13763035 (P.T.A.B. Aug. 21, 2018)

Ex Parte Aronhalt et al

Patent Trial and Appeal BoardAug 21, 2018

13763035 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/763,035 02/08/2013 92223 7590 08/23/2018 K&L Gates LLP-Pittsburgh 210 SIXTH AVENUE PITTSBURGH, PA 15222-2613 FIRST NAMED INVENTOR Taylor W. Aronhalt 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 ATTORNEY DOCKET NO. CONFIRMATION NO. END6848USCIP2/l 00533CIP2 1683 EXAMINER LONG, ROBERT FRANKLIN ART UNIT PAPER NUMBER 3721 NOTIFICATION DATE DELIVERY MODE 08/23/2018 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 Exparte TAYLOR W. ARONHALT, MICHAEL J. VENDEL Y, LAUREN S. WEANER, BRANDON J. LLOYD, and FREDERICK E. SHEL TON IV Appeal 2017-011131 Application 13/763,035 Technology Center 3700 Before CHARLES N. GREENHUT, BRETT C. MARTIN, and JILL D. HILL, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134 from a rejection of claims 1- 4, 11-14, 16-25, and 27-29. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. Appeal 2017-011131 Application 13/763,035 CLAIMED SUBJECT MATTER The claims are directed to a fastener cartridge assembly for releasing a tissue thickness compensator from a fastener cartridge. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A fastener cartridge assembly, comprising: a cartridge body comprising a plurality of fastener cavities; a plurality of fasteners, wherein each said fastener is removably positioned in a said fastener cavity; a tissue thickness compensator releasably secured relative to said cartridge body; a connector, wherein said connector secures said tissue thickness compensator to said cartridge body at a location, and wherein the location is distal to at least one said fastener cavity; an actuator configured to overcome said connector when actuated, wherein said actuator overcomes said connector prior to the removal of said fasteners from said fastener cavities; and a firing element configured to remove said fasteners from said fastener cavities during a firing stroke, wherein said firing element is configured to actuate said actuator during the firing stroke. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Shelton, IV ("Shelton") Olson Bear Shah US 7,147,138 B2 US 2010/0249805 Al US 2013/0037596 Al WO 2009/143331 Al 2 Dec. 12, 2006 Sept. 30, 2010 Feb. 14,2013 Nov. 26, 2009 Appeal 2017-011131 Application 13/763,035 REJECTIONS Claims 1-14, 16-25, and 27-29 are rejected under 35 U.S.C. Â§ 112, second paragraph, as being indefinite. Claims 1, 12, 17, 24, and 27 1 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Shelton, Bear, and Olson. Claims 2--4, 11, 13, 14, 16, 18-23, 25, 28, and 29 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Shelton, Bear, Olson, and Shah. OPINION Indefiniteness [T]he PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant's specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). "'[T]he PTO must apply the broadest reasonable meaning to the claim language, taking into account any definitions presented in the specification."' In re Am. A cad. Of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bass, 314 F.3d 575, 577 (Fed. Cir. 2002). The Examiner rejected claims 14, 17, and 24 based on Appellants' recitation of the term "'proximal"' to define a position with respect to the fastener cavities. Final Act. 3. Appellants correctly point out that, in making this rejection, the Examiner's disregard for the express definition of "'proximal"' in the Specification is clearly inconsistent with the standards of 1 The Examiner withdrew the rejection of claim 30. Ans. 2. 3 Appeal 2017-011131 Application 13/763,035 claim construction set forth above. App. Br. 25-26. It is not clear why the Examiner discusses the positional relationship between the compensator and the cavities in addressing this argument. The limitations in claims 14, 17, and 24, which are the claims rejected for using the term "proximal," do not involve the compensator. Claim 27 was not rejected on this basis but includes an attachment means for attaching the compensation means to the proximal portion. In all cases, we think the skilled artisan would have no difficulty understanding, particularly in light of the Specification's express definition of the term, the claim elements described as "proximal" to the cavities must be located nearer the user. Accordingly, we do not sustain the indefiniteness rejection on this basis. The Examiner also rejected claims 1, 2, 8, 12-14, 19, 25, 27, and 28 as indefinite for using the term "'overcome"' or variations thereof. Final Act. 3. Although the Specification does not provide an express definition of this term, the Specification provides sufficient examples to understand what this term encompasses. App. Br. 26-28 (quoting Spec., para. 379 ("broken, cut, dislodged or otherwise overcome")). These examples are consistent with the dictionary definition provided by Appellants. App. Br. 27 ("'to get the better of' or 'overwhelm"'). Claim terms must be given a meaning consistent with that those of skill in the art would reach. In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999). Especially where a term is not a term of art, or otherwise expressly defined, general dictionary definitions can often help determine the ordinary meaning a term would have to those skilled in the art. In re Trans Texas Holdings Corp., 498 F.3d 1290, 1299 (Fed. Cir. 2007). The Examiner 4 Appeal 2017-011131 Application 13/763,035 contends that Appellants are proposing to read limitations from the Specification into the claims. Ans. 3--4. "[R]eading a claim in the light of the