Ethicon Endo-Surgery, LLCDownload PDFPatent Trials and Appeals BoardApr 30, 202014667892 - (D) (P.T.A.B. Apr. 30, 2020) Copy Citation 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. 14/667,892 03/25/2015 Frederick E. Shelton IV END7591USNP.0622624 1013 100709 7590 04/30/2020 Ethicon Endo-Surgery, Inc. c/o Frost Brown Todd LLC 3300 Great American Tower 301 East Fourth Street Cincinnati, OH 45202 EXAMINER PALMER, LUCAS E A ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 04/30/2020 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): jdewar@fbtlaw.com patents@fbtlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FREDERICK E. SHELTON, RAO S. BEZWADA, and CHRISTOPHER W. WIDENHOUSE Appeal 2019-005251 Application 14/667,892 Technology Center 3700 Before JOHN C. KERINS, EDWARD A. BROWN, and CHARLES N. GREENHUT, Administrative Patent Judges. GREENHUT, 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 1–18. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Ethicon, LLC. Appeal Br. 3. Appeal 2019-005251 Application 14/667,892 2 CLAIMED SUBJECT MATTER The claims are directed to a low inherent viscosity bioabsorbable polymer adhesive releasably attaching a staple buttress to a surgical stapler. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A surgical stapler end effector, the end effector comprising: (a) a staple cartridge, wherein the staple cartridge comprises: (i) a plurality of staples, and (ii) a deck, wherein the staple cartridge is operable to drive the staples through the deck; (b) an anvil, wherein the anvil is movable from an open position toward the staple cartridge to reach a closed position, wherein the anvil includes an underside having staple forming surface configured to receive staples driven through the deck; and (c) a buttress assembly, wherein the buttress assembly comprises: (i) a porous buttress body having a first surface and a second surface, wherein the buttress body is configured to allow an adhesive material applied to the first surface to migrate through the porous buttress body to the second surf ace, and (ii) an adhesive material, wherein the adhesive material is configured to removably secure the buttress body to the deck of the staple cartridge or the underside of the anvil, wherein the adhesive material comprises a polymer, wherein the polymer is bioabsorbable, wherein the polymer has an inherent viscosity at or below 3.0 dL/g. Appeal 2019-005251 Application 14/667,892 3 REFERENCES The prior art relied upon by the Examiner is: Reference Name Document ID Pub. Date Hamilton US 6,325,810 B1 Dec. 4, 2001 Scopelianos US 5,599,852 Feb. 4, 1997 Miller US 2013/0068820 A1 Mar. 21, 2013 Schmid US 2013/0146643 A1 June 13, 2013 Fujita US 2015/0051355 A1 Feb. 19, 2015 REJECTIONS2 Claims 1–3, 5–7, 13–183 are rejected under 35 U.S.C. § 103 as being unpatentable over Hamilton and Miller. Final Act. 2. Claims 4, 11, and 12 are rejected under 35 U.S.C. § 103 as being unpatentable over Hamilton, Miller, and Fujita. Final Act. 7. Claims 8, 9, and 10 are rejected under 35 U.S.C. § 103 as being unpatentable over Hamilton, Miller, and Scopelianos. Final Act. 7. OPINION The claims are argued as a group based on sole independent claim 1, with no separate arguments regarding the dependent claims. The Examiner relies on Hamilton as meeting the basic structure of claim 1 absent the porous buttress body. Final Act. 2–3. Miller is relied on by the Examiner to account for this deficiency. Final Act. 3. The sole argument advanced by Appellant is that Hamilton teaches away from using a porous buttress body. Appeal Br. 8–9. The Examiner has 2 Claim 20 was cancelled and the Examiner withdrew the rejection of claim 19. Advisory Act. and Int. Sum. May 2, 2018. 3 Claim 18, which is discussed under this rejection heading (Final Act. 4) appears to have been inadvertently omitted from the rejection statement. Appeal 2019-005251 Application 14/667,892 4 a much better position: First, as the Examiner points out, Hamilton expresses a preference for preventing or minimizing wicking, indicating “it may be desired,” to avoid wicking, but does not provide any express criticism of a wicking structure or state the reasons for such preference. Ans. 4. A statement that a particular combination is not a preferred embodiment does not teach away absent clear discouragement of that combination. Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (internal citations omitted). Second, as the Examiner also points out, Miller’s buttress structure is different from Hamilton’s, in that Miller’s includes openings to encourage tissue growth. Ans. 5 (citing Miller para. 35). It is this structure, absent in Hamilton, which Miller explains renders it desirable for the buttress to have wicking capabilities so as to discourage the adhesive from occupying the openings and thereby inhibiting such tissue growth. Third, as the Examiner again points out, it is the entirety of the prior art that must be considered. Ans. 5. Before us we have the Hamilton reference, which seems to indicate the possibility that one might prefer wicking prevention, but does not afford us any explanation as to why. And, Appellant does not apprise us as to any technical reasons why, and under what circumstances, Hamilton’s device would benefit from the lack of wicking, much less why such reasons would likewise be relevant in Miller. We also have Miller which expresses a preference for wicking and explains precisely why. The Examiner is correct that one skilled in the art would be able to ascertain which is more desirable for a particular set of circumstances, and in light of Miller’s express teachings, there is no need to resort to hindsight to conclude a preference for wicking would have been obvious. Ans. 5–6 (citing, inter alia, Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000)). Appeal 2019-005251 Application 14/667,892 5 In the Reply Brief, Appellant argues, “Miller, like Hamilton, is silent with respect to any material, much less a ‘buttress body,’ that ‘is configured to allow an adhesive material applied to the first surface to migrate through the porous buttress body to the second surface.” Reply. Br. 3. As the portion of Miller reproduced by Appellant immediately thereabove is very clear that Miller includes “[m]atrix (104) . . . [that] may comprise [] a biocompatible material that is a buttress . . . [that] may include porosities that induce a wicking feature to drawing adhesive into the material,” the only thing we can reasonably discern this argument could impliedly be directed to relates to the recited ability of the adhesive to migrate from a first to a second surface of Miller, as Appellant now emphasizes in the quoted portion of the claim in the Reply Brief. It is true that the Miller’s express discussion concerns wicking away from the openings as opposed to from one particular surface to another. Thus, the issue with respect to this limitation becomes whether Miller’s buttress is inherently “configured to allow” such migration. This determination first involves construing the limitation to ascertain the breadth of “configured to allow,” and second involves an analysis of the technical reasons Miller’s matrix material is necessarily, and therefore reasonably, regarded as so configured. This involves determining the understanding of one skilled in the art regarding claim terms (MPEP § 2111), as well as the technical reasons limitations defined by function or action (i.e., “allow”) should be regarded as inherent characteristics of the prior art (MPEP § 2112). The ability to base our judgment upon a record that includes the Examiner’s informed analysis as to issues such as these, particularly where a burden-shifting framework is involved (see MPEP § 2112(V)), is one of the reasons for Rule 37 C.F.R. § 41.41(b). 37 C.F.R. § 41.41(b) stating, “[a]ny argument raised in the reply brief which was not Appeal 2019-005251 Application 14/667,892 6 raised in the appeal brief, or is not responsive to an argument raised in the examiner’s answer . . . will not be considered by the Board for purposes of the present appeal, unless good cause is shown.” Not having shown good cause, we consider Appellant’s argument in this regard, to the extent we have correctly understood what Appellant intended to argue in the Reply Brief, as untimely. Separate arguments are not provided for any other claims. Accordingly, for the foregoing reasons, we sustain the Examiner’s rejection. CONCLUSION The Examiner’s rejections are AFFIRMED. DECISION SUMMARY In summary: Claims 35 U.S.C. § Basis/References Affirmed Reversed 1–3, 5–7, 13–18 103 Hamilton, Miller 1–3, 5–7, 13–18 4, 11, 12 103 Hamilton, Miller, and, Fujita 4, 11, 12 8, 9, 10 103 Hamilton, Miller, Scopelianos 8, 9, 10 Overall Outcome 1–18 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). See 37 C.F.R. § 1.136(a)(1)(iv). Appeal 2019-005251 Application 14/667,892 7 AFFIRMED Copy with citationCopy as parenthetical citation