Biomet Sports Medicine, LLC

Patent Trials and Appeals Board

Apr 29, 2020

15418129 - (D) (P.T.A.B. Apr. 29, 2020)

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.
15/418,129 01/27/2017 Daniel R. Norton 4394.G99US1 3211
104326 7590 04/29/2020
Schwegman Lundberg & Woessner / Zimmer
P.O. Box 2938
Minneapolis, MN 55402
EXAMINER
BACHMAN, LINDSEY MICHELE
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
04/29/2020 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):
SLW@blackhillsip.com
USPTO@slwip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DANIEL R. NORTON and GREGORY J. DENHAM

Appeal 2019-006928
Application 15/418,129
Technology Center 3700
____________

Before JOHN C. KERINS, JAMES P. CALVE and
BENJAMIN D. M. WOOD, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1, 2, 5–14, and 16–20.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The term “Appellant” is used herein to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Biomet Sports Medicine, LLC, as the
real party in interest. Appeal Br. 3.
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Application 15/418,129

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THE CLAIMED SUBJECT MATTER
Appellant’s invention relates to a suture capture device and method.
Claim 1 is illustrative, and is reproduced below:
1. A suture capture device, comprising:
an elongate cannulated tool, a first end of the elongate cannulated
tool comprising a sharpened point configured to pierce tissue;
an elongate hook member positioned within a hollowed center
region of the elongate cannulated tool, the elongate hook member
comprising a hook on a first end of the elongate hook member
that is positionable proximate the sharpened point of the elongate
cannulated tool, the elongate hook member capable of advancing
and retracting within the elongate cannulated tool;
an elongate sleeve positioned around at least a portion of the
elongate hook member, the elongate sleeve configured to be
advanced from the cannulated tool and configured to clamp a
suture against a portion of the hook; and
a handle positioned on a second end of the elongate cannulated
tool opposite the first end, the handle comprising a trigger that
advances the hook out of the first end of the elongate cannulated
tool when moved in a first direction and retracts the hook into the
hollowed portion of the elongate cannulated tool when moved in
a second direction opposite the first direction.

THE REJECTIONS
The Examiner rejects:
(i) claims 1, 2, 5–12, 14, 16–18, and 20 under 35 U.S.C. § 103 as
being unpatentable over Riza (US 5,817,111, issued Oct. 6, 1998) in view of
Quill (US 2015/0018940 A1, published Jan. 15, 2015);
(ii) claim 13 under 35 U.S.C. § 103 as being unpatentable over Riza in
view of Quill and Hart (US 5,643,292, issued July 1, 1997); and
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(iii) claim 19 under 35 U.S.C. § 103 as being unpatentable over Riza
in view of Quill and Wortrich (US 5,364,365, issued Nov. 15, 1994).
Claim 4 is pending in this application, and the Examiner notes that
claim 4 depends from canceled claim 3, and is therefore objected to, and not
treated on the merits. Final Act. 5. Appellant presents claim 4 in the Claims
Appendix to the Appeal Brief as depending from independent claim 1.
Appeal Br. 21. Appellant attempted to have the dependency of claim 4
amended from canceled claim 3 to claim 1 in an “Amendment & Response
Under 37 C.F.R. § 1.116,” dated February 6, 2019. Entry of the proposed
amendment was refused in an Advisory Action dated February 26, 2019.
Although claim 4 is not specifically subject to a rejection on the
merits, it is of improper form as reciting a dependency from a canceled
claim, and is not presently in condition for allowance.

