Ex Parte Coughlin et al

Patent Trial and Appeal Board

Oct 12, 2018

13724600 (P.T.A.B. Oct. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/724,600 12/21/2012
26096 7590 10/16/2018
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Michael J. Coughlin
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
67145-474PUS1 8188
EXAMINER
BAHENA, CHRISTIE L.
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
10/16/2018 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):
ptodocket@cgolaw.com
cgolaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL J. COUGHLIN, LOWELL F. WEIL JR.,
PAULS. SHURNAS, JESSE G. MOORE, and
WILLIAM MICHAEL KARNES 1
Appeal2017-007986
Application 13/724,600
Technology Center 3700
Before ERIC B. GRIMES, JEFFREY N. FREDMAN, and JOHN G. NEW,
Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify Arthrex, Inc. as the real party-in-interest. App. Br. 3.
Appeal2017-007986
Application 13/724,600
SUMMARY
Appellants file this appeal under 35 U.S.C. § I34(a) from the
Examiner's Final Rejection of claims 1--4 and 6-10. Specifically, claims 1-
4, 6, and 7 stand rejected as unpatentable under 35 U.S.C. § I03(a) as being
obvious over the combination of J. Gregg at al., Plantar Plate Repair and
Weil Osteotomy for Metatarsophalangeal Joint Instability, 13 FOOT AND
ANKLE SURGERY 116-121 (2007) ("Gregg"), Tran et al. (US 6,533,795 Bl,
March 18, 2003) ("Tran"), and Segler (US 2004/0147935 Al, July 29, 2004)
("Segler").
Claim 8 stands rejected as unpatentable under 35 U.S.C. § I03(a) as
being obvious over the combination of Gregg, Tran, Segler, and Grafton et
al. (US 6,716,234 B2, April 6, 2004) ("Grafton").
Claims 9 and 10 stand rejected as unpatentable under 35 U.S.C.
§ I03(a) as being obvious over the combination of Gregg, Segler, Saliman
(US 2010/0130990 Al, May 27, 2010) ("Saliman"), and L.P. Re, Double
Row Rotator Cuff Repair using Novel 'Inverted Mattress' OPUS®
Technique, ArthroCare Corporation (2007) ("Re").
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellants' invention is directed to surgical repair systems and
techniques for plantar plate repairs. Abstract.
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REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. A method of plantar plate repair, comprising:
exposing a second metatarsophalangeal joint affected by a
plantar plate tear;
conducting a metatarsal shortening osteotomy and placing
a first vertical k-wire in a capital fragment of the affected joint to
temporarily fix the capital fragment in a retracted position,
placing a second vertical k-wire in a base of the proximal phalanx
of the joint affected by a plantar plate tear, then locating distal
ends of a plantar plate distractor over the vertical k-wires,
engaging the vertical k-wires with the distal ends of the
distractor, and spreading the distal ends of the distractor to
distract the second metatarsophalangeal joint to expose the
plantar plate and plantar tear;
conducting a metatarsal shortening osteotomy; and
forming a plurality of holes in the phalanx, spaced
proximally from the second vertical k-wire;
passing at least one flexible strand through the plantar
plate to form a mattress stitch to repair the plantar tear and
through one of the plurality of holes; and
reducing the metatarsal shortening osteotomy.
App. Br. 15.
ISSUES AND ANALYSES
We adopt the Examiner's findings of fact, reasoning, and conclusion
that the appealed claims are prima facie obvious over the combined cited
prior art. We address the arguments raised by Appellants below.
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A. Rejection of claims 1--4, 6, and 7'J
Issue 1
Appellants argue that the Examiner erred in concluding that: "that it
would be obvious 'to utilize Tran's mattress stitch in Gregg's invention
because it spreads out the forces imparted by the sutures thereby preventing
the sutures from pulling out of soft tissue."' App. Br. 7.
