Paul Richard et al.

Patent Trials and Appeals Board

Aug 28, 2019

14700605 - (D) (P.T.A.B. Aug. 28, 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.
14/700,605 04/30/2015 Paul Richard H-US-03933 (203-10039) 8926
50855 7590 08/28/2019
Covidien LP
60 Middletown Avenue
Mailstop 54, Legal Dept.
North Haven, CT 06473
EXAMINER
RUSHING-TUCKER, CHINYERE J
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
08/28/2019 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 PAUL RICHARD, EARL M. ZERGIEBEL,
DAVID M. CHOWANIEC, RYAN V. WILLIAMS,
ANAND SUBRAMANIAN, and NIHIR PATEL1
____________________

Appeal 2019-000791
Application 14/700,605
Technology Center 3700
____________________

Before KEVIN F. TURNER, DANIEL S. SONG, and
ANNETTE R. REIMERS, 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
Final Office Action (“Final Act.”) rejecting claims 1–7, 21, and 22 in the
present application. Claims 8–20 have been canceled. See Advisory Action
dated April 11, 2018. We have jurisdiction under 35 U.S.C. §§ 6(b) and
134(a).
We AFFIRM-IN-PART.

1 The Appellant is the Applicant, Coviden LP, which is identified as the real
party in interest. Appeal Brief (“App. Br.”) 1.
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The claimed invention is directed to an adapter assembly for
interconnecting surgical loading units and handle assemblies. Title.
Representative claim 1, which is the sole independent claim, reads as
follows:
1. An adapter assembly, comprising:
an elongated body including a proximal portion
configured to couple to a handle assembly and a distal portion
configured to couple to a surgical loading unit;
a switch configured to be toggled in response to the
surgical loading unit being coupled to the distal portion of the
elongated body;
a sensor link disposed within the distal portion of the
elongated body and biased in a distal direction, the sensor link
being longitudinally movable between a proximal position and a
distal position; and
an annular member disposed within the distal portion of
the elongated body, the annular member being rotatable between
a first orientation, in which the annular member prevents
movement of the sensor link to the distal position, and a second
orientation, in which the sensor link moves distally to toggle the
switch.
App. Br. 10, Claims App. (emphasis added).
REJECTIONS2
1. The Examiner provisionally rejects claim 1 on the ground of
nonstatutory obviousness-type double patenting over claims 1 and 12
of co-pending Application No. 15/292,383. Final Act. 3.
2. The Examiner provisionally rejects claim 1 on the ground of
nonstatutory obviousness-type double patenting over claims 1, 10, and
20 of co-pending Application No. 14/672,579. Final Act. 3.

2 Because claims 8–20 have been canceled, we omit listing these claims in
the rejections of record.
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3. The Examiner rejects claims 1, 3–7, 21, and 22 under 35 U.S.C.
§ 102(a)(1) as anticipated by Kostrzewski (US 2013/0092719 A1,
pub. Apr. 18, 2013). Final Act. 4.3
4. The Examiner rejects claim 2 under 35 U.S.C. § 103 as
unpatentable over Kostrzewski in view of Zemlok (US 2012/0089131
A1, pub. Apr. 12, 2012). Final Act. 6.
ANALYSIS
Only those arguments actually made by the Appellant have been
considered in this decision. Arguments that the Appellant could have made
but chose not to make have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(iv); In re Jung, 637 F.3d 1356, 1365–
66 (Fed. Cir. 2011); Ex parte Frye, 94 USPQ2d 1072, 1075–76 (BPAI 2010
(precedential)).

Rejections 1 and 2
The Examiner provisionally rejects claim 1 on the ground of
nonstatutory obviousness-type double patenting over claims 1 and 12 of co-
pending Application No. 15/292,383 (Rejection 1), and claims 1, 10, and 20
of copending Application No. 14/672,579 (Rejection 2). Final Act. 3. The
Appellant does not submit any arguments in its briefs contesting these
provisional double patenting rejections. Accordingly, Rejections 1 and 2 are
summarily affirmed.

3 The heading in the Office Action omits claims 21 and 22, which are
included in the body of the rejection. Final Act. 4, 6.
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Rejection 3
The Examiner rejects claims 1, 3–7, 21, and 22 as anticipated, finding
that Kostrzewski discloses the adapter assembly recited by these claims,
including the limitation of independent claim 1 directed to the annular
member. Final Act. 4–5. Specifically, the Examiner finds that Kostrzewski
discloses:
an annular member (232a) disposed within the distal portion of
the elongated body (18), the annular member (232a) being
rotatable between a first orientation (par 162), in which the
annular member (232a) prevents movement of the sensor link
(202) to the distal position, and a second orientation (par 161), in
which the sensor link (202) moves distally to toggle the switch
(204).
Final Act. 5.
The Appellant disagrees with the Examiner’s finding of anticipation,
and argues that “nowhere in Kostrzewski is it disclosed that the distal end
232a of the inner body 232 ‘prevents movement of the sensor link to the
distal position,’” (App. Br. 4), and that “the distal end 232a of the inner body
232 of Kostrzewski is not ‘rotatable between a first orientation . . . and a
second orientation’” as required by claim 1 (App. Br. 6). We generally
agree with the Appellant that the rejection is not sustainable for the reasons
discussed below.
In clarifying the rejection, the Examiner explains that
While Kostrzewski teaches a rotation of the SULU (500) there is
nothing structurally, to prevent the rotation of the annular
member (232a) (while the SULU 500 is stationary or both can be
rotated simultaneously) to achieve the rotational movement
taught by Kostrzewski. Furthermore it is the camming features
(234, 235) of the annular member (232a) that prevent the tabs
(260 in spec; 262, 652 in Figs. 51 & 55-57) from moving distally,
by way of an abutment member (216; Figs. 52-23) of the sensor
link (202) (par 161).
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Ans. 4.
Thus, the Examiner’s apparent position is that the entire elongated
body portion 18 of Kostrzewski with its annular member (232a) (presumably
with its handle assembly 12) can be rotated in conjunction with, or instead
of, the Single Use Loading Unit (500) to thereby satisfy the recitation in
claim 1 that the annular member is rotatable. As to this position, we agree
with the Examiner, and find unpersuasive, the Appellant’s argument that
“the distal end 232a of the inner body 232 of Kostrzewski is not ‘rotatable
between a first orientation . . . and a second orientation’” as required by
claim 1. App. Br. 6. Claim 1 recites rotation of the annular member in an
abstract manner, and does not specifically identify what the annular member
is rotatable relative to.4 Thus, claim 1 does not limit the recited rotation in
any manner to distinguish rotation of the entire elongated body portion 18 of
Kostrzewski with its annular member (232a), relative to the SULU 500, as
applied in the rejection.
The rejection also finds that such relative rotation between the annular
member (232a) and SULU 500 satisfies the recitation that in a first
orientation, “the annular member prevents movement of the sensor link to
the distal position,” and in a second orientation, “the sensor link moves
distally.” We disagree with this finding.
The Examiner’s apparent position is that “it is the camming features
(234, 235) of the annular member (232a) that prevent the tabs (260 in spec;
262, 652 in Figs. 51 & 55-57) from moving distally,” and thus, these

4 This is in contrast to dependent claim 21, which explicitly recites that “the
annular member is configured to rotate relative to the sensor link when
rotating between the first and second orientations.” App. Br. 11, Claims
App.
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camming features (234, 235) function to prevent distal movement of the
sensor link via the tabs 260, 652. Ans. 4; see also Final Act. 13 (“the
annular member (232a, by way of 234, 235) prevents the movement of the
sensor link (202) to the distal (released) position.”). The Examiner further
points out that Figure 55 of Kostrzewski shows the sensor link 202 in the
retracted proximal position that prevents its movement into the distal
position (Ans. 4), and that Figure 57 shows the sensor link 202 in the distal
position upon rotation of SULU 500 (Ans. 5).
However, as the Appellant correctly points out,
During assembly of the SULU 500 to the elongated body portion
18, a tab 652/260 of the SULU 500 of Kostrzewski is inserted
into the longitudinal channel 234 of the inner body 232 of the
elongated body portion 18, whereby the “tab 260 engages
abutment member 216 of release link 202” and “release link 202
moves proximally.”
App. Br. 4, quoting Kostrzewski ¶ 161.
Thus, the Appellant is correct, and we agree, that
The channels 234, 235 defined in the distal end 232a of the inner
body 232 of Kostrzewski merely act as a guide for the insertion
and ultimate locking of the SULU 500 in the body portion 18,
and not a means for preventing distal movement of the release
link 202.
App. Br. 5, citing Kostrzewski ¶ 161.
Accordingly, we also agree with the Appellant that
the distal end 232a of the inner body 232 of Kostrzewski does
not . . . “prevent[] movement of the sensor link to the distal
position.” Rather, it is the axial movement of the SULU 500 into
the inner body 232 of Kostrzewski that forces the release link
202 in the proximal direction, thereby preventing the release link
202 from moving distally.
App. Br. 5.
In our view, the language of claim 1 requires the prevention of
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movement of the sensor link to the distal position, and distal movement of
the sensor link, to be directly attained by the position of the annular member.
See Spec. ¶¶ 48, 50–54; Figs. 2, 7A, and 7B. The Examiner’s rejection
requires the tabs 260, 652 of the SULU 500, which are not part of the distal
end/annular member 232a, as necessary intervening structures in order for
the annular member 232a to prevent, and allow for, distal movement of the
sensor link. Indeed, in explaining the rejection, the Examiner states that “the
rotation of the annular member (232a) and the camming features (234, 235)
position the tabs (260 in spec; 262, 652 in Figs. 51 & 55-57), preventing the
movement of the sensor link to the distal position” (Ans. 8), thereby
acknowledging that it is the tabs 262, 652 of the SULU 500 that prevent
distal movement of the sensor link, not the annular member 232a itself. In
contrast, claim 1 specifically recites “the annular member prevents
movement of the sensor link to the distal position, and a second orientation,
in which the sensor link moves distally.” App. Br. 10, Claims App.
(emphasis added).
The Examiner’s rejection based on tabs 262, 652 of the SULU 500
appears to be premised on an unreasonably broad interpretation of claim 1 in
view of the Specification (see Spec. ¶¶ 48, 50–54; Figs. 2, 7A, 7B), and
would also allow for the untenable position that any component of the
elongated body 18 of Kostrzewski also functions to prevent distal movement
of the sensor link via the tabs by virtue of their interconnection with the
structures forming the channels 234, 235.
Therefore, in view of the above considerations, we agree with the
Appellant, and reverse the anticipation rejection of claim 1, as well the
rejection claims 3–7, 21, and 22 that depend from claim 1. In addition, as to
claim 21, we also agree with the Appellant that “[n]owhere in Kostrzewski is
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it disclosed that the distal end 232a of the inner body 232 of the elongated
body portion 18 of Kostrzewski rotates relative to the release link 202.”
App. Br. 6. Moreover, as to claim 22, we further agree with the Appellant
that “it is an axial movement of the SULU 500 in the direction indicated by
arrow ‘H’ in FIG. 53 of Kostrzewski . . . that drives the release link 202 of
Kostrzewski proximally, and not a rotation of the SULU 500 or any other
feature,” and that “when the SULU 500 is in fact rotated, the release link
202 of Kostrzewski is moved toward its distal position, not its proximal
position.” App. Br. 7.
Accordingly, Rejection 3 is reversed.

Rejection 4
The Examiner rejects dependent claim 2 as obvious over Kostrzewski
in view of Zemlok, relying on the same fact findings relative to the
disclosure of Kostrzewski. Final Act. 6. The Appellant argues, inter alia,
that the rejection is improper in view of the deficiencies of Kostrzewski.
App. Br. 8. Indeed, the Examiner relies on Zemlok for allegedly teaching an
“electrical connection between an annular member (230)[,] a switch (124
and 126) and a surgical loading unit (300).” Final Act. 7. Thus, the
Examiner’s application of Zemlok does not address the deficiencies of
Kostrzewski discussed relative to Rejection 3. Accordingly, Rejection 4 of
claim 2 is also reversed.
CONCLUSIONS
1. Provisional Rejections 1 and 2 of claim 1 are summarily
affirmed.
2. Rejections 3 and 4 of claims 1–7, 21, and 22 are reversed.
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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).

AFFIRMED-IN-PART