Ex Parte Horner et alDownload PDFPatent Trial and Appeal BoardAug 25, 201612770387 (P.T.A.B. Aug. 25, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121770,387 90039 7590 Covidien LP Attn: IP Legal 5920 Longbow Drive Mail Stop A36 04/29/2010 08/29/2016 Boulder, CO 80301-3299 FIRST NAMED INVENTOR Glenn A. Horner 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-02313 (203-7169) 9625 EXAMINER SELLMAN, CACHET I ART UNIT PAPER NUMBER 1715 NOTIFICATION DATE DELIVERY MODE 08/29/2016 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 GLENN A. HOMER, CHRISTINA A. OLIVER, and KIM V. BRANDT Appeal2015-001268 Application 12/770,387 Technology Center 1700 Before BRADLEY R. GARRIS, CHRISTOPHER C. OGDEN, and JULIA HEANEY, Administrative Patent Judges. HEANEY, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 request review pursuant to 35 U.S.C. § 134(a) of a decision of the Examiner to reject claims 7-9 of Application 12/770,387. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. BACKGROUND The subject matter on appeal relates to an end effector assembly of an endoscopic surgical instrument. Spec. 1. Representative claim 7 is 1 Appellants identify the real party in interest as Covidien LP. Br. 2. Appeal2015-001268 Application 12/770,387 reproduced from the Claims Appendix of the Appeal Brief as follows (emphasis added): 7. A method of manufacturing a sealing plate of an end effector assembly, comprising the steps of: providing at least one jaw member having a support base, an electrical jaw lead, and a sealing plate coupled to the electrical jaw lead and mounted to the support base, the sealing plate including a tissue engaging surface and an opposing surface; forming a plurality of depressions in the opposing surface of the sealing plate to create a corresponding plurality of stop members projecting outwardly from the tissue engaging surface of the sealing plate; and depositing a ceramic layer atop each stop member of the plurality of stop members to form a plurality of nonconductive stop members configured to control the separation distance between the at least one jaw member and an opposing jaw member. REFERENCES The Examiner relied upon the following prior art in rejecting the claims on appeal: Dycus Inokuti US 2004/0122423 Al US 2004/0049632 Al THE REJECTIONS Jun.24,2004 Mar. 3, 2005 1. Claims 7 and 9 are rejected under 35 U.S.C. § 103(a) as unpatentable over Dycus. 2. Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Dycus and Inokuti. 2 Appeal2015-001268 Application 12/770,387 DISCUSSION Appellants argue for reversal of all rejections on the basis of the limitation of claim 7 italicized above. Appellants do not present distinct arguments for dependent claims 8 and 9. Accordingly, we limit our discussion to claim 7; claims 8 and 9 stand or fall with claim 7. Dycus discloses an endoscopic electrosurgical forceps having an end effector assembly including a pair of opposing jaw members which cooperate to grasp tissue and seal blood vessels. Dycus i-fi-138--40. A non- conductive stop member "associated with one or both of the opposing jaw members ... is designed to control the gap distance between opposing jaw members and enhance the manipulation and gripping of tissue during the sealing and dividing process." Id. i-f l. The Examiner finds that Dycus discloses all of the limitations of claim 7, except that it does not explicitly disclose forming depressions within the opposing surface of the conductive sealing plate so that they project from the tissue engaging surface of the sealing plate, and coating a ceramic layer onto the depressions. Ans. 2. The Examiner determines, however, that it would have been obvious to a person of ordinary skill in the art to use a stamping technique to form the projections and further coat them by spraying a non-conducting material, in order to form the stop members, because Dycus states that those methods can be used alternatively or together, and both methods have the same desired result of forming the stop members. Ans. 3; see Dycus i-fi-170, 72. Appellants argue that the Examiner failed to establish a prima facie case of obviousness because Dycus' stop members and sealing plate are separate structures joined together, and further because Dycus does not describe forming depressions in the underlying surface of the sealing plate to form its stop members. Br. 6-7. Appellants also argue that Dycus teaches 3 Appeal2015-001268 Application 12/770,387 away because it contains a statement that the sealing plate is flat "to avoid current concentrations at sharp edges and to avoid arcing between high points." Br. 7 (citing Dycus i-f 63). We have considered Appellants' arguments, but do not find them persuasive. The Examiner has provided sufficient evidence from Dycus' s disclosure to establish that a person of ordinary skill in the art would have had an apparent reason to form stop members by depressing the opposing surface of the sealing plate, as in a stamping operation (Dycus i-fi-1 66, 72). Further, Dycus does not contain any statement that would have discouraged a person of ordinary skill from forming stop members; the statement relied on by Appellants (id. i-f 63) does not relate to Dycus's stop members. Therefore, Dycus does not teach away. Accordingly, the Examiner did not reversibly err in rejecting claim 7. SUMMARY For the reasons set forth above, we affirm the rejection of claims 7-9 as unpatentable under 35 U.S.C. § 103(a). 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 4 Copy with citationCopy as parenthetical citation