Ex Parte PETROS

Patent Trials and Appeals Board

Jun 7, 2019

13362462 - (D) (P.T.A.B. Jun. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/362,462 01/31/2012
22440 7590 06/11/2019
GOTTLIEB RACKMAN & REISMAN PC
270 MADISON A VENUE
8THFLOOR
NEW YORK, NY 10016-0601
FIRST NAMED INVENTOR
Peter Emmanuel PETROS
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.
4150/006 4147
EXAMINER
BUI, VYQ
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
06/11/2019 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):
patenteaction@grr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER EMMANUEL PETROS
Appeal2017-010656
Application 13/362,462 1
Technology Center 3700
Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner's rejection of claims 1, 4--18, 26-28, 33, and 34. We have
jurisdiction under 35 U.S.C. § 6(b). On June 4, 2019, the Board held an oral
hearing.
We REVERSE.
1 According to Appellant, "[t]he real party [in] interest ... is the inventor,
Peter Emmanuel PETROS." Appeal Brief (filed Aug. 30, 2016) (hereinafter
"Appeal Br.") 2.
Appeal2017-010656
Application 13/362,462
According to Appellant, the "invention relates to an anchor[,] which
can be used in surgical procedures on both humans and animals." Spec. 1
(unnumbered paragraph). Claims 1, 16, and 26-28 are the independent
claims on appeal. Below, we reproduce claim 1 as illustrative of the
appealed claims.
1. A method of providing ligamentary-like support between
two tissues disposed at spaced locations in the body of a patient,
comprising the steps of:
fixing an anchor to the tissue at each location;
providing a filamentary element, wherein said anchors
include an aperture and at least some of said anchors further
include a retaining element, said retaining element being
configured to permit said filamentary element to be drawn
through said aperture in one direction and to prevent movement
of said filamentary element through said aperture in the opposite
direction;
connecting said anchors by passing said filamentary
element through the respective apertures of the anchors; and
adjusting the tension of the filamentary element between
the locations by drawing the filamentary element through at least
one of the anchors with the retaining element, the retaining
element preventing said filamentary element from moving back
through said aperture after said filamentary element is released
thereby retaining said filamentary element between the anchors
in a state of tension, wherein the filamentary element establishes
a sling-like support for an organ or other body tissue between the
two tissues and the filamentary element is retained in the state of
tension between the anchors by said retaining element after the
filamentary element is released to provide said ligamentary-like
support between the tissues.
2
Appeal2017-010656
Application 13/362,462
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows 2 :
I. Claim 13 under 35 U.S.C. § 112(b) as indefinite for failing to
particularly point out and distinctly claim the subject matter
Appellant regards as the invention;
II. Claims 1, 5, 6, 14--18, 26-28, 33, and 343 under
35 U.S.C. § I02(e) as anticipated by Rosenblatt et al.
(US 6,981,983 Bl, iss. Jan. 3, 2006) (hereinafter "Rosenblatt");
III. Claims 4 and 7-12 under 35 U.S.C. § 103 as unpatentable over
Rosenblatt and Damarati (US 2003/0130669 Al, pub. July 10,
2003); and
IV. Claim 13 under 35 U.S.C. § 103 as unpatentable over
Rosenblatt and Thompson et al. (US 6,451,024 B 1, iss.
Sept. 17, 2002) (hereinafter "Thompson").
ANALYSIS
Reiection I
Dependent claim 13 recites, in relevant part "[a] method according to
claim 1 wherein the spaced locations are one of the rectovaginal ligaments
or the arcus tendineus ligaments to each side of the vagina or other
ligaments/muscle/tissue within the pelvic floor." Supplemental Appeal Brief
(filed Dec. 23, 2016) (hereinafter "Supp. Appeal Br."), Claims App. As set
2 In the Answer, the Examiner withdraws certain indefiniteness and
obviousness rejections of the claims. See, e.g., Answer 6.
3 Inasmuch as claims 29-32 are canceled (see Supplemental Amendment
(filed Sept. 17, 2015), 10), we treat the Examiner's apparent rejection of
these claims (see, e.g., Answer 3) as a typographical error.
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Appeal2017-010656
Application 13/362,462
forth above, the Examiner rejects dependent claim 13 as indefinite,
determining that
[a] broad range or limitation together with a narrow range or
limitation that falls within the broad range or limitation (in the
same claim) is considered indefinite, since the resulting claim
does not clearly set forth the metes and bounds of the patent
protection desired ....
In the present instance, line 3, claim 13 recites the broad
