Ex Parte Garrison

Patent Trial and Appeal Board

Dec 27, 2017

14019094 (P.T.A.B. Dec. 27, 2017)

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.
14/019,094 09/05/2013 DAVID M. GARRISON H-EB-00183 (203-8112) 5876
90039 7590
Covidien LP
Attn: IP Legal
5920 Longbow Drive
Mail Stop A36
Boulder, CO 80301-3299
12/29/2017 EXAMINER
GIULIANI, THOMAS ANTHONY
ART UNIT PAPER NUMBER
3739
NOTIFICATION DATE DELIVERY MODE
12/29/2017 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):
mail @ cdfslaw. com
SurgicalUS@covidien.com
medtronic_mitg-si_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID M. GARRISON1
Appeal 2017-002930
Application 14/019,094
Technology Center 3700
Before RICHARD E. LEBOVITZ, FRANCISCO C. PRATS, and
JOHN G. NEW, Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
appellant states that the real party-in-interest is Covidien LP. App. Br. 3.
Appeal 2017-002930
Application 14/019,094
SUMMARY
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1-10 and 13. Specifically, claims 1, 5,
6, 8, 10, and 13 stand rejected as unpatentable under 35 U.S.C. § 102(b) as
being anticipated by Parins et al. (US 5,908,420, June 1, 1999) (“Parins”).
Claims 1, 2, 4-10, and 13 stand rejected as unpatentable under 35
U.S.C. § 102(b) as being anticipated by Reschke (US 2011/0046623 Al,
February 24, 2011) (“Reschke”).
Claims 2^1 stand rejected as unpatentable under 35 U.S.C. § 103(a) as
being obvious over the combination of Parins and Unger (US 2009/0182327
Al, July 16, 2009) (“Unger”).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CFAIMED INVENTION
Appellant’s invention is directed to a jaw assembly that includes a jaw
member and a structural insert in an electrosurgical instrument. Abstract,
Spec. ^ 1.
REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. A jaw assembly, comprising:
a jaw member, including:
an arm member defining a first portion of the jaw
member; and
a support base extending distally from the arm member
and defining a second portion and a third portion of the jaw
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Application 14/019,094
member, wherein the second portion defines a cavity on an
inner lateral side of the second portion, the cavity disposed
between the first portion and the third portion; and
a structural insert, wherein at least a portion of the
structural insert is disposed within the cavity.
App. Br. 12.
ISSUES AND ANALYSES
We adopt the Examiner’s findings of fact and conclusion that the
appealed claims are anticipated and/or obvious over the cited prior art. We
address the arguments raised by Appellant below.
A. Claims E 5, 6, 8, 10, and 13 under 35 U.S.C. $ 102(b) over Parins
Issue
Appellant argues that the Examiner erred in finding that Parins
discloses the limitation of claim 1 reciting “a structural insert, wherein at
least a portion of the structural insert is disposed within the cavity.” App.
Br. 7.
Analysis
The Examiner finds Parins discloses a jaw member, each jaw member
including: (1) an arm member defining a pivot pin aperture and defining a
first portion of the jaw member (narrow, proximal portion of Figure 7); (2) a
distal support base defining a second (region between first portion and 122)
and third (122) portion of the jaw member, wherein the second portion
defines a cavity (space for housing 91; see Fig. 6) on an inner lateral side of
the second portion and disposed between the first and third portions; and (3)
a structural insert (91) disposed within the cavity. Final Act. 3.
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Application 14/019,094
Appellant points to the Specification, which Appellant contends
defines a structural insert as providing “enhanced strength and/or rigidity of
the jaw assembly.” App. Br. 8. Appellant cites Vitronics Corp. v.
Conceptronic, Inc., as holding that “a patentee may choose to be his own
lexicographer and use terms in a manner other than their ordinary meaning,
as long as the special definition of the term is clearly stated in the patent
specification or file history.” Id. (quoting 90 F. 3d 1576, 1582 (Fed. Cir.
1996)). Therefore, Appellant asserts, the phrase “structural insert” should be
construed as meaning an element that provides enhanced strength and/or
rigidity of the jaw assembly. Id.
Appellant argues that Parins does not disclose the structural insert of
claim 1. App. Br. 7. Appellant argues that element 91 of Parins, upon
which the Examiner relies, is identified as a scissor blade. App. Br. 8.