ANALYSIS
Claims 1, 2, 5–12, 14, 16–18 and 20--35 U.S.C. § 103--Riza/Quill
Appellant argues these claims as a group, presenting arguments for
claim 1, but no separate arguments for the patentability of other claims.
Accordingly, we take claim 1 as representative of the group, and claims 2,
5–12, 14, and 16–20 stand or fall with claim 1.
The Examiner finds that Riza discloses many of the limitations
appearing in claim 1, but does not teach an elongate sleeve positioned
around elongated hook member 32 and configured to be advanced from
cannulated tool 25 and to clamp a suture against a portion of the hook. Final
Act. 6. The Examiner looks to Quill as disclosing an elongated cannulated
tool 252 having a hook member 214 with a hook that is used to capture an
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element 202 by advancing an elongate sleeve 204 over the hook to compress
element 202 between the hook and the sleeve. Id. The Examiner concludes
that it would have been obvious to modify Riza to provide it with an
additional sleeve that can be advanced to close the Riza hook over a suture,
as an application of a known technique from one device on another that is
within the level of ordinary skill in the art. Id. at 7. The Examiner
additionally points out that the proposed modification would allow Riza to
beneficially grip or release the suture without moving the outer cannulated
tool that is in contact with potentially delicate body tissues. Ans. 7.
Appellant advances a number of arguments traversing the rejection.
Initially, Appellant maintains that “there is no explicit teaching or suggestion
in Quill that would allow one of ordinary skill in the art to conclude that it
would be possible to use the needle 204 of Quill for locking or otherwise
engaging [a] suture (in the manner recited in Appellant’s claims) with the
device of Riza.” Appeal Br. 11. Appellant explains that “the needle 204 of
Quill is used in combination with a push rod 214 for a very different purpose
(deploying an anchor 202 into the heart) and has a very different function (to
release the anchor 202 from the device).” Id. at 12.
The argument is not indicative of Examiner error in combining the
teachings of Riza and Quinn in the obviousness rejection. Appellant’s
argument fails to consider that, in Riza, the locking or engaging of the suture
is already accomplished by advancing a hollow cylindrical member
(cannulated tool 25) over hook member 32, and the rejection simply
proposes to add an additional hollow cylindrical member that can be
advanced and retracted inside cannulated tool 25, in the manner of needle
204 of Quinn, so that the same locking and unlocking positions of hook
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member 32 may be attained without advancing or retracting the outer
cannulated tool itself.
Additionally, Appellant’s characterization of needle 204 of Quill as
performing a deployment and release of anchor element 202 tells only part
of the story. A person of ordinary skill in the art would recognize that, as
the Quinn device is assembled for use in deploying anchor 202, needle 204
is advanced over push rod 214 having a hook-like recess at its distal end
while a proximal end of anchor 202 is seated in the push rod recess,2 so as to
capture the proximal end of the anchor within needle 204, essentially in the
same manner as a suture is captured by hook member 32 as cannulated tool
25 advances over the hook member. Quill ¶ 49 (needle 204 slidably retains
helical anchor 202); ¶ 50 (helical anchor 202 loaded within needle 204); ¶ 52
(relative movement of needle 204 and push rod 214/anchor 202 unsheathes
and releases anchor). That person of ordinary skill in the art, not being an
automaton,3 would recognize that the Riza and Quill devices similarly
capture, and release from capture, an article by extending or retracting a
sheath over an internal hook or push rod having a hook-like component.
Appellant posits, without further explanation, that “Appellant’s sleeve
is of an entirely different construct from the needle 204 of Quill.” Appeal
Br. 12. The remainder of the paragraph that this appears in discusses the
operation of push rod 214 in deploying anchor 202, and does not evidence

2 Or push rod 214 is retracted within needle 204, the relative movement
being the same either way.
3 See KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).

