Ex Parte Stopek

Patent Trial and Appeal Board

Apr 28, 2017

12251909 (P.T.A.B. Apr. 28, 2017)

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.
12/251,909 10/15/2008 Joshua Stopek H-US-00792(203-5481) 6430
50855 7590
Covidien LP
60 Middletown Avenue
c/o Legal - Mailstop MS 54
North Haven, CT 06473
05/02/2017 EXAMINER
BUI, VY Q
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
05/02/2017 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):
SurgicalUS@covidien.com
medtronic_mitg-si_docketing@cardinal-ip.com
mail @ cdfslaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSHUA STOPEK
Appeal 2015-006720
Application 12/251,909
Technology Center 3700
Before JAMES P. CALVE, WILLIAM A. CAPP, and
ARTHUR M. PESLAK, Administrative Patent Judges.
CALVE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35U.S.C. § 134 from the final rejection of
claims 1—7, 10-14, 16—23, 29, and 30. See Appeal Br. 3—13; Final Act. 1.
Claims 8, 9, 15, and 26—28 are cancelled. Id. at 15—16, 18 (Claims App.).
Claims 24 and 25 are withdrawn. Id. at 18 (Claims App.). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2015-006720
Application 12/251,909
CLAIMED SUBJECT MATTER
Claims 1,16, and 18 are independent. Claim 1 is reproduced below.
1. A filament-reinforced composite fiber, comprising:
a plurality of filaments embedded within an adhesive matrix
material selected from the group consisting of cyanoacrylates,
isocyanates, polyurethanes, polyamines, polyamides, polyacrylates,
polymethacrylates, and silicones, wherein the filament-reinforced
composite fiber includes at least one integral barb formed on a surface
thereon and the adhesive matrix penetrates interstices between the
plurality of filaments to create a coherent composite fiber.
REJECTIONS
Claims 1—7, 11—14, and 16—22 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Fischer (US 6,183,499 Bl, iss. Feb. 6, 2001) and
Alcamo (US 3,123,077, iss. Mar. 3, 1964).
Claims 1—7, 11—14, and 16—22 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Alcamo and Fischer.
Claims 10, 29, and 30 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Alcamo, Fischer, and Badejo (US 6,607,631 Al, iss. Aug.
19, 2003).
Claim 23 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Alcamo and Fischer.
ANALYSIS
Claims 1—7, 11—14, and 16—22
as unpatentable over Fischer and Alcamo
Appellant argues claims 1—7, 10-14, 16—23, 29, and 30 as a group.
Appeal Br. 4—10. We select claim 1 as representative with claims 2—7, 10-
14, 16—23, 29, and 30 standing or falling with claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv).
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Appeal 2015-006720
Application 12/251,909
The Examiner relies on Fischer to disclose a filament-reinforced
composite fiber, substantially as claimed, and Alcamo to disclose fibers with
barbs. Final Act. 2—3. The Examiner determines that it would have been
obvious to provide barbs to the fiber of Fischer to better secure the fiber
against the tissue. Id. at 3.
The Examiner’s finding that Fischer teaches an adhesive matrix that
fills the interstices between the filaments that are located along the external
surface of the multifilament core so that the filaments are embedded in the
adhesive coating is supported by a preponderance of evidence. Final Act. 2;
Ans. 6—9. In this regard, Fischer teaches that the coating layer thickness is
chosen “[t]o fill in the space between the filaments in the core.” Fischer,
4:40-41, Fig. 2B. Our review of Figure 2B of Fischer, which shows a suture
with a coating, indicates that individual filaments on the outer surface of the
suture are embedded in the coating such that a portion of the coating fills the
space (interstices) between some of these individual filaments, as claimed.
Figure 2B is consistent with the description quoted above from Fischer.
We agree with the Examiner’s interpretation of this limitation of claim
1 as not requiring the adhesive matrix to penetrate all of the interstices of all
of the filaments in the composite fiber such that the adhesive matrix has all
of the filaments embedded completely in the adhesive. As a result, Fischer’s
disclosure of an adhesive that penetrates the interstices of filaments on the
outer surface of a multifilament core satisfies this claim limitation. Final
Act. 6; Ans. 8. Appeal Br. 9. In response, Appellant argues that Fischer’s
coating adheres to the external surface of the multifilament core without also
penetrating the interstices of filaments along the external surface of the core.
Appeal Br. 9; Reply Br. 3.
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Appeal 2015-006720
Application 12/251,909
Appellant is correct that Fischer also teaches that the coating layer is
