Ex Parte DiMatteo et al

Patent Trial and Appeal Board

Feb 11, 2019

14166941 (P.T.A.B. Feb. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/166,941 01/29/2014
27777 7590 02/13/2019
JOSEPH F. SHIRTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
FIRST NAMED INVENTOR
Kristian DiMatteo
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.
MIT5118USDIV1 6868
EXAMINER
BOUTSIKARIS, SOCRATES L
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
02/13/2019 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
pairjnj@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KRISTIAN DIMATTEO,
GREGORYR. WHITTAKER, and
MEHMET ZIY A SENGUN 1
Appeal2018-003944
Application 14/166,941
Technology Center 3700
Before MICHAEL L. HOELTER, SUSAN L. C. MITCHELL, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's final rejection of claims 15-21, 23, and 24, which constitute all
the claims pending in this application. Final Act. 1 (Office Action
Summary). We have jurisdiction under 35 U.S.C. § 6(b ). For the reasons
1 "[T]his application is assigned to DePuy Mitek, LLC." Br. 2. We thus
proceed on the basis that, for purposes of this appeal, DePuy Mitek, LLC is
the "Appellant."
Appeal2018-003944
Application 14/166,941
explained below, we do not find error in the Examiner's rejections of these
claims. Accordingly, we AFFIRM the Examiner's rejections.
CLAIMED SUBJECT MATTER
The disclosed subject matter "relates to systems and methods for
performing a repair of a partial thickness rotator cuff tear." Spec. ,r 1.
Claim 15 is the sole independent claim, is illustrative of the claims on
appeal, and is reproduced below.
15. A method of performing a partial thickness rotator cuff
repair, the method comprising the steps of:
inserting a first suture anchor through a tendon of a rotator
cuff and then anchoring the first suture anchor into a humerus,
the first suture anchor comprising;
an elongated body having an axially oriented bore
into the body,
a suture of gauge #2 or lower passing into the bore,
around a suture attachment in the bore and back out of the
bore;
a maximum outer diameter of 4mm; and
external threads;
the first suture anchor being threaded into the humerus
during the step of anchoring;
inserting a second suture anchor into the humerus;
passing a first length of the suture from the first suture
anchor through the tendon and to the second suture anchor
whereby to hold the tendon to the humerus.
REFERENCES RELIED ON BY THE EXAMINER
Dreyfuss et al. US 2005/0222619 Al Oct. 6, 2005
(hereinafter "Dreyfuss '619")
Cordasco US 2006/0149266 Al
Dreyfuss et al. US 2007 /0073299 Al
(hereinafter "Dreyfuss '299")
Deutsch US 2007/0219558 Al
Pellegrino et al. US 2007 /0288023 Al
2
July 6, 2006
Mar. 29, 2007
Sept. 20, 2007
Dec. 13, 2007
Appeal2018-003944
Application 14/166,941
van der Burg et al. US 2009/0171400 Al July 2, 2009
THE REJECTIONS ON APPEAL 2
Claims 15, 18-21, 23, and 24 are rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over Pellegrino, Dreyfuss '299, van der Burg, and
Dreyfuss '619.
Claim 16 is rejected underpre-AIA 35 U.S.C. § I03(a) as
unpatentable over Pellegrino, Dreyfuss '299, van der Burg, Dreyfuss '619,
and Deutsch.
Claim 17 is rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Pellegrino, Dreyfuss '299, van der Burg, Dreyfuss '619,
and Cordasco.
ANALYSIS
The rejection of claims 15, 18-21, 23, and 24
as unpatentable over
Pellegrino, Dreyfuss '299, van der Burg, and Dreyfuss '619
Appellant argues claims 15, 18-21, 23, and 24 (i.e., all the claims)
together. Br. 2--4. We select independent claim 15 for review, with
dependent claims 18-21, 23, and 24 standing or falling with claim 15. See
37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner primarily relies on the teachings of Pellegrino for
disclosing the limitations of claim 15, but relies on (1) Dreyfuss '299 for
disclosing a "suture anchor [that] comprises external threads" (Final Act. 4);
(2) van der Burg for "teach[ing] anchors 405 that have a maximum diameter
of 2.0 mm (Paragraphs [0006], [0032])" (Final Act. 6); and, (3) Dreyfuss
2 "The amendment to dependent claim 23 overcomes the [§] 112(b) rejection
as it is no longer indefinite." Advisory Action dated April 13, 2017.
3
Appeal2018-003944
Application 14/166,941
'619 for disclosing "sutures of gauge #2 (Paragraph [0034 ])" (Final Act. 7).
The Examiner also provides a reason for combining each additional
reference to either Pellegrino or to the previously modified Pellegrino. See
Final Act. 5-7.
Appellant initially contends, "[t]he Examiner has failed to properly
elucidate why one of skill in the art at the time of the invention would make
the alleged combination." Br. 3. Appellant thereafter addresses the
Examiner's reliance on features disclosed in Pellegrino, the Dreyfuss
references, and van der Burg concluding, "[t]he Examiner then just opines
that it would be obvious to combine all these features." Br. 4. Appellant
continues stating that the Examiner is "employing the logic found not in the
references but in Appellant's specification and with no indication that these
modification would actually work well together." Br. 4.
We disagree with Appellant's assessment that ( 1) the Examiner failed
to "elucidate why" a skilled person would have combined the art as
