Ex Parte Ruff et al

Patent Trial and Appeal Board

Sep 27, 2018

10908539 (P.T.A.B. Sep. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/908,539 05/16/2005
135715 7590
EthiconLLC
c/o Frost Brown Todd LLC
3300 Great American Tower
301 East Fourth Street
Cincinnati, OH 45202
10/01/2018
FIRST NAMED INVENTOR
Gregory L. Ruff
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.
ETH5676USNP.0651903 5539
EXAMINER
ANDERSON, GREGORY A
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
10/01/2018 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):
patents@fbtlaw.com
lgroves@fbtlaw.com
jdewar@fbtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY L. RUFF,
JEFFREY C. LEUNG, ANDREW KAPLAN,
MATTHEW A. MEGARO, and STANTON D. BATCHELOR
Appeal 2016-002536
Application 10/908,539
Technology Center 3700
Before WILLIAM A. CAPP, LEE L. STEPINA, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2016-002536
Application 10/908,539
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants Gregory L. Ruff et al. 1
appeal from the Examiner's decision, as set forth in the Final Office Action
dated November 209, 2014 ("Final Act."), rejecting claims 16, 17, 115-133,
135-142, and 144. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The claims are directed to suture devices. Claims 16, 13 5, 141,
and 142 are the independent claims on appeal. Claim 16, reproduced below
with disputed limitations italicized for emphasis, is illustrative of the
claimed subject matter:
16. A barbed suture comprising:
an elongated body with a cross section, where the cross
section has a transverse length;
one pointed end; a proximal end,
a plurality of staggered cuts in the elongated body
providing for a plurality of staggered barbs extending from the
periphery of the body,
the barbs yielding toward the suture body during
movement of the suture through the tissue in the direction of
movement of the pointed end and the barbs resisting movement
of the suture through the tissue in a direction opposite the
direction of movement of the pointed end by engagement of the
barbs within the tissue;
the proximal end having a loop through which the
elongated body may pass to secure tissue as an anchor wherein
said anchor does not include barbs on the loop,
the anchor preventing movement of the suture in the
direction of movement of the pointed end.
Appellants identify Ethicon, Inc. as the real party in interest. Appeal
Brief, dated April 20, 2015 ("Appeal Br."), at 3.
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Appeal2016-002536
Application 10/908,539
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Alcamo
Wilk
Fenton
Leung
us 3,123,077
us 5,123,913
us 5,964,765
US 2004/0060409 Al
REJECTIONS
The Examiner made the following rejections:
Mar. 3, 1964
June 23, 1992
Oct. 12, 1999
Apr. 1, 2004
1. Claims 16, 17, 115-133, 135-141, and 144 stand rejected under 35
U.S.C. § I03(a) as being unpatentable over Wilk, Alcamo, and Fenton.
2. Claim 142 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Wilk, Leung, and Fenton.
Appellants seek our review of these rejections.
DISCUSSION
Rejection 1: Claims 16, 17, 115-133, 135-141, and 144
as Unpatentable Over Wilk, Alcamo, and Fenton
Appellants argue claims 16, 17, 115-133, 135-141, and 144 as a
group. Appeal Br. 5-10. We select independent claim 16 as the
representative claim, and claims 17, 115-133, 135-141, and 144 stand or fall
with claim 16. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Wilk and Alcamo disclose all of the
limitations of claim 16 except for an anchor that does not have barbs on the
loop. Final Act. 2--4. For this missing limitation, that Examiner finds that
Fenton discloses "a suture having a loop for an anchor in at least Fig. 13
wherein the loop has serrations 32 but no barbs, the serrations designed to
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Appeal2016-002536
Application 10/908,539
provide a frictional retention of the suture." Id. at 4 (citing Fenton 3:9-15).
The Examiner determines that it would have been obvious "to modify the
device of Wilk et al. in view of Alcamo by replacing the loop and locking
mechanism of Wilk et al. with the loop of Fenton et al. in order to create a
permanent bond between anchor and suture as taught by Fenton." Id. (citing
Fenton 3:4--8).
Appellants assert that the Examiner's rejection is erroneous because
"it would be improper to modify the Wilk device to include the loop of
Fenton, as it would not achieve Wilk's purpose and intent." Appeal Br. 6.
According to Appellants, Wilk "requires a locking configuration, which
includes an internal aperture with the main loop of Wilk," and "Wilk
requires and intends to achieve a permanent locking, whereby after threading
the suture through the Wilk loop, it cannot be pulled back in the opposite
direction." Id. Appellants contend that Fenton's "serrations allow for
increased friction, but that further welding is used." Id. at 7. Appellants
contend that the Examiner's proposed combination uses Fenton's serrations
to achieve a temporary "friction" connection between the suture and the
loop, without welding the suture and loop together to achieve a permanent
connection. See id. at 7-8. Thus, Appellants assert that (1) the Examiner's
proposed combination does not achieve "Wilk's intended purpose," and (2)
there is no factual basis or reasoning that "the substitution of elements would
work" and that Fenton's serrations would "inherently" work for Wilk's
purpose. Id. at 9.
Appellants misunderstand the rejection. As the Examiner correctly
explains, the "Fenton device provides a suture having elongated body and an
alternative permanent fixation structure comprising a serrated loop that holds
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Appeal2016-002536
Application 10/908,539
the suture temporarily via friction until the loop and elongated body are
[permanently] welded together." Answer, dated November 6, 2015
("Ans."), at 2; see also Final Act. 8 (citing Fenton 3:9-14). The Examiner
further explains that "Fenton is relied upon for an alternative structure for
permanently fixing the elongated member and loop (i.e., the elongated body
and serrated loop that are welded together)" and "Wilks is modified in view
of Fenton to replace the loop of Wilks with the loops of Fenton, [which] has
no barbs and allows for permanent locking via welding." Id. at 3. Contrary
to Appellants' argument that the Examiner's proposed combination does not
achieve Wilk's "intended purpose" and would not work, we agree with the
Examiner that because both Wilk and Fenton use a permanent connection
between the suture and loop, the proposed combination would also result in
a permanent connection. Because Appellants' argument does not address
the rejection as articulated by the Examiner, it does not identify error.
We sustain the Examiner's rejection of claim 16. Because Appellants
do not allege any other patentable distinctions for claims 17, 115-133, 135-
141, and 144, we likewise sustain the Examiner's rejections of these claims.
Rejection 2: Claims 142
as Unpatentable Over Wilk, Leung, and Fenton
Appellants assert that the Examiner's rejection of claim 142 is
erroneous for the identical reasons discussed above with respect to claim 16.
For the reasons discussed above with respect to claim 16, Appellants'
arguments do not address the rejection as articulated by the Examiner and,
thus, do not identify Examiner error. The rejection of claim 142 is
sustained.
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Application 10/908,539
DECISION
For the above reasons, the Examiner's rejections of claims 16, 17,
115-133, 135-142, and 144 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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