Ethicon Endo-Surgery, Inc.

Patent Trials and Appeals Board

Oct 18, 2021

2021001250 (P.T.A.B. Oct. 18, 2021)

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.
14/669,759 03/26/2015 Jeffrey S. Swayze END6232USCNT3/070348CON3 1057
92223 7590 10/18/2021
K&L GATES LLP - ETHICON
K&L GATES CENTER
210 SIXTH AVENUE
PITTSBURGH, PA 15222-2613
EXAMINER
TECCO, ANDREW M
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
10/18/2021 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):
uspatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JEFFREY S. SWAYZE, JEROME R. MORGAN,
FREDERICK E. SHELTON IV, and THOMAS W. HUITEMA
____________

Appeal 2021-001250
Application 14/669,759
Technology Center 3700
____________

Before DANIEL S. SONG, STEFAN STAICOVICI, and
WILLIAM A. CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 17, 19, 21, 22, 24, 26, 28, 29, 31, 33, 35, and 36 as
unpatentable under 35 U.S.C. § 103 over Carroll (US 5,397,324, iss.
Mar. 14, 1995) and McKean (US 5,542,594, iss. Aug. 6, 1996), as well as
claims 18, 25, and 32 over Carroll, McKean, and Hamilton (US 6,325,810
B1, iss. Dec. 4, 2001). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Ethicon LLC, a wholly–owned
subsidiary of Johnson & Johnson, as the applicant and real party in interest.
Appeal Br. 3.
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Application 14/669,759
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THE INVENTION
Appellant’s invention is buttress material for a surgical stapler. Spec.
¶ 2. Claim 17, reproduced below, is illustrative of the subject matter on
appeal.
17. A staple cartridge assembly for stapling the tissue of a
patient, comprising:
a cartridge body;
a proximal end;
a distal end;
a deck configured to support the tissue;
staple cavities defined in said deck;
staples removably stored in said staple cavities; and
buttress material positioned on said deck, wherein said
buttress material comprises:
a resiliently deformable interior polymeric lattice including
pockets defined therein, wherein said pockets are defined by a
post-molten folded structure;
a first outer surface;
a second outer surface, wherein said second outer surface is
spaced apart from said first outer surface by a cavity;
a third outer surface, wherein said third outer surface is
positioned below said first outer surface and said second outer
surface;
a first wall connecting said first outer surface and said third
outer surface;
and
a second wall connecting said second outer surface and said
third outer surface, wherein the cavity is defined by said third
outer surface, said first wall, and said second wall.

Appeal 2021-001250
Application 14/669,759
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RELATED CASE
The instant case involves a continuation application claiming priority
to Application No. 13/763,095. Spec. ¶ 1. We recently issued a decision in
Appeal No. 2020-004527 which involved an appeal in another daughter
application that claims priority to the ’095 Application, namely, Application
No. 14/549,956. Appellant is reminded of its obligations under our Rules to
disclose related appeal cases. 37 C.F.R. § 41.37(c)(1)(ii).
OPINION
Unpatentability of
Claims 17, 19, 21, 22, 24, 26, 28, 29, 31, 33, 35, and 36
over Carroll and McKean
Claim 17
The Examiner finds that Carroll discloses the invention substantially
as claimed except for its alleged pockets being defined by a post-molten
folded structure, for which the Examiner relies on McKean. See Final
Action 3–5. The Examiner concludes that it would have been obvious to a
person of ordinary skill in the art at the time of the invention to make
Carroll’s buttress material with the material of McKean. Id. at 5. According
to the Examiner, a person of ordinary skill in the art would have done this to
better absorb body fluids and better distribute pressure over the treatment
area after stapling. Id.
Appellant argues that Carroll’s buttress material lacks pockets that
conform to the five-sided structure defined by claim 17 with cavities that are
defined by first, second, and third outer surfaces and first and second walls.
Appeal Br. 12–13. In particular, Appellant points out that the structure
identified by the Examiner as corresponding to Appellant’s cavity merely
Appeal 2021-001250
Application 14/669,759
4
has vertical walls, but that such vertical walls are not joined to a third outer
surface that is positioned below the first and second outer surfaces. Id. at 12.
In response, the Examiner provides annotated versions of Figures 5
and 6 of Carroll that purportedly point out the first and second walls and a
third outer surface. Ans. 6. The Examiner relies on a dictionary definition
of “cavity” to support a finding that Carroll exhibits a cavity. Id. at 4.
Appellant’s buttress material resembles an egg crate. Figure 62 of
Appellant’s disclosure is reproduced below. As shown in Figure 62,
Appellant’s buttress material is comprised of alternating five-sided
rectangular pockets.2 Approximately half of the pockets are open at the top
and closed at the bottom. Such pockets alternate with pockets that are
closed at the top and open at the bottom.
Fig. 62 is a perspective view of a piece of buttress material and is
reproduced below:

