Ex Parte DiFrancesco et al

Board of Patent Appeals and Interferences

Dec 3, 2010

10788111 (B.P.A.I. Dec. 3, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte FRANCIS J. DIFRANCESCO and JERRY R. GRIFFITHS
__________

Appeal 2009-013923
Application 10/788,111
Technology Center 3700
__________

Before LORA M. GREEN, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134 involving claims to a surgical
suturing instrument. The Examiner rejected the claims as anticipated and
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We vacate the
rejection of claim 18, enter a new ground of rejection, and reverse the
remaining rejections.

1 The two-month time period for filing an appeal or commencing a
civil action, as recited in 37 C.F.R. § 1.304, or for filing a request
for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from
the “MAIL DATE” (paper delivery mode) or the
“NOTIFICATION DATE” (electronic delivery mode) shown on
the PTOL-90A cover letter attached to this decision.
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Statement of the Case
The Specification teaches that the “invention relates to a suturing
device, and more particularly to a suturing device with an interlocking
trigger assembly” (Spec. 1, ll. 11-12).
The Claims
Claims 1, 2, 5-16, 18, and 19 are on appeal. We select claims 1 and 18
as representative of the rejected claims. Claims 1 and 18 read as follows:
1. A surgical suturing instrument comprising:
a handle assembly comprising a stationary
handle and a movable handle pivotally connected
to said stationary handle;
an end effector assembly comprising a first
jaw member movably connected to a second jaw
member and a needle deployable from said first
jaw member and configured to be captured by said
second jaw member and wherein said movable
handle is operably connected to said second jaw
member, so as to effectuate motion of said second
jaw member relative to said first jaw member; and
a trigger operably connected to said needle
and being adapted to effectuate deployment of said
needle from said first jaw member and capturing of
said needle by said second jaw member when said
first and second jaw members are open and spaced
apart relative to each other by a distance
dimensioned to be below a maximum allowable
distance.

18. In a surgical suturing instrument comprising
an end effector assembly, a method for controlling
deployment of a needle member of said end
effector assembly, said method comprising:
providing a stationary handle; providing a movable
handle pivotally connected to said stationary
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handle and operably connected to a first jaw
member of said end effector assembly thereby
translating motion of said movable handle to
motion of said first jaw member of said end
effector assembly relative to a second jaw member
of said end effector assembly; and
providing a trigger being operably
connected to said needle member and comprising a
first trigger segment and wherein said first trigger
segment interlocks with a first handle segment of
said movable handle thereby preventing activation
of said trigger and deployment of said needle
member when a distance between said first jaw
member and said second member is larger than a
maximum allowable distance; and
wherein said needle is deployable from said
first jaw member via said trigger and is configured
to be captured by said second jaw member when
said first and second jaw members are open and
spaced apart relative to each other by said distance
dimensioned to be below said maximum allowable
distance.

The issues
A. The Examiner rejected claims 1, 2, 5-13, 16, 18, and 19 under 35
U.S.C. § 102(b) as anticipated by Schweizer2 (Ans. 3-5).
B. The Examiner rejected claims 14 and 15 under 35 U.S.C. § 103(a) as
obvious over Schweizer (Ans. 5-6).
We vacate the rejection of claim 18 under § 102(b) and enter a new
grounds of rejection under 35 U.S.C. § 112, second paragraph. A rejection
of a claim, which is so indefinite that “considerable speculation as to

2 Schweizer, Edward E., US 3,842,840, issued Oct. 22, 1974.
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meaning of the terms employed and assumptions as to the scope of such
claims” is needed, is likely imprudent. See In re Steele, 305 F.2d 859,
862(CCPA 1962) (holding that the examiner and the board were wrong in
relying on what at best were speculative assumptions as to the meaning of
the claims and basing a rejection under 35 U.S.C. § 103 thereon.)

