Ex Parte Beck

Board of Patent Appeals and Interferences

Aug 15, 2011

10858737 (B.P.A.I. Aug. 15, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte JOACHIM BECK 8
___________ 9
10
Appeal 2010-002723 11
Application 10/858,737 12
Technology Center 3700 13
___________ 14
15
16
Before KEN B. BARRETT, ROBERT A. CLARKE, and PHILLIP J. 17
KAUFFMAN, Administrative Patent Judges. 18
CLARKE, Administrative Patent Judge. 19
DECISION ON APPEAL 20
21
Appeal 2010-002723
Application 10/858,737
2

STATEMENT OF THE CASE 1
Joachim Beck (Appellant) appeals under 35 U.S.C. § 134 from the 2
rejection of claims 1-13, 20-34 and 46-54. Claims 14-19, 35-45, 55 and 56 3
have been cancelled. App. Br. 2. We have jurisdiction over the appeal 4
pursuant to 35 U.S.C. § 6(b) (2002). 5
We REVERSE, and ENTER A NEW GROUND OF REJECTION 6
PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b). 7
8
THE INVENTION 9
The Appellant’s claimed invention is “directed to an apparatus for 10
performing surgical procedures including rectal mucosectomies or rectal 11
anopexies to treat for example, hemorrhoids and/or rectal mucosal prolapse.” 12
Spec. 5, ll. 25-27. Claim 1, reproduced below, is representative of the 13
subject matter on appeal (emphasis added). 14
1. A surgical instrument for performing a rectal mucosectomy 15
comprising: 16
a shaft having a proximal end and a distal end; 17
a cartridge assembly including a plurality of fasteners and 18
operatively coupled to the distal end of the shaft, the cartridge 19
assembly having a housing and a distal end, and defining an inner 20
chamber; 21
at least one opening formed in the surgical instrument, the 22
opening extending through the exterior of the instrument and being in 23
communication with the inner chamber and adapted to communicate 24
with a vacuum source; 25
an anvil assembly operatively coupled to the shaft and disposed 26
distally of the cartridge assembly, the cartridge assembly and the 27
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anvil assembly being configured and adapted to fire and secure 1
fasteners into target rectal mucosal tissue; and 2
a vacuum channel extending through the cartridge assembly and 3
in communication with the inner chamber of the cartridge assembly 4
such that when a vacuum is applied through the channel, the vacuum 5
is transmitted into the inner chamber of the cartridge assembly to 6
draw rectal mucosal tissue into the inner chamber. 7
8
REFERENCES 9
The prior art relied upon by the Examiner in rejecting the claims on 10
appeal is: 11
Longo US 6,083,241 Jul. 4, 2000
Sauer US 5,839,639 Nov. 24, 1998
Yoon US 5,542,949 Aug. 6, 1996
Kolozsi US 5,373,854 Dec. 20, 1994

REJECTIONS 12
Claims 1-9, 11, 20-27, 30-32, 34 and 46-54 stand rejected under 35 13
U.S.C. § 102(b) as being anticipated by Sauer. Ans 3. 14
Claims 10, 12 and 13 stand rejected under 35 U.S.C. 103(a) as being 15
unpatentable over Sauer, Longo and Applicant Admitted Prior Art1. Ans. 4. 16

