Biomet Sports Medicine, LLC

Patent Trials and Appeals Board

Mar 30, 2022

2021005360 (P.T.A.B. Mar. 30, 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. 15/418,129 01/27/2017 Daniel R. Norton 4394.G99US1 3211 104326 7590 03/30/2022 Schwegman Lundberg & Woessner / Zimmer P.O. Box 2938 Minneapolis, MN 55402 EXAMINER BACHMAN, LINDSEY MICHELE ART UNIT PAPER NUMBER 3771 NOTIFICATION DATE DELIVERY MODE 03/30/2022 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): 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 2021-005360 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 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s decision to reject claims 1, 5-7, 9-11, 13, 14, and 16-20.1 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 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. 2. Appeal 2021-005360 Application 15/418,129 2 THE CLAIMED SUBJECT MATTER Appellant’s invention relates to a suture capture device and a method for capturing a suture. 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 forms a recess of sufficient depth to capture a suture, wherein the hook is positionable proximate the sharpened point of the elongate cannulated tool and can advance outward thereof, the elongate hook member capable of advancing and retracting within the elongate cannulated tool, wherein the elongate hook member includes a projection spaced longitudinally from the hook a distance from the first end; 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; wherein the device is configured with two locking positions, wherein in a first locking position of the two locking positions the suture is captured by the hook but is slidable relative to the hook, wherein in a second locking position of the two locking position the hook is retracted until the suture is captured between the hook and the elongate cannulated tool and the suture and non-slidable relative to the hook. Appeal Br. 24, Claims App. Appeal 2021-005360 Application 15/418,129 3 THE REJECTIONS The Examiner rejects: (i) claims 1, 5-7, 9 and 10 under 35 U.S.C. § 103 as being unpatentable over Riza (US 5,817,111, issued Oct. 6, 1998) in view of Stewart (US 2014/0012292 A1, published Jan. 9, 2014);2 (ii) claims 11, 13, 14, 16-18 and 20 under 35 U.S.C. § 103 as being unpatentable over Riza in view of Heneveld (US 2015/0025550 A1, published Jan. 22, 2015); and (iii) claim 19 under 35 U.S.C. § 103 as being unpatentable over Riza in view of Heneveld and Wortrich (US 5,364,365, issued Nov. 15, 1994). ANALYSIS Claims 1, 5-7, 9 and 10--§ 103--Riza/Stewart The Examiner finds that Riza discloses all limitations set forth in claim 1, including that the device is configured with two locking positions, wherein the first locking position has the suture captured by the hook, but the suture is slidable relative to the hook. Final Act. 5. The Examiner acknowledges that Riza lacks disclosure of including, on the elongate hook member, a projection spaced longitudinally from the hook a distance away from the first, distal end. Id. at 6. The Examiner cites to Stewart as teaching the provision of a projection 76 on an elongate hook member 65, which is provided to enable better frictional engagement with the suture to facilitate manipulation of the suture, and to provide an enhanced ability to grip the 2 The statement of the grounds for this rejection additionally identifies claim 2 as being subject to this rejection; however claim 2 is no longer pending in the application. Final Act. 5. Appeal 2021-005360 Application 15/418,129 4 suture. Id. The Examiner concludes that it would have been obvious to modify the Riza hook to have a projection as taught by Stewart, “in order to provide the stated advantages.” Id. at 7. Appellant argues that adding one or more projections (Stewart discloses several projections) to the Riza hook would interfere with the ability of the Riza device to meet the claim limitations requiring that, in a first locking position, the suture be slidable relative to the hook. Appeal Br. 18-19. Appellant further elaborates that “a fair reading of Stewart provides that the projections 76 of Stewart would preclude the ability . . . when combined with Riza,” to meet the claimed requirement of the first locking position, in that “based upon Stewart the projections 76 would engage the suture precluding sliding.” Reply Br. 3. The Examiner retorts that “Stewart . . . says nothing about the suture’s inability to slide relative to the projection 76,” and that The ability of the suture to slide