11711979 (B.P.A.I. Feb. 23, 2012)

Ex Parte Hueil et al

Board of Patent Appeals and InterferencesFeb 23, 2012

11711979 (B.P.A.I. Feb. 23, 2012)

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. 11/711,979 02/28/2007 Joseph C. Hueil END5675USCIP1/050504CIP1 7902 92223 7590 02/23/2012 K&L Gates LLP 210 SIXTH AVENUE PITTSBURGH, PA 15222-2613 EXAMINER CHUKWURAH, NATHANIEL C ART UNIT PAPER NUMBER 3721 MAIL DATE DELIVERY MODE 02/23/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JOSEPH C. HUEIL, JEFFREY S. SWAYZE, and FREDERICK E. SHELTON IV ____________ Appeal 2010-003672 Application 11/711,979 Technology Center 3700 ____________ Before STEVEN D.A. MCCARTHY, MICHAEL C. ASTORINO, and JAMES P. CALVE, Administrative Patent Judges. CALVE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the decision of the Examiner rejecting claims 1-3, 6-13, and 16-18 under 35 U.S.C. § 103(a) as unpatentable over Bilotti (US 2003/0178465 A1; pub. Sep. 25, 2003) and Vidal (US 5,535,935; iss. July 16, 1996), and claims 10-13 under 35 U.S.C. § 103(a) as unpatentable over Green (US 4,767,044; iss. Aug. 30, 1988) and Vidal. We have jurisdiction under 35 U.S.C. § 6. We REVERSE. Appeal 2010-003672 Application 11/711,979 2 THE INVENTION Claim 1, reproduced below with emphasis added, illustrates the claimed subject matter on appeal: 1. A surgical stapling device comprising an end effector that comprises: a circular anvil having a staple forming surface; a plurality of staples facing the staple forming surface of the anvil, each staple comprising a main portion and two prongs, wherein the two prongs each comprise a first end and a second end, wherein the first ends are connected to opposite ends of the main portion, and wherein the two prongs extend nonparallelly from the main portion; and a staple driver assembly comprising a plurality of staple drivers, wherein each staple driver supports one of the plurality of staples and is configured such that, when the staple driver assembly is actuated, each staple driver drives the staple into the staple forming surface of the anvil, wherein a first quantity of the staples have a first pre-deformation height, measured from a lower surface of the main portion to the second end of the first prong, and a second quantity of the staples have a second pre-deformation height, measured from a lower surface of the main portion to the second end of the first prong, wherein the first height is less than the second height, such that when the staple driver assembly is actuated, the first quantity of staples have a different formed staple length than the second quantity of staples. ANALYSIS Claims 1-3, 6-13, and 16-18 as obvious over Bilotti and Vidal The Examiner found that Bilotti discloses a surgical stapling device including a plurality of staple drivers 36, 38, 39 having different heights as shown in Figures 3 and 4. Ans. 3, 4. The Examiner found that the stepped Appeal 2010-003672 Application 11/711,979 3 drivers 36, 38, 39 support staple main surfaces (i.e., staple crowns) at different pre-deformation heights, which provides staples with different pre- deformation heights. Ans. 3, 4, 7. We agree with Appellants that Bilotti does not disclose staples with different pre-deformation heights as called for in independent claims 1 and 10. Br. 14, 16. The Examiner’s findings are not consistent with the plain language of those claims, which recite a pre-deformation height that is “measured from a lower surface of the main portion to the second end of the first prong.” In other words, the claimed pre-deformation height is the length of a staple prong as measured from the bottom surface of the staple main portion (i.e., the staple crown) to the end of the prong (i.e., the staple tip).1 As such, we cannot sustain the rejection of claims 1 and 10 or their dependent claims 2, 3, 6-9, 11-13, and 16-18 as obvious over Bilotti and Vidal. Claims 10-13 as obvious over Green and Vidal The Examiner found that Green discloses stepped staple drivers 54a, 54b that support a staple main surface at different pre-deformation heights. Ans. 5 (citing fig. 23). The Examiner also found that Green discloses staples with different pre- and post-deformation heights. Ans. 8 (citing figs. 11-16). We agree with Appellants that Green’s disclosure of fastener drivers of different heights in Figure 23 does not disclose staples with different pre- deformation heights as called for in claim 10. Br. 20-21. The Examiner’s findings are inconsistent with the plain language of claim 10 for the reasons 1 Appellants disclose staple drivers have different heights (Spec. [0065- 0067]; figs. 44-48), but claims 1 and 10 recite a plurality of staple drivers without regard to the relative height of the drivers. Appeal 2010-003672 Application 11/711,979 4 discussed supra regarding Bilotti’s stepped drivers. Figures 11-16 of Green disclose how staples are formed but do not disclose staples with different pre-deformation heights. As such, we cannot sustain the rejection of claim 10 or its dependent claims 11, 12 and 13 as obvious over Green and Vidal. DECISION The Examiner’s decision to reject claims 1-3, 6-13 and 16-18 is REVERSED. REVERSED mls