Ex Parte Zirps et al

Patent Trial and Appeal Board

May 30, 2013

11857486 (P.T.A.B. May. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte CHRISTOPHER T. ZIRPS, CHARLES S. BRUNNER,
JEFFREY S. HOVIS, and CHRIS KILBURN-PETERSON
__________

Appeal 2012-003221
Application 11/857,486
Technology Center 3700
__________

Before ERIC GRIMES, LORA M. GREEN, and ERICA A. FRANKLIN,
Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
surgical repair assembly. The Patent Examiner rejected the claims as
anticipated and as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
Claims 1, 3-5 and 8-12 are on appeal. Claims 1 and 5 are
representative and read as follows:

Appeal 2012-003221
Application 11/857,486

2

1. A surgical repair assembly comprising:
at least one suture anchor having a suture anchor body with at least
one eyelet configured to enable a suture to be passed therethrough, and at
least one fixation feature on the anchor body for engaging bone; and
a first suture element passing through a respective one of the at least
one eyelets, the first suture element having a first end, a second end and a
suture diameter configured to enable it to pass slidably through the
respective eyelet, the first end terminating in a unique identifying feature
and having an adjacent stop member sized to be too large to pass through the
respective eyelet:
a second suture element passing through a respective one of the at
least one eyelets, the second suture element having a first end, a second end
and a suture diameter configured to enable it to pass slidably through the
respective eyelet, the first end terminating in a unique identifying
feature comprising a size or shape different than a size or shape of the
unique identifying feature of the first suture element and having an adjacent
stop member sized to be too large to pass through the respective eyelet.

5. The assembly of claim 4, wherein a distinguishing characteristic
formed on the second end of the first suture element correlates to the unique
identifying feature at the first end of the first suture element.

The Examiner set forth New Grounds of Rejection as follows:
1

• claims 1, 3, 4 and 8-12 under 35 U.S.C. §102(b) as anticipated by
Bojarski;
2
and
• claim 5 under 35 U.S.C. § 103(a) as unpatentable over Bojarski and
Pedlick.
3

1
The Examiner withdrew the previous grounds of rejection and replaced
them with new grounds of rejection based on the same references,
incorporating a new interpretation of the primary reference and claims.
(Ans. 4.) Appellants acknowledged and replied to the Examiner’s New
Grounds of Rejection. (Reply Br. 1.)
2
Patent Application Publication No. US 2003/0130694 A1 by Ray Bojarski
et al., published Jul. 10, 2003.
Appeal 2012-003221
Application 11/857,486

3
ANTICIPATION/OBVIOUSNESS
The same issue is dispositive with respect to both the anticipation and
obviousness rejection. Therefore, we consider these rejections together.
The Examiner found that Bojarski disclosed a surgical repair
assembly, as recited by independent claim 1. (Ans. 5.) With respect to the
suture elements, the Examiner found that “[t]he features of the suture
element can be interpreted [in] two ways,” as illustrated in the modified
versions of Bojarski Figure 2, reproduced below. (Id.)

The Examiner’s modified versions of Figure 2 depict a fastener, a
suture, and a retainer of Bojarski’s surgical device (Bojarski [0035])
modified with labels 1a, 2a, 1 and 3 by the Examiner (Ans. 7).

3
Patent Application Publication No. WO 97/37595 by Jack Pedlick et al.,
published Oct. 16, 1997.
Appeal 2012-003221
Application 11/857,486

4
According to the Examiner, in a first interpretation, Bojarski Figure 2
(upper modified figure) illustrates:
one suture element having a first end 1a, a second end 115 …
the first end terminating in a unique identifying feature 25 …
and an adjacent stop member 2a (which points to the bottom
surface of 25) … sized to be too large to pass through the
respective eyelet; wherein the stop 2a … on the suture element
comprises the unique identifying feature 25. Bojarski also
discloses the identifying feature 25 as a tag (Figure 2).

(Ans. 5-6.) In this first interpretation, the Examiner finds that Bojarski
disclosed that one or more sutures 30 can be passed through each opening
and coupled to one or more retainers 25. (Id. at 5.)
According to the Examiner, in a second interpretation, Bojarski Figure
2 (lower modified figure) illustrates:
The other suture element having a first end 1, a second
end 115 … and a suture diameter configured to enable it to pass
slidably through the eyelet … the first end terminating in a
unique identifying feature (the suture loop 3 is the identifying
feature in Figure 2 …) and having an adjacent stop member 25
and 35 sized to be too large to pass through the respective
eyelet; the unique identifying feature comprising a size or shape
different than a size or shape of the unique identifying feature
of the suture element in the [first interpretation].

(Id. at 6.)
Regarding the obviousness rejection of claim 5, the Examiner found
that Bojarski disclosed the assembly of claim 4, and relied on Pedlick for the
additional limitation recited in claim 5. (Id. at 7-8.)
Appellants contend:
At best, the reference shows an anchor with two identical
looped sutures having retainers. Identity of the structure does
not meet Applicants' claimed invention. …
Appeal 2012-003221
Application 11/857,486

5
Applicants’ claims define first and second sutures having
identifying features different from each other. This allows them
to be distinguished from each other during surgery. The
Examiner incredibly finds anticipation in a structure with
identical first and second sutures, that to the extent they even
have identifying features, those identifying features are the
same ….

(Reply Br. 2.)
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987).
We agree with Appellants that the Examiner has not accounted for
each element of independent claim 24 in either of the Examiner’s
interpretations of Bojarski. In particular, we find that the Examiner has not
established that Bojarski disclosed a first suture element having a first end
terminating in a unique identifying feature, as suture element 30 neither
terminates at element 25 nor at the Examiner’s labeled element 3. Further,
the Examiner has not established a second suture element having a first end
terminating in a unique identifying feature comprising a size or shape
different than a size or shape of the unique identifying feature of the first
suture element, as both sutures would have the same elements 25 and/or 3, in
either interpretation of Bojarski Figure 2.
Accordingly, we reverse the anticipation rejection.
Because the Examiner also relied on Bojarski as teaching the
assembly of claim 4 in the rejection of dependent claim 5 as obvious, we
also reverse the obviousness rejection.
Appeal 2012-003221
Application 11/857,486

6
SUMMARY
We reverse the anticipation rejection of claims 1, 3, 4 and 8-12;
we reverse the obviousness rejection of claim 5.

REVERSED

cdc