COVIDIEN LP

Patent Trials and Appeals Board

Oct 26, 2020

2020002686 (P.T.A.B. Oct. 26, 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.
15/033,657 05/02/2016 Arvind Kumar Gupta H-
US-02897.USN6(203-7959P
6680
50855 7590 10/26/2020
Covidien LP
60 Middletown Avenue
Mailstop 54, Legal Dept.
North Haven, CT 06473
EXAMINER
HIBBERT-COPELAND, MARY CATHERINE
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
10/26/2020 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,
and VINAYAN VIVEKANANDAN

Appeal 2020-002686
Application 15/033,657
Technology Center 3700
____________

Before NINA L. MEDLOCK, KENNETH G. SCHOPFER, and
AMEE A. SHAH, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6 and 8–22. 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. Appellant identifies the real party in interest as
Covidien LP and stating that “[t]he ultimate parent of Covidien LP is
Medtronic PLC.” Appeal Br. 1.
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Application 15/033,657

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BACKGROUND
The Specification states that “[t]he present disclosure relates to a
surgical fastener applying apparatus and, more particularly, to a surgical
fastener applying apparatus having reusable and disposable components.”
Spec. ¶ 1.
CLAIMS
Claims 1 and 11 are the independent claims on appeal. Claim 1 is
illustrative of the appealed claims and recites:
1. 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 defining an elongated
channel member, the elongated channel member having a distal
portion dimensioned to releasably receive a single use loading
unit and a proximal portion configured to support a firing
assembly, the firing assembly including a stationary housing and
a firing lever having at least one lever guide projection extending
from the firing lever, the firing lever being slidable from a
proximal end of the stationary housing to a distal end of the
stationary housing to define a firing stroke;
a clamping lever secured to the cartridge receiving half-
section and including a proximal handle portion, the clamping
lever being operably associated with the anvil half-section and
the cartridge receiving half-section and being movable from an
undamped position to a clamped position to releasably secure the
distal anvil portion of the anvil half-section in close
approximation with the single use loading unit, the proximal
handle portion of the clamping lever defining at least one lever
guide slot, wherein the at least one lever guide projection is
positioned to enter the at least one lever guide slot upon initiation
of the firing stroke to inhibit movement of the clamping lever to
the undamped position during the firing stroke; and
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Application 15/033,657

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a biasing member supported in a distal end of the firing
assembly, the biasing member being configured to inhibit full
seating of the single use loading unit within the elongated
channel member prior to movement of the clamping lever to the
clamped position.
Appeal Br. 12.
REJECTIONS
1. The Examiner rejects claims 1, 2, 5, 6, 9–14, 17–19, 21, and 22 under
35 U.S.C. §§ 102(a)(1)/(a)(2) as anticipated by Allen.2
2. The Examiner rejects claims 3 and 15 under 35 U.S.C. § 103 as
unpatentable over Allen in view of Lind.3
3. The Examiner rejects claims 4 and 16 under 35 U.S.C. § 103 as
unpatentable over Allen in view of Kapadia.4
4. The Examiner rejects claims 8 and 20 under 35 U.S.C. § 103 as
unpatentable over Allen in view of Katre.5
DISCUSSION
We are persuaded of error in the rejection of the independent claims
because the Examiner has not established that Allen discloses a biasing
member as claimed.
With respect to claim 1, the Examiner finds that Allen discloses an
anvil half-section, a cartridge receiving half section, a clamping lever, and a
biasing member as claimed. Final Act. 2–3. More specifically, the
Examiner finds that Allen discloses a cartridge receiving member with an
elongated channel member 17 for receiving a single use loading unit of

2 Allen et al., US 5,465,896, iss. Nov. 14, 1995.
3 Lind et al., US 2003/0023247 A1, pub. Jan. 30, 2003.
4 Kapadia, WO 2013/109444 A2, pub. July 25, 2013.
5 Katre et al., US 2013/0037597 A1, pub. Feb. 14, 2013.
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Application 15/033,657