recitation "other ligaments/muscle/tissue within the pelvic
floor," and lines 5---6 [ ofJ the claim . . . recite[] "one of the
rectovaginal ligaments and the arcus tendineus ligaments[,]"
which is the narrower statement of the range/limitation [ set forth
earlier in the claim].
Answer 2-3.
We disagree with the Examiner that claim 13 is indefinite because it
recites that the claimed "spaced locations are" either of two specific
ligaments or "other ligaments ... within the pelvic floor," the specific
ligaments falling within the group of other ligaments. Restated, Appellant's
claim is not indefinite because it states that the spaced location is one of
either specific option A, specific option B, or a group that includes specific
options A and B. Rather, we agree with Appellant that "claim 13 merely
recites the various tissues that can be used [in the] practice the claimed
method[,] and hence the meaning of the claim is ... clear to a person skilled
in the art[,] and ... is not indefinite." Appeal Br. 14.
Thus, we do not sustain the Examiner's indefiniteness rejection of
claim 13.
Reiection II
As set forth above, independent claim 1 recites, in relevant part,
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Appeal2017-010656
Application 13/362,462
providing a filamentary element, wherein said anchors include
an aperture and at least some of said anchors further include a
retaining element, said retaining element being configured to
permit said filamentary element to be drawn through said
aperture in one direction and to prevent movement of said
filamentary element through said aperture in the opposite
direction.
Supp. Appeal Br., Claims App. ( emphases added). The Examiner relies on a
finding that Rosenblatt' s Figures 16A and 16B, and accompanying
description from column 15, line 60 to column 16, line 10, "inherently"
disclose that locks 806 in anchors 802 prevent movement of connector 804
through anchors 802 in one direction ( while allowing connector 804 to move
through locks 806 in anchors 802 in the opposite direction). Answer 13.
As set forth above, claim 1 expressly recites that "said retaining
element [is] configured ... to prevent movement of said filamentary element
through said aperture in [one of two directions.]" A relevant dictionary
definition of "prevent" is "to keep from happening." From
https://www.merriam-webster.com/dictionary/prevent (last accessed June 4,
2019). This definition is consistent with Appellant's Specification. See,
e.g., Spec. ,r 7 ("[T]he retaining means enables movement of the filamentary
element through the anchor to enable the length of the filamentary element
between the locations to be shortened but ... prevent[s] movement of the
filamentary element through the anchors [which would] enable the length of
the filamentary element between the [locations] to be increased.") ( emphasis
added).
We well know that "[i]nherency ... 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." In re Robertson, 169
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Appeal2017-010656
Application 13/362,462
F.3d 743, 745 (Fed. Cir. 1999). We have thoroughly reviewed the
Examiner's findings and conclusions regarding Rosenblatt, including the
Examiner's explanation of the friction imparted by locks 806 during the
adjustment of Rosenblatt's connector 804 relative to anchors 802. See, e.g.,
Answer 7-16. Our review reveals that, on the record before us, the
Examiner has not established that Rosenblatt's locks 806 necessarily prevent
movement of connector 804 through anchors 802 in one direction. Instead,
it appears that one could move Rosenblatt's connector 804 selectively in
both directions through either of anchors 802, notwithstanding any friction
imparted by locks 806.
Thus, based on the foregoing, we do not sustain the Examiner's
obviousness rejection of claim 1. We also do not sustain the obviousness
rejection of independent claims 16 and 26-28, each of which includes a
similar recitation as claim 1, and which the Examiner rejects for similar
reasons as claim 1. Further, we do not sustain the Examiner's obviousness
rejection of claims 5, 6, 14--18, 33, and 34 that depend from the independent
claims.
Reiections III and IV
Claims 4 and 7-13 depend from claim 1. The Examiner does not rely
on either Damarati or Thompson to disclose anything that remedies the
above deficiency in claim 1 's rejection. Thus, we do not sustain the
Examiner's obviousness rejections of claims 4 and 7-13.
DECISION
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Appeal2017-010656
Application 13/362,462
We REVERSE the Examiner's indefiniteness and obviousness
rejections of claims 1, 4--18, 26-28, 33, and 34.
REVERSED
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