2 In claim 17, the five sides consist of: (1) a first outer surface; (2) a second
outer surface; (3) a third outer surface; (4) a first wall; and (5) a second wall.
Claims App.
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Application 14/669,759
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Appellant’s Specification further describes the buttress material in the
following terms:
[B]uttress material 1336 can further include a plurality of walls,
such as walls 1305, for example, formed intermediate first and
second surfaces 1302 and 1304 wherein walls 1305 can define
recesses 1306. In at least one embodiment, walls 1305 can be
perpendicular and/or transverse to the first and second surfaces
such that walls 1305 can be structured and arranged to form a
pattern or grid of recesses 1306 within buttress material 1336.
Spec. ¶ 131.
Carroll discloses a surgical stapler. Carroll, Abstract. Carroll’s
device features cutting knife 26 that passes through flexible pad 29, which
corresponds to the recited buttress material. Id. col. 4, ll. 55–67, Fig. 6;
Final Act. 3. Flexible pad 29 features longitudinally spaced serrations 31
disposed axially along the longitudinal axis of pad 29. Id. The serrations
extend vertically through pad 29. Id. The purpose of the serrations is to
promote passage of cutting knife 26 through pad 29 by offering no resistance
to the knife. Id. Unlike Appellant’s buttress material, Carroll’s pad does not
exhibit five-sided pockets that are open at either the top or the bottom.
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under
the broadest reasonable interpretation standard, claim terms are given their
ordinary and customary meaning as would be understood by one of ordinary
skill in the art in the context of the entire disclosure. In re Translogic Tech.,
Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). However, when a patent
applicant has elected to be a lexicographer by providing an explicit
definition in the specification for a claim term, such definition controls.
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Application 14/669,759
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Renishaw PLC v. Marposs Societa’ Per Azioni, 158 F.3d 1243, 1249 (Fed.
Cir. 1998). “Even when guidance is not provided in explicit definitional
format, the specification may define claim terms by implication such that the
meaning may be found in or ascertained by a reading of the patent
documents.” Irdeto Access, Inc. v. Echostar Satellite Corp., 383
F.3d 1295, 1300 (Fed. Cir. 2004). To the extent that Appellant’s disclosure
in paragraph 131 falls short of explicit definitions for claim terms “pocket”
and “cavity,” it is certainly sufficient to define a five-sided structure by
implication. Id.
Contrary to the Examiner’s position, Appellant’s pocket and cavity is
defined by the Specification and the claim language. The Examiner errs in
turning to a common English language dictionary to define a term that
Appellant has so clearly defined in the Specification. See Renishaw, 158
F.3d at 1250 (explaining that indiscriminate reliance on dictionary
definitions can produce absurd results). In view of the Examiner’s reliance
on an erroneous and overly broad claim construction, the Examiner’s
findings of fact are not supported by a preponderance of the evidence and
the Examiner’s legal conclusion of unpatentability is, therefore, not well-
founded. We do not sustain the Examiner’s unpatentability rejection of
claim 17.
Claims 19, 21, 22, 24, 26, 28, 29, 31, 33, 35, and 36
Claims 24 and 31 are independent claims that, like claim 17, claim
pockets with first, second, and third exterior surfaces as well as first and
second interior walls. Claims App. Claims 19, 21, 22, 26, 28, 29, 33, 35,
and 36 depend from one of independent claims 17, 24, and 31. Id. The
Examiner’s rejection of these claims suffers from the same infirmity that
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Application 14/669,759
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was identified above with respect to claim 17. Thus, for essentially the same
reason expressed above in connection with claim 17, we do not sustain the
rejection of claims 19, 21, 22, 24, 26, 28, 29, 31, 33, 35, and 36.
Unpatentability of Claims 18, 25, and 32
over Carroll, McKean, and Hamilton
These claims depend from independent claims 17, 24, and 31
respectively. Claims App. The Examiner’s rejection of these claims suffers
from the same infirmity that was identified above with respect to claim 17,
which is infirmity is not cured by any findings of fact by the Examiner with
respect to the Hamilton reference. Thus, for essentially the same reason
expressed above in connection with claim 17, we do not sustain the rejection
of claims 18, 25, and 32.
CONCLUSION
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
17, 19, 21, 22,
24, 26, 28, 29,
31, 33, 35, 36
103 Carroll, McKean
17, 19, 21, 22,
24, 26, 28, 29,
31, 33, 35, 36
18, 25, 32 103 Carroll, McKean,
Hamilton
18, 25, 32
Overall
Outcome
17-19, 21-22,
24-26, 28-29,
31-33, 35-36
REVERSED