Ex Parte Overes et al

Patent Trial and Appeal Board

Aug 23, 2017

13419908 (P.T.A.B. Aug. 23, 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.
13/419,908 03/14/2012 Tom Overes 10139/26803 4453
76960 7590 08/24/2017
Fay Kaplun & Marcin, LLP
150 Broadway, suite 702
New York, NY 10038
EXAMINER
WEISS, JESSICA
ART UNIT PAPER NUMBER
3776
MAIL DATE DELIVERY MODE
08/24/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte TOM OVERES AND BRUNO WALTER
__________

Appeal 2016-001304
Application 13/419,9081
Technology Center 3700
__________

Before FRANCISCO C. PRATS, JOHN G. NEW, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.

NEWMAN, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to an anchoring
device. The Examiner entered final rejections for anticipation and
obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 Appellants identify the Real Party in Interest as DePuy Synthes Products,
Inc. App. Br. 2.
Appeal 2016-001304
Application 13/419,908

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STATEMENT OF THE CASE
Background
“T-anchors are often used in sports medicine and for fixation of the
spine.” Spec. ¶ 3. The Specification relates to “a device for treating a bone
and, in particular, relates to an anchoring device for a bone.” Id. ¶ 2.
The Claims
Claims 1–7 are on appeal.2 Sole independent claim 1 is illustrative and
reads as follows:
1. An anchoring device, comprising:
a flexible member extending from a proximal end to a
distal end;
an elongated anchor member extending from a first end to
a second end and attached to the distal end of the flexible
member such that the anchor member is movable between an
insertion configuration in which the anchor member is
substantially parallel to the flexible member and a locked
configuration in which the anchor member is substantially
perpendicular to the flexible member; and
a flexible removal element extending from a proximal end
to a distal end attached to the first end of the anchor member, a
length of the removal element being selected so that, when the
anchor member is implanted in a desired location, the removal
element extends back along an insertion path through which the
anchor member was inserted to the desired location so that
drawing the removal element proximally out of the path moves
the anchor member to the insertion configuration and draws the
anchor member through the insertion path.
App. Br. 8 (Claims Appendix) (emphasis added).

2 Claims 8-21 are withdrawn. Final Action 1, mailed December 2, 2014.
Appeal 2016-001304
Application 13/419,908

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The Issues
The following rejections are before us to review:
Claims 1–2 and 4–7 are rejected under pre-AIA 35 U.S.C.
§ 102(b) as anticipated by Kaiser.3
Claim 3 is rejected under pre-AIA 35 U.S.C. § 103(a) as
obvious over Kaiser in view of Sakamoto.4
Anticipation
ISSUE
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner’s conclusion that Kaiser teaches the
claimed subject matter. We select claim 1 as representative of the claims
subject to this ground of rejection. 37 C.F.R. § 41.37(c)(1)(iv).
ANALYSIS
The Examiner finds that Kaiser discloses an anchoring device as
shown in Figure 1, reproduced below:

Figure 1 “depicts a flexible construct according to various embodiments.”
Spec. ¶ 14.

3 US 2009/0082805 A1, published March 26, 2009 (“Kaiser”).
4 US 2005/0261710 A1, published November 24, 2005 (“Sakamoto”).

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Application 13/419,908

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The Examiner finds Figure 1 discloses:
a flexible member (14, Figs. 1–2) extending from a proximal end
(end near 16) to a distal end (end near 12); an elongated anchor
member (43, Paragraphs [0040] - [0041]) extending from a first
end (end nearest 28) to a second end (end nearest 16) and
attached to the distal end of the flexible member such that the
anchor member is movable between an insertion configuration in
which the anchor member is substantially parallel to the flexible
member.
Ans. 2. The Examiner further finds that Kaiser discloses “a locked
configuration” permitting the anchor member to lie “substantially
perpendicular to the flexible member” and “a flexible removal element
(knotted loop 28) extending from a proximal end (end at 28) to a distal end
(end near 14) attached to the first end of the anchor member.” Id. The
Examiner finds Kaiser discloses that the anchor member can be implanted
and removed along the insertion path. Id. at 2–3.
The Examiner further finds Kaiser discloses the flexible member and
the removal element can be a suture and that “the proximal end of the
removal element includes a loop . . . wherein the . . . distal end of the
flexible member is attached to a portion of the anchor member
approximately midway between the first end and the second end (Fig. 1).”
Id. at 3. The Examiner finds the flexible member includes a channel
extending along the sidewall from an inlet to an outlet, and that the “removal
element [is] capable of being passed through the channel from the inlet to
the outlet such that the proximal end of the removal element extends
proximally out of the outlet.” Id.
Appellants argue, among other points, that:
[a]lthough Kaiser describes a flexible construct including an
adjusting arm pulled to cause movement of an adjustable loop,
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Application 13/419,908

