Ex Parte ACKLEY et al

Patent Trial and Appeal Board

Feb 12, 2019

14969161 (P.T.A.B. Feb. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/969,161
90039 7590
Covidien LP
Attn: IP Legal
5920 Longbow Drive
Mail Stop A36
12/15/2015
02/14/2019
Boulder, CO 80301-3299
FIRST NAMED INVENTOR
JOANNA ACKLEY
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
H-EB-003l2DV2(203-8241DV2 8575
EXAMINER
YOO,TIJN S
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
02/14/2019 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):
rs. patents. two@medtronic.com
docket@carterdeluca.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte JOANNA ACKLEY, JAMES D. ALLEN IV, RYAN C. ARTALE,
KIM V. BRANDT, DENNIS W. BUTCHER, EDWARD M. CHOJIN,
GARY M. COUTURE, JAMES S. CUNNINGHAM,
DAVID M. GARRISON, KEIR HART, RUSSELL D. HEMPSTEAD,
GLENN A. HORNER, DANIEL A. JOSEPH, DUANE E. KERR,
DYLAN R. KINGSLEY, PETER M. MUELLER, JESSICA E.C. OLSON,
SEAN T. O'NEILL, JASON T. SANDERS, ROBERT M. SHARP,
JOHN R. TWOMEY, and JEFFREY R. UNGER
Appeal2018-005449
Application 14/969, 161 1
Technology Center 3700
Before STEFAN STAICOVICI, JAMES P. CALVE, and
WILLIAM A. CAPP, Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE-
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision in the Final Office Action (dated Sept. 29, 2017, hereinafter "Final
1 Covidien LP is the applicant and identified as the real party in interest in
Appellants' Appeal Brief (filed Feb. 23, 2018, hereinafter "Appeal Br.").
Appeal Br. 3.
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Application 14/969, 161
Act.") rejecting claims 14--18.2 We have jurisdiction over this appeal under
35 U.S.C. § 6(b).
SUMMARY OF DECISION
We REVERSE.
INVENTION
Appellants' invention is related a method for setting a gap distance
between jaw members of a surgical tissue sealer. Spec. 2, Summary.
Claim 14, the sole independent claims, is representative of the claimed
invention and reads as follows:
14. A method of manufacturing an end effector assembly, the
method comprising:
grasping a gap-setting gauge between first and second
jaw members to define a gap-distance between
the first and second jaw members equivalent to a thickness of
the gap-setting gauge; and
moving a stop member a distance within an aperture
defined in the first jaw member into engagement with the
second jaw member while the first and second jaw members are
grasping the gap-setting gauge such that the first and second
jaw members are prevented from approximating beyond the
gap-distance, wherein the gap-distance between the first and
second jaw members is maintained during the movement of the
stop member the distance within the aperture of the first jaw
member.
2 Claims 1-13 are canceled. See Appeal Br. 9 (Claims App.).
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Application 14/969, 161
REJECTIONS
I. The Examiner rejects claims 14--16 and 18 under 3 5 U.S. C. § 10 3 (a)
as being unpatentable over Unger et al. (US 2009/0082767 Al, pub.
Mar. 26, 2009, hereinafter "Unger"), Homes (US 8,893,593 B2, iss.
Nov. 25, 2014), and Reilly (US 6,901,672 Bl, iss. June 7, 2005).
II. The Examiner rejects claim 17 under 35 U.S.C. § I03(a) as being
unpatentable over Unger, Homes, Reilly, and Schaufelberger et al.
(US 2,998,789, iss. Sept. 5, 1961, hereinafter "Schaufelberger").
ANALYSIS
Rejection I
The Examiner finds that Unger discloses a method for manufacturing
an end effector assembly 605 including, inter alia, forming a stop member
625' by dispersing insulating material in cavities 614 of a second jaw
member 620, curing the stop member 625', and assembling the second jaw
member 620 with a first jaw member 610. See Final Act. 2 (citing Unger,
paras. 45, 46, Fig. 5b ). However, the Examiner finds that Unger fails to
disclose the "grasping" and "moving" steps of independent claim 14. See id.
at 3. Nonetheless, the Examiner finds that Homes discloses moving stop
member 30 within an aperture in first jaw member 12 such that when first
and second jaw members 12, 14 are in a "fully grasped position" they "are
prevented from approximating beyond the gap-distance." Id. ( citing Homes,
col. 3, 11. 4--14, Fig. 4). The Examiner further finds that Reilly discloses
"grasping a gap-setting gauge [ 6]" between first and second jaw members of
outside caliper 3 8 in order to define a gap there between "equivalent to a
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Application 14/969, 161
thickness of the gap-setting gauge." Id. (citing Reilly, col. 3, 11. 29-35, Fig.
6).
Thus, the Examiner concludes that:
It would have been obvious to one of ordinary skill in the
art ... to replace the stop member (625') of Unger ...
with the set screw of Homes by providing the set screw
in the first jaw member of Unger ... so that, the gap
between the first and second jaw members can be easily
readjusted depending on the thickness of the object ( e.g.
tissue) being held by the jaw members.
Id. The Examiner further determines that:
It would have been obvious to one of ordinary skill in the
art ... to use the gap-setting gauge similar to the one
in Reilly to set a desired gap between jaw members ( 610,
620) of Unger ... [and] Homes by first grasping the gap-
setting gauge between the first and second jaw members
of Unger ... [ and] Homes and advancing the set screw of
Homes in the first jaw member until it touches the second
jaw member while maintain the gap-distance between the
jaw members in order to achieve an accurate clamping
force against the object ( e.g. tissue) of particular
thickness being held by the jaw members with a minimal
effort.
Id. at 3--4. Finally, the Examiner explains that:
In order to set a precise gap between the first and second
jaw members of Unger ... [and] Homes using the gap-
setting gauge of Reilly, the most logical approach would