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fasteners 72 and that Allen discloses a biasing member, which is a safety
spring 86 that inhibits full seating of the single use loading unit prior to
movement of the clamping lever. Id. (citing Allen col. 5, ll. 20–50; col. 6,
l. 65–col. 7, l. 5; col. 11, l. 55–col. 12, l. 12). The Examiner relies on
substantially the same findings in rejecting independent claim 11. See Final
Act. 4–5.
Appellant argues that Allen does not disclose that the safety spring 86
inhibits seating of the staple magazine 72 and the staple magazine remains
seated in the channel of the top beam 17 at all times until it is removed by
the user. Appeal Br. 6–8.
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[A]nticipation of a claim
under § 102 can be found only if the prior art reference discloses every
element of the claim . . . .” In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986)
(citing Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co.,
730 F.2d 1452, 1457 (Fed. Cir. 1984)). “[A]bsence from the reference of
any claimed element negates anticipation.” Kloster Speedsteel AB v.
Crucible Inc., 793 F.2d 1565, 1571 (Fed. Cir 1986).
We agree with Appellant that the Examiner has not established that
Allen discloses a biasing member that inhibits full seating of the staple
magazine 72 as required by claim 1. Allen discloses that safety spring 86 is
provided to prevent reuse of the instrument “after it has been fired but before
the spent staple magazine has been replaced.” Allen col. 10, ll. 31–34.
Allen explains that the safety spring is actuated by moving a knife advancer
from the proximal to the distal end of the device and that the safety spring
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Application 15/033,657

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first retains its L shape when actuated until the stapling operation is
complete and the upper and lower jaw members of the device are opened.
Id. at col. 10, ll. 55–67. Allen discloses that the spring fully deploys to a
“blocking position” once the upper and lower jaws are opened. Id. Allen
discloses that the blocking position prevents “the jaw members from being
reclosed, until the spent staple magazine is replaced with a loaded magazine.
In this way, the jaw members cannot be inadvertently reclosed on tissue to
be sutured while the spent cartridge remains in the stapling instrument.” Id.
at col. 11, ll. 1–5.
We agree with Appellant that Allen discloses only that the spring is
used to prevent the jaw members from reclosing after the stapling apparatus
has been fired. Appeal Br. 7. We see no indication in the cited portions of
Allen that the spring member prevents the staple magazine from being
seated in the device.
In the Answer, the Examiner explains that the claim language “inhibit
full seating” is broadly interpreted to require only that the biasing member
prevents “accidental firing until the disposable loading unit is operably
engaged.” Ans. 13 (emphasis omitted). The Examiner finds that Allen
discloses that the spring prevents operation of the device by preventing
closure of the jaw members unless a new unused cartridge is seated properly
in the device. Id. Thus, the Examiner finds that Allen discloses a biasing
member as claimed because the safety spring prevents accidental firing until
a new cartridge is seated properly in the device. Id. Notably, this finding
appears to acknowledge that the safety spring does not prevent a new
cartridge from being seated properly in the device.
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We find that the Examiner’s interpretation of the claim is
unreasonably broad. The language of the claim indicates that the biasing
member physically prevents a portion of the loading unit from being seated
in the elongated channel member. The Specification is consistent with the
plain language of the claim and discloses that the biasing member is
configured to inhibit the proximal end of the single use loading unit from
being fully within channel member 202, i.e. the biasing member physically
prevents a portion of the loading unit from entering the channel. Spec. ¶ 48.
Thus, we determine the broadest reasonable interpretation of the claim,
consistent with the Specification, requires a biasing member that physically
prevents the loading unit from fully entering the elongated channel of the
device.
Based on the foregoing, we agree with Appellant’s position that Allen
teaches that the staple cartridge may be fully seated in the device regardless
of the position of the safety spring. Thus, we are persuaded of error and we
do not sustain the rejection of the independent claims as anticipated by
Allen. For the same reasons, we do not sustain the rejection of dependent
claims 2, 5, 6, 9, 10, 12–14, 17–19, 21, and 22.
Obviousness
With respect the rejections of claims 3, 4, 8, 15, 16, and 20, the
Examiner does not provide further evidence or analysis with respect to the
art of record that cures the deficiency in the rejection of claims 1 and 11, as
discussed above. Accordingly, we also do not sustain the rejections of
dependent claims 3, 4, 8, 15, 16, and 20.
CONCLUSION
We REVERSE the rejections of claims 1–6 and 8–22.
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In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 5, 6,
9–14, 17–
19, 21, 22
102(a)(1)/
(a)(2)
Allen 1, 2, 5, 6, 9–
14, 17–19,
21, 22
3, 15 103 Allen, Lind 3, 15
4, 16 103 Allen, Kapadia 4, 16
8, 20 103 Allen, Katre 8, 20
Overall
Outcome
1–6, 8–22

REVERSED