COVIDIEN LP

Patent Trials and Appeals Board

Oct 21, 2020

2020001374 (P.T.A.B. Oct. 21, 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.
15/033,667 05/02/2016 Arvind Kumar Gupta H-
EM-00004.USN1(203-7955P
5572
50855 7590 10/21/2020
Covidien LP
60 Middletown Avenue
Mailstop 54, Legal Dept.
North Haven, CT 06473
EXAMINER
IMAM, TANZIM
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
10/21/2020 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, KIRAN GARIKIPATI,
NIKHIL R. KATRE, VINAYAN VIVEKANANDAN, and
MANGESH PATANKAR
____________________

Appeal 2020-001374
Application 15/033,667
Technology Center 3700
____________________

Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection of claims 1–17. 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. According to Appellant, “[t]he real party in interest . . . is
Covidien LP . . . . The ultimate parent of Covidien LP is Medtronic, PLC.”
Appeal Br. 1.
Appeal 2020-001374
Application 15/033,667

2
According to Appellant, the “disclosure relates . . . to a surgical
fastener applying apparatus having reusable and disposable components.”
Spec. 1. Below, we reproduce independent claim 1 as representative of the
appealed claims.
1. A surgical fastener applying apparatus comprising:
a clamping half-section including a distal anvil
attachment portion and a proximal handle portion;
a cartridge receiving half-section including a handle
portion and an elongated channel portion, the elongated channel
portion being configured to releasably receive a single use
loading unit and the handle portion being configured to
releasably receive a firing assembly,
an anvil member including an anvil attachment section
and a staple deforming section positioned distally of the anvil
attachment section, the anvil attachment section being
configured to be releasably coupled to the distal anvil
attachment portion of the clamping half-section to allow for
separation of the anvil member from the clamping half-section
after each use of the surgical fastener applying apparatus to
facilitate sterilization; and
a firing assembly configured to be releasably supported
within the handle portion of the cartridge receiving half-section.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:2
I. Claim 7 under 35 U.S.C. § 112(b) as indefinite;
II. Claims 1–4, 6, 8–13, and 15–17 under 35 U.S.C. § 103 as
obvious based on the Examiner’s first interpretation of Rethy et
al. (US 2005/0222616 A1, published Oct. 6, 2005), and Green
(US 4,520,817, issued June 4, 1985);

2 We reorder and combine rejections relative to the Final Office Action.
Appeal 2020-001374
Application 15/033,667

3
III. Claim 13 under 35 U.S.C. § 103 as obvious based on the
Examiner’s first interpretation of Rethy, Green, and Knodel
(US 8,365,971 B1, issued Feb. 5, 2013);
IV. Claim 14 under 35 U.S.C. § 103 as obvious based on the
Examiner’s first interpretation of Rethy, Green, and Lind et al.
(US 2003/0023247 A1, published Jan. 30, 2003) (“Lind”); and
V. Claims 1, 2, 4, 5, and 7 under 35 U.S.C. § 103 as obvious based
on the Examiner’s second interpretation of Rethy, and Green.
ANALYSIS
Rejection I—Indefiniteness rejection of claim 7
In the Final Office Action, the Examiner rejects claim 7 as indefinite.
Final Action 2. Specifically, according to the Examiner, “[c]laim 7 recites
the limitation ‘the distal portion’ . . . . There is insufficient antecedent basis
for this limitation in the claim. For examination purposes, the [E]xaminer is
interpreting the limitation as if it instead reads ‘a distal portion.’” Id. (bold
omitted). In the Advisory Action, the Examiner indicates entry of
Appellant’s claim amendment that amends claim 7 to recite “a distal
portion” in place of the then-current recitation of “the distal portion.”
Advisory Action mailed Apr. 8, 2019, 1; Amendment under 37 C.F.R.
§ 1.116 dated Apr. 18, 2019, 3. Nonetheless, neither the Advisory Action
nor the Examiner’s Amendment expressly indicates whether the
indefiniteness rejection remains outstanding.
Regardless, inasmuch as Appellant amends the claim in accordance
with the Examiner’s interpretation of the claim, we do not sustain claim 7’s
indefiniteness rejection.
Appeal 2020-001374
Application 15/033,667

4
Rejection II—Obviousness rejection of claims 1–4, 6, 8–13, and 15–
17
As set forth above, independent claim 1 recites, in relevant part,
an anvil member including an anvil attachment section
and a staple deforming section positioned distally of the anvil
attachment section, the anvil attachment section being
configured to be releasably coupled to the distal anvil
attachment portion of the clamping half-section to allow for
separation of the anvil member from the clamping half-section
after each use of the surgical fastener applying apparatus to
facilitate sterilization.
Appeal Br., Claims App. (emphasis added). Appellant argues that the
Examiner errs because Green does not disclose the claimed releasable
coupling, as claimed. See, e.g., id. at 8. Based on our review of the record,
the Examiner does not support adequately that Green discloses an anvil
member’s anvil attachment section configured to be releasably coupled to a
clamping half-section, as claimed.
It is well settled that when a claim recites an element that is
“configured to” achieve a function, the claim requires that the specific
element is not only “capable of” performing the recited function, but also is
designed specifically to accomplish the function that is claimed. See Aspex
Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir.
2012) (The court indicated that claim language “configured to” is construed
more narrowly than “capable of,” and requires that the structure must be
“designed or configured to accomplish the specified objective, not simply
that [it] can be made to serve that purpose.”).
In response to Appellant’s argument, in the Appeal Brief, that Green
does not disclose an anvil member’s anvil attachment section that is
configured to be releasably coupled to a clamping half-section,
Appeal 2020-001374
Application 15/033,667

5
the [E]xaminer first[] notes that the term “releasable”
means “capable of being released,” and thus the limitation “the
anvil attachment section being configured to be releasably
coupled to the distal anvil attachment portion” of claim 1 only
requires it to be possible for the anvil attachment section to be
released from the distal anvil attachment portion, and does not
require the anvil attachment section to actually be released from
the distal anvil attachment portion. The [E]xaminer asserts that
it is possible for the anvil attachment section (the region of
depressions 108) of Green to be released from the distal anvil
attachment portion (16) of Green, because the anvil member (60
and 62 collectively) of Green merely sits on the shoulders (80)
of the distal anvil attachment portion (16) of Green with a
friction fit provided by the slight inward tapering of the inner
and outer walls (104 and 106) of the anvil member (60 and 62
collectively) of Green . . . , and thus the anvil member (60
and 62 collectively) can be released from the distal anvil
attachment portion (16) by pulling the inner and outer walls
(104 and 106) and then the entirety of the anvil member (60
and 62 collectively) away from the shoulders (80) of the distal
anvil attachment portion (16) by applying enough force and/or
by using one or more tools.
Answer 4. Although we agree with the Examiner that the claim “does not
require the anvil attachment section to actually be released from the distal
anvil attachment portion,” we do not agree that even if it “is possible for the
anvil attachment section (the region of depressions 108) of Green to be
released from [the friction fit with] the distal anvil attachment portion (16),”
Green discloses components configured to be releasably coupled to one
another, as claimed. Consistent with Aspex Eyewear, there is no indication
that Green is designed so that the components the Examiner identifies are
releasably coupled—it may be that when the components with the
characteristics shown in Green’s figures are friction fit with each other, the
components would resist decoupling, or damage to the components would
Appeal 2020-001374
Application 15/033,667

6
result upon actual or attempted decoupling. Regardless, the Examiner does
not support adequately that Green’s components are designed to be
releasably coupled.
Accordingly, we do not sustain the Examiner’s obviousness rejection
of claim 1. We also do not sustain the Examiner’s rejection of claims 2–4,
6, 8–13, and 15–17 that depend from, and the Examiner rejects with,
independent claim 1.
Rejections III and IV—Obviousness rejections of claims 13 and 14
Claims 13 and 14 depend from claim 1. The Examiner does not rely
on Knodel or Lind to disclose anything that would remedy the above-
discussed deficiency in claim 1’s obviousness rejection. Consequently, we
do not sustain the Examiner’s obviousness rejections of claims 13 and 14.
Rejection V—Obviousness rejection of claims 1, 2, 4, 5, and 7
Although the Examiner rejects independent claim 1, and its dependent
claims 2, 4, 5, and 7, based on a second, alternate interpretation of Rethy,
this rejection relies on the Examiner’s determination that Green’s friction fit,
discussed above, discloses claim 1’s releasable coupling. Consequently, we
do not sustain this obviousness rejection of claims 1, 2, 4, 5, and 7 for the
same reasons we do not sustain the above rejection of claim 1.
CONCLUSION
We REVERSE the Examiner’s indefiniteness and obviousness
rejections.
Appeal 2020-001374
Application 15/033,667

7
In summary:
REVERSED

Claims
Rejected
35 U.S.C. § Basis/Reference(s) Affirmed Reversed
7 112(b) Indefiniteness 7
1–4, 6, 8–13,
15–17
103 Rethy, Green 1–4, 6, 8–
13, 15–17
13 103 Rethy, Green,
Knodel
13
14 103 Rethy, Green, Lind 14
1, 2, 4, 5, 7 103 Rethy, Green 1, 2, 4, 5, 7
Overall
Outcome:
1–17