Ex Parte Jankowski et al

Patent Trial and Appeal Board

Oct 28, 2016

13571290 (P.T.A.B. Oct. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/571,290 08/09/2012
50855 7590 11/01/2016
Covidien LP
555 Long Wharf Drive
Mail Stop SN-I, Legal Department
New Haven, CT 06511
FIRST NAMED INVENTOR
Bruce Jankowski
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.
2884DIV (203-8412DIV) 8792
EXAMINER
WEEKS, GLORIA R
ART UNIT PAPER NUMBER
3721
NOTIFICATION DATE DELIVERY MODE
11/01/2016 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
SurgicalUS@covidien.com
medtronic_mitg-si_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRUCE JANKOWSKI and
JOSEPH RICHARD WITTMAN
Appeal2014-008260 1
Application 13/571,290
Technology Center 3700
Before CHARLES N. GREENHUT, MICHAEL C. ASTORINO, and
MICHAEL L. HOELTER, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1-20. App. Br. 2. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Parent application number 10/540,197 was the subject of Appeal No. 2012-
002364 in which the Examiner's rejections were affirmed. Thereafter, the
application was amended and subsequently issued as U.S. 8,328,060 on
December 11, 2012. App. Br. 1.
Appeal2014-008260
Application 13/571,290
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "relates to surgical instruments, e.g.,
surgical fastener or stapler apparatus and, more particularly to circular
surgical staplers for performing surgical procedures." Spec. i-f 2. Claims 1
and 14 are independent claims. Claim 1 is illustrative of the claims on
appeal and is reproduced below.
1. A surgical fastener applying apparatus comprising:
a body portion;
a shell assembly supported on a distal end of the body
portion;
an anvil assembly movable in relation to the shell
assembly between spaced and approximated positions, the anvil
assembly comprising:
an anvil member; and
an anvil shaft extending proximally from the anvil
member;
a vacuum channel extending into the anvil shaft; and
at least one opening in the anvil shaft at a location spaced
proximally from the anvil member.
REFERENCES RELIED ON BY THE EXAMINER
Green
Sauer ("Sauer II")
Sauer ("Sauer I")
US 4,893,622 Jan 16, 1990
US 5,503,635 Apr. 2, 1996
US 5,839,639 Nov. 24, 1998
THE REJECTIONS ON APPEAL
Claims 1-5 and 12-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sauer I and Sauer II.
Claims 6-11 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Sauer I, Sauer II, and Green.
2
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Application 13/571,290
ANALYSIS
The rejection of claims 1-5 and 12-20
as unpatentable over Sauer I and Sauer II
Appellants argue claims 1-5 and 12-20 together. App. Br. 3-11. We
select claim 1 for review with claims 2-5 and 12-20 standing or falling with
claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
Claim 1 includes the limitation of "at least one opening in the anvil
shaft at a location spaced proximally from the anvil member." The
Examiner primarily relies on Sauer I for disclosing the limitations of claim 1
but relies on Sauer II for teaching openings that "are proximally spaced from
an anvil along a longitudinal axis of the shaft." Final Act. 2-3. The
Examiner concludes that it would have been obvious to modify Sauer I with
"openings axially along the anvil shaft in a proximal position relative to the
anvil" as discussed in Sauer II. Final Act. 3. This is because Sauer II "states
such a modification would allow tissue to be secured to the anvil shaft for
the purpose of reducing operation time and ensuring effective fastening of
the tissue with the surgical fastener and anvil assembly."2 Final Act. 3
(referencing Sauer II 16:56- 17:5).
Appellants discuss the relative constructions of Sauer I and Sauer II,
and the Examiner's findings regarding these references, and also replicates
several of the images from these references. App. Br. 3-7. After such
discussion, Appellants contend that Sauer I "relates to a surgical stapler
2 The Examiner further finds that Sauer II "clearly teaches the knowledge in
the art of surgical instruments at the time of the invention to apply the
technique of orienting vacuum openings on the shaft of an end member to
yield the predictable result of securing tissue/organ(s) in place for
subsequent compression by the surgical instrument." Ans. 4.
3
Appeal2014-008260
Application 13/571,290
apparatus" whereas Sauer 11 "relates to apparatus and method for performing
circular end-to-end compression anastomoses."3 App. Br. 7; see also id. at
10-11. In short, Appellants are arguing that the two devices are used for
different medical procedures and that, as a consequence, "Sauer II actually
teaches away from combination with Sauer I."4,5 App. Br. 7.
We are instructed, "A reference does not teach away, however, if it
merely expresses a general preference for an alternative invention but does
not 'criticize, discredit, or otherwise discourage' investigation into the
