Ex Parte Dalessandro et al

Patent Trial and Appeal Board

Dec 12, 2013

11633291 (P.T.A.B. Dec. 12, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DAVID A. DALESSANDRO, ZHIGANG LI and
ANGELO G. SCOPELIANOS
____________

Appeal 2012-000715
Application 11/633,291
Technology Center 3700
____________

Before: JENNIFER D. BAHR, WILLIAM A. CAPP and
BEVERLY M. BUNTING, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 4-6 and 9-12 as unpatentable under 35 U.S.C. § 103(a)
over Francis (US 5,752,965, iss. May 19, 1998) and Frater (US 5,902,312,
iss. May 11, 1999) and claims 2 and 3 as unpatentable over Francis, Frater
and Hamilton (US 6,325,810 B1 iss. Dec. 4, 2001). We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2012-000715
Application 11/633,291
- 2 -
THE INVENTION
Appellants’ invention relates to surgical stapling. Spec. 1. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. An apparatus for equipping a surgical stapling device
to provide reinforced surgical fastener suture lines, comprising:
an alignment means comprising a substantially planar
frame, said frame comprising:
first and second apposed surfaces comprising first and
second guide channel walls extending therefrom,
a receiving means comprising first and second apposed
surfaces, integrally formed with and positioned between said
first and second guide channel walls to define first and second
guide channels,
first and second elastomeric foam surgical buttresses
each comprising first surfaces for contacting said receiving
means and second surfaces apposed to said first surfaces for
contacting said stapling device, disposed within said first and
second guide channels on the apposed surfaces of said receiving
means, said foam buttresses further comprising tabs integral
with and extending laterally therefrom; and
first and second retention channels integrally formed with
and between said first and second guide channel walls and said
receiving means, for receiving and retaining the tabs of said
foam buttresses on said receiving means prior to contact with
said stapling device.
OPINION
Claims 1, 4-6 and 9-12
Appellants argue claims 1, 4-6 and 9-12 as a group. App. Br. 4-9.
We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner finds that Francis discloses all of the elements of
claim 1 except that it lacks laterally extending tabs on its pledget material
Appeal 2012-000715
Application 11/633,291
- 3 -
(aka buttress). Ans. 4-5.1 The Examiner relies on Frater for tabbed pledget
material. Ans. 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 provide
tabbed buttresses in Francis’ device. Id. According to the Examiner, a
person of ordinary skill in the art would do this to aid in retention of the
buttress within the receiving means. Id.
Appellants traverse the Examiner’s rejection by arguing that Francis’
pressure equalization member 20 is not integrally formed with guide channel
walls 24, 26. App. Br. 6. Appellants argue that, because Francis is
configured to “slidably receive” member 20, such member is not integrally
formed with the remaining apparatus. Id., Reply Br. 5.
The Examiner responds by stating that, during examination, claims
are interpreted as broadly as their terms reasonably allow. Ans. 7, citing In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359 (Fed. Cir. 2004). The
Examiner construes “integral” as “formed as a unit with another part.”
Ans. 8, citing MERRIAM-WEBSTER dictionary. The Examiner finds that the
drawings of Francis depict a receiving means that is formed as a unit.
Ans. 5, 7-8.
In their Reply Brief, Appellants’ argue that the PTO’s rule of using
the broadest reasonable claim construction does not apply to prior art
references. Reply Br. 3. Appellants also argue that Francis does not use the
term “integrally” to describe member 20. Reply Br. 4.

