Ex Parte Oren et al

Patent Trials and Appeals Board

May 23, 2019

12919516 - (D) (P.T.A.B. May. 23, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/919,516 08/26/2010
67801 7590 05/28/2019
MARTIN D. MOYNIHAN d/b/a PRTSI, INC.
P.O. BOX 16446
ARLINGTON, VA 22215
FIRST NAMED INVENTOR
Ran Oren
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.
48985 6700
EXAMINER
SIPP,AMYR.
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
05/28/2019 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):
usptomail@ipatent.co.il
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAN OREN, SUMANT G. KRISHNAN, LEE RANON,
SHAI NAHMIAS, and ARYEH MIROCHINIK
Appeal2017-007570
Application 12/919,516
Technology Center 3700
Before ERIC B. GRIMES, JEFFREY N. FREDMAN, and RYAN H. FLAX,
Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1,2 under 35 U.S.C. § 134 involving claims to a
medical implement for attaching a suture to a bone. The Examiner rejected
the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b ). We
reverse.
1 Appellants identify the Real Party in Interest as T.A.G. Medical Devices -
Agriculture Cooperative Ltd (see App. Br. 2).
2 We have considered the Specification filed Aug. 26, 2010 ("Spec."); Non-
Final Action mailed Mar. 4, 2016 ("Non-Final Act."); Appeal Brief filed
Nov. 7, 2016 ("App. Br."); Examiner's Answer mailed Feb. 23, 2017
("Ans."); and Reply Brief filed Apr. 19, 2017 ("Reply Br.").
Appeal2017-007570
Application 12/919,516
Statement of the Case
Background
"While the shoulder joint has a great range of motion, it is not very
stable. Four rotator cuff muscles ... surround the shoulder joint ... Each of
these muscles is attached by a tendon to the humerus bone" (Spec. 1:11-16).
"Rotator cuff tears are tears of one or more of the four tendons of the rotator
cuff muscles . . . . When surgical intervention is indicated to repair a rotator
cuff tear, the ... procedures aim to re-attach the tendon to the bone over an
area extending from the anatomical neck to the lateral surface of the
tubercle" (Spec. 1:23-2: 10). "However, the conventional arthroscopic
procedure uses anchors resulting in points or lines of attachment, rather than
in attachments over a significant surface" (Spec. 3 :7-9).
The "invention enables the surgeon to perform bone tunnels in the
bone in exactly the required locations to receive sutures, and thereby to
achieve reattachment of the tom tendon without the use of bone anchors ...
The invention is therefore particularly useful in an arthroscopic surgical
procedure" (Spec. 9:22-10:2).
The Claims
Claims 33, 35, 36, 41, 42, 44, 60, 61, 63, and 65-83 are on appeal.
Independent claim 33 is representative and reads as follows:
33. A medical implement for attaching a suture to a bone,
compnsmg:
a handle having a proximal end for manual grasping and
a distal end for engagement with said bone to which said suture
is to be attached, said bone being pre-formed with a first bore,
said handle extending axially from said proximal end to said
distal end;
a hook extending from the distal end of the handle and
configured for reception in said first bore of the bone;
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Application 12/919,516
a movable member resiliently coupled to said handle and
urged in an axial direction of the handle toward the hook
responsive to the resilient coupling, said movable member
being movable to a retracted position with respect to the hook
to facilitate reception of the hook into said first bore, and biased
to an extended position with respect to the proximal end of the
handle for clamping said handle to said bone with a resilient
force at a predetermined angle with respect to said first bore;
and a manually manipulatable member coupled to said
movable member for moving said movable member to said
extended and retracted positions;
said handle being formed with a passageway extending
longitudinally therethrough from its proximal end to its distal
end, said passageway being configured for receiving a drill, for
drilling a second bore through said bone at said predetermined
angle with respect to said first bore and for passing through the
passageway one end of a suture to traverse, and to extend past,
said first bore such that said one end of the suture is accessible
through said first bore for being pulled out therefrom, while the
opposite end of the suture is accessible through said second
bore for pulling out therefrom in order to attach the suture to
said bone.
The Issues
A. The Examiner rejected claims 33, 35, 36, 41, 42, 44, 65-69, 72, 76-
78, and 81-83 under 35 U.S.C. § I03(a) as obvious over Asnis3 and Wood4
(Non-Final Act. 5-12).
B. The Examiner rejected claims 70 and 71 under 35 U.S.C. § I03(a) as
obvious over Asnis, Wood, Cerundolo, 5 and Brown6 (Non-Final Act. 12-
14).
3 Asnis, US 5,059,201, issued Oct. 22, 1991.
4 Wood, US 268,344, issued Nov. 28, 1882.
5 Cerundolo, US 2006/0241657 Al, published Oct. 26, 2006.
6 Brown et al., US 6,514,258 Bl, issued Feb. 4, 2003.
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Application 12/919,516
C. The Examiner rejected claims 60, 61, 63, 73-75, 79, and 80 under 35
U.S.C. § I03(a) as obvious over Asnis, Wood, and Thome7 (Non-Final Act.
15-19).
A. USC§ 103(a) over Asnis and Wood
The issue with respect to obviousness is: Does the evidence of record
support the Examiner's conclusion that Asnis and Wood render obvious the
claimed medical device?
Findings of Fact
1. Figure 1 of Asnis is reproduced below:
,, fig. 1
"FIG. 1 is a side elevation view of the suture stitching, threading and
wrapping device of the present invention, partially in cross section, with
portions of the device being shown in phantom" (Asnis 3:40-44).
7 Thome et al., US 2009/0018554 Al, published Jan. 15, 2009.
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Application 12/919,516
2. Asnis teaches the medical device shown in Figure 1 comprises
"a fixed scissors-type handle 302" (Asnis 5:64) and distal "hollow tube 24"
that is "advantageous in open surgeries when the tissue piece to be threaded,
stitched or wrapped is deeply recessed" (Asnis 4:30-42).
3. Asnis teaches a "[c]lamping bracket 26" (Asnis 4:47) that the
Examiner states is a hook that "is capable of being received in a first bore in
bone" (Non-Final Act. 6).
4. Asnis teaches "[t]ube 102 is sized to slide freely inside outer
tube 24. The length of tube 102 is selected so that when the latter is received
in outer tube 24, the front end 106 of tube 102 will project forwardly of rear
wall 32 of bracket 26" (Asnis 5: 10-13).
5. Figures 10 and 11 of Asnis are reproduced below:
400
322
402
24
ftq JO
322 400
f tq. J J
"FIG. 10 is a schematic side elevation of the present invention, with a loop
of suture material secured around the bracket ... FIG. 11 is similar to FIG.
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Application 12/919,516
10, except that a piece of tissue is disposed in the clamping bracket and the
inner tube has been moved forward so as to clamp the tissue in the bracket"
(Asnis 3:59---65).
6. Asnis teaches that
movable handle 304 is squeezed toward fixed handle 302
causing the former to pivot about stud 332. This pivotal motion
drives pocket 340 of top end 312 forward toward bracket 26.
As pocket 340 moves forward, it carries projection 112
disposed therein forward. During this forward movement of
projection 112, the latter pivots inside pocket 340, about an axis
that extends normal to sidewalls 314 and 316, with the curved
surface 114 of projection 112 sliding along the curved surface
of pocket 340.
(Asnis 8:31--40).
7. The Examiner acknowledges that Asnis does not teach a
"resilient coupling between the movable member and said handle such that
the movable member is responsive to the resilient coupling, said movable
member biased to an extended position with respect to the proximal end of
the handle for clamping said handle to said bone with a resilient force"
(Non-Final Act. 9).
8. Figure 2 of Wood is reproduced below:
Figure 2 is a plan view of a wrench (Wood 1 :21-22).
9. Wood teaches "a wrench especially applicable for removing
nuts from axles ... without the necessity of handling it" that comprises "a
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Application 12/919,516
spiral spring, d, which is fitted to retain the rod with its end projecting into
the socket A" (Wood 1:711, 34--36).
10. The Examiner finds it would have been obvious "to modify the
implement as disclosed by Asnis with the spring surrounding the movable
member in the handle as taught by Wood in order to bias the system into a
clamped or locked position to reduce handling during operation" (Non-Final
Act. 9--10).
