Ex Parte Boock et al

Board of Patent Appeals and Interferences

Mar 5, 2012

10458482 (B.P.A.I. Mar. 5, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ROBERT BOOCK and NATHAN CAULDWELL
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Appeal 2010-002800
Application 10/458,482
Technology Center 3700
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Before: JENNIFER D. BAHR, LINDA E. HORNER, and
WILLIAM V. SAINDON, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Robert Boock and Nathan Cauldwell (Appellants) appeal under
35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1, 2, and 9-
11 under 35 U.S.C. § 103(a) as unpatentable over Deslauriers (US
6,149,653, iss. Nov. 21, 2000) and Elkington (GB 13,753, pub. Apr. 9,
1898) and rejecting claims 1-11 under 35 U.S.C. § 103(a) as unpatentable
over Wenstrom (US 6,045,573, iss. Apr. 4, 2000), Deslauriers, and
Elkington. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

THE INVENTION
The claims are directed to suture anchors. Claim 1, reproduced
below, is illustrative of the claimed subject matter.
1. A suture anchor, comprising:
an elongate shank defining a longitudinal axis and having
at least one bone-engaging thread formed thereon; and
a drive head having a proximal end and a distal end
mated to the elongate shank, the drive head having an oval
shaped cross-section, at least one suture attachment member,
and at least one longitudinally oriented suture receiving channel
formed in a portion of the drive head.

OPINION
Rejection of claims 1, 2, and 9-11 based on Deslauriers and Elkington
The issues raised in the appeal of the rejection of claim 1 as
unpatentable over Deslauriers and Elkington are (1) whether the Examiner
erred in reading the “at least one suture attachment member” and the “at
least one longitudinally oriented suture receiving channel” on different
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portions of Deslauriers’ suture anchor track 45a and (2) whether the suture
anchor track 45a of Deslauriers comprises a portion that is “longitudinally
oriented.” See App. Br. 3; Reply Br. 2-3; Ans. 3, 6.
We find no error in the Examiner’s position that a portion of
Deslauriers’ suture anchor track 45a corresponds to the claimed “suture
attachment member” and that another portion of the suture anchor track 45a
corresponds to the claimed “suture receiving channel.” Claim 1 does not
preclude the “suture attachment member” and “suture receiving channel”
communicating with or extending from one another. Indeed, Appellants’
suture receiving grooves 18a-d extend from the suture attachment member
(tunnel) 26 and are in communication therewith. See figs. 1A, 1B.
We do not find persuasive Appellants’ argument that Deslauriers’
suture anchor track 45a does not comprise any “longitudinally oriented”
portion. App. Br. 3; Reply Br. 2-3. Appellants’ argument is based on their
observation that Deslauriers’ suture track 45a extends along (or parallel
with) the length of the drive slot and thus extends transversely, not
longitudinally. Id. As illustrated in figure 4a of Deslauriers, suture anchor
track 45a also extends in a longitudinal direction over a portion of the spiral
section thereof, such that the suture is fed in a longitudinal direction therein.
The Examiner therefore reasonably found that this portion is “longitudinally
oriented.”1
We therefore conclude that (1) the Examiner did not err in reading the
“at least one suture attachment member” and the “at least one longitudinally
oriented suture receiving channel” on different portions of Deslauriers’

1 Appellants have not defined “longitudinally oriented” to require that the
length (i.e., longest dimension) extend in the longitudinal direction.
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suture anchor track 45a and (2) the suture anchor track 45a of Deslauriers
comprises a portion that is “longitudinally oriented.” We thus sustain the
rejection of claim 1 and of dependent claims 2 and 10, for which Appellants
have not asserted any separate arguments and which thus fall with claim 1
(see 37 C.F.R. § 41.37(c)(1)(vii)), as unpatentable over Deslauriers and
Elkington.
Claim 9 depends from claim 1 and further calls for the drive head to
have “a failure torque of at least about 5.0 inch pounds.” The Examiner
found that the maximum torque that can be applied by a hand held
screwdriver greatly exceeds 5 inch pounds, and reasoned that it would have
been obvious to design Deslauriers’ anchor with a failure torque exceeding 5
inch pounds “so that it could withstand the maximum torque the user could
generate in order to prevent shearing off the anchor (screw).” Ans. 4.
Appellants have not disputed the correctness of the Examiner’s
finding. 2, 3 Rather, in the Appeal Brief, for the first time, Appellants
asserted that the Examiner has not provided support for the finding, without
disputing the accuracy thereof. App. Br. 4.4 Appellants argue that even
assuming the Examiner’s finding is correct, that fact would not make it

