Ethicon Endo-Surgery, Inc.

Patent Trials and Appeals Board

Apr 1, 2022

2022000083 (P.T.A.B. Apr. 1, 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. 14/318,996 06/30/2014 Thomas W. Huitema END7460USNP/140136 3800 92223 7590 04/01/2022 K&L GATES LLP - ETHICON K&L GATES CENTER 210 SIXTH AVENUE PITTSBURGH, PA 15222-2613 EXAMINER HIBBERT-COPELAND, MARY CATHERINE ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 04/01/2022 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): uspatentmail@klgates.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS W. HUITEMA, FREDERICK E. SHELTON, GEOFFREY C. HUEIL, and JASON L. HARRIS Appeal 2022-000083 Application 14/318,996 Technology Center 3700 Before JOHN C. KERINS, DANIEL S. SONG, and BRETT C. MARTIN, Administrative Patent Judges. MARTIN, 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, 14, and 19-21, which are the only claims currently pending in the application. 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) (2022). Appellant identifies the real party in interest as Ethicon Endo-Surgery, LLC Appeal Br. 3. Appeal 2022-000083 Application 14/318,996 2 CLAIMED SUBJECT MATTER The claims are directed “to a surgical stapling instrument for producing one or more rows of staples.” Spec. ¶ 2. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A fastener cartridge for use with a surgical instrument, wherein said fastener cartridge comprises: a cartridge body, wherein a plurality of fastener cavities are defined into said cartridge body, and wherein said cartridge body comprises: a deck, wherein each said fastener cavity comprises an opening in said deck, wherein each said opening comprises a proximal end and a distal end; a longitudinal slot defined in said deck, wherein said longitudinal slot is configured to receive a tissue cutting member of the surgical instrument; a longitudinal row of first fastener cavity extensions extending from said deck adjacent said longitudinal slot, wherein each said first fastener cavity extension is positioned partially around a said opening in said deck at said proximal end and said distal end of said opening, and wherein each said first fastener cavity extension extends a first overall height above said deck; and a longitudinal row of second fastener cavity extensions extending from said deck adjacent said longitudinal row of first fastener cavity extensions, wherein said longitudinal row of first fastener cavity extensions are positioned intermediate said longitudinal slot and said longitudinal row of second fastener cavity extensions, wherein each said second fastener cavity extension is positioned partially around another said opening in said deck at said proximal end and said distal end of said another opening, wherein each said second fastener cavity extension extends a second overall height above said deck, wherein said second overall height is shorter than said first overall height, and wherein said first fastener cavity extensions and said second fastener cavity Appeal 2022-000083 Application 14/318,996 3 extensions are not connected to one another other than through said deck; and a plurality of fasteners removably positioned in said fastener cavities. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Holsten US 2007/0034667 A1 Feb. 15, 2007 Huitema US 2012/0074198 A1 Mar. 29, 2012 REJECTION Claims 1, 10, 14, and 19-21 stand rejected under 35 U.S.C. § 103 as being unpatentable over Holsten and Huitema. Non-Final Act. 2. OPINION Obviousness Appellant argues that the Examiner erred in combining Huitema with Holsten because neither reference, either alone or in combination, teaches the claimed cavity extension positioned “partially around” an opening as claimed. Appeal Br. 27. As Appellant correctly points out, “the ridges 515 depicted in FIG. 16A of Huitema ’198 completely surround the staple cavity openings 510.” Id. The Examiner responds that “the term partially [is] encompassed by completely when being consistent with the specification of the instant application, that only refers to the term ‘partially’ defined by ‘at least partially’ with no reason or criticality that the term partially could not be encompassed by an extension that completely surrounds an opening.” Ans. 12. The Examiner does not assert that partial extension would be obvious in view of Huitema’s complete extensions/ridges, but rather asserts Appeal 2022-000083 Application 14/318,996 4 that the Specification’s description of “at least partially” allows for Huitema’s completely surrounding ridges. Although the Examiner is generally correct regarding the Specification, which may cover both claimed and unclaimed embodiments, the claims specifically require only a partial surrounding of the opening. The mere fact that the Specification allows for both at least partial surrounding as well as only partial surrounding does not mean the Examiner can simply ignore the claim as written. Here the claim requires partial surrounding and the Examiner essentially admits that neither Huitema nor Holsten teaches such a partial surrounding. The Examiner’s rejection, thus, reads out the term “partially” from claim 1. As to the varied height of the extensions, the Examiner admits that “Holsten fails to teach separate extensions above tissue contacting surfaces.” Ans. 12. The Examiner’s combination adds Huitema’s extensions, which are uniform in height, but asserts that because Holsten utilizes a stepped deck configuration that the extensions have different heights. Id. Although we do not disagree that the extensions on the different decks are at different heights, we disagree with the Examiner’s interpretation of the claim. The claim requires the height of the extensions themselves be different, i.e. from the deck from which an extension protrudes to the upper limit of the extension. See e.g., Spec. Fig. 81. In the Examiner’s combination, the extensions themselves are of uniform height, as is taught in Huitema. The mere fact that extensions are located on decks having differing elevations does not transform the extensions themselves into having differing heights as claimed. For at least the reasons stated above we do not sustain the Examiner’s rejections. Appeal 2022-000083 Application 14/318,996 5 CONCLUSION The Examiner’s rejection is reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 10, 14, 19-21 103 Holsten, Huitema 1, 10, 14, 19-21 REVERSED