Ex Parte Cook et al

Patent Trial and Appeal Board

Mar 20, 2013

11546391 (P.T.A.B. Mar. 20, 2013)

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.
11/546,391 10/12/2006 INV001James L. Cook A8130.0476/P476 3819
24998 7590 03/20/2013
DICKSTEIN SHAPIRO LLP
1825 EYE STREET NW
Washington, DC 20006-5403
EXAMINER
WAGGLE, JR, LARRY E
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
03/20/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte JAMES L. COOK, DAVID O. SHEPARD, and
MATTHEW C. SUMMITT
__________

Appeal 2011-004945
Application 11/546,391
Technology Center 3700
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to methods
of extracapsular ligament repair. The Examiner has rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Claims 7-21 are on appeal. Claims 7 and 16, the only independent
claims, are directed to methods that include, among other steps, “providing a
suture/needle construct in the proximity of the capsular joint, the
Appeal 2011-004945
Application 11/546,391

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suture/needle construct comprising a suture, a first needle provided at one
end of the suture, and a second needle provided at the other end of the
suture” (claim 7) or “providing a suture/needle construct in the proximity of
the repair site, the suture/needle construct comprising a suture, a
substantially non-linear needle provided at one end of the suture, and a
substantially linear needle provided at the other end of the suture” (claim
16).
The Examiner has rejected claims 7-14, 16, and 19-21 under 35
U.S.C. § 103(a) as obvious in view of Wotton1 and Leonard.2 The Examiner
has also rejected claims 15 and 18 as obvious in view of Wotton, Leonard,
and Bojarski,3 and claim 17 as obvious in view of Wotton, Leonard, and
Yoon.4 The same issue is dispositive for all of these rejections.
The Examiner finds that Wotton does not disclose a “suture construct
having a first needle provided at one end, and a second needle provided at
the other end” (Answer 4). The Examiner finds that “Leonard teaches the
use of a suture construct comprising a suture (1) having a first needle (4,
arcuate) provided at one end, and a second needle (3, substantially linear)
provided at the other end (Figure 1; page 3, line 20 – page 4, line 18; and
page 5, lines 26-31)” (id.). The Examiner concludes that it would have been
obvious “to construct the method of Wotton with the use of a suture
construct comprising a suture having a first arcuate needle provided at one
end, and a second substantially linear needle provided at the other end in

1 Wotton III, US 2002/0120280 A1, Aug. 29, 2002.
2 Leonard, FR 2,867,380 A1, Sept. 16, 2005.
3 Bojarski et al., US 6,533,802 B2, Mar. 18, 2003.
4 Yoon, US 5,984,933, Nov. 16, 1999.
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Application 11/546,391

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view of Leonard in order to facilitate the insertion of the suture … into the
desired tissue” (id. at 4-5).
Appellants dispute the Examiner’s findings of what Leonard teaches
(Appeal Br. 9) and whether those teachings would have made it obvious to
combine Leonard with Wotton (id. at 10-11).
The Leonard reference relied on by the Examiner is in French.
Because the initial burden of establishing a prima facie case of obviousness
is on the PTO,5 it was incumbent on the Examiner to provide the evidentiary
foundation for the factual findings made in support of the obviousness
conclusion. Here, the Examiner failed to direct us to an English language
translation, or an English language equivalent, of the Leonard reference that
is part of the record. On the appeal record presented, those who are not
fluent in the French language (including members of this Board panel)
cannot confirm the correctness of the Examiner’s factual findings regarding
Leonard’s teachings. Thus, we find that the Examiner has not provided an
adequate basis to affirm the rejection of claims 7-14, 16, and 19-21 in view
of Wotton and Leonard, and we will reverse this rejection.
The Examiner’s rejections of claims 15, 17, and 18 also depend on the
teachings of Leonard (Answer 5). Thus, we also reverse these rejections for
the reasons discussed above.

5 See, e.g., In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
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Application 11/546,391

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SUMMARY
We reverse the rejection of claims 7-21 under 35 U.S.C. § 103(a).

REVERSED

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