T.A.G. Medical Devices - Agriculture Cooperative Ltd.

Patent Trials and Appeals Board

Jan 19, 2022

2021001891 (P.T.A.B. Jan. 19, 2022)

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. 14/485,879 09/15/2014 Ran Oren 58790 1771 67801 7590 01/19/2022 PRTSI Inc. 232 NW 42nd Ter Plantation, FL 33317 EXAMINER SIPP, AMY R. ART UNIT PAPER NUMBER 3775 NOTIFICATION DATE DELIVERY MODE 01/19/2022 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): usptomail@ipatent.co.il PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RAN OREN, SUMANT G. KRISHNAN, LEE RANON, SHAI NAHMIAS, and ARYEH MIROCHINIK Appeal 2021-001891 Application 14/485,879 Technology Center 3700 Before BARRY L. GROSSMAN, LISA M. GUIJT, and LEE L. STEPINA, Administrative Patent Judges. GROSSMAN, 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 1-3. 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 real party in interest as T.A.G. Medical Devices - Agriculture Cooperative Ltd. Appeal Br. 2. Appeal 2021-001891 Application 14/485,879 2 CLAIMED SUBJECT MATTER The claims are directed to a medical device used for attaching a suture to a bone. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A medical implement,2 comprising: a hook for inserting in a first bore in a bone; and a passageway for placement at an entrance to a second bore in the bone, wherein said hook comprises a grasper extending therefrom, said grasper being adapted to grasp an end of a suture inserted through the passageway and through the second bore. REFERENCE The sole reference relied upon by the Examiner is Cerundolo, US 2006/0241657 A1, published October 26, 2006. REJECTION Claims 1-3 are rejected under pre-AIA 35 U.S.C. § 102(b) as being anticipated by Cerundolo. See Office Action mailed April 13, 2020 (“Office Act.”) 5. OPINION The determinative issue in this appeal is the construction of the word “hook,” as used in claims 1-3. The Patent and Trademark Office (“PTO”) 2 We note that the Claims Appendix provided by Appellant contains a minor error. Claim 1 in the Claims Appendix is missing the comma added after the word “implement” via an amendment prior to appeal, which was entered by the Examiner in the August 3, 2020, Advisory Action). Appeal 2021-001891 Application 14/485,879 3 determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction “in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The broadest reasonable interpretation does not mean the broadest possible interpretation. In re Smith Int’l, Inc., 871 F.3d 1375, 1383 (Fed. Cir. 2017). As stated in Smith Int’l, The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner. And it is not simply an interpretation that is not inconsistent with the specification. It is an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is “consistent with the specification.” Smith Int’l, 871 F.3d at 1382-83 (citations omitted). In the case before us, the claims do not provide a specific structure for the claimed “hook.” Thus, our focus turns to the Specification. The Disclosed Invention The Examiner stated that the claimed implement is shown in Figure 20 from Appellant’s Specification, as enlarged and annotated by the Examiner, and reproduced below. Ans. 4. Appeal 2021-001891 Application 14/485,879 4 Fig. 20 annotated and enlarged by the Examiner. Ans. 4. Figure 20 of Appellant’s application shows “a hook 130 at the distal end of [a] handle [120], and a loop 135 movable to an extended position with respect to the hook” (Spec. 19:3-5). The Examiner has labeled reference numeral 130 as a “hook” and reference numeral 135 as a “grasper.” See also id. at 9:22. We also reproduce below Figure 20 from Appellant’s Specification in its original context. Fig. 20 is an enlarged fragmentary view of encircled portion B of FIG. 19. Spec. 9:23. As is evident from the figures above, the Examiner’s “Fig. 20” also includes, and annotates, substantial portions of Figure 19. Figure 19 is a Appeal 2021-001891 Application 14/485,879 5 longitudinal sectional view of the disclosed medical implement, including a hook 130 at the handle 120’s distal end with a loop 135 extending from the hook 130. Spec. 9:22; see also id. at 19:3-5. The written description of the disclosed invention in Appellant’s application states that Figures 16-21 “illustrate another bone-tunneling implement constructed in accordance with an embodiment of the present invention.” Spec. 18:12-13. As described in the written description, the “medical implement” illustrated in Figures 16-21 includes