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the alleged “entirely different construct.” The argument fails to apprise us of
Examiner error.
Appellant next argues that “Appellant fails to see how the needle 204
of Quill would be configured to clamp suture against a portion of hook in the
manner recited in claims 1 and 11 especially because the device of Quill has
the needle 204 with a sharp end and relies on the push rod 214 to deploy the
helical anchor.” Appeal Br. 13; see also Reply Br. 6. The argument fails to
address the rejection articulated by the Examiner. A sleeve/needle such as
needle 204 that can be advanced and retracted relative to an inner element
such as Appellant’s push rod or Riza’s hook would be recognized by a
person of ordinary skill in the art as performing essentially the same function
in Riza as does cannulated tool 25 in Riza, while at the same time obviating
the need to advance and retract the cannulated tool itself. In the proposed
modification of Riza that adds a sleeve like that disclosed in Quill,
advancement of the sleeve over the hook member 32/40 and hook 46, or
retraction of the hook member into the sleeve, would cause hook 32/40 to
flatten toward finger 36 to a closed position to frictionally entrap, i.e., clamp,
a suture against hook 32/40. Riza 7:2–10, Fig. 10.
Appellant argues that the Examiner has mischaracterized Quill as
including “a ‘grasping device’ having a ‘sleeve’ that is ‘used to capture an
element (202) inside the body,’” maintaining that Quill is used to deploy
element 202. Appeal Br. 14. Regardless of the appropriateness of the
Examiner’s exact wording, the Examiner is correct that, as assembled and
prior to deployment, needle 204 and push rod 214 having a hook-like recess
at its distal end operate to “capture” the bead disposed at the proximal end of
anchor 202. Appellant’s argument in this respect again fails to credit what a
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person of ordinary skill in the art would understand from the teachings of
Riza and Quill in terms of using advancement and/or retraction of a sleeve
over an inner member to control capture and/or release functions of the inner
member.
Appellant argues that the rejection “seeks to combine a suture capture
device of Riza with a deployment device of Quill,” and that “adding a needle
and a push rod (as used for delivery in the device of Quill) to the device of
Riza would interfere with the ability of the Riza device to engage [a] suture
by interfering/obstructing closing of the hook to grasp suture.” Appeal Br.
15–16; Reply Br. 4–5. The argument misstates the basis for the rejection,
which “does not suggest adding a needle and a push rod to the device of
Riza ‘111. The rejection merely suggests providing Riza ’111 with an
additional sleeve.” Ans. 6–7 (emphasis omitted). Accordingly, the
argument does not apprise us of error in the rejection.
Appellant asserts that it “fails to see how the needle of Quill with a
sharp point could be utilized with the device of Riza without abrading or
otherwise damaging the suture when used for clamping.” Appeal Br. 17.
Appellant points to no evidence that this would occur, and we note as well
that the hook member of Riza, even prior to the proposed modification, is
deployed from a pointed end portion of cannulated tool 25, so the fact that
needle 204 is pointed would not appear to affect the operation of the Riza
device.
Appellant additionally challenges the Examiner’s reason to modify
Riza in view of Quill, advancing similar arguments as are addressed above
regarding alleged differences between capturing a suture as contrasted with
deploying a helical anchor. Appeal Br. 18. Again, we view Appellant’s
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arguments as failing to fully credit the knowledge of the person of ordinary
skill in the art, and how the two references would be understood by that
hypothetical person.
The Reply Brief reiterates that Riza and Quill individually perform
different operations, with Riza being a suture capture device, whereas Quill
is used to deploy a helical anchor. Reply Br. 3. The rejection, as noted
above, does not borrow from Quill the specifics of deploying an anchor, but
rather only the teaching of employing a sleeve or needle intermediate an
outer elongate cannulated tool and an inner mechanism to interact with the
inner mechanism in the Riza device, such that the sleeve interacts with the
inner mechanism instead of, and in essentially the same manner as, the outer
elongate cannulated tool.
In view of the foregoing, none of Appellant’s arguments apprise us of
error in the rejection of claim 1 as being unpatentable over Riza and Quill.
The rejection is sustained. Claims 2, 5–12, 14, 16–18, and 20 fall with claim
1.

Claim 13--35 U.S.C. § 103--Riza/Quill/Hart
Appellant argues only that Hart does not overcome alleged
deficiencies in the combination of Riza and Quill applied in rejecting claim
11, from which claim 13 depends. Appeal Br. 19. Because, as explained
above, we do not find such deficiencies in the combination of Riza and
Quill, the rejection of claim 13 is sustained.
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Claim 19--35 U.S.C. § 103--Riza/Quill/Wortrich
Appellant argues only that Wortrich does not overcome alleged
deficiencies in the combination of Riza and Quill applied in rejecting claim
11, from which claim 19 depends. Appeal Br. 19. Because, as explained
above, we do not find such deficiencies in the combination of Riza and
Quill, the rejection of claim 19 is sustained.

DECISION
The rejection of claims 1, 2, 5–12, 14, 16–18, and 20 under 35 U.S.C.
§ 103 as being unpatentable over Riza and Quill is affirmed.
The rejection of claim 13 under 35 U.S.C. § 103 as being unpatentable
over Riza, Quill, and Hart is affirmed.
The rejection of claim 19 under 35 U.S.C. § 103 as being unpatentable
over Riza, Quill, and Wortrich is affirmed.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 5–12,
14, 16–18,
20
103 Riza, Quill 1, 2, 5–12,
14, 16–18,
20

13 103 Riza, Quill, Hart 13
19 103 Riza, Quill, Wortrich 19
Overall
Outcome

1, 2, 5–14,
16–20

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED