Ex Parte Heinrich et al

Patent Trial and Appeal Board

Mar 27, 2017

14049694 (P.T.A.B. Mar. 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.
14/049,694 10/09/2013 Russell Heinrich H-US-00375DIV2(203-6039) 7459
50855 7590 03/29/2017
Covidien LP
60 Middletown Avenue
c/o Legal - Mailstop MS 54
North Haven, CT 06473
EXAMINER
HIGHLAND, RACHEL S
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
03/29/2017 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):
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: RUSSELL HEINRICH,
ROBERT J. DESANTIS,
RICHARD D. GRESHAM, and
KENNETH BLIER
Appeal 2015-004200
Application 14/049,694
Technology Center 3700
Before MICHAEL L. HOELTER, JILL D. HILL, and
GORDON D. KINDER, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner’s final rejection of claims 19—23 and 27—30. App. Br. 2. Claims
1—18 have been canceled while claims 24—26 are objected to. App. Br. 2;
Final Act. 7. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2015-004200
Application 14/049,694
THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to a surgical staple for use in
surgical procedures.” Spec. I.1 Claim 19 is the sole independent claim, is
illustrative of the claims on appeal, and is reproduced below:
19. A method of forming a substantially box-shaped staple
through tissue comprising:
providing a substantially box-shaped staple having a
backspan, a first leg extending from the backspan and including
a first bend zone located between the backspan and a first end
of the first leg, and a second leg extending from the backspan
and including a second bend zone located between the backspan
and a second end of the second leg;
driving the first and second ends of the first and second
legs through a tissue section; and
driving a first angled portion of a first anvil laterally in a
direction parallel to the backspan into the first bend zone of the
first leg to bend and divide the first leg into a first traversing leg
portion and a first substantially linear clenching leg portion.
REFERENCES RELIED ON BY THE EXAMINER
Shichman et al. US 5,425,489 June 20, 1995
Smith et al. US 2007/0023474 Al Feb. 1, 2007
THE REJECTIONS ON APPEAL2
Claims 19—23, 29, and 30 are rejected under 35 U.S.C. § 102(b) as
anticipated by Shichman.
1 Appellants’ Specification does not provide line or paragraph numbering.
Accordingly, reference to the Specification will only be made via the page
number.
2 The rejection of claims 24—26 under 35 U.S.C. § 112, second paragraph,
has been withdrawn. See Advisory Action mailed August 22, 2014, pg. 5.
2
Appeal 2015-004200
Application 14/049,694
Claims 27 and 28 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Shichman and Smith.
ANALYSIS
The rejection of claims 19—23, 29, and 30
as anticipated by Shichman
Appellants focus on the limitation “driving a first angled portion of a
first anvil laterally in a direction parallel to the backspan into the first bend
zone of the first leg,” and more particularly on the limitation “in a direction
parallel.”3,4 App. Br. 4. Appellants understand the Examiner is relying on
the teachings of Shichman for this limitation (Final Act. 4); however,
regarding the corresponding anvils, Appellants contend that such anvils “are
pivotally mounted” and as such, do not move in the claimed “parallel”
direction. App. Br. 4; see also App. Br. 6—7; Reply Br. 2—3.
Addressing Shichman’s corresponding anvils (i.e., approximators 40)
the Examiner states, “[although the anvils 40 pivot around the attachment
point, the short distance they traverse while impacting the legs of the staples
is a lateral movement which is parallel to the backspan.” Final Act. 4; see
3 Appellants state, the claim term “parallel” is defined as “extending in the
same direction and at the same distanced apart at every point, so as to never
to meet as lines, planes etc.” Reply Br. 2 (referencing Webster's New World
Dictionary, Third College Edition, Copyright 1991, 1988 by Simon &
Schuster, Inc.).
4 It is noted that Appellants’ claim 19 does not include any qualifying term
associated with the claim term “parallel” (such as, “substantially” which was
used by Appellants to qualify the earlier claim term “box-shaped staple” and
also by the Examiner in ascertaining the scope of this claim phrase (see Final
Act. 4)). However, due to the lack of such a qualifying term with respect to
the claim term “parallel,” we construe claim 19 to mean that which is stated,
i.e., “parallel,” as Appellants have defined that term.
3
Appeal 2015-004200
Application 14/049,694
also Ans. 5—6. As such, according to the Examiner, “the anvils as shown in
the Shichman reference are deemed to move linearly for the short segment
of distance traveled.” Final Act. 4; see also Ans. 5. To buttress this finding,
the Examiner states, “when a pivoting body moves along an arc, there is a
component of lateral translation” and as such, Shichman’s anvils “are also
moving in a direction parallel to the backspan.” Ans. 5; see also Ans. 6.
Appellants’ contend, “the Examiner ignores the recitation ‘in a
direction parallel to the backspan’ and focuses solely on the fact that the
movement of Shichman’s approximators 40 has a lateral component.” App.
Br. 7; see also Reply Br. 2. Appellant is not disputing that Shichman’s
anvils/approximators have a lateral component, “[hjowever, Appellant
respectfully submits that Shichman’s approximators [i.e., the approximators
themselves] do not ever move ‘in a direction parallel to the backspan’ as
required by claim 19.” App. Br. 7. In other words, “Shichman’s
approximators 40 are not driven in a direction parallel to the backspan of the
staple 10,” as claimed. App. Br. 7; see also Reply Br. 2—3.
We agree with Appellants for the reasons stated, i.e., Shichman’s
approximators rotate and are not driven in a direction parallel to the
backspan as claimed. This is further evidenced by the fact that in
Appellants’ device, it is the anvils’ parallel movement, in conjunction with
its angled surfaces 54 and 56, that causes the staples’ clenching leg portions
38 and 44 to bend thereby clenching the staple in place. See Spec. Figs. 5—7.
On the other hand, it is the rotational movement of Shichman’s
approximators 40 that causes staple legs 12 (and associated teeth 17) to bend
and clench the staple in place. See Shichman Figs. 10—12. In effect, the
4
Appeal 2015-004200
Application 14/049,694
operations of Appellants’ device and Shichman’s device rely on different
movements of their respective anvils/approximators to set the staple.
Accordingly, and based on the record presented, we reverse the
Examiner’s rejection of claim 19, and also its dependent claims 20-23, 29,
and 30.
The rejection of claims 2 7 and 28
as unpatentable over Shichman and Smith
In rendering this rejection, the Examiner states, “Shichman teaches
the method of claim 19 above” and relies on Smith for disclosing the
additional limitations recited in claims 27 and 28. Final Act. 7. Appellants
state, “[ejven assuming that Smith is accurately characterized by the
Examiner,” “Smith does not cure the deficiencies of Shichman with regard
to claim 19 as discussed above.” App. Br. 8.
We agree with Appellants. Accordingly, and based on the record
presented, we reverse the Examiner’s rejection of claims 27 and 28 as being
obvious over Shichman and Smith.
DECISION
The Examiner’s rejections of claims 19—23 and 27—30 are reversed.
REVERSED
5