handle 120 and distal end 122 for engagement with a bone in which a suture is to be attached. Id. at 18:31-19:1. The bone “would be pre-formed with a first bore B1 (FIG. lC).” Id. at 19:2-3. The medical implement also includes “hook 130 at the distal end of the handle, and loop 135 movable to an extended position with respect to the hook for facilitating entry of one end of the suture through the loop, and also movable to a retracted position for clamping the respective end of the suture.” Id. at 19:3-7. “[H]ook 130 is fixed, and the distal end 122 of the handle is movable towards and away from the hook in order to facilitate the entry and removal of the hook into the first bore B1.” Id. at 19:10-12. The written description of Applicant’s application further explains that “whereas hook 30 shown in [Figure] 2 is formed [at] an angle of about 90° between horizontal section 33 and end section 34, in the embodiment shown in [Figures] 16-21, hook 130 forms a larger angle of about 110°-115° between horizontal section 33 and end section 34.” Id. at 20:7-10. “Accordingly, with the embodiment in [Figures] 16-21, the angle between bores B1 and B2 formed using implement 100 is about 65°-70°.” Id. at 20:10-11. “In substantially all other respects, the bone-tunneling Appeal 2021-001891 Application 14/485,879 6 implement illustrated in FIG’s. 16-21 is constructed, and operates, in the same manner as” the embodiment in Figures 2-10D. Id. at 20:12-13. In use, as shown in flow diagram Figure 22, first bore B1 is formed in the bone, and hook 130 is then introduced into the first bore to be used as a reference point for forming bore B2 so that bores B1 and B2 intersect at a predetermined angle. Id. at 21:1-5. In the case before us, as in Smith Int’l, the Specification does not provide a specific definition of the key claim term at issue, here the word “hook.” We determine that an interpretation of the word “hook” that corresponds with what and how the inventor describes the invention in the Specification, i.e., an interpretation that is consistent with the Specification, and also consistent with dictionary definitions, is “a curved or bent device for catching, holding, or pulling” (see https://www.merriam- webster.com/dictionary/hook) (the “Merriam Webster definition”). This definition also is consistent with the American Heritage dictionary definition, which is a “curved or sharply bent device, usually of metal, used to catch, drag, suspend, or fasten something else” (see https://www.ahdictionary.com/word/search.html?q=hook) (the “American Heritage definition”). Both the Merriam Webster definition and the American Heritage definition were cited by the Examiner, as we discuss below. In the context of the patent application before us, we also determine that the claimed “hook” is more than any curved or bent structure. The Examiner’s Rejection The patent application at issue in this appeal was filed as a continued examination application under 37 C.F.R. § 1.114 after a final rejection. Appeal 2021-001891 Application 14/485,879 7 Office Act. 2. Appellant states that “[t]he application includes 23 claims. Claim 4-23 have been withdrawn from consideration. The claims in the application are: 1-23.” Appeal Br. 3. Appellant states “[t]he claims on appeal are 1-3.” Id. An amendment filed on June 25, 2020, responsive to the Office Action of April 13, 2020 corrected a typographical error in order to reduce the issues on appeal. Appeal Br. 4. The amendment was entered. See Advisory Action mailed August 3, 2020. Thus, claims 1-3 on appeal are as amended in the June 25, 2020 amendment. In the April 13, 2020, Office Action, the Examiner stated: As to claim 1, Cerundolo discloses a medical implement (FIGS. 10-11) comprising: a hook (82, 83, 85, & 21) capable of being inserted into a first bore (e.g. 52, Figs. 10 and 11) in a bone (e.g. 1, Fig. 11 ); and a passageway (passage/channel/cannulation through 81 and 84, ¶s 49-51) capable of being placed at an entrance to a second bore (e.g. 51, Figs. 10 and 11) in the bone (Figs. 10 and 11 ), wherein said hook comprises a grasper (hook portion 21 as defined, Fig. 11) extending therefrom (Fig. 11, ¶53), said grasper being capable of grasping an end of a suture inserted through the passageway and through the second bore (Figs. 11 and 12, ¶53). Office Act. 5. In the Examiner’s Answer, the Examiner provides a definition of “hook” as “something curved or bent like a hook” or “a curved or bent device for catching, holding, or