Steven ChudikDownload PDFPatent Trials and Appeals BoardOct 8, 20212021000552 (P.T.A.B. Oct. 8, 2021) Copy Citation 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. 13/998,567 11/12/2013 Steven C. Chudik 5181-1011.1 1569 41528 7590 10/08/2021 Erickson Law Group, PC 1749 S. NAPERVILLE ROAD SUITE 202 WHEATON, IL 60189 EXAMINER PELLEGRINO, BRIAN E ART UNIT PAPER NUMBER 3799 NOTIFICATION DATE DELIVERY MODE 10/08/2021 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 2021-000552 Application 13/998,567 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 1–7, 10, 11, and 36. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as the named inventor, Steven C. Chudik. Appeal Br. 3. Appeal 2021-000552 Application 13/998,567 2 CLAIMED SUBJECT MATTER The claims relate to a cortical loop fixation system. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A cortical loop comprising a central portion configured to engage a bundle of soft tissue and capture the bundle against a bone surface, and attachment ends configured to engage a cortical surface of the bone at separate locations on the bone. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Kurland US 4,585,458 Apr. 29, 1986 Moore US 5,250,055 Oct. 5, 1993 Thal US 6,045,574 Apr. 4, 2000 Bowman US 6,179,840 B1 Jan. 30, 2001 Foerster US 7,963,972 B2 June 21, 2011 Burkhart US 7,981,140 B2 July 19, 2011 Lau US 2014/0081295 A1 Mar. 20, 2014 REJECTIONS Claims 1–7, 10, 11, and 36 are rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. Claims 1–7, 10, 11, and 36 are rejected under 35 U.S.C. § 112(b) as being indefinite. Claims 1–3 and 7 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Foerster. Claims 1 and 7 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Bowman. Appeal 2021-000552 Application 13/998,567 3 Claims 1–3 and 7 are rejected under 35 U.S.C. § 103 as being unpatentable over Foerster. Claim 4 is rejected under 35 U.S.C. § 103 as being unpatentable over Foerster and Lau or Kurland. Claim 5 is rejected under 35 U.S.C. § 103 as being unpatentable over Foerster and Burkhart. Claim 6 is rejected under 35 U.S.C. § 103 as being unpatentable over Foerster and Moore. Claims 10, 11, and 36 are rejected under 35 U.S.C. § 103 as being unpatentable over Kurland, Thal, and Supinski. OPINION Written Description and Indefiniteness Independent claims 1 and 36 each recite a cortical loop having “a central portion” and “attachment ends.” There is no further structure for those limitations recited in claim 1 or 36, other than that they are “configured to” do certain things. In claim 1, for example, the “central portion [is] configured to engage a bundle of soft tissue and capture the bundle against a bone surface,” and the “attachment ends [are] configured to engage a cortical surface of the bone at separate locations on the bone.” Similarly, claim 36 recites that the “central portion [is] configured to engage a bundle of soft tissue and capture the bundle against a bone surface of a first bone,” and the “attachment ends [are] configured to engage a cortical surface of a second bone.” The Examiner determines that these “configured to” limitations invoke 35 U.S.C. § 112(f). Final Act. 5–7. The Examiner additionally determines that these limitations lack sufficient written description support. Appeal 2021-000552 Application 13/998,567 4 Id. at 3, 5. Accordingly, the Examiner determines that the claims are indefinite. Id. at 6. Appellant does not dispute the Examiner’s rejections based on lack of written description and indefiniteness in any meaningful way. Appellant’s failure is, itself, grounds for affirmance of the § 112 rejections. Our rules state that Appellant’s “arguments shall explain why the examiner erred as to each ground of rejection contested by appellant.” See 37 C.F.R. § 41.37(c)(1)(iv). “When the appellant fails to contest a ground of rejection to the Board . . . the PTO may affirm the rejection of the group of claims that the examiner rejected on that ground without considering the merits of those rejections.” Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008). Appellant appears to conflate an earlier Board decision, which held that the Examiner failed to establish lack of enablement of claim 6 (which depends from claim 1), with an express determination that all claims are enabled, have sufficient written description, and are definite. Appeal Br. 13–15 (referencing Ex parte Chudik, Appeal No. 2018-001997 (PTAB January 29, 2019), hereinafter the “Prior Decision”). To be clear, the Prior Decision made no express holding that the claims are enabled, let alone that they have adequate written description support and are definite. To the contrary, the Prior Decision made clear that “Appellant does not identify any particular disclosure of attachment from the