Jörg Mayer et al.

Patent Trials and Appeals Board

Oct 17, 2019

13522611 - (D) (P.T.A.B. Oct. 17, 2019)

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.
13/522,611 09/20/2012 Jörg Mayer FRG-35911 1093
40854 7590 10/17/2019
RANKIN, HILL & CLARK LLP
38210 GLENN AVENUE
WILLOUGHBY, OH 44094-7808
EXAMINER
SIPP, AMY R.
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
10/17/2019 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):
40854@rankinhill.com
spaw@rankinhill.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JÖRG MAYER, MILICA BERRA, ANDREA MUELLER,
STEPHANIE GOEBEL-MEHL, ANDREAS WENGER, and
ELMAR MOCK

Appeal 2018-008027
Application 13/522,611
Technology Center 3700
____________

Before LINDA E. HORNER, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.

HORNER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 11‒15, 17, 20‒22, and 26‒28. Final
Office Action (Sept. 14, 2017, “Final Act.”). We have jurisdiction under
35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
SportWelding GmbH. Appeal Br. 3.
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Application 13/522,611

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The Examiner rejected the claims as unpatentable over various
combinations of prior art. Appellant argues that the Examiner used
impermissible hindsight to pick and choose features from the prior art and
has failed to provide adequate reasoning to explain why one having ordinary
skill in the art would have been led to modify the prior art in the manner
claimed. Appeal Br. 19‒20.
For the reasons explained below, we agree with Appellant that the
Examiner has failed to provide adequate reasoning to support the
determination of obviousness. Thus, we REVERSE.
CLAIMED SUBJECT MATTER
The claimed subject matter on appeal relates to fastening tissue or a
prosthetic element, i.e., a graft, in an opening in a bone. Spec. 1:4‒6, 7:2‒6.
The graft is fastened to the bone by press-fitting the graft in the opening
using a fastener to clamp the graft against a first portion of the wall of the
opening and anchoring the fastener in a second portion of the wall of the
opening through a positive-fit connection between an anchoring element and
the second wall portion. Id. at 7:18‒24, Figs. 1(a)‒1(f). The positive-fit
connection is achieved using an anchoring element comprising a material
that can be liquefied by the application of energy. Id. at 8:14‒15. The
anchoring element is liquefied in situ such that the liquefied material
penetrates the bone tissue. Id. at 8:16‒18. Once the anchoring element
material re-solidifies, it creates an anchorage to the bone. Id. at 8:18‒19.
Claim 11 is representative of the subject matter on appeal and is
reproduced below, with the limitation relevant to the outcome of this appeal
shown in italics.
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11. A set for fastening tissue or a prosthetic element inside
an opening provided in a human or animal bone, the set
comprising a fastener, the fastener comprising:
a proximal face,
a distal end,
a fastener axis extending between the proximal face and
the distal end and a circumferential surface extending around
the fastener axis, and
the fastener defining a guiding portion and further
comprising at least one first portion of the circumferential
surface and at least one second portion different from the first
portion of the circumferential surface,
the set further comprising at least one anchoring element and an
anchoring tool,
wherein the anchoring element comprises a
material having thermoplastic properties, and
the anchoring tool comprises a distal end adapted
to the anchoring element and is capable of transmitting
energy to the anchoring element and advancing the
anchoring element relative to the fastener,
the set further comprising a guide tool,
the guide tool comprising a distal end adapted in
cross section to a proximal cross section of the fastener
and further comprising a through channel adapted in
cross section to a distal portion of the anchoring tool,
wherein the distal end of the guide tool is adapted to hold the
fastener,
wherein the first portion comprises at least one first
sector and is equipped for anchoring the fastener inside an
opening,
wherein said guiding portion comprises a material having
thermoplastic properties or is equipped to guide a material
having thermoplastic properties to the at least one first portion,
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Application 13/522,611

