Ex Parte Schmieding et al

Patent Trial and Appeal Board

Mar 28, 2013

11775079 (P.T.A.B. Mar. 28, 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.
11/775,079 07/09/2007 John W. Schmieding A8130.0504/P504 4396
24998 7590 03/28/2013
DICKSTEIN SHAPIRO LLP
1825 EYE STREET NW
Washington, DC 20006-5403
EXAMINER
TEMPLETON, CHRISTOPHER L
ART UNIT PAPER NUMBER
3773
MAIL DATE DELIVERY MODE
03/28/2013 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 JOHN W. SCHMIEDING and TARA L. SCHANEVILLE
__________

Appeal 2011-013205
Application 11/775,079
Technology Center 3700
__________

Before TONI R. SCHEINER, ERICA A. FRANKLIN, and ULRIKE W.
JENKS, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
suture strand and a suture assembly. The Patent Examiner rejected the
claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-
in-part.
STATEMENT OF THE CASE
Claims 1, 3, 4, 6-9, 12 and 13 are on appeal. Claims 1, 3, 4 and 13 are
representative and read as follows:

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1. A suture strand comprising:
a core comprising twisted yarns formed of a polyether-ketone variant;
and
a jacket surrounding the core, wherein the jacket comprises yarns of
the polyether-ketone variant braided with yarns of ultrahigh molecular
weight polyethylene.

3. The suture strand of claim 1, wherein the yarns of poly ether-ketone
variant comprises at least 31 % of the yarns in the suture strand.

4. The suture strand of claim 1, wherein the core comprises about 12.6%
or greater of the total amount of yarns in the suture strand.

13. A suture assembly comprising:
a suture, the suture having a longitudinal length and a multifilament
jacket comprising a plurality of braided yarns of poly ether-ketone variant
surrounding a core comprising twisted yarns of polyether-ketone variant;
and
a suture anchor, wherein the suture is threaded through an eyelet of
the suture anchor.

The Examiner rejected the claims as follows:
• claims 1, 3, 4, 6-9, 12 and 13 under 35 U.S.C. § 103(a) as
unpatentable over Greenhalgh1 and Grafton;2 and
• claims 1, 3, 4, 6-9, 12 and 13 under 35 U.S.C. § 103(a) as
unpatentable over Greenhalgh, Grafton, and Hill.3

OBVIOUSNESS
I. The Rejection over Greenhalgh and Grafton

1 Patent Application Publication No. US 2009/0105753 A1 by E. Skott
Greenhalgh et al., published Apr. 23, 2009.
2 Patent No. US 6, 994,719 B2 issued to R. Donald Grafton, Feb. 7, 2006.
3 US Patent No. 6,045,571 issued to Donald G. Hill et al., Apr. 4, 2000.