Analysis
The Examiner finds that Gregg teaches a method of plantar plate
repair that comprises all of the steps recited in Appellants' claim 1 except for
the use of a mattress stitch, a distraction tool, or the k-wires recited in the
claims. Final Act. 3--4. The Examiner concludes that it would have been
obvious to one of ordinary skill in the art to incorporate Tran's teaching of
using a mattress stitch into Gregg's invention because such a suturing
technique spreads out the forces imparted by the sutures, thereby preventing
the sutures from pulling out of soft tissue. Id. at 4 ( citing Tran col. 5, 11. 20-
25).
The Examiner also finds that Segler teaches the use of two vertical k-
wires3 in conjunction with a distractor tool to temporarily fix the fragment in
a retracted position and to distract the joint where the distractor is spread
(Figs. 3a-3b) to expose the underlying anatomy. Final Act. 4 ( citing Segler
2 Appellants argue claims 1-7. However, claim 5 has been canceled and we
do not consider it. See Amended Claims, June 23, 2016.
3 The Examiner finds that the pins (11) of Segler correspond to the k-wires
of Appellants' claims. Final Act. 4 (see, e.g., Segler ,r 39). Appellants do
not dispute this finding.
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Fig. 3, ,r 39, Fig. 1, ,r,r 47--48). The Examiner finds it would have been
obvious to a person of ordinary skill in the art to combine the teachings of
Segler with those of Gregg such that one k-wire would be placed in the
capital fragment and the other in the base of the proximal phalanx (portion
nearest the capital fragment) since those are the two parts being distracted in
Gregg's procedure and to place the k-wire far enough proximally from the
suture holes to avoid compromising the integrity of the bone. Id. ( citing
Gregg Figs. 1 A-B). The Examiner further concludes that it would have
been obvious to use Segler' s distracting tool in practicing the method of
Gregg because the tool allows controlled distraction of the joints (abstract)
and "automates" the manual distraction process taught by Gregg to allow the
procedure to be performed with a tool (i.e., to apply more leverage and
dexterity) instead of the fingers of the surgeon. Id. at 4--5.
Appellants contend that Tran does not teach the use of a mattress
stitch for the fibrocartilaginous tissue of the plantar plate repair. App. Br. 7.
Rather, Appellants argue, Tran is directed to a method of suturing the rotator
cuff, and not plantar plate repairs, much less plantar plate repairs by the
specific steps of the subject claims. Id. (citing, e.g., Tran col. 1, 11. 14--17).
Appellants argue that the Examiner has not provided evidence that the
plantar plate would be subject to the same forces as the rotator cuff and,
therefore, the conclusion that the use of a mattress stitch in the invention of
Gregg would prevent the sutures from pulling out of soft tissue is
speculative and conclusory. Id. ( citing KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398,418 (2007)).
The Examiner responds that both the rotator cuff and plantar plate are
soft tissue and finds that the mattress stitch type spreads out the forces
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imparted by the sutures, thereby improving the strength of the repair. Ans. 3
(citing Tran col 1, 11. 14--17). The Examiner finds that this benefit will be
imparted regardless of the forces on the plantar plate. Id.
We are not persuaded by Appellants' arguments. Gregg teaches that:
Two drill holes were made, running from the dorsal cortex to the
plantar rim of the proximal phalanx, medially and laterally using
a 1.6 mm K-wire. A single bite of 1/0 ethibond suture was passed
across the plantar plate proximal to the disruption and passed
back through the holes in the proximal phalanx. The Weil
osteotomy was then formally fixed in optimal position with a 1.3
mm titanium "Twist-off' screw (DePuy/Johnson & Johnson,
Leeds, UK). Finally, the two suture ends were tied over the dorsal
phalangeal cortex, thus advancing the plantar plate onto the base
of the proximal phalanx.
Gregg 117-18 (see also Figs. 1 A-B). Gregg teaches that the suture is thus
looped around the plantar plate, forming a bight; the suture is then closed
after passing through the holes drilled in the proximal phalanx. See Fig. 1 B.
