end of a suture.” (Appeal Br. 8.) The Appellant
contends “it is not self-evident which portions of the suture package of
Steffan might include a suture retainer for receiving a distal end of a suture.”
(Id.)
In answer to the Appellant’s assertions, the Examiner points to
specific statements in Steffan confirming that its fiber guide elements 2 are
constructed to “achieve clamping of the beginning or end of the fiber.”
Appeal 2012-007584
Application 12/619,008

4
(Answer 10.)2 The Appellant does not reply with a contrary contention.
(See Reply Br. 2–4.) The Appellant does not, for example, contend one or
more of Steffan’s guide elements 2 cannot receive “a distal end of at least
one suture.” (Id.)
The Appellant does not, therefore, persuade us that the Steffan-
Daniele combination is missing the claimed suture retainer. Hence, we
adopt the Examiner’s finding that Steffan discloses the suture package set
forth in claim 1, minus only an outer wall on the base member.
With respect to the improper-combination shortcoming, the Appellant
asserts modifying Steffan’s package “to include the outer wall of Daniele”
would prevent the loading of sutures. (Id. at 8.) The Appellant also asserts
“a cover configured to engage an outer wall in the manner taught by
Daniele” would not retain Steffan’s sutures in their grooves. (Reply Br. 3.)
In other words, the Appellant argues Daniele’s outer wall cannot be bodily
incorporated into the Steffan suture package without undesirable
consequences.
As explained by the Examiner, the obviousness rejection is not based
on a bodily incorporation of Daniele’s outer wall into the Steffan suture
package. (Answer 13.) Rather, the obviousness rejection is based on the
finding that one of ordinary skill in the art, when motivated by Daniele,
would readily be able to fashion an appropriate outer wall for the Steffan
suture package (e.g., a wall that does not impair suture loading). (Id.) Put
another way, the Examiner finds the proposed modification could be
accomplished without rendering Steffan’s suture package inoperative. (Id.)

2The Examiner cites, for example, to page 9 of the translation of the Steffan
specification.
Appeal 2012-007584
Application 12/619,008

5
The Appellant does not diminish this finding by describing structural details
of Daniele’s wall and commenting on their incompatibility with Steffan’s
suture package. (See Reply Br. 2–4.)
The Appellant does not, therefore, persuade us that the Steffan-
Daniele combination is improper. And, as noted by the Examiner, the
Appellant’s arguments implicitly acknowledge that Daniele discloses the
outer wall missing from the Steffan suture package. (See Answer 11.)
Hence, the Appellant does not give us a reason to disagree with the
Examiner’s conclusion that independent claim 1 is obvious over Steffan in
view of Daniele.
Thus, we sustain the Examiner’s rejection of independent claim 1.

Independent claim 11
Independent claim 11 sets forth limitations, relating to suture retaining
means and an outer wall, which are akin to the limitations discussed above
for independent claim 1. (Appeal Br. 15, Claims App.) Independent claim
11 also recites a further limitation requiring the suture package to comprise
“two or more pairs of longitudinally spaced and laterally offset raised
portions.” (Id.)
Independent claim 11 is rejected on the same grounds as independent
claim 1, as obvious over Steffan in view of Daniele. (Answer 5.) The
Appellant advances similar arguments that Steffan does not include the
claimed suture retaining means, and that it would not have been obvious to
modify Steffan to include an outer wall. (See Appeal Br. 9–11; See Reply
Br. 2–4.) For the same whys and wherefores given above for independent
claim 1, we are not persuaded by these arguments.
Appeal 2012-007584
Application 12/619,008

6
As for the further limitation set forth in claim 11, the Examiner
considers guide elements in Steffan as forming “two or more pairs of
longitudinally spaced and laterally offset raised portions.” (Answer 14.)
The Examiner provides an annotated drawing of Steffan Figure 1 which
labels two rows of these guide elements. (Id. at 7.) And the Examiner finds
the labeled guide elements are shown laterally and longitudinally offset. (Id.
at 14.)
The Appellant argues Steffan fails to disclose pairs of raised portions
which are longitudinally spaced and laterally offset. (Appeal Br. 11.) The
Appellant asserts that each pair of Steffan’s guide elements 2 is instead “at
least one of laterally spaced and aligned.” (Id.) But the Appellant does not
proffer, with particularity, an inconsistency between this positioning and the
claimed arrangement. (See Appeal Br. 11; See Reply Br. 2–4.) The
Appellant does not, for example, outline why such laterally spaced guide
elements cannot also be longitudinally spaced and/or laterally offset. (Id.)
The Appellant does not, therefore, persuade us that Steffan does not
disclose “two or more pairs of longitudinally spaced and laterally offset
raised portions.” Hence, this further limitation in independent claim 11 does
not prompt us to differ with the Examiner on the conclusion of obviousness.
Thus, we sustain the Examiner’s rejection of independent claim 11.

Dependent claims 2, 3, 7–10, 12, 13, 16–19, and 21
Claims 2, 3, 7–10, 12, 13, 16–19, and 21 depend from, and are
rejected on the same grounds as, independent claims 1 and 11. (Answer 5.)
These claims are not separately argued by the Appellant (See Appeal Br. 8,
11, and 12), whereby they follow the fate of the independent claims.
Appeal 2012-007584
Application 12/619,008

7
Thus, we sustain the Examiner’s rejection of dependent claims 2, 3,
7–10, 12, 13, 16–19, and 21.

Dependent claims 4–6, 14, and 15
Claims 4–6 depend from independent claim 1; and claims 14 and 15
depend from independent claim 11. These claims recite a “foam strip” for a
needle retainer or a suture retainer. (Appeal Br., 14–16, Claims App.)
Claims 4–6, 14, and 15 are rejected as obvious over Steffan in view of
Daniele, and further in view of Kalinski. (Answer 7.) The Examiner finds
Kalinski discloses that a foam strip is well known in the art. (Id. at 8.) And
the Examiner finds providing the Steffan suture package with a foam strip
“is merely substituted components, having functions known in the art, where
the results of the substitution would have been predictable.” (Id.)
The Appellant argues Kalinski does not cure the deficiencies of
Steffan and Daniele. (Appeal Br. 12.) However, as discussed above, we are
not persuaded that the Steffan-Daniele combination has shortcomings.
Hence, the Appellant does not delineate a deficiency for Kalinski to cure,
and we are not persuaded by this argument.
The Appellant also argues that Kalinski “is silent as to the use of foam
as a suture retainer configured for receiving a distal end of a suture.”
(Appeal Br. 12.) However, the Appellant does not explain, persuasively,
why providing the Steffan suture package with a foam strip is not a mere
substitution of components. (See Appeal Br. 12–13.) The Appellant also
does not contend that the function of foam is not known in the art and/or that
the results of the substitution would not have been predictable. (Id.) In
short, the Appellant does not address the Examiner’s obviousness rejection.
Appeal 2012-007584
Application 12/619,008

8
The Appellant does not, therefore, persuade us that it would not have
been obvious to provide the modified Steffan suture package with a foam
strip. As such, the Appellant does not provide us with a reason to disagree
with the Examiner’s conclusion of obviousness. (See Answer, 8.)
Thus, we sustain the Examiner’s rejection of dependent claims 4–6,
14, and 15.

DECISION
We AFFIRM the rejection of claims 1–19 and 21 under 35 U.S.C.
§ 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED
JRG