Ethicon Endo-Surgery, LLC

Patent Trials and Appeals Board

Apr 30, 2020

14667892 - (D) (P.T.A.B. Apr. 30, 2020)

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.
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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.
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Application 14/667,892
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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.
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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)).
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Application 14/667,892
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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
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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).
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Application 14/667,892
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AFFIRMED