Ex Parte HartoumbekisDownload PDFPatent Trial and Appeal BoardAug 22, 201813666317 (P.T.A.B. Aug. 22, 2018) Copy Citation 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. 2 Appeal2017-007771 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. 3 Appeal2017-007771 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 4 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 5 Copy with citationCopy as parenthetical citation