Ex Parte Kasvikis et al

Patent Trial and Appeal Board

Jun 16, 2017

13956887 (P.T.A.B. Jun. 16, 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.
13/956,887 08/01/2013 Dino Kasvikis H-US-01842 7305
CON(203-6700CO
50855 7590
Covidien LP
60 Middletown Avenue
c/o Legal - Mailstop MS 54
North Haven, CT 06473
06/20/2017 EXAMINER
TANNER, JOCELIN C
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
06/20/2017 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 DINO KASVIKIS and KATELYN O’DONNEL
Appeal 2016-005992
Application 13/956,8871
Technology Center 3700
Before FRANCISCO C. PRATS, JOHN E. SCHNEIDER and
DAVID COTTA, Administrative Patent Judges.
COTTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of performing surgery on a hollow organ. The Examiner rejected the claims
on appeal under 35 U.S.C. § 103(a) as obvious.
We affirm.
1 According to Appellants, the real party in interest is Covidien LP, the
ultimate parent of which is Medtronic, PLC. App. Br. 2.
Appeal 2016-005992
Application 13/956,887
STATEMENT OF THE CASE
Claims 33—45, 50, 51, and 53—55 are on appeal. Claim 33 is
illustrative and reads as follows:
33. A method of performing surgery on a hollow organ,
comprising:
providing a surgical stapling instrument having curved
jaws with an inner side and an outer side; and
attaching a clamp to the surgical stapling instrument.
App. Br. 11.
The claims stand rejected as follows:
Claims 33, 36-40 and 55 were rejected under 35 U.S.C. § 103(a) as
obvious over the combination of McGuckin2 and Sekine.3
Claims 34, 35 and 54 were rejected under 35 U.S.C. § 103(a) as
obvious over the combination of McGuckin, Sekine, and Fanous.4
Claim 41 was rejected under 35 U.S.C. § 103(a) as obvious over the
combination of McGuckin, Sekine, Mastri,5 and Swayze.6
Claims 42 and 43 were rejected under 35 U.S.C. § 103(a) as obvious
over the combination of McGuckin, Sekine, and Christoudias.7
2 McGuckin et al., US Patent Publication No. 2002/0143346 Al, published
Oct. 3, 2002 (“McGuckin”).
3 Sekine et al., US Patent Publication No. 2001/0049509 Al, published Dec.
6, 2001 (“Sekine”).
4 Fanous, US Patent Publication No. 2007/0244515 Al, published Oct. 18,
2007 (“Fanous”).
5 Mastri et al., US Patent No. 5,762,256, issued June 9, 1998 (“Mastri”).
6 Swayze et al., US Patent Publication No. 2009/0209946 Al, published
Aug. 20, 2009 (“Swayze”).
7 Christoudias, US Patent No. 5,817,121, issued Oct. 6, 1998
(“Christoudias”).
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Application 13/956,887
Claim 44 was rejected under 35 U.S.C. § 103(a) as obvious over the
combination of McGuckin, Sekine, and Bonadio.8
Claim 45 was rejected under 35 U.S.C. § 103(a) as obvious over the
combination of McGuckin, Sekine, and Shelton.9
Claim 50 was rejected under 35 U.S.C. § 103(a) as obvious over the
combination of McGuckin, Sekine, Chistoudias and Kletschka.10
Claims 51 and 52 were rejected under 35 U.S.C. § 103(a) as obvious
over the combination of McGuckin, Sekine, Christoudias, Kletschka and
Saadat.* 11
Claim 53 was rejected under 35 U.S.C. § 103(a) as obvious over the
combination of McGuckin, Sekine, and Windheuser.12
8 Bonadio et al., US Patent Publication No. 2003/0236549 Al, published
Dec. 25, 2003 (“Bonadio”).
9 Shelton et al., US Patent Publication No. 2008/0210738 Al, published Sep.
4, 2008 (“Shelton”).
10 Kletschka et al., US Patent No. 4,096,864, issued June 27, 1978
(“Kletschka”).
11 Saadat et al., US Patent Publication No. 2006/0258909 Al, published
Nov. 16, 2006 (“Saadat”).
12 Windheuser et al., US Patent Publication No. 2004/0106852 Al,
published June 3, 2004 (“Windheuser”).
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Appeal 2016-005992
Application 13/956,887
OBVIOUSNESS OF CLAIMS 33, 36-40 AND 55 OVER
MCGUCKIN AND SEKINE
McGuckin discloses “endoscopic devices for performing localized
resections of gastro-esophageal lesions.” McGuckin ®jj 1. As shown in
Figure 1 (reproduced below) the devices include a stapling apparatus 10, an
endoscope 20, and an endoscopic grasping device 30. Id. at % 31.
“FIG. 1 shows a perspective view of a system according to an illustrative
embodiment of [McGuckin’s] invention along with a partially cross-
sectional view of a patient showing a target portion of tissue to be resected.”
Id. 1 5. As shown in Figure 19 (reproduced below), “a stapling assembly 16
according to [McGuckin’s] invention may include an endoscope receiving
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Application 13/956,887
lumen 140 through which the endoscope 20 may be slidably inserted.” Id. at
143.
14
FIG. 19
“FIG. 19 shows an alternate embodiment of the system according to
[McGuckin’s] invention with a lateral endoscope receiving lumen.” Id. at 1
25.
Sekine discloses an endoscopic treatment system. As shown in Figure
3 (reproduced below), the system includes “an endoscopic guide tube 15”
that includes a “guide channel 9” through which an endoscope can be
inserted and a “sub channel or forceps guide channel 12” that can be used to
“insert. . . forceps for gripping.” Sekine 127.
“FIG. 2 is a fragmentary sectional view of an endoscopic guide tube
according to a preferred embodiment of [Sekine’s] invention.” Id. at 111.
In finding claims 33, 36-40 and 55 obvious over the combination of
McGuckin and Sekine, the Examiner found that McGuckin disclosed a
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Application 13/956,887
method of performi ng surgery using a surgical devi ce that met all of the
limitations of claim 33 with the exception that McGuckin did not disclose
“the step of attaching the clamp to the surgical stapling instrument.” Final
Act. 3.13 The Examiner found, however, that Sekine disclosed a device in
which an endoscope and a clamp were attached by a guide tube including
two lumens. Id. The Examiner concluded:
it would have been obvious to one of ordinary skill in the art at
the time the invention was made to have provided the method
of McGuckin with the step of attaching the clamp to the
surgical stapling instrument by inserting the clamp within the
second lumen, as taught by Sekine, to provide means to grasp
and manipulate tissue at multiple sites during a single
procedure.
Id. at 3^4.
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 2—11; Final Act. 2—11) and agree
that the claims are obvious over McGuckin and Sekine. We address
Appellants’ arguments below.
Appellants argue claims 33, 36-40 and 55 together as a group. We
designate claim 33 as representati ve of the group.
Appellants argue that inserting a clamp into a lumen of a tube that
contains a surgical device — as disclosed in Sekine — is not “equivalent to
attaching a clamp to a surgical instrument” and thus “simply because Sekine
. . . disclose[s] forceps 18 being insertable through a lumen . . . does not
mean that Sekine discloses attaching the forceps 18 to the lumen.” App. Br.
7. We are not persuaded.
13 Office Action, mailed May 26, 2015.
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Application 13/956,887
Claim 33 requires “attaching a clamp to the surgical slap!in
connect or make part of.” Ans. 10. We see no error in this construction,
which is consistent with the ordinary meaning of “attach.” We note that
nothing in the language of the claim limits the manner in which the clamp
may he attached to the instrument. We further note that the Specification
does not limit the means of attachment. To the contrary, it identifies tabs
and screws as exemplary means of attachment -- introducing these means
using the phrase “such as” — and expressly contemplates attachment “via
other suitable means.” Spec. 19—20. Accordingly, we agree with the
Examiner that the claims embrace the manner of attachment suggested by
the combination of McGuckin and Sekine in which the clamp would be
attached to the surgical instrument using a dual lumen tube.
