Joshua Benjamin. Stopek

Patent Trials and Appeals Board

Aug 29, 2019

13440223 - (D) (P.T.A.B. Aug. 29, 2019)

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.
13/440,223 04/05/2012 Joshua Benjamin Stopek H-US-02265(203-7502) 3079
50855 7590 08/29/2019
Covidien LP
60 Middletown Avenue
Mailstop 54, Legal Dept.
North Haven, CT 06473
EXAMINER
CHAO, ELMER M
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
08/29/2019 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):
docket@carterdeluca.com
rs.patents.two@medtronic.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOSHUA BENJAMIN STOPEK
____________

Appeal 2019-001510
Application 13/440,2231
Technology Center 3700
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant appeals from the
Examiner’s decision rejecting claims 1–11, 13–19, 21, and 23. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.

1 “The real party in interest for the above-identified application is Covidien
LP.” Appeal Br. 1.
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STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1 and 11 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter.
1. A surgical instrument for treating tissue during
use of a diagnostic scanning device, the surgical
instrument comprising:
a housing;
an end effector assembly including first and
second jaw members moveable relative to
one another and a plurality of fasteners;
and
an actuating mechanism configured to eject
the plurality of fasteners from the end
effector assembly;
wherein at least a portion of the end effector
assembly is constructed from a material that is
compatible with the diagnostic scanning device and
that allows a user to insert and activate the end
effector assembly to thereby treat tissue at a surgical
site within a patient while the surgical site is
monitored during diagnostic testing, wherein the
entire end effector assembly is at least one of clear,
transparent, translucent, and radio-translucent to the
scanning device.

Rejections
I. Claims 1–11 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C.
§ 112 (pre-AIA), first paragraph, as failing to comply with the written
description requirement.
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II. Claims 1, 2, 4–11, 13–16, 18, 19, and 23 are rejected under
35 U.S.C. § 103(a) as unpatentable over Zemlok,2 Saadat,3 Hooven4 or
Blake,5 and McGuckin6.7
III. Claims 3 and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Zemlok, Saadat, Hooven or Blake, McGuckin, and
Chernomorsky8.
IV. Claim 21 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Zemlok, Saadat, Hooven or Blake, McGuckin, and Aranyi9.
V. Claims 1, 2, 4–11, 13–16, 18, 19, and 23 are rejected under
35 U.S.C. § 103(a) as unpatentable over To,10 Zemlok, Saadat, Hooven, and
McGuckin.11
VI. Claims 3 and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over To, Zemlok, Saadat, Hooven, McGuckin, and
Chernomorsky.
VII. Claim 21 is rejected under 35 U.S.C. § 103(a) as unpatentable
over To, Zemlok, Saadat, Hooven, McGuckin, and Aranyi.

2 Zemlok et al. (US 2009/0114701 A1, pub. May 7, 2009).
3 Saadat et al. (US 2005/0251177 A1, pub. Nov. 10, 2005).
4 Hooven (US 6,086,586, iss. July 11, 2000).
5 Blake, III (US 6,423,079 B1, iss. July 23, 2002).
6 McGuckin, Jr. (US 6,264,086 B1, iss. July 24, 2001).
7 Although the statement of the rejection fails to include claims 4 and 18, the
Examiner rejects these claims under this ground of rejection. Final Act. 6, 9.
8 Chernomorsky et al. (US 2007/0135711 A1, pub. June 14, 2007).
9 Aranyi et al. (US 8,128,643 B2, iss. Mar. 6, 2012).
10 To (US 2011/0098531 A1, pub. Apr. 28, 2011).
11 Although the statement of the rejection fails to include claims 4 and 18,
the Examiner rejects these claims under this ground of rejection. Final
Act. 11, 13.
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Withdrawn Rejection
The Examiner has withdrawn the rejection of claims 1 and 23 under
35 U.S.C. § 103(a) as unpatentable over To and Zemlok. Ans. 3.

ANALYSIS
Rejection I
The Examiner rejects claims 1, 8, 10, and 11 as failing to comply with
the written description requirement because “there is no support for the end
effector including fasteners and the entire end effector (including the
fasteners) being clear, transparent, translucent, or radio-translucent to the
scanning device.” Final Act. 5. The Examiner’s position is that the
Specification, specifically at paragraph 41,12 “fails to state that the end
effector is defined as including the stapler/staples.” Id.
The Appellant argues, “when the specification is read as a whole, the
specification provides support for the staples or ‘fasteners’ to be part of the
recited end effector assembly and ‘the entire end effector assembly is at least
one of clear, transparent, translucent, and radio-translucent to the scanning
device’ as recited in claim 1.” Appeal Br. 6; see id. at 5 (citing Spec. ¶¶ 25,
29, 38); Reply Br. 2–3 (citing Spec. ¶¶ 29, 37–44). The Appellant’s
argument is persuasive.
The Appellant points out that the Specification discloses “all” of the
surgical instruments (e.g., surgical clip applier, surgical stapling device) may

12 The Examiner cites to “paragraph 43 of the publication” (Final Act. 5),
which we understand as a reference to Stopek (US 2012/0316424 A1, pub.
Dec. 13, 2012). Stopek’s paragraph 43 corresponds to paragraph 41 of the
present application’s Specification.
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be made of a clear, translucent, and/or radio-translucent plastic. See Appeal
Br. 5 (citing Spec. ¶ 29); see also Spec. ¶¶ 7 (“The end effector may be
clear, transparent, translucent or radio-translucent to the scanning device.”),
34, 39, 43, 47. And, the Appellant points out that the “[S]pecification
discloses that staples are part of the end effector assembly.” Reply Br. 2–3
(citing Spec. ¶¶ 37–44). For example, the Appellant points out that from
paragraph 38, “it is clear that the staples are part of the cartridge 204 which
is part of jaw 203.” Appeal Br. 5–6 (citing Spec. ¶ 38). Indeed, paragraph
38 describes:
In operation, surgical stapling device 200 is
fired similarly to and in accordance with other
known surgical stapling devices. That is, firing
knob 207 is actuated, i.e. advanced distally, to eject
the staples from cartridge 204 into contact with
anvil member 208. In some embodiments, all or a
portion of surgical stapling device 200, and/or at
least a portion of jaws 203, 205, is constructed with
non-ferrous metals to avoid any adverse effects on
imaging during MRI scanning. Other suitable
materials, for example, copolymers, plastics and/or
carbon fiber may also be utilized.
One of ordinary skill in the art would understand that this paragraph
discloses staples as part of a staple cartridge. Elsewhere in the Specification
staple cartridges are identified as part of an end effector assembly. See Spec.
¶¶ 35, 37.
The Examiner disagrees with the Appellant’s argument because “it
pieces together bits and pieces of the concept in question from disparate
portions of the specification, then requires a stretch of the imagination to
conclude that the concept as a whole has support.” Ans. 4. The Examiner’s
position is that paragraphs 25, 29, and 38 of the Specification fail to
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“disclose that the staples are considered as part of the end effector assembly,
and furthermore do not provide support for staples (fasteners) being [clear,
transparent, translucent, and radio-translucent].” Id.
In this case, it appears that the Examiner’s rejection is based on the
lack of verbatim support in the Specification. However, the claimed
invention need not be recited in haec verba in the original specification to
satisfy the written description requirement. Ariad Pharms., Inc. v. Eli Lilly
& Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc). The fundamental
factual inquiry is whether the specification conveys with reasonable clarity
to those skilled in the art that, as of the filing date sought, applicant was in
possession of the invention as now claimed. See, e.g., Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991). We determine that the
Examiner’s position is not adequately supported. Further, the Examiner fails
to adequately explain another reason –– on the record –– why the subject
matter of claims 1, 8, 10, and 11 fails to comply with the written description
requirement. Thus, we do not sustain the Examiner’s rejection of claims 1,
8, 10, and 11 as failing to comply with the written description requirement
(Rejection I).

Rejections II–IV
Independent claim 1 calls for a surgical instrument for treating tissue
during use of a diagnostic scanning device including, among other things, an
end effector assembly having a plurality of fasteners and recites that “the
entire end effector assembly is at least one of clear, transparent, translucent,
and radio-translucent to the scanning device.” Appeal Br., Claims App.
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(emphasis added). Independent claim 11 calls for a method of treating tissue
where a similar surgical instrument is provided. See id.
Turning to the rejection of independent claims 1 and 11, the Examiner
does not find that Zemlok, Saadat, Hooven or Blake, and McGuckin, by
themselves, teach an end effector assembly where the entirety of an end
effector assembly is at least one of clear, transparent, translucent, and radio-
translucent to a particular diagnostic scanning device, as required by the
claims. More specifically, the rejection does not rely on Saadat or
McGuckin to teach an end effector that is clear, transparent, translucent, or
radio-translucent to a scanning device. See Final Act. 7–9. In this case, the
Examiner finds that Zemlok and Hooven or Blake teach different portions of
an end effector assembly that are transparent, but does not find that these
references teach an entire end effector, including a plurality of fasteners, as
at least one of clear, transparent, translucent, and radio-translucent to the
scanning device as claimed. See id. at 7 (citing Zemlok ¶¶ 6, 7, 10, 37;
Hooven, col. 2, ll. 34–43, col. 4, ll. 46–53, claim 21; Blake, col. 4, ll. 32–
43). Nonetheless, the Examiner concludes that “it would have been obvious
to one of ordinary skill in the art . . . to have the end effector assembly be
entirely transparent to the scanning device” for various reasons, including
“in order to permit the operator to view the extent of tissue fastening and to
verify the tissue is in place before the fastening procedure.” Final Act. 7–8;
see Ans. 5–8.
The Appellant argues that the combined teachings of Zemlok, Saadat,
Hooven or Blake, and McGuckin fail to teach or suggest an “entire end
effector assembly [that] is at least one of clear, transparent, translucent, and
radio-translucent to the scanning device,” as claimed. Appeal Br. 7–8
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(emphasis omitted); Reply Br. 5. Most notably, the Appellant asserts that
Zemlok, Hooven, and Blake only teach portions of an end effector assembly,
rather than the entire assembly, as transparent. See Appeal Br. 10–13; Reply
Br. 5. The Appellant’s argument is persuasive.
In this case, the Examiner’s rejection does not identify the individual
components of an end effector assembly, including a plurality of fasteners,
and suggest that each of the individual components of the end effector
assembly are at least one of clear, transparent, translucent, or radio-
translucent to a scanning device. For example, the Examiner does not find
that any one of Zemlok, Hooven, or Blake, teach a fastener (e.g. staples) of
an end effector assembly that are either clear, transparent, translucent, or
radio-translucent to a scanning device.
Therefore, on record before us, the Examiner’s conclusion of
obviousness fails to articulate reasoning with rational underpinning because
the support for the reasoning only demonstrates that the cited prior art
teaches that some, but not all, of portions of an end effector assembly may
be at least one of clear, transparent, translucent, and radio-translucent to a
scanning device. See Appeal Br. 13–14. Thus, we do not sustain the
Examiner’s rejection of claims 1, 2, 5–11, 13–16, 19, and 23 as unpatentable
over Zemlok, Saadat, Hooven or Blake, and McGuckin (Rejection II).
The remaining rejections based on Zemlok, Saadat, Hooven or Blake,
and McGuckin in combination with Chernomorsky or Aranyi include the
same reasoning that lacks rational underpinning as discussed above. Each of
these rejections is not cured by additional findings and/or reasoning
associated therewith. Thus, we do not sustain the rejections of: claims 3
and 17 as unpatentable over on Zemlok, Saadat, Hooven or Blake,
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McGuckin, and Chernomorsky (Rejection III); and claim 21 as unpatentable
over on Zemlok, Saadat, Hooven or Blake, McGuckin, and Aranyi
(Rejection IV).

Rejections V–VII
The Examiner’s rejection of independent claims 1 and 11 based on the
combined teachings To, Zemlok, Saadat, Hooven, and McGuckin includes
similar reasoning lacking rational underpinning as discussed above with
regards to Rejection II. See Final Act. 11–13. Therefore, for similar reasons
as discussed above we do not sustain the rejections of: claims 1, 2, 5–11, 13–
16, 19, and 23 as unpatentable over To, Zemlok, Saadat, Hooven, and
McGuckin (Rejection V).
The remaining rejections based on To, Zemlok, Saadat, Hooven, and
McGuckin in combination with Chernomorsky or Aranyi include the same
reasoning that lacks rational underpinning as discussed above. Each of these
rejections is not cured by additional findings and/or reasoning associated
therewith. Thus, we do not sustain the rejections of: claims 3 and 17 as
unpatentable over on To, Zemlok, Saadat, Hooven, McGuckin, and
Chernomorsky (Rejection VI); and claim 21 as unpatentable over on To,
Zemlok, Saadat, Hooven, McGuckin, and Aranyi (Rejection VII).

DECISION
We REVERSE the Examiner’s decision rejecting claims 1–11, 13–19,
21, and 23.

REVERSED