Ex Parte Demmy et al

Patent Trial and Appeal Board

Feb 5, 2013

11729686 (P.T.A.B. Feb. 5, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TODD DEMMY and LEE ANN OLSON
____________________

Appeal 2010-006756
Application 11/729,686
Technology Center 3700
____________________

Before: JOHN C. KERINS, JAMES P. CALVE, and
BEVERLY M. BUNTING,Administrative Patent Judges.

BUNTING, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
3-13, and 15-22. App. Br. 2. Claims 2 and 14 were canceled in the After-
Final Amendment dated December 8, 2008. Id. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
Appeal 2010-006756
Application 11/729,686

2
CLAIMED SUBJECT MATTER
The invention relates to an anvil-mounted dissecting tip for a surgical
stapling device. Spec., para. [0002]. Claims 1 and 12 are the independent
claims.
Claim 1, reproduced below, is illustrative of the claimed subject
matter on appeal:
1. A surgical stapling device, comprising:
a handle assembly;
an endoscopic portion extending distally
from the handle assembly and defining a first
longitudinal axis; and
an end effector defining a second
longitudinal axis, the end effector including:
an anvil assembly supported adjacent a
distal end of the endoscopic portion and including
a dissecting tip having an inner surface extending
therefrom;
a cartridge assembly pivotally mounted
adjacent the distal end of the endoscopic portion
and being mounted for pivotal movement in
relation to the anvil assembly between open and
approximated positions, wherein the anvil
assembly is fixed from movement with respect to
the cartridge assembly, and wherein a distal-most
end of the dissecting tip extends distally beyond a
distalmost end of the cartridge assembly, the inner
surface of the dissecting tip extending toward the
cartridge assembly.

Appeal 2010-006756
Application 11/729,686

3
REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Diaz
Carroll
Vidal
US 2,887,111
US 5,397,324
US 5,447,265
May 19, 1959
Mar. 14, 1995
Sep. 5, 1995

The Examiner made the following rejection:
Claims 1, 3-13, and 15-22 stand rejected under 35 U.S.C
§103(a) as being unpatentable over Vidal in view of Carroll and
Diaz.

ANALYSIS
The Examiner found that Vidal discloses all of the limitations of claim
1 except Vidal fails to disclose that a distal-most end of the dissecting tip
extends distally beyond a distal-most end of the cartridge assembly. Ans. 3.
The Examiner determined that Carroll discloses a surgical stapler having a
dissecting tip with a distal-most end extending distally beyond a distal-most
end of the cartridge assembly and reasoned that it would have been an
obvious matter of design choice to have provided the Vidal dissecting tip
with a distal-most end as taught by Carroll in order to facilitate the
engagement and positioning of body tissue between the anvil and cartridge
assembly. Id. The Examiner further noted that the thus-modified structure
of Vidal fails to disclose the limitation of the inner surface of the dissecting
tip extending towards the cartridge assembly. Ans. 4. The Examiner cites to
the Diaz reference as teaching the concept of a surgical device having upper
and lower jaws pivotally attached to each other, and that the upper jaw has a
dissecting tip with an inner surface extending and being angled distally
Appeal 2010-006756
Application 11/729,686

4
downward towards the lower jaw for the purpose of dissecting, opening or
separating one body tissue from another. Id. Thus, the Examiner reasoned
that it would have been obvious to one having ordinary skill in the art to
have further modified the structure of Vidal “to have an inner surface of the
dissecting tip extending and being angled distally downward towards the
cartridge, i.e. lower jaw, as taught by Diaz, in order to dissect, open or
separate one body tissue from another”. Id.
Appellants argue that none of the cited references disclose a dissecting
tip disposed on and extending distally beyond a stationary jaw member.
Rep. Br. 6. According to Appellants, Carroll does not teach a dissecting tip,
rather that the semi-conical probe section 32 is a positioning tip that engages
and positions the body tissue between the anvil engagement face 8 of the
staple cartridge 3 and the cartridge engagement face 33 of anvil 2. Ans. 11.
The Examiner countered that “Carroll strongly suggests that the semi-
conical section is capable of dissect[ing], i.e. separat[ing] body tissue apart,
by facilitating the engagement and positioning of desired body tissue
between the anvil and cartridge surfaces.” Ans. 5-6. Appellants contend
that Examiner has not pointed out where Carroll “strongly suggests” that the
semi-conical section 32 is capable of dissection, and that Carroll is silent
regarding use of the semi-conical section for dissection or separation of body
tissue. Reply Br. 5. Appellants submit that a tip used for "dissection” of
tissue is clearly different from and not suggested by a distal section of an
instrument used to "position" tissue, as taught by Carroll. Id. With respect
to Diaz, Appellants argue that Diaz discloses a scissors-like instrument
without an endoscopic portion, and not usable in endoscopic procedures
since each of the jaws of the Diaz instrument are movable and actuatable
Appeal 2010-006756
Application 11/729,686

