Covidien LP

Patent Trials and Appeals Board

Feb 18, 2020

14941714 - (D) (P.T.A.B. Feb. 18, 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.
14/941,714 11/16/2015 Christopher A. Tokarz 356051 (203-10642) 5520
50855 7590 02/18/2020
Covidien LP
60 Middletown Avenue
Mailstop 54, Legal Dept.
North Haven, CT 06473
EXAMINER
LABRANCHE, BROOKE N
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
02/18/2020 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 CHRISTOPHER A. TOKARZ and NORVIN ASIDO
____________

Appeal 2019-003143
Application 14/941,714
Technology Center 3700
____________

Before STEFAN STAICOVICI, JEREMY M. PLENZLER, and
LISA M. GUIJT, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated May 15, 2018) rejecting claims 1–
20. We have jurisdiction over this appeal under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Covidien LP is identified as the real party in interest in
Appellant’s Appeal Brief (filed Sept. 27, 2018). Appeal Br. 1.
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Application 14/941,714

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INVENTION
Appellant’s invention is directed “to laparoscopic modular surgical
clip appliers capable of positioning, securing, and closing a surgical ligation
clip . . . around a vessel to be occluded.” Spec. para. 8.
Claims 1 and 13 are independent. Claim 13 is illustrative of the
claimed invention and reads as follows:
13. A clip module for selective connection to a handle
assembly and actuatable by an advancing mechanism of the
handle assembly, the clip module comprising:
a housing defining a proximal end, a distal end and a
lumen therethrough, the proximal end of the clip module
housing being configured for selective connection to a distal
end of a tubular shaft of the handle assembly, the clip module
housing including an annular flange extending radially into
the lumen thereof;
a jaw blade slidably supported within the lumen of the
clip module housing, the jaw blade including:
a pair of jaws disposed within the distal end of the
clip module housing, the pair of jaws being biased to an
open condition, wherein each jaw includes a respective
cam tooth projecting therefrom, wherein the cam teeth
are in operative registration with, and proximal of, the
annular flange of the clip module housing; and
a stem extending proximally from the pair of jaws,
wherein a proximal end of the stem is [engageable] by
the advancing mechanism of the handle assembly.

REJECTIONS
I. The Examiner rejects claim 13–15 and 18 under 35 U.S.C.
§ 102(a)(1) as being anticipated by Aldrich.2

2 Aldrich et al., US 8,021,375 B2, issued Sept. 20, 2011.
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II. The Examiner rejects claim 13–17 and 20 under 35 U.S.C.
§ 102(a)(1) as being anticipated by Whitfield.3
III. The Examiner rejects claims 1–3 and 5–12 under 35 U.S.C.
§ 103 as being unpatentable over Aldrich and Leimbach.4
IV. The Examiner rejects claims 1–4 and 19 under 35 U.S.C. § 103
as being unpatentable over Whitfield and Leimbach.

ANALYSIS
Rejection I
The Examiner finds that Aldrich discloses a clip module 62 including,
inter alia, housing 64a, 64b having a lumen therethrough and “an annular
flange . . . extending radially into the lumen thereof” and a pair of jaws 68,
“wherein each jaw includes a respective cam tooth . . . projecting therefrom,
wherein the cam teeth are in operative registration with, and proximal of, the
annular flange of the clip module housing.” Final Act. 4 (citing Aldrich,
Figs. 2, 3). To better illustrate the above findings, the Examiner provides an
annotated Figure 2 of Aldrich, as shown below:

