Ex Parte GLEIMAN et al

Patent Trials and Appeals Board

Apr 5, 2019

14618255 - (D) (P.T.A.B. Apr. 5, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/618,255 02/10/2015
50855 7590
Covidien LP
60 Middletown A venue
Mailstop 54, Legal Dept.
North Haven, CT 06473
04/09/2019
FIRST NAMED INVENTOR
SETH GLEIMAN
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-US-04051 (203-10519) 4170
EXAMINER
DESAI, HEMANT
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
04/09/2019 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
Ex parte SETH GLEIMAN,
ANTHONY CENICCOLA,
ANNE NELSON,
MATTHEWCHOWANIEC,
DAVID RACENET,
JEFFREY SCHMITT,
GERALD HODGKINSON, and
JOSHUA SNOW 1
Appeal 2018-005108
Application 14/618,255
Technology Center 3700
Before MICHAEL L. HOELTER, LISA M. GUIJT and
BRENT M. DOUGAL, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
1 "The real party in interest for the above-identified application is Covidien
LP." App. Br. 1. We proceed on the basis that, for purposes of this appeal,
Covidien LP is the "Appellant."
Appeal 2018-005108
Application 14/618,255
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a) from the
Examiner's Final rejection of claims 1---6 and 10. Final Act. 1 (Office
Action Summary). Claims 7-9 and 12 have been canceled, and claim 11 has
been withdrawn. See App. Br. 10 (Claims Appendix). We have jurisdiction
under 35 U.S.C. § 6(b ). For the reasons explained below, we find error in
the Examiner's rejection of these claims. Accordingly, we REVERSE the
rejection of claims 1---6 and 10.
CLAIMED SUBJECT MATTER
The disclosed subject matter "relates generally to surgical stapling
instruments." Spec. ,r 1. Apparatus claim 1 and method claim 10 are
independent. Claim 1 is representative of the claims on appeal and is
reproduced below.
1. An end effector comprising:
a first jaw including a fastener cartridge having a first
tissue contacting surface and a plurality of fasteners arranged in
rows parallel to a longitudinal axis of the first jaw;
a first buttress attached to the first tissue contacting
surface;
a second jaw including a second tissue contacting surface,
the first and second jaws movable relative to one another and
configured to grasp tissue therebetween;
a second buttress attached to the second tissue contacting
surface; and
an ultrasonic blade activatable to weld the first buttress to
the second buttress and to subsequently cut the welded first and
second buttresses and tissue grasped between the first and second
Jaws.
2
Appeal 2018-005108
Application 14/618,255
Scheib et al.
Hodgkinson
REFERENCES
US 2015/0048143 Al
US 2017/0172575 Al
THE REJECTION ON APPEAL
Feb. 19,2015
June 22, 2017
Claims 1---6 and 10 are rejected under 35 U.S.C. § 103 as unpatentable
over Hodgkinson and Scheib.
ANALYSIS
The rejection of claims 1-6 and 10
as unpatentable over Hodgkinson and Scheib
Claim 1 is directed to an end effector having first and second
buttresses attached, respectfully, to first and second jaws. Claim 1 further
recites "an ultrasonic blade activatable to weld the first buttress to the
second buttress and to subsequently cut the welded first and second
buttresses. "2 The Examiner relies on Hodgkinson for disclosing an end
effector having first and second buttresses/jaws, and a blade for cutting the
buttresses, but acknowledges that Hodgkinson "fails to disclose that the
blade is an ultrasonic blade activatable to weld the first and second
buttresses." Final Act. 5. The Examiner relies on Scheib for teaching an
end effector having a (single) buttress and, more importantly, for disclosing
"an ultrasonic blade ... activatable to weld and cut the buttress strip." Final
Act. 5. The Examiner thereafter explains that it would have been obvious
2 Independent method claim 10 contains similar language, i.e., "an ultrasonic
blade ... to weld the buttresses together and to subsequently cut ... the
welded buttresses."
3
Appeal 2018-005108
Application 14/618,255
"to replace the blade" of Hodgkinson for that of Scheib, and provides a
reason to do so. Final Act. 6.
Appellant states, "Scheib is silent as to the welding of a buttress" and,
thus, contends that "Scheib fails to teach [that its end effector] is 'activatable
to ... subsequently cut the welded first and second buttresses."' App. Br. 5;
see also Reply Br. 2. Appellant contends that Scheib's "tissue cutting
member 130 is not capable of welding buttresses before cutting the
buttresses" because Scheib's member 130 is for cutting; not welding and
then subsequently cutting as recited. App. Br. 6; see also Reply Br. 3--4
("Scheib discloses that the tissue cutting member 130 provides ...
'relatively little thermal spread"' (referencing Scheib ,r 47)).
We note that claim 1 recites the phrase, "subsequently cut the welded
first and second buttresses" ( claim 10 recites "subsequently cut ... the
