Ex Parte Maiorino

Patent Trial and Appeal Board

Jan 10, 2018

12548594 (P.T.A.B. Jan. 10, 2018)

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.
12/548,594 08/27/2009 Nicholas Maiorino H-US-01342 (203-6090) 7405
50855 7590
Covidien LP
60 Middletown Avenue
Mailstop 54, Legal Dept.
North Haven, CT 06473
EXAMINER
TEMPLETON, CHRISTOPHER L
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
01/12/2018 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):
SurgicalUS@covidien.com
medtronic_mitg-si_docketing@cardinal-ip.com
mail @ cdfslaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NICHOLAS MAIORINO
Appeal 2017-001445
Application 12/548,594
Technology Center 3700
Before JEFFREY N. FREDMAN, ELIZABETH A. LaVIER, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal1 under 35U.S.C. § 134 involving claims to a suture.
The Examiner rejected the claims as anticipated and as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
Statement of the Case
Background
“Sutures including loops formed therein are known. A loop formed in
a suture during manufacture may be used to secure the suture to tissue”
during medical treatments (Spec. 13). However, “the doubling of the
diameter of the suture in order to create the loop may increase the amount of
force necessary to pull the loop through tissue. This increased force applied
1 Appellant identifies the Real Party in Interest as Covidien LP, a subsidiary
of Medtronic pic (see App. Br. 1).
Appeal 2017-001445
Application 12/548,594
to the suture may result in tearing or other unnecessary trauma to the tissue
being sutured” (id.). “Therefore, it would be beneficial to have a looped
suture to include a tapered surface” (id.).
The Claims
Claims 1, 3—7, 11—20, and 27—31 are on appeal. Independent claim 1
is representative and reads as follows:
1. A suture comprising:
a length of thread including
a proximal portion and a distal portion,
the distal portion including a first longitudinal section of
the length of thread defining a first longitudinal axis and a
second longitudinal section of the length of thread defining a
second longitudinal axis, the second longitudinal section of the
distal portion of the length of thread overlapping and secured to
the first longitudinal section of the distal portion of the length
of thread proximal a distal end of the length of thread to form a
loop, wherein a proximal end of the second longitudinal section
of the distal portion of the length of thread is tapered with
respect to the first longitudinal axis to form a smooth transition
with the proximal portion of the length of thread and the first
and second longitudinal sections of the distal portion of the
length of thread extend away from the loop.
The Issues
A. The Examiner rejected claims 1, 3, 5, 7, 11—14, 17, 18, 20, and 27—29
under 35 U.S.C. § 102(b) as anticipated by Wojciechowicz2 (Final Act. 2—5).
B. The Examiner rejected claims 1, 3, 5, 7, 11—13, and 17—20 under 35
U.S.C. § 102(b) as anticipated by Egan3 (Final Act. 5—7).
2 Wojciechowicz et al., US 5,830,234, issued Nov. 3, 1998.
2
Appeal 2017-001445
Application 12/548,594
C. The Examiner rejected claim 19 under 35 U.S.C. § 103(a) as obvious
over Wojciechowicz (Final Act. 7).
D. The Examiner rejected claims 15, 16, 30, and 31 under 35 U.S.C.
§ 103(a) as obvious over Egan and Cooper3 4 (Final Act. 8).
E. The Examiner rejected claims 4 and 6 under 35 U.S.C. § 103(a) as
obvious over Wojciechowicz, Egan, and Drewry5 (Final Act. 8).
A. 35 U.S.C. § 102(b) oyer Wojciechowicz
The Examiner finds “Wojciechowicz discloses a suture comprised of
a length of thread . . . wherein a proximal end 3 (Fig. 3, illustrated below) of
the second longitudinal section is tapered with respect to the first
longitudinal axis of the elongate body to form a smooth transition” (Final
Act. 2). The Examiner annotated figure 3, as shown below:
m. 3 2 3
The Examiner finds Figure 3 illustrates where the suture threads are secured
to one another to form a loop (see Final Act. 2—3).
3 Egan et al., US 6,217,591 Bl, issued Apr. 17, 2001.
4 Cooper, US 5,683,417, issued Nov. 4, 1997.
5 Drewry et al., US 6,436,099 Bl, issued Aug. 20, 2002.
3
Appeal 2017-001445
Application 12/548,594
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Wojciechowicz anticipates claims 1
and 27?
Findings of Fact
1. Figure 2 of Wojciechowicz is reproduced below:
FIG. 2
“The loop portion 12, illustrated in FIG[] 2 ... is preferably formed from a
single strand of stainless steel suture wire . . . The single strand is doubled
back onto itself such that one free end is welded to an intermediate portion
of the strand at weld location 26” (Wojciechowicz 3:63—67)
2. Figure 3 of Wojciechowicz is reproduced below:
FIG. 3
“The weld section 26 of the loop 12 is shown in detail in FIG. 3. The weld
26 is preferably formed of stainless steel welding material and swaged to a
4
Appeal 2017-001445
Application 12/548,594
tapered shape as shown in order for a smooth transition from the needle
section 12 to the loop section” (Wojciechowicz 4:11—15).