clamp to a surgical stapling instrument, as claimed.” App. Br. 6. We do not
disagree, but are not persuaded because the rejection was based on the
combination of McGuckin and Sekine, not Sekine alone. One cannot show
nonobviousness by attacking references individually when the rejection is
based on a combination of references. In re Keller, 642 F.2d 413, 425
(CCPA 1981). As discussed above, McGuckin discloses a dual lumen tube
into which a stapling instrument and an endoscope are inserted. As also
discussed above, Sekine discloses a dual lumen tube into which an
endoscope and a clamp are inserted. In view of these combined disclosures,
it would have been obvious to attach a clamp to the surgical device of
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Appeal 2016-005992
Application 13/956,887
McGuckin in the manner commonly disclosed by Sekine and McGuckin —
i.e. through insertion in a lumen.
In their Reply Brief, Appellants argue for the first time that claim 55
is independently patentable because it requires “directly attaching” the
clamp to the surgical stapling instrument. Reply Br. 2. This argument is
waived because it was not included in Appellants’ Appeal Brief. See Ex
parte Nakashima, 93 USPQ2d 1834 (BPAI2010) (informative); Ex parte
Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative) (“Properly
interpreted, the Rules do not require the Board to take up a belated argument
that has not been addressed by the Examiner, absent a showing of good
cause.”); Manual of Patent Examining Procedure § 1205.02. Moreover, we
note that the clamp would be “directly attached” to the stapling apparatus in
the medical device suggested by the combination of McGuckin and Sekine.
The clamp and the stapling apparatus would both be integral parts of the
same medical device and would be separated from each other only by the
means of attachment — i.e. the tube into which both would be inserted.
Accordingly we affirm the Examiner’s decision to reject claims 33, 36—40
and 55.
REJECTIONS OF CLAIMS 34, 35, 41-45, 50, 51, 53 AND 54 OVER
MCGUCKIN, SEKINE AND VARIOUS OTHER ART
Appellants argue the separate rejections of claims 34, 35, 41 45, 50,
51, 53 together, arguing that none of the references cited in addition to
McGuckin and Sekine — i.e. Famous, Swayze, Christoudias, Bonadio,
Shelton, Kletschka, Saadat, and/or Windheuser — cure the deficiencies of
McGuckin and Sekine. App. Br. 8-9. We are not persuaded because, as
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Application 13/956,887
discussed above, we do not consider the combination of McGuckin and
Sekine to be deficient. .v we affirm the Examiner’s
claims 34, 35, 41 45, 50, 51, 53 as obvious.
SUMMARY
For these reasons and those set forth in the Examiner’s Answer and
Final Office Action, we affirm the Examiner’s decision to reject: claims 33,
36-40 and 55 under 35 U.S.C. § 103(a) as obvious over the combination of
McGuckin and Sekine; claims 34, 35 and 54 under 35 U.S.C. § 103(a) as
obvious over the combination of McGuckin, Sekine, and Fanous; claim 41
under 35 U.S.C. § 103(a) as obvious over the combination of McGuckin,
Sekine, Mastri, and Swayze; claims 42 and 43 under 35 U.S.C. § 103(a) as
obvious over the combination of McGuckin, Sekine, and Christoudias; claim
44 under 35 U.S.C. § 103(a) as obvious over the combination of McGuckin,
Sekine, and Bonadio; claim 45 under 35 U.S.C. § 103(a) as obvious over the
combination of McGuckin, Sekine, and Shelton; claim 50 under 35 U.S.C. §
103(a) as obvious over the combination of McGuckin, Sekine, Chistoudias
and Kletschka; claims 51 and 52 under 35 U.S.C. § 103(a) as obvious over
the combination of McGuckin, Sekine, Christoudias, Kletschka and Saadat;
and claim 53 under 35 U.S.C. § 103(a) as obvious over the combination of
McGuckin, Sekine, and Windheuser.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
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