Covidien LP

Patent Trials and Appeals Board

Sep 1, 2020

2019003133 (P.T.A.B. Sep. 1, 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.
14/134,316 12/19/2013 Robert Applegate H-US-03584 (203-9426) 5733
50855 7590 09/01/2020
Covidien LP
60 Middletown Avenue
Mailstop 54, Legal Dept.
North Haven, CT 06473
EXAMINER
STEINBERG, AMANDA L
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
09/01/2020 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 ROBERT APPLEGATE and DAVID M. MCCUEN
____________

Appeal 2019-003133
Application 14/134,316
Technology Center 3700
____________

Before EDWARD A. BROWN, JAMES P. CALVE, and
BRANDON J. WARNER, Administrative Patent Judges.

WARNER, 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 1–20, which are all the pending claims.
See Appeal Br. 6–13. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to the “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Covidien
LP, which is a wholly-owned subsidiary of Medtronic PLC. Appeal Br. 1.
Appeal 2019-003133
Application 14/134,316

2
CLAIMED SUBJECT MATTER
Appellant’s disclosed invention “relates to adapter assemblies for use
with an electromechanical surgical system and their methods of use,” and,
more specifically, “relates to intelligent adapter assemblies for use between
hand-held, electromechanical surgical devices and end effectors.” Spec. ¶ 2.
Claims 1, 7, and 13 are independent. Claim 1, reproduced below with
emphasis added, is illustrative of the subject matter on appeal.
1. An adapter assembly for selectively interconnecting a
surgical end effector that is configured to perform a surgical
function and an electromechanical surgical device that is
configured to actuate the end effector, the end effector
including a plurality of force receiving drive members, and the
surgical device including a plurality of rotatable drive shafts,
the adapter assembly comprising:
a housing configured and adapted for selective
connection with the surgical device and to be in selective
operative communication with each of the plurality of rotatable
drive shafts of the surgical device;
an outer tube having a proximal end supported by the
housing and a distal end configured and adapted for selective
connection with the end effector, wherein the distal end of the
outer tube is in selective operative communication with each of
the plurality of force receiving drive members of the end
effector;
a plurality of drive assemblies for interconnecting the
plurality of rotatable drive shafts of the surgical device and the
plurality of force receiving drive members of the end effector,
wherein at least one drive assembly of the plurality of drive
assemblies is configured to at least transmit or convert a
rotational force to a linear force; and
a circuit board supported in the housing and storing a
specific designated function for each drive assembly of the
plurality of drive assemblies.

Appeal 2019-003133
Application 14/134,316

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EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Malackowski US 8,035,487 B2 Oct. 11, 2011
Bryant US 2012/0104071 A1 May 3, 2012
Nicholas US 9,597,104 B2 Mar. 21, 2017
Williams US 9,629,633 B2 Apr. 25, 2017

REJECTIONS
The following rejections are before us for review:
I. Claims 1 and 7 stand rejected on the basis of obviousness-type
double patenting as being unpatentable over claims 1 and 11 of
Nicholas. Final Act. 5.
II. Claims 1–20 stand rejected on the basis of obviousness-type
double patenting as being unpatentable over claims 1, 14,
and 19 of Williams in view of Malackowski. Id. at 5–6.
III. Claims 1 and 7 stand provisionally rejected on the basis of
obviousness-type double patenting as being unpatentable over
claim 2 of copending Application No. 14/863,558 in view of
Malackowski. Id. at 6.
IV. Claims 1 and 7 stand provisionally rejected on the basis of
obviousness-type double patenting as being unpatentable over
claims 1 and 14 of copending Application No. 14/550,183 in
view of Malackowski. Id. at 6–7.
V. Claims 1–20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Malackowski and Bryant. Id. at 7–10.
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Application 14/134,316

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ANALYSIS
Rejections I–IV – Obviousness-Type Double Patenting
Obviousness-type double patenting is a non-statutory doctrine that
“prevents an extension of the patent right beyond the statutory time limit.”
In re Berg, 140 F.3d 1428, 1431 (Fed. Cir. 1998). This principle requires
that claims of a patent application be rejected “when the subject matter is not
patentably distinguishable from the subject matter claimed in a commonly
owned patent”—thus preventing the owner from extending the patent term
by claiming some obvious variation. Id. at 1431–32.
The Examiner determined that all of Appellant’s claims presented
obviousness-type double patenting issues with at least one of four commonly
owned patents or applications. See Final Act. 5–7. Appellant acknowledges
on appeal that these are, in fact, commonly owned, but indicates that a
Terminal Disclaimer was filed for these matters on February 25, 2019. A
review of Office records indicates that an appropriate Terminal Disclaimer
was filed and approved on February 25, 2019, subsequent to the Examiner’s
Answer (dated January 15, 2019). As such, the double patenting issues have
been obviated, there is no longer any concern of impermissibly extending a
previous patent term, and the Examiner’s double patenting rejections are
rendered moot. We therefore do not sustain Rejections I–IV.

