Ex Parte Schmieding et al

Patent Trial and Appeal Board

Mar 31, 2016

12963102 (P.T.A.B. Mar. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/963,102 12/08/2010
26096 7590 04/04/2016
CARLSON, GASKEY & OLDS, P,C
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
FIRST NAMED INVENTOR
Reinhold Schmieding
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.
67145-114 PUS2 2193
EXAMINER
OU, JING RU!
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
04/04/2016 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):
ptodocket@cgolaw.com
cgolaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte REINHOLD SCHMIEDING, R. DONALD GRAFTON, and
MARK BRUNSVOLD
Appeal2014-003693
Application 12/963, 102
Technology Center 3700
Before STEFAN STAICOVICI, EDWARD A. BROWN, and
FREDERICK C. LANEY, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Reinhold Schmieding et al. (Appellants)1 appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 1-9, 11-18, 21-29,
and 31-33.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
Appellants' disclosure relates to "an apparatus and method for
anchoring surgical suture to bone. More specifically, the present invention
relates to arthroscopic apparatus and methods for anchoring suture to
1 Arthrex, Inc. is identified as the real party in interest. Appeal Br. 1.
2 Claims 10, 19, 20, and 30 have been cancelled. Final Act. 2.
Appeal2014-003693
Application 12/963, 102
cancellous bone using a suture anchor having an auger-like configuration."
Spec. para. 2. Claims 1, 11, and 21 are independent. Claim 1 illustrates the
claimed subject matter:
1. A suture anchor assembly to secure a suture to a bone, the
suture anchor assembly comprising:
a central body having a central axis, a distal end and a
proximal end;
a drive feature located at the proximal end of the central
body, wherein the drive feature is hexagonal; and
a continuous thread disposed around the central body and
having an inner diameter, an outer diameter, and a thickness,
wherein the thickness increases proximally along at least a
portion of the continuous thread.
Appeal Br. 8 (Claims App.).
REJECTIONS
The claims stand rejected as follows: 3'4
3 The rejection of claims 9, 11-18, 29, and 32 under 35 U.S.C. § 112, first
paragraph, written description requirement, has been withdrawn. Ans. 2.
4 In the Final Office Action, the drawings are objected to under 37 C.F.R.
§ 1.83(a), and the Specification is objected to under 37 C.F.R. § 1.75(d)(l).
Final Act. 3--4. Appellants address these objections in the Appeal Brief.
Appeal Br. 2-3. In response, the Examiner explains that "[t]he objection to
the drawings is not appealable but instead petitionable." This statement
implies that this objection has not been withdrawn. Ans. 2. The Examiner
does not indicate whether the objection to the Specification has been
withdrawn or maintained. The Board normally only considers matters
affecting the merits of the invention. See 37 C.F.R. § 41.31(c). Hence, with
respect to the limitations of "a drivable portion," "a distal end region," and a
"proximal region," objections to the Specification are to be raised by petition
to the appropriate Office authority. See 37 C.F.R. § 1.181; see also Final
Act. 4. Furthermore, with respect to the limitations of "a tip portion,"
because the rejection of claims 9, 11, and 29 under 35 U.S.C. § 112, first
paragraph, written description requirement, has been withdrawn, the
Examiner's objection to the Specification is moot.
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Appeal2014-003693
Application 12/963, 102
1. Claims 1-5, 8, 9, 11-15, 18, 31, and 32 under 35 U.S.C.
§ 103(a) over Nazre (US 5,573,548, issued Nov. 12, 1996) and Lasner (US
5,492,442, issued Feb. 20, 1996).
2. Claims 6, 7, 16, and 17 under 35 U.S.C. § 103(a) over Nazre,
Lasner, and Cerier (US 5, 100,417, issued Mar. 31, 1992).
3. Claims 21-25, 28, 29, and 33 under 35 U.S.C. § 103(a) over
Nazre, Lasner, and Reimels (US 5,505,736, issued Apr. 9, 1996).
4. Claims 26 and 27 under 35 U.S.C. § 103(a) over Nazre, Lasner,
Reimels, and Cerier.
ANALYSIS
Obviousness over Nazre and Lasner
Claims 1-5, 8, 11-15, and 18
Appellants argue the patentability of claims 1-5, 8, 11-15, and 18
together as a group. Appeal Br. 3--4. We select claim 1 as representative,
and claims 2-5, 8, 11-15, and 18 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv).