welded buttresses"). Emphasis added. We understand "welded," as used
here, to mean that the buttress weld has already transpired or taken place
(i.e., has already been completed and cured). In other words, the weld is no
longer in a transitional, molten, unsolidified, or semi-fused state because the
buttresses, prior to cutting, have previously been "welded" to each other.
Thus, according to claims 1 and 10, after the buttresses are welded together,
the welded (i.e., set) buttresses are subsequently cut. 3
3 Also, claim 1 recites welding "the first buttress to the second buttress"
( claim 10 recites welding "the buttresses together"), but it is not altogether
clear from Appellant's Specification, or from Appellant's Drawings, how
such buttress-to-buttress welding can occur when tissue T is layered
therebetween separating the two and keeping the buttresses spaced apart
from each other. See Spec. ,r,r 5, 26-28; Fig. 3, 4. Further, Paragraph 27 of
Appellant's Specification states, "[a]s the ultrasonic blades 54 cut the tissue
4
Appeal 2018-005108
Application 14/618,255
As indicated above, the Examiner relies on Scheib for disclosing an
ultrasonic blade "activatable to weld and cut the buttress strip." Final Act. 5.
Scheib discusses employing an ultrasonic cutting member ( as well as
alternative mechanical or radiofrequency (RF) cutting members). See
Scheib ,r 4 7. However, Scheib is silent as to any disclosure of ultrasonic
welding, and especially any buttress welding prior to buttress cutting. See
also App. Br. 4-- 6; Reply Br. 3--4. As mentioned above, Scheib teaches
cutting "with relatively little thermal spread." Scheib ,r 47. Thus, Scheib
does not teach welding buttresses with an ultrasonic cutter, or that an
ultrasonic cutter is capable of welding buttresses.
The Examiner explains that the combination of Hodgkinson and
Scheib are "arranged exactly the same as Appellant's claimed invention"
such that "the resulting function language [i.e., "activatable to weld"] would
naturally flow from that prior art apparatus." Ans. 2. The Examiner
explains that "Scheib is capable of being activated to weld" as recited. Ans.
3; see also id. at 2, 4. This is because the Examiner alleges "that the welding
of buttresses [] together are well known in the art," as evidenced by US
T between the ultrasonic blades 54, the ultrasonic blades 54 weld the
buttresses 50 together adjacent the central cut line CL." See also Spec. ,r 28.
Thus, to weld the buttresses together adjacent the cut line, the cut line must
pre-exist. This operation is not the same as that which is claimed, i.e., weld
the buttresses together first, and then "subsequently cut the welded"
buttresses (i.e., subsequently make the cut line CL). However, an
enablement issue has not been raised by the Examiner and no such issue is
before us for review. No implication one way or the other is to be gleaned
from our decision to not raise the issue ourselves.
5
Appeal 2018-005108
Application 14/618,255
7,160,299 B2 (hereinafter "'299"). 4 Ans. 3. This US patent is directed to
the use of radiofrequency (RF) energy for fusing purposes. See '299
Abstract. As noted above, Scheib discusses the use of RF, ultrasonic or
mechanical energy for cutting purposes. See Scheib ,r 4 7. However, claims
1 and 10 are directed to the use of ultrasonic energy (not RF energy) for
welding; and as such, the '299 patent does not teach that ultrasonic welding
is "well known in the art" as the Examiner states. Ans. 3.
Thus, the Examiner's reliance on the combination of Hodgkinson and
Scheib as being "capable of' the recited welding function is not properly
grounded. The Examiner provides no evidence that that ultrasonic cutter of
Scheib is capable of welding buttresses. It may be the case that Scheib has
this capability, as Appellants do not identify any structural differences,
between Scheib and the invention. However, the Examiner has the burden
to first establish the inherent capability in the prior art. Accordingly, and
based on the record presented, we do not sustain the Examiner's rejection of
independent claims 1 and 10, or dependent claims 2---6, as obvious over
Hodgkinson and Scheib.
4 The Examiner also states that the combination of Hodgkinson and Scheib
"will ultimately result in first sealing the buttresses [50] to each other, and
then cutting the buttresses and tissue thereafter." Ans. 3 (i.e., "once the
actual ultrasonic blade progresses close to the buttresses, the result will be
sealed buttresses prior to any cutting taking place"). However, the Examiner
does not explain how this is accomplished in Scheib which instead teaches
ultrasonic cutting "with relatively little thermal spread." Scheib ,r 4 7.
6
Appeal 2018-005108
Application 14/618,255
DECISION
The Examiner's rejection of claims 1-6 and 10 is reversed.
REVERSED
7