Ex Parte Racenet et al

Board of Patent Appeals and Interferences

Jun 15, 2010

10424606 (B.P.A.I. Jun. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DAVID C. RACENET, HANSPETER BAYER, and
SCOTT CUNNINGHAM
____________

Appeal 2009-004197
Application 10/424,606
Technology Center 3700
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Decided: June 16, 2010
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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

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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.
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Application No. 10/424,606

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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
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Application No. 10/424,606

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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.

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Application No. 10/424,606

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DECISION
The Examiner’s decision to reject the claims as obvious is reversed.

REVERSED

mls

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U.S. SURGICAL
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