Claim 1 calls for "a continuous thread disposed around the central
body and having ... a thickness, wherein the thickness increases proximally
along at least a portion of the continuous thread." Appeal Br. 8 (emphasis
added). The Examiner finds that Nazre does not disclose that continuous
thread 5 of suture anchor 1 has a thickness that increases proximally along at
least a portion of thread 5. Final Act. 6-7; see Nazre, Figs. 1, 4. The
Examiner finds that Lasner discloses a bone anchor comprising continuous
thread 13 having a thickness that increases proximally along the thread. Id.
at 8 (citing Lasner, col. 1, 11. 64---65; Fig. 2). The Examiner concludes that,
in view of Lasner, it would have been obvious to modify the thickness of
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Appeal2014-003693
Application 12/963, 102
thread 5 of N azre to increase proximally along at least a portion thereof "to
minimize tearing and displacement of the bone by the inserting of the
narrow thread." Id. (citing Lasner, col. 1, 1. 67---col. 2, 1. 2).
Appellants contend that, in Nazre's suture anchor 1, major diameter S
of screw thread 5 is constant, shaft 2 tapers distally to increase the depth of
engagement of screw thread 5 into bone to optimize strength and bone
engagement, and screw thread 5 is designed to provide additional attachment
strength. Appeal Br. 4 (citing Nazre, col. 3, 11. 58---65). Appellants assert
that ifNazre were modified to make the thickness of screw thread 5 increase
proximally, the portion of screw thread 5 near the distal end would have a
reduced thickness, and, consequently, "the attachment strength could
change." Id. (emphasis added). Appellants contend it is impermissible to
modify Nazre in a manner that defeats it purpose. Id.
In response, the Examiner notes that "Nazre discloses, in column 3,
lines 58-61, '[m] aintaining a constant major diameter S while tapering the
shaft 2 distally, increases the purchase or depth engagement of the screw
thread 5 into the bone toward the distal end 4 of the suture anchor 1. "' Ans.
2 (citing Nazre, col. 3, 11. 58---61, emphasis added). The Examiner explains
that the modification of the thickness ofNazre's screw thread 5 would not
affect the increase in positive engagement of screw thread 5 into bone
because, in the modified suture anchor, the major diameter S is still
maintained constant and shaft 2 is still tapered distally. Id. at 2-3.
Appellants assert there is no reason to modify threads 5 of N azre as
proposed by the Examiner. Reply Br. 1. According to Appellants, if shaft 2
is tapered distally to increase positive engagement with bone, there is no
reason to additionally change the thickness of threads 5. Id. Appellants also
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Application 12/963, 102
contend that "nothing in Nazre et al. indicates that the threads of the suture
anchor 1 need any modification to perform better or that the suture anchor 1
is deficient for its purpose." Id. at 1-2.
Appellants' contentions are not persuasive. Appellants fail to provide
persuasive argument or evidence to show that modifying Nazre's suture
anchor 1 to make the thickness of screw thread 5 increase proximally, and
make the portion of screw thread 5 near the distal end have a reduced
thickness, would change the attachment strength of suture anchor 1. Rather,
Appellants merely make the unsupported assertion that the attachment
strength ofNazre's suture anchor "could change." Attorney argument
cannot take the place of evidence in the record. In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997).
In addition, Appellants provide no authority to support the contention
that Nazre must disclose that threads 5 need a modification to perform
better, or that suture anchor 1 is somehow deficient. To the extent
Appellants may be contending that Nazre is required to provide some
explicit teaching, suggestion, or motivation to combine the reference
teachings, this argument is foreclosed by KSR, in which the Supreme Court
rejected the rigid requirement of a teaching, suggestion or motivation to
combine known elements in order to establish obviousness. KSR Intl. Co. v.
Teleflex Inc., 550 U.S. 398, 418-19 (2007).
Lasner discloses that, in bone screw 10, the diameter of core 12 and
the thickness of screw thread 13 increase along the length of core 12 from
tip 14 toward head 11 (i.e., proximally). Lasner, col. 3, 11. 3-5, 10-12, 51-
55; Figs. 1, 2. Lasner describes that:
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Appeal2014-003693
Application 12/963, 102
The thickness of the thread near the tip of the screw has a narrow
cross-section. The narrow thread and narrow core easily cut into
the bone as the screw rotates into the bone. There is minimal
tearing and displacement of the bone by the insertion of the
narrow thread and pointed core. The thread and core become
thicker toward the head of the screw to increase thread strength
and to displace bone matter downward against the superior
thread surface. Because the core diameter is relatively large at
its junction with the screw head, the screw can withstand high
torque without having the screw head shear off the core.
Id. at col. 1, 1. 64---col. 2, 1. 7. Lasner additionally discloses that the thicker
threads and varied thickness of the thread allow supporting large loads at
cortical bone, and "provide enhanced pull-out resistance." Id. at col. 2, 11.
35--40. As such, Lasner teaches that increasing the thread and core thickness
proximally improves attachment of the bone screw to bone. As such, Lasner
supports the Examiner's rejection.
Appellants' contentions do not apprise us of any error in the
Examiner's findings or articulated reasoning for combining the teachings of
Nazre and Lasner to achieve the suture anchor assembly recited in claim 1.
Thus, we sustain the rejection of claim 1, and claims 2-5, 8, 11-15, and 18
falling with claim 1, as unpatentable over Nazre and Lasner.