According to Appellant, Parins fails to disclose that scissor blade 91
provides enhanced strength and/or rigidity to the jaw assembly, nor has the
Examiner provided any evidence that scissor blade 91 would provide such a
function. Id.
The Examiner responds that the limitation in question does not recite
the qualities (i.e., enhanced strength and/or rigidity from the structural
insert) argued by Appellant and that limitations may not be imported into the
claims from Appellant’s Specification. Ans. 2 (citing In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993). The Examiner finds that Appellant’s
Specification provides no express special definition for the claim term
“structural insert” that would require that it “provide enhanced strength
and/or rigidity,” as argued by Appellant. Id. Furthermore, the Examiner
finds that Appellant’s Specification discloses that the structural insert could
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Application 14/019,094
provide enhanced strength and/or rigidity in paragraph [0040] (“e.g., to
provide enhanced strength and/or rigidity”), but the Examiner finds this
disclosure does not constitute a special definition. Id. at 2-3.
Nevertheless, the Examiner asserts that, even if this feature were
claimed, or if the insert was given an explicit definition in Appellant’s
Specification, that feature would necessarily be met by the cited “structural
inserts” of Parins and/or Reschke due to the breadth of the phrase “enhanced
strength and/or rigidity.” Ans. 3. Specifically, the Examiner finds that the
inclusion of a solid structural insert into a cavity would necessarily provide
at least some level of “enhanced strength and/or rigidity,” as Appellant
argues. Id.
We are not persuaded by Appellant’s argument. Appellant’s
Specification discloses no express definition of the claim term “structural
insert.” Rather, Appellant’s Specification recites:
FIG. 2 shows a jaw assembly (shown generally as 200)
according to an embodiment of the present disclosure that
includes a jaw member 111, a structural insert 141, an
electrically-conductive tissue-engaging surface or sealing plate
160, and a non-electrically conductive member 139. Jaw member
111 includes an arm member 113 and a support base (e.g.,
support base 519 shown in FIG. 5) that extends distally from the
arm member 113. Structural insert 141 is disposed at least
partially within a cavity (e.g., cavity 520 shown in FIG. 5)
associated with the support base, e.g., to provide enhanced
strength and/or rigidity of the jaw assembly 200.
Spec. ^ 40 (emphasis added).
Our reviewing court has stated: “[0]ur cases recognize that the
specification may reveal a special definition given to a claim term by the
patentee that differs from the meaning it would otherwise possess. In such
cases, the inventor’s lexicography governs” and that “the specification ‘acts
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Application 14/019,094
as a dictionary when it expressly defines terms used in the claims or when it
defines terms by implication.’” Phillips v. AWH Corp., 415 F.3d 1303,
1316, 1321 (Fed. Cir. 2005) (quoting Vitronics, 90 F.3d at 1582)).
Furthermore, “[e]ven when guidance is not provided in explicit definitional
format, the specification may define claim terms by implication such that the
meaning may be found in or ascertained by a reading of the patent
documents.” Novartis Pharms. Corp. v. Abbott Labs., 375 F.3d 1328, 1334—
35 (Fed. Cir. 2004) (internal quotations omitted).
At the same time, the Federal Circuit has stated that:
[W]e recognize that the distinction between using the
specification to interpret the meaning of a claim and importing
limitations from the specification into the claim can be a difficult
one to apply in practice. See Comark Communications, Inc. v.
Harris Corp., 156 F.3d 1182, 1186-87 (Fed. Cir. 1998) (“there
is sometimes a fine line between reading a claim in light of the
specification, and reading a limitation into the claim from the
specification”).
And has further stated that:
[Although the specification often describes very specific
embodiments of the invention, we have repeatedly warned against
confining the claims to those embodiments. In particular, we
have expressly rejected the contention that if a patent describes
only a single embodiment, the claims of the patent must be
construed as being limited to that embodiment.
Phillips, 415 F.3d at 1322 (citations omitted).
