Ex Parte Shelton et al

Patent Trial and Appeal Board

Oct 30, 2012

11652165 (P.T.A.B. Oct. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FREDERICK E. SHELTON IV,
JEROME R. MORGAN, and STEPHEN J. BALEK
____________

Appeal 2010-005431
Application 11/652,165
Technology Center 3700
____________

Before GAY ANN SPAHN, MICHAEL C. ASTORINO, and
WILLIAM A. CAPP, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Frederick E. Shelton IV et al. (Appellants) seek our review under 35
U.S.C. § 134 of the Examiner’s rejection of claims 1-31. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART and ENTER A
NEW GROUND OF REJECTION PURSUANT TO OUR AUTHORITY
UNDER 37 C.F.R. § 41.50(b).

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Application 11/652,165

2
The Claimed Subject Matter
The claimed subject matter relates to “surgical staplers having a
curved end-effector.” Spec. 1, para. [0001]. Claims 1, 11, 15, and 19 are
independent and claim 1, reproduced below, with emphasis added, is
illustrative of the subject matter on appeal.
1. A surgical stapler, comprising:
a handle portion;
a shaft extending from said handle portion, said shaft
including a proximal portion and a distal portion, wherein said
distal portion defines an axis; and
an end-effector extending from said distal portion, said
end-effector comprising:
a channel configured for receiving a staple cartridge, the
staple cartridge configured to removably store staples therein;
an anvil configured to deform said staples, wherein at
least one of said anvil and the staple cartridge defines a slot;
and
a cutting member having a cutting surface, wherein said
cutting member is relatively movable with respect to said anvil
and the staple cartridge, wherein said slot is configured to
receive at least a portion of said cutting member and define a
path for said cutting member as it is moved relative to said
anvil and the staple cartridge, wherein said path includes a
linear portion, and a curved portion defined by at least one
radius of curvature, and wherein said linear portion defines an
axis that is not parallel to or collinear with said shaft axis.

The Rejections
The following Examiner’s rejections are before us for review:
(1). Claims 1, 3, 8, 9, 11, 13, 18, and 20 are rejected under 35
U.S.C. § 102(b) as anticipated by Yoon (US 5,655,698, iss. Aug, 12, 1997);
and
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Appeal 2010-005431
Application 11/652,165

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Appellants argue that Yoon “fails to disclose a slot having a path that
includes a linear portion.” App. Br. 16. Appellants note that Yoon’s
disclosure describes the slots (grooves 328) as being “curved” and argue that
Yoon “simply does not disclose curved grooves 328 as being straight,” i.e.,
having a linear portion. Id. (quoting Yoon, col. 11, l. 6). Appellants note
the Examiner’s citation to In re Mraz, 455 F.2d 1069 (CCPA 1972) (Ans. 6)
for the proposition that drawing figures “can anticipate claims if they clearly
show the structure which is claimed”; however, Appellants point out that
Yoon does not indicate that the drawing figures are to scale1 and argue that
Yoon’s disclosure as a whole2 indicates that grooves 328 are curved and a
person of ordinary skill in the art would not reach the conclusion that Yoon’s
path has a linear portion. App. Br. 17.
We agree with Appellants that Yoon’s path (the centerline of the slot
or curved groove 328) does not have a linear portion. Yoon’s disclosure
describes the jaws 312, 314 of the Figure 28 embodiment as being curved, in
contrast to the jaws 212, 214 of a previous embodiment, for the purpose of
“apply[ing] arcuate rows of staples thereby providing improved access in
certain procedures and facilitating severing of vessels closer to the organ in
order to minimize the amount of tissue suspended therefrom.” Yoon, col.
10, ll. 52-57. Yoon’s curved jaw 314 includes a “curved groove[] 328
formed along the length of [the] cartridge 316.” Yoon, col. 11, ll. 6-7. As
the ordinary and customary meaning of the adjective “curved” is “having or
marked by a curve or smoothly rounded bend” and the ordinary and

1 Citing to Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d 951,
956 (Fed. Cir. 2000).
2 Citing to In re Wright, 569 F.2d 1124 (CCPA 1977).
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customary meaning of the noun “curve” is “a line that deviates from
straightness in a smooth, continuous fashion,”3 the Examiner has failed to
explain how Yoon’s curved slot or groove 328, which defines a curved path
(centerline of curved slot or groove 328), has a linear portion.
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 1 and 11, and claims 3, 8, 9, and 13 dependent thereon,
under 35 U.S.C. § 102(b) as anticipated by Yoon.
Claims 18 and 20
With respect to the anticipation rejection of dependent claims 18 and
20, the Examiner has not made any findings that Yoon discloses each and
every element to anticipate independent claim 15 and independent claim 19
upon which claim 18 and claim 20 depend, respectively. Ans. 3. Indeed,
with respect to the Examiner’s obviousness rejection of claims 15 and 19,
the Examiner indicates that Yoon does not disclose that “the curved portion
includes a distal end positioned along or beyond the shaft axis.” Ans. 6.
Since the Examiner has acknowledged that Yoon does not anticipate claims
15 and 19, the Examiner has failed to set forth a prima facie case of
anticipation with respect to claims 18 and 20 which depend on claims 15 and
19, respectively.
Accordingly, we do not sustain the Examiner’s rejection of claims 18
and 20 under 35 U.S.C. § 102(b) as anticipated by Yoon.