New Grounds of Rejection
Under the provisions of 37 C.F.R. § 41.50(b), we enter the following
new grounds of rejection.
Claim 18 is rejected under 35 U.S.C. § 112, second paragraph as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicants regard as the invention.
Findings of Fact
1. Claim 18 states “[i]n a surgical suturing instrument comprising
an end effector assembly, a method for controlling deployment of a needle
member of said end effector assembly” (Claim 18).
Principles of Law
“A single patent may include claims directed to one or more of the
classes of patentable subject matter, but no single claim may cover more
than one subject matter class.” Microprocessor Enhancement Corp. v. Texas
Instr. Inc., 520 F.3d 1367, 1374 (Fed. Cir. 2008) (citing IPXL Holdings,
L.L.C. v. Amazon.com Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) (holding
indefinite a claim covering both an apparatus and a method of using that
apparatus)).
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Analysis
We address the issue of whether claim 18 is indefinite under 35
U.S.C. 112, ¶ 2 for failing to reasonably apprise those skilled in the art of its
scope.
Claim 18 initially appears to be an apparatus claim. It recites in “a
surgical suturing instrument comprising an end effector assembly” which is
an apparatus and a structure provided for performing specified functions in
the apparatus.
However, claim 18 additionally recites, “a method for controlling
deployment of a needle member” (emphasis added). That is, this limitation
recites a method step of controlling needle deployment. Claim 18, as a
whole then, recites both apparatus limitations and also a method step. The
claim is therefore directed to two statutory classes of 35 U.S.C. § 101.
Knowing which statutory class a claim is directed to is important in
determining patentability and infringement. IPXL, 430 F.3d at 1384
(internal citations omitted). In the present case, it is unclear for a
patentability determination whether the claim encompasses the mere
manufacture of the surgical suturing apparatus; or alternatively, does claim
only encompass the method of controlling needle deployment?
This ambiguity renders claim 18 “not sufficiently precise to provide
competitors with an accurate determination of the ‘metes and bounds' of
protection involved.” See IPXL, 430 F.3d at 1384 (internal citation omitted).
Conclusion of Law
We find the ambiguity renders claim 18 indefinite under 35 U.S.C.
§ 112, ¶ 2.
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A. 35 U.S.C. § 102(b) over Schweizer
The Examiner finds that
Schweizer discloses a suturing instrument that contains a
handle assembly having a stationary handle (22) and
movable handle (12) (see Figure 1), an end effector
assembly (see Figures 2 and 3) having a first jaw member
(26), a second jaw member (14), and a needle (62) with a
suture cartridge (48, 54) that is deployable from the first jaw
member and configured to be captured by the second jaw
member (see Figure 6; column 2, lines 63-68).

(Ans. 3). The Examiner finds that the “device also contains a trigger (28)
operably connected to the needle and adapted to allow deployment of the
needle from the second jaw member when the first and second jaw members
are open and spaced apart to each other below a maximum allowable
distance” (Ans. 3-4).
Appellants contend that “suturing device of Schweizer is missing the
trigger element 146 of claims 1, 18 and 19. As shown in FIG. 1, Schweizer
does not include a trigger in the suturing instrument 10” (App. Br 5).
Appellants contend that
Schweizer’s item 28 (shown in cross-sectional view in FIG.
2 and FIG. 3) was interpreted by the Examiner to be a
trigger element equivalent to trigger element 146 in the
present invention. . . . However, this interpretation
contradicts Schweizer’s definition of element 28. Schweizer
defines element 28 as “a pawl or latch 28” that secures the
upper jaw element 26 to the actuator lever member 22 , i.e.,
to the handle 22 (see column 2, lines 24-26). Therefore, it
would be contrary to Schweizer’s teachings to interpret
Schweizer’s latch 28 as “a trigger that is operably connected
to the needle so as to effectuate deployment of the needle
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from the first jaw member and capturing by the second jaw
member”.

(App. Br. 5-6). Appellants contend that “‘a trigger initiates a motion’
whereas ‘a pawl or a latch prevent a motion’. Therefore, a pawl or a latch
cannot be interpreted to be a trigger” (App. Br. 6).
Appellants also contend that “Schweizer’s latch item 28 is not
operably connected to the needle 62 so as to effectuate deployment of the
needle from the first jaw member and capturing of the needle by the second
jaw member” (App. Br. 7).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Schweizer’s latch 28 is reasonably
interpreted as a “trigger operably connected to said needle and being adapted
to effectuate deployment of said needle” as required by claim 1?
Findings of Fact
2. Figure 1A of the Specification is reproduced below:

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“FIG. 1A is a side view of the endoscopic instrument with the front end
assembly jaws open beyond the maximum distance for needle deployment”
(Spec. 5, ll. 14-15).
3. The Specification teaches that the “invention solves the
problem of premature needle deployment in a suturing device by employing
an interlocking trigger mechanism. The interlocking trigger mechanism
accomplishes this by making the needle deployment trigger action dependent
on the position of the jaw actuation handle” (Spec. 2, ll. 19-22).
4. The Specification teaches that “[t]rigger 146 is further
connected to the needle/suture mechanism 128 via a second actuator rod
150. Actuator rod 150 translates the trigger motion into deployment of the
needle/suture mechanism 128” (Spec. 6, ll. 22-25).
5. Schweizer teaches that “the upper jaw element 26 is normally
secured to the actuator lever member 22 by engagement of a pawl or latch
28 thereon on a complementary surface 30 on the actuator lever member, the
latch being urged into engaging position by means of a spring 32 carried on
the upper jaw element” (Schweizer, col. 2, ll. 23-28).
6. Schweizer teaches that:
When the jaw elements 14 and 26 move to a pre-set
relatively clamped position shown in FIG. 3, a detent 34
carried on the upper jaw element 26 engages in a recess 36
on the one-piece first lever member 12 effectively to
interlock the jaw elements 14 and 26 together under the
force of compression spring 38 biasing the detent 34.

