COVIDIEN LP

Patent Trials and Appeals Board

Sep 23, 2020

2020001755 (P.T.A.B. Sep. 23, 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.
15/102,178 06/06/2016 Jaimeen Kapadia H-US-03936.USN2
(203-9722
8555
50855 7590 09/23/2020
Covidien LP
60 Middletown Avenue
Mailstop 54, Legal Dept.
North Haven, CT 06473
EXAMINER
MCEVOY, THOMAS M
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
09/23/2020 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 JAIMEEN KAPADIA

Appeal 2020-001755
Application 15/102,178
Technology Center 3700
____________

Before MICHAEL C. ASTORINO, CYNTHIA L. MURPHY, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 1–16. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant states that “[t]he real party in interest is the
assignee of this patent application, Covidien LP” and “[t]he ultimate parent
of Covidien LP is Medtronic, plc.” Appeal Br. 2.
Appeal 2020-001755
Application 15/102,178

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STATEMENT OF THE CASE
Claimed Subject Matter
The Appellant’s invention “relates to a single surgical device having
jaw members that both clamp and cut tissue depending on the direction in
which the jaw members are moved.” Spec. ¶ 7; see id. ¶ 2. Claims 1 and 13
are the independent claims on appeal. Appeal Br., Claims Appendix.
Claim 1, reproduced below, is illustrative of the claimed subject matter.
1. A surgical device, comprising:
a body portion defining a longitudinal axis; and
an end effector disposed adjacent a distal end of the body
portion, the end effector including a first jaw member and a
second jaw member, wherein at least one jaw member is
pivotable with respect to the other jaw member between open
and approximated positions along a first plane, wherein each
jaw member is independently movable with respect to the other
jaw member between a first position where the jaw members
are aligned with the longitudinal axis and a second position
where at least one jaw member is disposed at an angle with
respect to the longitudinal axis and with respect to the first
plane, and wherein the at least one jaw member is movable
along a second plane through an angle greater than 90 degrees
relative to the longitudinal axis and the other jaw member, the
second plane transverse to the first plane.
Id.
References
The prior art relied upon by the Examiner is:
Name Reference Date
Moreyra US 6,969,385 B2 Nov. 29, 2005
Frecker et al. (“Frecker”) US 2007/0179525 A1 Aug. 2, 2007
Surti US 2010/0168787 A1 July 1, 2010

Appeal 2020-001755
Application 15/102,178

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Rejections
Claims 1–7 are rejected under 35 U.S.C. § 103 as unpatentable over
Frecker in view of Surti.
Claims 8–16 are rejected under 35 U.S.C. § 103 as unpatentable over
Frecker in view of Surti, as applied to claim 1, and further in view of
Moreyra.

ANALYSIS
Independent claim 1 requires a surgical device including an end
effector having first and second jaw members, where at least one jaw
member is pivotable with respect to the other jaw member along first and
second planes. See Appeal Br., Claims App. Claim 1 recites, “wherein the
at least one jaw member is movable along a second plane through an angle
greater than 90 degrees relative to the longitudinal axis and the other jaw
member.” Id. Independent claim 13 includes a similar recitation. Id.
The Examiner relies on Frecker to disclose substantially all of the
claimed subject matter of claim 1. Final Act. 2–3 (citing Frecker ¶ 186,
Figs. 17a–c). The Examiner finds Frecker fails to teach “that each jaw
member is movable through an angle greater than 90 degrees as claimed.”
Id. at 3. To remedy this deficiency, the Examiner turns to Surti’s teaching.
Id. The Examiner finds that “Surti teach[es] that it is desirable for surgical
forceps to have each jaw member movable along a plane through an angle
greater than 90 degrees relative to the longitudinal axis of the forceps and
each[]other in order to better grasp larger amounts of tissue.” Id. (citing
Surti ¶ 28). The Examiner concludes:
It would have been obvious to one of ordinary skill in the
art[,] . . . in view of Surti, to have constructed the jaw members
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Application 15/102,178

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of Frecker . . . to move along the second plane through an angle
greater than 90 degrees relative to each[ ]other and the
longitudinal axis in order to better grasp larger amounts of
tissue.
Id.
The Appellant points out the Frecker’s multi-functional end effector,
“which is actuatable through various slots, pins, and cables to achieve
pivoting and various articulations, operates completely different from a
device such as the device of Surti, which merely clamps by an axial driven
gear mechanism.” Appeal Br. 7–8. The Appellant argues that the
Examiner’s rejection is conclusory and lacks rational underpinning because
“the Examiner has not provided any evidence or explanation of how such
uses or mechanisms could be modified to provide an angle greater than 90
degrees.” Reply Br. 3; see Appeal Br. 4. The Appellant’s argument is
persuasive.
The Appellant identifies that the structures that actuate Frecker’s
multi-functional end effector and Surti’s pivot jaws are different types of
actuators. And, the Appellant submits that the Examiner fails to adequately
explain how the structures of Frecker’s actuators, i.e., slots, pins, cables,
etc., would have been able to be modified by the teachings of Surti’s
actuator, i.e., axial driven gear mechanism, such that the modified
structure(s) would have been able to move at least one jaw member of
Frecker through an angle greater than 90 degrees. To this, the Examiner
responds “[i]t is asserted that the jaws of Frecker . . . could be modified to
open at least as wide as 90 degrees relative to the longitudinal axis” and
“[i]t is further noted that Frecker . . . envision[s] a wide variety of uses for
their invention . . . and a number of dissimilar mechanisms for
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Application 15/102,178

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opening/closing the jaws.” Ans. 4 (emphasis added) (citing Frecker ¶¶ 227–
228, 232); see id. at 3. The foregoing response suggests that the Examiner
relies too broadly on the teachings of the references and fails to explain, on
the record and with adequate technical details, how Surti’s teachings would
have been applied to the structures of Frecker’s actuator mechanisms to
result in the disputed limitation of claim 1.
Thus, we do not sustain the Examiner’s rejection of independent
claim 1 and dependent claims 2–7. Additionally, we note that the Examiner
fails to rely on Moreyra in any manner that would remedy the deficiency in
the Examiner’s rejection as discussed above. Thus, we do not sustain the
Examiner’s rejection of claims 8–12, which depend from claim 1, or
independent claim 13 and claims 14–16, which depend from claim 13.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1–7 103 Frecker, Surti 1–7
8–16 103 Frecker, Surti, Moreyra 8–16
Overall
Outcome
1–16

REVERSED