Ex Parte Soltz et al

Patent Trial and Appeal Board

Sep 26, 2016

11408492 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111408,492 04/21/2006
50855 7590 09/28/2016
Covidien LP
555 Long Wharf Drive
Mail Stop SN-I, Legal Department
New Haven, CT 06511
FIRST NAMED INVENTOR
Michael A. Soltz
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.
H-US-00551 (203-4980) 9531
EXAMINER
EISEMAN, ADAM JARED
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
09/28/2016 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):
mail@cdfslaw.com
SurgicalUS@covidien.com
medtronic_mitg-si_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL A. SOLTZ, MEGAN L. PROMMERSBERGER,
and JOSHUA STOPEK
Appeal2015-000033 1
Application 11/408,4922
Technology Center 3700
Before PHILIP J. HOFFMANN, JAMES A. WORTH, and
TARA L. HUTCHINGS, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final rejection of claims 1-3, 5-7, 9, 11-13, and 29-34. We have
jurisdiction under 35 U.S.C. §§ 134 and 6(b ).
We REVERSE.
1 Our decision refers to the Appellants' Appeal Brief ("Br.," filed June 4,
2014), and the Examiner's Final Office Action ("Final Act.," mailed
Feb. 12, 2014) and Answer ("Ans.," mailed July 17, 2014).
2 According to Appellants, the real party in interest is Covidien LP (Br. 3).
Appeal2015-000033
Application 11/408,492
Introduction
Appellants' disclosure relates to "surgical stapling devices and sutures
and, in particular, a buttress device used in connection or in combination
with a surgical instrument for ensuring that an optimal amount of tissue
compression is applied to tissue for an optimal formation of staples and
sutures." (Spec. 1, 11. 18-21 ).
Claims 1, 11, and 29 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal:
1. A surgical indicator to indicate proper formation of a
surgical element comprising:
a surgical buttress having a substrate made from a
biocompatible material that is configured to be fixed to tissue
by the surgical element, the substrate having a modulating
property, wherein the substrate modulates from a first condition
when no stress is applied to a second condition when a stress is
applied; and
wherein the modulating property is configured to
provide an indication when compressed to a predetermined
compress10n stress level, wherein the predetermined
compression stress level indicates an optimal tissue
compression for a tissue type, the indication being a tissue state
that is optimal for the formation of the surgical element for the
tissue type.
(Br., Claims App.)
Rejections on Appeal
The Examiner maintains, and Appellants appeal, the following
rejections:
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Application 11/408,492
I. Claims 1, 3, and 5-7 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Sumimoto
(JP 2002/202213, pub. July 19, 2002).
II. Claims 1-3, 5-7, and 9 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Roberts (US 3,469,439,
iss. Sept. 30, 1969).
III. Claims 11-13, 29, 31, 32 and 33 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Shelton
(US 2006/0212069 Al, pub. Sept. 21, 2006) and
Sumimoto.
IV. Claims 30 and 34 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Shelton, Sumimoto,
and Roberts.
ANALYSIS
Rejection I (Anticipation)
Independent claim 1 and dependent claims 3 and 5-7
We are persuaded by Appellants' argument that Sumimoto does not
disclose "a surgical buttress having a substrate made from a biocompatible
material" (Br. 3-7). In particular, Appellants argue that there is insufficient
evidence that Sumitomo' s rubber is necessarily "biocompatible," as recited
in independent claim 1 (Br. 7). The Examiner points to paragraph 67 of
Lahtinen (US 2003/0059463 Al, pub. Mar. 27, 2003) as evidence that
rubber and plastic substrates qualify as biocompatible materials because they
are used in a multitude of biocompatible implants (Final Act. 11; Ans. 11 ).
However, we agree with Appellants that as a matter of anticipation, there is
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Application 11/408,492
insufficient evidence that the particular rubber disclosed in Smnimoto would
have been biocompatible. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir.
1999) ("Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient."). Therefore, we do not sustain the
Examiner's rejection under § 102(b) of independent claim 1 as anticipated
by Sumimoto. For the same reason, we do not sustain the Examiner's
rejection under § 102(b) of claims 3 and 5-7, which depend from
independent claim 1.
Rejection II (Anticipation)
Independent claim 1 and dependent claims 2, 3, 5-7, and 9
We are persuaded by Appellants' argument that Roberts does not
disclose "a biocompatible material," for similar reasons as set forth above
with respect to the rejection under § 102(b) over Sumimoto. Therefore, we
do not sustain the Examiner's rejection under§ 102(b) of claims 1-3, 5-7,
and 9, as anticipated by Roberts.
Rejection III (Obviousness)
Independent claims 11 and 29 and dependent claims 12, 13,
and 31-33
Independent claim 11 stands rejected under§ 103(a) as being
unpatentable over Shelton and Sumimoto. We are persuaded by Appellants'
argument that Shelton does not disclose that its buttress material has the
property of changing color when stress is applied, as recited in independent
claim 11, as follows:
wherein the predetermined biocompatible material has an initial
color when no stress is applied to the substrate, and wherein the
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Application 11/408,492
predetermined biocompatible material has a second color when
a predetermined compression stress is applied to the substrate
(Appeal Br. 18).
To the extent that the Examiner relies on a combination of Shelton's
teachings with the teachings of Sumimoto (Ans. 12), the Examiner is relying
on the material of Sumimoto, which as set forth above, is not necessarily
biocompatible.
To the extent that the Examiner is relying on the buttress material of
Shelton, and concluding that it would have been obvious to induce a color
change in a material under stress, as taught by Sumitomo, we are persuaded
by Appellants' argument that the Examiner has not provided adequate
evidence or reasoning for such a modification (see Appeal Br. 13-15).
Putting aside the rationale for the combination, the Examiner does not
address issues relating to a reasonable expectation of success of maintaining
the biocompatibility of the material. As such, we do not sustain the
Examiner's rejection under § l 03 of independent claim 11, as unpatentable
over Shelton and Sumimoto. For the same reason, we do not sustain the
Examiner's rejection under§ 103 of claims 12 and 13, which depend
therefrom.
Independent claim 29 contains similar requirements as independent
claim 11, inasmuch as it recites a change in conditions when stress is applied
(although does not recite color as a variable). We do not sustain the
Examiner's rejection under§ 103 of independent claim 29 as unpatentable
over Shelton and Sumimoto, for similar reasons as for independent
claim 11. For the same reason, we do not sustain the Examiner's rejection
under§ 103 of dependent claims 31-33.
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Application 11/408,492
Rejection IV (Obviousness)
Dependent claims 30 and 34
Claims 30 and 34 depend from claim 29, and stand rejected under
§ 103 as unpatentable over Shelton, Sumimoto, and Roberts. Roberts does
not remedy the deficiency in the Examiner's rejection of independent claim
29 under§ 103 as unpatentable over Shelton and Sumimoto. We, therefore,
do not sustain the Examiner's rejection under§ 103 of claims 30 and 34.
DECISION
The Examiner's decision to reject claims 1-3, 5-7, 9, 11-13, and
29-34 is reversed.
REVERSED
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