Ex Parte Kaplan

Patent Trial and Appeal Board

Sep 6, 2013

11778951 (P.T.A.B. Sep. 6, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/778,951 07/17/2007 Lee D. Kaplan 068992-0106 1353
23524 7590 09/09/2013
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
EREZO, DARWIN P
ART UNIT PAPER NUMBER
3773
MAIL DATE DELIVERY MODE
09/09/2013 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 LEE D. KAPLAN1
__________

Appeal 2011-013206
Application 11/778,951
Technology Center 3700
__________

Before ERIC GRIMES, ERICA A. FRANKLIN, and ANNETTE R.
REIMERS, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a suture
anchor, which have been rejected for obviousness. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

1 Appellant identifies the Real Party in Interest as Dr. Lee Kaplan (Appeal
Br. 2).
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13206
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Appeal 2011-013206
Application 11/778,951

3
bone. For example, the anchor 310 may have a hex-head, slot, Phillips-type
head, or other shaped head that may be mated to a driver.” (Id. at 6, ¶ 30.)
Claims 1-6 and 21-24 are on appeal. Claim 1 is the only independent
claim and reads as follows:
1. A surgical instrument comprising:
an anchor comprising:
a wall comprising:
an outer surface;
an inner surface;
a first end; and
a second end;
wherein the first end is shaped to be mated to a driver
that is configured to secure the anchor within a
bone; and
a plug comprising a first end, a second end, and an outer wall;
wherein:
the anchor and the plug form a knotless suture anchor
configured to:
anchor an unknotted suture;
provide for tensioning and re-tensioning of the
suture after securing of the anchor within a
bone wherein the re-tensioning comprises
loosening the plug and adjusting the length
of the suture; and
the anchor is tapered from the first end of the anchor to
the second end of the anchor, wherein the first end
of the anchor has a larger diameter than the second
end of the anchor.

Issue
The Examiner has rejected all of the claims on appeal under 35 U.S.C.
§ 103(a) as obvious based on Foerster,2 Goble,3 and Burkhart4 (Answer 4).

2 Foerster et al., US 2004/0098050 A1, published May 20, 2004.
Appeal 2011-013206
Application 11/778,951

4
The Examiner finds that Foerster discloses a suture anchor having an anchor
and plug meeting most of the limitations of claim 1 (id.), and which is “fully
capable of providing tensioning and re-tensioning of the suture since the
device features mating threads between the anchor and the plug” (id. at 4-5).
The Examiner acknowledges that Foerster does not teach that the end
of its anchor is shaped to be mated to a driver or that the anchor has a
tapered profile (id. at 4). However, the Examiner finds that Goble teaches a
similar instrument in which the end is mated to a driver (id. at 5) and that
Burkhart teaches “an anchor designed to penetrate bone and having a tapered
configuration” (id.). The Examiner concludes that it would have been
obvious to incorporate these features into Foerster’s suture anchor to allow a
surgeon to use an elongated driver to deliver the anchor and to make the
anchor easier to insert into the bone (id. at 5-6).
Appellant contends that none of the cited references describes a suture
anchor that allows re-tensioning of a suture after the device is deployed in a
bone (Appeal Br. 10-16). Appellant also contends that the references do not
provide any reason to combine their teachings (id. at 17) or provide a
reasonable expectation of successfully producing a re-tensionable suture
anchor (id. at 18-20).
The issue presented is: Does the evidence of record support the
Examiner’s conclusion that the cited references would have made obvious a
device meeting the limitations of claim 1?

3 Goble et al., US 5,702,397, issued Dec. 30, 1997.
4 Burkhart, US 6,267,766 B1, issued July 31, 2001.
App
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13206
/778,951
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Appeal 2011-013206
Application 11/778,951

6
Figure 27 shows a cross-sectional view of one embodiment of
Foerster’s device “comprising a binding tapered threaded anchor” (id. at 4,
¶ 54).
5. Foerster states that the embodiment shown in Figure 27
includ[es] bone anchor wings 230 for axially anchoring the
body 228 within [a bone] cavity, as discussed in connection
with prior embodiments. Suture lengths 34a, 34b extend
distally through a center portion of the body 228, and continue
about a suture return member or pin (not shown), extending
proximally out of the body 228. . . . The interior wall 232 of the
body 228 includes threads 234, and is tapered. . . . A tapered
plug 236, having external threads 238 which complement the
threads 234, and are adapted for engagement therewith, is
adapted for disposition within the body 228, as shown in the
figure. After the suture has been appropriately tensioned, as
discussed in connection with prior embodiments, the plug 236
is threaded into the body 228, in order to create a zig-zag
shaped binding lock on the suture 34.
(Id. at 8, ¶ 88.)
6. Foerster states that its Figures 1A through 1F illustrate the use of
its “suture anchor system 20[ ] for repairing a rotator cuff tendon injury” (id.
at 4, ¶ 57).
7. Foerster states that a trocar is used to form a conduit through the
soft tissue of the shoulder (id. at 4, ¶ 58) and “the surgeon passes a length of
suture through the soft tissue of the rotator cuff tendon 22 so that a loop 32
of suture material is embedded therein” (id. at 4, ¶ 59).
8. The two free ends of the suture are then “withdrawn from the
patient and coupled to the suture anchor system 20” (id.), a cavity is formed
in the humerus bone (id. at 4, ¶ 60), and the “surgeon then positions a suture
Appeal 2011-013206
Application 11/778,951

