Ex Parte EmmonsDownload PDFPatent Trial and Appeal BoardFeb 28, 201311059922 (P.T.A.B. Feb. 28, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/059,922 02/17/2005 Clifford L. Emmons 2847 (203-3343) 8556 7590 03/01/2013 Covidien 60 Middletown Avenue North Haven, CT 06473 EXAMINER SAETHER, FLEMMING ART UNIT PAPER NUMBER 3677 MAIL DATE DELIVERY MODE 03/01/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CLIFFORD L. EMMONS ____________ Appeal 2010-010510 Application 11/059,922 Technology Center 3600 ____________ Before JOHN C. KERINS, STEVEN D.A. McCARTHY and KEN B. BARRETT, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-010510 Application 11/059,922 2 STATEMENT OF THE CASE Clifford L. Emmons (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 25-44. Claims 1-24 and 45 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM and designate the affirmance as a NEW GROUND OF REJECTION PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b). THE INVENTION Appellant’s invention is directed to a surgical staple cartridge. Independent claim 25 is illustrative: 25. A surgical staple cartridge for use with a surgical stapling apparatus, the staple cartridge comprising: a cartridge body defining a longitudinal axis; and a plurality of staples disposed in the cartridge body, each staple including: a bridge portion defining a linear axis therealong and oriented in parallel with respect to the longitudinal axis of the cartridge body; a first leg having a first length; and a second leg having a second length, the second leg being coupled to the first leg through the bridge portion, wherein the second length is less than the first length; and wherein each staple is disposed in the cartridge body such that the first leg is located distal of the second leg, the first leg penetrating tissue prior to the second leg upon ejection of the staple from the cartridge body. Appeal 2010-010510 Application 11/059,922 3 THE REJECTIONS The Examiner has rejected: (i) claims 25-30, 34, 35-401, and 44 under 35 U.S.C. § 103(a) as being unpatentable over Maestro (FR 2,743,490 A1, published Jul. 18, 1997) in view of Appellant’s Admitted Prior Art (AAPA), as represented by Figures 4 and 5 of the instant application, and the accompanying text; (ii) claims 31, 32, 41 and 42 under 35 U.S.C. § 103(a) as being unpatentable over Maestro in view of AAPA and Savino (US 4,206,863, issued Jun. 10, 1980); and (iii) claims 33 and 43 under 35 U.S.C. § 103(a) as being unpatentable over Maestro in view of AAPA and Pratt (US 4,454,875, issued Jun. 19, 1984). ANALYSIS Claims 25-30, 34, 35, and 44--Obviousness--Maestro/AAPA Appellant presents the same arguments for all of independent claims 25, 35 and 44, and do not separately argue the patentability of the claims depending therefrom. Appeal Br. 6-13; Reply Br. 4-10. The Examiner found that Maestro discloses a surgical staple having a bridge portion and a first leg longer than a second leg, but does not teach using a plurality of such staples in a staple cartridge for a stapler. Ans. 3-4. The Examiner cited to AAPA as teaching a plurality of similar surgical staples, although not ones with legs of different lengths, used in a staple 1 The heading in the Answer for this ground of rejection omits reference to dependent claims 36-40. Ans. 3. The body of the ground of rejection addresses the limitations set forth in these claims. Ans. 5. Appellant acknowledges that these claims are rejected under this ground of rejection. Appeal Br. 12-13. Appeal 2010-010510 Application 11/059,922 4 cartridge, in which the linear axes of the bridge portions are parallel to the longitudinal axis of the cartridge body. Ans. 4. The Examiner concluded that it would have been obvious, in view of the teachings of Maestro and AAPA, to modify Maestro to include using a plurality of the Maestro staples in a stapler cartridge of a stapler, “in order to obtain easy driving of the staple through tissue and bone, to ensure rapid, easy-to-control, and accurate placement and insertion of staples.” Ans. 5. Appellant does not contest the Examiner’s stated reason why it would have been obvious to combine Maestro and AAPA in the proposed manner, but argues that the combination “does not suggest a surgical stapling cartridge wherein each staple is disposed in the cartridge body such that the first leg, having the longer length, is located distal of the second leg,” as claimed. Appeal Br. 9. The Examiner’s position is essentially that the claims do not require this orientation, since the claims do not recite a reference point to determine what is distal and proximal. Ans. 8-9. The Examiner provides the example that, “if the second, short, leg is considered as the reference point then the first, longer, leg would be ‘located distal of’ the short leg.” Ans. 9. The Examiner supports this reasoning by citing to a dictionary definition of “distal” as being situated away from a point of origin. Ans. 10. Appellant’s principal argument is that the Examiner’s claim construction is unreasonably broad in terms of what a person of ordinary skill in the art would understand the scope of the claim to be, when