2020004276 (P.T.A.B. Feb. 23, 2021)

Steven Chudik

Patent Trials and Appeals BoardFeb 23, 2021

2020004276 (P.T.A.B. Feb. 23, 2021)

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. 15/731,719 07/24/2017 Steven C. Chudik 7555P0100US 6554 41528 7590 02/23/2021 Erickson Law Group, PC 1749 S. NAPERVILLE ROAD SUITE 202 WHEATON, IL 60189 EXAMINER NELSON, CHRISTINE L ART UNIT PAPER NUMBER 3774 NOTIFICATION DATE DELIVERY MODE 02/23/2021 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): pdocket@ericksonlawgroup.com randall@ericksonlawgroup.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEVEN C. CHUDIK Appeal 2020-004276 Application 15/731,719 Technology Center 3700 Before DANIEL S. SONG, JEREMY M. PLENZLER, and NATHAN A. ENGELS, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 4, and 7. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the inventor, Steven. C. Chudik, as the real party in interest. Appeal Br. 3. Appeal 2020-004276 Application 15/731,719 2 CLAIMED SUBJECT MATTER The claims are directed to connecting tissue to bone. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of connecting soft tissue to a bone comprising the steps of placing loops having adjustable length at sites on the cortical surface of the bone, placing the soft tissue on the cortical surface and through the loops, and tensioning the soft tissue and the loops to form contact of the soft tissue on the cortical surface. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Stone US 2009/0318961 A1 Dec. 24, 2009 REJECTION Claim 1, 4, and 7 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Stone. OPINION As seen above, claim 1 recites, in a very general manner, “placing loops . . . on the cortical surface of the bone” in some unspecified manner. The Specification provides no guidance as to this recited placement. See Spec. 7–8. Nevertheless, the claim requires that general placement of the loops to be on the cortical surface of the bone, and the Examiner fails to establish a proper anticipation rejection. The entirety of the Examiner’s rejection of claim 1 is that Appeal 2020-004276 Application 15/731,719 3 Stone discloses a method of connecting soft tissue to a bone [0006] comprising the steps of placing loops (Figure 11A, loops 46) having adjustable length [described in 0046] at sites on the cortical surface of the bone (via fastener 56), placing the soft tissue (Figure 12A, 64) on the cortical surface and through the loops, and tensioning the soft tissue and the loops to form contact of the soft tissue on the cortical surface [0047]. Final Act. 3. In the Answer, the Examiner explains that “in order to engage in bone the fasteners would contact the cortical bone, thus placing the suture loops on the cortical surface via the fastener.” Ans. 4. Appellant responds that “the Examiner is referring to two different ways of attaching soft tissue to a bone.” Appeal Br. 13 (referencing the Examiner’s citation to Stone’s Figures 11A and 12A). Appellant is correct, and the Examiner never addresses this issue. The rejection is based on anticipation by Stone, and the Examiner has cited to what appears to be two separate embodiments from Stone (bone screws 56 in Figure 11A and fixation members 60 for ACL repair, which are not bone screws, in Figure 12A), and provides no basis for us to believe that Stone expressly contemplates the use of those separate embodiments in combination. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (“unless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102”). For at least the reasons set forth above, we do not sustain the Examiner’s decision to reject claims 1, 4, and 7. Appeal 2020-004276 Application 15/731,719 4 CONCLUSION The Examiner’s rejection is reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4, 7 102 Stone 1, 4, 7 REVERSED