Ex Parte Masini

Patent Trial and Appeal Board

Sep 1, 2016

11407775 (P.T.A.B. Sep. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111407,775 0412012006
25006 7590 09/06/2016
DINSMORE & SHOHL LLP
POBOX7021
TROY, MI 48007-7021
FIRST NAMED INVENTOR
Michael A. Masini
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
MHM-01402/29 8334
EXAMINER
ORKIN, ALEXANDER J
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
09/06/2016 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):
docket@patlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL A. MASINI
Appeal2014-005082
Application 11/407,775
Technology Center 3700
Before DEMETRA J. MILLS, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.
MILLS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF CASE
Appellant's disclosure relates to a compression tissue repair apparatus
or fastener. Spec. 1. In the compression tissue repair instrument
[a] first elongated member is used to hold the female portion of
the fastener behind tissue to be repaired. A second elongated member
is used to hold the male portion of the fastener in front of tissue to be
repaired in alignment with the female portion. The second elongated
member is slideable relative to the first elongated member, allowing a
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Appeal2014-005082
Application 11/407,775
user to pierce and compress the tissue as the male portion engages with
the female portion.
Id. One embodiment of Appellant's invention is reproduced below in Fig.
2A.
Fig. 2A shows that
The instrument includes a lower arm 204, bent at 216, and
terminating in a holder 218 for the female portion 220 of a
fastener according to the invention . An upper arm 202, which
is slideable relative to the lower arm 204, is physically
configured to provide a holder 206 for the male portion 208 of
the fastener. The arms may further include markings to
indicate when engagement has occurred . ...
[T]he fastener portions 208, 220, are preferably constructed of a
bioabsorbable material, such as polylactic acid. The male
portion of the fastener 208 includes a head 212 and a serrated
shaft 120 terminating in a pointed end. The serrations may take
the form of ribs, barbs, or other types of spaced-apart features.
The female portion is washer-like, and includes one or more
corresponding ribs, barbs, or other types of spaced-apart
features.
Spec. 5, emphasis added.
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Appeal2014-005082
Application 11/407,775
The following claim 12 is the only pending claim.
12. An instrument for minimally invasive tissue repair using a
fastener having a female portion and male portion, the instrument
compnsmg:
a first elongated member for holding the female portion of the
fastener behind tissue to be repaired;
a second elongated member for holding the male portion of the
fastener in front of tissue to be repaired in alignment with the female
portion;
wherein the second elongated member is slideable relative to
the first elongated member, allowing a user to pierce and compress the
tissue as the male portion engages with the female portion; and
further including markings to indicate engagement of the male
and female portions.
Cited References
Aran yi et al.
Jamiolkowski et al.
Shelton, IV et al.
Grounds of Rejection
us 4,513,746
US 6,206,897 B 1
US 2006/0022015 Al
Apr. 30, 1985
("Aranyi")
Mar. 27, 2001
("Jamiolkowski")
Feb.2,2006
("Shelton")
1. Claim 12 is rejected under 35 U.S.C. §103(a) as being
unpatentable over Aranyi in view of Jamiolkowski.
2. Claim 12 is rejected under 35 U.S.C. §103(a) as being
unpatentable over Aranyi in view of Shelton.
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Appeal2014-005082
Application 11/407,775
FINDINGS OF FACT
The Examiner's findings of fact are set forth in the Non-Final Action
at pages 4--7.
PRINCIPLES OF LAW
In making our determination, we apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
While a court may look to the specification and prosecution
history to interpret what a patentee meant by a word or phrase
in a claim, extraneous limitations cannot be read into the claims
from the specification or prosecution history .... In other
words, a court may not read into a claim a limitation from a
preferred embodiment, if that limitation is not present in the
claim itself.
Bayer AG v. Biovail Corp., 279 F.3d 1340, 1348 (Fed. Cir. 2002).
Ultimately, the interpretation to be given a [claim] term can
only be determined and confirmed with a full understanding of
what the inventors actually invented and intended to envelop
with the claim. The construction that stays true to the claim
language and most naturally aligns with the patent's description
of the invention will be, in the end, the correct construction.
Renishaw PLC v. Marposs Societa 'per Azioni, 158 F.3d 1243, 1250 (Fed.
Cir. 1998) (citation omitted).
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Appeal2014-005082
Application 11/407,775
Rejection 1: Aranyi and Jamiolkowski
With respect to rejection 1, we do not find that the Examiner has
provided evidence to support a prima facie case of obviousness.
Claim 12 states that the "instrument comprises ... markings," which
we interpret as requiring that the markings are on the instrument, not the
fastener, and that the markings on the instrument indicate engagement of the
fastener. This claim interpretation is consistent with the Specification on
page 5, 1. 11, which states that the instrument "arms may further include
markings to indicate when engagement has occurred."
Figure 2D of the Specification is reproduced below.
