Ex Parte Newth et al

Patent Trial and Appeal Board

Feb 8, 2016

12061350 (P.T.A.B. Feb. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/061,350 04/02/2008
33109 7590 02/10/2016
Womble Carlyle Sandridge & Rice, LLP
Attn.: IP Docketing
P.O. Box 7037
Atlanta, GA 30357-0037
FIRST NAMED INVENTOR
Joshua M. 0. Newth
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.
220 8317
EXAMINER
LAUER, CHRISTINA C
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
02/10/2016 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):
IPDocketing@wcsr.com
docketing@cardica.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSHUA M. 0. NEWTH, BERNARD A. HAUSEN,
and BRYAND. KNODEL
Appeal2013-005778
Application 12/061,3 50
Technology Center 3700
Before MICHELLE R. OSINSKI, ERIC C. JESCHKE, and
MARK A. GEIER, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Joshua M. 0. Newth et al. (Appellants) 1 appeal under 35 U.S.C. § 134
from the Examiner's final decision rejecting claims 1-7. Claims 8-22 have
been withdrawn. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is Cardi ca, Inc. Br. 3.
Appeal2013-005778
Application 12/061,350
THE CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim on appeal, is reproduced below
and is representative of the claimed subject matter on appeal.
1. A medical device for closing an opening in tissue, comprising:
a staple including a plurality of tines, wherein said staple
is deformable from an initial configuration to a splayed
configuration and then a closed configuration; and
a shuttle fixed to and integral with said staple, wherein said
shuttle includes a weakened area, the entirety of said weakened
area located proximal to said staple, wherein said weakened area
is breakable to separate said staple from said shuttle.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Mazzocchi
Hess
US 6,793,664 B2
US 7,794,475 B2
REJECTIONS 2
Sept. 21, 2004
Sept. 14, 2010
I. Claims 1and5-7 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Mazzocchi. Final Act. 3--4.
II. Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Mazzocchi. Id. at 4.
III. Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Mazzocchi and Hess. Id. at 5.
2 The rejection of claims 1-7 under 35 U.S.C. § 112, first paragraph as
failing to comply with the written description requirement (Final Act. 2) has
been withdrawn by the Examiner and is not before us on appeal (Ans. 2).
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Application 12/061,350
OPfNION
Rejection I
The Examiner and Appellants disagree as to whether Mazzocchi
discloses "a shuttle fixed to and integral with [a] staple" as required by claim
1. The Examiner found that Mazzocchi' s retaining stand 404 is fixed to and
integral with clip 400 in that "both portions can be considered to be integral
in use, as they are part of the same device." Final Act. 3. The Examiner
elaborates that "the elements are part of a single unit" in that they are
"affixed" to each other. Ans. 3. The Examiner's finding is based on an
interpretation of "integral" as "of, pertaining to, or belonging as part of the
whole" or "consisting or composed of parts that together constitute a whole"
or "formed as a unit with another part." Id. at 2-3 (quoting Dictionary.com
and Merriam-Webster.com).
Appellants oppose the Examiner's interpretation of "integral."
Appellants do not propose a specific alternative construction for this term,
but argue that the Examiner's interpretation is not consistent with the
Specification. Br. 6 (citing Spec. i-fi-137, 46, 48) (contending that the
Specification contrasts the quality of being "integral" from "mere
'affixation"').
\Vhen claim terminology is construed in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language '""in
light of the specification as it would be interpreted by one of ordinmy skill in
the art."' In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004) (quoting In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990)). This
approach produces claims with only justifiable breadth. In re Yamamoto,
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Application 12/061,350
740 F.2d 1569, 1571 (Fed. Cir. 1984). Because applicants may amend
claims to narrow their scope, a broad construction during prosecution creates
no unfairness to applicants. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d at
1364. We look to the Specification to see whether it describes the quality of
being "integral" in a way that would render the Examiner's proposed
interpretation of "integral" unreasonable.
Appellants point us to the three instances in the Specification-
paragraphs 48, 46, and 37-in which the term "integral" is discussed. First,
paragraph 48 of the Specification recites: "The shuttle 134 may be fixed to
