10377135 (B.P.A.I. Sep. 17, 2009)

Ex Parte Lizardi

Board of Patent Appeals and InterferencesSep 17, 2009

10377135 (B.P.A.I. Sep. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JOSE E. LIZARDI ____________ Appeal 2009-000599 Application 10/377,135 Technology Center 3700 ____________ Decided: September 17, 2009 ____________ Before WILLIAM F. PATE, III, LINDA E. HORNER, and STEFAN STAICOVICI, Administrative Patent Judges. PATE, III, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2009-000599 Application 10/377,135 2 This is a response to a Request for Rehearing in the above-noted appeal. Requests for Rehearing are limited to matters misapprehended or overlooked by the Panel in rendering the original decision. 37 C.F.R. § 41.52(a)(1). Appellant’s Request is limited solely to the Panel’s decision to enter a new ground of rejection directed to claim 58. The Panel rejected that claim as unpatentable over Thal in view of Bartlett. See Original Decision at 9-10. Appellant argues that neither Thal nor Bartlett discloses the method step of “manipulating a suture anchor attached to the suture loop to engage a portion of the suture loop within an internal hook formed in a surface defining a groove located in a leading end of the suture anchor,” since, according to Appellant, neither Thal nor Bartlett discloses an internal hook formed in a surface defining a groove in the leading end of the suture anchor. Request at 4. We specifically found that Thal discloses manipulating the suture anchor to engage a portion of the suture loop with what Thal discloses as a “snag means.” Original Decision, Finding 1. To elaborate, Thal discloses a deep groove similar to Appellant’s groove with a chamfer or relieved portion similar to that chamfer or relieved portion illustrated by Appellant at the base of Appellant’s groove. The groove and chamfer together form Thal’s disclosed snag means. As far as we can determine, Appellant’s internal hook is not defined in Appellant’s Specification, and giving the claims their broadest reasonable interpretation, the base of the groove 14 of Thal satisfies Appellant’s claim as an internal hook1. 1 “Hook” has been defined as a curved or angular piece of metal or other hard material for catching, holding, pulling, or suspending something. Random House Dictionary of the English Language, Second Unabridged Edition, p. 919 (1988). Appeal 2009-000599 Application 10/377,135 3 Moreover, Thal specifically states that in addition to the disclosed shape of the snag means, the snag means “can take the form of anything which would allow the continuous loop portion of the suture to be captured by the hook, projection, slit, or recess in the anchor means. See Thal, col. 5, ll. 34-36 (emphasis added). Additionally, Thal refers to his snag means as having the shape of a hook in col. 3, l. 9. Here is ipsis verbis evidence by those skilled in the art that Thal contemplated an internal hook on the leading end of the suture anchor. Appellant’s argument that neither Thal nor Bartlett discloses an internal hook is not credited. Appellant argues that the combination of Thal and Bartlett does not teach or suggest a toggling anchor with a groove located on its leading end. This argument is based on an individual attack on each of the references where the rejection is based on a combination of those references. But “[n]on-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). In this instance, Thal clearly shows a groove on the leading end of the anchor and Bartlett teaches an asymmetrical anchor that is toggled or rotated to lock the anchor within the bore drilled in the bone. See Original Decision, Findings 1 and 6. Furthermore, in the Thal patent, Thal refers to other methods known in the art of securing the anchor disclosed therein in the bore in the bone and suggests that these anchoring features may be substituted for the prongs 16 and 18 that Thal illustrates in the Figures. Accordingly, it was our conclusion that mounting the anchor of Thal in a bore drilled in bone using a toggling or rotated anchor as disclosed by Bartlett was merely the substitution of one known element for another that would have yielded Appeal 2009-000599 Application 10/377,135 4 predictable results. Original Decision at 10. Appellant’s final argument is that neither Thal nor Bartlett discloses engaging a suture loop, passed through tissue, to a groove in the same anchor as required in Appellant’s claim 58. We disagree. While we acknowledge that Figure 2 of Thal is directed to so-called mattress stitching, as we found in our original decision, Thal’s generalized description in col. 3, ll. 15-31, covers both mattress stitching and an embodiment which is directed to the snag means of an anchor snagging and holding a suture loop that is connected to that same anchor. Assuming arguendo that Thal does not literally discloses the suture loop being snagged by the same connector, the breadth of the language in this portion of the patent would have certainly suggested as much to one of ordinary skill in this art. This argument of Appellant is therefore not credited. We have carefully reviewed Appellant’s Request for Rehearing. We have granted the request to the extent that Appellant’s arguments have been considered, but we deny the request with respect to making any changes in our decision to enter a new ground of rejection of claim 58. 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)(2007). REHEARING DENIED Appeal 2009-000599 Application 10/377,135 5 mls NUTTER MCCLENNEN & FISH LLP WORLD TRADE CENTER WEST 155 SEAPORT BOULEVARD BOSTON, MA 02210-2604