Rejection V – Claims 1–20 as unpatentable over Malackowski and Bryant
All the claims before us relate to “intelligent adapter assemblies for
use between hand-held, electromechanical surgical devices and end
effectors.” Spec. ¶ 2. Independent claim 1 recites how the adapter assembly
is rendered “intelligent”: it contains “a circuit board supported in the
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Application 14/134,316

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housing [of the adapter assembly] and storing a specific designated function
for each drive assembly [of the adapter assembly] of the plurality of drive
assemblies.” Appeal Br., Claims App. Resolution of this appealed rejection
turns on whether this aspect of the adapter’s circuit board—storing a
specific designated function for each drive assembly of the adapter—is
accounted for in the prior art cited by the Examiner. Upon review of
Appellant’s arguments, we agree with Appellant that it is not. See Appeal
Br. 6–12; Reply Br. 2–7.
In the obviousness rejection on appeal, the Examiner relied on a
combination of Malackowski and Bryant to teach or suggest Appellant’s
claimed invention. The Examiner indicated that Malackowski teaches an
adapter assembly with a circuit board that stores specific information
relating to the type of cutting accessory that could be attached, along with
information relating to that accessory (such as its preferred operating speed).
See Final Act. 8; Ans. 16–17. The Examiner acknowledged that
Malackowski teaches only a single drive assembly. Final Act. 8. But the
Examiner correctly noted that Bryant has a plurality of drive assemblies,
“allow[ing] for a single device to be used for surgeries which require more
types of ‘action’ such as anastomosis and increases the compatibility of one
surgical device with other types of end effectors.” Id. The Examiner
concluded that it “would have been obvious to one of ordinary skill in the art
at the time of invention to modify the adapter of Malackowski to include
additional drive assemblies for interfacing with more types of drive units and
end effectors.” Id.
Appellant persuasively argues, however, that “neither Malackowski
nor Bryant, taken alone or in any proper combination, teaches or suggests an
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Application 14/134,316

6
adapter assembly comprising ‘a circuit board supported in the housing and
storing a specific designated function for each drive assembly of the
plurality of drive assemblies,’” as claimed. Reply Br. 2 (quoting
independent claim 1). In particular, we note that Appellant and the
Examiner agree that Malackowski discloses a single drive assembly, not a
plurality of drive assemblies. See Reply Br. 3; Final Act. 8. Appellant
asserts that, because Malackowski has only a single drive assembly, its
disclosed circuit board data would have no need to store a specific
designated function for each drive assembly of a plurality of assemblies in
an adapter. See Reply Br. 3–4. We agree.2
We further observe that this deficiency in Malackowski is not cured
by Bryant’s disclosure of a plurality of drive assemblies. Rather, Appellant
correctly notes that the claimed invention recites that the adapter assembly’s
circuit board stores a specific designated function for each drive assembly of
the adapter assembly. Reply Br. 4. Although Malackowski appears to
disclose the storage of information specific to its single assembly, the
Examiner does not explain why—absent hindsight reconstruction—it would
have been obvious to modify Malackowski by including Bryant’s plurality
of drive assemblies, and then to further modify that combination by storing
specific information about a designated function for each drive assembly in a
circuit board of an adapter, when Malackowski does not store a designated
function of a drive assembly because it has only one function.

2 We also agree with Appellant that it appears that the Examiner has
relied on various elements from Malackowski, specifically including the
circuit board storing data, which relate to the cutting accessory (end effector)
rather than to the intermediate attachment (adapter assembly) as claimed.
See Appeal Br. 7–10; see also Final Act. 8; Ans. 12–13.
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Rejections based on obviousness must rest on a factual basis. In
making such a rejection, the Examiner has the initial burden of supplying the
requisite factual basis and may not, because of doubts that the invention is
patentable, resort to speculation, unfounded assumptions, or hindsight
reconstruction to supply deficiencies in the factual basis. See In re Warner,
379 F.2d 1011, 1017 (CCPA 1967). For the reasons discussed herein, we
agree with Appellant that the Examiner has not supplied a factual basis that
Malackowski or Bryant, individually or in combination, teaches or suggests
an adapter with “a circuit board . . . storing a specific designated function for
each drive assembly of [a] plurality of drive assemblies,” as claimed. And
the Examiner has not provided a rational articulation of why, without the
benefit of hindsight in light of Appellant’s Specification, one skilled in the
art might have been motivated to modify the cited art to arrive at the claimed
invention.
We find that the rejection relying on Malackowski and Bryant is
premised on findings not supported by a preponderance of the evidence.
Accordingly, we do not sustain it.

DECISION
We REVERSE the Examiner’s decision rejecting claims 1 and 7 on
the basis of obviousness-type double patenting as being unpatentable over
claims 1 and 11 of Nicholas.
We REVERSE the Examiner’s decision rejecting claims 1–20 on the
basis of obviousness-type double patenting as being unpatentable over
claims 1, 14, and 19 of Williams in view of Malackowski.
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Application 14/134,316

8
We REVERSE the Examiner’s decision provisionally rejecting
claims 1 and 7 on the basis of obviousness-type double patenting as being
unpatentable over claim 2 of copending Application No. 14/863,558 in view
of Malackowski.
We REVERSE the Examiner’s decision provisionally rejecting
claims 1 and 7 on the basis of obviousness-type double patenting as being
unpatentable over claims 1 and 14 of copending Application No. 14/550,183
in view of Malackowski.
We REVERSE the Examiner’s decision rejecting claims 1–20 under
35 U.S.C. § 103(a) as being unpatentable over Malackowski and Bryant.

CONCLUSION
In summary:

Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 N/A Obviousness-Type Double Patenting 1–20
1–20 103(a) Malackowski, Bryant 1–20
Overall
Outcome
1–20

REVERSED