1 Although the Examiner refers to coupling apertures 142, 144 of
Francis as “guide channels,” the Examiner further defined these elements as
being disposed on the opposed surfaces of the receiving means. Ans. 5. We
understand this second of two distinct references to “first and second guide
channels” as relating to the retention channel element of claim 1. Id.
Appeal 2012-000715
Application 11/633,291
- 4 -
Referring to Figure 1B of Francis, member 20 is disposed within
sheath 22. Francis, Fig. 1B, col. 9, l. 1. Francis discloses that the outer
peripheral boundaries of pledget materials 12, 14 extend beyond the first and
second coupling apertures 42, 44 so that pledget material is sandwiched
between member 20 and the interior surfaces of sheath 22. Francis, col. 10,
ll. 18-48. The drawings and accompanying disclosure in Francis are
sufficient to support a factual finding that member 20 and sheath 22, taken
together, constitute a unit. Thus, the Examiner’s finding that Francis
discloses a receiving means integrally formed with first and second guide
channel walls is supported by a preponderance of the evidence.
Contrary to Appellants’ contentions, the Examiner’s construction of
“integrally” and application of that construction to the prior art is consistent
with a well-established line of case authorities. In the case of In re Morris,
127 F.3d 1048 (Fed. Cir. 1997), the Federal Circuit recognized that the term
“integral” may cover more than a one-piece, unitary construction.2 In the
instant case, Appellants have not directed us to any express definitions in
their specification that would narrow the scope of “integral” or “integrally
formed” to something other than its broadest reasonable construction.
In a similar vein, Appellants argue that Francis lacks retention
channels that are integrally formed with guide channel walls and the
receiving means. App. Br. 8. Appellants contend that the volume of space
occupied by the periphery of the pledget material in Francis is attributable to

2 Morris, at 1055-56, citing In re Kohno, 391 F.2d 959 (CCPA 1968),
In re Dike, 394 F.2d 584 (CCPA 1968), In re Larson, 340 F.2d 965 (CCPA
1965), In re Clark, 214 F.2d 148 (CCPA 1954), and Advanced
Cardiovascular Sys. v. Scimed Life Sys., 887 F.2d 1070, 1074 (Fed.Cir.
1989).
Appeal 2012-000715
Application 11/633,291
- 5 -
the resiliency of member 20 rather than integral formation. App. Br. 8-9,
citing Francis, Fig. 2B, col. 10, ll. 32-46.
We have previously determined that member 20 and sheath 22, taken
together, are integrally formed. It logically follows that the pledget disposed
between member 20, on one side of the pledget, and sheath 22 and guide
channel 24 on the other side of the pledget, occupies a space that is properly
characterized as a channel that is integrally formed. Appellants have not
directed us to any express teaching in their Specification that requires the
boundaries of the claimed retention channels to consist entirely of
structurally rigid, as opposed to resilient, materials. Indeed, the specification
describes the relationship between the alignment means and buttress material
in rather broad terms.
[T]he alignment means itself may be constructed such that the
means for retaining the buttress within the alignment means is
an integral feature of the alignment means. For example, the
alignment means may be machined or otherwise formed or
molded to include channels, or grooves, or functionally
equivalent structures, as shown herein. In such a case, the
buttress is configured to fit into or otherwise cooperate with the
retaining means to facilitate retention of the buttress within the
alignment means.
Spec. 5-6. Under the circumstances, Appellants’ argument does not apprise
us of error in the Examiner’s finding that coupling apertures 142, 144 satisfy
the retention channel limitation of claim 1. Francis, col. 10, l. 38.3

3 While Appellants argue that features 42 and 44 of Francis do not
constitute “retention channels,” the Examiner relied on coupling apertures
142, 144 as satisfying the retention channel limitation. Ans. 5, 7. However,
Francis’ Specification does not appear to structurally or functionally
differentiate between coupling apertures 42, 44 in the Figure 1 embodiment
and coupling apertures 142, 144 in the Figure 3 embodiment.
Appeal 2012-000715
Application 11/633,291
- 6 -
For the reasons delineated above, we sustain the Examiner’s
unpatentability rejection of claims 1, 4-6 and 9-12.
Claims 2 and 3
Appellants cite only to the arguments presented for the patentability of
claim 1 as conferring patentability on claims 2 and 3, which stand rejected as
being unpatentable over Francis, Frater, and Hamilton. App. Br. 10-13. For
the reasons discussed with respect to claim 1, we are not apprised of error in
the Examiner’s rejection of claims 2 and 3. Accordingly, we sustain the
rejection of claims 2 and 3.
DECISION
The decision of the Examiner to reject claims 1-6 and 9-12 is
AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

Klh