relative to [the hook] would be dictated by i) the width of the suture and ii) the degree of retraction of arm 32. Providing Riza ‘111’s arm with a projection to make it easier to initially capture the suture,[] would not preclude the suture from sliding relative to the arm. Ans. 7-8. The Examiner’s reason to modify Riza at the outset is to “provide the stated advantages” of being able to “grip” and “drag” a suture, both of which connote that sliding movement of the suture relative to the projection and hook is indeed prevented. See Stewart ¶ 145. In saying, for the first time in the Answer, that the projection would be provided to “initially capture the suture,” it appears that the Examiner envisions that somehow the suture will disengage with the projection(s) as the device is moved into the first locking position, and, if the suture is of small enough diameter, it will once again be Appeal 2021-005360 Application 15/418,129 5 slidable as it was prior to engaging the projection. That, however, is a highly speculative position given the construction of the Riza hook and the cannula that it interacts with to achieve the claimed first locking position. Indeed, Stewart contemplates that its projections will assist in dragging a suture to a position at the distal end of its hollow cannula or tube. Id. As such, we do not see the proposed modification as providing a reasonable expectation of success in achieving a device having a first locking position as claimed. The rejection of claim 1 as being unpatentable over Riza and Stewart, and that of claims 5-7, 9, and 10 depending therefrom, is not sustained. Claims 11, 13, 14, 16-18 and 20--§ 103--Riza/Heneveld In the Appeal Brief, Appellant argues that “claim 11 is patentable over Riza and Stewart for at least the reasons discussed above with respect to claim 1.” Appeal Br. 19. Appellant does not address Heneveld and the Examiner’s reliance thereon, in any substantive manner, asserting that Heneveld and Wortrich do not cure the deficiencies of Riza and Stewart. Id. at 22. The Examiner points out that the rejection of claim 11 is based on a modification proposed in view of Heneveld, and not Stewart, and that the arguments directed to Stewart are moot. Ans. 8. Appellant acknowledges that the Appeal Brief mistakenly addressed claim 11 as being rejected over Riza and Stewart, and offers new arguments, Appeal 2021-005360 Application 15/418,129 6 not before raised, traversing the rejection of claim 11 over Riza and Heneveld. Reply Br. 3-4. Section 41.41(b)(2) of Title 37 of the Code of Federal Regulations provides that “[a]ny argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner’s answer,[] will not be considered by the Board for purposes of the present appeal, unless good cause is shown.” Here, Appellant characterizes the omission of argument directed to the ground of rejection lodged against claim 11 as a mistake, and that Heneveld was apparently newly-cited in the Final Action. This does not, to us, amount to good cause shown. The Final Action clearly segregates the rejection of claim 11 and several of its dependent claims under a separate header in bold type. Final Act. 9-11. The claims are individually discussed in terms of how the references are applied in determining the claims to be unpatentable. The Final Action even includes a third separate ground of rejection, directed to claim 19 being rejected over Riza, Heneveld, and an additional reference to Wortrich. The statement in the Appeal Brief regarding the alleged non-curing of deficiencies recognized that Heneveld and Wortrich were of record in the application. We are unaware of any precedent that recognizes pure oversight on the part of counsel as establishing good cause as to why the arguments were not previously presented. The rejection of claim 11, and of claims 13, 14, 16-18, and 20 depending therefrom, is summarily sustained. Claim 19--§ 103--Riza/Heneveld/Wortrich The rejection of dependent claim 19 is summarily sustained for the Appeal 2021-005360 Application 15/418,129 7 same reasons set forth above for independent claim 11. CONCLUSION The rejection of claims 1, 5-7, 9, and 10 is reversed. The rejections of claims 11, 13, 14, and 16-20 are affirmed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 5-7, 9, 10 103 Riza, Stewart 1, 5-7, 9, 10 11, 13, 14, 16- 18, 20 103 Riza, Heneveld 11, 13, 14, 16- 18, 20 19 103 Riza, Heneveld, Wortrich 19 Overall Outcome 11, 13, 14, 16-20 1, 5-7, 9, 10 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED IN PART