viewed in light of the specification. Appeal Br. 10-12. Appellant maintains that the Specification sets forth definitions for the terms “proximal” and “distal”, and Appeal 2010-010510 Application 11/059,922 5 that the Examiner has ignored the explicit definitions provided when construing the claims. Appeal Br. 10. We need not directly decide this issue, because even if we assume that the term “distal” in the claims is as Appellant urges, i.e., “refer[ring] to the end of the device or element which is furthest from the operator” (Spec., p. 6, ll. 13-14), we conclude that the subject matter of independent claims 25, 35 and 44 would have been obvious to a person of ordinary skill in the art over Maestro and AAPA. The combination of the teachings of Maestro and AAPA provides, as the Examiner found, and Appellant did not contest, surgical staples having legs of different lengths within a staple cartridge, wherein the linear axes of the bridge portions of the staples are oriented in parallel with respect to the longitudinal axis of the cartridge body. There are only two possible orientations that such staples could have in this proposed combination, i.e., the longer (first) leg being located proximal of the shorter (second) leg, or being located distal thereof. A plurality of such staples could be either all oriented the same way, which is the most logical arrangement, or some form of alternating orientations could be employed. Since only a finite number of staples would fit into any cartridge, the number of alternating orientations likewise would be finite. As such, the claim limitation calling for each of the staples to have its first, longer leg located distal of its second, shorter leg is one of a finite number of predictable solutions that could be pursued by a person of ordinary skill in the art, thus being obvious to try. As a result, the subject matter of claims 25, 35 and 44 would have been obvious to a person of ordinary skill in the art. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 Appeal 2010-010510 Application 11/059,922 6 (2007). As this rationale differs from the thrust of the rejection as presented by the Examiner, we designate our affirmance of the rejection over the combination of Maestro and AAPA as a new ground of rejection under 37 C.F.R. § 41.50(b). Appellant relies on the same arguments presented for claims 25, 35 and 44, for the patentability of dependent claims 26-30, 34, and 36-40. Appeal Br. 12-13; Reply Br. 10. As discussed above, we have concluded that the subject matter of claims 25, 35 and 44 would have been obvious over the combination of Maestro and AAPA. Accordingly, we affirm the rejection of claims 26-30, 34, and 36-40 as being unpatentable over Maestro, AAPA for the reasons presented above, and based on the findings and reasons advanced by the Examiner with respect to these claims and the combination of Maestro and AAPA. Ans. 5. The affirmance is designated as a new ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b). Claims 31, 32, 41 and 42--Obviousness--Maestro/AAPA/Savino Appellant relies on the same arguments presented for claims 25 and 35, from which these claims depend, for the patentability of these claims. Appeal Br. 13-14; Reply Br. 10. As discussed in the foregoing section, we concluded that the subject matter of claims 25 and 35 would have been obvious over the combination of Maestro and AAPA. Accordingly, we affirm the rejection of claims 31, 32, 41 and 42 as being unpatentable over Maestro, AAPA and Savino for the reasons presented above with respect to Maestro and AAPA, and based on the findings and reasons advanced by the Examiner with respect to Savino and the combination of Savino with Appeal 2010-010510 Application 11/059,922 7 Maestro and AAPA. Ans. 6-7. The affirmance is designated as a new ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b). Claim 33 and 43--Obviousness--Maestro/AAPA/Pratt Appellant relies on the same arguments presented for claims 25 and 35, from which these claims depend, for the patentability of these claims. Appeal Br. 14-15; Reply Br. 10-11. As discussed in the foregoing section, we concluded that the subject matter of claims 25 and 35 would have been obvious over the combination of Maestro and AAPA. Accordingly, we affirm the rejection of claims 33 and 43 as being unpatentable over Maestro, AAPA and Pratt for the reasons presented above with respect to Maestro and AAPA, and based on the findings and reasons advanced by the Examiner with respect to Pratt and the combination of Pratt with Maestro and AAPA. Ans. 7. The affirmance is designated as a new ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b). DECISION The decision of the Examiner to reject claims 25-44 under 35 U.S.C. § 103(a) is AFFIRMED, but the rejections are designated as new grounds of rejection pursuant to our authority under 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: Appeal 2010-010510 Application 11/059,922 8 (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 . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED; 37 C.F.R. § 41.50(b) msc Copy with citationCopy as parenthetical citation