The only language in Appellant’s Specification that refers specifically
to the purpose of the structural insert recited in the claims is the language
from paragraph [0040] quoted supra, i.e., “Structural insert 141 is disposed
at least partially within a cavity ... associated with the support base, e.g., to
provide enhanced strength and/or rigidity of the jaw assembly 200”
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Application 14/019,094
(emphasis added). The language thus expressly states that the function of
providing “enhanced strength and/or rigidity” is an exemplary function of
the insert (“e.g.”). As such, and as the Federal Circuit held in Phillips,
supra, an exemplary purpose cited in the Specification is not a limiting
definition and thus we decline to narrowly define the structural insert as
requiring enhanced strength and/or rigidity for the purpose of defining the
claim term “structural insert.”
Although Appellant’s Specification does disclose means of “providing
strength and rigidity” to the jaw member, these disclosures are made in
referring to the means of attaching the structural insert to the cavity in the
second portion of the jaw member. See Spec. ^ 50 (“A bonding material
650, e.g., brazing material, adhesive material, or solder material, may be
disposed within the cavity 521, or portion thereof, between the structural
insert 541 and the support base 519 of the jaw member 511, e.g., to facilitate
assembly and/or provide strength and rigidity” (internal references omitted);
see also, e.g., Spec. ^ 63, 69. A plain reading of these disclosures, however,
reveal that what imparts “strength and rigidity” is not meant to be the insert,
but rather the bonding material. No other disclosure of Appellant’s
Specification provides any express definition of the claim term “structural
insert” beyond what a person of ordinary skill in the art would understand a
plain meaning of that term to mean, i.e., an insert forming part of the
structure of the jaw member.
Furthermore, we agree with the Examiner that Parins inherently
discloses the disputed limitation. Figure 6 of Parins is instructive and is
reproduced below:
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Application 14/019,094
e?
m $
Figure 6 of Paris depicts a partial perspective view of the
disclosed blade members
Parins discloses that, in Figure 6: “[E]ach blade element 60, 62
includes an insulator material blank 86, 87, preferably a high temperature
plastic or ceramic. Affixed to and projecting outwardly from the fiat inner
surfaces which interface each other are metal scissors blades 91, 92.” Parins
col. 4,11. 34-38. As can readily be seen in Figure 6, the metal scissors
blades 91 and 92 are fitted into a defined cavity in a second portion of the
jaw member. We agree with the Examiner that a person of ordinary skill in
the art would understand that filling a defined cavity in the member arm with
a metal blade would necessarily increase the strength and the rigidity of the
arm. Appellants have not provided adequate arguments or rebuttal evidence
to the contrary. We consequently affirm the Examiner’s rejection of the
claims.
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Application 14/019,094
B. Claims 1, 2, 4-10, and 13 under 35 U.S.C. $ 102(b) over Reschke
Appellant repeats the arguments presented with respect to Parins,
supra, arguing that Reschke similarly fails to disclose the same limitation.
App. Br. 9.
We disagree for the same reasons explained supra with respect to the
Examiner rejection over Parins. With regard to our discussion of the
inherent disclosures of the anticipating art, Reschke similarly teaches a
cutting flange or blade located within the longitudinal axis of the arm cavity.
See Reschke 47, 52, Figs, 3, 6. Therefore, and for the same reasons
explained supra, we affirm the Examiner’s rejection of the claims.
C. Claims 2^1 under 35 U.S.C. $ 103(a) over Parins and Unger
Appellant advances the same argument with respect to the Examiner’s
rejection under 35 U.S.C § 102(b) over Parins, arguing that Unger fails to
cure the deficiencies of Parins previously argued. App. Br. 9-10.
We disagree with Appellant’s argument that Parins fails to disclose
the disputed limitation reciting: “a structural insert, wherein at least a portion
of the structural insert is disposed within the cavity.” Consequently, and for
the same reasons explained supra with respect to the Examiner’s rejection
over Parins under 35 U.S.C. § 102(b), we affirm the Examiner’s rejection of
the claims on this ground. See In re Kalm, 378 F.2d 959, 962 (C.C.P.A.
1967) (Anticipation is the epitome of obviousness).
DECISION
The Examiner’s rejection of claims claims 1, 2, 4-10, and 13 as
unpatentable under 35 U.S.C. § 102(b) over Parins is affirmed.
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Application 14/019,094
The Examiner’s rejection of claims claims 1, 2, 4-10, and 13 as
unpatentable under 35 U.S.C. § 102(b) over Reschke is affirmed.
The Examiner’s rejection of claims claims 2^1 as unpatentable under
35 U.S.C. § 103(a) 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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