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wherein the second portion comprises at least one second
sector designed as a pressing sector, said pressing sector being
capable of clamping a tissue or prosthetic element against an
inside wall of the opening, whereby the fastener is equipped for
fastening the tissue or prosthetic element to the inside wall of
the opening,
wherein the at least one second sector is at least one of:
flat, or substantially smooth, or comprises one of: a
retainer or an axial shallow groove for accommodating
the tissue or prosthetic element or a strand thereof,
wherein the proximal face of the fastener comprises a
stepped profile, and
wherein the distal end of the guide tool comprises a
stepped profile, the guide tool stepped profile meshing with the
fastener stepped profile in such a manner as to prevent the
fastener from rotating, and
wherein said fastener stepped profile defines a unique
radial orientation position of the fastener.
Appeal Br. 27‒28.
EVIDENCE
The Examiner relies on the following evidence in the grounds of
rejection on appeal.
Simonian US 6,099,530 Aug. 8, 2000
Aeschlimann US 2004/0030341 A1 Feb. 12, 2004
Dorawa US 2009/0018590 A1 Jan. 15, 2009
Schmieding US 2009/0192546 A1 July 30, 2009
van der Burg
(“Burg”)2
US 2010/0121348 A1 May 13, 2010

2 The Examiner refers to this reference as “Burg.” Final Act. 7. We do
likewise for consistency.
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Application 13/522,611

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REJECTIONS3
The following rejections under pre-AIA 35 U.S.C. § 103(a) are on
appeal:
1. Claims 11‒13, 15, 17, 20‒22, and 26‒28 are rejected as
unpatentable over Simonian, Schmieding, Aeschlimann, and Burg.
2. Claim 14 is rejected as unpatentable over Simonian, Schmieding,
Aeschlimann, Burg, and Dorawa.
ANALYSIS
Rejection of claims 11‒13, 15, 17, 20‒22, and 26‒28
Claim 11 recites a set for fastening tissue or a prosthetic element
inside an opening in a bone comprising a fastener, an anchoring element, an
anchoring tool, and a guide tool. Appeal Br. 27‒28. These claimed
elements are shown in Figure 1(e), which is reproduced below, and has been
annotated to identify the claimed elements.

3 The Final Office Action included a rejection of claim 11 under pre-AIA
35 U.S.C. § 112, first paragraph, for failing to comply with the written
description requirement, and of claims 11‒15, 17, 20‒22, and 26‒28 under
pre-AIA 35 U.S.C. § 112, second paragraph, as being indefinite. Final
Act. 4‒6. Later, the Examiner agreed to enter Appellant’s amendment to the
claims that overcame these rejections. Adv. Act. 1‒2.
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Figure 1(e) shows a phase of an exemplary extra-graft fixation in a bone
tunnel using an exemplary embodiment of the invention.
Claim 11 recites that the guide tool has “a distal end adapted in cross
section to a proximal cross section of the fastener” and “is adapted to hold
the fastener” and the guide tool further has “a through channel adapted in
cross section to a distal portion of the anchoring tool.” Id. at 27. The distal
end of the guide tool also “comprises a stepped profile” that meshes with a
stepped profile on the fastener “in such a manner as to prevent the fastener
from rotating” relative to the guide tool. Id. at 28.
In the rejection of claim 11, the Examiner found that Simonian
discloses a fastener 100 having a circumferential surface (defined by the
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surfaces of channels 108, 110, 112, 114 and securing members 116, 118,
120, 122), and defining a guiding portion 138, at least one first portion
(securing members) 116, 118, 120, 122 of the circumferential surface
capable of anchoring fastener 100 inside the bone opening, and at least one
second portion (channels 108, 110, 112, 114) different from the first portion
of the circumferential surface in the form of an axial shallow groove for
accommodating tissue and capable of use as a pressing sector to clamp tissue
against the inside wall of the opening. Final Act. 7‒8 (citing Simonian,
Fig. 3).
The Examiner found that Burg teaches a set comprising a fastener 401
and a guide tool 400, where the distal end of the guide tool is adapted to hold
the fastener, and wherein the proximal face of the fastener and the distal end
of the guide tool comprise cooperating stepped profiles that prevent the
fastener from rotating relative to the guide tool. Final Act. 15 (citing Burg,
Figs. 26A, 26B, 27B, 28).
The Examiner determined that one having ordinary skill in the art
would have been led to modify the fastening device of Simonian to add a
stepped portion to the proximal end of the fastener and to add a cooperating
stepped portion to the guide tool,4 as taught by Burg, “in order to stabilize