3 See http://www.thefreedictionary.com/curved (last visited on October 20,
2012.
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Application 11/652,165

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Rejection (2) – Obviousness based on Yoon
Claims 2, 4-7, 12, 14, and 21-26
Claims 2, 4-7, and 21-23 depend, either directly or indirectly, from
independent claim 1 and claims 12, 14, and 24-26 dependent, either directly
or indirectly, from independent claim 11. App. Br., Clms. App’x.
Appellants contend that Yoon “does not disclose all of the recited
elements” of independent claim 1 and 11, “there is no apparent reason for
modifying the teachings of Yoon to arrive at the invention of “dependent
claims 2, 4-7, 12, 14, and 21-26, and thus, the rejection of these dependent
claims should be reversed.” App. Br. 18-19.
As the Examiner’s rejection of claims 2, 4-7, 12, 14, and 21-16 relies
upon the erroneous finding that Yoon discloses a path having a linear
portion, we do not sustain the Examiner’s rejection of claims 2, 4-7, 12, 14,
and 21-26 under 35 U.S.C. § 103(a) as unpatentable over Yoon.
Claims 15-17, 19, and 27-31
Appellants argue claims 15-17, 19, and 27-31 as a group and we select
independent claim 15 as the representative claim. See App. Br. 19-21; see
also 37 C.F.R. § 41.37(c)(1)(vii) (2001). Claims 16, 17, 19, and 27-31 stand
or fall with claim 15.
Claim 15 is directed to a surgical stapler having a staple cartridge and
an anvil, at least one of which defines a slot which in turn defines a path for
a cutting member, the path including a curved portion, the curved portion
including a distal end, and the distal end being positioned one of along or
beyond said axis. App. Br., Clms. App’x.
The Examiner finds that Yoon substantially discloses the subject
matter of independent claim 15 (Ans. 3 and 4); however, Yoon fails to
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disclose that “the curved portion of a slot path [is] positioned along or
beyond the shaft axis” (Ans. 7). The Examiner also finds that “Yoon
recognizes the need of a curved end effector for facilitating the surgeon in
the insertion and positioning of the end effector with respect to the targeted
tissue to be fastened” and that since the distal portion of Yoon’s curved end
effector extends back towards the shaft axis, “the orientation of the shaft
with respect to the targeted tissue will provide the surgeon an indication as
to where the distal portion of the end effector will be positioned.” Ans. 6-7
(citing to Yoon, col. 10, ll. 52-66). The Examiner concludes that modifying
Yoon’s curved end effector to have a distal end of the curved portion of the
slot path be positioned along or beyond the shaft axis “would have been an
obvious matter of engineering design choice since such a modification
would have involved a mere change in the shape or form of a component
and would be for the benefits of properly applying arcuate rows of staples
while enhancing the positioning of the device.” Ans. 7 (citing Yoon, col. 3,
ll. 7-30 and col. 10, ll. 52-57).
Appellants quote portions of paragraphs [0013] and [0020] of the
present Specification and argue that these paragraphs disclose advantages
that flow from the distal end of the curved portion being positioned beyond
or along, respectively, the axis of the shaft of the surgical stapler which the
devices of Yoon cannot provide. App. Br. 21. Appellants also argue that
Yoon “does not provide any teaching, motivation, or suggestion to arrive at
the claimed invention” absent hindsight, “a person of ordinary skill in the art
would not have had a sufficient reason to modify the device of Yoon . . . to
arrive at the invention of Independent Claim[] 15,” and “the Examiner has
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failed to point to an apparent reason, or facts,” for modifying Yoon in the
manner set forth in the Answer. Id.
We are not persuaded by Appellants’ arguments. The Examiner
found that modifying the path of the distal end of Yoon’s curved portion to
extend beyond the shaft axis would have been an obvious matter of design
choice to one of ordinary skill in the art. Ans. 7. Design choice applies
when old elements in the prior art perform the same function as the now
claimed structures. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (use of
claimed feature solves no stated problem and presents no unexpected result
and “would be an obvious matter of design choice within the skill of the
art”); see also In re Chu, 66 F.3d 292, 298-99 (Fed. Cir. 1995) (“design
choice” is appropriate where the applicant fails to set forth any reasons why
the differences between the claimed invention and the prior art would result
in a different function). We find that Appellants have failed to rebut the
Examiner’s conclusion of obvious design choice for the following reasons.
The contested claim language recites in the alternative that either the
distal end must be positioned along the shaft axis or beyond the shaft axis.
App. Br., Clms. App’x. Because of the alternative recitation, Appellants
must establish both that use of the distal end positioned along the shaft axis
solves a stated problem and use of the distal end positioned beyond the shaft
axis solves a stated problem. We agree with Appellants that the
Specification’s paragraph [0020] establishes that the claimed along feature
solves a problem by allowing the surgeon to discern the orientation of axis
242 to know that the cutting member will not progress beyond axis 242 and
gauge the point at which tissue will no longer be transected. App. Br. 21.
Thus, with respect to claim 15’s language of the distal end positioned along
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the shaft axis, Appellants have successfully rebutted the Examiner’s
conclusion of obvious design choice.
However, we do not agree with Appellants that the Specification’s
paragraph [0013] establishes that the claimed beyond feature solves any
stated problem. Unlike the Specification’s paragraph [0020] which is
specifically describing the distal end of slot 364 so as to support claim 15’s
language of the distal end of the curved portion of the path, i.e., the
centerline of the slot, the Specification’s paragraph [0013] is describing that
the end 240 of jaw 210 can extend to one side of the axis 242 so as to be
offset in order for the surgeon to be able to more readily see distal end 240
and evaluate whether the pulmonary artery is completely captured within the
end-effector. Thus, the Specification’s paragraph [0013] does not support
that the positioning of the distal end of the curved slot 264 beyond the axis
242 solves a stated problem.
Accordingly, we sustain the Examiner’s rejection of independent
claim 15, and claims 16, 17, 19, and 27-31 which fall therewith, under 35
U.S.C. § 103(a) as unpatentable over Yoon.

