Ex Parte Scirica

Board of Patent Appeals and Interferences

May 11, 2011

11544519 (B.P.A.I. May. 11, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/544,519 10/06/2006 Paul Scirica H-US-00559 (203-4978) 9142
50855 7590 05/11/2011
Tyco Healthcare Group LP
d/b/a Covidien
555 Long Wharf Drive
Mail Stop 8-N1, Legal Department
New Haven, CT 06511
EXAMINER
LOW, LINDSAY M
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
05/11/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL SCIRICA

___________

Appeal 2010-010469
Application 11/544,519
Technology Center 3700
____________

Before SCOTT R. BOALICK, KEVIN F. TURNER, and ERIC B. CHEN,
Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-010469
Application 11/544,519

2
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-10 and 12-29. Claim 11 has been cancelled. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
Appellant’s invention relates to a surgical instrument including a
handle portion, a body portion, an articulating tool assembly and at least one
coupling member. (Spec. Abstract.) The coupling member is securable to
the body portion and has at least one spring arm. (Spec. Abstract.) A
portion of the spring arm is receivable in a recess of the articulating tool
assembly to releasably retain the articulating tool assembly in a first
position. (Spec. Abstract.)
Claims 1-10, 12-14, 17-19, 23, 24, 26 and 28 stand rejected under
35 U.S.C. § 103(a) as being obvious over Marczyk (U.S. Patent Application
Publication No. 2005/0184125) and Rivera (U.S. Patent Application
Publication No. 2003/0140740).
Claims 15 and 16 stand rejected under 35 U.S.C. §103(a) as being
obvious over Marczyk, Rivera and Milliman (U.S. Patent No. 5,865,361).
Claim 27 stands rejected under 35 U.S.C. § 103 (a) as being obvious
over Marczyk, Rivera and Lawrence (U.S. Patent Application Publication
No. 2005/0133393).
Claims 20-22, 25 and 29 stand rejected under 35 U.S.C. §103(a) as
being obvious over Marczyk and Lawrence.
With respect to independent claims 1 and 17, we are not are
convinced by Appellant’s arguments (App. Br. 16-20; see also Reply Br. 5-
7) that the Examiner improperly combined Marczyk and Rivera.
The Examiner acknowledged that Marczyk does not teach the claim
limitation of “a portion of the spring arm . . . to releasably retain the
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articulating tool assembly in the first position until a predetermined force
sufficient to deflect outwardly the at least one spring arm is applied to the
tool assembly” and cited Rivera for the disclosure a leaf spring 24 that
prevents rotation of a base 34 of a tool bit 32. (Ans. 4; figs. 1, 19.) The
Examiner concluded that “it would have been obvious . . . to provide a
spring arm portion to Marczyk’s device that disengages from a recess upon
application of predetermined force, such as the one taught by Rivera, for the
purpose of preventing unwanted rotation of the tool assembly. . . .” (Ans. 4.)
We agree with the Examiner.
Marczyk teaches a surgical stapling apparatus 10 (¶ [0057]; fig. 1)
including a handle assembly 12, an elongated body 14, a disposable loading
unit (DLU) 16 (¶ [0058]) and a tool assembly 17 (¶ [0059]), in which the
tool assembly 17 pivots relative to the DLU 16 (see ¶ [0061]). The DLU 16
includes a mounting assembly 235 with a centrally located pivot
member 284. (¶ [0063]; fig. 9.) The centrally located pivot member 284
extends through an opening 246a of a coupling member 246. (¶ [0063];
fig. 9.)
Rivera teaches knives or tools (¶ [0001]) having tool bits 32 pivotably
mounted to a frame member 10 with pivot pins 30 (¶ [0019]; figs. 1, 19) in
which a leaf spring 24 prevents rotation of the tool bit 32 (¶ [0020]). To
move the tool bit 32 between extended and folded positions, a “sufficient
force must be applied to the tool bit 32 to overcome the spring force and
bend the [leaf] spring 24 . . . .” (¶ [0019].)
A person of ordinary skill in the art would have recognized that
incorporating the leaf spring 24 of Rivera with the coupling member 246 of
Marczyk would provide the advantage of providing additional pivot control
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Application 11/544,519