L. Weil et al., Plantar Plate Repair in Combination with the Weil
Metatarsal Osteotomy for unstable Lesser Metatarsal Phalangeal Joints:
Introducing a New Technique, 3rd Joint Meeting of International Federation
of Foot and Ankle Societies (2008) ("Weil"), which is also evidence of
record, states that in instances where the plantar plate is tom, the tear is
excised and the plate is sutured to an anchor (i.e., the proximal phalanx).
strain:
Tran teaches that, when suturing soft tissues that may come under
[O]ne of the most common failure modes for rotator cuff repair
lies in the sutures pulling out of the soft tissue, much care is taken
to place the sutures such that the most security possible is
achieved. This is typically done by using either a mattress stitch
or a more complex stitch called a "modified MasonAllen". The
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goal of both of these stitches is to spread the forces imparted by
the sutures on the tissues by involving a pledget of tissue between
the entry and exit points of the suture ends. The mattress stitch
incorporates essentially a "down, over and back up" path for the
suture.
Tran col. 5, 11. 16-26.
We agree with the Examiner that it would have been prima facie
obvious to a person of ordinary skill to use a mattress stitch, a common
surgical technique, as taught by Tran, and certainly well known in the art,
when suturing soft tissue such as a tendon or plantar plate, that might come
under strain, to distribute the mechanical load and minimize the tendency of
the sutures to pull through the tissue. We are therefore not persuaded by
Appellants' argument.
Issue 2
Appellants argue that the Examiner erred in concluding that it would
have been obvious to a person of ordinary skill in the art to apply the
distracting tool of Segler to the Gregg technique in order to "automate" the
manual process of Gregg. App. Br. 8.
Analysis
Appellants argue that the Examiner has not proposed a situation where
a manual activity is replaced with an automatic or automated activity. App.
Br. 8. According to Appellants, the Gregg technique involves a manual
procedure performed by the surgeon whether the distracting tool of Segler is
used or not. Id. Appellants contend that the Examiner's proposed
modification would not result in "automating" the Gregg technique and,
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therefore, this rationale cannot be used to establish a prima facie case of
obviousness. Id.
Furthermore, argue Appellants, the Examiner also concludes that it
would have been obvious to reverse the sequence of steps of the Gregg
technique (as modified by Segler) by inserting the k-wires prior to
employment of the distracting tool. App. Br. 8. Appellants contend that the
Examiner erroneously relies on MPEP § 2144.04(IV)(C), which states that
changes in the sequence of adding ingredients are likely to be prima facie
obvious. Id. Appellants disagree that § 2144.04(IV)(C) is applicable in this
case, because that section of the MPEP involves situations where changes in
the sequence of adding ingredients have been made. Id. Appellants contend
that the proposed modification of Gregg does not involve, in any way,
changing the order in which ingredients are added. Id. Rather, Appellants
assert, the proposed modification attempts to completely change the manner
in which distraction is performed in the Gregg technique. Id.
The Examiner responds that the tool taught by Segler performs the
same function as the surgeon's manual distraction taught by Gregg. Ans. 3.
However, the Examiner finds that a person of ordinary skill would have been
motivated to use the tool of Segler to obtain more leverage and dexterity
than using the surgeon's fingers to distract the second metatarsophalangeal
joint. Id.
With respect to the alteration of the order of implementation of the k-
wires and the distractor, the Examiner notes that Appellants have not pointed
out any criticality (new or unexpected results) in using the steps in the
claimed order and have not pointed out how reversing the steps would have
any effect on the end result of the joint distraction. Ans. 3--4. The
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Examiner finds that a person of ordinary skill in the art would have been
motivated to change the order by which the k-wires and distractor are
applied to improve visualization of the joint by inserting the k-wires prior to
applying the distraction instrument. Id. at 4.
We are not persuaded by Appellants' arguments. Given the
Examiner's findings in the Final Action and in the Answer, we interpret the
Examiner's perhaps infelicitous use of the term "automate" to mean to
advantageously use a tool or instrument to obtain a more precise and
dexterous application of force. Segler is directed to:
[A] device and method for spreading adjacent tarsal bones to
facilitate surgical procedures within the joint space. More
specifically, the present invention relates to a distractor device
shaped and configured to allow unimpeded access to joint spaces
and articular surfaces when approached from dorsal,
dorsolateral, or dorsomedial surfaces of the foot.
Segler ,r 2. With respect to its disclosed invention, Segler teaches:
A significant improvement of the present invention over
existing devices is the application of a method of small joint
space retraction in which adjacent bones are retracted without
inserting objects into the joint space, without blocking or
covering the articular surfaces of the joint being operated upon,
and without bridging or otherwise blocking access to the
retracted space from a dorsal approach.
Segler ,r 33. Segler thus teaches that its invention is superior over other
methods of distraction, including manual distraction, for the reasons
expressed.
Segler describes the placement and operation of its distractor thus:
The distal aspects of the extremities are suitable arranged
with apertures extending through said arms in an orientation
perpendicular to the plane of movement of said arms (10). Pins
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(111) [sic] are driven through these apertures and concomitantly
through the cortical and cancellous bone of the osseus members
(12) to be retracted. As previously described, clockwise rotation
of the centrally threaded adjusting member (2) translates into
lateral movement of the hinged active extremities (10) with pins
(11) affixing said members to the bones (12) adjacent the joint
space, thereby forcibly and precisely retracting the bones (12)
and distracting the joint space.
Segler ,r 46. Segler thus teaches that the pins (i.e., k-wires) are
"concomitantly" inserted through the apertures at the distal ends of the
distractor arms and the bones of the joint to be distracted.
Claim 1 recites that the pins are inserted into the bones first and,
subsequently, through the apertures of the arms of the distractor, i.e., by:
placing a first vertical k-wire in a capital fragment of the affected
joint to temporarily fix the capital fragment in a retracted
position, placing a second vertical k-wire in a base of the
proximal phalanx of the joint affected by a plantar plate tear, then
locating distal ends of a plantar plate distractor over the vertical
k-wires, engaging the vertical k-wires with the distal ends of the
distractor, and spreading the distal ends of the distractor to
distract the second metatarsophalangeal joint to expose the
plantar plate and plantar tear.
However, although claim 1 necessarily recites steps in an order (i.e.,
placing first one k-wire, then the other, then engaging the k-wires with the
apertures of the distractor arms), Appellants point to nothing in the language
of Segler that requires the exact sequence recited therein or why placing the
k-wires prior to engaging them with the arms of the distractor would not
have been obvious to a surgeon of ordinary skill. Indeed, we find that the
sequences of Segler and of the claims make no obvious difference to the end
result; i.e., the k-wires are engaged with the arms of the distractor so that the
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ends of the joint can be moved apart to expose the intra joint space. We are
consequently not persuaded by Appellants' arguments in this respect.
Issue 3
Appellants next argue that the Examiner erred by failing to articulate a
plausible reason why one of ordinary skill in the art would adopt the
distraction technique practiced by Segler within the technique taught by
Gregg. App. Br. 9.
Analysis
Appellants point to the Second Declaration of Dr. Lowell Weil, Jr., 4
June 23, 2016 (the "Second Weil Declaration") in which Dr. Weil opines
that modifying Gregg by placing k-wires in the capital fragment and base of
the phalanx would compromise the Gregg technique by weakening the bone
at the location where the suture holes in the phalanx base have been
prepared. App. Br. 9 (citing Weil Deel. ,r,r 35, 36).
4 Dr. Weil, one of the named inventors of the instant application, holds a
Doctor of Podiatric Medicine from Scholl College of Podiatric Medicine,
Franklin University of Medicine and Science, and is board certified in
podiatry. First Weil Declaration of Dr. Lowell Weil, October 5, 2015 (the
"First Weil Declaration") ,r,r 3, 4. Dr. Weil is President of the Weil Foot,
Ankle & Orthopedic Institute, Regenerative Surgery Center, and
Regenerative Pain Center, an adjunct faculty member at Dr. William M.
