Ex Parte Bilotti et al

Board of Patent Appeals and Interferences

Aug 15, 2012

11348543 (B.P.A.I. Aug. 15, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/348,543 02/07/2006 Federico Bilotti END-5705 6089
21884 7590 08/16/2012
WELSH FLAXMAN & GITLER LLC
2000 DUKE STREET, SUITE 100
ALEXANDRIA, VA 22314
EXAMINER
LOW, LINDSAY M
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
08/16/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte FEDERICO BILOTTI and ANTONIO LONGO
____________________

Appeal 2010-004334
Application 11/348,543
Technology Center 3700
____________________

Before: GAY ANN SPAHN, WILLIAM V. SAINDON, and
PATRICK R. SCANLON, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-004334
Application 11/348,543

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1, 5, and 10-19. We have jurisdiction under 35
U.S.C. § 6(b).
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A surgical instrument adapted for applying a plurality of
surgical fasteners to body tissue, the surgical instrument
comprising:
a frame having a proximal end and a distal end, with a
handle positioned at the proximal end and an end effector
positioned at the distal end;
the end effector being shaped and dimensioned for
supporting a replaceable cartridge module including a cartridge
housing and an anvil, wherein the cartridge housing is coupled
to the anvil;
a firing mechanism is associated with the end effector
and the cartridge module for selective actuation; and
wherein the end effector has a radius of curvature
optimized for a trans-anal resection such that the end effector
has a curvature of approximately a 36 mm diameter and defines
an arc length of approximately 30 mm.

References
The Examiner relies upon the following prior art references:
Green (I)
Green (II)
Brinkerhoff
Longo
Adams
Bilotti
US 4,383,634
US 5,308,576
US 5,404,870
US 6,083,241
US 6,241,140 B1
US 6,805,273 B2
May 17, 1983
May 3, 1994
Apr. 11, 1995
Jul. 4, 2000
Jun. 5, 2001
Oct. 19, 2004
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Rejections
The Examiner makes the following rejections under 35 U.S.C.
§ 103(a):
I. Claims 1 and 10-12 as unpatentable over Bilotti, Green (I), and
Adams.
II. Claim 13 as unpatentable over Bilotti, Green (I), Adams, and Green
(II).
III. Claims 5, 14-16, 18, and 19 as unpatentable over Bilotti, Green (I),
Adams, Longo, and Brinkerhoff.
IV. Claim 17 as unpatentable over Bilotti, Green (I), Adams, Longo, and
Green (II).

SUMMARY OF DECISION
We AFFIRM but denominate the affirmance as a NEW GROUND of
REJECTION.