Principles of Law
The "analogous arts test" governs the question of whether a skilled
artisan would have looked to an unrelated prior art reference. Under this
test, "a reference is either in the field of the applicant's endeavor or is
reasonably pertinent to the problem with which the inventor was concerned
in order to rely on [that] reference as a basis for rejection." In re Kahn, 441
F.3d 977, 986-87 (Fed. Cir. 2006).
"We must still be careful not to allow hindsight reconstruction of
references to reach the claimed invention without any explanation as to how
or why the references would be combined to produce the claimed
invention." Innogenetics, N. V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3
(Fed. Cir. 2008).
Analysis
Appellants contend "a POSITA [(person of ordinary skill in the art)]
would not consider spring used in devices such as Wood for treating nuts to
be at all relevant to treatment of body tissue" (App. Br. 13). Appellants
contend the "only motivation that could possibly exist for applying resilient
force to Asnis is in order to reject the present claims. This constitutes
impermissible hindsight" (Reply Br. 4).
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Application 12/919,516
The Examiner contends that "Asnis and Wood each address the
analogous problem of clamping and maintaining a clamped position" (Non-
Final Act. 2). The Examiner reasons that the combination is obvious
because the artisan would have been motivated "to modify the implement as
disclosed by Asnis with the spring surrounding the movable member in the
handle as taught by Wood in order to bias the system into a clamped or
locked position to reduce handling during operation" (Ans. 9--10).
We find that Appellants have the better position because we find that
Wood is not analogous art and the combination of prior art relies upon
hindsight. As to the first part of the analogous arts test, we find that Asnis,
in the medical device field (FF 1-2), and Wood, in the field of removing
nuts from axles (FF 9), do not fall in the same field of endeavor.
As to the second part of the analogous arts test of whether Wood was
pertinent to the problem with which the inventor was concerned, we are not
persuaded by the Examiner's reasoning that Asnis and Wood are pertinent
and analogous because both are drawn to the generalized problem of
clamping. In the Specification, the clamp is used "for clamping the handle
to the bone at a predetermined angle with respect to the first bore" (Spec.
23:18-19). While that is consistent with the clamping bracket used in Asnis,
certainly pertinent to the instant invention (FF 3, 6), the clamp of Wood is
not intended to hold a device in a predetermined position, but, rather, is
designed to allow the user to remove nuts from axles without touching the
nuts (FF 9). Thus, the Examiner has not established that Wood is pertinent
to the problem of clamping a device at a predetermined angle, particularly a
medical device used within a patient. We, therefore, conclude that Wood is
not analogous art.
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Application 12/919,516
We also agree with Appellants that the Examiner does not provide a
persuasive reason to combine these two references from disparate areas of
technology. While we recognize that the Examiner provided a reason for the
combination (FF 10), the cited reasoning refers to Wood's desire for
"reduced handling." However, the reason Wood prefers "reduced handling"
of nuts on axles is to avoid "soiling the hands" (Wood 2:19--20), a concern
not implicated in the medical device of Asnis or of the Specification. Thus,
we agree with Appellants that the particular combination of Wood and
Asnis, as set forth in the instant rejection, relies on impermissible hindsight.
Conclusion of Law
The evidence of record does not support the Examiner's conclusion
that Asnis and Wood render obvious the claimed medical device.
B. and C. 35 US.C. § 103(a)
Having reversed the obviousness rejection of claim 33 for failing to
render Wood's spring obvious to combine with Asnis for the reasons given
above, we also find that the further combinations do not address this issue
and therefore do not render the rejected claims obvious for the same reasons.
SUMMARY
We reverse the rejection of claims 33, 35, 36, 41, 42, 44, 65---69, 72,
76-78, and 81-83 under 35 U.S.C. § 103(a) as obvious over Asnis and
Wood.
We reverse the rejection of claims 70 and 71 under 35 U.S.C. § 103(a)
as obvious over Asnis, Wood, Cerundolo, and Brown.
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We reverse the rejection of claims 60, 61, 63, 73-75, 79, and 80 under
35 U.S.C. § 103(a) as obvious over Asnis, Wood, and Thome.
REVERSED
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