the staple 24 by welding, by adhesive, by friction fitting, and/or by any other
or additional suitable structure, mechanism or method. Alternately, the
shuttle 134 and the staple 24 may be fabricated as a single integral
structure." Spec. i-f 48. We are not persuaded that this reference in the
Specification precludes interpreting two elements fixed to each other as an
integral structure. Rather, we determine that the better reading of this
portion of the Specification is that it specifically contrasts a "single integral
structure" (id. (emphasis added)) with two elements fixed together by some
structure, mechanism, or method. We do not, based on this portion of the
Specification, equate "integral" with a single, unitary structure. Notably, the
claims do not recite that the shuttle and staple are fabricated as a single
integral structure.
Second, paragraph 46 of the Specification recites "the staple 24 is
fabricated integrally as a single part, and the tines 26 are individual portions
of that single part." Id. i-f 46. As an initial matter, we note that this portion
of the Specification relates to the staple itself, as opposed to the connection
between the staple and the shuttle. In any event, we remain unpersuaded
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Application 12/061,350
that the Specification precludes interpreting two elements fixed to each other
as an integral structure based on this passage in particular. This passage
refers specifically to the staple being fabricated "integrally as a single part"
(emphasis added). We determine that the entire recitation "integrally as a
single part" might be considered to limit the staple to a unitary or one-piece
construction, but that the term "integrally" alone would not be sufficient to
do so. See, e.g., Advanced Cardiovascular Sys. Inc. v. Scimed Life Sys. Inc.,
887 F.2d 1070, 1074 (Fed. Cir. 1989) (nothing of record limited "integral" to
mean "of one-piece" construction); In re Morris, 127 F.3d 1048, 1055-56
(Fed. Cir. 1997) (recognizing "numerous cases in which the word 'integral'
had been interpreted broadly to encompass multi-piece structures").
Third, paragraph 37 of the Specification recites that "[t]he end
effector 4 may include one or more separate components that are fabricated
separately and then connected to the tool shaft 6, or may be fabricated
integrally with the distal end of the tool shaft 6." Spec. i-f 37. Again, as an
initial matter, we note that this particular discussion in the Specification
relates to the connection between the end effector and tool shaft, as opposed
to the shuttle and staple as recited in the claims. In any event, we remain
unpersuaded that the Specification precludes interpreting two elements fixed
to each other as an integral structure based on this passage in particular.
Rather, we determine that this reference in the Specification may be viewed
as merely contrasting (i) separate or independent fabrication of components
for the end effector from the tool shaft for subsequent connection to the tool
shaft versus (ii) cohesive or interrelated fabrication of components for the
end effector together with the distal end of the tool shaft, the components
and tool shaft together constituting a whole.
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Application 12/061,350
We determine that the passages in the Specification identified by
Appellants do not clearly limit the meaning of "integral" so as to render the
Examiner's broad interpretation unreasonable. For the foregoing reasons,
we are not persuaded of error in the Examiner's interpretation of "integral"
as extending to two elements fixed to each other and together constituting a
whole, nor the Examiner's finding that Mazzocchi discloses "a shuttle fixed
to and integral with [a] staple" as required by claim 1. We sustain the
Examiner's rejection, under 35 U.S.C. § 102 (b), of independent claim 1,
and dependent claims 5-7, for which Appellants rely on the same arguments
and reasoning as in connection with independent claim 1. See Br. 6.
Rejections II and III
Claims 2--4 depend from claim 1. The Examiner rejects, under
35 U.S.C. § 103(a), claim 2 as unpatentable over Mazzocchi and claims 3
and 4 as unpatentable over Mazzocchi and Hess. Final Act. 4--5. Appellants
rely on the same arguments and reasoning that we found unpersuasive for
independent claim 1, as described supra. See Br. 6-7. For the foregoing
reason, we sustain the rejection, under 35 U.S.C. § 103(a), of: claim 2 as
unpatentable over Mazzocchi and claims 3 and 4 as unpatentable over
Mazzocchi and Hess.
DECISION
The Examiner's decision to reject claims 1-7 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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