Ex Parte RussoDownload PDFPatent Trial and Appeal BoardAug 27, 201814286142 (P.T.A.B. Aug. 27, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/286,142 05/23/2014 50855 7590 Covidien LP 60 Middletown A venue Mailstop 54, Legal Dept. North Haven, CT 06473 08/29/2018 FIRST NAMED INVENTOR Mark Russo 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. H-US-03677 (203-9448) 9106 EXAMINER HOUSTON, ELIZABETH ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 08/29/2018 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): rs. patents. two@medtronic.com mail@cdfslaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARK RUSS0 1 Appeal2017-008737 Application 14/286, 142 Technology Center 3700 Before ERIC B. GRIMES, JOHN G. NEW, and JOHN E. SCHNEIDER, Administrative Patent Judges. NEW, Administrative Patent Judge. DECISION ON APPEAL 1 Appellant identifies Covidien LP as the real party-in-interest. App. Br. 2. Appeal2017-008737 Application 14/286, 142 SUMMARY Appellant files this appeal under 35 U.S.C. § I34(a) from the Examiner's Final Rejection of claims 1, 3---6, 8-13, and 1 7-20 as unpatentable under 35 U.S.C. § I03(a), as being obvious over the combination of Shipp (US 2007/0038220 Al, February 15, 2007) ("Shipp") and Paz et al. (US 2007/0088390 Al, April 19, 2007) ("Paz.") We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. NATURE OF THE CLAIMED INVENTION Appellant's invention is directed to a surgical fastener that is configured with optimized mesh retention properties, while minimizing the portion or size of the surgical fastener inserted into tissue. Abstract. REPRESENTATIVE CLAIM Claim 1 is representative of the claims on appeal and recites: 1. A surgical fastener comprising: a head section having a radial outer surface and a threaded section extending radially from the radial outer surface, the head section including an arm member pivotably disposed on the radial outer surface of the head section between a first condition and a second condition, the arm member radially constrained against the radial outer surface while in the first condition, the threaded section defining a maximum diameter of the head section while the arm member is disposed in the first condition, the arm member defining the maximum diameter the [sic] of the head section while the arm member is disposed in the second condition, wherein in the first condition, the maximum diameter of the head section delimits a space defined adjacent to the threaded section and the arm member; and 2 Appeal2017-008737 Application 14/286, 142 a tissue snaring section defining a longitudinal axis and extending away from the head section, at least one helical thread defined along an outer surface of the tissue snaring section; wherein the tissue snaring section is configured to rotate about the longitudinal axis in a radial direction, and the arm member is configured to pivot outwardly from the head section in the radial direction. App. Br. 10. ISSUES AND ANALYSES We adopt the Examiner's findings of fact, reasoning, and conclusions that the appealed claims are prima facie obvious over the prior art. We address the arguments raised by Appellant below. Issue Appellant argues that the Examiner erred because the proposed combination of the cited prior art is based on conclusory statements and otherwise lacks an articulated rational underpinning. App. Br. 5. Analysis Appellant argues all of their claims together. App. Br. 5, 8. Shipp is directed to a method of producing and deploying a bio- absorbable hernia mesh fixation fastener. Shipp ,r 33. The Examiner finds that Shipp teaches all of the limitations of claim 1, except for the limitation reqmnng: the head section including an arm member pivotably disposed on the radial outer surface of the head section between a first condition and a second condition, the arm member radially constrained against the radial outer surface while in the first condition, the threaded section defining the maximum diameter 3 Appeal2017-008737 Application 14/286, 142 of the head section while the arm member is disposed in the first condition, the arm member defining the maximum diameter the of the head section while the arm member is disposed in the second condition .... Final Act. 3--4. Paz is directed to a surgical fastener that may be used to attach one or more pieces of surgical filament into a body cavity in order to position an organ in the cavity, or to form a lattice of filaments to support a body tissue. Paz ,r 11. The Examiner finds Paz teaches a tissue fastener comprising a head section having a radial outer surface, the head section including an arm member pivotably disposed on an outer surface of the head section between a first condition, wherein the arm members are radially constrained against the radial outer surface while in the first condition and a second condition, wherein the arm member is capable of pivoting outwardly from the head in a radial direction. Final Act. 4 ( citing Paz Fig. 3; ,r 64 ). The Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time the invention was made to incorporate the arms, as taught by Paz, to the head section of Shipp, to prevent the head section from penetrating body tissue. Appellant first points to Figures 1 and 3 of Shipp. App. Br. 6. Appellant argues that Shipp teaches, with respect to these Figures, that "mesh retention section 12 locks mesh 52 on to fastener 10 when mesh 52 is screwed past the proximal-most tissue-snaring thread 15c." Id. (quoting Shipp ,r 50). Figure 1 of Shipp is reproduced below: 4 Appeal2017-008737 Application 14/286, 142 ~ ~{:j ( .. , ......... _ ..... ·~ ' ~ .