Ex Parte Racenet et alDownload PDFBoard of Patent Appeals and InterferencesJun 15, 201010424606 (B.P.A.I. Jun. 15, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte DAVID C. RACENET, HANSPETER BAYER, and SCOTT CUNNINGHAM ____________ Appeal 2009-004197 Application 10/424,606 Technology Center 3700 ____________ Decided: June 16, 2010 ____________ Before WILLIAM F. PATE, III, MICHAEL W. O’NEILL, and KEN B. BARRETT, Administrative Patent Judges. O’NEILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE David C. Racenet et al. (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims 1, 2, 9, 14, 15, and 23 Appeal No. 2009-004197 Application No. 10/424,606 2 under 35 U.S.C. § 103(a) as obvious over Takase (5,221,036, issued Jun. 22, 1993) in view of Cook (US 5,342,396, issued Aug. 30, 1994); claims 1, 3, 8- 10, and 12 under 35 U.S.C. § 103(a) as obvious over Esposito (5,350,400, issued Sep. 27, 1994) in view of Takase; claims 5-7 as obvious over Esposito in view of Takase as applied to claims 1 and 3, and further in view of DeFonzo (US 5,497,933, issued Mar. 12, 1996); claims 1, 9, 13, and 16- 19 as obvious over DeFonzo in view of Cook; and claims 24-28, 30-33, and 36 as obvious over Posnack (US 2,153,874, issued Apr. 11, 1939) in view of Cook. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. The Invention The claims on appeal relate to directionally biased formable surgical staples. Spec. 1:9-11. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A cartridge for use with a surgical stapler, the cartridge having a plurality of individual directionally biased surgical staples therein and associated pushers for ejecting the staples from the cartridge, each of the staples being supported within the cartridge in spaced relation from adjacent staples and each of the staples comprising: a backspan; a pair of deformable legs depending from the backspan, the legs configured to come into contact with anvil pockets for formation of the staple; each leg including a bending region, the bending region having a base dimension and a height dimension, the base dimension being greater than the height dimension, wherein the bending region defines a moment of inertia ratio of between about 1.1 and about 3.0; and wherein the bending region has a substantially uniform cross-section along substantially the length of the pair of deformable legs. Appeal No. 2009-004197 Application No. 10/424,606 3 The Rejection The Examiner posits that because Cook and Esposito teach that moments of inertia of staple cross-sections can be varied as desired in order to produce various stiffnesses, it would have been obvious to a person of ordinary skill in the art “to configure the moment of inertia ratio of the bending regions to about 1.1 to about 3.0 [or 2.0 to 2.7], since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimal or workable ranges involves only route skill in the art.” Ans. 4; see 5-7 and 9-11. Contentions Appellants contend, inter alia, that the Examiner has no basis for this position based on the teachings of Cook and Esposito. See App. Br. 10-12. OPINION Issues The determinative issue joined in this appeal is: Whether the Examiner has met the initial burden of demonstrating that the prior art meets the general conditions of the claims. Pertinent Facts Takase, Cook, Esposito, Posnack, and DeFonzo fail to disclose any ranges for moment of inertia for the disclosed staples. Esposito does provide moment of inertia values for its staple embodiments. Analysis The Examiner has generally stated correctly the status of law that where the general conditions of the claim are met “it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Appeal No. 2009-004197 Application No. 10/424,606 4 Aller, 220 F.2d 454, 456 (CCPA 1955). However, the Examiner fails to provide findings of fact and analysis to demonstrate that the prior art meets the general conditions of the claims; or, as Appellants argue, the Examiner has provided no basis for the Examiner’s assertion. In this case, the Examiner’s utilization of the principle pronounced in Aller is tantamount to using a per se rule of obviousness which is legally incorrect. See In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995) (reliance on per se rules of obviousness that eliminate the need for fact-specific analysis of claims and prior art is legally incorrect). None of the prior art used to reject the claims teaches a range of values for the moment of inertia for the staple’s cross-sectional area. Looking most favorably to the Examiner’s position, the taught moment of inertia range from a review of the prior art would be zero to infinity, and the prior art teaches reducing the moment of inertia by reducing the modulus of elasticity. Esposito is the only piece of prior art that provides any values for moment of inertia. However, the Examiner provides no findings, analysis, or explanation as to whether Esposito’s values are within or near the claimed range values. As such, the Examiner provides no findings or analysis to permit the Examiner to properly find that the prior art meets the general conditions of the claimed invention and thus conclude that the claimed invention is prima facie obvious. CONCLUSION The Examiner has not met the initial burden of demonstrating that the prior art meets the general conditions of the claims. Appeal No. 2009-004197 Application No. 10/424,606 5 DECISION The Examiner’s decision to reject the claims as obvious is reversed. REVERSED mls CHIEF PATENT COUNSEL U.S. SURGICAL A DIVISION OF TYCO HEALTHCARE GROUP LP 150 GLOVER AVENUE NORWALK, CT 06856 Copy with citationCopy as parenthetical citation