expressed; (2) the source of the Examiner's logic resides in Appellant's
Specification; and, (3) the modification would not work well together.
Regarding (1) above, Appellant does not explain how or why the reasons
expressed by the Examiner for the stated combinations are faulty or illogical,
only that the Examiner "opines" that this is the case. Br. 4. Appellant's
contention is not persuasive of Examiner error.
Regarding (2) above, the Examiner clearly states that the reason to
combine (a) Pellegrino and Dreyfuss '299 is rooted in "Paragraphs [0011]-
[0012]" of Dreyfuss '299 (Final Act. 5; see also Ans. 3--4); (b) Pellegrino (as
modified) with van der Burg is rooted in "Paragraphs [0006], [0032]" of van
der Burg (Final Act. 6; see also Ans. 4, 5); and, ( c) Pellegrino as further
4
Appeal2018-003944
Application 14/166,941
modified, with Dreyfuss '619 is rooted in "Paragraph [0034 ]" of Dreyfuss
'619 (Final Act. 7). Accordingly, we are not persuaded by Appellant's
argument that the Examiner's logic was "found not in the references but in
Appellant[' s] specification." Br. 4.
Regarding (3) above, Appellant offers no explanation, evidence, or
support for this contention, other than conjecturing that the cited
combination "[p ]erhaps [] is too small." Br. 4. Such musing is not evidence
that the Examiner's rejection is improper, or that the Examiner's rationale is
in need of reversal. We are further reminded of instructions from our
reviewing court that "attorney argument [is] not the kind of factual evidence
that is required to rebut a prima facie case of obviousness." In re Geisler,
116 F.3d 1465, 1470 (Fed. Cir. 1997) (citation omitted).
When addressing Pellegrino, Appellant acknowledges that this
reference teaches "a method of passing suture anchors through rotator cuff
repairs." Br. 3. However, Appellant contends that these "anchors are not
threaded." Br. 3. This argument is not persuasive because the Examiner did
not rely on Pellegrino for disclosing threaded anchors; instead, the Examiner
relied on Dreyfuss '299 for such teachings. See Final Act. 4; see also Ans.
2-3 ("Appellant discusses the shortcoming of each individual reference in a
vacuum, and either glosses over or entirely ignores the underlying
contribution each teaching makes to the overall combination.").
Appellant further acknowledges that the Dreyfuss "references teach
threaded suture anchors," but contends that they "make no mention of being
below 4mm." Br. 3--4. However, the Examiner did not rely on either
Dreyfuss reference for disclosing the limitation "a maximum outer diameter
of 4mm." See Final Act. 4, 7. Instead, the Examiner relied on van der Burg
5
Appeal2018-003944
Application 14/166,941
for such teachings. See Final Act. 6; see also Ans. 4, 5. Appellant also
asserts, "[t]here is no evidence that an anchor with this design would be able
to be made as small as 4mm and still have a good holding power in the
bone." Br. 4. Here, Appellant appears to completely disregard van der
Burg's express teachings of employing multiple small anchors that "have a
diameter of approximately 0.5 mm to approximately 2.0 mm" "in order to
minimize any trauma to the bone in which the directional anchors 405 are
inserted." van der Burg ,r 32. There is also no indication in van der Burg
that the small anchors disclosed therein are unable to perform their intended
function due to their small size.
Appellant also acknowledges that van der Burg solves a problem
associated with large anchors by "employing many, many small anchors,"
but contends that van der Burg's small anchors have a shape that relies on "a
barbed retention surface on the bone." Br. 4. However, the Examiner did
not rely on van der Burg for the shape of the anchor (see Pellegrino and
Dreyfuss '299 for this (Final Act. 3-5)). See also Ans. 5. Instead, the
Examiner relied on van der Burg for disclosing the limitation, "a maximum
outer diameter of 4mm" which van der Burg discloses in Paragraph 32. See
supra. We further note van der Burg's teaching that "[i]t is important to
reduce the diameter of the directional anchors 405 to as small as possible,
while still accomplishing the intended repair procedure since the area upon
which the directional anchors are inserted is a relatively small area." van der
Burg ,r 32.
Accordingly, and based on the record presented, we sustain the
Examiner's rejection of claims 15, 18-21, 23, and 24 as unpatentable over
Pellegrino, Dreyfuss '299, van der Burg, and Dreyfuss '619.
6
Appeal2018-003944
Application 14/166,941
The rejection of (1) claim 16 as unpatentable over Pellegrino, Dreyfuss
'299, van der Burg, Dreyfuss '619, and Deutsch and, (2) claim 17 as
unpatentable over Pellegrino, Dreyfuss '299, van der Burg, Dreyfuss '619,
and Cordasco
For each rejection, Appellant argues that the additional reliance by the
Examiner on Deutsch or Cordasco "adds nothing to correct the failings of
the prior references to teach the presently claimed invention." Br. 4.
Appellant's contentions are not persuasive of Examiner error. Accordingly,
we sustain the Examiner's rejections of claims 16 and 17 in view of the art
recited.
DECISION
The Examiner's art rejections of claims 15-21, 23, and 24 under 35
U.S.C. § 103(a) are 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
7