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over the tool assembly 17 of Marczyk. See KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007). Thus, we agree with the Examiner (Ans. 4) that
modifying Marczyk to include the leaf spring 24 of Rivera would have been
obvious.
Appellant argues that “Rivera is nonanalogous art and cannot properly
be relied upon as a basis for the Examiner’s rejection under 35 U.S.C.
§ 103(a)” (App. Br. 19) because “Rivera would not have logically
commended itself to the attention of an inventor working on a surgical
instrument.” (App. Br. 18.) However, in the “Background” section,
Appellant’s Specification describes that “it is not uncommon for the tool
assembly to be jarred or bumped such that the tool assembly inadvertently is
moved from its non-articulated position to an articulated position” (Spec.
¶ [0005]) and “it would be desirable to provide a surgical instrument having
an articulating tool assembly with a retainer member for releasably securing
the tool assembly in a non-articulated position until it is desired to articulate
the tool assembly” (Spec. ¶ [0006]). As discussed previously, Rivera
teaches knives or tools with a leaf spring 24 in which a sufficient force must
be applied to a tool bit 32 to overcome the spring force and bend the leaf
spring 24. Because the leaf spring 24 of Rivera provides a solution to the
problem of a surgical tool assembly inadvertently moving from a non-
articulated position to an articulated position by controlling rotation of the
tool bit 32, Rivera is reasonably pertinent to the problem with which the
inventor was concerned. See In re Kahn, 441 F.3d 977, 987 (Fed. Cir.
2006).
Appellant further argues that “the claimed features of Appellant’s
surgical instrument allow the tool assembly to pivot (or articulate) in two
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Application 11/544,519

