Ex Parte Dycus et al

Patent Trial and Appeal Board

Dec 21, 2018

14719584 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/719,584
90039 7590
Covidien LP
Attn: IP Legal
5920 Longbow Drive
Mail Stop A36
05/22/2015
12/26/2018
Boulder, CO 80301-3299
FIRST NAMED INVENTOR
Sean T. Dycus
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.
2724CON3(203-2935PCTUSC3) 7555
EXAMINER
BEHRINGER, LUTHER G
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
12/26/2018 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):
mail@cdfslaw.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 SEAN T. DYCUS, STEVEN P. BUYSSE, and
DAX D. BROWN 1
Appeal2018-001070
Application 14/719,584
Technology Center 3700
Before JENNIFER D. BAHR, JEREMY M. PLENZLER, and
LEE L. STEPINA, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 19-28 under 35 U.S.C. § 103(a) as unpatentable
over Yoon (US 6,099,550, issued Aug. 8, 2000) and Eggers (US 5,891,142,
issued Apr. 6, 1999). We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM and designate the affirmance as a NEW GROUND OF
REJECTION.
1 Covidien AG (Appellant) is the applicant as provided in 37 C.F.R. § 1.46
and is identified as the real party in interest. Appeal Br. 1.
Appeal2018-001070
Application 14/719,584
THE CLAIMED SUBJECT MATTER
Claim 19, reproduced below, is the only independent claim and is
illustrative of the claimed subject matter.
19. An endoscopic bipolar forceps, comprising:
a housing;
an elongated shaft extending from the housing;
opposing jaw members disposed at a distal end of the
elongated shaft, at least one of the jaw members movable
relative to the other from a first position wherein the jaw
members are disposed in spaced relation relative to one another
to a second position wherein the jaw members are closer to one
another, the jaw members each including a flat seal surface
extending along a respective length thereof and adaptable to
connect to a source of electrical energy such that the flat seal
surfaces are capable of conducting energy through tissue held
therebetween to treat tissue;
at least one of the flat seal surfaces including a knife
channel defined therein and extending along a length thereof;
a plurality of stop members disposed along the length of
the at least one flat seal surface and electrically insulated from
the at least one flat seal surface, at least one of the stop
members disposed on a first side of the knife channel and at
least another one of the stop members disposed on a second
side of the knife channel, the plurality of stop members
configured to maintain a distance between the flat seal surfaces
when the jaw members are disposed in the second position; and
a knife configured to translate through the knife channel.
DISCUSSION
The Examiner finds that Yoon discloses most of the limitations of
claim 19, but finds that Yoon fails to disclose a plurality of stop members as
claimed. Ans. 3. The Examiner finds that Eggers teaches a plurality of stop
members (strips 124a-124J) disposed along the length of at least one flat
seal surface (grasping surface 120) of a jaw member of electrosurgical
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Application 14/719,584
forceps, wherein the plurality of stop members are configured to maintain a
distance between the flat seal surfaces when the jaw members are disposed
in a second position (closer to one another) and are electrically insulated
from the at least one flat seal surface. Id. at 4 (citing Eggers 10:25--45;
Fig. 10). The Examiner determines it would have been obvious to modify
Yoon to include a plurality of stop members as taught by Eggers along the
length of at least one flat seal surface because "providing electrically
insulated stop members from at least one of the flat seal surfaces would
achieve the most efficient electrode contact geometry and the most efficient
hemostasis with respect to tissue or vessels grasped." Id.
The Examiner finds that Yoon in view of the teachings of the Figure
10 embodiment of Eggers lacks a disclosure of providing at least one of the
stop members on a first side of the knife channel and at least another one of
the stop members on a second side of the knife channel. Id. However, the
Examiner reasons that such an arrangement of stop members would have
been obvious because "it has been held that rearranging parts of an invention
involves only routine skill in the art and such an arrangement would not
appear to alter the operation of the device." Id. at 5 (citing In re Japikse,
181 F.2d 1019 (CCPA 1954). The Examiner notes that
Yoon teaches various arrangements for the "stops or abutments
limiting distal movement of the end effectors" (Col. 8, 11. 41-
60) and that the features of the invention as described "can be
combined in any manner desired dependent on the operational
requirements of the procedure to be performed" (Col. 10, 11. 4--
10).