1 The Examiner defines the failure of the Appellant to adequately traverse
the taking of Official Notice by the Examiner in paragraph 9 of the rejection
mailed July 11, 2008, that since it is well known to provide appropriately
measured indicators on parts of a surgical device in order to ensure accuracy
during the operation, that providing gradations determining a distance of
about 5-6 cm from the cartridge assembly to the anal ring of the patient
would be well known, as Applicant Admitted Prior Art.
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Claims 28 and 29 stand rejected under 35 U.S.C. 103(a) as being 1
unpatentable over Sauer and Kolozsi. Ans. 5. 2
Claim 33 stands rejected under 35 U.S.C. 103(a) as being 3
unpatentable over Sauer and Yoon. Ans. 6. 4
ISSUES 5
Does Sauer disclose a channel or vacuum collar for transmitting a 6
vacuum to the interior chamber of a cartridge containing staples as called for 7
in independent claims 20 and 24? 8
Are independent claims 1, 46 and 50 amenable to two plausible 9
constructions? 10
11
OPINION 12
Claims 20-27, 30-32, and 34. 13
Sauer discloses a collapsible anvil assembly (20) for use after 14
placement in a patient with a surgical stapler. Col. 7, ll. 63-65. The anvil is 15
positioned in the patient by mounting the anvil in a collapsed state in 16
housing (23) of applicator (10). Col. 4, ll. 27-33. A vacuum is applied via 17
tube 60 to draw tissue toward the anvil. Col. 7, ll. 25-33. The anvil is 18
ejected from the applicator and the applicator including housing 23 is 19
removed. Col. 8, ll. 12-18. Various circular surgical staplers are then usable 20
with the anvil. Col. 7, ll. 63-65. 21
Claim 20 recites “a cartridge assembly having a plurality of staples” 22
and “a channel adapted to communicate with a source of vacuum and the 23
cartridge assembly to transmit a vacuum to the inner chamber of the 24
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cartridge assembly”. Claim 24 recites “a cartridge assembly including a 1
plurality of staples” and 2
a vacuum collar configured and adapted to be couplable to at 3
least the cartridge assembly such that the at least one opening 4
formed in the cartridge assembly is covered by the vacuum 5
collar, such that when the vacuum collar is applied to at least a 6
portion of the cartridge assembly, and a vacuum is applied to 7
the vacuum collar, the vacuum is transmitted through the at 8
least one opening to the inner chamber of the cartridge 9
assembly. 10
11
The Examiner finds that Sauer discloses (emphasis added): 12
a shaft 18, a cartridge assembly 23 having a housing and 13
including a plurality of fasteners (fasteners that hold the device 14
together when it is assembled), an inner chamber 106, 104 is 15
defined by the cartridge assembly and the anvil wherein tissue 16
is drawn into it, and an opening 24 in the exterior of the 17
housing. The opening 24 extends from the shaft through the 18
cartridge assembly to the inner chamber 106, 104 via a vacuum 19
channel 60. An anvil assembly 20 is operatively coupled to 20
shaft 18 via pin 110 and is disposed distally of the cartridge 21
assembly, as can be seen in the figures. 22
Ans. 3. 23
Appellant argues that claims 20 and 24 require a cartridge containing 24
staples as well as a channel or collar that transmits a vacuum to the inner 25
chamber of the cartridge. App. Br. 12, 13. Appellant also argues that Sauer 26
provides a vacuum via the applicator for attracting tissue to the anvil prior to 27
insertion of a stapler. App. Br. 8, 10. While we agree that the Examiner 28
made a finding regarding a cartridge including generic fasteners, the 29
Examiner did not make any findings that the vacuum communicating 30
channel or collar of Sauer is adapted to communicate with a cartridge 31
containing staples, as recited in claims 20 and 24. Accordingly we will not 32
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sustain the Examiner’s rejection of claims 20 or 24 or their dependent claims 1
21-23, 25-27, 30-32, and 34 as being anticipated by Sauer. 2
3
Claims 28, 29, and 33 4
Claims 28, 29 and 33 depend directly or indirectly on independent 5
claim 24. The Examiner’s obviousness rejection of dependent claims 28, 29 6
and 33 are based on the erroneous finding that Sauer anticipates claim 24 7
from which these claims depend. The Examiner’s applications of Kolozsi 8
and Yoon do not remedy the noted deficiency of Sauer. Therefore we do not 9
sustain the Examiner’s obviousness rejection of dependent claims 28, 29, 10
and 33. 11
12
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter new 13
grounds of rejection of claims 1-13 and 46-54 under 35 U.S.C. § 112, 2nd 14
paragraph, as being indefinite and we reverse, pro forma, the Examiner’s 15
rejection of claims 1-9, 11, and 46-54 under 35 U.S.C. § 102(b) as being 16
anticipated by Sauer, and claims 10, 12 and 13 under 35 U.S.C. § 103(a) as 17
being unpatentable over Sauer and Longo. 18
The dispute regarding claims 1-13 involves the meaning of phrases “a 19
cartridge assembly including a plurality of fasteners” and “being configured 20
and adapted to fire and secure fasteners into target rectal mucosal tissue” 21
recited in independent claim 1 (emphasis added). The Examiner contends 22