Fig= 2D
Figure 2D of the Specification shows alignment of markings
element 250 on the instrument to indicate engagement of the male and
female fastener portions. Element 230 is the tissue being joined by the
fastener.
In rejection 1 over Aranyi in view of Jamiolkowski, the Examiner
notes that Aranyi is "silent about the markings to indicate engagement of the
male and female portion." Non-Final Act. 4. The Examiner relies on the
color coded fastener portions of J amiolkowski ( 108, col. 3, 11. 14--25; Non-
Final Act. 4) to show markings which indicate engagement of the male and
female portions. Non-Final Act. 4--5.
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Appeal2014-005082
Application 11/407,775
We are not persuaded. Claims are to be given their broadest
reasonable interpretation. Cuozzo Speed Technolgies, LLC v. Lee, 136 S. Ct.
2131, 2144 (June 20, 2016). As we have interpreted claim 12, consistent
with the Specification, the markings must be on the instrument and not part
of the fastener. Thus, we find that the Examiner has not provided evidence
to support a prima facie case of obviousness and rejection 1 is reversed.
Rejection 2: Aranyi and Shelton
We agree with the Examiner's fact finding, statement of the rejection
and responses to Appellant's arguments as set forth in the Answer. We find
that the Examiner has provided evidence to support a prima facie case of
obviousness for rejection 2. We provide the following additional comment
to the Examiner's argument set forth in the Final Rejection and Answer.
Aranyi is relied on by the Examiner to teach each element claimed
except markings to indicate engagement of the fastener. }Jon= Final ii:\.ct. 4.
The Examiner relies on Shelton to make up for this deficiency. Id. at 6.
Shelton teaches a surgical stapling instrument where
the indicator wheel "rotates presenting indicia for the firing
process" (Shelton, paragraph 43). Therefore the wheel and
indicia of Shelton can be the markings and do indicate the
engagement of the fastener based on the firing process. In a
given firing process of Aranyi, which only has one cycle, the
wheel of Shelton still will indicate engagement of the male and
female portions of a fastener by indicating the process of firing
(hasn't fired, has fired) and therefore will allow a user of Aranyi
to know if the device has been fired, or not.
Ans. 4.
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Appeal2014-005082
Application 11/407,775
The Examiner concludes that, "[i]t would have been obvious to one of
ordinary skill of the art at the time of the invention to use the markings of
Shelton with the instrument of Aranyi in order for indicating the firing
process." Non-Final Act. 6.
Appellant contends that
In contrast to Appellant's invention, the apparatus of Sheldon
truly has afiring member. The member actuates an end effector
that is a staple applying apparatus having a lower jaw and
pivotally attached upper jaw. An electrically powered actuator
locks to a proximal actuator that is coupled to the firing
member to prevent firing in certain situations. None of this is
applicable to Appellant's claim, which resides in a manually
operated instrument wherein one elongated member is slideable
relative to another elongated member, allowing a user to pierce
and compress the tissue as the male portion engages with the
female portion.
App. Br. 4.
We are not persuaded by Appellant's argument. Pending claim 12
does not specify that the instrument is a manual instrument, thus claim 12
reads on any minimally invasive tissue repair instrument. Appellant does
not address the Examiner's argument that the markings on the indicator of
Shelton are consistent with instrument firing and fastener engagement.
Appellant has not established that the markings on the indicator of Shelton
do not indicate fastener engagement. Nor has Appellant convincingly
explained why one of ordinary skill in the art would not have included a
firing indicator or fastening engagement indicator as suggested by Shelton in
either an electrical or manual surgical fastener instrument as disclosed in
Aranyi.
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Appeal2014-005082
Application 11/407,775
Appellant further argues that, "Although Appellant's claim does not
specifically recite level of engagement, this is clearly implied from the work
'markings' (i.e., markings, plural). Only one marking would not indicate
different levels of engagement." Reply Br. 2.
Shelton's "full firing travel requires three full firing strokes and thus
the indicator wheels 40, 41 rotate up to one-third of a revolution each per
stroke and provide indicia of the firing progress". Page 3, first column.
Furthermore, Shelton's wheel indicator/markings convey an unfired and
fired position, and thus includes multiple markings.
We agree with the Examiner that the firing indicator of Shelton
provides an indication of engagement of the fastener based on the
completion of the firing process, i.e., when the firing is complete as shown
on the indicator, the fastener is engaged. We agree with the Examiner that it
would have been obvious to use the markings of Shelton on the fastening
instrttment of ii~ranyi in order to indicate completion of the instrttment firing
process and fastener engagement.
The balance of the evidence is in favor of the Examiner's finding and
the obviousness rejection over Aranyi and Shelton is affirmed for the
reasons of record.
CONCLUSION OF LAW
Rejection 1 is reversed, rejection 2 is affirmed for the reasons of
record.
AFFIRMED
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