coated onto the external surface of the core filaments (i.e., individual strands
of the fiber). Appeal Br. 9; Reply Br. 3^4. However, we do not view this
teaching as contradictory or incompatible with Fischer’s teaching that the
coating also fills the space between filaments on the outer surface in addition
to coating the outer surfaces of those filaments. The coating covers the outer
surface of the filaments and also fills interstices between these filaments.
Appellant is correct that Fischer does not use adhesive matrix to fill
the interstices between the inner filaments within composite fiber. Fischer
teaches that the internal interstices between the inner filaments are not filled
with the adhesive so these filaments are free to move and provide flexibility
to the suture or ligature. Fischer, 4:30-33, 2:44-49, Fig. 2B. Fischer
teaches that this configuration reduces stiffness compared to the prior art
sutures of Kurtz that use enough coating to fill all of the interstices of the
multifilament core and also coat the surface of the yam. Id. at 2:5—16. We
do not interpret claim 1 to require a complete filling of all interstices of all
filaments in view of the plain language of claim 1 and Appellant’s
disclosures that the filament reinforced composite fiber includes plural
filaments and an adhesive matrix that is present on at least 5% of the total
length of the filament-reinforced composite fiber.” Spec. | 6. Appellant
also discloses that matrix material can be applied at regular or irregular
intervals or along the length of the entire fiber “on about 5% to about 95 %”
or “about 20% to about 70% of the total length of the plurality of filaments.”
Id. 128. Matrix material can be applied by dipping, spraying, bmshing,
vapor deposition, co-extmsion, capillary wicking, film casting, molding, or
other techniques. Id. |28.
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Appeal 2015-006720
Application 12/251,909
Appellant’s attorney argument that Fischer teaches away from filling
the interstices of the outer filaments of Fischer’s fiber or such filling would
render Fischer inoperable is not persuasive evidence or argument in view of
Fischer’s express teaching that the coating fills gaps between filaments on
the outer surface of the fiber. See Fischer, 4:40-41, Fig. 2B. Appellant’s
argument that Fischer teaches that the coating does not penetrate interstices
of the core (Appeal Br. 9 (quoting Fischer, 2:56—57); Reply Br. 4) is not
persuasive because this teaching pertains only to the internal interstices of
the inner filaments (Fischer 2:47 49) rather than interstices of filaments on
the outer surface. Fischer thus distinguishes between coating filaments on
the outer surface of the fiber and filling gaps between these filaments versus
not coating internal filaments so that they may move freely.
Appellant’s argument that Fischer’s smooth outer coating teaches
away from Alcamo’s use of barbs (Reply Br. 4—7) is untimely because it is
presented for the first time in the Reply Brief and not in response to an
argument raised in the Answer. 37 C.F.R. § 41.41. Moreover, claim 1 only
requires “at least one integral barb formed on a surface” of the fiber and also
does not require the barb to extend beyond the adhesive matrix.
We sustain the rejection of claims 1—7, 10-14, 16—23, 29, and 30.
Claims 1—7, 11—14, and 16—23
as unpatentable over Alcamo and Fischer
The Examiner relies on Alcamo and Fischer for the same features as
in the first rejection. Final Act. 3—4. Appellant presents similar arguments,
which are not persuasive for the reasons discussed above. Appeal Br. 10—
11. Thus, we sustain the rejection of claims 1—7, 11—14, and 16—22.
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Appeal 2015-006720
Application 12/251,909
Claims 10, 29, and 30
as unpatentable over Alcamo, Fischer, andBadejo
Appellant argues that Badejo, which is relied on for disclosing a
cyanoacrylate biocompatible adhesive, does not cure the deficiencies of
Fischer and Alcamo as to claims 1,16, and 18 from which claims 10, 29,
and 30 depend, respectively. Appeal Br. 12. Because we sustain the
rejection of claims 1,16, and 18, this argument is not persuasive and we
sustain the rejection of claims 10, 29, and 30.
Claim 23
as unpatentable over Alcamo and Fischer
The Examiner found that Fischer discloses a shape-memory polymer
as polyethylene. Final Act. 5. Appellant does not present arguments for this
rejection. See Appeal Br. 3—13. Thus, we summarily sustain this rejection.
DECISION
We affirm the rejections of claims 1—7, 10-14, 16—23, 29, and 30.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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