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The Examiner’s position is that Greenhalgh disclosed a suture strand
(Figure 6) comprised of a core of yarns formed of a polyether-ketone variant
(PEEK) and a jacket surrounding the core of a plurality of braided yarns
formed of polyether ketone variant (PEEK) with yarns of ultrahigh
molecular weight polyethylene. (Ans. 4.) Specifically, the Examiner found
that Greenhalgh disclosed a list of polymers for use in the suture, including
combinations of the polymers. (Id.)
The Examiner found that Greenhalgh did not expressly disclose a
twisted core in Figure 6. (Id. at 4.) However, the Examiner found that “[i]n
a separate embodiment, Greenhalgh discloses the core as being twisted….”
(Id. at 5)(citing Greenhalgh Fig. 12, [0040]-[0041]). According to the
Examiner, it would have been obvious to a person of ordinary skill in the art
at the time the invention was made to have “modif[ied] the core of Figure 6
to include the twisted core of Figure 12, in order to form a port for use as a
buttonhole to secure an object to the port of the suture,” as taught by
Greenhalgh. (Ans. 5.)
The Examiner found that Greenhalgh infers but does not specifically
state braiding or weaving ultrahigh molecular weight polyethylene with
PEEK. (Id. at 4.) However, the Examiner found that Grafton taught a suture
with a braided jacket made of a blend of ultrahigh molecular weight
polyethylene and polyester for the purpose of providing strength and
improved tie down properties. (Id.) According to the Examiner, it would
have been obvious for a person of ordinary skill in the art at the time the
invention was made to have formed the jacket or core in Greenhalgh out of
PEEK and ultrahigh molecular weight polyethylene or to have formed the
jacket of PEEK and a blend of ultrahigh molecular weight polyethylene and
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polyester, as taught by Grafton, to make the suture stronger or to
additionally improve tie down properties. (Id. at 5.)
Regarding claim 3, the Examiner found that Greenhalgh implicitly
disclosed the PEEK comprising at least 31% of the yarns in the suture strand
by teaching that the entire suture can be made of any of the listed materials,
including PEEK. (Id. at 4.)
Regarding claim 4, the Examiner found that Greenhalgh “discloses the
core being comprised of about 12.6% or greater of the total amount of
yarns in the suture strand” because Greenhalgh “Figure 6 shows the core
comprising 12.6% or greater of the total amount of yarns.” (Id.)
Appellants contend, among other things, that Greenhalgh is “silent
about ‘a core comprising twisted yarns … [of] polyether-ketone variant.”
(App. Br. 8.)4 According to Appellants, Greenhalgh Figure 12 shows a
twisted suture strand and not twisted yarns forming a core of the suture
strand. (Id. at 8-9.) Appellants assert that Greenhalgh teaches that the core
can be comprised of interwoven strands, but that there is no motivation for
one skilled in the art to modify the interwoven core yarns to instead provide
a core with twisted yarns. (Id. at 9-10.) Further, Appellants assert that
Greenhalgh teaches against twisted yarns forming a core by teaching a “non-
braided suture” and not braided or twisted sutures or yarns. (Id.)
We do not agree with Appellants that Greenhalgh taught away from a
core comprising twisted yarn. As Appellants acknowledged, Greenhalgh is
“silent” with respect to a core comprising twisted yarn. Thus, Greenhalgh