7
anchor 46 within the cavity 40 and secures it therein to prevent removal
from the cavity” (id.).
9. Foerster states that the “suture anchor 46 performs two functions:
anchoring itself within the body cavity and anchoring the sutures therein”
(id. at 4, ¶ 61).
10. Foerster states that the suture anchor can anchor itself in the
cavity using expandable anchoring members (id.), or “an anchoring structure
that expands into contact with the cancellous matter 44 or a body resembling
a screw may also be used” (id. at 4, ¶ 62).
11. Foerster states that
[d]esirably, the particular manner of anchoring the suture with
respect to the suture anchor 46 permits easy adjustment of the
length of suture between the suture anchor 46 and the loop 32
formed in the soft tissue prior to anchoring the suture. This
adjustment allows the surgeon to establish the proper tension in
the length of suture for effective repair of the soft tissue.
(Id. at 5, ¶ 63.)
12. Foerster states that its Figure 1D “shows the anchoring member
48 after having been radially expanded,” with the anchor 46 thereby
“prevented from being removed from the cavity 40” (id. at 4, ¶ 61).
13. Foerster states that its Figure 1D “also illustrates the two free
ends 34a, 34b of the length of suture having been pulled taught [sic] prior to
securing within the suture anchor 46” (id. at 5, ¶ 63).
14. Foerster states that its Figure 1E shows “the fully deployed suture
anchor 46 after the free ends 34a, 34b have been placed in tension and
locked within the suture anchor” (id. at 5, ¶ 64).
Appeal 2011-013206
Application 11/778,951

8
15. Goble discloses “a bone anchor and system for its use for
endosteal mounting and setting tension and length on a ligament” (Goble
2:6-7).
16. Goble discloses that “[e]ach bone anchor includes a center
longitudinal cavity formed therethrough, with a distal end that is sided to
receive a turning tool” (id. at 2:65-67).
17. Burkhart discloses a suture anchor (Burkhart 1:55).
18. Burkhart’s Figure 1 is reproduced below:

Figure 1 shows suture anchor 10 having threads 16 (id. at 2:37-39) as
well as “tool 30 . . . [which] is used to engage walls 12C of the head 12” (id.
at 2:61-63).
Principles of Law
“If a person of ordinary skill can implement a predictable variation [of
a known work], § 103 likely bars its patentability.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007).
“A patent applicant is free to recite features of an apparatus either
structurally or functionally. See In re Swinehart, 58 C.C.P.A 1027, 439 F.2d
Appeal 2011-013206
Application 11/778,951

9
210, 212, 169 USPQ 226, 228 (CCPA 1971) (‘There is nothing intrinsically
wrong with [defining something by what it does rather than what it is] in
drafting patent claims.’). Yet choosing to define an element functionally,
i.e., by what it does, carries with it a risk.” In re Schreiber, 128 F.3d 1473,
1477 (Fed. Cir. 1997).
“‘Functional’ terminology may render a claim quite broad. By its
own literal terms a claim employing such language covers any and all
embodiments which perform the recited function.” In re Swinehart, 439
F.2d 210, 213 (CCPA 1971).
Analysis
We agree with the Examiner that the device of claim 1 on appeal
would have been obvious based on the cited references. As the Examiner
found, Foerster discloses a similar device meeting most of the limitations of
claim 1, Goble discloses a device having a first end shaped to be mated to a
driver, and Burkhart discloses a device having a tapered configuration with a
narrower tip (Answer 4-5). We agree with the Examiner that it would have
been obvious to modify Foerster’s anchor body 228 to have a tapered
configuration and a first (larger) end shaped to be mated to a driver in order
to allow easier insertion of the anchor using an elongated driver (see Answer
5-6). This conclusion is strengthened by Foerster’s express suggestion that
the suture anchor can be anchored in a bone cavity either using expandable
anchor members, as shown in Foerster’s Fig. 27 (FF 4) or by “a body
resembling a screw” (FF 10); i.e., tapered, threaded, and capable of being
turned with a driver.
Appeal 2011-013206
Application 11/778,951