Specification” (Prior Decision 3), which Appellant acknowledges in its briefing (see Appeal Br. 13). With respect to the rejections before us in this proceeding, Appellant does not dispute the Examiner’s determination that the “configured to” limitations invoke 35 U.S.C. § 112(f). Nor does Appellant identify any Appeal 2021-000552 Application 13/998,567 5 structure associated with those limitations (see Appeal Br. 13–15; Reply Br. 1–5), even after the Examiner’s express invitation to do so (Final Act. 6–7). The standard for determining whether a limitation is a means-plus- function term is not based merely on the presence or absence of the word “means,” but, rather, is based on “whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (internal citation omitted). Based on the record before us, we have no reason to believe that the recited “central portion” or “attachment ends” are understood by persons of ordinary skill in the art as the name for any particular structure. Therefore, we agree with the Examiner’s undisputed determination that the recited “central portion” and “attachment ends” are means-plus- function terms, subject to 35 U.S.C. § 112(f). A means-plus-function limitation “shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” 35 U.S.C. § 112(f). “[W]e next determine whether the specification discloses sufficient structure that corresponds to the claimed function.” Williamson, 792 F.3d at 1351. “If the patentee fails to disclose adequate corresponding structure, the claim is indefinite.” Id. at 1352 (citation omitted). The Specification references the cortical loop capturing a soft tissue graft and engaging bone, but provides no detail beyond that general disclosure of function. Spec. 7. Based on our review of the Specification, we see no description as to what causes the described function. The drawings provide a schematic depiction of the cortical loop, and fail to Appeal 2021-000552 Application 13/998,567 6 provide any level of detail regarding the capturing or attachment recited in the claims. We are left to wonder what causes the recited function. For at least these reasons, we are unable to reasonably discern what structure is required by the recited “central portion” or “attachment ends.” Accordingly, we sustain the Examiner’s decision to reject claims 1–7, 10, 11, and 36 as indefinite. We also sustain the Examiner’s decision to reject claims 1–7, 10, 11, and 36 as lacking written description support. See Manual of Patent Examining Procedure (“MPEP”) § 2163(II)(A)(3)(a) (9th Ed., Rev. 10.2019, June 2020) (“when a means- (or step-) plus-function claim limitation is found to be indefinite based on failure of the specification to disclose sufficient corresponding structure, materials, or acts that perform the entire claimed function, then the claim limitation necessarily lacks an adequate written description”). The Examiner provides separate bases for rejecting dependent claims 5 and 7 as being indefinite. Appellant does not acknowledge, let alone address, those rejections. Accordingly, we summarily affirm those rejections. See Hyatt, 551 F.3d at 1314. Anticipation and Obviousness Because we determine the claims to be indefinite, and addressing the limitations of the claims would require speculation on our part, we do not reach the merits of the anticipation and obviousness rejections related to claims 1–7, 10, 11, and 36. Instead, we reverse those rejections. See In re Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the Board erred in affirming an anticipation rejection of indefinite claims); In re Steele, 305 F.2d 859, 862 (CCPA 1962) (holding that the Board erred in affirming a rejection of indefinite claims under 35 U.S.C. § 103(a), because the rejection Appeal 2021-000552 Application 13/998,567 7 was based on speculative assumptions as to the meaning of the claims). It should be understood, however, that our decision in this regard is based solely on the indefiniteness of the claimed subject matter, and does not reflect on the adequacy of the prior art evidence applied in support of the rejections. CONCLUSION The Examiner’s written description and indefiniteness rejections are affirmed. The Examiner’s anticipation and obviousness rejections are reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–7, 10, 11, 36 112(a) Written Description 1–7, 10, 11, 36 1–7, 10, 11, 36 112(b) Indefiniteness 1–7, 10, 11, 36 1–3, 7 102(a)(1) Foerster 1–3, 7 1, 7 102(a)(1) Bowman 1, 7 1–3, 7 103 Foerster 1–3, 7 4 103 Lau, Kurland 4 5 103 Foerster, Burkhart 5 6 103 Foerster, Moore 6 10, 11, 36 103 Kurland, Thal, Supinski 10, 11, 36 Overall Outcome 1–7, 10, 11, 36 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). Appeal 2021-000552 Application 13/998,567 8 AFFIRMED Copy with citationCopy as parenthetical citation