10377135 (B.P.A.I. Jun. 1, 2009)

Ex Parte Lizardi

Board of Patent Appeals and InterferencesJun 1, 2009

10377135 (B.P.A.I. Jun. 1, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte JOSE E. LIZARDI ____________________ Appeal 2009-000599 Application 10/377,135 Technology Center 3700 ____________________ Decided: June 1, 2009 Before: WILLIAM F. PATE, III, LINDA E. HORNER and STEFAN STAICOVICI, Administrative Patent Judges. PATE, III, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Claims 47-58 are currently pending. This is an appeal from the rejection of claims 47-54, 56 and 58. Claims 55 and 57 have been withdrawn from consideration. App. Br. 1. We have jurisdiction over the appeal under 35 U.S.C. § 134. Appeal 2009-000599 Application 10/377,135 2 The claimed invention is directed to a method for anchoring tissue to bone. Claim 47, reproduced below, is further illustrative of the claimed subject matter. 47. A method for anchoring tissue to bone, comprising: positioning a suture loop through a detached segment of tissue; manipulating a suture anchor attached to the suture loop to engage a portion of the suture loop within a groove formed in a leading end of the suture anchor, the groove being distal to a suture-retaining through-hole extending through the suture anchor; inserting the suture anchor with the leading end first into a bore formed in bone such that the suture loop reattaches the detached segment of tissue to the bone; and toggling the suture anchor to lock the anchor within the bore. The prior art relied upon by the Examiner in rejecting the claims on appeal is: Thal US 5,891,168 Apr. 6, 1999 Bartlett US 6,306,158 B1 Oct. 23, 2001 Claims 47 and 58 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Bartlett. Ans. 3. Claims 47-54 and 56 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Thal and Bartlett1. Ans. 3-4. 1 The Examiner included two separate grounds of rejection under 35 U.S.C. § 103(a) over Thal in view of Bartlett and over Bartlett in view of Thal. Appeal 2009-000599 Application 10/377,135 3 ISSUES Regarding the rejection of claims 47 and 58 as being anticipated by Bartlett, Appellant contends that Bartlett fails to disclose the step of positioning a suture loop through a detached segment of tissue because the Examiner’s interpretation of the term “through” to include “over the surface of” (Ans. 5) is unreasonable. App. Br. 8-11; Reply Br. 3-4. Regarding the rejection of claims 47-54 and 56, Appellant contends that since Thal uses a different anchor, a barb-type anchor, and a different method of stitching, mattress stitching, it is not properly combinable with Bartlett. App. Br. 15. Appellant also contends that the claimed step of “manipulating a suture anchor attached to the suture loop to engage a portion of the suture loop within a groove formed in a leading end of the suture anchor” requires the suture loop to be attached to, and engaged by, a groove in the leading end of the same suture anchor. Appellant contends that since the snag means of the suture anchors in Thal engage suture loops that are attached to different anchors, Thal does not teach or suggest this step. App. Br. 16. Appellant further contends that the Thal reference fails to disclose, teach or suggest toggling or rotating a flared portion which penetrates the bone. App. Br.17-18. Appellant contends that Bartlett cannot cure this deficiency because the combination of Bartlett with Thal would be undesirable and unworkable. App. Br. 20. Appellant additionally contends that there is no motivation to combine Thal and Bartlett to use the second suture loop described in Thal because Bartlett wraps his suture around the Ans. 3-4. Unlike the examiner, we do not consider the order in which prior art is applied in a rejection to be significant. See e.g., In re Bush 296 F.2d 491, 496 (CCPA 1961). Appeal 2009-000599 Application 10/377,135 4 tissue instead of passing the suture through the tissue. App. Br. 24. Appellant additionally contends that the combination of Bartlett and Thal fails to disclose, teach or suggest “positioning a suture loop through a detached segment of tissue”, “manipulating a suture anchor attached to the suture loop to engage a portion of the suture loop within a groove formed in a leading end of the suture anchor”, “inserting the suture anchor with the leading end first into a bore”, and “passing a second suture loop through the detached segment of tissue.” App. Br. 25-26. The issues for our consideration are: whether Appellant has established that the Examiner erred in rejecting claims 47 and 58 under 35 U.S.C. § 102(e) as being anticipated by Bartlett; and whether Appellant has established that the Examiner erred in rejecting claims 47-54 and 56 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Thal and Bartlett. FINDINGS OF FACT 1. Thal discloses positioning a suture loop through a detached segment of tissue (col. 3, ll. 21-22); manipulating a suture anchor attached to the suture loop to engage a portion of the suture loop within a snag means (“groove”, “internal hook”) formed in a leading end of the suture anchor (col. 3, ll. 22-23; fig. 1), the snag means being distal to a suture-retaining through-hole extending through the suture anchor (See fig. 1); inserting the suture anchor with the leading end first into a bore formed in bone such that the suture loop reattaches the detached segment of tissue to the bone (col. 3, ll. 23-24). Appeal 2009-000599 Application 10/377,135 5 2. Thal employs barb-like prongs 16, 18 to facilitate attachment to the bone (col. 4, ll. 9-10) and therefore fails to disclose toggling the suture anchor to lock the anchor within the bore. 3. Thal recognizes that other types of engaging features suitable for secure attachment with a bone mass are known in the art. Col. 4, ll. 13-16. 