Ex Parte Farascioni et alDownload PDFPatent Trial and Appeal BoardNov 7, 201713722199 (P.T.A.B. Nov. 7, 2017) 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. 13/722,199 12/20/2012 David Farascioni H-US -01460CIP2CON (203-616 5918 50855 7590 Covidien LP 60 Middletown Avenue Mailstop 54, Legal Dept. North Haven, CT 06473 11/09/2017 EXAMINER LONG, ROBERT FRANKLIN ART UNIT PAPER NUMBER 3721 NOTIFICATION DATE DELIVERY MODE 11/09/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): SurgicalUS@covidien.com medtronic_mitg-si_docketing@cardinal-ip.com mail @ cdfslaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID FARASCIONI and JOHN W. BEARDSLEY Appeal 2017-000360 Application 13/722,1991 Technology Center 3700 Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and PHILIP J. HOFFMANN, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of claims 4, 6—8, 13, 15—17, 20, and 21. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. According to Appellants, the invention “relates generally to instruments for surgically joining tissue and, more specifically, to surgical 1 According to Appellants, “[t]he real party in interest is . . . Covidien LP. The ultimate parent of Covidien LP is Medtronic, pic.” Appeal Br. 2. Appeal 2017-000360 Application 13/722,199 instruments having curved jaw members and loading units for use therewith.” Spec. 12. Claims 4, 13, and 20 are the independent claims on appeal. Below, we reproduce independent claim 4 as illustrative of the appealed claims. 4. A surgical instrument for surgically joining tissue comprising: a handle assembly; an endoscopic portion extending distally from the handle assembly and defining a first longitudinal axis; a pair of jaw members disposed adjacent a distal end of the endoscopic portion and extending generally distally therefrom, at least one of the jaw members being pivotable with respect to the other between an open position and an approximated position for engaging body tissue therebetween, the pair of jaw members including a first jaw member and a second jaw member, the first jaw member including a channel having a longitudinally- extending slot therein; a drive bar disposed in mechanical cooperation with the handle assembly, a first portion of the drive bar being configured and dimensioned to travel at least partially within the longitudinally-extending slot of the channel, the first portion of the drive bar is elongated and substantially flat; and a dynamic clamping member disposed in mechanical cooperation with a distal portion of the drive bar, wherein a portion of the dynamic clamping member is configured and dimensioned to travel at least partially within the longitudinally- extending slot of the channel. 2 Appeal 2017-000360 Application 13/722,199 REJECTIONS AND PRIOR ART The Examiner rejects the claims as follows2: I. Claims 4, 6—8, 13, 15—17, 20, and 21 on the ground of non- statutory double patenting as unpatentable over claims 1—17 of US 8,360,298 B2; II. Claims 4, 6, 13, 15, 20, and 21 under 35 U.S.C. § 102(b) as anticipated by Green (US 6,644,532, iss. Nov. 11, 2003); III. Claims 7, 8, 16, and 17 under 35 U.S.C. § 103(a) as unpatentable over Green; IV. Claims 6, 15, 20, and 21 under 35 U.S.C. § 103(a) as unpatentable over Green and Viola (US 2012/0223121 Al, pub. Sept. 6, 2012); and IV. Claims 7, 8, 16, and 17 under 35 U.S.C. § 103(a) as unpatentable over Green, Viola, Kostrzewski (US 2010/0213240 Al, pub. Aug. 26, 2010), and Barak (US 4,930,674, iss. June 5, 1990). 2 We combine and reorder rejections, as appropriate, based on our understanding of the Examiner’s rejections. Further, we correct listings of rejected claim, in view of Appellants’ cancelation of claims 1—3, 5, 9-12, 14, 18, and 19 after the issuance of the Examiner’s Final Office Action, but before Appellants’ filing of the Appeal Brief and the issuance of the Examiner’s Answer. See Amendment under 37 C.F.R. 1.116, filed Mar. 8, 2016, 7; see also Advisory Action mailed Mar. 22, 2016, 1. 3 Appeal 2017-000360 Application 13/722,199 ANALYSIS Rejection I Appellants do not argue against the Examiner’s double patenting rejection of claims 4, 6—8, 13, 15—17, 20, and 21. Therefore, we summarily sustain the double-patenting rejection. Rejection II Independent claims 4 and 13, and dependent claims 6 and 15 As set forth above, independent claim 4 recites, among other recitations, “a dynamic clamping member disposed in mechanical cooperation with a distal portion of the drive bar, wherein a portion of the dynamic clamping member is configured and dimensioned to travel at least partially within the longitudinally-extending slot of the channel.” Appeal Br., Claims App. Independent claim 13 recites a similar recitation. Id. With respect to the Examiner’s anticipation rejection of independent claims 4 and 13, the Examiner finds that “Green’s [sjhank 358 [teaches the claimed] ‘dynamic clamping member’ (this is broadly interpreted as any structure portion member of the drive bar 240).” Answer 2. The Examiner further finds that, as shown in Green’s figures3, “shank 358 at least partially will go through [slot] 282.” Id. at 3. Appellants argue that the Examiner’s anticipation rejection is in error because, “while a portion of. . . knife 240 may travel through slot 282, 3 Although the Examiner refers to Green’s Figure 16, this appears to be a typographical error, as Figure 16 does not illustrate shank 358. See Green Fig. 16. We understand the Examiner’s discussion to refer to Green’s Figure 20, because this figure, which the Examiner reproduces and annotates in the Answer, does illustrate shank 358. See id. Fig. 20; see also Answer 3. 4 Appeal 2017-000360 Application 13/722,199 Green does not teach that the asserted dynamic clamping member or shank 358 travels at least partially within . . . slot 282.” Reply Br. 3; see also Appeal Br. 12 (“no portion of the asserted dynamic clamping member 300 of Green ‘travels at least partially within’ the asserted slot 282 or groove structure”). Based on our review, the Examiner does not support adequately the finding that Green’s shank 358 or portion of drive bar 240, on which the Examiner relies to teach the claimed dynamic clamping member, travels through slot 282, and, therefore, we do not sustain the rejection. More specifically, as shown in Green’s annotated Figure 20, the Examiner relies on a majority of the length of drive bar 240 to teach the claimed distal portion of the drive bar, to which the dynamic clamping member is disposed in mechanical cooperation. Answer 3; see also Appeal Br., Claims App. (claim 4). This is consistent with the Examiner’s express finding that Green’s drive bar’s “distal [portion] begins at 354.” Answer 2. Thus, at most, the Examiner finds that only a relatively short portion of drive bar 240 teaches the claimed dynamic clamping member. Therefore, even though we agree with the Examiner that some portion of drive bar 240 travels within slot 282, the Examiner fails to establish adequately that either i) the portion of drive bar 240 on which the Examiner does not rely to teach the drive bar’s distal portion or ii) shank 358 travels through slot 282. Based on the foregoing, we do not sustain the Examiner’s anticipation rejection of independent claims 4 and 13. Further, we do not sustain the anticipation rejection of claims 6 and 15 that depend on the independent claims, inasmuch as the Examiner does not rely on any other reference to remedy the above-discussed deficiency in the independent claims’ rejection. 5 Appeal 2017-000360 Application 13/722,199 Independent Claim 20 Independent claim 20 recites “wherein the drive bar includes an elongated second portion that is configured and dimensioned to travel at least partially within the longitudinally-extending slot of the second jaw member.” Appeal Br., Claims App. With respect to the Examiner’s anticipation rejection of independent claim 20, the Examiner finds that “Green discloses wherein the second jaw member (56) includes a longitudinally-extending slot (238) therein ([F]ig[ure] 17), and wherein the upper elongated surface of the drive bar is configured and dimensioned to travel at least partially within the longitudinally-extending slot of the second jaw member (col. 11, lines 7— 31).” Final Action 5—6. Appellants argue that the Examiner’s anticipation rejection is in error, because Green