COVIDIEN LP

Patent Trials and Appeals Board

Apr 2, 2021

2020005206 (P.T.A.B. Apr. 2, 2021)

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.
15/005,068 01/25/2016 SARA E. ANDERSON H-
US-02197CN2(203-7112CN2
4014
90039 7590 04/02/2021
Covidien LP
Attn: IP Legal
5920 Longbow Drive
Mail Stop A36
Boulder, CO 80301-3299
EXAMINER
FOWLER, DANIEL WAYNE
ART UNIT PAPER NUMBER
3794
NOTIFICATION DATE DELIVERY MODE
04/02/2021 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 SARA E. ANDERSON, WILLIAM H. NAU, Jr.,
GARY M. COUTURE, and REBECCA J. COULSON
Appeal 2020-005206
Application 15/005,068
Technology Center 3700
Before JENNIFER D. BAHR, BENJAMIN D. M. WOOD, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 11, 18, and 19.2 See Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Covidien LP.
Appeal Br. 1.
2 Claims 1–10, 12–17, and 20–29 are cancelled. Appeal Br. 11 (Claims
App.).
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CLAIMED SUBJECT MATTER
The claims are directed to a dynamic and static bipolar electrical
sealing and cutting device. Claim 11, reproduced below with emphases
added, is illustrative of the claimed subject matter:
11. An end effector assembly for use with an electrosurgical
instrument, the end effector assembly comprising:
first and second jaw members each defining an opposed
inwardly-facing surface and an outwardly-facing surface, at least
one of the first or second jaw members movable about a pivot
relative to the other between an open position and a closed
position for grasping tissue between the inwardly-facing surfaces
thereof; and
a dynamic electrosurgical cutting portion disposed
distally of the pivot and at a proximal end of the first jaw
member, the dynamic electrosurgical cutting portion immovable
relative to the pivot, a distal surface of the dynamic
electrosurgical cutting portion disposed perpendicularly to the
inwardly-facing surface of the first jaw member, the dynamic
electrosurgical cutting portion when activated configured to
electrically transect tissue upon distal movement of the end
effector relative to tissue while the first and second jaw members
are in the open position.
Appeal Br. 11 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Wampler US 2001/0001820 A1 May 24, 2001
Dycus US 2003/0229344 A1 Dec. 11, 2003
Johnson US 2006/0271038 A1 Nov. 30, 2006

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REJECTION
Claims 11, 18, and 19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Johnson, Wampler, and Dycus. Final Act. 2.
OPINION
The Examiner finds that Johnson teaches many of the elements recited
by claim 11, including first and second jaw members (110, 120) that pivot
relative to each other and include inwardly-facing surfaces adapted to
connect to different electrical potentials. Final Act. 2–3 (citing Johnson
¶ 56, Figs. 1A, 8A). The Examiner also finds Johnson discloses a static
cutting portion (2927) disposed on one of the inwardly-facing surfaces and
spaced from the electrically conductive plate of the opposing jaw member.
Id. (citing Johnson, Fig. 8A).
However, the Examiner finds Johnson does not disclose a “dynamic
cutting portion” as recited and relies on Wampler’s disclosure of a device
with jaws and a dynamic cutting portion to remedy this deficiency. Id. at 3
(citing Wampler, Figs. 5, 11, 12). The Examiner further finds “Wampler
teaches that this configuration has distinct advantages when cutting large
areas of tissue ([0005], fig. 13), which, in traditional forceps such as
Johnson, requires repeated opening and closing of the jaws.” Id. Based on
this finding, the Examiner reasons it would have been obvious “to provide
the first jaw of Johnson with the dynamic cutting portion of Wampler to
allow the device to be used for the functions disclosed by Johnson while also
being useful to quickly cut larger regions of tissue as taught by Wampler.”
Id.
The Examiner also finds Wampler does not disclose that the blade of
its dynamic cutting portion is electrically conductive. Id. at 3. Nonetheless,
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the Examiner relies on Dycus to support a finding that “it is commonly
known that electrical and mechanical cutting are functionally equivalent, and
therefore can be combined with or substituted for each other.” Id.
I. (Tissue Grasped Between Jaws)
Appellant first argues that the Examiner’s proposed modification to
Johnson’s end effector would not provide the advantages upon which the
Examiner’s rationale is based. See Appeal Br. 6–7; Final Act. 3.
Specifically, Appellant contends “Johnson appears to be directed towards a
vessel sealing instrument that grasps tissue between its jaw members, and
then seals and cuts the tissue that is grasped between the jaw members.”
Appeal Br. 6. According to Appellant, “[t]o grasp (and seal and cut) tissue
outside of the jaw members, the user would be required to open and close
the jaw members.” Id. Thus, Appellant argues, “having the ability to cut
tissue outside of the jaw members (i.e., ‘larger regions of tissue,’ as set forth
[by the Examiner], does not appear to be helpful, as a user would necessarily
be required to first grasp and seal that tissue by opening and closing the jaw
members.” Id.
We agree with the Examiner that Appellant’s argument “is based on
the assumption that one of ordinary skill in the art would continue, and in
fact must continue, to use the combination only as discussed by Johnson.”
Ans. 5. We also agree with the Examiner’s characterization of the result of
the proposed combination of Johnson and Wampler, specifically, “the
modification results in a device with two modes: a ‘Johnson mode’ where
the jaws are opened and closed to cut small regions of tissue and a ‘Wampler
mode’ where the jaws are opened to cut large regions of tissue (as discussed
in the rejection).” Id.; see also Final Act. 3. The Examiner’s rationale
explicitly states that, under the proposed modification, the original use of the
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end effector disclosed by Johnson is maintained, “while [the modified device
is also] useful to quickly cut larger regions of tissue as taught by Wampler.”
Final Act. 3. In other words, the Examiner’s proposed combination to
Johnson’s end effector is based upon providing a new ability to the end
effector, not merely changing its structure with no change in its function.
This reasoning is supported by the teachings of Wampler, as discussed
below.
In its background discussion of the prior art, Wampler describes an
end effector that is used to (i) grasp tissue, (ii) apply electrical energy to cut
the tissue, and (iii) release the tissue. See Wampler ¶ 4. The prior art
discussed in Wampler then moves the end effector to fresh tissue so that the
process can be repeated. Id. Wampler explains one of the disadvantages of
this conventional process, stating, “[w]hile this procedure is very effective in
many surgical procedures, when working in certain types of tissue, such as
mesentery tissue, it may become tedious to continuously grasp and release
as the instrument is moved through the tissue.” Id. (emphasis added).
Wampler then discloses its solution to the above-noted problem, stating, “[i]t
would, therefore, be advantageous to design a bipolar electrosurgical end
effector adapted to coagulate and cut tissue while moving continuously
through the tissue.” Id. ¶ 5 (emphasis added). The structure added to
Johnson’s end effector by the Examiner’s proposed modification is intended
to perform a cutting process during such continuous movement. See Final
Act. 3; Wampler, Fig. 13. Thus, Wampler explicitly discloses its structure
and mode of operation as an improvement over a system in which end
effector jaws are repeatedly opened and closed. The Examiner’s proposed
modification to the end effector in Johnson merely adds this additional
structure for the purpose of performing this additional mode of operation.
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In the Reply Brief, Appellant faults the Examiner as first modifying
the references, then looking back to see if the modification would be
beneficial. Reply Br. 2. This argument refers to the Examiner’s statement
in the Answer that “once modified as taught by Wampler, one of ordinary
skill in the art would recognize the benefit of Wampler is realized by cutting
long regions of tissue without needing to move the jaws.” Ans. 5; see also
Reply Br. 2.
This assertion is unavailing because, as discussed above, the
reasoning set forth in the Final Office Action is supported by Wampler’s
explicit disclosure. See Wampler ¶¶ 4–5. Taken in context,3 we understand
the Examiner’s statement to mean that a person of ordinary skill in the art
would have been motivated to modify the end effector of Johnson and use it
in the “Wampler Mode,” not that a person of ordinary skill in the art would
have been motivated to make the modification only after having seen it in its
final form.
II. (Exposed Blade)
Appellant next argues that the Examiner’s proposed modification to
Johnson’s end effector “would necessarily cause an exposed blade to be
added to the grasping instrument of Johnson.” Appeal Br. 7. According to
Appellant, “[s]urgical grasping instruments typically tend to minimize the
amount of exposure of any cutting elements they may have to help minimize
inadvertent severing of tissue during grasping, for instance, as evidenced in