pulling.” Ans. 7 (citing (https://www.merriam-webster.com/dictionary/hook). This proffered definition generally is consistent with a definition of “hook” previously Appeal 2021-001891 Application 14/485,879 8 adopted in the prosecution of Appellant’s application. See Office Action mailed April 23, 2018 (from parent application).3 We note that the primary definition of “hook” in both the Merriam Webster and American Heritage definitions are similar: “a curved or bent device for catching, holding, or pulling” (Merriam Webster); and “[a] curved or sharply bent device, usually of metal, used to catch, drag, suspend, or fasten something else” (American Heritage). In the Examiner’s Answer, the Examiner provides an annotated illustration of Figure 11 from Cerundolo, reproduced below, showing the Examiner’s interpretation and application of Cerundolo to claim 1. Annotated Figure 11 from Cerundolo in the Examiner’s Answer. Ans. 6. 3 In this Office Action, the Examiner relied on both the Merriam Webster and American Heritage dictionary definitions discussed previously in this Decision. The Examiner stated “The claimed ‘hook’ has been interpreted consistent with the plain meaning of the term as ‘a curved or bent device for catching, holding, or pulling’ (https://www.merriam- webster.com/dictionary/hook) or ‘A curved or sharply bent device, usually of metal, used to catch, drag, suspend, or fasten something else’ (https://www.ahdictionary.com/word/search.html?q=hook). Appeal 2021-001891 Application 14/485,879 9 The Examiner’s annotations of Figure 11 from Cerundolo show an irregular polygon, labelled “Hook,” enclosing almost the entirety of guide apparatus 8, including “second guide member 82” and “reference structure 83.” See Cerundolo [49], [50]. The only structures of guide apparatus 8 not included within the irregular polygon are first guide member 81 and its associated engagement portion 84. The Examiner also has labelled “retriever 21 having a hook at a distal end” (see Cerundolo, [53]) as “grasper,” which also is enclosed by the irregular polygon labelled “Hook.” As stated in the April 13, 2020, Office Action, and illustrated in the Examiner’s Answer, the Examiner considers the “hook” in Cerundolo to be elements (82, 83, 85, & 21) capable of being inserted into a first bore 52. Office Act. 5. The Examiner also finds that Cerundolo’s “hook” also “comprises a grasper (hook portion 21 as defined, Fig. 11).” Id. Thus, the Examiner’s view is that “grasper 21” in Cerundolo is an element of both the claimed “hook” and the claimed “grasper.” In the Examiner’s Answer, the Examiner further explains that “[a]s shown in Cerundolo Fig. 11, hook portion 83 is curved and hook portion 82 is shown in Fig. 11 holding in the bone (¶53) and thus the hook of Cerundolo comprises both the argued structure and argued function of a hook.” Ans. 7. Appellant’s Arguments Appellant argues that the “Examiner's interpretation of the claim language . . . ignores the structure claimed in order to justify a novelty rejection over Cerundolo.” Appeal Br. 7. According to Appellant, Cerundolo fails to teach, inter alia, “a hook as claimed.” Appeal Br. 10. Appeal 2021-001891 Application 14/485,879 10 Appellant argues that “[t]he dispute is about whether the bent (or curve) in the [Cerundolo] device is what enables the device to catch, hold or pull.” Appeal Br. 10; see also Reply 2 (“the Examiner’s rejection by Cerundolo relies upon an interpretation of the term ‘hook’ that is simply unreasonable and untenable”). According to Appellant, “in order for an element to be defined as a hook it should include a curve or bent which is what enables the device to catch, hold or pull.” Id. The specific functions of “catch, hold or pull” are not included in the claims on appeal. Appellant also argues that “the ‘hook’ of Cerundolo has not structural ability to perform a function of a hook and can therefore not correspond to the claimed hook.” Id. at 11. Appellant does not separately argue patentability of dependent claims 2 and 3. Appellant states “[d]ependent claims 2-3 are patentable at least by virtue of dependency on patentable independent claim 1.” Id. at 12. Cerundolo Cerundolo relates generally to “methods and apparatus for providing suture in a passageway.” Cerundolo [2]. Cerundolo refers to the disclosed structure as “a guide apparatus constructed and arranged to be used in an arthroscopic procedure and to interact with a passageway through a body portion formed by intersecting