Scholl College of Podiatric Medicine at the Rosalind Franklin University
of Medicine and Science, and is the author or co-author of more than 30
articles. Id. at ,r,r 6-9. We have reviewed Dr. Weil' s credentials and
consider him qualified to render an expert opinion.
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Appellants assert that modifying the method taught by Gregg by using
the distracting tool of Segler is further improper because the allegedly bulky
design of Segler's distracting device would impede the surgeon's field of
view during surgery and reduce access to the plantar plate. App. Br. 10.
Appellants point to Figure 1 of Segler as showing the distracting device
includes bilateral lever arms 5, a crossmember 4, and axels 9 that enable the
movement of the retractor arms 6 for distracting bones apart from one
another. Id. Figure 1 of Segler is reproduced below:
Figure 1 of Segler is a perspective view of the
distraction instrument
Appellants assert that these components of Segler's distraction
instrument would be positioned directly over the plantar plate when the
instrument was positioned relative to the metatarsopharyngeal joint to be
repaired by the Gregg procedure. App. Br. 10. According to Appellants, the
surgeon would have to work around these components when performing the
Gregg technique, including when preparing the drill holes and suturing the
plantar plate. Id. Therefore, Appellants argue, the distraction device of
Segler would impede the access the distraction procedure is designed to
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provide the surgeon when performing the Gregg technique. Id. In support
of these contentions, Appellants again point to the Weil Declaration, in
which Dr. Weil opines that using Segler's distraction instrument would
impair a surgeon's field of view during the Gregg technique. Id. (citing
Second Weil Deel. ,r,r 32, 43).
We are not persuaded by Appellants' arguments. Appellants first
argue that placing k-wires in the capital fragment and base of the phalanx
would compromise the Gregg technique by weakening the bone at the
location where the suture holes in the phalanx base have been prepared the
placement. App. Br. 9. Appellants rely upon the expert opinion of Dr. Weil
in this respect. Weil Deel. ,r,r 36, 37. Dr. Weil opines, in relevant part:
One of ordinary skill in the art would not place another
vertical K-wire or hole in the base of the phalanx after portions
of bone have already been removed as a result of Gregg's drilling
the first two holes, because ( 1) the arrangement of another
vertical k-wire or hole would weaken the base and completely
jeopardize the integrity of the proximal phalanx; and (2) forming
a third hole at the base would increase the amount of thermal
necrosis the bone has already undergone.
Second Weil Deel. ,r 36 (emphasis added). However, Gregg teaches that the
capital fragment and the phalanx have been distracted prior to the drilling of
the suture holes, in a manner similar to that recited in claim 1:
By pulling on the toe, the plantar plate could now be inspected.
When a partial or total disinsertion of the plantar plate into the
base of the proximal phalanx was found, the plantar rim of the
proximal phalanx was freshened. Two drill holes were made,
running from the dorsal cortex to the plantar rim of the proximal
phalanx, medially and laterally using a 1.6 mm K-wire.
Gregg 117.
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Thus, in both Gregg and the recited claims, the bones are separated by
distraction prior to the drilling of the suture holes. Furthermore, and as the
Examiner finds, Dr. Weil does not opine on the location of the k-wire
insertion relative to the holes (the spacing of the k-wires and holes is not
claimed and would affect the bone integrity). Ans. 4. Although we accord
Dr. Weil' s expert opinion due probative value, the lack of information
concerning insertion of the k-wires on the phalanx, and the fact that
Appellants' claims recite the same sequence of bone distraction and drilling
of suture holes, are not sufficient to overcome the Examiner's findings.