invention claimed." DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004)). We are also instructed that simply because there are
differences between two references, this is insufficient to establish that such
references "teach away" from any combination thereof. See In re Beattie,
974 F.2d 1309, 1312-13 (Fed. Cir. 1992). In the matter before us,
Appellants do not identify where Sauer II criticizes, discredits, or otherwise
discourages investigation into the invention claimed. Thus, even should
Sauer I and Sauer II address different vacuum techniques to close a body
3 Appellants do not allege that Sauer I and Sauer II are non-analogous art,
instead, Appellants contend, "these devices function in substantially
different ways." Reply Br. 2.
4 Appellants contend (App. Br. 7) that Sauer II distinguishes over stapling-
type devices by stating "One method of performing anastomoses involves
the use of compression members," and that "Another method of performing
anastomoses" "involves the use of a circular stapling device." Sauer II
1: 18-19, 1:34--35.
5 Appellants also contend that the device of Sauer II does not "include any
structure capable of receiving, storing, discharging, or applying surgical
staples." App. Br. 7. However, no such language is recited in claim 1 and
further, the Examiner relies on Sauer I for disclosing "a surgical stapling
apparatus." Final Act. 2.
4
Appeal2014-008260
Application 13/571,290
lumen, Appellants are not persuasive that such differences rise to the level of
a teaching away such that Sauer I and Sauer II cannot be combined in the
manner stated by the Examiner.
Appellants also assert that the Examiner's combination "would render
Sauer I unsatisfactory for its intended purpose." App. Br. 3. This is because
by relocating the vacuum holes as the Examiner suggests, "a substantial
increase in the volume of tissue [would exist] that would have to be drawn
into the snap cap pocket 104." App. Br. 9; see also id. at 8 and Reply Br. 2.
In other words, the snap cap of Sauer I "would be unable to accommodate
the increased volume of tissue" and that this "would interfere with, if not
entirely prevent, proper operation of the Sauer I instrument." App. Br. 9.
Appellants provide no evidence to support this allegation or that any
additional volume needed to accommodate an increase in tissue cannot be
accomplished. Furthermore, Sauer I does not provide any indication as to
the volume or quantity of tissue that can be engaged and captured between
snap cap 106 and snap cap pocket 104, or that the presently disclosed
volume is unable to handle additional tissue or that such volume is fixed and
cannot be altered if needed. See Sauer I 7:40-41, 10:3-7. Accordingly,
Appellants' argument regarding Sauer I being rendered unsatisfactory due to
an increase in tissue volume is not supported by objective evidence nor is it
otherwise self-evident from the record. We thus are not persuaded by
Appellants' contention.
Appellants further argue that the instrument in Sauer I is "simply a
positioning instrument utilized to orient the anvil assembly 20 within a
tissue section to facilitate connection with a separate stapling instrument."
App. Br. 10. However, claim 1 also appears to be directed to a positioning
5
Appeal2014-008260
Application 13/571,290
instrument since claim 1 is devoid of any recitation to a connector or stapler,
or its application, so as to render a connection. 6 Thus, claim 1 is itself silent
as to any stapling operation, and instead is directed to an anvil that may be
moved, in addition to vacuum openings positioned with respect to the anvil.
Accordingly, Appellants' contention that Sauer I is "simply a positioning
instrument," is not persuasive the Examiner erred in combining Sauer I and
Sauer II.
In view of the foregoing, we are not persuaded the Examiner erred in
rejecting claims 1-5 and 12-20 as being obvious over Sauer I and Sauer II.
We sustain the Examiner's rejection of these claims.
The rejection of claims 6--11
as unpatentable over Sauer L Sauer II, and Green
Appellants do not present separate arguments challenging the
Examiner's additional reliance on Green. App. Br. 11. Instead, Appellants
contend that "the combination of Sauer I and Sauer II is improper" and
consequently, "the combination of Sauer I, Sauer II, and Green is also
improper." App. Br. 11.
Appellants' contention is not persuasive. We sustain the Examiner's
rejection of claims 6-11 as being unpatentable over the combination of
Sauer I, Sauer II, and Green.
6 Perhaps only claims 6-11 recite language directed to an actual stapling
device and these claims are addressed below. However, the Examiner relies
on Green for such teachings (Final Act. 4) and as indicated, Appellants do
not dispute the teachings of Green.
6
Appeal2014-008260
Application 13/571,290
DECISION
The Examiner's rejections of claims 1-20 are 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)(l )(iv).
AFFIRMED
7