Ex Parte Kosa et al

Patent Trial and Appeal Board

Feb 9, 2017

12362002 (P.T.A.B. Feb. 9, 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.
12/362,002 01/29/2009 Timothy D. Kosa H-US-00970 9265
50855 7590
Covidien LP
555 Long Wharf Drive
Mail Stop 8N-1, Legal Department
New Haven, CT 06511
EXAMINER
DORNBUSCH, DIANNE
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
02/13/2017 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 TIMOTHY D. KOSA, NICHOLAS MAIORINO, and
MEGAN STOPEK
Appeal 2015-0039031
Application 12/362,0022
Technology Center 3700
Before MICHAEL W. KIM, PHILIP J. HOFFMANN, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1, 2, 4, 6—8, 14—17, and 22—27. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 Our decision references Appellants’ Specification (“Spec.,” filed Jan. 29,
2009), Appeal Brief (“Appeal Br.,” filed Sept. 9, 2014), and Reply Brief
(“Reply Brief,” filed Jan. 30, 2015), as well as the Final Office Action
(“Final Action,” mailed May 2, 2014) and the Examiner’s Answer
(“Answer,” mailed Dec. 4, 2014).
2 Appellants indicate that Covidien LP is the real party in interest. Appeal
Br. 1.
Appeal 2015-003903
Application 12/362,002
According to Appellants, the invention relates to “[surgical] devices
such as sutures which include a distal loop having anchors disposed along a
surface.” Spec. 12. Claims 1 and 26 are the only independent claims. See
Appeal Br., Claims App. We reproduce claim 1, below, as representative of
the appealed claims.
1. A suture comprising:
an elongate body having a proximal portion and a distal
portion, the proximal portion of the elongate body terminating in
a free end;
a loop disposed at the distal portion of the elongate body,
the loop including a first segment including a first plurality of
anchors disposed along a surface of the loop, the first plurality of
anchors limiting movement of the loop through tissue, and a
second segment in which anchors are absent; and
a needle attached to the free end of the elongate body,
wherein the elongate body further includes a second plurality of
anchors.
Id.
REJECTION AND PRIOR ART
The Examiner rejects claims 1, 2, 4, 6—8, 14—17, and 22—27 under
35 U.S.C. § 103(a) as unpatentable over Ruff (US 2005/0267531 Al, pub
Dec. 1, 2005) and Del Nido (US 2009/0306681 Al, pub. Dec. 10, 2009).
Final Action 2—5; see also Answer 2.
ANALYSIS
Based on our review of the record, for the reasons discussed in detail
below, we do not sustain the Examiner’s obviousness rejection of the claims.
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Appeal 2015-003903
Application 12/362,002
Independent claim 1 recites, among other limitations, “a loop disposed
at the distal portion of [an] elongate body, the loop including a first segment
including a first plurality of anchors disposed along a surface of the loop, the
first plurality of anchors limiting movement of the loop through tissue.”
Appeal Br., Claims App. The Examiner finds that Ruff discloses numerous
limitation of claim 1, including a loop and an elongate body. See, e.g., Final
Action 3. The Examiner finds that although Ruff does not disclose the
claimed anchors, Del Nido discloses a loop with anchors disposed along a
surface of the loop, the anchors limiting movement of the loop through
tissue. See, e.g., id. at 3^4.
The Examiner proposes to combine the references “to include a first
plurality of barbs on Ruffs loop[,] as taught by Del Nido,” because “[d]oing
so would improve the functionality of the loop (for example, see
paragraph 62 [of Del Nido]).” Final Action 4; see also Answer 3. However,
for the reasons discussed in detail below, we agree with Appellants (see
Appeal Br. 5—8; see also Reply Br. 2—3) that the Examiner does not
demonstrate adequately that adding Del Nido’s barbs or anchors to Ruffs
loop would, in fact, “improve the functionality of the loop” (Final Action 4).
Thus, we determine that the Examiner’s reason for combining the references
lacks the required rational underpinning, and, therefore, we do not sustain
the rejection. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Appellants’ claimed invention is similar to an embodiment of Del
Nido on which the Examiner relies, in which Del Nido’s tissue tack 10 holds
tissue between (what we will term) a “bottom” surface of a loop (i.e., the
bottom surface being a surface of the loop from which a shaft that includes
arms 12 and 14 extends) and arms 12 and 14, where a plurality of anchors on
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Appeal 2015-003903
Application 12/362,002
the bottom surface of the loop prevents the loop from migrating into the
tissue. See Appeal Br. 4, Claims App.; see also Del Nido Figs. 8e, 8f, 1 59.
Thus, in Del Nido, the loop anchors one end of tissue tack 10.
In contrast, in Ruffs device, “suture 190 is placed in tissue 194 by
passing . . . suture [body 92] through tissue 194 and then through . . .
loop 192.” Ruff 144; see also id. at Figs. 24, 25; see also Appeal Br. 4.
Thus, as Appellants point out, it is the suture body and the loop trapping
tissue therebetween that anchors one end of suture 190. See Appeal Br. 5.
Further, it appears from Ruffs Figure 25 that (what we will term) a “side”
surface of loop 192 lays against tissue 194. See Ruff Fig. 25. Still further, it
appears that when suture body 92 is inserted into loop 192 and tightened,
loop 192 may move across a surface of tissue 194, and the addition of
anchors to loop 192 may impede the movement of loop 192 across
tissue 194. Thus, because of the numerous differences in the structure and
use of Ruff s and Del Nido’s devices, we are unpersuaded that the Examiner
has shown adequately that including a first plurality of barbs (as taught by
Del Nido) on Ruffs loop would improve the functionality of the loop of
Ruff, as asserted by the Examiner.
Based on the foregoing, we do not sustain the rejection of claim 1.
Inasmuch as independent claim 26 recites limitations similar to those
discussed above with respect to claim 1, and is rejected by the Examiner for
similar reasons as claim 1, we also do not sustain the rejection of claim 26.
Further, because claims 2, 4, 6—8, 14—17, 22—25, and 27 depend from
independent claim 1 and 26, we do not sustain the rejection of the dependent
claims.
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Appeal 2015-003903
Application 12/362,002
DECISION
We REVERSE the Examiner’s obviousness rejection of claims 1, 2, 4,
6-8, 14—17, and 22—27.
REVERSED
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