3 Whitfield et al., US 8,968,337 B2, issued Mar. 3, 2015.
4 Leimbach et al., US 2015/0053737 A1, published Feb. 26, 2015.
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The figure reproduced above is the Examiner’s annotated Figure 2 of
Aldrich, which illustrates jaw driver 66 including a cam tooth, an annular
flange, and jaws 68. Id. at 5.
In response, Appellant first notes that independent claim 13 requires
that “each jaw includ[es] a respective cam tooth projecting therefrom,
wherein the cam teeth are in operative registration with, and proximal of, the
annular flange of the clip module housing.” Appeal Br. 9. Appellant then
asserts that in contrast to claim 13, in Aldrich, “jaw driver 66 causes the
jaws 68 to approximate, not a housing in which the jaws 68 are disposed.”
Id.; see also Reply Br. 2.5
The Examiner responds that Aldrich’s Figure 3 “shows [that] element
66 which comprises the annular flange is included in the housing.” Ans.
13.6 As far as we understand, the Examiner relies on reference number 66b
in Aldrich’s Figure 3, which corresponds to a distal end of jaw driver 66, to
determine that in addition to upper and lower housings 64a, 64b, jaw driver
66 is also part of housing 64. Thus, the Examiner takes the position that
because jaw driver 66 is part of housing 64a, 64b, “[t]he radially extending
flange, shown in FIG 2, is engaged by cam teeth [of jaws 68] also shown . . .
in FIG 2, resulting in approximation of the jaws.” Ans. 13–14 (citing
Aldrich, col. 10, ll. 50–53, Fig. 3).
For the following reasons, we do not agree with the Examiner’s
position that in light of Appellant’s Specification, a person of ordinary skill
in the art would reasonably consider Aldrich’s jaw driver 66 as part of
housing 64. Claim language should be read in light of the Specification, as

5 Appellant’s Reply Brief, filed Mar. 13, 2019.
6 Examiner’s Answer, dated Jan. 31, 2019.
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Application 14/941,714

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it would be interpreted by one of ordinary skill in the art. In re Suitco
Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). In this case, Aldrich
specifically discloses that a housing 64 includes upper housing 64a and
lower housing 64b “that are preferably snap fit or otherwise held together”
to “contain” therein jaw driver 66, which is disposed over jaws 68 and slides
over jaws 68 to bring the jaws together. See id., col. 7, ll. 34–43, col. 10, ll.
51–53. Aldrich further discloses that jaws 68 are joined together at proximal
end 68a, which extends into and through lower housing 64b. Id., col. 7, ll.
43–45. As such, upper and lower housings 64a, 64b of Aldrich’s housing 64
are held together to contain therein jaw driver 66, which by sliding over jaws
68 that are fixed relative to lower housing 64b, itself slides relative to
housing 64. Similarly, Appellant’s housing 142 contains jaw blade 144 that
slides therein relative to housing 142. See Spec. paras. 55, 56, 61, Fig. 7, 8.
Hence, as jaw driver 66 is contained within, and slides relative to, housing
64, we agree with Appellant’s position that in light of the Specification a
person of ordinary skill in the art would not reasonably consider Aldrich’s
jaw driver 66 to be part of housing 64. Reply Br. 5 (emphasis omitted).
Moreover, even if assuming arguendo that distal end 66b of jaw
driver 66 is part of housing 64, as the Examiner finds, then proximal end 66a
of jaw driver 66 should also be part of housing 64 because jaw driver 66 “is
constructed of a thin, flat member.” See Aldrich, col. 7, ll. 37–38 (emphasis
added). However, because in both Figures 3 and 4D of Aldrich, proximal
end 66a of jaw driver 66 is illustrated within housing 64, the Examiner’s
reliance on Figure 3 is misplaced.
Accordingly, because jaw driver 66 is not part of housing 64, the
Examiner’s finding that Aldrich’s “clip module housing includ[es] an
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Application 14/941,714

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annular flange . . . extending radially into the lumen thereof” (see Final Act.
4) is not supported by a preponderance of the evidence. As such, Appellant
is correct that Aldrich’s cam teeth of jaws 68 are not in “operative
registration with . . . the annular flange of the clip module housing,” as
called for by claim 13. See Appeal Br. 9; Reply Br. 5. Lastly, we note that
the Examiner does not adequately explain how the structure of jaw driver 66,
which according to the Examiner constitutes the claimed “annular flange,” is
“annular” because jaw driver 66 is a flat, thin, linear member, rather than a
ring-shaped member. See Final Act. 5, Examiner’s annotated Figure 2 of
Aldrich; Aldrich, col. 7, ll. 37–38, Fig. 2.
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 102(a)(1) of independent claim 13, and its
dependent claims 14, 15, and 18, as anticipated by Aldrich.