~>~ <, ·~ ~j_:. ~ } :... .) / :: ./· .:,, ,./,'/. >'"'d/s·., ·l)•' \ '··-· ~ "? Figure 1 of Shipp depicts a lateral view of a tissue fastening device Appellant argues that the head section 11 of Shipp maintains the mesh 52 against the tissue 51. App. Br. 6. Appellant asserts that, if the head section 11 of Shipp penetrated through the mesh 52 and tissue 51, as suggested by the Examiner, the mesh 52 would fall off, subverting the purpose of the fastener. Id. Furthermore, argues Appellant, Shipp teaches that, in addition to locking the mesh 52 on the mesh retention section 12 of the fastener 10, the structure of the head section 11 also includes opposing head threads 17 that extend radially outward from the head section 11. Id. Appellant argues that these threads 17 further maximize the dimensions of the head section 11 of Shipp beyond the widest dimension of the threads 15 of the fastener 10. Id. at 6-7. Appellant asserts that these threads 17 further prevent the head section 11 of Shipp from penetrating the mesh 52 and/or tissue 51. Id. at 7. Therefore, if the head section of Shipp is already "prevented from penetrating tissue," Appellant states that he does not understand how adding the arms of Paz to the head section of Shipp would "decrease damage to 5 Appeal2017-008737 Application 14/286, 142 tissue," as asserted by the Examiner. App. Br. 7. Appellant speculates that, to the extent that the head section 11 of Shipp somehow damages the tissue with its unmodified structure, then adding more structure, such as the arms of Paz, could increase the damage by increasing the amount of contact surface would cause more of the same type of damage. Id. Therefore, Appellant argues, a person of ordinary skill in the art would not have sought to modify the head section 11 of Shipp to include an arm, as taught by Paz, to "prevent the head section from penetrating body tissue" given that Shipp has already solved that problem. App. Br. 8 ( citing Ex parte Rinkevich, Appeal No. 2007-1317, 2007 WL 1552288, at *4 (BPAI 2007) ("[A] person of ordinary skill in the art having common sense at the time of the invention would not have reasonably looked to [the secondary reference] to solve a problem already solved by [the primary reference]")). Finally, Appellant contends that the Examiner has failed to provide any evidentiary support to show that providing arms, as taught by Paz, to the head section of Shipp would provide a more effective device to "prevent the head section from penetrating body tissue," than would Shipp's unmodified device. App. Br. 8 (citing In re Grose, 592 F.2d 1161 (C.C.P.A. 1979). We are not persuaded by Appellant's arguments. Both Shipp and Paz are directed to fasteners that can be used, inter alia, in laparoscopic surgery to fasten a supporting mesh to tissue to reinforce repair of an inguinal hernia. See Shipp ,r 4; Paz ,r 14, see also ,r 10. Shipp teaches that: "mesh retention section 12 locks mesh 52 on to fastener 10 when mesh 52 is screwed past the proximal-most tissue-snaring thread 15c since there is no thread located in mesh retention section 12 that would allow mesh 52 to be unscrewed from fastener 10." Shipp ,r 50. In 6 Appeal2017-008737 Application 14/286, 142 other words, Shipp expressly teaches that the mesh retention section 12 of Shipp prevents the tissue and mesh from coming away from the fastener in a direction opposite to that of the screw's travel. Paz teaches that, with respect to its expanding arms, i.e., tail members: The tail members 26 are constrained in the compressed configuration shown in FIG. 2a prior to insertion of the distal portion 28 into a body tissue, and expand into the expanded configuration shown in FIG. 2b in order to prevent the disc 22 from entering the tissue. The flexible members 26 can be covered with flexible sheet 27. Paz ,r 63. It is evident from the teachings of Paz that the purpose of its arm members, like those of the arm members in Appellant's claimed invention, is to expand the diameter of the head section of the fastener to prevent the head of the fastener from penetrating the mesh, and thus permitting the mesh to pull away from the tissue ( with the fastener still attached to the tissue). Therefore, the mesh retention segment of Shipp and the arm members of Paz perform a similar function (preventing the fastener from separating from the mesh and tissue) but do so by opposing means. The mesh retention segment of Shipp prevents the mesh from "unscrewing itself' from the fastener, whereas the expanding arms prevent the fastener from having its head pulled through the mesh. Furthermore, Shipp teaches certain embodiments of its fastener lack the mesh retention segment. See, e.g., Shipp ,r 50. In considering such embodiments, it would have been similarly obvious to a person of ordinary skill in the art to combine the references so that the arm members of Paz ensure that the fastener is secured to the mesh and tissue. See Paz ,r 64. 7 Appeal2017-008737 Application 14/286, 142 We therefore agree with the Examiner that a person of ordinary skill would have been motivated to combine the teachings of Shipp and Paz to minimize the likelihood that the mesh could pull away from the tissue to which it was attached by the fastener. We consequently affirm the Examiner's rejection of the claims. DECISION The Examiner's rejection of claims 1, 3---6, 8-13, and 17-20 as unpatentable under 35 U.S.C. § 103(a) is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv). AFFIRMED 8 Copy with citationCopy as parenthetical citation