4. Thal additionally discloses passing a second suture loop 64 through a detached segment of tissue. Col. 4, ll. 60-65; fig. 3. 5. Bartlett recognizes there are several types of suture anchors known in the prior art, including wedge type anchors and barb-type anchors, suitable for securing sutured tissue to bone. Col. 1, ll. 21-30. 6. Bartlett teaches a wedge type anchor 10 having a gripping edge 16,216 (“flared portion”) that is turned or rotated (“toggled”) to lock the anchor within the bore. Col. 10, ll. 1 et seq.; Figs. 8-15. 7. Bartlett teaches that the suture may be wrapped about or otherwise engaged with the bodily tissue to be secured by the suture anchor. Col. 12, ll. 17-19. 8. Bartlett also teaches that the suture may be affixed to the tissue either after (col. 11, ll. 47-50; figs. 14-15) or before (col. 12, ll. 20-26; fig. 18) the anchor is implanted in the bone. PRINCIPLES OF LAW A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference. Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). Appeal 2009-000599 Application 10/377,135 6 Where no explicit definition for a term is given in the specification, the term should be given its ordinary meaning and broadest reasonable interpretation. E-Pass Technologies, Inc. v. 3Com Corporation, 343 F.3d 1364, 1368 (Fed. Cir. 2003). The ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1319 (Fed. Cir. 2005) (en banc). The examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness. The key to supporting any prima facie conclusion of obviousness under 35 U.S.C. § 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) noted that the analysis supporting a rejection under 35 U.S.C. § 103 should be made explicit. The Federal Circuit has stated that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR, 550 U.S. at 416. A prima facie conclusion of obviousness may be supported by a showing that the claims are directed to a process, machine, manufacture, or composition of matter already known in the prior art that is altered by the mere substitution of one element for another known in the Appeal 2009-000599 Application 10/377,135 7 field, and such modification yields a predictable result. See id. (citing United States v. Adams, 383 U.S. 39, 40 (1966)). The Court further stated that: [I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. KSR, 550 U.S. at 417. When considering obviousness of a combination of known elements, the operative question is thus “whether the improvement is more than the predictable use of prior-art elements according to their established functions.” Id. Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). “[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). The relevant inquiry is whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). “Combining the teachings of references does not involve an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). ANALYSIS Regarding the Examiner’s rejection of claims 47 and 58 as anticipated by Bartlett, the Examiner’s interpretation of the term “through” is not reasonable. The term “through” must be interpreted as it relates to tissue, not Appeal 2009-000599 Application 10/377,135 8 as it relates to a country or a piece of paper (Ans. 5). As it relates to tissue, the term “through” requires some form of penetration. App. Br. 10. This penetration is not expressly or inherently described in Bartlett. Accordingly, the rejection of claims 47 and 58 as being anticipated by Bartlett is reversed. Although Bartlett does not disclose that the suture loop passes through a detached segment of tissue, Thal clearly does. See Fact 1. Furthermore, Bartlett expressly suggests that his suture could be used with other engagement techniques. See Fact 7. Contrary to Appellant’s assertion (App. Br. 25-26) Thal discloses all features of claims 47, 48 and 51 except for toggling or rotating a flared portion. Facts 1, 2, and 4. The fact that Thal alone does not disclose this feature does not establish that Examiner erred by relying on the combined teachings of Thal and Bartlett to conclude that it would have been obvious. Contra App. Br. 17-18. Thal suggests that other types of securing means may be used in place of the barb-like prongs 16, 18. See Fact 3. Modifying Thal to include a flared portion whereby the anchor is toggled to lock it into the bore as taught by Bartlett amounts to the simple substitution