4 Simonian does not disclose a guide tool. The Examiner determined that
one having ordinary skill in the art would have been led to modify
Simonian’s device to include: (1) openings in the guiding portion
(cannulation 138) of Simonian’s fastener, (2) an anchoring element
(containing growth material); and (3) an anchoring tool, which includes a
guide tool, as taught by Schmieding, and to further modify the anchoring
element and anchoring tool to use a thermoplastic liquefiable material and
ultrasound resonator, as taught by Aeschlimann. Final Act. 16.

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and prevent any inadvertent rotation of the fastener (Burg ¶ 114) as rotation
of the set is not required for insertion into a bone tunnel (Simonian col. 3
lines 47-49 and col. 4 lines 33-35) and inadvertent rotation could result in
shifting between the soft tissue implant and the fastener and subsequently
result in damage to the soft tissue implant.” Final Act. 17. We examine
Simonian and Burg and the Examiner’s articulated reasoning for their
combination.
Simonian discloses a fixation device for securing soft tissue to bone.
Simonian, 1:5‒8. The embodiment relied on by the Examiner is depicted in
Figure 3 of Simonian, reproduced below.

Figure 3 shows a soft-tissue fixation device.
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Simonian describes that cannulation 138 runs through device body
106 for receiving a guidewire to aid in inserting fixation device 100 into
bone tunnel 18. Id. at 4:27‒29. In use, the guidewire is positioned through
bone tunnel 18, fixation device 100 is passed over the guidewire into bone
tunnel 18 with the aid of an insertion tool, not shown, located within recess
124. Id. at 4:29‒33. Recess 124 is located on proximal end 128 of device
body 106, and is shown as being circular in shape. Id. at 4:4‒5, Fig. 3.
Simonian describes that fastening device 100 is inserted into bone tunnel 18
and “neither rotation of the fixation device or [sic] insertion of [a] second
member to expand the device or wedge the device in place is required to
position the fixation device within the bone tunnel.” Id. at 4:34‒37.
Burg discloses an insertion tool to secure a knotless suture anchor in
bone and to adjustably apply tension to a suture. Burg ¶ 10. Figure 26B of
Burg, reproduced below, shows insertion tool 400 in use with knotless
suture anchor 401. Id. ¶ 53.

