Ex Parte Russo

Patent Trial and Appeal Board

Aug 27, 2018

14286142 (P.T.A.B. Aug. 27, 2018)

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
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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
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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:
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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
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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
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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.
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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
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