fails to disclose [that] an ‘elongated’ portion of its knife 240 passes through the center groove 238. Moreover, the Final Office Action failed to explicitly state which portion of the asserted ‘drive bar’ or knife 240 is interpreted as the ‘elongated’ portion that is ‘configured and dimensioned to travel at least partially within the longitudinally-extending slot,’ as recited in claim 20. Appeal Br. 14. Based on our review of the record, we sustain the Examiner’s rejection of claim 20. The Examiner adequately supports the finding that a portion of Green’s knife 240 travels in groove 238. Specifically, the Examiner finds that Green’s Figure 17 shows that a “longitudinal center groove 238 is also provided in staple forming plate 234 to facilitate the guided passage of a surgical knife 240 during a firing sequence of apparatus 50.” Final Action 6 (citing Green col. 11,11. 12—14). Conversely, 6 Appeal 2017-000360 Application 13/722,199 Appellants do not cite evidence, such as by pointing to anything in the Specification or claims, or provide a persuasive line of technical reasoning, sufficient to establish that the portion of Green’s drive bar 240 traveling in slot 238 is not an “elongated” portion. For example, Appellants do not establish that in Green the portion of drive bar 240 within slot 23 8 is less than some required minimum length. Dependent claim 21 Dependent claim 21 recites “an actuation sled slidingly disposed with respect to the first jaw member, the actuation sled including a projection depending from a lower surface thereof, the projection configured to travel at least partially within the longitudinally-extending slot of the first jaw member.” Appeal Br., Claims App. With respect to the Examiner’s anticipation rejection of the claim, the Examiner finds that Green teaches an actuation sled (300 and/or 324/322, [F]ig[ures] 20-21) slidingly disposed with respect to the first jaw member, the actuation sled being disposed distally of the dynamic clamping member (300/322), the sled including a projection (306 and/or 362/364) depending from a lower surface thereof, the projection configured to travel at least partially within the longitudinally-extending slot (280/282) of the channel each and jaw member including a longitudinally-extending slot therein ([F]ig[ures] 16—20). Final Action 6. Appellants argue that the anticipation rejection is in error, because “no portion of the asserted projections 306, 362, [or] 364 of Green ‘travels at least partially within’ the asserted slot 282 or groove structure,” and “none of the projections 306, 362, [or] 364 in Green depend from a 7 Appeal 2017-000360 Application 13/722,199 lower surface of any of the asserted actuation sleds 300, 324, 322.” Appeal Br. 16. Based on our review of the record, we do not sustain claim 21 ’s rejection. Initially, we note that, in the Response to Arguments section of the Answer, the Examiner does not respond to Appellants’ arguments regarding Green’s lack of teaching of the claimed actuation sled projection. Further, based on our review of Green, we are in agreement with Appellants that the Examiner has not shown adequately that groove 306 or seat 362 or 364 travels within either cartridge 280 or groove 282. See, e.g., Green Figs. 16, 20. Rejection III For the reasons set forth above in the discussion of Rejection II, we do not sustain the Examiner’s anticipation rejection of independent claims 4 and 13. Inasmuch as the Examiner does not demonstrate that an obvious variation of Green remedies the deficiency in the independent claims’ rejection, we do not sustain the obviousness rejection, based solely on Green, of claims 7, 8, 16, and 17 that depend on claims 4 and 13. Rejection IV Dependent claims 6 and 15 For the reasons set forth above in the discussion of Rejection II, we do not sustain the Examiner’s anticipation rejection of independent claims 4 and 13. Inasmuch as the Examiner does not support adequately the finding that Viola remedies the deficiency in the independent claims’ rejection, we do not sustain the obviousness rejection, based on Green and Viola, of 8 Appeal 2017-000360 Application 13/722,199 claims 6 and 15 that depend