Ex Parte Kumar

Patent Trial and Appeal Board

Feb 6, 2017

13776083 (P.T.A.B. Feb. 6, 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.
13/776,083 02/25/2013 Avinash Kumar LRMC-10002/08 7379
25006 7590 02/08/2017
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EXAMINER
900 Wilshire Drive HOUSTON, ELIZABETH
Suite 300
TROY, MI 48084 ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
02/08/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AVINASH KUMAR
Appeal 2015-0058231
Application 13/776,0832
Technology Center 3700
Before PHILIP J. HOFFMANN, BRUCE T. WIEDER, and
MATTHEW S. MEYERS, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the rejection of
claims 1—5 and 10—13. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellant’s Specification (“Spec.,” filed Feb. 25,
2013), Appeal Brief (“Appeal Br.,” filed Jan. 7, 2015), and Reply Brief
(“Reply Br.,” filed May 13, 2015), as well as the Examiner’s Answer
(“Answer,” mailed Mar. 13, 2015).
2 Appellant indicates that Dr. Avinash Kumar is the real party in interest.
Appeal Br. 2.
Appeal 2015-005823
Application 13/776,083
According to Appellant, the invention “relates to affixing sutures
using a transosseous tunnel.” Spec. 12. We reproduce independent claim 1,
below, as illustrative of the claims.
1. A medical device for use in a surgical procedure,
the medical device comprising:
a mesh or net having a two-dimensional grid having a
plurality of openings of predetermined size and shape;
a retaining device; and
a suture having one end affixed to the net or mesh, an
opposite free end, and a plurality of raised portions positioned
between each of the ends, the plurality of raised portions having
predetermined size and shape adapted to be received through one
of the plurality of openings in the grid of the mesh or net and
adapted to directly engage the mesh or net to adjustably retain
the one of the plurality of raised portions in position, so that the
suture is retained adjustably in relation to the mesh or net, and
wherein the retaining device includes a cavity within the
retaining device, and the cavity engages the one of the plurality
of raised portions of the suture adjustably retaining the one of the
plurality of raised portions of the suture within the cavity of the
retaining device when the suture is used during a surgical
procedure with the mesh or net.
Appeal Br., Claims App.
REJECTIONS AND PRIOR ART
The Examiner rejects claims 1,2, and 11—13 under 35 U.S.C. § 103(a)
as unpatentable over Yeh (US 2011/0071548 Al, pub. Mar. 24, 2011) and
Feagin (US 5,500,000, iss. Mar. 19, 1996).
The Examiner rejects claims 3—5 under 35 U.S.C. § 103(a) as
unpatentable over Yeh, Feagin, and Le (US 5,486,197, iss. Jan. 23, 1996).
2
Appeal 2015-005823
Application 13/776,083
The Examiner rejects claim 10 under 35 U.S.C. § 103(a) as
unpatentable over Yeh, Feagin, and Leung (US 2009/0228021 Al, pub.
Sept. 10, 2009).
Answer 2—5.
ANALYSIS
Independent claim 1 requires, among other features,
a suture having one end affixed to the net or mesh, an opposite
free end, and a plurality of raised portions positioned between
each of the ends, the plurality of raised portions having
predetermined size and shape adapted to be received through
one of the plurality of openings in the grid of the mesh or net and
adapted to directly engage the mesh or net to adjustably retain
the one of the plurality of raised portions in position, so that the
suture is retained adjustably in relation to the mesh or net
Appeal Br., Claims App. (emphases added). Appellant argues the rejection
is in error because there is no motivation to combine the references to
provide a suture having raised portions with a predetermined size and shape
adapted to be received through an opening in a mesh or net to directly
engage the mesh or net, but, instead, that the Examiner’s proposed
combination is based solely on Appellant’s disclosure and impermissible
hindsight. See Appeal Br. 7—10, 13; see also Reply Br. 1—3. Based on our
review of the record, we agree with Appellant.
The Examiner finds that Yeh discloses a mesh or net with openings of
various sizes and shapes, as well as a suture with raised portions, but does
not disclose the suture raised portions are sized and shaped to be received
through an opening in the mesh or net. Answer 2. Further, the Examiner
finds that Feagin, with reference to Figure 5, discloses raised portions of a
suture received through openings in a net. Id.
3
Appeal 2015-005823
Application 13/776,083
Appellant argues the Examiner errs because Feagin does not, in fact,
disclose a mesh or net. Appeal Br. 9. We find that Feagin’s Figure 5
illustrates “suture member 330” with “aperture[s] 332” (i.e., openings) to
receive “suture retaining member 340.” Feagin col. 5,11. 34—37; Fig. 5.
Thus, it is not clear from Feagin’s description that Feagin discloses a mesh
or net. The Examiner does not provide further explanation or evidence as to
why Feagin’s suture member is a mesh or net. Thus, based on our review of
the Answer and Feagin, we conclude that the Examiner does not support
adequately the finding that Feagin teaches raised portions of a suture
received through an opening in a net.
Returning to Yeh, the Examiner relies on Figure 16 to disclose the
claimed mesh or net. Answer 2. Yeh’s Figure 16 illustrates what we
characterize as a suture-like member that is connected to mesh 1019, and it
is the suture-like member that has openings to receive the raised suture
portions. Yeh Fig. 16. Thus, both Yeh and Feagin teach that raised portions
of a suture are received in an opening on a suture or suture-like member, and
neither reference teaches that raised portions are received in an opening in
the mesh or net. Further, the Examiner does not set forth reasons adequate
to modify the references to receive suture raised portions in a mesh or net.
Therefore, as we stated above, we agree with Appellant that the rejection
that combines the references so as to receive raised portions in a mesh or net
opening appears to be based on Appellant’s disclosure and impermissible
hindsight, and we do not sustain the rejection of claim 1.
Each of the remaining claims requires the same limitations as claim 1.
Appeal Br., Claims App. Thus, because we do not sustain the rejection of
claim 1, and because the Examiner does not establish that any other
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Appeal 2015-005823
Application 13/776,083
reference remedies the above deficiency in the rejection of claim 1, we also
do not sustain any of the rejections of claims 2—5 and 10—13.
DECISION
We REVERSE the Examiner’s obviousness rejections of claims 1—5
and 10-13.
REVERSED
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