Ex Parte Pandya

Patent Trial and Appeal Board

Jan 5, 2017

12270525 (P.T.A.B. Jan. 5, 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.
12/270,525 11/13/2008 Rajiv D. Pandya 048408.006 2337
51108 7590 01/05/2017
DAVID L. KING, SR.
5131 N.E. COUNTY ROAD 340
HIGH SPRINGS, FL 32643
EXAMINER
OU, JING RUI
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
01/05/2017 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 RAJIV D. PANDYA
________________

Appeal 2015-000849
Application 12/270,525
Technology Center 3700
________________

Before MICHAEL L. HOELTER, LYNNE H. BROWNE, and
THOMAS F. SMEGAL, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner’s final rejection of claim 7. Br. 5. Claims 1–6 and 8–16 have
either been canceled or withdrawn. Br. 5. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

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THE CLAIMED SUBJECT MATTER
The disclosed subject matter relates “to the field of osteal guides,
surgical drilling systems and methods and devices for drilling osteal tunnels,
and more particularly is related to systems and methods for anchoring
sutures, such as sutures extending through osteal tunnels.” Spec. ¶ 1.
Independent claim 7 is the sole claim on appeal and is reproduced below:
7. A suture anchoring system for anchoring sutures
extending from osteal tunnels during arthroscopic surgery
comprising a round or oval shaped anchor sized to
accommodate a plurality of sutures through which one or more
sutures can extend being threaded through the anchor, the
anchor being manufactured from a malleable or deformable
metal material of a round or oval washer shaped ring to anchor
the one or more sutures, wherein, after being deformed under
pressure using pliers, forceps or tweezers to apply pressure to
deform from opposing sides of the anchor to grip the one or
more sutures, the anchor is configured to resist both further
deformation and returning to the original shape thereby
preventing the sutures from pulling from the anchor, and
wherein the anchor is structured to have a flat end surface or
curved end surface configured to be approximately the same as
an outer surface of a bone; and when the anchor is deformed to
grip the sutures and then pulled back by the sutures, the anchor
is configured to have the end surface lie relatively flush against
the surface of the bone.

REFERENCE RELIED ON BY THE EXAMINER
Gertner US 2005/0267533 A1 Dec. 1, 2005

THE REJECTIONS ON APPEAL
Claim 7 is rejected under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement.
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Claim 7 is rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the applicant regards as the invention.
Claim 7 is rejected under 35 U.S.C. § 102(b) as being anticipated by
Gertner.

ANALYSIS
The rejection of claim 7 as being indefinite
The Examiner contends, “[t]he limitation ‘a round or oval washer
shaped ring’ in line 5 of claim 7 is unclear because it is unclear what it
means by ‘a round or oval washer shaped ring.’” Final Act. 4; see also
Ans. 3. The Examiner first states, “[f]or example, the Boker’s washers have
many different shapes that are round.” Final Act. 4; Ans. 3. However, this
explanation by the Examiner about how other washers have round shapes is
not indicative that “a round or oval washer shaped ring” is unclear. The
Examiner also explains that “some round or oval washers [have] gears,” but
again, the Examiner does not make clear how some washers “with gears”
renders “a round or oval washer shaped ring” as being unclear. See Final
Act. 4; Ans. 3. Also, when addressing the anticipation rejection of claim 7,
the Examiner provides a definition of “washer” from Dictionary.com
beginning “a flat ring or perforated piece...”. Final Act. 5. Hence,
substituting just this part of the Examiner’s own definition into this claim
phrase, the phrase could be read as a round or oval flat ring or perforated
piece. It is not understood how this might be unclear to one skilled in the
art. Accordingly, we are not in agreement with the Examiner’s reasons as to
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why the claim phrase “a round or oval washer shaped ring” is unclear. See
supra. We do not sustain the Examiner’s indefinite rejection of claim 7.
The rejection of claim 7
as failing to comply with the written description requirement
The Examiner has determined that “[t]he limitation ‘the anchor is
structured to have a flat end surface’ in line 9 of claim 7 does not have
sufficient support in the original disclosure and is considered as new
matter.” Final Act. 4. Earlier, Appellant sought to amend the Specification
to include a reference to “flat.” See Appellant’s Amendment dated
December 12, 2013. However, in the subsequent Final Office Action, the
Examiner objected to such amendment. Final Act. 1–2. The Examiner
explained, “[t]he added material which is not supported by the original
disclosure is as follows: ‘[t]he anchor 29 also can have flat or curved end
surface’ in paragraph [0086].” Final Act. 2. The Examiner also notes
Appellant’s reference to “the limitation ‘the anchor is structured to have a
flat end surface’ as recited in claim 7” but states “[t]he limitations in claim 7
cannot rely on [an] amended specification which was not entered.” Ans. 2.
Thus, the Examiner finds that the claim term “flat” lacks written support.
Final Act. 4; Ans. 2.1
We disagree with the Examiner. First, the Examiner understands that
“line 5 of claim 7” includes “[t]he limitation ‘a round or oval washer shaped