OPINION
With respect to independent claim 1, the Examiner found that Bilotti
discloses “the same invention” except for a replaceable cartridge module
(which the Examiner found is taught in Green (I)) and the particular
dimensions of the end effector (which the Examiner found is taught in
Adams). Ans. 3-4. Of particular interest is the Examiner’s finding that
Adams describes an end effector with a diameter between 15mm and 40mm
and an arc length of 30mm because Adam’s end effector is approximately
47.1mm to 125.6mm in circumference (if it were a complete circle). See
Ans. 4. The Examiner’s reasoning considers the claimed “defines an arc
length of approximately 30mm” limitation as reading on an arc length of a
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longer length because the longer length “includes a portion that is 30mm in
length.” See Ans. 8.
Appellants raise the issue of whether the Examiner’s interpretation of
“defines an arc length” is improper. See App. Br. 13 (“one of ordinary skill
in the art would certainly understand the claim language at issue to very
specifically refer to the entire arc of the end effector, not an undefined
portion thereof”).
The plain meaning of the phrase “defines an arc length” sets forth the
size of the arc, not the minimum size of the arc. There is nothing in the
claim language or Specification that would otherwise serve to broaden the
phrase “of approximately 30mm” to “of at least approximately 30mm.”
Further, the Examiner does not proffer any explanation as to why one of
ordinary skill in the art would consider the Examiner’s interpretation
appropriate. Accordingly, we consider the Examiner’s interpretation of
“defines an arc length” to be unduly broad.
Nevertheless, we agree with the Examiner’s ultimate conclusion that
the claimed subject matter of independent claim 1 is obvious in view of
Bilotti, Green (I), and Adams. The Bilotti device is a highly similar device
that has a similar arc shape and is used in the same trans-anal surgical
procedures. See Ans. 3, Bilotti, fig. 1, col. 1, ll. 3-10. While the diameter
and arc length of the Bilotti device are not specifically identified, clearly, the
device would have a diameter and arc length appropriate for trans-anal
surgeries. Thus, the only difference between the prior art and the claimed
invention is the specific value of these variables.
Given the trans-anal surgical context, one of ordinary skill in the art
would necessarily envision certain ranges of diameters and arc lengths for
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the Bilotti device. Adams suggests that the shape of the outer surface of the
working head (i.e., arc length and diameter) may be selected to
accommodate various desired resectioning shapes, with a diameter in the
15mm to 40mm range. Adams, col. 7, ll. 1-11. With Bilotti’s context and
Adams’ suggestion in mind, one would envision the arc length to affect the
ability of the device to enter any particularly sized orifice as well as how
much tissue could be stapled at one time, and would envision the diameter to
affect how closely the device matches the curvature of the tissue to be
stapled. Accordingly, the tradeoffs involved in selecting a diameter and arc
length are readily apparent and predictable.
“[W]here the general conditions of a claim are disclosed in the prior
art, it is not inventive to discover the optimum or workable ranges by routine
experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955). As we
discussed above, there is a clear set of boundaries and tradeoffs one of
ordinary skill in the art would recognize when considering the diameter and
arc length of a trans-anal resectioning device’s distal end1. Accordingly, the
diameter and arc length of the end effector are result-effective variables
subject to those boundaries and tradeoffs.
Appellants provide no evidence of unobviousness. Where the
difference between the claimed invention and the prior art is some range or
other variable within the claims, the applicant must show that the particular
range is critical, generally by showing that the claimed range achieves
unexpected results relative to the prior art range. In re Woodruff, 919 F.2d
1575, 1578 (Fed. Cir. 1990) (“[t]he law is replete with cases in which the

1 In addition to those boundaries and tradeoffs discussed above, we note that
the sizes and shapes of those portions of the body relevant to trans-anal
resection would fall within an expected distribution.
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difference between the claimed invention and the prior art is some range or
other variable within the claims. … These cases have consistently held that
in such a situation, the applicant must show that the particular range is
critical, generally by showing that the claimed range achieves unexpected
results relative to the prior art range.”). In this case, weighing the evidence
of obviousness and unobviousness, we conclude that the subject matter
recited in independent claim 1 is obvious.
We adopt the Examiner’s findings and rejections as our own, but
modify the Examiner’s rejections in a manner consistent with our discussion
above. In fine, we do not adopt the Examiner’s interpretation of “defines an
arc length,” but conclude that the claimed subject matter, including that
drawn to the arc length, is obvious in view of Bilotti, Green, and Adams, for
the reasons expressed above.
Appellants do not present any other arguments with respect to
independent claims 1 or 5 that are persuasive. With respect to dependent
claims 11 and 15, Appellants argue that Green does not disclose certain
features of the cartridge module. App. Br. 13-14. However, claims 1 and 5,
from which 11 and 15 depend, do not positively recite a cartridge module.
Instead, both independent claims recite a surgical instrument having an end
effector “shaped and dimensioned for supporting a replaceable cartridge.”
Thus, the claim merely requires an end effector capable of supporting a
replaceable cartridge that has a removable retainer and, as such, Appellants’
arguments that Green does not disclose a replaceable cartridge with a
removable retainer are not commensurate in scope with the claims.

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DECISION
For the above reasons, we affirm the Examiner’s decision regarding
claims 1, 5, and 10-19. However, because our reasons for affirmance differ
from those set forth by the Examiner, we denominate the affirmance as a
new ground of rejection.

FINALITY OF DECISION
Regarding the affirmed rejections, 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months of the
date of the original decision of the Board.” In addition to affirming the
Examiner’s rejection of one or more claims, this decision contains a new
ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b)
provides “[a] new ground of rejection pursuant to this paragraph shall not be
considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that
Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE
DECISION, must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner.…
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record.…
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
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review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED; 37 C.F.R. § 41.50(b)

MP