4 The Appeal Brief does not contain page numbers. Our reference to page
numbers is based upon our count of the pages in the Appeal Brief.
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cannot be said to have criticized, discredited, or otherwise discouraged such
formation. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
However, we do agree with Appellants that the Examiner’s finding
(Ans. 5) that Greenhalgh disclosed an embodiment wherein the core
comprised twisted yarn is not supported by the evidence. (See Ans. 5)(citing
Greenhalgh Fig. 12, [0040]-[0041]). As Appellants correctly assert,
Greenhalgh’s Figure 12 depicts the suture strands being twisted and not the
yarns of the core being twisted.
Accordingly, we reverse the rejection of claims 1, 3, 4, 6-9, 12 and 13,
all of which require a core comprising twisted yarns.
II. The Rejection over Greenhalgh, Grafton and Hill
The Examiner relied on Greenhalgh and Grafton as discussed in the
previous rejection. (Ans. 6-7.) Additionally, the Examiner found that Hill
taught twisting the core of its surgical cord three to six times per inch to
prevent the core from popping out of the outer sheath. (Id. at 7.) According
to the Examiner, it would have been obvious to a person of ordinary skill in
the art at the time the invention was made to have modified the suture of
Greenhalgh to include a twisted core, as taught by Hill, to prevent the core
from popping out of the outer sheath. (Id.)
Regarding independent claims 1 and 13, Appellants contend that Hill
did not cure the deficiencies of Greenhalgh. (App. Br. 11.) We consider
this argument with respect to the claim requirement of “a core comprising
twisted yarns….” Appellants assert that “Hill teaches a surgical cord
comprising a[n] interlocking multifilament sheath and an interlocked
multifilament core … and not the suture or assembly having the specific
characteristics recited in claims 1 and 13.” (Id. at 12.) After considering
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the evidence and arguments, we find that the Examiner properly relied on
Hill as providing a suggestion to twist the yarns comprising the core of a
suture to reduce the occurrence of core popping. While Hill is directed to a
surgical “cord” the reference appears to use the terms “cord” and “sutures”
interchangeably. In particular, Hill expressly disclosed twisting the core
yarn in “sutures.” (Hill col. 10, ll. 25-48, Example 1.) Thus, the Examiner
provided sound reasoning for modifying the core in Greenhalgh and that
reasoning is supported by the evidence.
Appellants also contend that that Greenhalgh did not teach a core
comprising “yarns formed of a polyether-ketone variant,” i.e., PEEK. (App.
Br. at 9.) Additionally, Appellants contend that “Greenhalgh does not
disclose or suggest a jacket surrounding a core and comprising ‘yarns of
polyether-ketone variant braided with yarns of ultrahigh molecular weight
polyethylene.’” (Id. at 4.) According to Appellants, Greenhalgh only
discloses PEEK and ultrahigh molecular weight polyethylene as part of a
long list of materials not directed to sutures in particular, but rather to “[a]ny
or all elements of the suture 2 and/or other devices or apparatuses described
herein….” (Id. at 5.)(quoting Greenhalgh [0057]).
We are not persuaded by Appellants’ arguments. Greenhalgh
specifically disclosed PEEK and ultrahigh molecular weight polyethylene in
its list of polymers that may be used in elements of its suture. Merely
selecting the disclosed components from the list for use in a suture element
amounts to no more than combining familiar elements according to known
methods yielding no more than predictable results. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 416 (2007). Appellants have not established
otherwise with persuasive evidence.
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Accordingly, we affirm the rejections of claims 1 and 13 over
Greenhalgh, Grafton and Hill. Claims 6-9 and 12 have not been argued
separately and therefore fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
Regarding dependent claims 3 and 4, Appellants assert that the
Examiner’s findings that the recited compositions in these claims were
disclosed in Greenhalgh are unsupported. (Reply Br. 3.) According to
Appellants, “Greenhalgh is completely silent about weight percentages or
about methods of calculating any weight percentages, or about any guidance
on how these weight percentages (or any other results) could be achieved,
particularly in view of the numerous variations, combinations, and/or
materials used in its sutures.” (Id.)
Claim 3 recites, “The suture strand of claim 1, wherein the yarns of
polyether-ketone variant comprises at least 31 % of the yarns in the suture
strand.” The Examiner reasoned that Greenhalgh implicitly disclosed this
element by suggesting that the entire suture could be comprised of PEEK,
i.e., by teaching that any and all elements of the suture can be made from
materials including PEEK. (Ans. 4.) In other words, the Examiner’s
position is that a suture strand comprising a core formed of yarns of
polyether-ketone variant and a jacket comprising yarns also comprising
polyether-ketone, braided with ultrahigh molecular weight polyethylene,
would provide a strand wherein the yarns of polyether-ketone variant
comprise at least 31% of the yarns in the strand. We agree with the
Examiner as this position is based upon sound reasoning that is supported by
the evidence. Appellants have not established otherwise by asserting that
Greenhalgh is silent “about weight percentages.”
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Therefore, we affirm the rejection of claim 3 over Greenhalgh,
Grafton and Hill.
Claim 4 recites, “The suture strand of claim 1, wherein the core
comprises about 12.6% or greater of the total amount of yarns in the suture
strand.” According to the Examiner, Greenhalgh Figure 6 “discloses the
core being comprised of about 12.6% or greater of the total amount of yarns
in the suture strand” because Greenhalgh “Figure 6 shows the core
comprising 12.5% or greater of the total amount of yarns.” (Ans. 4.)
However, we agree with Appellants that Greenhalgh Figure 6 does not
depict or otherwise inform as to the percentage of yarn comprised in the
core. See Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d 951,
956 (Fed. Cir. 2000)( “[P]atent drawings do not define the precise
proportions of the elements and may not be relied on to show particular sizes
if the specification is completely silent on the issue.”).
Accordingly, we reverse the rejection of claim 4 over Greenhalgh,
Grafton and Hill.
SUMMARY
We reverse the rejection of claims 1, 3, 4, 6-9, 12 and 13 over
Greenhalgh and Grafton;
we affirm the rejection of claims 1, 3, 6-9, 12 and 13 over
Greenhalgh, Grafton and Hill; and
we reverse the rejection of claim 4 over Greenhalgh, Grafton and Hill.

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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-IN-PART

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