that Sauer anticipates claim 1 by teaching a first set of fasteners in a 23
cartridge which holds the device together and a second set of fasteners 24
which are fired and secured into tissue. Ans. 6, 7. As the fasteners that are 25
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secured to the target tissue are not recited as the fasteners included in the 1
cartridge, we find this construction plausible. 2
The Appellant argues that the fasteners that are included in the 3
cartridge of Sauer cannot also be configured and adapted to be fired by the 4
device to secure tissue. App. Br. 11. “During the prosecution of a patent 5
application, a claim’s compliance with both portions of section 112, 6
paragraph 2, may be analyzed by consideration of evidence beyond the 7
patent specification, including an inventor’s statements to the Patent and 8
Trademark Office.” Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1377 9
(Fed. Cir. 2000). In this case, Appellant’s arguments in the brief present 10
another plausible construction of claim 1 in which the fasteners that are fired 11
and secured into tissue are included in the cartridge. 12
Claims 46-54 13
Similarly, the dispute regarding claims 46-54 involves the meaning of 14
phrases “a cartridge assembly containing a plurality of staples” and “being 15
configured and adapted to fire and secure a plurality of staples into a target 16
site” recited in independent claim 46, and the phrases “a circular cartridge 17
assembly including a plurality of staples” and “being configured and adapted 18
to fire and secure staples into target tissue” recited in independent claim 50 19
(emphasis added). 20
Based on the Examiner’s rejection as discussed in greater detail above 21
with respect to claim 1, we understand the claims to have a first plausible 22
construction in which the staples in the cartridge and the staples fired and 23
secured into tissue are different sets of staples. Based on Appellant’s 24
argument as discussed above with respect to claim 1, we understand the 25
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claims to have a second plausible construction in which the staples that are 1
fired and secured to tissue are included in the cartridge. 2
When a claim is amenable to two plausible interpretations, a rejection 3
under 35 U.S.C. § 112, second paragraph, for indefiniteness, is appropriate. 4
Ex Parte Miyazaki, 89 USPQ 2d 1207 (BPAI 2008). Accordingly, we enter 5
a new ground of rejection for claims 1-13 and 46-54 under 35 U.S.C. § 112, 6
2nd paragraph, as being indefinite for failing to particularly point out and 7
distinctly claim the subject matter which Appellant regards as the invention. 8
The propriety of the Examiner’s rejections of claim 1-13 and 46-54 9
hinge on our interpretation of the terms “being configured and adapted to 10
fire and secure fasteners into target rectal mucosal tissue” recited in claim 1, 11
“being configured and adapted to fire and secure a plurality of staples into a 12
target site” recited in independent claim 46, and “being configured and 13
adapted to fire and secure staples into target tissue” recited in claim 50. We 14
decline to speculate about what Appellants intended to claim. Before a 15
proper review of the rejections under 35 U.S.C. § 102 and 103 can be 16
performed, the subject matter encompassed by the claims on appeal must be 17
reasonably understood without resort to speculation. Since claims 1-13 and 18
46-54 fail to satisfy the requirements of the second paragraph of 35 U.S.C. § 19
112 we are constrained to reverse, pro forma, the rejections of claims 1-9, 11 20
and 46-54 under 35 U.S.C. § 102(b) and claims 10, 12 and 13 under 35 21
U.S.C. § 103(a) without comment on the merits thereof. See Ex Parte 22
Miyazaki, 89 USPQ2d at 1217 (citing In re Steele, 305 F.2d 859, 862-63 23
(CCPA 1962) (A prior art rejection cannot be sustained if the hypothetical 24
person of ordinary skill in the art would have to make speculative 25
assumptions concerning the meaning of claim language.)) 26
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1
DECISION 2
The Examiner’s rejection of claims 1-13, 20-34 and 46-54 is reversed. 3
We enter a new ground of rejection for claims 1-13 and 46-54 under 4
35 U.S.C. § 112, 2nd paragraph. 5
This decision contains new grounds of rejection pursuant to 6
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of 7
rejection pursuant to this paragraph shall not be considered final for judicial 8
review.” 9
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO 10
MONTHS FROM THE DATE OF THE DECISION, must exercise one of 11
the following two options with respect to the new grounds of rejection to 12
avoid termination of the appeal as to the rejected claims: 13
14
(1) Reopen prosecution. Submit an appropriate 15
amendment of the claims so rejected or new evidence relating 16
to the claims so rejected, or both, and have the matter 17
reconsidered by the Examiner, in which event the proceeding 18
will be remanded to the Examiner. . . . 19
(2) Request rehearing. Request that the proceeding be 20
reheard under § 41.52 by the Board upon the same record. . . . 21
22
REVERSED, 37 C.F.R. § 41.50(b) 23
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