of known elements with predictable results and would have been obvious to one having ordinary skill in the art. Contrary to Appellant’s assertion (App. Br. 15-16, 20), mattress stitching, whereby the snag means of the suture anchors engage suture loops that are attached to different anchors, is not the only attachment method Thal discloses. While the focus of the Detailed Description and claims of Thal is on the mattress stitching technique, this technique is disclosed as an alternative to one in which the snag means of the suture anchors engages suture loops that are attached to the same anchor. (Note separate discussion in the Summary of Invention; cf col. 3, ll. 15-31 with col. 3, ll. 32-46). Even Appeal 2009-000599 Application 10/377,135 9 absent a more detailed description than is provided in the summary, Thal makes it clear that the claimed step of “manipulating a suture anchor attached to the suture loop to engage a portion of the suture loop within a groove formed in a leading end of the suture anchor” was known in the art. Furthermore, the Figure 18 embodiment of Bartlett also demonstrates a technique wherein the anchor’s groove engages the same suture that it is attached to. Requiring the anchor itself to pass through the tissue is also discussed only in the alternative in Thal (col. 2, ll. 28-31) and incorporating the teachings of Bartlett would not mandate passing Bartlett’s anchor through the tissue as Appellant suggests. App. Br. 20. Thal demonstrates an alternative technique, identical to the one claimed by Appellant, wherein needle 68 and second suture loop 64 pass through the tissue instead of the entire anchor. See Fact 4; . Also contrary to Appellant’s assertion (App. Br. 20, 24), one of ordinary skill in the art would not interpret Bartlett as being applicable only to anchors having sutures which do not go through the tissue, because this is not an essential part of Bartlett’s design, and additionally, because Bartlett expressly suggests using other engagement techniques. See Fact 8. Combining the teachings of prior art references does not require the combination of the specific structures that Appellant alleges would be incompatible or undesirable. App. Br. 20. One of ordinary skill in the art would know how to combine the techniques of Bartlett and Thal in order to arrive at a workable method. Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection of claim 58 under 35 U.S.C. § 103(a) as being unpatentable over Thal and Bartlett. Appeal 2009-000599 Application 10/377,135 10 Thal discloses all features of claim 58 except for toggling or rotating a flared portion. Facts 1, 2, and 4. Thal suggests that other types of securing means may be used in place of the barb-like prongs 16, 18. See Fact 3. Modifying Thal to include a flared portion whereby the anchor is toggled to lock it into the bore as taught by Bartlett amounts to the simple substitution of known elements with predictable results and would have been obvious to one having ordinary skill in the art. CONCLUSION OF LAW On the record before us, Appellant has established that the Examiner erred in rejecting claims 47 and 58 as being anticipated by Bartlett, because Bartlett fails to disclose the step of positioning a suture loop through a detached segment of tissue. Appellant has failed to establish that the Examiner erred in rejecting claims 47-54 and 56 as being unpatentable over the combination of Thal and Bartlett. DECISION For the above reasons, the Examiner's rejection of claims 47 and 58 under 35 U.S.C. § 102(e) as being anticipated by Bartlett is reversed and the Examiner’s rejection of claims 47-54 and 56 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Thal and Bartlett is affirmed. Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection of claim 58 under 35 U.S.C. § 103(a) as being unpatentable over Thal and Bartlett. Appeal 2009-000599 Application 10/377,135 11 Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides “Appellant may file a single request for rehearing within two months from the date of the original decision of the Board.” In addition to affirming the Examiner's rejections of one or more claims, this decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b) (2008). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION2, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . Should Appellant elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the Examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome. Appeal 2009-000599 Application 10/377,135 12 If Appellant elects prosecution before the Examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Board of Patent Appeals and Interferences for final action on the affirmed rejection, including any timely request for rehearing thereof. 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) (2007). AFFIRMED-IN-PART; § 41.50(b) vsh NUTTER MCCLENNEN & FISH LLP WORLD TRADE CENTER WEST 155 SEAPORT BOULEVARD BOSTON, MA 02210-2604 2 The “Date of the Decision” is the decided date shown on the cover page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery).