Ethicon Endo-Surgery, LLC

Patent Trials and Appeals Board

Jun 30, 2021

2020006445 (P.T.A.B. Jun. 30, 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.
15/350,621 11/14/2016 Christopher C. Miller END7977USNP.0637664 8126
135715 7590 06/30/2021
Cilag GmbH International
c/o Frost Brown Todd LLC
3300 Great American Tower
301 East Fourth Street
Cincinnati, OH 45202
EXAMINER
SEIF, DARIUSH
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
06/30/2021 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):
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 CHRISTOPHER C. MILLER and
FREDERICK E. SHELTON
Appeal 2020-006445
Application 15/350,621
Technology Center 3700
Before BRETT C. MARTIN, WILLIAM A. CAPP, and
LISA M. GUIJT, Administrative Patent Judges.
MARTIN, 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, 4–11, and 13–23. 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(a). Appellant identifies the real party in interest as Ethicon, LLC.
Appeal Br. 3.
Appeal 2020-006445
Application 15/350,621
2
CLAIMED SUBJECT MATTER
The claims are directed to staple forming pocket configurations for a
circular surgical stapler anvil. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. An apparatus comprising:
(a) an anvil surface configured to compress tissue against
a deck surface, wherein the anvil surface extends
circumferentially about a central axis, wherein the anvil surface
defines:
(i) an inner annular array of staple forming pockets,
wherein the inner annular array of staple forming pockets
comprises a plurality of inner staple forming pocket pairs,
wherein each pair of inner staple forming pockets in the
inner annular array comprises:
(A) a first inner staple forming pocket, and
(B) a second inner staple forming pocket
disposed radially inboard of the first inner staple
forming pocket,
wherein the first inner staple forming pocket
extends away from the second inner staple forming
pocket in a first circumferential direction along the
anvil surface, wherein the second inner staple
forming pocket extends away from the first inner
staple forming pocket in an opposed second
circumferential direction along the anvil surface,
wherein the first inner staple forming pocket
is configured to bend a first leg of a first staple
radially outwardly relative to the central axis,
wherein the second inner staple forming
pocket is configured to bend a second leg of the first
staple radially inwardly relative to the central axis,
and
(ii) an outer annular array of staple forming pockets,
wherein the outer annular array of staple forming pockets
comprises a plurality of outer staple forming pocket pairs,
wherein each pair of outer staple forming pockets in the
outer annular array comprises:
Appeal 2020-006445
Application 15/350,621
3
(A) a first outer staple forming pocket, and
(B) a second outer staple forming pocket
disposed radially outboard of the first outer staple
forming pocket,
wherein the first outer staple forming pocket
extends away from the second outer staple forming
pocket in the first circumferential direction, wherein
the second outer staple forming pocket extends
away from the first outer staple forming pocket in
the second circumferential direction,
wherein the first outer staple forming pocket
is configured to bend a first leg of a second staple
radially inwardly relative to the central axis,
wherein the second outer staple forming
pocket is configured to bend a second leg of the
second staple radially outwardly relative to the
central axis; and
(b) an anvil shaft extending along the central axis, wherein
the anvil shaft is configured to couple with a stapling head
assembly of a surgical stapler.
REFERENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Scheib US 2014/0151430 A1 June 5, 2014
REJECTIONS
Claims 4 and 23 are rejected under 35 U.S.C. § 112(b) as being
indefinite. Final Act. 2.
Claims 1, 4–11, and 13–23 are rejected under 35 U.S.C. § 103 as
being unpatentable over Scheib. Final Act. 3.
Appeal 2020-006445
Application 15/350,621
4
OPINION
Indefiniteness
The Examiner rejects claims 4 and 23 as indefinite due to their
dependency from a canceled base claim. Appellant does not argue this
rejection. Accordingly, we summarily affirm the Examiner’s indefiniteness
rejection.
Obviousness
Appellant only provides argument for independent claim 1 and relies
upon the arguments with respect to claim 1 for the patentability of
independent claims 19 and 20. See Appeal Br. 20–22. Appellant does
provide separate argument for dependent claim 16, which we will deal with
separately. Other than claim 16, all of the pending claims stand or fall with
our disposition of claim 1.
Regarding claim 1, the Examiner finds that Scheib teaches the
claimed inner and outer pocket configurations, but such configurations are
depicted in separate embodiments, namely those of Figure 14 and Figure 34.
Final Act. 4. The Examiner finds the inner pockets in Figure 14 and the
outer pockets in Figure 34. Final Act. 4–5. The Examiner then asserts that
it would have been obvious to try to modify Scheib’s outer pockets in
Figure 14 by substituting the configuration of the outer pockets of Figure 34.
Final Act. 5. The Examiner posits that “there are only a small, finite number
of variations of the positions and staple-bending characteristics of the inner
and outer staple pocket pairs,” thus allowing for an obvious to try rationale.
Id.
Appellant argues “that there are an infinite number of ways in which
to arrange two or more pocket pairs relative to one another on an anvil
surface.” Appeal Br. 17. Appellant then asserts that the Examiner erred by
Appeal 2020-006445
Application 15/350,621
5
considering Scheib “as defining the full scope of possible ways in which to
arrange staple forming pockets on an anvil.” Id. Appellant concludes that it
would not have been obvious to try the combination of Scheib’s inner pocket
of Figure 14 and outer pocket of Figure 34 due to the infinite number of
possible arrangements. Id.
Although Appellant may generally be correct in asserting that there
are infinite ways in which to orient staple pocket pairs, we need not consider
the entire universe of possibilities. The Examiner here has not looked to the
entire universe of anvil arrangements, but has found the claimed limitations
in only one reference. The Examiner’s rejection is to combine two
embodiments within Scheib, each embodiment of which exactly teaches one
of the claimed staple pocket configurations.
We agree with the Examiner that at least in the context of the rejection
at issue, the universe of configurations is only four. See Ans. 6. Scheib
specifically teaches the claimed inner pocket configuration in the
Examiner’s “configuration 4” and the outer pockets in “configuration 1,”
while the claimed invention implements “configuration 3.” Id. We agree
with the Examiner that “[a]ny one of these 4 combinations would have been
obvious to try for a person having ordinary skill in the art.” Id. The
Examiner’s rejection merely utilizes part of configuration 1 and part of
configuration 4 to arrive at Appellant’s configuration 3, which is not
specifically disclosed in Scheib as an alternative. Given this limited
universe of options, we disagree with Appellant that it would not have been
obvious to try the Examiner’s combination. Accordingly, we sustain the
Examiner’s rejection of claim 1 as well as all of the other pending claims
besides claim 16.
Appeal 2020-006445
Application 15/350,621
6
Regarding claim 16, Appellant asserts that the Examiner’s “first and
second portions S1, S2 are not ‘opposing’ as would be understood by a
person of ordinary skill in light of Appellant’s specification.” Appeal
Br. 20. We agree with the Examiner, however, that Appellant’s Figure 9
actually “shows only two physical sidewalls.” Ans. 8. Appellant then
divides one of the two sidewalls into multiple sections essentially along
arbitrary points of demarcation generally bounded by areas where the
sidewall curves. Given this imprecise division of Appellant’s curved
sidewall, we are not persuaded that the Examiner erred in likewise dividing
Scheib’s sidewalls into smaller sections that then satisfy the claimed
limitations. The Examiner has sufficiently explained how S2 is considered
to be opposing S1 as claimed. See Ans. 7–9. Accordingly, we sustain the
Examiner’s rejection of claim 16.
CONCLUSION
The Examiner’s rejections are affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
4, 23 112 Indefiniteness 4, 23
1, 4–11, 13–
23
103 Scheib 1, 4–11, 13–
23

Overall
Outcome
1, 4–11, 13–
23

Appeal 2020-006445
Application 15/350,621
7
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).
AFFIRMED