3. Figure 1 of the Specification is reproduced below:
FIG. 1
“As shown in FIG. 1, an embodiment of a suture according to the present
disclosure is shown generally as looped suture 10” (Spec. 118).
4. The Specification teaches: “In one embodiment, first and
second sections 13, 14 of thread 11 are welded together . . . Alternatively,
first and second sections 13, 14 of thread 11 may be joined using glues,
epoxies, solvents, or other adhesives” (Spec. 124).
Principles of Law
The correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the specification is not
whether the specification proscribes or precludes some broad
reading of the claim term adopted by the examiner. And it is
not simply an interpretation that is not inconsistent with the
specification. It is an interpretation that corresponds with what
and how the inventor describes his invention in the
specification.
In re Smith Int’l, Inc., 871 F.3d 1375, 1382-83 (Fed. Cir. 2017).
A prior art reference can only anticipate a claim if it discloses all the
claimed limitations “arranged or combined in the same way as in the claim.”
5
Appeal 2017-001445
Application 12/548,594
Wm. WrigleyJr. Co. v. Cadbury Adams USALLC, 683 F.3d 1356, 1361
(Fed. Cir. 2012).
Analysis
Claim 1
We begin with claim interpretation because before a claim is properly
interpreted, its scope cannot be compared to the prior art. In this case, the
dispute centers on the requirement in claim 1 for “overlapping” portions
“wherein a proximal end of the second longitudinal section of the distal
portion of the length of thread is tapered with respect to the first longitudinal
axis to form a smooth transition with the proximal portion of the length of
thread.”
This claim requires two separate, but adjacent, thread sections that
overlap. The claim further requires a taper at the end of one of the thread
sections that smoothly transitions from one of the overlapping thread
sections with the second of the thread sections. The Specification
exemplifies this limitation in Figure 1 where thread section 13 is tapered at
17 to meet thread section 14 (FF 3). This same arrangement is shown in
Figures 2, 3, and 5—7 of the Specification. While the Specification teaches
the thread sections may be welded or joined together (FF 4), the
Specification never contemplates a composition where the thread sections
are joined to the extent that they no longer overlap and are tapered as a
single component. We therefore interpret claim 1 to require two separate
thread sections, one of which has a taper that smoothly transitions to the
other thread section.
6
Appeal 2017-001445
Application 12/548,594
Appellant contends:
If, as the Examiner contends, the two sections of strand and
filler material are melted together “to form a weld pool that
cools and becomes the weld section 26,” (Final Office Action,
page 9), the second longitudinal section of the suture of
Wojciechowicz no longer exists. Thus, Wojciechowicz’s suture
has no second longitudinal section, and does not include a
proximal end of the second longitudinal section that is tapered.
Alternatively, the second longitudinal section of the suture of
Wojciechowicz is covered by the weld section 26, in which
case, the benefit provided by tapering the free end would be
negated, and therefore such a modification would not be
obvious.
(App. Br. 5).
The Examiner responds:
“26,” the weld section, is where the two sections are welded
together. As disclosed above, a weld requires both pieces that
are welded together to be melted. A filler material (in this case
it is stainless steel) is also melted with the pieces to form a weld
pool that cools and becomes the weld section 26. The weld
section consists of the second and first longitudinal sections,
and a filler. The weld section (which comprises the second
longitudinal section) is swaged at the proximal end of the
second longitudinal section “2” (see Fig. 3, illustrated above;
column 4, lines 11-15); thus the proximal end of the second
longitudinal section (which is the top part of the weld section)
is part of the weld section and is tapered.
(Ans. 9).
We find that Appellant has the better position because we agree that
the claim, as reasonably interpreted in light of the Specification, requires two
physically separate portions of thread, not a single portion formed by
melting the two portions into a single swaged portion. We do not find the
7
Appeal 2017-001445
Application 12/548,594
Examiner’s interpretation of figure 3 of Wojciechowicz persuasive in
showing that one of the portions of the thread is tapered to form a smooth
transition to the other portion while retaining both portions overlapped with
one another. Because this is an anticipation rejection and the reference is
not arranged in the same way as required by the claim, we reverse this
rejection.
Claim 27
The Examiner finds Wojciechowicz discloses “a joined segment (see
box in Fig. 3, illustrated above) between the overlapping sections, wherein
material from each of the overlapping sections forms the joined segment”
(Final Act. 5). The Examiner finds “a weld requires both pieces that are
welded together to be melted. A filler material (in this case it is stainless
steel) is also melted with the pieces to form a weld pool that cools and
becomes the weld section 26” (Final Act. 9—10).
Appellant contends “Wojciechowicz fails to disclose a suture
including, inter alia, ‘a joined segment between the first overlapping section
and the second overlapping section, wherein material from each of the first
and second overlapping sections forms the joined segment,’ as presently
recited in independent claim 27” (App. Br. 6).
We find that Appellant has the better position. While we agree with
the Examiner that the segments 22a and 22b in figure 6 are clearly joined at
some point in weld section 26 (see FF 2), claim 27 also requires the two
sections to overlap. Figure 3 of Wojciechowicz does not clearly disclose
that the two segments inherently overlap with one another because the joint
at weld 26 may simply represent the termination of one of the segments
8
Appeal 2017-001445
Application 12/548,594
rather than any necessary overlap. “Inherency . . . may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.” MEHL/Biophile Int’l.
Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999).
To the extent that the Examiner interprets segments 22a and 22b as
having been melted together into the welded section 26, we agree with
Appellant that two components melted into a single material are not
“overlapping.” The two melted segments may be joined, but in order to
overlap, the segments must “extend over or past and cover a part of,”6 and
when joined, the segments no longer extend over each other.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Wojciechowicz anticipates claims 1 and 27.
B. 35 U.S.C. § 102(b) over Egan
The Examiner finds Egan teaches a suture with “the second
longitudinal section overlapping and secured to the first longitudinal section
proximal to a distal end of the thread” and “wherein a proximal end of the
second longitudinal section is tapered with respect to a longitudinal axis of
the thread to form a smooth transition (Fig. 6D), and the first and second
longitudinal sections extend away from the loop” (Final Act. 5). The
Examiner annotates figure 6D of Egan as shown below:
6 “Overlap.” https://www.merriam-webster.com/dictionary/overlap.
(Accessed 29 Dec. 2017).
9
Appeal 2017-001445
Application 12/548,594
n
“As in Fig. 6D, illustrated above, ‘3’ is the loop. The longitudinal sections
extend away from ‘3’” (Final Act. 10).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Egan anticipates claims 1 and 27?
Findings of Fact
5. Figures 6C and 6D of Egan are reproduced below:
FIG. 6 D
“FIG. 6c is a detail section view showing the trim mechanism, FIG. 6d is a
view of the completed, released stitch” (Egan 4:58—60).
Analysis
Appellant contends “Egan fails to disclose a suture including, inter
alia, a thread, wherein ‘the first and second longitudinal sections of the
10
Appeal 2017-001445
Application 12/548,594
length of thread extend away from the loop, ’ as presently recited in
independent claim 1” (App. Br. 7).
The Examiner responds a “closed loop was not claimed. As disclosed
in the Final Office action, Egan discloses a loop ‘3’ which is formed by
overlapping the sections 1, 2 (Fig. 6D of the Final Office action)” (Ans. 5).
We find that Appellant has the better position. The reasonable
interpretation of the term “loop” in light of the Specification and claims 1
and 27 is a closed loop, not simply a curved portion of thread (see FF 3).
Not only is the Specification limited to embodiments in which the loop is
closed, but claim 1, as Appellant notes, requires to segments to overlap and
then “extend away from the loop,” thereby reasonably requiring an entire
loop that is closed. We do not find the Examiner’s interpretation of a curved
portion of Egan’s loop 6D as comprising the entirety of the loop to be
reasonable, and we therefore reverse this rejection.
Claim 27 also specifically requires two overlapping segments “to
form a loop” with “the loop being remote from a proximal portion of the
elongate body.” We agree with Appellant that these recitations in claim 27
impose a requirement that “a loop is a length of material that forms an
enclosed area” (App. Br. 9). We therefore also reverse the rejection over
claim 27.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Egan anticipates claims 1 and 27.
11
Appeal 2017-001445
Application 12/548,594
C.—E. 35 U.S.C. § 103(a) rejections
These rejections rely upon the underlying anticipation rejections over
either Wojciechowicz or Egan. Having reversed the anticipation rejections,
we also necessarily reverse these obviousness rejections because the
Examiner does not identify where Wojciechowicz, Egan, Cooper, or Drewry
suggest sutures as required by claims 1 and 27.
SUMMARY
In summary, we reverse the rejection ofclaims 1, 3, 5, 7, 11—14, 17,
18, 20, and 27—29 under 35 U.S.C. § 102(b) as anticipated by
Wojciechowicz.
We reverse the rejection of claims 1, 3, 5, 7, 11—13, and 17—20 under
35 U.S.C. § 102(b) as anticipated by Egan.
We reverse the rejection of claim 19 under 35 U.S.C. § 103(a) as
obvious over Wojciechowicz.
We reverse the rejection of claims 15, 16, 30, and 31 under 35 U.S.C.
§ 103(a) as obvious over Egan and Cooper.
We reverse the rejection of claims 4 and 6 under 35 U.S.C. § 103(a)
as obvious over Wojciechowicz, Egan, and Drewry.
REVERSED
12