Figure 26B shows a partial side view of the distal end of insertion tool 400
as it is being inserted into knotless suture anchor 401.
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Burg describes that insertion tool 400 includes outer shaft 402 and
inner shaft 404, each having handle 406, 410, respectively (not visible in
Figure 26B). Burg ¶ 112. These handles are used by the surgeon to hold
outer shaft 402 stationary while rotating inner shaft 404 to wind the suture
onto the knotless suture anchor. Id. ¶¶ 112, 116. In this embodiment of
Burg, inner shaft 404 has notch-shaped engaging member 418 on its distal
end that is configured to engage a pin (not visible in Figure 26B) in suture
anchor 401. Id. ¶ 113. Burg teaches that engaging member 418 on tool 400
is shaped to matingly engage pin (or a similar element) in suture anchor 401
“for the purpose of rotating an inner tubular member 433 [(not visible in
Figure 26B)] of the knotless suture anchor.” Id. ¶ 113. Burg describes that
“[w]hen the inner shaft 404 of the insertion tool 400 is rotated to impart a
rotational force to the inner tubular member of the knotless suture anchor,
the outer shaft 402 of the insertion tool is used to stabilize and prevent any
inadvertent rotation of the outer tubular member of the knotless suture
anchor.” Id. ¶ 114. To prevent such rotation of outer tubular member 439 of
suture anchor 401, Burg discloses protrusion 434 on the distal end of outer
shaft 402 which engages aperture 438 in outer tubular member 439. Id.
The Examiner’s proposed modification to add a stepped profile to the
distal end of a guide tool that is used in combination with Simonian’s
fastener is not supported by adequate reasoning. For instance, Simonian’s
fastener 100, shown in the Figure 3 embodiment relied on by the Examiner,
is not a knotless suture anchor of the type disclosed in Burg having a
rotatable inner tubular member. Thus, the problem addressed by Burg’s
engaging protrusion 434 and aperture 438, i.e., to prevent outer tubular
member 439 of the suture anchor from rotating during rotation of inner
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tubular member, is not present in the embodiment of Figure 3 of Simonian.
Further, the Examiner has provided no evidence that potential rotation of
this fastener is a problem during insertion of Simonian’s fastener into the
bone opening. As discussed above, Simonian’s fastener is press-fit in the
hole using an insertion tool. Even if one were to modify Simonian to add
the openings, anchoring element, and anchoring tool of
Schmieding/Aeschlimann, the Examiner has not shown how such a
modification would present a rotational component or potential problem
with rotation of the fastener5 that would need to be solved with Burg’s
protrusion on the distal end of the insertion tool.
We recognize that Simonian discloses alternative fixation device 60
that calls for rotation of inner member 90 to deploy projections 86 into
channels 66, 68, 70, 72. Simonian, 5:11‒21, Figs. 5, 6. The Examiner
expressly disavowed reliance on this embodiment of Simonian in the
rejection. Ans. 5 (noting, in response to Appellant’s discussion of the
embodiment of Figures 5 and 6, that “the cited embodiment is that of
Fig[ure] 3”). We decline to opine for the first time on appeal whether this
alternative embodiment may suffer from a problem of inadvertent rotation of
the outer portion of the fixation device similar to that discussed in Burg.
The Examiner’s reasoning for modifying Simonian with the teachings
of Burg “to align” the fastener and the tool (Ans. 14) and to prevent

5 Although Schmieding discloses a fixation device in the form of a bone
screw that is rotated during insertion into the bone channel, the Examiner
explained in the Answer that “[t]he combination does not propose rotating
the device of Simonian Fig. 3” and that Schmieding is relied on to teach
“adding openings, growth material/anchoring element, [and anchoring]
tool.” Ans. 4.
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“inadvertent rotation” of the fastener (Final Act. 17; Ans. 14) is inadequate,
because the Examiner has not provided sufficient evidence showing that one
having ordinary skill in the art implanting Simonian’s fastener would have
been concerned with rotational alignment of the fastener and the tool, or
would have had any problem with inadvertent rotation of the fastener. For
these reasons, the Examiner has failed to articulate adequate reasoning for
the proposed modification of Simonian with the teachings of Burg. Thus,
we do not sustain the rejection of independent claim 11 and its dependent
claims 12, 13, 15, 17, 20‒22, and 26‒28 under 35 U.S.C. § 103(a).
Rejection of claim 14
The Examiner adds Dorawa to the underlying combination of
Simonian, Schmieding, Aeschlimann, and Burg in the rejection of dependent
claim 14. Final Act. 17‒19. The Examiner does not rely on Dorawa to cure
any of the above-noted deficiencies in the modification of Simonian with the
teachings of Burg relied on in the rejection of independent claim 11. Id. at
19 (proposing to enlarge the diameter of the inner fastener cavity with the
teachings of Dorawa). Thus, for the same reasons discussed above, we
likewise do not sustain the rejection of claim 14 under 35 U.S.C. § 103(a).
DECISION
The decision of the Examiner rejecting claims 11‒15, 17, 20‒22, and
26‒28 is reversed.

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13
CONCLUSION
In summary:
Claims
Rejected
Basis Affirmed Reversed
11‒13, 15, 17,
20‒22, 26‒28
§ 103(a)
Simonian, Schmieding,
Aeschlimann, Burg
11‒13, 15, 17,
20‒22, 26‒28
14 § 103(a)
Simonian, Schmieding,
Aeschlimann, Burg,
Dorawa
14
Overall
Outcome
11‒15, 17,
20‒22, 26‒28

REVERSED