Covidien LP

Patent Trials and Appeals Board

Mar 2, 2022

2021003048 (P.T.A.B. Mar. 2, 2022)

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. 15/182,760 06/15/2016 Anthony Sgroi 356479US01 (203-10989) 4515 50855 7590 03/02/2022 Covidien LP 60 Middletown Avenue Mailstop 54, Legal Dept. North Haven, CT 06473 EXAMINER MARTIN, VERONICA ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 03/02/2022 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): docket@carterdeluca.com rs.patents.two@medtronic.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ANTHONY SGROI ____________ Appeal 2021-003048 Application 15/182,760 Technology Center 3700 ____________ Before BRETT C. MARTIN, ANNETTE R. REIMERS, and BRANDON J. WARNER, Administrative Patent Judges. WARNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-10, 12-22, and 24, which are all the pending claims. See Appeal Br. 1, 6. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to the “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Covidien LP. Appeal Br. 1. Appeal 2021-003048 Application 15/182,760 2 CLAIMED SUBJECT MATTER Appellant’s disclosed invention “is directed to linear surgical stapling devices, and more particularly, to linear surgical stapling devices that include a tool assembly having a longitudinal proximal portion and a curved and/or angled distal portion to facilitate leak resistant dissection of body tissue.” Spec. ¶ 1. Claims 1 and 13 are independent. Claim 1, reproduced below with emphasis added, is illustrative of the subject matter on appeal. 1. A tool assembly for leak resistant dissection of tissue comprising: a cartridge assembly including a cartridge body defining a first longitudinal axis and having a linear longitudinal portion and transverse portion, the transverse portion being contiguous with and positioned distally of the longitudinal portion, the cartridge body defining a central knife slot and at least one row of staple receiving pockets positioned on each side of the central knife slot; and an anvil positioned along the first longitudinal axis having a linear longitudinal portion and a transverse portion, the transverse portion of the anvil being contiguous with and positioned distally of the linear longitudinal portion of the anvil, the anvil being supported adjacent to the cartridge assembly and defining an anvil knife slot that is aligned with the central knife slot of the cartridge body and at least one row of staple deforming depressions positioned on each side of the anvil knife slot; wherein a length of the linear longitudinal portions of the cartridge body and the anvil is at least 80 percent of an overall length of the tool assembly. Appeal 2021-003048 Application 15/182,760 3 EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Ortiz US 2007/0114261 A1 May 24, 2007 REJECTION The following rejection is before us for review: Claims 1-10, 12-22, and 24 stand rejected under 35 U.S.C. § 103 as being unpatentable over Ortiz. Final Act. 2-8. ANALYSIS Appellant argues that the rejection is in error because Ortiz does not expressly disclose the feature recited in the independent claims of a length of the linear longitudinal portions of the cartridge body and the anvil being “at least 80 percent of an overall length of the tool assembly,” as claimed. See Appeal Br. 7-11; see also Reply Br. 2-3. After careful consideration of the record before us, Appellant’s arguments do not apprise us of error in the Examiner’s factual findings from Ortiz, which are supported by a preponderance of the evidence, or the Examiner’s reasonable conclusion of obviousness, which is rationally articulated based on those findings. In short, we sustain the Examiner’s rejection based on the reasoned positions set forth therein, and in light of the Examiner’s thorough responses to Appellant’s arguments. See Final Act. 2-8; Ans. 3-4. We address Appellant’s principal assertion below simply as a matter of emphasis. Specifically, Appellant’s arguments are premised on an assertion that Ortiz does not specifically disclose the disputed length percentages of the Appeal 2021-003048 Application 15/182,760 4 linear longitudinal portions of the cartridge body and the anvil. See Appeal Br. 9-11. However, this assertion is unpersuasive of error because it does not address the rejection presented, which is based on obviousness-not anticipation-and, thus, already presumes the presence of some distinction.2 Importantly, the Examiner has addressed the alleged shortcoming of Ortiz’s express disclosures alone by rationally explaining how, despite this asserted distinction, the claims as a whole would have been obvious to one of ordinary skill in the art in view of the teachings of Ortiz and the adjustability taught with respect to the length of the longitudinal portions of the device in Ortiz. See Ans. 3-4. The Examiner’s conclusion that the claimed subject matter would have been obvious in view of the art is reasonable, and Appellant does not explain how the proposed modification to Ortiz’s disclosure would have been unpredictable or somehow beyond the level of ordinary skill in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Accordingly, Appellant’s arguments do not identify error in the Examiner’s ultimate conclusion that the claimed subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. See 35 U.S.C. § 103. We discern no shortcoming in the Examiner’s reasoning, as discussed above, that it would have been obvious to a person having 2 The relevant inquiry here is not whether some distinction exists between the claimed subject matter and the disclosures of Ortiz; rather, it is whether that distinction is such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. See 35 U.S.C. § 103. Appeal 2021-003048 Application 15/182,760 5 ordinary skill in the art to adjust the length of the longitudinal portions to be 80% of the overall length as a matter of ordinary design in the absence of any criticality tied to this threshold. Further, Appellant does not explain how such a design choice in the length threshold would have yielded unpredictable results or somehow been beyond the level of ordinary skill in the art. See KSR, 550 U.S. at 417; Ans. 3-4. In this regard, Appellant’s repeated assertion against the acknowledged shortcoming of Ortiz individually neglects to adequately consider that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. The obviousness analysis under 35 U.S.C. § 103 presumes not only common sense, but also skill in the art. See In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985). We note that any other arguments not specifically addressed in detail herein have been thoroughly considered by the panel but are not persuasive for the reasons discussed supra and those well expressed in the Examiner’s Answer. After careful consideration of the record before us, Appellant’s arguments do not apprise us of error in the Examiner’s findings or reasoning in support of the conclusion of obviousness. Accordingly, we sustain the rejection. DECISION We AFFIRM the Examiner’s decision rejecting claims 1-10, 12-22, and 24 under 35 U.S.C. § 103 as being unpatentable over Ortiz. Appeal 2021-003048 Application 15/182,760 6 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)(1)(iv). CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-10, 12-22, 24 103 Ortiz 1-10, 12-22, 24 AFFIRMED