COVIDIEN LP

Patent Trials and Appeals Board

Sep 28, 2020

2020001290 (P.T.A.B. Sep. 28, 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.
15/232,074 08/09/2016 ANTHONY B. ROSS 356023.USU1 (203-10652) 6333
90039 7590 09/28/2020
Covidien LP
Attn: IP Legal
5920 Longbow Drive
Mail Stop A36
Boulder, CO 80301-3299
EXAMINER
CLARK, RYAN T
ART UNIT PAPER NUMBER
3794
NOTIFICATION DATE DELIVERY MODE
09/28/2020 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 ANTHONY B. ROSS, WILLIAM H. NAU JR.,
ARLEN K. WARD, DUANE E. KERR,
WILLIAM ROSS WHITNEY, and CASSANDRA LATIMER
___________________

Appeal 2020-001290
Application 15/232,074
Technology Center 3700
____________________

Before PHILLIP J. KAUFFMAN, ANNETTE R. REIMERS, and
TARA L. HUTCHINGS, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2020-001290
Application 15/232,074

2
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4–8, 10, 12–14, and 19–22.2 Final
Act. 3–7. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to an electrosurgical instrument including a
cooling assembly associated with jaw members of the instrument. Spec. ¶ 2.
Claims 1 and 8 are independent. Claim 1 is reproduced below.
1. A cooling assembly for use with an electrosurgical
instrument, the cooling assembly comprising:
a body, at least a portion of an inner perimeter of the body
configured for selective engagement with a jaw member of the
electrosurgical instrument; and
a cavity defined within the body and entirely bounded by the
body, the cavity configured to contain a fluid therein capable of
providing at least one of cooling or thermal insulation to areas laterally
adjacent the jaw member.

REJECTIONS3
I. Claims 1, 2, 4, 6–8, 10, 12–14, 19, and 22 are rejected under 35
U.S.C. § 102(a)(1) as anticipated by Chowaniec.4 Final Act. 3–4.

1 We 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, the ultimate parent of which is Medtronic, plc. Appeal Br. 1.
2 The claims currently at issue in this appeal may be found at pages 2–4 of
an Amendment dated October 7, 2019. In particular, the Amendment dated
October 7, 2019, cancelled claims 3 and 11, which appear in the Claims
Appendix of the Appeal Brief.
3 In the Final Office Action, the Examiner rejected claim 13 under 35 U.S.C.
§ 112(b) as indefinite. Final Act. 2–3. The Examiner withdrew this
rejection in an Advisory Action mailed May 8, 2019.
4 Chowaniec (US 2014/0166720 A1, published June 19, 2014).
Appeal 2020-001290
Application 15/232,074

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II. Claims 1 and 8 are rejected under 35 U.S.C. § 103 as
unpatentable over Chapman5 and Chowaniec. Final Act. 4–6.
III. Claim 5 is rejected under 35 U.S.C. § 103 as unpatentable over
Chowaniec and Pappone.6 Final Act. 6.
III. Claims 20 and 21 are rejected under 35 U.S.C. § 103 as
unpatentable over Chowaniec. Final Act. 6–7.

ANALYSIS
Each of the rejections relies on Chowaniec for disclosing a cavity as
claimed, and Appellant’s sole argument is that Chowaniec does not disclose
a cavity as claimed.7 See Appeal Br. 6–7; Reply Br. 2–3. Consequently,
this appeal turn on that issue.
The “cavity” of independent claim 1: contains fluid, is defined within
the body of the instrument, and is “entirely bounded” by that body.8
Appellant contends that Chowaniec’s cavity is not “entirely bounded”
as claimed because the cavity necessarily includes an opening that is a
passage for fluid so that it is inflatable. Appeal Br. 6–7; Reply Br. 2–3; see
also Final Act 3–4 (finding that Chowaniec’s inflatable bladder 516
corresponds to a cavity as claimed). Appellant’s argument is premised on

5 Chapman (US 7,147,638 B2, issued Dec. 12, 2006).
6 Pappone (US 2007/0038056 A1, published Feb. 15, 2007).
7 With regard to the obviousness rejections, Appellant contends the
additional reference(s) does not cure the deficiency of Chowaniec. See
Appeal Br. 7–8.
8 Independent claim 1 is representative for purposes of this rejection. 37
C.F.R. § 41.37(c)(1)(iv) (2018). Although Appellant mentions both
independent claim 1 and independent claim 8, Appellant draws no
distinction between the scope of these claims. Appeal Br. 6–7.
Appeal 2020-001290
Application 15/232,074

4
the claim interpretation that “entirely bounded” as claimed precludes an
opening that is a passage for fluid. In support of that interpretation,
Appellant points out that Figure 7 of the Specification depicts a U-shaped
cavity having no openings. Appeal Br. 5. For the reasons that follow, we
disagree with Appellant’s claim construction.
Claim 1 does not explicitly state that the claimed cavity has no
openings. The Specification, outside of the claims, does not use the term
“entirely bounded.”
Claim 3 depends from independent claim 1 and adds the limitation
that the fluid is actively cooled.9 This suggests that independent claim 1 is
broad enough to encompass the instrument being actively cooled. See
Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004)
(“[W]here the limitation that is sought to be ‘read into’ an independent claim
already appears in a dependent claim, the doctrine of claim differentiation is
at its strongest.”); see also Ans. 4–5 (addressing claim 3).
The Examiner finds, and Appellant does not dispute, that active
cooling involves applying energy to a system so that the device is cooled and
may be accomplished, for example, by the device having an opening to
permit fluid to be pumped into the cavity. See Advisory Action, mailed
Nov. 20, 2019; Appeal Br. 5 (acknowledging that claim 1 is depicted in
Figures 7 and 8); Ans. 4 (pointing out Appellant’s acknowledgment); Ans. 5
(citing Spec. ¶¶ 31, 45, 47). Indeed, the cited paragraphs of the

9 Although Appellant has cancelled dependent claim 3, Appellant concedes
that the cancellation of claim 3 “does not affect the scope of any other
pending claim in the appeal proceeding.” Amendment dated Oct. 7, 2019, at
5.
Appeal 2020-001290
Application 15/232,074

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Specification describe that the cooling assembly may include a port into the
cavity to enable entry of fluid. See also Spec. ¶ 32 (discussing the use of a
fluid conduit to deploy the cooling assembly and to supply a cooling fluid);
id. ¶ 35 (explaining that the reservoirs or cavities of the cooling assembly are
in fluid communication with the fluid conduit to facilitate deployment). In
sum, active cooling, such as recited in claim 3, can involve a port into the
cavity to permit fluid flow. Because claim 1 is sufficiently broad to
encompass active cooling assemblies, it encompasses cooling assemblies
having bodies with openings communicating with cavities defined within the
bodies. In light of this, we determine that a cavity, as called for in
independent claim 1, does not preclude an opening to permit filling and
draining of that cavity.
For these reasons, Appellant’s argument that Chowaniec does not
disclose a cavity as claimed is not commensurate in scope with independent
claim 1. Given this is Appellant’s only argument, Appellant has not
demonstrated how the rejection of claim 1 is in error. That determination is
dispositive of each of the rejections.

Appeal 2020-001290
Application 15/232,074

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4, 6–8,
10, 12–14,
19, 22
102(a)(1) Chowaniec 1, 2, 4, 6–8,
10, 12–14,
19, 22

1, 8 103 Chapman,
Chowaniec
1, 8
5 103 Chowaniec,
Pappone
5
20, 21 103 Chowaniec 20, 21
Overall
Outcome
1, 2, 4–8,
10, 12–14,
19–22

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED