Ex Parte Viola

Patent Trial and Appeal Board

Sep 28, 2017

13617369 (P.T.A.B. Sep. 28, 2017)

United States Patent and Trademark Office
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.
13/617,369 09/14/2012 Frank J. Viola 2826 CON 4 (203-3218 5214
CON
50855 7590
Covidien LP
60 Middletown Avenue
Mailstop 54, Legal Dept.
North Haven, CT 06473
EXAMINER
HIBBERT, MARY C
ART UNIT PAPER NUMBER
3721
NOTIFICATION DATE DELIVERY MODE
10/02/2017 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):
SurgicalUS@covidien.com
medtronic_mitg-si_docketing@cardinal-ip.com
mail @ cdfslaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK J. VIOLA
Appeal 2016-008317
Application 13/617,369
Technology Center 3700
Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-008317
Application 13/617,369
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
23—32. Claims 1—22 have been canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claims are directed to a surgical stapling apparatus having a
wound closure material applicator assembly. Sole independent claim 23,
reproduced below, is illustrative of the claimed subject matter:
23. A surgical stapling apparatus for joining body tissue,
comprising:
a staple anvil having a knife track;
a staple cartridge adjacent the staple anvil, the staple
cartridge and staple anvil being juxtaposable with one another,
the staple cartridge including a plurality of surgical staples, the
staple cartridge having a knife slot defining a proximal end and
distal end;
a sled for ejecting the staples from the staple cartridge, the
sled having a shank for supporting a knife blade;
a driving member for distally translating the sled;
a conduit having a plurality of apertures, the conduit being
attached to the sled, wherein during a firing of the surgical
stapling apparatus, the conduit is progressively advanced along
the knife slot from the proximal end to the distal end thereof;
and
a source of wound closure material communicating with the
conduit.
REFERENCES
Geiste US 5,941,442 Aug. 24, 1999
Whitman US 6,488,197 B1 Dec. 3, 2002
Viola US 8,286,850 B2 Oct. 16, 2012
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Application 13/617,369
REJECTIONS
Claims 23—32 stand rejected on the ground of nonstatutory
obviousness-type double patenting over claims 1—10 of Viola. Final Act. 3.
Claims 23—32 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Geiste and Whitman. Final Act. 5.
ANALYSIS
Claims 23—32—Double Patenting
The Examiner rejected claims 23—32 on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claims 1—10 of
Viola. Final Act. 3. Appellant does not address this rejection. Therefore,
we summarily sustain the Examiner’s non-statutory double patenting
rejection. See MPEP § 1205.02 (2015) (“If a ground of rejection stated by
the examiner is not addressed in the appellant’s brief, appellant has waived
any challenge to that ground of rejection and the Board may summarily
sustain it.”).
Claims 23—32—Unpatentable over Geiste and Whitman
The claims are argued as a group. App. Br. 7—14. We select claim 23
as representative. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds that
Geiste teaches all of the limitations of claim 23 except for a conduit having a
plurality of apertures, the conduit being attached to the sled, and a source of
wound closure material communicating with the conduit. Final Act. 5—6.
For these limitations, the Examiner relies on Whitman. Final Act. 6. The
Examiner asserts that Whitman’s cylindrical dispensing chamber 95 and
blade channels 90 correspond to the claimed conduit and apertures,
respectively. Final Act. 6; see also Whitman, Figs. 5, 6. The Examiner
further contends that Whitman discloses a source of wound closure material
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Application 13/617,369
communicating with the conduit. Final Act. 6 (citing Whitman, 7:45—56,
9:6—12). According to the Examiner, a person of ordinary skill in the art
would have added Whitman’s fluid delivery system to Geiste’s surgical
stapler “to yield predictable results of quicker healing of the patient by direct
medication to the site of the staples during a medical procedure.” Final Act.
6.
Appellant first argues that Whitman does not teach or suggest “the
conduit is progressively advance[ing] along the knife slot from the proximal
end to the distal end thereof,” as claim 23 requires. App. Br. 8. This
argument is not persuasive, as it constitutes attacking a reference
individually when the rejection is based on a combination of references. See
In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1886) (holding that
nonobviousness cannot be established by attacking the references
individually when the rejection is predicated on a combination of prior art
disclosures). The Examiner explains that channels 90, which deliver the
wound closure material from conduit 95, are part of Whitman’s blade 75,
and thus, the channels, along with “the conduit (95) is progressively
advanced” with blade 75 during the firing of Whitman’s surgical stapling
apparatus. Final Act. 6; Ans. 13. According to the Examiner, Whitman thus
teaches “the knowledge in the art to provide a conduit within a knife blade,”
and the “modification of Geiste to include conduits, therein, would result in
a knife blade that progressively advances along a knife slot, as claimed.”1
1 The Examiner relies on Geiste for teaching a “staple cartridge having a
knife slot defining a proximal end and distal end;” a “sled” “for supporting a
knife blade;” and, “a driving member for distally translating the sled.” Final
Act. 5 (citations omitted).
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Application 13/617,369
Ans. 13; see also id. (the “Examiner is merely relying on [Whitman] having
a conduit within the knife blade”). Appellant counters that claim 23 requires
the conduit, not just the knife blade, to progressively advance along the knife
slot. App. Br. 13. But, by finding that Whitman teaches having a conduit
within a knife blade, the Examiner also necessarily finds that a conduit is
progressively advancing along a knife slot.
Appellant next argues that combining Geiste and Whitman “would
require major reconstruction and redesign” of Geiste’s “surgical stapler.”
App. Br. 13. This argument is also unpersuasive, as Appellant does not
support its contention with evidence or reasoned argument. Conversely, as
the Examiner notes (Ans. 13), Whitman expressly teaches that its dispensing
system “can be used for applications . . . involving and in conjunction with
other surgical devices.” See Whitman 6:37-42. Thus, Whitman provides
evidence that its system can be adapted to other devices, such as that
disclosed in Geiste, with no more than routine skill.
Finally, in its Reply Brief, Appellant challenges the Examiner’s
finding that Whitman teaches the claimed conduit. Reply Br. 2—3.
Appellant asserts that “[a]t most, Whitman discloses that once ‘the
membrane 105 breaks, the fibrin is released, and passes through the
channels 90 in the blade 75, and is thereby transferred to the cutting and
stapling site (the freshly cut tissue).’” Reply Br. 3 (citing Whitman, 9:7—10).
Appellant reasons that the “channels 90 are openings into the dispensing
chamber 95,” and “[a]s such, neither the dispensing chamber 95 nor the
channels 90 may be properly characterized as the conduit recited in claim
23.” Reply Br. 3. But, we see no reason why dispensing chamber 95 cannot
correspond to the claimed conduit merely because channels 90 are openings
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into the dispensing chamber 95. On the contrary, the fact that fibrin passes
through chamber 95 and then through channels 90 lends support to the
Examiner’s finding that chamber 95 is a conduit for the fibrin.
For the foregoing reasons, we sustain the Examiner’s rejection of
claims 23—32.
DECISION
The Examiner’s rejection of claims 23—32 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)(l)(iv).
AFFIRMED
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