Ex Parte Jankowski et al

Board of Patent Appeals and Interferences

Jan 17, 2012

10540197 (B.P.A.I. Jan. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte BRUCE JANKOWSKI and JOSEPH WITTMANN
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Appeal 2010-002364
Application 10/540,197
Technology Center 3700
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Before CHARLES N. GREENHUT, MICHAEL C. ASTORINO and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 6, 7, 19, 20 and 26. Claims 1-5 and 13-18 are cancelled.
Claims 8-12, 21-25, 27 and 28 are objected to. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.

The Claimed Subject Matter
The claimed subject matter pertains to a surgical stapler having a
vacuum device that includes a housing and a vacuum chamber. A vacuum
conduit and a vacuum tube are both in communication with the vacuum
chamber. Sole independent claim 6 is illustrative of the claimed subject
matter and is reproduced below:

6. A surgical stapling apparatus and vacuum system, the system
comprising:
a surgical stapling apparatus including a body portion, a shell
assembly and an anvil, the shell assembly being positioned on a distal
end of the body portion and including an annular array of staples and
at least one aperture, the anvil being movably supported in relation to
the shell assembly between spaced and approximated positions; and
a vacuum device including a housing and a vacuum conduit, the
housing being positioned about at least a portion of the shell assembly
of the surgical stapling apparatus to define a vacuum chamber, the at
least one aperture being positioned within the vacuum chamber, the
vacuum conduit communicating with the vacuum chamber, and at
least one vacuum tube having a first end positioned within the vacuum
chamber and a second end positioned within an inner chamber of the
shell assembly.

Reference Relied on by the Examiner
Sauer US 5,839,639 Nov. 24, 1998

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The Rejections on Appeal
1. Claims 6, 19, 20 and 26 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Sauer (Ans. 3).
2. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Sauer (Ans. 3).

ISSUE
Does Sauer disclose a vacuum assisted surgical stapler having a
vacuum device including a housing and a vacuum conduit, the housing
surrounding at least a portion of a shell assembly and defining a vacuum
chamber that communicates with the vacuum conduit and a vacuum tube?