involve steps of 1) placing the gap- setting gauge of
Reilly between the first and second jaw members of
Unger ... [and] Homes, 2) grasping the gap-setting
gauge with the first and second jaw members to define a
desired gap between the jaw members and 3) rotating the
set screw of Homes in the first jaw member of Unger ...
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Application 14/969, 161
until it touches the second jaw member of Unger ...
while maintaining the gap as recited in [ c ]laim 14.
Id. at 5.
Appellants argue that the Examiner employs impermissible hindsight
in combining the teachings of Unger, Homes, and Reilly because "nowhere
in Homes or Reilly is it taught or suggested to maintain the gap-distance
between the first and second jaw members 'as the stop member is moved the
distance within the aperture of the first jaw member,' as recited in claim
14." Appeal Br. 7. According to Appellants, "[t]he Examiner believes that
this is the only 'logical approach' to setting a gap distance only because
Appellant's own specification and claims are being used by the Examiner,
whether knowingly or unknowingly, to arrive at this approach." Id.
Homes discloses a tool 10 for deforming threads 21 on a fastener 20
including, inter alia, rotatably connected first and second arms 12, 14,
wherein first arm 12 has openings 16 to accommodate fasteners 20 and a set
screw 30 and second arm 14 has projections 17. Homes, col. 2, 11. 22-25,
col. 3, 11. 4--9, Figs. 3, 6. Homes further discloses a method for deforming
threads 21 on fastener 20 including, inter alia, inserting fastener 20 into
opening 16, applying pressure to bring together first and second arms 12, 14
such that projection 17 engages and deforms threads 21 of fastener 20. Id.,
col. 2, 11. 30-36, Figs. 5-8. Homes also discloses rotating set screw 30 of
tool 10 to control the "degree of engagement" between projections 17 and
threads 21 of fastener 20. Id., col. 3, 11. 9-14. As Homes' Figures 5 and 6
illustrate set screw 30 positioned to engage second arm 14 when first and
second arms 12, 14 are brought together to control the engagement of
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projections 17 and threads 21 of fasteners 20, 3 we agree with Appellants that
"set screw 30 of Homes is adjusted prior to a closing of ... arms 12, 14."
Reply Brief ( filed May 1, 2018, hereinafter "Reply Br.") at 2 ( emphasis
added). In other words, because Homes' screw 30 is moved prior to arms
12, 14 grasping fastener 20, Homes' set screw 30 does not move into an
aperture in first arm 12 while first and second arms 12, 14 grasp fastener 20.
See Appeal Br. 6, Reply Br. 2.
With respect to the disclosure of Reilly, although we appreciate that
Reilly's calibrating method includes caliper 38 grasping gauge 10,
nonetheless, Appellants are correct that Reilly likewise fails to disclose
moving a stop member while the legs of caliper 38 are grasping gauge 10.
See Appeal Br. 5---6 (citing Reilly, col. 1, 11. 13-15, col. 3, 11. 33-36,
Figs. 3, 6).
As such, we agree with Appellants that neither Homes nor Reilly
discloses moving a stop member while the first and second jaw members are
grasping a gauge, as called for by claim 14. See id. at 6. Accordingly,
absent hindsight we fail to see why a person having ordinary skill in the art
would have moved Homes' set screw 30 while grasping Reilley's gauge with
Unger's first and second jaw members 610, 620.
We appreciate the Examiner's explanation that a skilled artisan could
move Homes' set screw 30 while grasping Reilly's gauge with Unger's first
and second jaw members 610, 620. See Final Act. 8, Ans. 6. However, "a
patent composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently, known in the
3 Figure 5 illustrates set screw 30 passing through first arm 12 and in
Figure 6 it is illustrated as engaging second arm 14.
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prior art." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007). In other
words, the mere fact that elements can be combined is not, in itself, a reason
to combine them. Here, the Examiner's reasoning to combine the teachings
of Unger, Homes, and Reilly, namely, "to achieve an accurate clamping
force against the object ( e.g. tissue) of particular thickness being held by the
jaw members with a minimal effort" is contrary to Homes' disclosure. Ans.
4. Specifically, a skilled artisan would readily understand that Homes'
disclosure of controlling the "degree of engagement" between projections 17
and threads 21 of fasteners 20 is similar to controlling the clamping force
necessary to deform threads 21 of fasteners 20. See In re Jacoby, 309 F .2d
513, 516 (CCPA 1962). Hence, in contrast to moving Homes' set screw
while grasping Reilley's gauge with Unger's jaw members to control the
clamping force, Homes discloses achieving a similar control of the clamping
force by moving set screw 30 prior to grasping fastener 20. Therefore, for
the foregoing reasons, the Examiner's rejection appears to be the result of
impermissible hindsight analysis.
Accordingly, we do not sustain the rejection under 35 U.S.C. § 103(a)
of claims 14--16 and 18 as unpatentable over Unger, Homes, and Reilly.
Rejection II
The Examiner's use of the Schaufelberger disclosure does not remedy
the deficiency of the Unger, Homes, and Reilly combination discussed
supra. See Final Act. 4--5. Accordingly, for the same reasons discussed
above, we also do not sustain the rejection of claim 17 over the combined
teachings of Unger, Homes, Reilly, and Schaufelberger.
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Application 14/969, 161
SUMMARY
The Examiner's decision to reject claims 14--18 under 35 U.S.C.
§ 103(a) is reversed.
REVERSED
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