DePuy Mitek, LLC

Patent Trials and Appeals Board

Apr 7, 2020

14041764 - (D) (P.T.A.B. Apr. 7, 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.
14/041,764 09/30/2013 David B. Spenciner MIT5221USNP 8150
27777 7590 04/07/2020
JOSEPH F. SHIRTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
EXAMINER
KNAUSS, CHRISTIAN D
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
04/07/2020 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):
jnjuspatent@corus.jnj.com
lhowd@its.jnj.com
pair_jnj@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID B. SPENCINER

Appeal 2019-005474
Application 14/041,764
Technology Center 3700
____________

Before JAMES P. CALVE, MICHAEL J. FITZPATRICK, and
SUSAN L. C. MITCHELL Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant, DePuy Mitek, LLC,1 appeals under 35 U.S.C. § 134(a)
from the Examiner’s non-final decision rejecting claims 13–17. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Appellant refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies itself as a subsidiary of Johnson & Johnson. Appeal Br. 2.
Appeal 2019-005474
Application 14/041,764

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STATEMENT OF THE CASE
The Specification
The Specification “relates to graft fixation, and more particularly to
graft tissue fixation employing flipping-type fixation devices.” Spec. ¶1.
The Claims
Claims 13–17 are rejected. Non-Final Act. 1. No other claims are
pending. Id. Claim 13, the sole independent claim, is illustrative and
reproduced below with emphasis added to the limitation dispositive of the
Appeal.
13. A method for fixing a graft ligament into a bone
tunnel in a bone, the method comprising the steps of:
a) forming a graft construct by disposing the graft
ligament over a loop slidably disposed upon a tang defined by
two elongated slots of an elongated fixation buckle, the loop
extending through both slots and being slidable along the tang
from a first position nearer a first end of the elongated fixation
buckle to a second position nearer a midpoint of the elongated
fixation buckle;
b) pulling the graft construct up through the bone tunnel
with a second end of the elongated fixation buckle leading and
the loop in the first position;
c) retaining the loop in the slots and on the tang in the
first position via a retention line between the tang and a body
forming the elongated fixation buckle at the first end of the
buckle; and
d) after the buckle has been pulled through the tunnel,
reorienting the elongated fixation buckle to be crosswise to the
bone tunnel on the bone adjacent the bone tunnel with the loop
depending into the bone tunnel from the second position on the
elongated fixation buckle.
Id. at 6 (emphasis added).
Appeal 2019-005474
Application 14/041,764

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The Examiner’s Rejections
The following rejections are before us:
1. claims 13 and 14 pursuant to 35 U.S.C. § 102(a)(1) as
anticipated by Ferragamo2 (Non-Final Act. 3);
2. claims 15 and 16 pursuant to 35 U.S.C. § 103 as unpatentable
over Ferragamo and Graf3 (id. at 5); and
3. claim 17 pursuant to 35 U.S.C. § 103 as unpatentable over
Ferragamo and Beck4 (id. at 7).
DISCUSSION
Rejection 1—Anticipation
The Examiner found that Ferragamo discloses all of the limitations of
independent claim 13. Non-Final Act. 3–4.
Appellant challenges the rejection by disputing the Examiner’s
findings with respect to step (c) of claim 13, which recites “retaining the
loop in the slots and on the tang in the first position via a retention line
between the tang and a body forming the elongated fixation buckle at the
first end of the buckle.” Appeal Br. 3.
The Examiner found that Ferragamo teaches step (c) at column 6, line
61 through column 7, line 3, and that Ferragamo’s “second suture 404”
(termed “line 404” by the Examiner) is a “retention line” within the meaning
of the claim. Non-Final Act. 4. The Examiner explained:
Ferragamo discloses that lines 402, 404, or both are used to
control adjustment of the graft construct on the bone outlet 502.
As shown in FIG. 5B, the second suture 404 is pulled, for

2 US 8,834,523 B2, issued Sept. 16, 2014 (“Ferragamo”).
3 US 8,721,683 B2, issued May 13, 2014 (“Graf”).
4 US 5,632,748, issued May 27, 1997 (“Beck”).
Appeal 2019-005474
Application 14/041,764

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example, in a direction transverse to a longitudinal axis of the
bone tunnel 500, to position the platform member 302 on the
bone surface 504. This control of the second suture retains the
loop in the slots and on the tang in the first position until
reorientation/adjustment of the elongate fixation buckle on the
bone which moves the loop to the second position on the elongate
fixation buckle.
Id. at 8–9; see Ans. 4 (same).
Appellant argues:
Line 404 does not retain the loop in the slots; the slots are closed
in by the material of the body 302 and thus the body not the line
404 holds the loop therein. There is no retaining line which
retains the loop in the slots like the retaining line 118 disclosed
by Applicant which holds the loop in the slots as the buckle is
pulled up into position. The mere fact that the loop is somehow
retained in the slots is not sufficient to anticipate. Line 404 is
also not between the tang and the body nor does it hold the loop
in the first position.
Appeal Br. 3.
Appellant has the better position. Although manipulation of second
suture 404 may cause the asserted loop (i.e., “attachment member 324”) to
migrate toward the first position and retain it there, second suture 404 does
not “retain[] the loop in the slots and on the tang,” which is also recited in
the claim. Rather, Ferragamo’s fixation buckle (platform member 302) has
slots (first slot 312 and second slot 314) that are fully enclosed by the tang
and buckle body. See Ferragamo Figs. 5B, 5C. Put another way, if second
suture 404 were omitted from Ferragamo’s buckle, the loop would
nonetheless remain retained in the slots and on the tang by the buckle body.
Our construction of step (c) is informed by the Specification, which
illustrates two different buckle embodiments. The first embodiment (shown
best in Figure 1) is buckle 12, which includes slots 32 that are fully enclosed
Appeal 2019-005474
Application 14/041,764

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by tang 40 and the buckle body like in Ferragamo’s buckle. Spec ¶¶10–11,
Figs. 1–4D. The second embodiment is buckle 100, which includes slots
112 that are enclosed by tang 114 and the buckle body on only three sides.
Spec. ¶21, Fig. 5. On the remaining fourth side, the slots are enclosed by
retaining line 118, which extends between tang 114 and adjacent apertures
122 in body 102, to retain the graft loop 115 on tang 114. Id. ¶¶21–22,
Fig. 5. Absent that retaining line (which we view as written description for
the claim’s retention line), the graft loop 115 could escape the slots and fully
separate from the buckle. Ferragamo’s second suture 404 simply does not
correspond to the retaining line 118 of Appellant’s Figure 5 and does not
otherwise teach a “retention line” within the meaning of claim 13.
For the foregoing reasons, we reverse the rejection of claim 13 as
anticipated by Ferragamo, as well as that of claim 14, which depends from
claim 13.
Rejections 2 & 3—Obviousness
In the rejection of dependent claims 15–17, the Examiner relies on
Ferragamo as discussed above and additionally on Graf for claims 15 and 16
and Beck for claim 17. Non-Final Act. 5–8. The Examiner does not rely on
Graf or Beck in a manner that could cure the deficiency of the rejection of
independent claim 13. Thus, for similar reasons, we reverse the rejections of
claims 15–17.
Appeal 2019-005474
Application 14/041,764

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SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
13, 14 102(a)(1) Ferragamo 13, 14
15, 16 103 Ferragamo, Graf 15, 16
17 103 Ferragamo, Beck 17
Overall
Outcome
13–17

REVERSED