ANALYSIS
Appellants argue claims 6, 19, 20 and 26 together (App. Br. 7). We
select sole independent claim 6 for review. 37 C.F.R. § 41.37(c)(1)(vii).
Appellants also separately argue dependent claim 7 and we address that
claim below (App. Br. 12).
The rejection of claim 6 as being anticipated by Sauer
Sole independent claim 6 requires a body portion, a shell assembly
and an anvil. Also claimed is a vacuum device that includes a housing and a
vacuum conduit, the housing is “positioned about at least a portion of the
shell assembly” and defines a “vacuum chamber.” This “vacuum chamber”
is in communication with the “vacuum conduit” and a “vacuum tube”.
The Examiner relies on Sauer as anticipating claim 6 and specifically
states that Sauer’s “hollow vacuum housing sleeve 12” defines “a vacuum
chamber” (Ans. 3). Appellants contend that Sauer’s single disclosure of a
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housing 12 “cannot properly be relied upon for the disclosure of two
separate and distinct elements” i.e., “the ‘housing’ of the ‘vacuum device’
and the ‘vacuum chamber’ recited in independent claim 6” (App. Br. 7).
Claim 6 states that the housing is positioned “to define a vacuum
chamber.” While the “housing” and the “vacuum chamber” may be distinct
claim elements (see Ans. 5), the one is used to define the other and hence the
claimed vacuum chamber is not wholly separate from and independent of the
claimed housing. Accordingly, we do not find it fatal for the Examiner to
recognize that Sauer’s housing may also be capable of defining a vacuum
chamber in a like manner. In addressing this point more specifically, the
Examiner annotates Sauer’s Figure 2 to identify where Sauer discloses a
vacuum chamber within housing 12 (Ans. 5). The Examiner also finds that
Sauer’s “housing 12 surrounds the shell assembly 18 such that an enclosed
spaced [sic] that joins an end of the vacuum conduit 58 to the vacuum tube
60 is defined” (Ans. 5). Appellants identify no claim language that would
preclude Sauer’s housing 12 from also defining a vacuum chamber as found
by the Examiner. See Ans. 5.
Appellants further contend that Sauer’s “elements 12 and 18 cannot
collectively define the ‘chamber’ recited in the claims” as “there is no space
between the elements identified by the referenced characters 12 and 18”
(Reply Br. 4, see also Reply Br. 5). The Examiner states that Sauer meets
this claim limitation because claim 6 structurally defines a vacuum chamber
as a housing that extends about a portion of a shell assembly and Sauer’s
Figure 2 discloses that Sauer’s “housing 12 surrounds a portion of the shell
assembly 18” (Ans. 4). The Examiner further states that the vacuum
chamber defined by Sauer’s housing 12 and shell assembly 18 “is in
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communication with a vacuum conduit 58 and at least one vacuum tube 60”
such that a vacuum is transferred from the conduit to the tube through the
vacuum chamber (Ans. 4, see also Sauer 9:62-64). In light of Sauer’s
structure found by the Examiner, we are not persuaded that Sauer’s members
12 and 18 lack the space needed to define a vacuum chamber as Appellants
assert.
Appellants also contend that the Examiner improperly characterizes
Sauer’s tube 60 as disclosing both the claimed aperture and the claimed
vacuum tube (App. Br. 8). Claim 6 requires a shell assembly having “at
least one aperture” with this “at least one aperture being positioned within
the vacuum chamber.” Another of the Examiner’s annotations of Sauer’s
Figure 2 identifies where one end of vacuum tube 60 is in communication
with the vacuum chamber (Ans. 5). The Examiner states that the vacuum
chamber has an “aperture that received the vacuum tube” 60 (Ans. 5).
Sauer’s Figure 2 illustrates this tube as being located within shell assembly
18. Appellants identify no claim language that would preclude the claimed
“aperture” from being a component of the “vacuum tube” as found by the
Examiner (Ans. 3, 5). Accordingly, we are not persuaded by Appellants’
contention that Sauer’s tube 60 fails to disclose both a tube and an aperture.
Addressing Sauer, Appellants further contend that “neither the
vacuum passage 58 nor the air delivery tube 60, includes any perforations,
apertures, or other structure that would increase the size of the space being
depressurized” (App. Br. 9). However, increasing the size of the space
being depressurized is not a limitation in claim 1. According, Appellants’
contention is not persuasive.
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Appellants further contend that Sauer’s “vacuum chamber” includes
not only the chamber identified by the Examiner, but also Sauer’s
corresponding vacuum conduit 58 and corresponding vacuum tube 60 (App.
Br. 9, see also Reply Br. 5-6). This contention is contrary to Appellants’
claim language and Appellants’ Specification which does not define
“vacuum chamber” as requiring the inclusion of both the vacuum conduit
and the vacuum tube as Appellants assert (Spec. 6:15-17, 14:16-18, 15:12-
14). Accordingly, this contention is not persuasive.
Appellants further contend that Sauer’s “structure identified by the
Examiner as the recited ‘array of staples’ actually constitutes a cartridge
housing” (App. Br. 10). The Examiner references “an array of staples 23”
and Sauer’s item 23 is described as a “cartridge housing” (Ans. 3, Sauer
4:29). Sauer teaches an anvil assembly that “includes a plurality of radially
deflectable anvil segments” which are “configured to be mounted within a
cartridge housing 23” (Sauer 4:27-29). Sauer teaches that these anvil
segments “form a detachable loading unit” and are ejected from the
applicator (Sauer 4:29-30, 7:59-62). Sauer thus teaches a plurality (or array)
of staples located within member 23 and accordingly, Appellants’ contention
is not persuasive nor do we find fault with the Examiner’s reference to
Sauer’s cartridge housing 23.
Appellants further contend that Sauer’s housing 12 is not “positioned
about at least a portion of the shell assembly” as recited in claim 6 (App. Br.
10). This is contrary to the Examiner’s finding that Sauer’s housing 12 is
“positioned about a proximal end of the shell assembly” 18 (Ans. 3). The
Examiner acknowledges that Sauer’s labels may differ from Appellants’
labels, “however, the structure of Appellant’s invention as claimed is found
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to be anticipated by Sauer et al., nonetheless” (Ans. 6). A review of Sauer’s
Figure 2 illustrates that Sauer’s member 12 is indeed positioned about a
proximal end of Sauer’s member 18 as found by the Examiner.
Accordingly, Appellants’ contention is not persuasive.
Appellants also dispute the Examiner’s finding that Sauer discloses
“at least one vacuum tube 60, 70 having a first end 60 positioned within the
vacuum chamber and a second end 70 positioned within an inner chamber of
the shell assembly 18” (App. Br. 10, see also Ans. 3). The Examiner’s
annotation of Sauer’s Figure 2 (see Ans. 5) illustrates one end of vacuum
tube 60 as being in the vacuum chamber. Sauer further teaches that the
opposite end of vacuum tube 60 communicates with the central bore of 70
(Sauer 7:54-58). Both 60 and 70 are found within shell assembly 18
(Sauer’s Figs. 2 and 8). Accordingly, Appellants’ contention is not
persuasive.
Based on the record presented, we sustain the Examiner’s rejection of
claims 6, 19, 20 and 26 as being anticipated by Sauer.
The rejection of claim 7 as being obvious over Sauer
Claim 7 depends from claim 6 and further requires a plurality of
vacuum tubes. The Examiner states that it would have been obvious “to
modify the system of Sauer et al. to include a second vacuum tube, since it
has been held that mere duplication of essential working parts of a device
involves only routine skill in the art” (Ans. 3). The Examiner further states
that “Appellant’s specification does not disclose how an additional vacuum
tube solves a particular problem” (Ans. 3-4).
Appellants contend that “incorporating these additional tubes would
fail to cure the aforedescribed deficiencies in Sauer” (App. Br. 12, see also
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Reply Br. 6-7). As we are not aware of any deficiencies in Sauer, this
contention is not persuasive. Appellants do not identify where the addition
of multiple vacuum tubes solves a particular problem and accordingly, based
on the record presented, we sustain the Examiner’s rejection of claim 7.

CONCLUSION
Sauer discloses a vacuum assisted surgical stapler having a vacuum
device including a housing and a vacuum conduit, the housing surrounding
at least a portion of a shell assembly and defining a vacuum chamber that
communicates with the vacuum conduit and a vacuum tube.

DECISION
1. The rejection of claims 6, 19, 20 and 26 under 35 U.S.C. § 102(b) as
being anticipated by Sauer is affirmed.
2. The rejection of claim 7 under 35 U.S.C. § 103(a) as being
unpatentable Sauer is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

MP