NEW GROUND OF REJECTION
We make the following new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b). Claims 18 and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Yoon.
Claim 18 depends from independent claim 15 and recites that “said
curved portion defines an arc corresponding to an angle at least 90 degrees.”
App. Br., Clms. App’x. Claim 20 depends from independent claim 19 and
recites that “said curved portion includes a proximal portion that extends
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away from said shaft axis and a distal portion that extends toward said shaft
axis.” App. Br., Clms. App’x.
Since dependent claims 18 and 20 depend from independent claims 15
and 19, respectively, we begin our rejection of claims 18 and 20 by adopting
the Examiner’s findings with respect to independent claims 15 and 20,
namely, we adopt the Examiner’s findings in the Answer: (1) at page 3,
beginning at line 8 with “Yoon discloses the claimed surgical stapler
comprising” and continuing to line 14, ending with “figs. 28-30 and 32)”;
(2) at page 3, beginning at line 14, that “the path includes,” and continuing,
at lines 15-16, “a curved portion with a proximal and distal portion”; (3) at
page 3, lines 17-19, that “[t]he proximal portion of the curved portion
extends away from the shaft axis and the distal portion extends toward the
shaft axis (fig. 28),” and “[t]he curved portion of the path “defines an arc of
at least 30 or 90 degrees with respect to the shaft axis”; and (4) at page 6,
line 20, beginning with “Yoon doesn’t specifically disclose wherein the
curved” and continuing through page 7, line 5, ending with “positioned.”
The Examiner finds Yoon discloses the subject matter specifically
recited in dependent claims 18 and 20. Ans. 3. In particular, with respect to
claim 18, the Examiner finds that the curved portion of Yoon’s path “defines
an arc of at least 30 or 90 degrees with respect to the shaft axis.” Id. With
respect to claim 20, the Examiner finds that the curved portion of Yoon’s
path has a proximal portion, which “extends away from the shaft axis,” and a
distal portion, which “extends toward the shaft axis.” Id. (citing to Yoon,
Fig. 28). We adopt these findings of the Examiner.
Finally, we adopt the Examiner’s conclusion on page 7, line 5,
beginning with “[t]herefore, the modification of Yoon’s curved end effector
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to provide[] a distal end of,” and continuing through line 12, ending with
“(CCPA 1976).”

DECISION
We reverse the Examiner’s rejections of claims 1-14, 18, and 20-26.
We affirm the Examiner’s decision to reject claims 15, 16, 17, 19, and
27-31.
We enter a new ground of rejection of claims 18 and 20 under 35
U.S.C. § 103(a) as unpatentable over Yoon.
Regarding the affirmed rejection, 37 C.F.R. § 41.52(a)(1) provides
“Appellant[s] may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner’s rejection of one or more
claims, this decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the proceeding will be
remanded to the examiner. . . .
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(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same record. . . .
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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