first and second holes.” Id. at [7]. Cerundolo also discloses that the “suture . . . may be retrieved from the guide member, for example, by a hook-shaped member, grasper or other suture retriever.” Id. at [31]. In the context of Figures 10 and 11 in Cerundolo, on which the Examiner specifically relies, Cerundolo discloses “guide apparatus” 8 used to form first and/or second holes of a suture passageway used to help feed a Appeal 2021-001891 Application 14/485,879 11 suture through the passageway. Id. at [49]. Guide apparatus 8 includes first and second “guide members” 81, 82. Cerundolo [50]. Guide 8 also includes “reference structure 83” arranged so that “first and second guide members 81 and 82 are positioned at a 90 degree angle relative to each other when engaged with the reference structure 83.” Id. First guide member 81 may include a feature to help secure first guide member 81 relative to the first hole 51, such as a threaded distal end that allows first guide member 81 to be screwed into the bone to a desired depth in the first hole 51. Id. at 49. Guide member 81, however, is a straight tubular element. It is not a “hook” and there is no suggestion that it could or should be curved in any manner. As shown in Figures 10 and 11 of Cerundolo, “reference structure 83” clearly is curved. As further explained in Cerundolo, however, reference structure 83 “may be arranged in any suitable way so as to orient the first and second guide members 81 and 82 at any desired angle relative to each other, including arranging the first and second guide members 81 and 82 in a co-linear fashion.” Id. at 50. Cerundolo also discloses that “reference structure 83 may be made so as to be adjustable, thereby allowing the orientation of the first and second guide members 81 and 82 to be changed.” Id. Cerundolo makes clear that the role of reference structure 83 is “to allow adjustment in the orientation of the guide members 81 and 82.” Id. Cerundolo also discloses that engagement portions 84 and 85 of reference structure 83 that engage with first and second guide members 81 and 82 may be adjustable in orientation relative to the arc-shaped connecting portion. Id. at [50]. Appeal 2021-001891 Application 14/485,879 12 There is no disclosure in Cerundolo that elements 81 or 82 are used as a hook, as we have defined it based on the Specification, “a curved or bent device for catching, holding, or pulling.” Guide members 81 and 82 are not curved or bent. Further, there is no disclosure that “engagement portions” 84 or 85 are used as a hook. Cerundolo also discloses using “retriever 21 having a hook at a distal end” for retrieving “wire 10 or other element [that] may be fed into one of the guide members and retrieved from the other of the guide members.” Cerundolo [53]. Cerundolo states that use of “retriever 21” “may be advantageous when using the guide apparatus 8 in an arthroscopic procedure where the operative site may not be easily visualized.” Id. Cerundolo also discloses that wire 10, not retriever 21, “may be used to pull the suture 3 through the passageway 5.” Id. at [58]. Analysis “The hallmark of anticipation is prior invention.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). As explained in Net MoneyIN, 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. Id. at 1371; see also Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987) (“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.”). Appeal 2021-001891 Application 14/485,879 13 The Examiner, using the claimed invention as a template, has selectively gleaned various elements disclosed in Cerundolo, such as reference elements 82, 83, 85, and 21, combined them together, and labeled the combined structures a “hook,” as recited in claim 1. We determine that there is no basis in Cerundolo for this selective combination of disparate elements. “Claims cannot be ‘anticipated’ by devices that are not the same. Invalidity for anticipation requires that ‘[t]he identical invention must be shown in as complete detail as contained in the patent claim.’” TF3 Ltd. v. Tre Milano, LLC, 894 F.3d 1366, 1374 (Fed. Cir. 2018) (quoting Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). Here, we determine that the device disclosed in Cerundolo is not the same as the device claimed, and thus, Cerundolo does not anticipate claims 1-3. CONCLUSION The Examiner’s rejection of claims 1-3 as anticipated by Cerundolo is reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-3 102 Cerundolo 1-3 REVERSED