Ethicon Endo-Surgery, LLCDownload PDFPatent Trials and Appeals BoardJun 30, 20212020006445 (P.T.A.B. Jun. 30, 2021) 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. 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 Copy with citationCopy as parenthetical citation