10
Appellant argues, however, that Foerster’s suture anchor “is actually
incapable, of re-tensioning after the device is deployed within a bone”
(Appeal Br. 10). Appellant reasons that Foerster states that its suture anchor
“‘permits easy adjustment of the length of suture . . . prior to anchoring the
suture’” (id., citing Foerster ¶ 53) and that Foerster’s Figures 1D and 1E
show that the free ends of the suture are “pulled taught and are placed in
tension and locked in the suture anchor as it is deployed within the bone”
(id., citing Foerster ¶¶ 63-64). Appellant urges that “the express teachings
of Foerster illustrate and describe that the suture is locked within the suture
anchor and the anchor is then deployed” (id.).
We disagree with this reasoning. Foerster describes its Figure 1D as
showing its device in a state where its anchor body has been anchored in a
body cavity (FF 12) and the free ends of the suture have been pulled taut
prior to anchoring the suture in the suture anchor (FF 13). Foerster states
that Figure 1E shows the suture anchor after the ends of the suture have been
placed in tension and locked in the suture anchor (FF 14). Thus, Foerster
describes a device in which the ends of the suture are tensioned (pulled taut)
and then locked in place.
Some of the embodiments of Foerster’s device are intended to lock
the suture in place in a way that it cannot afterward be loosened. For
example, the embodiment shown in Foerster’s Figures 2 and 3 includes a
plug made of a compliant material that is compressed by a cap, also
compressing channels through which the suture passes, “thereby clamping or
locking the suture in place” (Foerster 5, ¶ 68). Similarly, the embodiment
shown in Foerster’s Figures 4 and 5 includes a monofilament fiber that
Appeal 2011-013206
Application 11/778,951

11
“becomes tightly wrapped about the suture . . . , thus locking the suture 34 in
place lengthwise” (id. at 5, ¶ 70). Thus, some of Foerster’s embodiments
include structures that are intended to prevent loosening of the suture after it
has been locked in place.
The embodiment of Figure 27, however, includes a plug having
threads that engage threads in the anchor body, so that “the plug 236 is
threaded into the body 228, in order to create a zig-zag shaped binding lock
on the suture 34” (FF 5). Foerster does not describe any special structure of
the threads of its Figure 27 embodiment that would prevent the threaded
plug from being removed from the anchor body by simply being turned in
the opposite direction. We therefore agree with the Examiner that, by virtue
of its structure, Foerster’s Figure 27 embodiment allows re-tensioning of the
sutures by loosening the plug and adjusting the length of the suture, followed
by re-tightening of the plug to lock the adjusted suture in place.
Appellant also argues that Goble’s anchor is not re-tensionable
(Appeal Br. 11-15) and that Burkhart’s device is “a unitary suture anchor”
(id. at 15) rather than a suture anchor having a body and plug (id. at 16).
These arguments are not persuasive because we agree with the Examiner
that Foerster teaches a re-tensionable suture anchor, and that it would have
been obvious to give Foerster’s suture anchor a tapered shape in view of
Burkhart’s teaching of a tapered suture anchor and Foerster’s suggestion to
shape its anchor body like a screw (FF 10).
Appellant also argues that the cited references do not provide a
reasonable expectation of success in making a re-tensionable suture anchor
(Appeal Br. 18-20), which is not persuasive because we agree with the
Appeal 2011-013206
Application 11/778,951

12
Examiner that Foerster’s Figure 27 embodiment has a structure that makes it
capable of carrying out the claimed function of re-tensioning.
Finally, Appellant argues that there is no reason provided to modify
Foerster’s plug to be mated with a driver because “[t]here is no driver device
shown or described by Foerster, and FIG. 27 of Foerster fails to show any
structure with which to mate a driver to the plug. Thus, hand insertion of the
plug into the anchor is as much a likely conclusion based upon the teachings
of Foerster.” (Reply Br. 5.) Appellant argues that “[w]hile the device of
Goble requires a driver for operation, there is no such requirement in
Foerster” (id. at 6).
This argument is also unpersuasive. First, Foerster states that
accessing the humerus and rotator cuff tendon requires the surgeon to
“make[] an incision or stab wound through the outer dermal layers of
sufficient size to permit passage of the trocar 30 through the skin and the
deltoid muscle, into proximity with the humeral head 24” (Foerster 4, ¶ 58).
The steps of the surgery are performed via this conduit to the humeral head
(id. at 4, ¶ 59). Appellant has cited no evidence to support the assertion that
a suture anchor could be inserted by hand through the incision or conduit
described by Foerster.
Appellant’s argument that “hand insertion of the plug into the anchor”
is likely based on Foerster’s teachings (Reply Br. 5) does not address the
relevant limitation, because claim 1 requires that the anchor, not the plug,
has an end shaped to be mated with a driver. We note that Foerster
expressly suggests using an anchor body “resembling a screw” (FF 10) in its
suture anchor. This suggestion provides additional reason to modify
Appeal 2011-013206
Application 11/778,951

13
Foerster’s anchor body to allow it to be mated to a driver, as required by
claim 1.
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that the
cited references would have made obvious a device meeting the limitations
of claim 1.
Claims 2-6 and 21-24 have not been argued separately and therefore
fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
SUMMARY
We affirm the rejection of the claims on appeal as obvious based on
Foerster, Goble, and Burkhart.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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