11394126 (P.T.A.B. Mar. 11, 2015)

Ex Parte Stokes et al

Patent Trial and Appeal BoardMar 11, 2015

11394126 (P.T.A.B. Mar. 11, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE 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. 11/394,126 03/31/2006 Michael J. Stokes END-5418CIP5 1019 21884 7590 03/12/2015 WELSH FLAXMAN & GITLER LLC 2000 DUKE STREET, SUITE 100 ALEXANDRIA, VA 22314 EXAMINER HOUSTON, ELIZABETH ART UNIT PAPER NUMBER 3773 MAIL DATE DELIVERY MODE 03/12/2015 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 MICHAEL J. STOKES, ANDREW M. ZWOLINSKI, MARK S. ORTIZ, and FREDERICK E. SHELTON IV __________ Appeal 2012-005921 Application 11/394,126 Technology Center 3700 __________ Before DEMETRA J. MILLS, ERIC B. GRIMES, and ROBERT A. POLLOCK, Administrative Patent Judges. MILLS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134. The Examiner has rejected the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2012-005921 Application 11/394,126 2 STATEMENT OF CASE The following claim is representative. 1. A method for suture lacing, consisting essentially of: a. providing a suture with a needle attached thereto; b. inserting the needle and suture into an organ through a passageway; c. throwing a single stitch through a first tissue member in a proximal to distal direction, throwing a single stitch through an opposed and spaced apart second tissue member in a proximal to distal direction; d. repeating step (c) at least once; e. after completing steps (c) and (d), throwing a final suture throw in either the first tissue member or the second tissue member in a proximal to distal direction and reversing the direction of the final suture throw such that the final suture throw ends in the suture being pulled in a distal to proximal direction, the step of reversing includes positioning a reversing pin between the suture and either the first tissue member or the second tissue member; f. bringing the first and second tissue members in contact by tensioning the suture, whereby suture drag is minimized during the tensioning and even tissue compression substantially achieved; and g. securing the suture. Cited References Smith US 2,601,564 July 8, 1950 Leiboff US 4,625,727 Dec. 2, 1986 Noda et al. US 5,129,912 July 14, 1992 (hereinafter “Noda”) Kelleher et al. US 2005/0055038 A1 Mar. 10, 2005 (hereinafter “Kelleher”) The CARON Collection Needlework Tips, available at http://www.caron- net.com/patguide.html (last visited April 6, 2011). Appeal 2012-005921 Application 11/394,126 3 Grounds of Rejection Claims 1–4, 7, 8, and 11–14 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Noda in view Leiboff, and “The Caron Collection Needlework Tips”, and as evidenced by Smith. (Ans. 5). Claims 5 and 6 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Noda in view of Leiboff and the non-patent literature “The Caron Collection Needlework Tips”, and Kelleher. (Ans. 9). FINDINGS OF FACT The Examiner’s findings of fact are set forth in the Answer at pages 5–13. Discussion ISSUE According to the Examiner, “Noda discloses a device and method for applying a suture, wherein a needle holder 70 is used to apply a suture 18 with a needle 22, wherein the needle is inserted into the patient, and wherein the needle is used to form a continuous or running stitch.” Ans. 5. The Examiner admits that Noda is silent as to the specific steps of (c) throwing a single stitch through a first tissue member in a proximal to distal direction, throwing a single stitch through an opposed and spaced apart second tissue member in a proximal to distal direction; -repeating step (c) at least once; -after steps (c) and (d), throwing a final suture throw in either the first tissue member or the second tissue member and reversing the direction of the final suture throw, the step of Appeal 2012-005921 Application 11/394,126 4 reversing includes positioning a reversing pin between the suture and either the first tissue member or the second tissue member; -bringing the first and second tissue members in contact by tensioning the suture, whereby suture drag is minimized during the tensioning and even tissue compression substantially achieved; and securing the suture. (Ans. 6.) The Examiner, however, finds that these steps are well known in the art as evidenced by Leiboff and Caron. (Ans. 6–7.) Appellants contend, among other things, that the cited art fails to disclose “positioning a reversing pin between the suture and either the first tissue member or the second tissue member. Noda simply does not disclose a pin positioned as required by the pending claims.” (Reply Br. 6.) The issue is: Does the cited prior art support the Examiner’s finding that the claimed subject matter is obvious? PRINCIPLES OF LAW In making our determination, we apply the preponderance of the evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office). The Board “determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Appeal 2012-005921 Application 11/394,126 5 “In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of presenting a prima facie case of obviousness. Only if that burden is met, does the burden of coming forward with evidence or argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993) (citations omitted). In order to determine whether a prima facie case of obviousness has been established, we consider the factors set forth in Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; (3) the level of ordinary skill in the relevant art; and (4) objective evidence of nonobviousness, if present. “[O]bviousness requires a suggestion of all limitations in a claim.” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)). ANALYSIS We do not find that the Examiner has provided evidence to support a prima facie case of obviousness. Appellants contend, among other things, that the cited art fails to disclose “positioning a reversing pin between the suture and either the first tissue member or the second tissue member. Noda simply does not disclose a pin positioned as required by the pending claims.” (Reply Br. 6.) We agree with Appellants and find that the Examiner has failed to provide evidence in the prior art of positioning a reversing pin between the suture and either the first tissue member or the second tissue member, as claimed. Specifically, the Examiner identifies the jaws of needle holder 70 as the “reversing pin” recited in claim 1 (Ans. 8) but the jaws simply grasp suture Appeal 2012-005921 Application 11/394,126 6 18; they are not “position[ed] . . . between” suture 18 and tissue member W, as required by claim 1. The obviousness rejection of claims 5 and 6 is also reversed for the same reason as claim 1. The obviousness rejections are reversed. CONCLUSION OF LAW The cited references do not support the Examiner’s obviousness rejections, which are reversed. REVERSED cdc