5
through manipulation of the handle. App. Br. 13–14. The Examiner
countered that Diaz was relied upon merely to show the teaching of using a
surgical device having two pivotally connected jaws, with one of the jaws
having a dissecting tip with an inner surface extending angled toward the
other jaw to facilitate dissecting, opening or separating body tissues, and that
the device of Diaz would be ideal for use in all kinds of surgical
interventions. Ans. 6. Appellants further argue that the combination of the
non-endoscopic, scissors-like instrument of Diaz with Vidal and/or Carroll
does not teach the Appellants' claimed invention as a whole, of an
endoscopic instrument which includes a stationary jaw member that can be
used to dissect tissue. Reply Br. 7-8.
Appellants’ claimed “dissecting tip” is structurally limited only by its
being included on a stationary anvil assembly, by its extending distally
beyond a cartridge assembly, and by its inner surface extending toward the
cartridge assembly. Notwithstanding, the Examiner has erroneously
characterized both the distal end portion of the upper jaw or anvil 16 of
Vidal and the semi-conical probe of Carroll as dissecting tips. Neither
reference discusses tissue dissection by these elements. Vidal discusses only
that the distal portion of its upper jaw has a tissue contacting surface 34 on
its underside. Vidal, col. 4, ll. 51-53, Fig. 1. Carroll is somewhat vague
with regard to the semi-conical tip section; the only discussion in Carroll
relating to the semi-conical section 32 is: "the semi-conical probe section 32
of the anvil 2 engages and positions the body tissue between the anvil
Appeal 2010-006756
Application 11/729,686

6
engagement face 8 of the stapler cartridge 3 and the cartridge engagement
face 33 of anvil 2." Carroll, col. 5, ll. 9-12.1
The absence of any clear disclosure in these references of using a
distal portion of the anvil to perform dissection of tissue2 calls into question
the Examiner’s further proposed modification in view of Diaz. The
Examiner concludes that it would have been obvious to provide the Vidal
device, as modified by Carroll, to have an inner surface of the “dissecting
tip” (extension similar to probe 32 of Carroll) extending past and being
angled distally downwardly toward the cartridge or lower jaw, in order to
dissect, open, or separate one body tissue from another. Ans. 4. However,
while Diaz does appear to employ a curved distal or terminal portion 11 for
dissection (see, e.g., Fig. 1) extending from the jaw portion “a” that is not
stationary with respect to the second jaw (b), the jaws of the Diaz forceps
are shown as being closed when the distal end is used for dissection. Thus
the direction in which the terminal portion curves relative to the opposing
jaw does not appear to be of any significance when the forceps is used for
dissection. Indeed, it appears that Diaz discloses at least embodiments in
which the curved distal portion curves toward the shorter jaw (Fig. 1), and
away from the shorter jaw (Fig. 2).

1 The Examiner, in response to certain of Appellants’ arguments, maintains
that “Carroll strongly suggests that the semi-conical section 32 is capable of
dissect[ing], i.e. separat[ing] body tissue” on the basis of this disclosure of
the probe engaging and positioning of desired body tissue. Ans. 5-6. We
disagree that this amounts to any such strong suggestion.
2 Along these lines, the Examiner also fails to address Appellants’
observation (Appeal Br. 11; Reply Br. 6) that the proposed modification
would add a semi-conical probe to the fixed anvil of Vidal, whereas the
semi-conical probe on the Carroll device is positioned on the pivoting or
movable member, and does not address what effect this would have.
Appeal 2010-006756
Application 11/729,686

7
When considering obviousness of a combination of known elements,
the operative question also is “whether the improvement is more than the
predictable use of prior-art elements according to their established
functions.” KSR International Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007). Given that neither Vidal nor Carroll clearly contemplates use of
those devices in dissecting tissue, and given that Diaz does not disclose any
particular relationship between the curvature of its terminal portion and the
opposing jaw, the Examiner has not shown that the proposed modification of
Vidal by both Carroll and Diaz would predictably achieve a device
providing a dissecting tip on an anvil assembly as set forth in claim 1.
Therefore, we do not sustain this rejection.
With regard to claim 12, essentially for the same reasons stated above
with respect to claim 1, the Examiner has not shown that the proposed
combination of the modified tip of Vidal by both Carroll and Diaz would
predictably achieve the anvil assembly including the dissecting tip having
an inner facing surface being angled distally downwards towards the
cartridge assembly, as taught by claim 12. Thus, we do not sustain this
rejection either.
Claims 3-11, 13 and 15-22, the remaining claims on appeal, depend
from either claim 1 or claim 12. The rejection of these claims is also not
sustained for the reasons noted above.
CONCLUSION
The Examiner has not adequately supported the conclusion of
obviousness with a reason to combine the teachings of the references that is
supported by rational underpinnings.
Appeal 2010-006756
Application 11/729,686

8
DECISION
Accordingly, the Examiner’s rejection of claims 1, 3-13, and 15-22
under 35 U.S.C §103(a) as being unpatentable over Vidal in view of Carroll
and Diaz is REVERSED.

REVERSED

Klh