Ans. 5.
Appellant argues that the Examiner's reliance on Japikse is an
improper application of a per se rule, and that the passages of Yoon relied on
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Application 14/719,584
by the Examiner "are mere generalizations and boilerplate statements and
clearly do not provide 'articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness."' Appeal Br.
10 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); KSR Int'! Co. v.
Teleflex Inc., 550 U.S. 398,418 (2007)).
We agree with Appellant that the Examiner does not provide an
adequate rationale with some rational underpinning to support the
conclusion that it would have been obvious to dispose at least one of the stop
members on one side of the knife channel (groove 68) of Yoon and at least
another one of the stop members on the other side of the knife channel. The
Examiner relies on a design choice rationale, and makes a finding that such
an arrangement would not alter the operation of the device. Ans. 5.
However, the Examiner does not provide sufficient evidence or technical
reasoning to explain why this is the case. The Examiner cites two passages
of Yoon as teaching or suggesting that various arrangements of such features
are within the scope of Yoon' s invention. Id. However, for the reasons that
follow, neither passage provides rational underpinnings for the Examiner's
conclusion regarding positioning of the stop members.
The first passage is directed to the longitudinal grooves (i.e., grooves
68) formed in jaw inserts 62, 64 for accommodating operating members/end
effectors such as blades or other medical implements. See Yoon 8 :4 7-51.
Yoon teaches that the jaw inserts can have any combination or number of
such grooves and that the grooves can extend part way along the length of
the inserts, thereby defining stops or abutments limiting distal movement of
the end effectors, or the complete length of the inserts, thereby allowing
passage of the end effectors beyond the distal end of the jaws when the jaws
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Application 14/719,584
are closed. Id. 8:47-56. In other words, this passage of Yoon is directed
specifically to the number and longitudinal extent of grooves 68
( corresponding to the claimed "knife channel"), and the "stops or
abutments" alluded to therein are defined by the distal ends of grooves 68 (if
they do not extend the complete length of the inserts). This passage contains
no teachings about stop members configured to maintain a distance between
the flat seal surfaces when the jaw members are closer to one another, and
thus provides no rational underpinning for the Examiner's rationale about
rearranging the stop members (strips 124a-124J) taught by Eggers when
incorporated into Yoon's forceps.
The second passage relied on by the Examiner merely states that
features of the various embodiments disclosed by Yoon can be combined as
desired dependent on operational requirements of the procedure to be
performed and the complexity of the instrument. Yoon 10:4--10. Given that
Yoon does not disclose any embodiments comprising stop members as
claimed, this passage also provides no rational underpinning for the
Examiner's rationale about rearranging the stop members incorporated from
Eggers.
The arrangement of stop members (strips) depicted in Figure 10 of
Eggers is not, however, the only configuration of electrically insulative
spacers taught by Eggers. Figures 17 and 18 of Eggers, for example, depict
parallel linear arrays 212a-212c and 226a-226c, respectively, of electrically
insulative spacer regions. See Eggers 14: 13--48. The pattern in Figure 17
includes linear arrays 212a and 212c disposed on opposite sides of the center
of grasping surface 204, and the pattern in Figure 18 includes linear arrays
226a and 226c disposed on opposite sides of the center of grasping surface
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218, thereby promoting grasping adjacent the sides. See Eggers 14:24--25
( disclosing that the outermost spacers are positioned to promote grasping
adjacent periphery 214). Further, Eggers teaches that these spacers protrude
from surfaces 204 and 218 an appropriate distance to establish the preferred
minimum distance or spacing between flat grasping surfaces. Eggers 10:56-
61; 14:34--36, 46-48.
It would have been obvious, in view of the teachings of Eggers (Figs.
1 7, 18), to provide a plurality of electrically insulative spacers on grasping
surfaces (surfaces with treads 66) of Yoon's jaws, with at least one linear
array on each side of the center, in order to promote grasping, especially at
the periphery, and to establish the preferred minimum distance or spacing
between the grasping surfaces. As illustrated in Yoon's Figures 4--7, Yoon's
groove 68 ( corresponding to the claimed "knife channel") extends along the
center of the grasping surface. Thus, in incorporating the aforementioned
linear arrays on opposite sides of the center of the grasping surfaces of
Yoon's jaws, to promote grasping at the periphery, it would have been
obvious to dispose at least one linear array of spacers on one side of groove
68 (the knife channel) and at least one linear array of spacers on the other
side of groove 68.
The aforementioned arrays of spacers taught by Eggers, incorporated
on Yoon's jaws, satisfy the limitations of claims 23, 24, and 28. Eggers,
Figs. 17, 18; see Appeal Br. 14, 15 (Claims App.). The circular spacers of
Figure 18 of Eggers comprise "a series of circle-like tabs," as recited in
claim 25. See id. at 14--15.
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Eggers teaches providing the electrically insulative spacers with a
thickness, as they protrude from surface 204 or 218, to provide the desired
spacing T between surfaces 204 or 218. Eggers 14:34--36, 46-48. This
teaching of a thickness would have suggested to one of ordinary skill in the
art providing the electrically insulative spacers with a common thickness,
such that they are disposed on the same plane, as recited in claim 20, and
maintain a uniform distance between the flat seal surfaces along the lengths
thereof, as recited in claim 21. See Appeal Br. 14 (Claims App.).
The dimensions recited in claim 26 would have been obvious in view
of the teachings of Eggers regarding typical values of spacing T. Eggers
10:56-11:4; see Appeal Br. 15 (Claims App.).
Appellant argues that Yoon does not teach or suggest that jaw inserts
62, 64, which include treads 66 and present the flat surface corresponding to
the claimed "flat seal surface," "are capable of or configured to 'connect to a
source of electrical energy' for 'conducting energy through tissue,' as recited
in independent claim 19." Appeal Br. 7. Appellant acknowledges that Yoon
discloses "that 'the forceps jaws [ can be used] as conductive elements for
performing electrosurgery. "' Id. ( citing Yoon 9:21-25). However,
Appellant asserts that "the jaw inserts 62, 64 of Yoon are described
throughout Yoon as distinct from the jaws 38, 40 thereof." Id.
Yoon discloses that an electrical connection can be made "to utilize
the forceps jaws as conductive elements for performing electrosurgery."
Yoon 9:20-23. Further, Yoon discloses that "U]aw inserts 62 and 64 ... can
be formed with jaws 38 and 40 as an integral one-piece construction." Id.
4 :4 7-51 (boldface omitted). In view of these disclosures, a person having
ordinary skill in the art would have immediately envisaged that the flat seal
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Application 14/719,584
surfaces (in which treads 66 are formed) in such a one-piece construction
with the jaws are "adaptable to connect to a source of electrical energy such
that the flat seal surfaces are capable of conducting energy through tissue
held there between to treat tissue," as recited in claim 19.
For the above reasons, we reach the same conclusion that the
Examiner reaches-namely, that Yoon and Eggers render obvious the
subject matter of claims 19--21, 23-26, and 28. Thus, we sustain the
Examiner's rejection of claim 19-21, 23-26, and 28 as unpatentable over
Yoon and Eggers, but we designate our affirmance as a new ground of
rejection, pursuant to 37 C.F .R. § 41.50(b ), because our rationale in reaching
this conclusion differs from that articulated by the Examiner.
We adopt the findings and analysis articulated by the Examiner on
pages 5---6 of the Answer in addressing dependent claims 22 and 27, which
are not specifically contested by Appellant. See Appeal Br. 5-11; id. at 11
(in contesting the rejection of the dependent claims, relying solely on the
dependence of these claims from claim 19); Reply Br. 2--4. Accordingly, we
sustain the rejection of dependent claims 22 and 27 as unpatentable over
Yoon and Eggers, and we also designate our affirmance as to these claims as
a new ground of rejection, pursuant to 37 C.F.R. § 4I.50(b), because it
incorporates the new rationale discussed above in regard to claim 19.
DECISION
The Examiner's decision rejecting claims 19--28 is AFFIRMED, and
our affirmance is designated as a NEW GROUND OF REJECTION.
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FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). 37 C.F.R. § 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 C.F.R. § 4I.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
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 prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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)(l )(iv).
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AFFIRMED; 37 C.F.R. § 4I.50(b)
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