2 The Examiner made the finding in the Non-Final Rejection mailed June 1,
2007, at page 5, and repeated that finding in the Final Rejection mailed
November 6, 2007, at page 3.
3 Where an applicant for a patent has failed to challenge a fact officially
noticed by the Examiner, and it is clear that the applicant has been amply
apprised of such finding so as to have the opportunity to make such
challenge, the Examiner’s finding shall be considered conclusive. See In re
Ahlert, 424 F.2d 1088, 1091 (CCPA 1970).
4 While we have not considered the Walsh patents proffered by the
Examiner to support the finding (Ans. 7), we do note that Appellants have
not challenged their sufficiency in substantiating the Examiner’s finding.
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obvious to make a drive head with such a failure torque; rather, according to
Appellants, one skilled in the art would likely set the failure torque of the
drive head “well beyond the 5 inch pound threshold – not at the threshold –
as recited in claim 9.” Id. This argument is not persuasive because claim 9
does not call for a failure torque of 5 inch pounds; claim 9 calls for a failure
torque of “at least about 5.0 inch pounds,” which of course would
encompass a failure torque well beyond the 5 inch pound threshold.
Appellants’ arguments do not convince us that the Examiner erred in
rejecting claim 9 as unpatentable over Deslauriers and Elkington.
We do not sustain the rejection of claim 11, which requires that the
shank taper “from a proximal end to a distal end.” Referring to figure 4a of
Deslauriers, the Examiner points to “the step portion at the proximal end
[tapering] to the rounded portion on the distal end.” Ans. 4. Even assuming
the step at the junction of the head portion 41 and the elongated portion 42
can reasonably be considered part of the elongate shank of the suture anchor,
a step does not “taper.” Moreover, the change in diameter occurs at, or near,
the proximal end of the elongate portion 42 and thus does not satisfy the
limitation that the shank taper “from a proximal end to a distal end.” Each
of the thread tapers, round distal end, and cutting slot alluded to by the
Examiner (Ans. 7) in response to Appellants’ arguments suffers from the
same deficiency that it does not constitute a shank taper “from a proximal
end to a distal end.”
Rejection of claims 1-11 based on Wenstrom, Deslauriers, and Elkington
In rejecting claims 1-11, the Examiner found that Wenstrom “does not
teach the head to be oval shaped,” as called for in claim 1. Ans. 4-5. To
remedy this deficiency, the Examiner proposed “to modify Wenstrom’s
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device to have an oval shaped head (oval head) with slotted drive as taught
by Elkington and Deslauriers in order to drive the screw with a conventional
screw driver without stripping the slot.” Ans. 5.
As noted by Appellants (App. Br. 5), the Examiner’s articulated
reason for modifying Wenstrom’s head to have an oval shape is predicated
on the accompanying modification to provide a slotted drive, as taught by
Deslauriers. We agree with Appellants that given the contemplated use of
Wenstrom’s anchor members in “arthroscopic surgical procedures” in which
the driving end of the anchor member is designed to disengage from the
socket of the tool 200 when the top of the driving end of the anchor member
is flush with, or below, the surface of the bone in which it is to be implanted
(col. 4, l. 50 to col. 5, l. 1), and the paucity of surface area in the driving end
(reduced by the four suture containment slots 110/1205) available to
accommodate a drive slot, a person of ordinary skill in the art would not
have been prompted to modify Wenstrom’s anchor to provide a slotted
drive. See Reply Br. 4. Therefore, the Examiner’s articulated reason for
modifying Wenstrom’s driving end to provide an oval shape lacks rational
underpinnings. We are thus constrained to reverse the Examiner’s rejection
of claim 1 and of claims 2-11, which depend from claim 1, as unpatentable
over Wenstrom, Deslauriers, and Elkington.

DECISION
For the above reasons, the Examiner’s decision is affirmed as to
claims 1, 2, 9, and 10, and reversed as to claims 3-8 and 11.

5 See fig. 7.
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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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