Sean T. Dycus et al.

Patent Trials and Appeals Board

Nov 14, 2019

14719564 - (D) (P.T.A.B. Nov. 14, 2019)

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.
14/719,564 05/22/2015 Sean T. Dycus 2727CIP3CON4(203-2809C3C4 7198
90039 7590 11/14/2019
Covidien LP
Attn: IP Legal
5920 Longbow Drive
Mail Stop A36
Boulder, CO 80301-3299
EXAMINER
BEHRINGER, LUTHER G
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
11/14/2019 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):
docket@carterdeluca.com
rs.patents.two@medtronic.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SEAN T. DYCUS and DARION R. PETERSON

Appeal 2018-002522
Application 14/719,564
Technology Center 3700
____________

Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA,
Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 21–29.1 We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 The term “Appellant” is used herein to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Covidien AG,
whose parent entity is Medtronic plc. Appeal Br. 1.
Appeal 2018-002522
Application 14/719,564

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THE CLAIMED SUBJECT MATTER
Appellant’s invention relates to an electrosurgical instrument. Spec.
1. Claim 21 is illustrative, and is reproduced below:
21. A bipolar forceps, comprising:

a housing;

an elongated shaft extending distally from the housing;

an end effector assembly disposed at a distal end of the elongated
shaft, the end effector assembly including a first jaw member and
a second jaw member, the first jaw member pivotable relative to
the second jaw member between a first position, wherein the first
and second jaw members are spaced apart from one another, and
a second position, wherein the first and second jaw members are
closer to one another, the first and second jaw members each
adapted to connect to an electrosurgical energy source, the
second jaw member including at least one stop member
associated with a sealing surface thereof, the at least one stop
member electrically-insulated from the sealing surface of the
second jaw member;

a movable handle connected to the housing and operable to pivot
the first jaw member between the first position and the second
position in response to proximal movement of the movable
handle relative to the housing;

a knife advanceable at least partially through a knife channel
defined in the sealing surface; and

a trigger assembly including a finger tab positioned distally
adjacent the movable handle, the trigger assembly connected to
the housing and operable to advance the knife in response to
proximal movement of the finger tab relative to the housing.

Appeal 2018-002522
Application 14/719,564

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THE REJECTIONS
The Examiner rejects:
(i) claims 21, 23–26, 28, and 29 under 35 U.S.C. § 103(a) as being
unpatentable over Yoon (US 6,099,550, issued Aug. 8, 2000) in view of
Eggers (US 5,891,142, issued Apr. 6, 1999) and Baden (US 5,735,849,
issued Apr. 7, 1998);
(ii) claim 22 under 35 U.S.C. § 103(a) as being unpatentable over
Yoon in view of Eggers, Baden, and Parins (US 5,197,964, issued Mar. 30,
1993); and
(iii) claim 27 under 35 U.S.C. § 103(a) as being unpatentable over
Yoon in view of Eggers, Baden, and Slater (US 5,482,054, issued Jan. 9,
1996).

ANALYSIS
Claims 21, 23–26, 28, and 29--35 U.S.C. § 103(a)--Yoon/Eggers/Baden
The Examiner cites to Yoon as disclosing most limitations set forth in
claim 21. Final Act. 4–5. The Examiner relies on Eggers as teaching a
second jaw member having at least one stop member, a limitation not found
in Yoon, and concludes that it would have been obvious to modify Yoon to
include a stop member as claimed in order to provide a more efficient
electrode contact geometry and more efficient hemostasis of tissue or blood
vessels. Id. at 4. Appellant does not take issue with the finding and
conclusion involving Eggers.
The Examiner additionally finds Yoon lacking a teaching of a trigger
assembly having a finger tab positioned distally adjacent a moving handle,
with the trigger assembly being operable to advance a knife in response to
Appeal 2018-002522
Application 14/719,564