1 The Examiner also explains that “the actual device/anchor of the pending
application is a three-dimensional device” and that “the original disclosure
does not disclose that the drawings are drawn to scale.” Ans. 2. Hence,
reliance on “Figures 10 and 11 alone do not provide sufficient support for
the limitation ‘the anchor is structured to have a flat end surface’ as recited
in claim 7.” Ans. 2.
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ring.’”2 Final Act. 4. Further, as the Examiner explained supra, the
definition of “washer” is “a flat ring or perforated piece . . .”. Final Act. 5.
Thus, according to the Examiner, the anchor’s washer shape incorporates a
“flat” surface based upon the Examiner’s own definition. As such, we fail to
understand the Examiner’s premise that there is no support for the claimed
washer/anchor having “a flat end surface.” Accordingly, we do not sustain
the Examiner’s lack-of-written-support rejection of claim 7.
The rejection of claim 7 as being anticipated by Gertner
The Examiner references Figures 3A–3C of Gertner, and particularly
anchor items 72, 74 illustrated therein, as disclosing the claimed suture
anchoring system. Final Act. 5. Appellant disagrees with the Examiner’s
findings of anticipation “because all these prior art anchors used were in soft
tissue and not in articulating joints.” Br. 11. In effect, Appellant is asking
the Board to consider the disclosed use or function of the device, not its
structure. However, we are instructed by our reviewing court that “the
absence of a disclosure relating to function does not defeat [a] finding of
anticipation.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We
are also instructed that “apparatus claims cover what a device is, not what a
device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464,
1468 (Fed. Cir. 1990). Hence, Appellant’s contention that the prior art
device is used “in soft tissue and not in articulating joints” is not persuasive
of Examiner error. See also Ans. 4–5.
Appellant further contends that in Gertner, “the only portion that is
deformed is a hollow cylinder [i.e., item 74] integral to or appended to a

2 For clarity, claim 7 recites that the anchor is “of a round or oval washer
shaped ring to anchor the one or more sutures.”
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washer [i.e., item 72].” Br. 11. However, this is not a correct understanding
of Gertner because paragraph 96 of Gertner states, “preferably, the anterior
anchor body [i.e., item 72] is made of a semi-rigid polymer which can be
deformed into a folded configuration with a reduced profile as illustrated in
FIG. 3B.” This is consistent with the Examiner’s finding that both items 72
and 74 are “manufactured from a malleable or deformable metal material
(Paras. [0097] and [0075]).” Final Act. 5. Appellant explains that “[t]he
washer or flat portions are not crimped” but Appellant does not explain how
Gertner’s teaching (and illustration) of the washer or flat portion 72 being
“deformed into a folded configuration” fails to teach this washer being
“crimped.” Gertner ¶ 96; see also Fig. 3B.
Appellant further states, “the deformed cylinder 74 when combined
with the washer 72 cannot lay flush to the bone.” Br. 11. First, claim 7
recites that the anchor is configured to “lie relatively flush” and hence the
prior art anchor need only “relatively” conform to a surface shape. Also, the
Examiner is not only considering “cylinder 74,” but also “washer 72” as
comprising the anchor. Final Act. 5. As such, we note paragraph 97 of
Gertner which teaches (a) that the anterior anchor (i.e., items 72 and 74) is
arranged “such that it touches the anterior stomach wall and encourages
tissue ingrowth” and also (b) that preferably “the anterior anchor is disc-
shaped and substantially flat.” Appellant does not explain how one skilled
in the art would understand Gertner’s “disc-shaped and substantially flat”
anchor which is applied to (i.e., “touches”) the stomach wall fails to at least
suggest that the anchor lies “relatively flush” with this wall so that ingrowth
is encouraged.
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Appellant also addresses such features as “an anchor that would lie
over the tunnel opening against the bone, stay centered by the tension on the
suture and lay relatively flat so as to minimize discomfort, but avoid knots
and tying of sutures while maintaining tension.” Br. 12. Based on these
“practical concept[s] taught by the present invention,” Appellant argues that
“[t]he prior art of Gertner simply does not do this nor is it capable of doing
this.” Br. 12. Appellant is addressing non-claimed features and we are
instructed that arguments addressing non-claimed features are not persuasive
of Examiner error. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(“[A]ppellant’s arguments fail from the outset because…they are not based
on limitations appearing in the claims”); see also In re Hiniker Co., 150 F.3d
1362, 1369 (Fed. Cir. 1998) (unclaimed features cannot impart
patentability). Accordingly, Appellant’s contention is not persuasive of
Examiner error.
Appellant also provides a summary conclusion that “[n]ot one of the
prior washer type anchor devices shows the washer part being permanently
deformed as required in the present invention.” Br. 12. However, Appellant
does not address figure 3B of Gertner which is described as illustrating the
anchor “in its reduced profile and deployed configuration.” Gertner ¶ 37.
Nor does Appellant address paragraph 96 of Gertner which, as discussed
supra, states that this illustrated anchor “can be deformed into a folded
configuration with a reduced profile.” Accordingly, Appellant’s contention
is not persuasive of Examiner error.
In summation, and based on the record presented, we sustain the
Examiner’s rejection of claim 7 as being anticipated by Gertner.

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DECISION
The Examiner’s rejections of claim 7 as lacking written support and
being indefinite are reversed.
The Examiner’s rejection of claim 7 as anticipated by Gertner is
affirmed.
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).

AFFIRMED