Ex Parte Marczyk et al

Patent Trial and Appeal Board

Dec 29, 2016

13371836 (P.T.A.B. Dec. 29, 2016)

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.
13/371,836 02/13/2012 Stanislaw Marczyk H-US-01635CON
(203-6540CO
4714
50855 7590
Covidien LP
555 Long Wharf Drive
Mail Stop 8N-1, Legal Department
New Haven, CT 06511
EXAMINER
TECCO, ANDREW M
ART UNIT PAPER NUMBER
3721
NOTIFICATION DATE DELIVERY MODE
01/03/2017 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):
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 STANISLAW MARCZYK and RUSSELL PRIBANIC
Appeal 2015-003203
Application 13/371,836
Technology Center 3700
Before LINDA E. HORNER, JILL D. HILL, and THOMAS F. SMEGAL,
Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Stanislaw Marczyk and Russell Pribanic (Appellants)1 seek our
review under 35 U.S.C. § 134 of the Examiner’s decision, as set forth in the
Final Action dated April 29, 2014 (“Final Act.”), rejecting claims 1-13.2
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Covidien LP as the real party in interest. Appeal Br. 1.
2 The Final Action incorporates the rejections as articulated in the Non-Final
Action, dated November 18, 2013 (“Non-Final Act.”). Final Act. 2-3.
Appeal 2015-003203
Application 13/371,836
CLAIMED SUBJECT MATTER
Appellants’ claimed subject matter relates to “an articulating
mechanism for use with an endoscopic surgical stapling apparatus.” Spec. 1.
Claims 1 and 9 are independent. Claim 1 is illustrative of the subject matter
on appeal and is reproduced below.
1. An articulation mechanism for a surgical stapling
apparatus comprising:
a housing;
a rotatable shaft having an inner end and an outer end, the
shaft extending through the housing;
an articulation member mounted on the outer end of the
shaft;
a substantially flat rotatable plate, positioned within the
housing and fixedly connected to the inner end of the shaft, the
rotatable plate defining a spiral slot;
a translation member mounted for longitudinal movement
within the housing; and
a pin assembly affixed to the translation member and
extending into the spiral slot such that rotation of the rotatable
plate effects longitudinal movement of the translation member
within the housing.
REJECTIONS
The Non-Final Action included the following grounds of rejection:
1. Claims 1-5 under 35 U.S.C. § 103(a) as unpatentable over
Marczyk (US 2008/0083811 Al, published April 10, 2008) and
Otteman (US 6,351,907 Bl, issued March 5, 2002).
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Appeal 2015-003203
Application 13/371,836
2. Claims 6-13 under 35 U.S.C. § 103(a) as unpatentable over
Marczyk, Otteman, alone or further in view of Huitema
(US 5,704,534, issued January 6, 1998).
ANALYSIS
First Ground of Rejection
Appellants argue the claims subject to the first ground of rejection as a
group. Appeal Br. 3-9. We select claim 1 as representative of the group.
Claims 2-5 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner found that Marczyk discloses an articulation
mechanism having a rotatable plate connected to the inner end of a rotatable
shaft and a translation member mounted for longitudinal movement.
Non-Final Act. 5. The Examiner found that Marczyk’s rotatable plate does
not define a spiral slot and its translation member does not have a pin
assembly affixed thereto extending into the spiral slot such that rotation of
the rotatable plate effects longitudinal movement of the translation member.
Id. The Examiner looked to Otteman to disclose such a rotatable plate with
a spiral slot and a pin assembly affixed to the translation member. Id. at 6.
The Examiner determined that it would have been obvious to one having
ordinary skill in the art at the time of the invention “to modify the rotatable
plate of Marczyk with the spiral grooved plate and pin arrangement of
Otteman” as an alternative way of accomplishing the task of converting
rotation input into longitudinal movement of an internal component so as to
“provide the user with a preferred movement profile such as those depicted
in [F]ig. 7 of Otteman.” Id.
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Appeal 2015-003203
Application 13/371,836
Appellants contend the Examiner erred in this rejection because
“Otteman’s focus adjustment mechanism for a telescopic rifle sight is non-
analogous art to the claimed invention.” Appeal Br. 7. “A reference
qualifies as prior art for an obviousness determination under § 103 only
when it is analogous to the claimed invention.” In re Klein, 647 F.3d 1343,
1348 (Fed. Cir. 2011). “Two separate tests define the scope of analogous
prior art: (1) whether the art is from the same field of endeavor, regardless
of the problem addressed and, (2) if the reference is not within the field of
the inventor’s endeavor, whether the reference still is reasonably pertinent to
the particular problem with which the inventor is involved.” Id. (quoting In
re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). The Examiner determined
that “Otteman is reasonably pertinent to the particular problem with which
the Appellants] [were] concerned. This is namely the problem of
converting a rotational articulation knob or lever movement to a linear
output so as to adjust the setting of a device.” Ans. 3. Appellants argue that
“Otteman’s focus adjustment mechanism [that] functions to effect linear
movement of an objective lens portion 26 of a telescopic rifle sight to focus
the rifle sight... is not reasonably pertinent to the problem of providing
articulation of a tool assembly at the distal end of a surgical stapling
apparatus.” Appeal Br. 7.
“A reference is reasonably pertinent if, even though it may be in a
different field from that of the inventor’s endeavor, it is one which, because
of the matter with which it deals, logically would have commended itself to
an inventor’s attention in considering his problem.” In re Clay, 966 F.2d
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Appeal 2015-003203
Application 13/371,836
656, 659 (Fed. Cir. 1992). The problem addressed by the invention is how
to effect articulation of a tool assembly through use of an articulation lever,
wherein rotation of the articulation lever is converted to linear movement of
a component within a housing to cause articulation of the tool assembly.
Spec. 3. Thus, the purpose of Appellants’ invention is to effect articulation
of a tool assembly through the use of an articulation lever. Otteman relates
generally to a spiral cam mechanism for rifle sight adjustment. Otteman,