(Schweizer, col. 2, ll. 28-34)
7. Schweizer teaches that at “the same instant, the latch 28
engages a camming surface 39 on the lower jaw element which forces the
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latch out of engagement with the surface 30 to free the actuator lever 22
from driving engagement with the upper jaw 26 and allows it to pivot
relative thereto” (Schweizer, col. 2, ll. 34-40).
8. Figure 3 of Schweizer is reproduced below:

“FIG. 3 is a section view of the suturing clamp” (Schweizer, col. 1, l.
64).
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Principles of Law
“[A]nticipation of a claim under § 102 can be found only if the prior
art reference discloses every element of the claim ….” In re King, 801 F.2d
1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik GMBH v.
American Hoist and Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)).
“[A]bsence from the reference of any claimed element negates anticipation.”
Kloster Speedsteel AB v. Crucible Inc., 793 F.2d 1565, 1571 (Fed. Cir.
1986).
Analysis
To anticipate the trigger in claim 1, the element 28 must satisfy two
requirements. The first is to be “operably connected to” the needle and the
second is “being adapted to effectuate deployment of said needle from said
first jaw member” (see Claim 1).
The Examiner finds regarding the first trigger requirement that
“although element 28 is not directly connected, it is operably connected via
elements 42, 46 and 44” (Ans. 7).
We agree. Claim 1 does not require a direct connection between the
trigger and the needle, only an “operable” connection and element 28 of
Schweizer operates to “free the actuator lever 22 from driving engagement
with the upper jaw 26 and allows it to pivot relative thereto” (Schweizer, col.
2, ll. 34-40; FF 7). As the Examiner notes, this allows deployment of the
needle (Ans. 3-4), reasonably satisfying the “operably connected to”
requirement of claim 1.
The Examiner finds regarding the second trigger requirement of
“adapted to effectuate deployment” that “[t]his limitation is not claimed. It is
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noted that the features upon which Appellant relies are not recited in the
rejected claim(s)” (Ans. 7).
We disagree. The language “being adapted to effectuate deployment
of said needle from said first jaw member” requires that the trigger cause
deployment of the needle, either directly or indirectly. In Appellants’
invention, the trigger directly causes needle deployment (FF 4).
We agree with Appellants that the functional language “adapted to
effectuate deployment” must be considered. In order to anticipate this
requirement, the prior art structure must have the capability of functioning in
the same manner. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997).
See also In re Swinehart, 439 F.2d 210, 160 USPQ 226 (CCPA 1971).
In the instant case, Appellants correctly note that the “disengagement
of latch 28 does not cause the movement of the handle 22 and therefore does
not cause the movement of the needle 62” (App. Br. 7). Thus, the prior art
structure of latch 28 does not have the capability of functioning to effectuate
deployment as requirement by claims 1 and 19.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Schweizer’s latch 28 is reasonably interpreted as a “trigger operably
connected to said needle and being adapted to effectuate deployment of said
needle” as required by claim 1.
B. 35 U.S.C. § 103(a) over Schweizer
Having reversed the anticipation rejection over Schweizer for the
absence of a teaching of a trigger “adapted to effectuate deployment of said
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needle” as required by Claim 1, we necessarily reverse the obviousness
rejection as this rejection does not address this limitation.
SUMMARY
In summary, we vacate the rejection of claim 18 under 35 U.S.C.
§ 102(b) as anticipated by Schweizer.
We reverse the rejection of claims 1, 2, 5-13, 16, and 19 under 35
U.S.C. § 102(b) as anticipated by Schweizer.
We reverse the rejection of claims 14 and 15 under 35 U.S.C. § 103(a)
as obvious over Schweizer.
This decision also contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
Claim 18 is subject to the new ground of rejection.
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of
rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the
claims so rejected, or both, and have the matter reconsidered
by the Examiner, in which event the proceeding will be
remanded to the Examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . .

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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)(2006).

REVERSED-IN-PART, VACATED-IN-PART, § 41.50(b)

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