specification," to thereby interpret limitations explicitly recited in the claim, is a quite different thing from "reading limitations of the specification into a claim," to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim. In re Prater, 415 F.2d 1393, 1404---05 (CCPA 1969). Appellants' analysis (App. Br. 26-28) involves the former, reading the term "'overcome[]"' in light of the Specification, in order to understand the meaning and scope of the term, and not to limit it to any specific embodiment. Accordingly, the Examiner reliance on In re Van Geuns, 988 F.2d 1181 (Fed. Cir. 1993) is misplaced. See Ans. 3--4. Thus, we do not sustain the indefiniteness rejection on this basis either. Prior-Art Rejections A critical distinction over the prior art, according to Appellants, and present in one form or another in all the independent claims before us for review, is that the claimed subject matter calls for a device "that automatically releases a layer in response to and/or before the fastener firing system of the surgical stapler being actuated." App. Br. 29, 35-38, 40. The Examiner initially appears to consider Shelton as disclosing the subject matter defined by this limitation. Final Act. 5, 7, 14. However, the Examiner provides only a blanket citation to columns 5-8 and Figures 1-20 without specifically explaining how Shelton satisfies this limitation. The Final Rejection also appears to indicate that the Examiner may not regard Shelton as disclosing the subject matter argued by Appellants. See, e.g., 5 Appeal 2017-011131 Application 13/763,035 Final Act. 5 ("Shelton, IV fails to explicitly disclose or teach, the actuator overcomes said connector prior to the removal of said fasteners from said fastener cavities and the firing element is configured to actuate said actuator during the firing stroke"), 8, 10, 12, 14. The Examiner appears to also rely on Olson regarding this subject matter as recited in claim 1. Final Act. 6 ("[Olson teaches] said actuator overcomes said connector prior to the removal of said fasteners from said fastener cavities"). However, the Examiner again provides only a blanket citation to paragraphs 38-53 and Figures 1-9 of Olson without explaining specifically how the limitation in question is met by Olson. See Final Act. 6. Despite distinct language being recited in the other independent claims, the Examiner does not draw any distinctions and repeatedly quotes the same discussion of Olson with regard to the other independent claims 12, 17,2 24, 3 and 27. Final Act. 8, 10, 12, 14--15. Despite Appellants contesting the Examiner's determination with regard to limitations pertaining to elements configured for a specific compensator timing, the Examiner's Answer does not elaborate any further on this issue. Like Appellants, we are unable to identify any structure in Shelton or Olson that the Examiner might be relying on for satisfying the 2 It is noted that claim 1 7 does not define the relationship between the compensator and actuator. The Examiner does draw any distinction in this regard in rejecting claim 17 or raise any issues of claim completeness under MPEP Â§Â§ 706.03(d), 2172.01. Although the Board is authorized to reject claims under 37 C.F.R. Â§ 4I.50(b), no inference should be drawn when the Board elects not to do so. See MPEP Â§ 1213.02. 3 It is noted that claim 24 lacks antecedent basis for "said actuator." Although the Board is authorized to reject claims under 37 C.F.R. Â§ 4I.50(b), no inference should be drawn when the Board elects not to do so. See MPEP Â§ 1213.02. 6 Appeal 2017-011131 Application 13/763,035 various forms of the limitation pertaining to the components configured to perform the temporal aspects of the compensators' release with respect to the fasteners. [T]he precise language of 35 U.S.C. Â§ 102 that "(a) person shall be entitled to a patent unless,' concerning novelty and unobviousness," clearly places a burden of proof on the Patent Office which requires it to produce the factual basis for its rejection of an application under sections 102 and 103. In re Warner, 379 F.2d 1011, 1016 (CCPA 1967). The Patent Trial and Appeal Board is primarily a tribunal of review. See Ex Parte Frye, 94 USPQ2d 1072, 1075-77 (BPAI 2010) (precedential). For that review to be meaningful it must be based on some concrete evidence in the record to support the Examiner's factual findings and legal conclusions. In re Zurko, 258 F.3d 1379, 1386 (Fed. Cir. 2001). A rejection must be set forth in sufficiently articulate and informative manner as to meet the notice requirement ofÂ§ 132, such as by identifying where or how each limitation of the rejected claims is met by the prior art references. In re Jung, 637 F. 3d 1356, 1363 (Fed. Cir. 2011); see also 37 C.F.R. Â§ 1.104(c)(2) ("When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified."); Gechter v. Davidson, 116 F.3d 1454, 1460 (Fed. Cir. 1997) (PTO must create a record that includes "specific fact findings for each contested limitation and satisfactory explanations for such findings."). It is neither our place, nor Appellants' burden, to speculate as to the basis for rejecting claims. In re Stepan Co., 660 F.3d 1341, 1345 (Fed. Cir. 2011) (It is the PTO's obligation 7 Appeal 2017-011131 Application 13/763,035 to provide timely notice to the Applicants of all matters of fact and law asserted.) As the Examiner has failed to establish unpatentability of the precise subject matter claimed, the Examiner's rejections cannot be sustained on the basis set forth by the Examiner. DECISION The Examiner's rejections are reversed. REVERSED 8