Title. In particular, Otteman relates to a mechanism within a rifle sight for
effecting linear movement of an objective lens portion 26 of the sight
through rotational movement of a focus control device 64. Otteman, Figs. 3,
5, col. 5,11. 45-63. Thus, the purpose of Otteman is to provide a mechanism
to effect linear movement of a component within a housing by rotational
movement of a component outside of the housing.
Based on these findings as to the purposes of the claimed invention
and Otteman, we agree with the Examiner that Otteman teaches an
alternative way of “having user rotational input result in the longitudinal
movement of an internal component” (Non-Final Act. 6), and that this
teaching is pertinent to the particular problem facing Appellants, viz,
“converting a rotational articulation knob or lever movement to a linear
output so as to adjust the setting of a device.” Ans. 3. For these reasons, we
find Otteman is analogous art to the claimed invention.
Appellants’ argument is not persuasive because Appellants define the
problem facing the inventor too narrowly as “providing articulation of a tool
assembly at the distal end of a surgical stapling apparatus.” Appeal Br. 7.
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Appeal 2015-003203
Application 13/371,836
This definition of the problem confines the relevant art to the Appellants’
field of endeavor, and thus, conflates the first test for analogous art with the
second. Further, as demonstrated by Marczyk, the prior art already had
devised a mechanism to provide articulation of a tool assembly at the distal
end of a surgical stapling apparatus. Marczyk, Figs. 81-84. Thus, at the
time of the invention, the problem facing Appellants was not how to provide
articulation to the tool assembly. Rather, the problem facing Appellants was
how to improve upon the articulation mechanism disclosed in Marczyk. As
such, Appellants have failed to demonstrate that Otteman is not analogous
art to the claimed invention.
Appellants further argue the Examiner erred in rejecting claim 1
because “[tjhere appears to be no rational basis to modify the articulation
mechanism of Marczyk in view of the focus adjustment mechanism of
Otteman” because “Marczyk does not even identify a problem which
requires correction.” Appeal Br. 8; id. at 9 (Appellants arguing that
“[wjhereas Marczyk provides an articulation mechanism that articulates a
tool assembly between a plurality of discrete positions, Otteman provides a
focus control device for a telescope rifle sight which moves a lens through a
continuous range of motion.”).
As for the indexed rotational movement of Marczyk’s knob, such
indexed movement is provided by notches 434 in an outer circumferential
surface of flange 414 of articulation spindle 404, which is engaged by
plunger 436. Marcyzk, para. 47. The proposed modification to add a spiral
slot to articulation spindle 404 and a pin assembly to second articulation link
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Appeal 2015-003203
Application 13/371,836
406 does not necessitate any elimination or modification to the incremental
movement mechanism of Marczyk. The idea that a person having ordinary
skill in the art would ignore the spiral slot and pin assembly teaching of
Otteman because Otteman does not provide for indexed rotation of the knob
does not make sense. “A person of ordinary skill is also a person of ordinary
creativity, not an automaton.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398,
421 (2007).
Further, Appellants’ arguments do not address the Examiner’s stated
reason to combine, or explain why the Examiner’s reason is without rational
underpinning. The Examiner explained that “Otteman simply teaches an
alternative rotating plate with a spiral slot and pin which can result in
alternative movement profiles for the linearly manipulated element” and that
“this modification would provide a user with different or preferred rates of
movement for the articulation of the device.” Ans. 3; see id. at 4 (Examiner
finding that “Otteman also teaches the advantages of using a spiral slot and
pin with the plate component”). “[I]f a technique has been used to improve
one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.” KSR, 550
U.S. at 417. In this case, the modification to Marczyk with the spiral groove
cam and pin assembly of Otteman is nothing more than the predictable use
of prior art elements according to their established functions. See id.
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Application 13/371,836
Appellants add that while Marczyk’s articulation mechanism provides
indexed rotational movement of a spindle to provide articulation of a tool
assembly via linear movements of an intermediate link, Otteman’s
adjustment mechanism translates rotational movement of a focus control
knob into linear movement of an objective assembly via a linkage. Reply
Br. 2. This argument does not convince us that the proposed modification of
Marczyk’s articulation mechanism with the teaching of Otteman was in
error. In both Marczyk and Otteman, the prior art mechanisms translate
rotational movement of an external knob or lever into linear movement of
the internal, intermediate linkage component. It is of no moment that the
linkage in one case effects articulation of the end component, while the
linkage in the other case effects linear movement of the end component.
The Examiner relied on Otteman for teaching the mechanism to convert
rotational movement to linear movement.
For these reasons, Appellants have not demonstrated error in the
Examiner’s rejection of claim 1. Accordingly, we sustain the rejection of
claim 1, and claims 2-5 which fall with claim 1, under 35 U.S.C. § 103(a) as
unpatentable over Marczyk and Otteman.
Second Ground of Rejection
Appellants rely on the arguments presented against the combination of
Marczyk and Otteman with respect to claim 1 in support of the patentability
of claims 6-13 over Marczyk, Otteman, and Huitema. Appeal Br. 8-9
(Appellants argue that Huitema does not cure the deficiencies of Marczyk
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Appeal 2015-003203
Application 13/371,836
and Otteman with respect to claim 1). Having found that Appellants
demonstrated no deficiencies in the rejection of claim 1, we likewise sustain
the rejection of claims 6-13 under 35 U.S.C. § 103(a) as unpatentable over
Marczyk, Otteman, and Huitema.
DECISION
The decision of the Examiner to reject claims 1-13 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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