5
lateral directions with respect to the longitudinal axis” but “the knife blade
of Rivera is only able to move in a single direction beyond the axis defined
by the frame.” (App. Br. 19; see also Reply Br. 6.) This argument is not
convincing because the feature of pivoting in two lateral directions is not
claimed.
Therefore, the Examiner has properly combined Marczyk and Rivera
to reject claims 1 and 17 under 35 U.S.C. § 103(a).
Accordingly, we affirm the rejection of independent claims 1 and 17
under 35 U.S.C. § 103(a). Claims 2-10, 12-14, 18, 19, 23, 24, 26 and 28
depend from claims 1 and 17 and, because Appellant has not presented any
further arguments with respect to these claims, we affirm the rejection of
these claims under 35 U.S.C. § 103(a) for the reasons discussed with respect
to claims 1 and 17.
With respect to dependent claims 15 and 16, Appellant merely argues
that Milliman does not cure the deficiencies of Marczyk and Rivera. (App.
Br. 21.) We are not persuaded by these arguments for the reasons discussed
with respect to claims 1 and 17, from which claims 15 and 16 depend.
Accordingly, we sustain the rejections of claims 15 and 16.
With respect to dependent claim 27, we are not are convinced by
Appellant’s arguments (App. Br. 22-23; see also Reply Br. 6-7) that the
combination of Marczyk, Rivera and Lawrence does not teach or suggest all
the claim limitations.
The Examiner acknowledged that the combination of Marczyk and
Rivera does not teach or suggest the claim limitation “wherein the spring
arm is movable between the first position where the spring arm is engaged
with the recess, to the second position where the spring arm is laterally out
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of engagement beyond a first lateral side of the recess, and a third position
where the spring arm is laterally out of engagement beyond a second lateral
side of the recess” and cited Lawrence for the disclosure of a belt hook 30
with a spring arm 48. (Ans. 7; figs. 4, 5.) The Examiner concluded that “it
would have been obvious . . . to provide a spring arm to Marczyk’s device
that disengages from beyond lateral sides of the recess upon application of a
predetermined force for the purpose of providing a smooth transition
between positions of the articulating tool assembly while providing a secure
lock when the spring arm is in the recess and the tool assembly is not
articulated.” (Ans. 7.) We agree with the Examiner.
Lawrence teaches a nailer 10 incorporating a belt hook 30 (¶ [0024];
figs. 1-3) such that the belt hook 30 can be inserted into an opening 32 of the
nailer 10 (¶ [0027]). The belt hook 30 is L-shaped (¶ [0028]) and includes a
spring arm 48 that can be bent inwardly to spring outwardly with the
application of force (¶ [0030]). The spring arm 48 includes a knob 52 sized
to mate with a notch 54 positioned inside the opening 32. (¶ [0030]; figs. 4,
5, 11.) The belt hook 30 is positioned to a single desired position by rotating
it to a proper position. (¶ [0030].)
As discussed previously, combining the leaf spring 24 of Rivera with
the coupling member 246 of Marczyk is based on the improvement of a
similar device in the same way as in the prior art. Furthermore, combining
Lawrence with Marczyk and Rivera is no more than the simple substitution
of the spring arm 48 of Lawrence including a knob 52 sized for mating with
a notch 54 for the leaf spring 24 of Rivera, with no unexpected results. See
KSR, 550 U.S. at 417. Thus, we agree with the Examiner (Ans. 7) that
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modifying Marczyk and Rivera to include the spring arm 48 of Lawrence
would have been obvious.
Appellant argues that Lawrence is also nonanalogous art. (App.
Br. 23; see also Reply Br. 6.) As discussed previously, the “Background”
section of Appellant’s Specification describes the problem of a surgical tool
assembly inadvertently moving from a non-articulated position to an
articulated position. Also discussed previously, the spring arm 48 of
Lawrence positions the belt hook 30 in a single desired position when a
knob 52 mates with a notch 54. Because the spring arm 48 of Lawrence
provides a solution to the problem of a surgical tool assembly inadvertently
moving from a non-articulated position to an articulated position by
controlling rotation of the belt hook 30, Lawrence is reasonably pertinent to
the problem with which the inventor was concerned. See Kahn, 441 F.3d at
987.
Appellant also argues that “the disclosure of Rivera teaches away
from the proposed combination with Lawrence” because “in Rivera, the tool
bit 32 can only rotate between two positions. . . .” (App. Br. 23.) However,
the rejection of claim 27 is not based on modifying the leaf spring 24 of
Rivera with the spring arm 48 of Lawrence. (Ans. 7.) As discussed
previously, combining Lawrence with Marczyk and Rivera is no more than
the simple substitution of the spring arm 48 of Lawrence for the leaf
spring 24 of Rivera, with no unexpected results.
Accordingly, we affirm the rejection of dependent claim 27 under 35
U.S.C. § 103(a).
With respect to independent claim 20, we are not are convinced by
Appellant’s argument (App. Br. 24; see also Reply Br. 8) that the
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combination of Marczyk and Lawrence does not teach or suggest the
limitation “wherein the spring arm is independently movable with respect to
a proximal end and a distal end of the at least one coupling member.”
Relying on Appellant’s statement that “[t]he coupling members [of
Marczyk] are interlocked with the housing portions and not intended to
engage and disengage the mounting assembly” (App. Br. 20), the Examiner
found that any motion of a spring would be independent relative to the
coupling member 246 of Marczyk (Ans. 10). We agree with the Examiner.
Marczyk teaches that the coupling member 246 is retained in a
longitudinally fixed position with respect to upper and lower housing
halves 250 and 252 (¶ [0063]) used to house the DLU 16 (see fig. 6). In
discussing Marczyk, Appellant admits that “[t]he coupling members [246]
are interlocked with the housing portions and not intended to engage and
disengage the mounting assembly [235] when the tool assembly is pivoted in
articulation.” (App. Br. 20.) In other words, Marczyk teaches that the
coupling member 246 is retained in a fixed position. As discussed
previously, Lawrence teaches a belt hook 30 including a spring arm 48 that
can be bent inwardly to spring outwardly with the application of force. In
other words, Lawrence teaches rotation of the spring arm 48 during its
operation.
Thus, because Marczyk teaches that the coupling member 246 is
retained in a fixed position and the spring arm 48 of Lawrence rotates during
operation, the combination of Marczyk and Lawrence teaches or suggests
“wherein the spring arm is independently movable with respect to a
proximal end and a distal end of the at least one coupling member.”
Appeal 2010-010469
Application 11/544,519

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Accordingly, we affirm the rejection of independent claim 20 under
35 U.S.C. § 103(a). Claims 21, 22, 25 and 29 depend from claim 20 and,
because Appellants have not presented any further arguments with respect to
these claims, we affirm the rejection of these claims under 35 U.S.C.
§ 103(a) for the reasons discussed with respect to claim 20.
DECISION
The decision to reject claims 1-10 and 12-29 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)(1)(iv).

AFFIRMED

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