Nor are we persuaded by Appellants' arguments that the design of the
Segler distraction instrument would necessarily impair the surgeon's ability
to perform the modified Gregg procedure. As we have explained supra,
placement of the k-wires in the bones prior to inserting the k-wires into the
aperture arms would have been understood by a surgeon of ordinary skill to
be merely an obvious variation of Segler' s described method of
concomitantly inserting the wires into the apertures of the arms and driving
them into the bone. See Segler ,r 46. Dr. Weil opines that:
Based on my understanding of Segler, pin insertion is
mechanically controlled, and "driven through these apertures [in
the distractor] and concomitantly through the cortical and
cancellous bone of the osseus members (12) to be retracted." In
my opinion, the surgeon's line-of-sight, visualization of the
surgical site, using the Segler system would be impaired and pin
insertion more difficult, especially where the pins are to be
driven into the capital fragment and proximal phalanx.
Second Weil Deel. ,r 43 (internal reference omitted). This is possibly true, if
the precise sequence of Segler is followed. However, as we have explained,
there is nothing in Segler or Appellants' claims that expressly requires the
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sequence that Dr. Weil adheres to, or which would render the insertion of the
k-wires into the bones prior to their attachment to the instrument non-
obvious. Furthermore, the entire point of the design of Segler' s instrument
is that it enables: "[A] method of small joint space retraction in which
adjacent bones are retracted without inserting objects into the joint space,
without blocking or covering the articular surfaces of the joint being
operated upon, and without bridging or otherwise blocking access to the
retracted space from a dorsal approach." Segler ,r 33. In other words,
Segler's invention is expressly designed to be used in the type of procedure
explained by Dr. Weil. We agree with the Examiner that a surgeon of
ordinary skill in the podiatric arts would have found it obvious to alter the
sequence of Segler so as to maximize visualization of the placement of the
k-wires prior to engaging them with the distractor. We are therefore not
persuaded by Appellants' arguments and, consequently we affirm the
Examiner's rejection of claims 1--4, 6, and 7.
B. Rejection of claim 8
Appellants rely upon the same arguments presented supra with
respect to claims 1--4, 6, and 7, and argue that Grafton fails to cure the
alleged deficiencies of Gregg, Segler, and Tran. For the reasons we have
explained, we similarly affirm the Examiner's rejection of claim 8. App. Br.
12.
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C. Rejection of claims 9 and 10
Issue
Appellants argue that the Examiner erred because the teachings of
Saliman and Re do not disclose the use of a mattress stitch for the
fibrocartilaginous tissue of the plantar plate repair. App. Br. 12.
Analysis
In addition to relying upon the arguments presented with respect to
claims 1--4, 6, and 7 supra, Appellants argue that Re is directed to a specific
method of suturing the rotator cuff, and not plantar plate repairs, much less
plantar plate repairs by the specific steps of the subject claims. App. Br. 12.
Appellants assert that the Examiner has provided no evidence of record that
the plantar plate would be subject to the same forces as the rotator cuff and,
therefore, the Examiner's finding that the incorporation of mattress stitches
into Gregg's technique would prevent the sutures from pulling out of soft
tissue is speculative and conclusory. Id. at 12-13 (citing KSR, 550 U.S. at
418).
With respect to Saliman, Appellants argue that the reference teaches a
suture passer for "arthroscopic joint surgeries" where the "jaws may be
around 16 mm in length, though a length ofup to about 25 mm is obtainable.
This may be significantly scaled down for a device for use in, for example,
wrist surgery." App. Br. 13 (citing Saliman ,r 159). However, Appellants
argue, Saliman neither teaches using the device for any foot surgery or,
specifically, surgery involving the metatarsophalangeal joint. Id. According
to Appellants, the limited disclosure that the "suturing instrument may be
used from distal to proximal or proximal to distal" does not remedy
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Gregg's failure to disclose the use of a mattress stitch as claimed. Id.
( quoting Saliman ,r 24).
Appellants argue further that the notch 51 of Saliman, for example, is
not a suture notch as expressly required by claim 9. According to
Appellants, notch 51 of Saliman is a cut-out region of the tissue penetrator
50 for seating the shuttle against an outer surface of the tissue penetrator 50.
Id. (citing Saliman ,r 104).
Finally, Appellants argue that claim 9 requires: "performing a
metatarsal shortening Weil osteotomy with at least a metatarsal head pusher
for moving a capital fragment while preventing damage to articular cartilage
and a K-wire to temporarily retract the capital fragment." App. Br. 13.