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proximal movement of the finger tab relative to the housing.2 Final Act. 5.
The Examiner finds that Baden teaches such a trigger assembly, and
concludes that it would have been obvious to modify Yoon to include a
trigger assembly of the type disclosed in Baden. Id. at 5–6. The Examiner
states that a person of ordinary skill in the art would have recognized the
desirability of including the Baden trigger assembly in Yoon, but does not
appear to have articulated any particular reason as to why one of ordinary
skill in the art would have found it obvious to have made such a
modification. Id.
Appellant challenges this finding and conclusion, especially
emphasizing that Baden does not teach a trigger assembly that advances a
blade in response to a proximal movement of the finger tab portion of the
trigger assembly. Appeal Br. 7–8; Reply Br. 2–3. As such, according to
Appellant, the proposed combination, even if proper, would not include the
trigger assembly operating in the claimed manner. Appeal Br. 8.
Appellant cites to Baden as disclosing that “[t]he blade lever 24 of
the handle 22 is . . . pivoted towards the distal end of handle 22,” which
“causes the blade rod 50 to be longitudinally moved towards the distal end,
causing the blade 26 to extend.” Appeal Br. 7 (quoting Baden 7:5–10, and
citing to Fig. 1). The Examiner does not dispute the accuracy of the citation
to the Baden disclosure; instead taking the position that, when the blade
lever is pivoted in a distal direction, at least a portion of the blade lever on

2 The Examiner does find that Yoon teaches a knife that is advanceable
through a knife channel, but does not teach the particular trigger assembly
set forth in claim 21. Final Act. 5. Yoon teaches what is referred to as
handle 90 that is slidable distally to advance the knife in a distal direction.
Yoon 5:31–33, Fig. 15.
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Application 14/719,564

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the opposite side of pivot pin 58 necessarily moves toward the proximal end
of the handle. Final Act. 2; Ans. 10.
We agree with Appellant that the Examiner’s reliance on the small arc
of material extending around pivot pin 58 on a side opposite the actual blade
lever as corresponding to the claimed finger tab of the trigger assembly is an
unreasonably broad interpretation of the claim language. See Reply Br. 3.
Appellant points out that the Examiner improperly interprets the recitation of
“finger” in the limitation directed to a “finger tab” as intended use, affording
“finger” no patentable weight. Id. Not only do we agree that the claim term
“finger tab” connotes structure with which a finger can engage to operate the
trigger assembly as intended, we also note that, even if “finger” is afforded
no patentable weight, the Examiner has not established that the portion of
the blade lever relied on in Baden would be regarded as a “tab” by a person
of ordinary skill in the art.
Accordingly, the rejection of independent claim 21, and of claims 23–
26, 28, and 29 depending therefrom, is not sustained.

Claim 22--§ 103(a)--Yoon/Eggers/Baden/Parins
The Examiner does not rely on Parins in any manner that overcomes
the deficiencies of the proposed combination of Yoon, Eggers, and Baden, in
rejecting claim 22. The rejection is therefore not sustained.

Claim 27--§ 103(a)--Yoon/Eggers/Baden/Slater
The Examiner does not rely on Slater in any manner that overcomes
the deficiencies of the proposed combination of Yoon, Eggers, and Baden, in
rejecting claim 27. The rejection is therefore not sustained.
Appeal 2018-002522
Application 14/719,564

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DECISION
The rejection of claims 21, 23–26, 28, and 29 under 35 U.S.C.
§ 103(a) as being unpatentable over Yoon, Eggers, and Baden is reversed.
The rejection of claim 22 under 35 U.S.C. § 103(a) as being
unpatentable over Yoon in view of Eggers, Baden, and Parins is reversed.
The rejection of claim 27 under 35 U.S.C. § 103(a) as being
unpatentable over Yoon in view of Eggers, Baden, and Slater is reversed.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21, 23–26,
28, 29
103(a) Yoon, Eggers, Baden 21, 23–26, 28, 29
22 103(a) Yoon, Eggers, Baden,
Parins
22
27 103(a) Yoon, Eggers, Baden,
Slater
27
Overall
Outcome

21–29

REVERSED