Claim 9
Claim 9 depends from claim 1 and recites "a tip portion proximate to
the distal end of the central body, wherein a portion of the tip portion
includes a concave surface." Appeal Br. 9 (emphasis added). The Examiner
finds that the "cut" in the tip ofNazre's suture anchor 1 shown in Figure 4
has a concave surface. Final Act. 7. The Examiner's annotated version of
this figure indicates the location of the "concave surface." Id. at 8.
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Application 12/963, 102
Appellants contend that N azre' s "v-shaped notch" is not a concave
surface. Reply Br. 2. In support, Appellants provide two dictionary
definitions of the term "concave." Id. These definitions indicate "concave"
means "'hollowed or rounded inward like the inside of a bowl,'" and
"arched in: curving in - used of the side of a curve or surface on which
neighboring normal to the curve or surface converge and on which lies the
chord joining two neighboring points of the curve or surface." Id. (citing
Merriam-Webster website). 5
Appellants' contentions are persuasive. The Examiner has not
established with evidence that the tip portion ofNazre's suture anchor
shown in Figure 4 has a "concave surface." Figure 4 does not show clearly
the configuration of the "cut-out" portion. Also, Nazre does not appear to
provide any description pertaining to the "cut-out" portion. Consequently,
the Examiner has not shown that the "cut-out" portion has any particular
configuration, much less that it "includes a concave surface." Thus, we do
not sustain the rejection of claim 9.
Claims 31 and 32
Claims 31 and 32 depend from claims 1 and 11, respectively, and
recite that "the outer diameter of at least a portion of the continuous thread
decreases distally." Appeal Br. 11 (emphasis added). The Examiner finds
that Nazre discloses that "[the] outer diameter of the distal portion of the
continuous thread decreases distally." Final Act. 7 (citing Nazre, Figs. 3, 8).
Appellants contend that Nazre teaches that the major diameter S is constant
to provide additional attachment strength, and modifying screw thread 5 to
5 These same definitions of "concave" are provided in Merriam-Webster's
Collegiate® Dictionary 256 (I Ith ed. 2003).
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Appeal2014-003693
Application 12/963, 102
have an outer diameter that decreases distally would destroy the purpose.
Appeal Br. 5.
Appellants' contention is persuasive. First, we note that the Examiner
does not respond to this argument. Second, as discussed above in relation to
claim 1, the Examiner's combination of the teachings ofNazre and Lasner is
premised on the position that "the major diameter S of the modified bone
anchor is still maintained constant." Ans. 3 (emphasis added). Nazre
supports this position. See Nazre, col. 3, 11. 58---61. However, the
Examiner's position for claims 31 and 32 is contradictory to that position.
Accordingly, we do not sustain the rejection of claims 31 and 32.
Obviousness over Nazre, Lasner, and Cerier- Claims 6, 7, 16, and 17
Appellants rely solely on claims 6 and 7 depending from claim 1, and
claims 16 and 17 depending from claim 11, for patentability. Appeal Br. 5.
As Appellants do not apprise us of any error in the rejection of claims 1 and
11, we sustain the rejection of claims 6, 7, 16, and 17 as unpatentable over
Nazre, Lasner, and Cerier for the same reasons as those for claims 1 and 11.
Obviousness over Nazre, Lasner, and Reimels
Claims 21-25 and 28
Appellants argue the patentability of claims 21-25 and 28 together as
a group. Appeal Br. 5-6. We select claim 21 as representative.
Appellants present the same arguments as those made for the rejection
of claim 1. Appeal Br. 5---6. Accordingly, we sustain the rejection of claim
21, and claims 22-25 and 28 falling with claim 21, as unpatentable over
Nazre, Lasner, and Reimels.
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Application 12/963, 102
Claim 29
Claim 29 depends from claim 21 and recites that "a portion of the tip
portion includes a concave surface." Appeal Br. 11 (Claims App.).
Accordingly, we do not sustain the rejection of claim 29 as unpatentable
over Nazre, Lasner, and Reimels for the same reasons as those for claim 9.
Claim 33
Claim 33 depends from claim 21 and recites the same limitation as
claims 31 and 32. Accordingly, we do not sustain the rejection of claim 33
as unpatentable over Nazre, Lasner, and Reimels for the reasons discussed
above in relation to claims 31 and 32.
Obviousness over Nazre, Lasner, Reimels, and Cerier
Appellants rely solely on claims 26 and 27 depending from claim 11
for patentability. Appeal Br. 6. Accordingly, we sustain the rejection of
claims 26 and 27 as unpatentable over Nazre, Lasner, Reimels, and Cerier
for the same reasons as those discussed in relation to claim 11.
DECISION
The Examiner's decision to reject claims 1-8, 11-18, and 21-28 is
AFFIRMED, and to reject claims 9, 29, and 31-33 is REVERSED.
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-IN-PART
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