Ex Parte Hartoumbekis

Patent Trial and Appeal Board

Aug 22, 2018

13666317 (P.T.A.B. Aug. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/666,317 11/01/2012
50855 7590
Covidien LP
60 Middletown A venue
Mailstop 54, Legal Dept.
North Haven, CT 06473
08/24/2018
FIRST NAMED INVENTOR
Elias Hartoumbekis
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
H-US-03233 (203-8677) 7355
EXAMINER
SCHWIKER, KATHERINE H
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
08/24/2018 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):
rs. patents. two@medtronic.com
mail@cdfslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ELIAS HARTOUMBEKIS
Appeal2017-007771
Application 13/666,317 1
Technology Center 3700
Before DONALD E. ADAMS, MICHAEL J. FITZPATRICK,
and ELIZABETH A. LA VIER, Administrative Patent Judges.
LA VIER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant seeks review of the
Examiner's rejection of claims 1 and 6-9. We have jurisdiction under
35 U.S.C. § 6(b). For the reasons set forth below, we AFFIRM.
BACKGROUND
The Specification relates to surgical clip appliers with a reusable
counter mechanism. See Spec. ,r 1.
1 Appellant states the real party in interest is Covidien LP. Br. 1.
Appeal2017-007771
Application 13/666,317
Claim 1, the only independent claim on appeal, recites:
1. A surgical clip applier, comprising:
a housing;
at least one handle pivotably connected to the housing;
a channel assembly extending distally from the housing;
a plurality of clips loaded in the channel assembly;
a drive channel translatably supported in the housing and the
channel assembly, the drive channel being translatable upon
actuation of the at least one handle; and
a reusable counter mechanism removably insertable into a
counter slot extending into the housing and engagable with the
drive channel, the counter mechanism including a counter dial
having indicia thereon and a counter housing, the counter dial
being disposed within the counter housing, the counter
mechanism configured to display the indicia corresponding to a
quantity of clips and to change the indicia upon translation of
the drive channel and rotation of the counter dial in a first
direction, wherein the counter housing includes a resilient
member configured to block rotation of the counter dial in a
second direction.
Br. 17 (Claims Appendix).
REJECTION MAINTAINED ON APPEAL
Claims 1 and 6-9 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Malkowski2 and Yodfat. 3 Ans. 2.
DISCUSSION
The Examiner relies on Malkowski (see Final Action 3--4) as teaching
all the elements of claim 1 except for "the counter mechanism being
2 Malkowski et al., US 2011/0137323 Al, published June 9, 2011.
3 Yodfat et al., US 2010/0292651 Al, published Nov. 18, 2010.
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Application 13/666,317
reusable and removably insertable into a counter slot extending into the
housing; the counter mechanism being disposed within a counter housing"
(id. at 4 ). 4 For these limitations, the Examiner relies on Y odfat (see id. at 4--
5), and concludes that it would have been obvious to "to modify Malkowski
to have the counter mechanism be housed in a counter housing and be
reusable and removably insertable into a counter slot extending into the
housing by a snap fit mechanism as taught by Yodfat" (id. at 5) to provide a
"reusable/releasable counter mechanism" (id. at 12).
Appellant does not dispute the Examiner's reliance on Malkowski and
Y odfat as teaching the individual elements of claim 1. See generally Br. 3-
11. Instead, Appellant argues that Y odfat is not analogous art because
Y odfat is not reasonably pertinent to the problem to be solved (see id. at 4--
9) and that therefore, the combination of the references is the product of
impermissible hindsight (see id. at 10). We are not persuaded.
As the Examiner and Appellant both point out, Y odfat is not directed
to a surgical clip applier (see Final Action 12; Br. 4), but rather "an
ambulatory therapeutic fluid delivery device" (Yodfat Abstract). Appellant
argues this difference means that the ordinarily skilled artisan would not
have looked to Yodfat, because "a problem to be solved in Appellant's
Specification is 'for a user of the clip applier to know how many clips
remain in the clip applier, how many clips have been fired and/or when a
final clip of the plurality of clips has been fired,' and 'sanitized/stored for
4 The Examiner also notes that Malkowski does not teach a counter
mechanism that "is securable in the counter slot by a snap-fit mechanism"
(Final Action 4), but this relates to a limitation of claim 9, which is not argued
separately.
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Application 13/666,317
re-use."' Br. 6 (quoting Spec. ,r,r 3, 82 (emphasis in Brief)). Appellant's
framing of the problem, then, seemingly would exclude any non-surgical
clip art from consideration. It must be remembered, though, that a person
with ordinary skill in the art is "a person of ordinary creativity, not an
automaton," and "in many cases ... will be able to fit the teachings of
multiple patents together like pieces of a puzzle." KSR Int 'l Co. v. Teleflex,
Inc., 550 U.S. 398, 421 (2007). Here, the Examiner relies on Malkowski to
teach the clip counter mechanism (see Final Action 4 ( citing Malkowski
,r,r 57, 68, 61, 71, 72) ), as well as the rest of the clip applier itself (see id. at
3--4). Thus, as the Examiner puts it: "Appellant's first problem[] to be
solved (for a user of the clip applier to know how many clips remain in the
clip applier, how many clips have been fired and/or when a final clip of the
plurality of clips has been fired) are not the reasons that the counter is
removable and reusable." Ans. 3.
The problem of non-reusability/non-removability, by contrast, is not
unique to clip appliers; it is common to many medical devices. See Ans. 3
(citing the Specification's and Appeal Brief's discussions of the need to
sanitize, store, and reuse the device). Thus, an ordinarily skilled artisan,
wishing to improve upon the device of Malkowski to make its counter
reusable and/or removable, reasonably would have considered other medical
devices with counters, such as Y odfat. This is no less true ( contra Br. 5)
because Yodfat's particular counter is for liquids instead of solids-it is the
reusability of the counter for which the ordinarily skilled artisan would have
turned to Y odfat-not the nature of the substance being counted-because
Malkowski already teaches a counter for surgical clips. Accordingly, we are
not persuaded that the Examiner is "characterizing the solution to the
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Appeal2017-007771
Application 13/666,317
problem as the problem itself' (Br. 8) or relying impermissibly on hindsight
(id. at 10) in rejecting the claims.
As Appellant has demonstrated no reversible error by the Examiner in
rejecting claim 1, we affirm the rejection. Appellant argues claims 6-9 only
by way of their dependency on claim 1 (see Br. 10-11), and so claims 6-9
fall with claim 1.
CONCLUSION
The Examiner's rejection of claims 1 and 6-9 under 35 U.S.C.
§ 103(a) as unpatentable over Malkowski and Yodfat 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)(l )(iv).
AFFIRMED
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