3 The Examiner’s statement comes immediately after the sentence
“Appellant’s argument that including the structure of Wampler in the
device of Johnson ‘does not appear to be helpful’ is based on the assumption
that one of ordinary skill in the art would continue, and in fact must
continue, to use the combination only as discussed by Johnson.” Ans. 5.
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part by the fact that the cutting element 927 of Johnson is disposed within a
recessed insulator 913.” Id. (citing Johnson ¶ 85).
In response, the Examiner disputes whether the proposed modification
would “necessarily” result in an exposed blade. Ans. 6. In support of the
Examiner’s position, the Examiner finds “neither Johnson nor Wampler
have exposed blades.” The Examiner also finds “Appellant . . . is making
[an] unsupported argument that exposed blades are exceedingly dangerous.”
Id. at 7. The Examiner points to Dycus (Figs. 37A–37B) as evidence that
exposed blades are used in the art. Id.
In reply, Appellant contends that, contrary to the Examiner’s position,
Figure 6 of Wampler discloses that leading edge 42 is “exposed,” and Dycus
takes special measures intended to reduce the chances any exposed blade
causes an accidental cut. See Reply Br. 3–4.
The Examiner has the better position. Even assuming for the purpose
of argument that the Examiner’s proposed modifications to Johnson’s end
effector necessarily result in an exposed blade, Appellant does not provide
technical argument or persuasive evidence that any problem resulting from
such a blade would outweigh the benefits Wampler explicitly discloses.
Indeed, Appellant’s statement that “[s]urgical grasping instruments typically
tend to minimize the amount of exposure of any cutting elements they may
have to help minimize inadvertent severing of tissue during grasping”
(Appeal Br. 7) indicates that some amount of blade exposure is allowed,
which undermines Appellant’s position.
III. (Improper Hindsight)
Appellant next argues that the Examiner relied on improper hindsight
because only Appellant’s Specification sets forth reasons for combining a
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pivotable jaw as disclosed by Johnson with a dynamic cutting portion as
disclosed by Wampler. See Appeal Br. 8.
We do not agree because the explicit teachings of Wampler support
the Examiner’s reasoning for the proposed modification to Johnson’s end
effector, as discussed above. See Wampler ¶¶ 4–5. Thus, Appellant is
mistaken in asserting that the Examiner “relies on information gleaned
solely from Appellant’s specification.” Appeal Br. 8.
We have considered all of Appellant’s arguments in support of the
patentability of claim 11, but find them unavailing. Accordingly, we sustain
the rejection of claim 11. Appellant makes no separate arguments in support
of the patentability of claims 18 and 19. See Appeal Br. 4, 9. Accordingly,
these claims fall with claim 11, from which they depend.

CONCLUSION
The Examiner’s decision to reject claims 11, 18, and 19 is affirmed.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
11, 18, 19 103(a) Johnson, Wampler,
Dycus
11, 18, 19
Overall
Outcome
11, 18, 19

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED