Ex Parte Milliman

Board of Patent Appeals and Interferences

Nov 28, 2011

11081373 (B.P.A.I. Nov. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte Keith L. Milliman
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Appeal 2009-010180
Application 11/081,373
Technology Center 3700
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Before: RICHARD E. SCHAFER, JAMESON LEE, and
SALLY C. MEDLEY, Administrative Patent Judges.

SCHAFER, Administrative Patent Judge.

DECISION ON APPEAL
Applicant appeals from the Final Rejection of Claims 1-3 and 12. 35
U.S.C. §§ 6(b) and 134(a). We reverse.
The Examiner entered two rejections:
1. Claims 1-3 under 35 U.S.C. § 102(b) as anticipated by Viola;1
and

1 U.S. Patent 5,915,616.
2

2. Claim 12 under 35 U.S.C. § 103(a) as obvious over the
combined teachings of Viola and Clanton.2
The Invention
Applicant invented an improved surgical stapler used in anastomosis
procedures –the joining of the end sections of tubular tissue. Written
Description, 1. The stapler includes anvil and shell assemblies which bring
the ends of the tubular tissue together and secure the joined sections with
staples. An approximation mechanism controls the axial position of the
anvil with respect to a shell assembly. The approximation mechanism
includes a drive member, an extension mechanism and a rotatable knob.
The knob is connected to the drive member. Rotation of the knob causes the
drive member to move axially over a “first distance.” The extension
mechanism provides the mechanical connection between the drive member
and the anvil shaft. Claim 1 specifies the extension mechanism by its
function of causing the anvil shaft to move a “second distance” which is
longer than the first distance:
wherein the extension mechanism operably connects the
drive member to the anvil shaft such that axial movement
of the drive member over the first distance effects axial
movement of the anvil shaft over a second distance
which is greater than the first distance.
App. Brief, p. 12, Claim 1. 3

2 U.S. Patent 4,665,917.
3Claim 1 in its entirety provides :
A surgical stapling device comprising:
an elongated body portion;
a distal head portion including an anvil assembly and a shell
assembly supported on the distal end of the elongated body portion, the
anvil assembly including an anvil head assembly and an anvil shaft, the
shall [sic, shell] assembly supporting a plurality of staples, the anvil
3

With respect to the “longer” distance, Applicant explains that the
operation of the drive member and the extension mechanism results in the
distance moved by the anvil shaft being amplified compared to the distance
moved by the drive member. Written Description, 21: 18-19. Similarly,
with respect to the embodiment of Figures 18-33, Applicant notes that the
distance moved by the anvil equals the distance moved by the drive member
(drive screw 238) plus the distance moved by the extension mechanism
(extender 246) :
[T]he distance of travel of anvil head assembly 249 in
relation to shell assembly 228 will be equal to the
distance drive screw 238 moves axially plus the distance
extender 246 moves axially in relation to screw
extension 240.
Written Description, 26: 4-7.
Claims 1-3
The examiner found that the subject matter of Claims 1-3 was
anticipated by Viola’s teachings. With respect to the greater length of the
second distance compared to the first distance, the Examiner found :
[I]t should be noted that the claims state, "axial
movement of the drive member over the first distance
effects axial movement of the anvil shaft over a second
distance." Referring to Fig. 11 in Viola, the drive
member designated 80 moves axially when the knob 18
is rotated. The drive member can move over a first

assembly being movable in relation to the shell assembly between spaced
and approximated positions; and
an approximation mechanism including a rotatable approximation
knob, a drive member, and an extension mechanism, the approximation
knob being operably connected to the drive member and being actuable to
effect axial movement of the drive member over a first distance;
wherein the extension mechanism operably connects the drive
member to the anvil shaft such that axial movement of the drive member
over the first distance effects axial movement of the anvil shaft over a
second distance which is greater than the first distance.
App. Brief, p. 12 (emphasis added).
4

distance (traveled along pitch 84) and a second distance
(including pitch 84 and 86). This effects axial movement
of the anvil shaft over that second distance (see col. 9
lines 34-52). Therefore, Viola anticipates the claims.
Note that the claims are not restrictive to the anvil shaft
moving relative to the drive member.
Ex. Ans., 4, last paragraph.
Viola
The Examiner relied on Viola’s Figure 11, reproduced below.

Figure 11 shows the approximation mechanism of an embodiment of
Viola’s stapler. Viola’s drive member 80 includes a helical groove having a
dual pitch. Viola Figure 11, items 84 and 86, and 9:24-25. Pitch 84 is
greater than pitch 86. Viola 9: 25-26. Member 80 is secured to one end of
rod 36. The other end is secured to member 34. Figure 11. Member 34 is
connected to and controls the position of the anvil assembly. Viola, 7:31-39.
The rotation of drive member 80 causes it to move axially, in turn causing
the axial movement of rod 36, member 34 and the anvil assembly. Figure
11. See also Viola, 7:31-39. The different pitches 84 and 86 of the drive
5

member 80 provide for course and fine movement of the member 80 and
course and fine adjustment of the anvil head, respectively. Viola, 9:24-30.
Analysis
In the Examiner’s view, the “first distance” is the distance moved by
Viola’s member 80 when it moves along the first pitch 84 and the second
distance is the total distance moved by member 80 along the combined
distance of movement along the first pitch 84 and the second pitch 86. Ex.
Ans. 4, last ¶.
We do not agree that the structure shown by Viola meets the
functional limitation “that the axial movement of the drive member over the
first distance effects axial movement of the anvil shaft over a second
distance which is greater than the first.” The movement of Viola’s member
80, including the movement along both pitch 84 and 86, corresponds to the
“first distance” in Claim 1. The “second distance” is the distanced moved
by the anvil (and anvil shaft), which in Viola’s device moves the same
distance as the member 80. We agree with Applicant that
the overall axial distance moved by [Viola’s] anvil
member 26 will be equal to the overall axial distance
moved by the cam member 80, despite any variation in
the rate of movement effectuated by the differing
dimensions of the first pitch 84 and the second pitch 86.
App. Brief, 7. Viola does not teach an extension mechanism that causes the
anvil shaft to move a greater distance than the distance moved by the
member 80. Viola has not been shown to anticipate the subject matter of
Claims 1-3.
We reverse the rejection of Claims 1-3.
6

Claim 12
Claim 12 was rejected under 35 U.S.C. § 103(a) as unpatentable over
the combined teachings of Viola and Clanton. Claim 12 depends from
Claim 1and incorporates the Claim 1 subject matter. Applicant argues that
the rejection of Claim 12 should be reversed because the combined
teachings of the references do not suggest a stapler that performs the
amplified distance function required by Claim 1. App. Brief, 9.
The examiner does not rely on Clanton to teach the amplified distance
function --relying on Viola to supply that teaching. In light of (1) our
finding that Viola does not teach this function, and (2) an absence of a
rationale explaining why the function would have been obvious from the
combined teachings, a prima facie case of obviousness has not been made
out.
The rejection of Claim 12 is reversed.
DECISIONS
We reverse the rejections of Claims 1-3 and 12 under 35 U.S.C.
§§ 102(b) and 103(a).
REVERSED

KMF