on claims 4 and 13. More specifically, the Examiner does not demonstrate where Viola discloses a dynamic clamping member disposed in mechanical cooperation with a distal portion of a drive bar, where a portion of the dynamic clamping member is configured and dimensioned to travel at least partially within a longitudinally-extending slot, as recited by claims 4 and 13. Although the Examiner cites to multiple paragraphs and a figure of Viola, the Examiner does not identify where, specifically, Viola teaches the dynamic clamping member, as claimed. See Final Action 7—8 (citations omitted); see also Appeal Br. 16—18. Claim 20 For the reasons set forth above in the discussion of Rejection II, we sustain the Examiner’s anticipation rejection of independent claim 20 based on Green. Thus, we also sustain the Examiner’s obviousness rejection of claim 20 based on Green and Viola. Claim 21 For the reasons set forth above in the discussion of Rejection II, the Examiner does not support adequately the finding that Green discloses the actuation sled projection, as recited by dependent claim 21. Although the Examiner finds that Viola teaches actuation sled projection, the Examiner does not address why it would have been obvious to include Viola’s projection in combination with elements from Green. See Final Action 7. Appellants’ argument is directed to the Examiner’s “failure] to explicitly state which feature of Viola is the asserted ‘drive bar’ and which feature of Viola is being interpreted as the ‘upper elongated surface of the drive bar.’” 9 Appeal 2017-000360 Application 13/722,199 Appeal Br. 17—18. Because Appellants do not argue against using Viola’s projection in Green, the argument technically is waived. See 37 C.F.R. § 41.37(iv). Given that dependent claims 6, 15, and 21 recite similar claim language, however, we exercise our discretion and raise the issue sua sponte. See In re Gartside, 203 F.3d 1305, 1315—16 (Fed. Cir. 2000). Because the Examiner does not establish adequately that the use of Viola’s projection with Green’s device remedies the rejection based on Green alone, we do not sustain claim 21’s obviousness rejection. Rejection V For the reasons set forth above in the discussion of Rejection II, we do not sustain the Examiner’s anticipation rejection of independent claims 4 and 13. Inasmuch as the Examiner does not support adequately the finding that any of Viola, Kostrzewski, or Barak remedies the deficiency in the independent claims’ rejection, we do not sustain the obviousness rejection, based on Green and these additional references, of claims 7, 8, 16, and 17 that depend on claims 4 and 13. More specifically, the Examiner does not demonstrate where any of these references discloses a dynamic clamping member disposed in mechanical cooperation with a distal portion of a drive bar, where a portion of the dynamic clamping member is configured and dimensioned to travel at least partially within a longitudinally-extending slot, as recited by claims 4 and 13. Although the Examiner cites to multiple paragraphs and figures of Kostrzewski, the Examiner does not identify where, specifically, Kostrzewski teaches the dynamic clamping member, as claimed. See Final Action 8—9 (citations omitted); see also Appeal Br. 19- 20. 10 Appeal 2017-000360 Application 13/722,199 DECISION We summarily AFFIRM the double-patenting rejection of claims 4, 6-8, 13, 15-17, 20, and 21. We REVERSE the Examiner’s rejection of claims 4, 6, 13, 15, and 21 under 35 U.S.C. § 102(b). We AFFIRM the Examiner’s rejection of claim 20 under 35 U.S.C. § 102(b). We REVERSE the Examiner’s rejection of claims 7, 8, 16, and 17 under 35 U.S.C. § 103(a) as unpatentable over Green. We REVERSE the Examiner’s rejection of claims 6, 15, and 21 under 35 U.S.C. § 103(a) as unpatentable over Green and Viola. We AFFIRM the Examiner’s rejection of claim 20 under 35 U.S.C. § 103(a) as unpatentable over Green and Viola We REVERSE the Examiner’s rejection of claims 7, 8, 16, and 17 under 35 U.S.C. § 103(a) as unpatentable over Green, Viola, Kostrzewski, and Barak. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 11 Copy with citationCopy as parenthetical citation