Ex Parte Kostrzewski

Patent Trial and Appeal Board

May 25, 2016

13106111 (P.T.A.B. May. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/106,111 05/12/2011
50855 7590 05/27/2016
Covidien LP
555 Long Wharf Drive
Mail Stop SN-I, Legal Department
New Haven, CT 06511
FIRST NAMED INVENTOR
Stanislaw Kostrzewski
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-02968 (203-7980) 4616
EXAMINER
JALLOW, EYAMINDAE CROSSAN
ART UNIT PAPER NUMBER
3721
NOTIFICATION DATE DELIVERY MODE
05/27/2016 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 STANISLAW KOSTRZEWSKI
Appeal2014-004655
Application 13/106,111 1
Technology Center 3700
Before JOHN C. KERINS, BEYERL Y M. BUNTING, and
SEAN P. O'HANLON, Administrative Patent Judges.
O'HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Stanislaw Kostrzewski (Appellant) appeals under 35 U.S.C. § 134
from the Examiner's decision rejecting claims 1-7 and 10-15. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We REVERSE.
1 According to the Appellant, the real party in interest is Covidien LP. App.
Br. 2.
Appeal2014-004655
Application 13/106,111
SUMMARY OF INVENTION
The Appellant's invention "relates to surgical staplers," and, more
particularly, "to a surgical stapler including a replaceable staple cartridge
assembly." Spec. i-f 1. Claims 1-21 are pending, with claims 8, 9, and 16-
21 being withdrawn. Thus, claims 1-7 and 10-15 are under appeal. Claims
1 and 10 are independent. Claim 1, reproduced below from page 15 (Claims
Appendix) of the Appeal Brief, is illustrative of the claimed subject matter:
1. A loading unit comprising:
an elongated body; and
a stapling assembly having a first jaw and a second jaw,
the first jaw including an anvil assembly, and the second jaw
including a cartridge assembly having a staple cartridge and a
carrier, the cartridge assembly being releasably mounted to the
elongate body by a detent connection.
REFERENCES
The Examiner relies on the following prior art references in rejecting
the claims on appeal:
Morrison US 5,634,582 June 3, 1997
Shelton US 2011/0290853 Al Dec. 1, 2011
REJECTIONS
Claims 1---6 are rejected under 35 U.S.C. § 102(e) as being anticipated
by Shelton.
Claims 7 and 10-15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shelton in view of Morrison.
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Application 13/106,111
ANALYSIS
Anticipation Rejection
Appellant argues claims 1---6 together. App. Br. 4--8. We select
independent claim 1 as representative, treating claim 26 as standing or
falling with representative claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
Regarding independent claim 1, the Examiner finds that Shelton
discloses a loading unit (surgical tool 2300)2 having an elongate body and a
stapling assembly (end effector 2312) with a first jaw (anvil 2324) and a
secondjaw (elongated channel 2322). Final Act. 2 (citing Shelton, Figs. 41,
42). The Examiner further finds that Shelton discloses a "cartridge assembly
(see diagram 1 below) being releasably mounted to the elongate body (Figs.
41--42) by a detent connection (Fig. 41)." Id. The Examiner provides an
annotated copy of a portion of Shelton Fig. 41 as Diagram 1. Id. at 3. This
annotated diagram is reproduced below:
2 Parentheticals refer to the terminology of Shelton.
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Application 13/106,111
Diagram 1 shows a partial cross-sectional side view of a portion of the
surgical end effector and elongated shaft assembly of a surgical tool, with
the anvil in the open position, and includes Examiner annotations to identify
the structure alleged to correspond to the recited elements of the claims. The
Examiner further finds that:
Anything that has been assembled is capable of being
disassembled and is therefore deemed to be releasably mounted.
Additionally, a detent is defined as "a catch in a machine that
prevents motion until released." In the instant case, the detent
would be the crevasse, seen near element 2332, which retains
the cartridge assembly and prevents relative movement.
Id. at 6.
The Examiner further states that:
the Shelton reference does not teach a [sic] permanently affixed
parts, but parts that have been connected through a meshing
engagement (para. [216]). . . . When the jaws come together
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Application 13/106,111
and are locked into place, removal of the cartridge assembly is
permitted, due to element 2327 being inserted into elelment
[sic] 2345. The aforementioned parts are what allow for
temporary connection to the eleongate [sic] body.
Adv. Act. 2 (brackets around "216" in original) (citing Shelton, i-f 216); see
also Ans. 3.
The Appellant argues that "Shelton fails to disclose a cartridge
assembly that is releasably mounted" because "Shelton permanently affixes
his components." App. Br. 4. According to Appellant, the only components
disclosed as being connected through a meshing engagement in the cited
paragraph of Shelton
are the "distal teeth 2415 of the closure clutch portion 241 O"
which engage "the distal teeth cavities 2426 in the face place
portion 2424," and "a knife drive gear 2432" which engages "a
drive knife gear 2434." The meshing engagement of these
various components within the cartridge assembly does not
mean the cartridge assembly is capable of being disassembled.
Id. at 7. Furthermore, the Appellant argues, "the Examiner's
characterization of 'the crevasse, seen near element 2332' as being the
detent 'which retains the cartridge assembly and prevents relative
movement,' has not been shown to 'prevent motion until released."' Id. at 8.
We are persuaded by the Appellant's arguments that the Examiner has
failed to set forth a prima facie rejection. Regarding the detent connection
recited in claim 1, the Examiner clarifies that the so-called "crevasse" is the
curved portion of Shelton cutting instrument 2332. See Ans. 4--5 (citing
Shelton, Figs. 41, 42). Thus, the Examiner alleges, the curved portion of
Shelton cutting instrument 2332 prevents relative movement between anvil
2324 and staple cartridge 2334 when the anvil is in a closed position as
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Application 13/106,111
shown in Shelton Fig. 42. This reasoning, however, is in direct
contradiction to the disclosure of Shelton. Shelton provides that:
As the closure tube 2370 [is] moved in the distal direction, it
contacts a portion of the anvil 2323 [sic] and causes the anvil
2324 to pivot to the closed position to clamp the target tissue
between the anvil 2324 and the surgical staple cartridge 2334.
. . . The surgeon may then initiate the firing procedure. . ..
The robotic controller 1001 then applies the primary rotary
control motion 2483 to the shifter drive gear 2483 which results
in the axial movement of the closure clutch 2410 into meshing
engagement with the face plate portion 2424 of the knife drive
shaft assembly 2420. See FIG. 43. Once the controller 1001 of
the robotic system 1000 has confirmed that the closure clutch
2410 is [in] meshing engagement with the face plate portion
2424 . .. , the robotic controller 1001 may then apply the second
rotary output motion to the rotary drive gear 2492 which, as
was described above, ultimately results in the axial movement
of the cutting instrument 2332 and sled portion 2333 in the
distal direction "DD" through the surgical staple cartridge
2334 . ... Once the robotic controller 1001 has determined that
the cutting instrument 2324 [sic] has reached the end position
within the surgical staple cartridge 2334 . .. , the robotic
controller 1001 discontinues the application of the second
rotary output motion to the rotary drive gear 2491. Thereafter,
the robotic controller 1001 applies the secondary rotary output
motion to the rotary drive gear 2491 which ultimately results in
the axial travel of the cutting instrument 2332 and sled portion
2333 in the proximal direction "PD" to the starting position.
Shelton i-f 221 (emphasis added). Thus, