COVIDIEN LP

Patent Trials and Appeals Board

Apr 2, 2020

15002701 - (D) (P.T.A.B. Apr. 2, 2020)

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.
15/002,701 01/21/2016 ARVIND KUMAR GUPTA H-
US-02902CON(203-7956CON
9655
50855 7590 04/02/2020
Covidien LP
60 Middletown Avenue
Mailstop 54, Legal Dept.
North Haven, CT 06473
EXAMINER
WITTENSCHLAEGER, THOMAS M
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
04/02/2020 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 ARVIND KUMAR GUPTA, HARSHOTTAM SINGH DHAKAD,
MANOJ KUMAR AGARWAL, NIKHIL R. KATRE, and
VINAYAN VIVEKKANANDAN
___________

Appeal 2019-005530
Application 15/002,701
Technology Center 3700
____________

Before CHARLES N. GREENHUT, BENJAMIN D. M. WOOD, and
ANNETTE R. REIMERS, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1

Appellant 2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject under 35 U.S.C. § 102(b) claims 19, 21, 22, 24, 29, 32, and
33 as anticipated by Palmer (US 5,718,359, issued Feb. 17, 1998) and to

1 The Examiner indicates that “[c]laims 23, 25–28, 30, 31, and 34–36 would
be allowable if rewritten to include all of the limitations of the base claim
and any intervening claims.” See Final Office Action (“Final Act.”) 7, dated
Nov. 29, 2018.
2We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Covidien LP. Appeal
Brief (“Appeal Br.”) 1, filed Apr. 24, 2019.
Appeal 2019-005530
Application 15/002,701

2
reject under 35 U.S.C. § 103(a) claim 20 as unpatentable over Palmer and
Nalagatla (US 2009/0308909 A1, published Dec. 17, 2009). Claims 1–18
have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
The claimed subject matter “relates to a surgical fastener applying
apparatus and, more particularly, to a surgical fastener applying apparatus
having reusable and disposable components.” Spec. 13, Figs. 2C, 3, 9B, 11,
12.
Claim 19, the sole independent claim on appeal, is representative of
the claimed subject matter and recites:
19. A surgical fastener applying apparatus comprising:
an anvil half-section including a distal anvil portion
and a proximal handle portion;
a cartridge receiving half-section including a
channel member having side walls and a bottom wall, the
channel member defining a channel and having a distal
portion dimensioned to releasably receive a cartridge and
a proximal portion configured to support a firing
assembly, the proximal portion of the channel member
having an inner wall defining the channel including an
inwardly extending protrusion extending from the inner
wall into the channel; and
a firing assembly including a firing lever, a cam bar
fixedly secured to the firing lever, and a stationary housing
supporting the firing lever and the cam bar, the stationary
housing being configured to be releasably supported in the
proximal portion of the cartridge receiving portion,

3 As the Specification does not include line numbers, we reference the page
number(s) only.
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Application 15/002,701

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wherein the stationary housing includes a distal end
having an angled extension, the angled extension being
received between the bottom wall of the channel member
and the inwardly extending protrusion and positioned to
engage the inwardly extending protrusion on the inner
wall of the channel member to releasably secure the distal
end of the firing assembly within the elongated channel
member.
ANALYSIS
Anticipation by Palmer
Claims 19, 21, 22, 24, 29, 32, and 33
Independent claim 19 is directed to a surgical fastener applying
apparatus comprising “a firing assembly including a firing lever, a cam bar
fixedly secured to the firing lever, and a stationary housing supporting the
firing lever and the cam bar, the stationary housing being configured to be
releasably supported in the proximal portion of the cartridge receiving
portion.” Appeal Br. 12 (Claims App.). Initially, in the Final Office Action,
the Examiner finds that “Palmer discloses a surgical fastener apparatus (10 –
Fig. 1)” comprising “a firing assembly including a firing lever (48 – Fig. 3),
a cam bar (40a – Fig. 3) fixedly secured to the firing lever, and a stationary
housing (28 – Fig. 3) supporting the firing lever and the cam bar,” “the
stationary housing being configured to be releasably supported in the
proximal portion of the cartridge receiving portion.” Final Act. 3; see also
Palmer, Figs. 1, 3. In the Advisory Action, the Examiner clarifies that “it is
clear from annotated Fig[ure] 8 [of Palmer] and the identification of element
26 as having the angled extension that the labeling of element 26 as the
channel member and element 28 as the stationary housing is a typographical
error” and that “[c]learly, element 22 is being referred to as the channel
member since it comprises the protrusion and element 26 should be
Appeal 2019-005530
Application 15/002,701

4
interpreted as the stationary housing since it comprises the angled
extension.” Adv. Act. 24; see also Final Act. 4 (The Examiner’s annotated
version of Figure 8 of Palmer).
Appellant contends that “Palmer’s stationary housing or cartridge
support channel 26 is not releasably supported in the proximal portion of the
cartridge receiving half-section, i.e., Palmer’s housing 22, as recited in claim
19.” Appeal Br. 7; see also Reply Br. 2–4.5 According to Appellant, as
clearly shown in annotated Figure 8 of Palmer included in the Final Office
Action, “the lower portion of the Palmer’s protrusion defines a perpendicular
shoulder that rests on a top surface of a side wall of Palmer’s support
channel 26” and “[t]he top surface of the side wall of the Palmer’s support
channel 26 is flat to prevent separation of the Palmer’s housing 22 from the
support channel 26.” Appeal Br. 7; see also Reply Br. 2–4; Final Act. 4
(The Examiner’s annotated version of Figure 8 of Palmer). Appellant
further contends that “Palmer does disclose or suggest anywhere in the
figures or in the written specification that cartridge support channel 26 is
releasably supported in the proximal portion of the housing 22.” Appeal Br.
7–8; see also Reply Br. 2–4.
Appellant has the better position here. Palmer discloses that
“[s]urgical apparatus 10 includes a lower body portion or housing 22 having
an elongated cartridge support channel 26 mounted therein.” Palmer 3:38–
40 (emphasis added), Fig. 3; see also Appeal Br. 7. Palmer further discloses
that “[c]lamping channel 54 includes a pair of distally extending clamping
legs 70a and 70b which engage a clamp bracket 72 positioned in cartridge

4 Advisory Action (“Adv. Act.”), dated Feb. 7, 2019
5 Reply Brief (“Reply Br.”), filed July 12, 2019.
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Application 15/002,701

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support channel 26, and retained within a correspondingly configured
retention area 74 defined in lower body portion 22 of surgical apparatus 10.
Palmer 4:14–18 (emphasis added), Fig. 3. Stated differently, the protrusion
illustrated in the Examiner’s annotated version of Figure 8 of Palmer (see
Final Act. 4) is the projection of clamping surface 72b of bracket 72, which
is “positioned in” support channel (stationary housing) 26 and further
“retained within the defined retention area” 74 of lower body portion
(channel member) 22. See Palmer 4:14–25, Figs. 3, 8. Based on Palmer’s
disclosure, we agree with Appellant that the protrusion identified in the
Examiner’s annotated Figure 8 of Palmer extends inwardly from Palmer’s
housing (channel member) 22 and does not engage Palmer’s support channel
(stationary housing) 26 “to releasably secure the distal end of the stationary
housing . . . within the channel as suggested by the Examiner.” Reply Br. 2;
see also Final Act. 3–4; Ans. 4–6.6
In addition, the Examiner’s finding of a “snap fit” retention design
between housing (channel member) 22 and support channel (stationary
housing) 26 of Palmer is speculative and is not supported in the disclosure of
Palmer. See Ans. 6–7; see also Palmer, passim. Nor does the Examiner
provide sufficient technical reasoning to support the finding of a “snap fit”
retention design between channel member 22 and stationary housing 26 of
Palmer, such that “stationary housing [26] [is] released from the channel
member [22].” See Ans. 6–7.

6 Examiner’s Answer (“Ans.”), dated June 6, 2019.
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Application 15/002,701

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Accordingly, for the forgoing reasons, we do not sustain the
Examiner’s rejection of claims 19, 21, 22, 24, 29, 32, and 33 as anticipated
by Palmer.

Obviousness over Palmer and Nalagatla
Claim 20

The Examiner’s rejection of claim 20 as unpatentable over Palmer and
Nalagatla is based on the same unsupported findings discussed above with
respect to independent claim 1. See Final Act. 6–7. The Examiner does not
rely on the teachings of Nalagatla to remedy the deficiencies of Palmer.
Accordingly, for reasons similar to those discussed above for claim 1, we do
not sustain the Examiner’s rejection of claim 20 as unpatentable over Palmer
and Nalagatla.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
19, 21, 22,
24, 29, 32, 33
102(b) Palmer 19, 21, 22,
24, 29, 32,
33
20 103(a) Palmer, Nalagatla 20
Overall
Outcome
19–22, 24,
29, 32, 33

REVERSED