Rejection II
The Examiner finds that Whitfield discloses a clip module 550
including, inter alia, housing 560, 610 having a lumen therethrough and “an
annular flange (616) extending radially into the lumen thereof.” Final Act.
5–6 (citing Whitfield, Fig. 27).
In response, Appellant argues that in Whitfield cam plate 610 “causes
the jaw structure [620] to approximate, not a housing in which the jaw
structure is disposed.” Appeal Br. 13. Thus, according to Appellant,
Whitfield does not disclose that “the cam teeth are in operative registration
with, and proximal of, the annular flange of the clip module housing,” as
called for by claim 13. Id. at 13–14.
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The Examiner responds that “[t]he rejection of claim 13 defines a clip
module housing comprising elements 560 and 610, with an annular flange
616.” Ans. 15. According to the Examiner, “radial flange 616 resides in the
lumen of the housing [560, 610]” and “is engaged by cam teeth 621.” Id
(citing Whitfield, col. 15, ll. 23–40, Fig. 27, 29, 37).
For the following reasons, we do not agree with the Examiner’s
position that in light of Appellant’s Specification, a person of ordinary skill
in the art would reasonably consider Whitfield’s cam plate 610 as part of
housing 560. Whitfield specifically discloses clip cartridge 550 as including
housing 560 and cover 590 that contain therebetween cam plate 610, jaw
structure 620, block member 640, feed bar 650, clip carrier 660, clip
follower 670, and follower spring 680. Whitfield, col. 14, l. 65–col. 15, l. 3,
Fig. 27. Whitfield further discloses that the longitudinal motion of camming
plate 610 moves cam surface 614 relative to posts 621 of jaw structure 620.
Id., col. 15, ll. 53–55. Similarly, Appellant’s housing 142 contains jaw blade
144 that slides therein relative to housing 142. See Spec. paras. 55, 56, 61,
Fig. 7, 8. Hence, as cam plate 610 is contained within, and itself slides
relative to, housing 560, we agree with Appellant’s position that in light of
the Specification a person of ordinary skill in the art would not reasonably
consider Whitfield’s cam plate 610 as part of housing 560, 590. Reply Br. 8.
Accordingly, because cam plate 610 is not part of housing 560 and
cover 590 the Examiner’s finding that Whitfield’s “clip module housing
includ[es] an annular flange (616) extending radially into the lumen thereof”
(see Final Act. 5–6) is not supported by a preponderance of the evidence.
As such, Appellant is correct that Whitfield’s cam teeth 621 are not in
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“operative registration with . . . the annular flange of the clip module
housing,” as called for by claim 13. See Appeal Br. 13–14; Reply Br. 5.
Lastly, we agree with Appellant, that because cam plate 610 is flat,
camming aperture 614 and its camming surfaces 616, which the Examiner
equates to the claimed “annular flange” (see Final Act. 6), do not “extend[]
radially into a lumen of the housing 560.” See Reply Br. 9. In other words,
the Examiner does not adequately explain how camming aperture 614 and
surfaces 616, which according to the Examiner constitutes the claimed
“annular flange,” is “annular,” as cam plate 610 is flat, thin, linear member,
rather than a ring-shaped member. See Whitfield, Fig. 27.
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 102(a)(1) of independent claim 13, and its
dependent claims 14–17 and 20, as anticipated by Whitfield.

Rejections III and IV
Like independent claim 13, independent claim 1 recites, inter alia,
“the clip module housing including an annular flange extending radially into
the lumen thereof . . . wherein the cam teeth are in operative registration
with, and proximal of, the annular flange of the clip module housing.” See
Appeal Br. 18, 21 (Claims App.).
The Examiner relies on the same erroneous interpretation of the
Aldrich and Whitfield disclosures discussed above. See Final Act. 8, 11.
The use of the Leimbach disclosure does not remedy the Examiner’s
deficient interpretation of the Aldrich and Whitfield disclosures. See id. at 8,
12.
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Therefore, for the same reasons discussed supra, we also do not
sustain the rejections under 35 U.S.C. § 103 of claims 1–3 and 5–12 as
unpatentable over Aldrich and Leimbach and of claims 1–4 and 19 as
unpatentable over Whitfield and Leimbach.

CONCLUSION

Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
13–15, 18 102(a)(1) Aldrich 13–15, 18
13–17, 20 102(a)(1) Whitfield 13–17, 20
1–3, 5–12 103 Aldrich, Leimbach 1–3, 5–12
1–4, 19 103 Whitfield, Leimbach 1–4, 19
Overall
Outcome
1–20

REVERSED