Appellants contend that none of the asserted prior art teaches or suggests the
use of a "metatarsal head pusher" when performing the Weil osteotomy. Id.
We are not persuaded by Appellants' arguments. The Examiner finds
that Re teaches an inverted mattress stitch. Final Act. 10. The Examiner
finds a person of ordinary skill in the art would use Re's stitch in Gregg's
procedure because Re teaches that the inverted mattress stitch increases
fixation strength, decreases suture failure, decreases pullout and increases
healing rates. Id. (citing Re Introduction). We agree with Appellants that
Re does not expressly teach the use of an inverted mattress stitch in a
method of plantar plate repair, but expressly Re teaches a useful and
advantageous means of suturing and repairing tendonous tissue and does not,
expressly or implicitly, restrict the use of its suturing method to rotator cuff
repairs. "The test for obviousness is not whether ... the claimed invention
must be expressly suggested in any one or all of the references. Rather, the
test is what the combined teachings of the references would have suggested
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to those of ordinary skill in the art." In re Keller, 642 F.2d 413,425
(C.C.P.A. 1981). We agree with the Examiner that, because suturing is
required as part of plantar plate repair (see, e.g., Weil) a surgeon of ordinary
skill would be motivated to select advantageous methods of suturing that
were known in the art, such as the mattress stitches taught by Re and by
Tran (see supra).
With respect to Saliman, we again agree with Appellants that Saliman,
neither teaches using the device for any foot surgery or, specifically, surgery
involving the metatarsophalangealjoint. See App. Br. 13. However,
Saliman is directed to methods for forming complex suture patterns using a
continuous suture passer. Saliman Abstr. Saliman further teaches that its
device is suitable for arthroscopic surgeries involving tendons and joints. Id.
at, e.g., ,r,r 11, 159,204,207. Specifically, Saliman teaches that: "For
example, for many arthroscopic joint surgeries, the upper and lower jaws
may be around 16 mm in length, though a length ofup to about 25 mm is
obtainable. This may be significantly scaled down for a device for use in,
for example, wrist surgery." Saliman ,r 159. Saliman thus teaches a suture
passing instrument that is of general utility in suturing, particularly in
complex difficult situations, such as joint surgeries. We agree with the
Examiner that a surgeon of ordinary skill, attempting complex joint surgery,
such as the plantar plate repair taught by Gregg and Weil, would be
motivated to use the device taught by Saliman to increase the effectiveness
of the suturing.
Moreover, with respect to the suture notch, claim 9 recites: "the
needle being provided with a suture notch at its distal end." We agree with
the Examiner that claim term "suture notch" does not provide any additional
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Appeal2017-007986
Application 13/724,600
structural limitations to, or require more than, a notch. See Ans. 7. Saliman
teaches a notch 51 in its tissue penetrator 50, i.e., needle. See Saliman Fig.
8; ,r 104. We therefore agree with the Examiner that Saliman teaches this
limitation.
Finally, with respect to the limitation of claim 9 reciting: "a
metatarsal head pusher for moving a capital fragment while preventing
damage to articular cartilage," the Examiner finds that the claim term
"metatarsal head pusher" does not actually provide any structure to the tool.
Ans. 6. The Examiner finds that Gregg teaches a metatarsal head pusher
(Fig. 1 C) for moving the capital fragment. Id. ( citing Final Act. 5).
We agree with the Examiner. Neither claim 9 nor Appellants'
Specification provide any express structure for a "metatarsal head pusher for
moving a capital fragment." Figure 1 C of Gregg depicts an instrument being
used to move a capital fragment during a plantar plate repair surgery that we
find a person of ordinary skill would understand to be acting as a metatarsal
head pusher for moving a capital fragment.
We consequently affirm the Examiner's rejection of claims 9 and 10.
DECISION
The Examiner's rejection of claims 1--4 and 6-10 as unpatentable
under 35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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