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the locking/tubular member, which the Examiner equates to the
elongated anchor member, is not attached to the flexible
construct or adjusting arm at either of its first or second ends.
Thus, Kaiser fails to show or suggest “an elongated anchor
member extending from a first end to a second end and attached
to the distal end of the flexible member such that the anchor
member is movable between an insertion configuration in which
the anchor member is substantially parallel to the flexible
member and a locked configuration in which the anchor member
is substantially perpendicular to the flexible member” in
combination with “a flexible removal element extending
substantially parallel to the flexible member from a proximal end
to a distal end attached to the first end of the anchor member,”
as recited in claim 1.
App. Br. 3–4.
Appellants further argue that the “Examiner points to an embodiment
seen in Fig. 6 in which a tubular member 43 is used as the locking member
40” but “the tubular member 43 is a ‘separate piece,’ as seen in Fig. 1, that is
placed within the adjustable loop portion 12 to prevent the adjustable loop
12 of the flexible members 10 from being pulled back out of the tissue.” Id.
at 4. Further, according to Appellants, “the tubular member 43 is only
disclosed as working in conjunction with the adjustable loop 12 - i.e.,
located between the two ends - not at the distal end of the flexible member
10 and certainly not connected to the distal end.” Id. at 5.
With respect to this rejection, the Examiner responds:
Kaiser further describes in Paragraph [0040] that: “... in various
embodiments, the locking member 40 can be an integral part of
the adjustable loop 12 or another portion of the flexible construct,
or the locking member 40 can be a separate piece, such as the use
of the restriction element 28 as a locking member depicted in
FIG. 70. As shown in FIG. 6A, the locking member 40 can be an
elbow 50 which defines a through passage 52 to receive a region
of a suture 51, for example. In other embodiments, the locking
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member 40 can be a construct 41 made of a length of a flexible
material having two knots located at the ends thereof as shown
in FIGS. 4 and 6B, a tubular member 43 as shown in FIGS. 1 and
6C, or an I-shaped or dumbbell shaped member 45 as shown in
FIG. 60.” Furthermore, regarding Appellant’s argument that the
reference number 40 can refer to a structure formed in the
flexible member itself (i.e. one or more knots) or a separate
element received over the flexible member such as the anchor
member 43: It is clear that the locking member (43) would be
attached to the distal end of the flexible member as stated in
claim 1 in order to be capable of securing and/or preventing the
adjustable loop (12) of the flexible member (10) from being
pulled back out of tissue as described by Kaiser in Paragraph
[0041] and as shown in Fig 1.
Ans. 5–6.
Appellants reply that Kaiser, as shown in Figure 1, does not suggest
that the flexible member is attached or could attach to an anchor member,
but instead passes through the loop formed in the flexible member. Reply
Br. 3. With regard to paragraph 40 of Kaiser, cited by the Examiner,
Appellants argue “reference number 40 refers to different structures in other
embodiments and distinguishes these embodiments from those which
include a separate member such as element 43 by saying the element 40 may
be integral or may be separate pieces.” Reply Br. 6. Appellants further
argue “the tubular member 43 is disclosed only as working in conjunction
with the adjustable loop 12 - i.e., located between the two ends - not at the
distal end of the flexible member 10 and certainly not connected to the distal
end.” Id. at 6.
We agree with Appellants that the evidence does not support the
Examiner’s finding that Kaiser teaches all of the limitations of independent
claim 1. We are persuaded by Appellants’ argument that Figure 1 shows
that tubular member 43, identified by the Examiner as the anchor member, is
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Application 13/419,908

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not attached to the flexible member 14. As argued by Appellants, paragraph
40 of Kaiser describes alternate embodiments in which the locking member
40 can be “an integral part of the adjustable lop 12 or another portion of the
flexible construct, or . . . a separate piece.” Kaiser ¶ 40. The locking
member 40 is further described as taking alternate shapes. Id. However,
none of these example embodiments or the disclosure of paragraph 40
teaches that the locking member is attached to the flexible member. See
Figures. 1, 4, 6, and 7.
“Anticipation requires that all of the claim elements and their
limitations are shown in a single prior art reference.” In re Skvorecz, 580
F.3d 1262, 1266 (Fed. Cir. 2009). Because the Examiner has not provided
evidence sufficient to support a prima facie case of anticipation, we reverse
the rejection of claims 1–2 and 4–7 as anticipated by Kaiser.

Obviousness
ISSUE
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner’s conclusion that Kaiser and Sakamoto
suggest the subject matter of claim 3.

ANALYSIS
The Examiner finds, in addition to the findings addressed above, that
Kaiser does not disclose a colored removal element, which would be “easily
visible and differentiated from the flexible member.” Ans. 3.
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The Examiner finds Sakamoto discloses “a suture member (Fig. 11)
wherein a removal element (30) is colored such that it is easily visible and
differentiated from a flexible member (22) (Paragraph [0032]).” Id. The
Examiner further finds that Sakamoto discloses “making the removal
element a different color from the flexible member and the surrounding
tissue so they can be distinguished from one another.” Id. The Examiner
concludes the skilled artisan would have found it obvious to “modify the
removal element of Kaiser et al. to be a different color than the flexible
member as taught by Sakamoto et al. in order to allow the removal element
to be clearly visually distinguished from the surrounding tissue.” Id. at 4.
Appellants offer no substantive arguments on this issue, but rely on
their response to the anticipation rejection. See App. Br. 6–7, Reply Br. 8.
As discussed above, the Examiner has not shown that Kaiser teaches
the “elongated anchor member extending from a first end to a second end
and attached to the distal end of the flexible member” limitation of
independent claim 1. Because Sakamoto is not cited to teach this limitation,
and therefore does not cure the deficiency, we likewise reverse the rejection
under 35 U.S.C. § 103(a) for failure to establish a prima facie case of
obviousness.
SUMMARY
We reverse both rejections.

REVERSED