13232401 (P.T.A.B. Oct. 5, 2017)

Ex Parte Boudreaux et al

Patent Trial and Appeal BoardOct 5, 2017

13232401 (P.T.A.B. Oct. 5, 2017)

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. 13/232,401 09/14/2011 Chad P. Boudreaux END6983USNP.0585733 1495 26874 7590 10/10/2017 FROST BROWN TODD LLC 3300 Great American Tower 301 East Fourth Street CINCINNATI, OH 45202 EXAMINER LONG, ROBERT FRANKLIN ART UNIT PAPER NUMBER 3721 NOTIFICATION DATE DELIVERY MODE 10/10/2017 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): patents @ fbtlaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHAD P. BOUDREAUX, STEPHEN J. BALEK, MATTHEW D. HOLCOMB, EDWARD A. RHAD, and DONALD F. WILSON, JR. Appeal 2016-004169 Application 13/232,4011 Technology Center 3700 Before LINDA E. HORNER, STEVEN D.A. McCARTHY, and GORDON D. KINDER, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Chad P. Boudreaux et al. (Appellants) seek our review under 35 U.S.C. § 134(a) of the Examiner’s decision rejecting claims 1-19 and 21. Final Office Action (February 24, 2015) (“Final Act.”). Claim 20 is canceled. Id. at 1. We have jurisdiction under 35 U.S.C. § 6(b). 1 Appellants identify Ethicon Endo-Surgery, Inc. as the real party in interest. Appeal Brief 3 (July 22, 2015) (hereinafter “Br.”). According to Appellants, Ethicon Endo-Surgery, Inc. is a wholly owned subsidiary of Ethicon, Inc., which is a wholly owned subsidiary of Johnson & Johnson. Id. Appeal 2016-004169 Application 13/232,401 We REVERSE. CLAIMED SUBJECT MATTER Appellants’ claimed subject matter relates to a “surgical instrument with fluid Tillable buttress.” Spec. 1, Title. Claims 1,16, and 21 are independent. Claim 1 is illustrative of the subject matter on appeal and is reproduced below. 1. An apparatus, comprising: (a) a surgical cutter comprising a distal end and a proximal end, wherein the proximal end comprises a handle, wherein the distal end comprises an anvil and a lower jaw, wherein the anvil and the lower jaw are configured to clamp tissue, wherein the surgical cutter is configured to sever tissue clamped by the anvil and the lower jaw; and (b) a buttress filled with a liquid, wherein the buttress is configured to be placed between the anvil and the lower jaw, wherein the buttress is configured to transition between a first configuration and a second configuration, wherein a height of the buttress is generally constant along a width of the buttress in the first configuration, wherein the anvil and the lower jaw are operable to clamp the buttress to reach the second configuration, wherein the buttress includes a compressive portion and a pressure portion in the second configuration, the pressure portion having a greater height than the compressive portion, wherein the compressive portion extends outwardly from the anvil and lower jaw, wherein the buttress is configured to be severed and stapled by the surgical cutter substantially contemporaneously with when the surgical cutter severs tissue, wherein the pressure portion is configured to urge the liquid through the compressive portion only once the buttress is severed. Br. 15 (Claims Appendix). 2 Appeal 2016-004169 Application 13/232,401 REJECTIONS The Final Office Action includes the following rejections: 1. Claims 1, 4, 7, and 21 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Murray et al. (US 2009/0120994 Al, published May 14, 2009) (“Murray”), Shah et al. (US 2009/0092651 Al, published April 9, 2009) (“Shah”), and Heinrich et al. (US 2006/0108393 Al, published May 25, 2006) (“Heinrich”). 2. Claims 2, 3, 5, 6, and 8-19 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Murray, Holsten et al. (US 2007/0034668 Al, published February 15, 2007) (“Holsten”), Shah, and Heinrich. ANALYSIS First Ground of Rejection: Obviousness over Murray, Shah, and Heinrich Claims 1, 4, and 7 The Examiner finds that Murray teaches a surgical cutter and buttress filled with a liquid, wherein the buttress comprises a compressive portion and a pressure portion that is configured to be pressurized with the liquid in response to clamping on the compressive portion and is configured to urge the liquid through the compressive portion only once the buttress is severed. Final Act. 3—4. The Examiner proposes to modify Murray’s device “to have the biocompatible scaffold of Shah” and “to use the scaffold 400/500 [of Heinrich] for tissue bolstering support purposes and delivery of treatment solution/material as taught by Heinrich.” Id. at 5-6. Appellants argue that the rejection of claim 1 should not be sustained because Murray, as modified to include the scaffold of Shah and as further modified to include the splash guard of Heinrich, would not result in “a 3 Appeal 2016-004169 Application 13/232,401 buttress filled with a liquid” and “wherein the pressure portion is configured to urge the liquid through the compressive portion only once the buttress is severed.” Br. 10-11, 15 (Claims Appendix). We agree with Appellants. The Examiner proposes to modify Murray’s buttress with the scaffold of Shah and the splash guard of Heinrich. We agree with Appellants’ explanation of the relevant teachings of Shah and Heinrich, as set forth on pages 10-11 of the Brief. For the reasons provided by Appellants on the same pages in their Brief, we agree that such a modification of Murray would not result in the claimed “buttress filled with a fluid” and having a pressure portion configured “to urge the liquid through the compressive portion only once the buttress is severed,” as recited in claim 1. For these reasons, we do not sustain the rejection of independent claim 1 and its dependent claims 4 and 7 as unpatentable over Murray, Shah, and Heinrich. Claim 21 Appellants contend that the rejection of claim 21 should not be sustained because the Examiner failed to address the language of claim 21 in the Final Action. Br. 13. Independent claim 21 is directed to an apparatus including a surgical instrument comprising a cutting feature and a stapling feature, and a buttress comprising a barrier region and an adhesive region, and wherein the barrier region forms a lip extending around the perimeter of the adhesive region to thereby contain the adhesive. Br. 19 (Claims Appendix). Although the Final Action includes claim 21 in the list of claims subject to the first ground of rejection, the analysis provided by the Examiner fails to provide findings or reasoning as to how the proposed combined teachings of Murray, Shah, and Heinrich would have led one 4 Appeal 2016-004169 Application 13/232,401 having ordinary skill in the art to the buttress comprising a barrier region and an adhesive region in the manner claimed. Final Act. 3-6. Further, even after Appellants pointed out in the Appeal Brief the Examiner’s omission of an analysis of claim 21, the Examiner still failed to address the language of claim 21 in the Examiner’s Answer (dated November 11, 2015). For these reasons, we do not sustain the rejection of claim 21 under 35 U.S.C. § 103(a) as unpatentable over Murray, Shah, and Heinrich. Second Ground of Rejection: Obviousness over Murray, Holsten, Shah, and Heinrich Claims 2, 3, 5, 6, and 8-15 Claims 2, 3, 5, 6, and 8-15 depend from independent claim 1. Br. 16- 17 (Claims Appendix). The Examiner relies upon the same combination of Murray as modified by Shah and Heinrich as discussed above for independent claim 1 in the rejection of these dependent claims. Final Act. 6-7 (Examiner proposing to modify Murray with the teachings of Shah and Heinrich to incorporate buttresses within staple cartridges). The Examiner does not rely on Holsten to cure the above-noted deficiencies in the combination. Id. For the same reasons provided supra in our analysis of the rejection of claim 1, we likewise do not sustain the second ground of rejection of claims 2, 3, 5, 6, and 8-15. Claims 16-19 Independent claim 16 recites an apparatus comprising a surgical instrument comprising a cutter and a stapler, and a pair of bladders each adhered to one another and each containing a coagulant component. Br. 18 (Claims Appendix). The Examiner relies upon the same combination of 5 Appeal 2016-004169 Application 13/232,401 Murray as modified by Shah and Heinrich as discussed above for independent claim 1 in the rejection of independent claim 16 and its dependent claims 17-19. Final Act. 6-7 (Examiner proposing to modify Murray with the teachings of Shah and Heinrich to incorporate buttresses within staple cartridges). The Examiner has failed to adequately explain how such a modification of Murray would result in a pair of bladders each adhered to one another, as recited in claim 16. The Examiner does not rely on Holsten to cure the deficiencies in the combination. Id. For this reason, we also do not sustain the second ground of rejection of claims 16-19. DECISION The decision of the Examiner rejecting claims 1-19 and 21 is reversed. REVERSED 6