Ex Parte Shelton et al

Patent Trial and Appeal Board

Nov 28, 2018

13789076 (P.T.A.B. Nov. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/789,076 03/07/2013
92223 7590 11/30/2018
K&L Gates LLP-Pittsburgh
210 SIXTH AVENUE
PITTSBURGH, PA 15222-2613
FIRST NAMED INVENTOR
Frederick E. Shelton IV
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
END5773USCNT14/050698CN14 1230
EXAMINER
LOPEZ, MICHELLE
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
11/30/2018 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):
uspatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FREDERICK E. SHEL TON IV, JOHN N. OUWERKERK, and
JEROME R. MORGAN1
Appeal 2018-003039
Application 13/789,076
Technology Center 3700
Before DANIEL S. SONG, MICHELLE R. OSINSKI, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Office Action ("Act.") rejecting claims 1-20 in the present application (Br.
11). We have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a).
We REVERSE.
1 The Appellant is the Applicant, Ethicon LLC, which is identified as the real
party in interest (Appeal Brief ("Br.") 2).
Appeal2018-003039
Application 13/789,076
The claimed invention is directed to a surgical instrument (Title,
Abstract). Independent claim 1 reads as follows (Br. 26, Claims App'x):
1. A surgical stapling instrument, comprising:
a shaft configured to support a stapling assembly;
a firing member configured to transmit a firing motion to
the stapling assembly;
a closure member configured to transmit a closing motion
to the stapling assembly;
a manually-actuatable closure trigger which is operable to
impart said closing motion to said closure member, wherein said
manually-actuatable closure trigger is mechanically coupled to a
jaw of the stapling assembly such that a load can be transmitted
between the jaw and said manually-actuatable closure trigger;
and
a motor, wherein said motor is operably coupled to said
firing member to impart said firing motion to said firing member.
REJECTI0NS 2
The Examiner rejects claims 1---6, 8-13, and 15-19 under 35 U.S.C.
§ I03(a) as obvious over Green (EP O 484 677 Al, pub. May 13, 1992) in
view ofHooven (US 5,667,517, iss. Sept. 16, 1997) (Act. 3).
The Examiner rejects claims 7, 14, and 20 under 35 U.S.C. § I03(a) as
obvious over Green and Hooven in view of Alesi (US 5,779,130, iss. July
14, 1998) (Act 4).
2 The Appellant filed a Terminal Disclaimer on September 29, 2017 to
address the Examiner's obviousness-type double patenting rejection of
claims 1-20 based on U.S. 2013/0181034, rendering that rejection moot (Br.
11; Act. 2-3).
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Application 13/789,076
Rejection 1
ANALYSIS
The Examiner rejects claims 1---6, 8-13, and 15-19 as obvious over
Green in view of Hooven, finding that as to the independent claims 1, 8, and
15, Green discloses a surgical stapling instrument as claimed, "but fails to
disclose a motor, wherein said motor is operably coupled to said firing
member to impart said firing motion to said firing member." (Act. 3--4).
The Examiner finds that Hooven discloses "a motor driven surgical stapler
comprising a motor (45) operably coupled to a firing member (83) for the
purposes of controlling the force to impart a firing motion to said firing
member." (Act. 4). The Examiner concludes that "[i]t would have been
obvious to one having ordinary skills in the art to have provided Green's
instrument with a motor as taught by Hooven in order to control the
actuation of the firing member." (Act. 4, citing Hooven, col. 2, 11. 35--42,
52---60; col. 3, 11. 1-9).
The Appellant argues that claim 1 "recites a closure member which
transmits a closing motion to the stapling assembly and a firing member
which transmits a firing motion to the stapling assembly. Two different
members-two different motions." (Br. 13). The Appellant points out
that in the stapling instrument of Hooven, "the electric motor 45 closes the
anvil 75 and fires the staples in one continuous motion" (Br. 13, citing
Hooven Figs. 3, 6-8), and that "force feedback to the clinician's hand" is not
provided so that the clamping pressure being applied to the tissue cannot be
sensed (Br. 13-14).
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Application 13/789,076
These arguments are not entirely persuasive because the Appellant
argues Hooven individually while the rejection is based on the combination
of Green and Hooven. Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references. In re Merck, 800 F.2d 1091, 1097 (Fed. Cir.
1986); In re Keller, 642 F.2d 413,425 (CCPA 1981). As noted by the
Examiner, "Green teaches the use of separate jaws closing and firing
motions." (Ans. 2).
The Appellant also points out that Green discloses a manually-
operated closure trigger 602 and a manually operated firing trigger 636, so
that everything is manual and nothing is motorized (Br. 15-16). The
Appellant argues that Hooven "teaches to motorize every function of the
surgical instrument, and at no point does Hooven [] remotely stop to
suggest that it might be good to motorize some functions, but not others."
(Br. 14). Accordingly, the Appellant argues that Green and Hooven
"disclose all-or-nothing propositions and nothing in-between," so there
would not have been motivation or reason to motorize the staple firing
system of Green, but not its tissue clamping system when Hooven teaches to
motorize both functions (Br. 16). The Appellant also points out that Hooven
was filed after Green, and as noted above, Hooven further teaches
combining the tissue clamping and staple firing functions into one
continuous stroke or motion (Br. 16-17). The Appellant concludes that
Hooven "is clearly headed in a different direction," and that the time lapse
between the claimed invention and the prior art is evidence of non-
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Application 13/789,076
obviousness (Br. 17, citing Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346,
1353 (Fed. Cir. 2013)).
We find these arguments of the Appellant persuasive. Mere age of the
references is not dispositive. In re Wright, 569 F.2d 1124, 1127 (CCPA
1977); see also Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1338 (Fed. Cir.
2016). However, "an invention can often be the recognition of a problem
itself." Leo Pharm., 726 F.3d at 1353 (citing Cardiac Pacemakers, Inc. v.
St. Jude Med., Inc., 381 F.3d 1371, 1377 (Fed. Cir. 2004) ("There can of
course arise situations wherein identification of the problem is itself the
invention.")). As explained by the court in a later decision, Leo "hinged on
the fact that nothing in the cited prior art appreciated the problem the
invention recognized and then solved." Nike, 812 F.3d at 1338. By
providing a manually-actuatable closure trigger, the Appellant appears to
have recognized a problem, and provided a solution (see, e.g., Spec. ,r,r 6,
49).
In the Answer, the Examiner responds that in view of Hooven, it
would have been obvious to one of ordinary skill in the art to use "a motor to
operate a firing member to Green's firing system in order to applied [sic]
greater forces while controlling the actuation of the firing member." (Ans.
2). While that may address the desirability of using a motor as to the firing
member of Green, that does not address why a person of ordinary skill in the
art would not have used the same motor for clamping the jaws as disclosed
in Hooven. Hooven, which is relied upon by the Examiner, appears to
indicate that the art developed in that direction wherein the motor actuates
the jaws as well as the firing member in a continuous stroke or motion. In
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Application 13/789,076
that regard, in considering obviousness, the entirety of Hooven must be
considered for all that it teaches to one of ordinary skill. In re Wesslau, 353
F.2d 238, 241 (CCPA 1965) ("It is impermissible within the framework of
section 103 to pick and choose from any one reference only so much of it as
will support a given position, to the exclusion of other parts necessary to the
full appreciation of what such reference fairly suggests to one of ordinary
skill in the art."). The Examiner does not direct us to any evidence, or
provide any rational basis, establishing that it was known or desirable to
maintain a manually actuatable closure trigger while motorizing firing of the
staple.
Therefore, in view of the above considerations, we reverse the
Examiner's rejection of claim 1. The Appellant argues that independent
claims 8 and 15 are patentable for substantially the same reasons as claim 1
(Br. 19--20). Indeed, claim 8 recites "a manually-actuatable closure trigger,"
while claim 15 recites "a manually-manipulatable closure actuator." (Br. 27,
28, Claims App 'x). Claims 8 and 15 also recite "a motor, wherein said
motor is operably coupled [ or coup lab le] to said firing member to impart
said firing motion to said firing member." (Id.). Thus, the rejection of
independent claims 8 and 15 is also reversed for the reasons already
discussed. Moreover, because the remaining claims subject to Rejection 1
ultimately depend from one of these independent claims, the rejection
thereof is also reversed. While the Appellant's reliance on the Declaration
of Mr. Shelton, IV in asserting commercial success of the claimed invention
(Br. 17-18) is unpersuasive, it is nonetheless immaterial in view of the
reversal.
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Application 13/789,076
Rejection 2
The Examiner rejects dependent claims 7, 14, and 20 as obvious over
Green and Hooven in view of Alesi, the Examiner relying on Alesi for
disclosing use of a battery for a power source for the motor (Act. 4).
However, as the Appellant argues, Alesi "does not cure the above-discussed
deficiencies of the combination of Green [] and Ho oven." (Br. 21 ). In that
regard, as the Appellant points out, like Hooven, the device of Alesi closes
its anvil and fires the staples in one continuous motion (Br. 21 ), and utilizes
a motor for its closure and firing functions (Br. 22), thereby further
indicating the divergent direction of the art applied. Therefore, we reverse
Rejection 2 as well.
CONCLUSION
Rejections 1 and 2 of claims 1-20 are REVERSED.
REVERSED
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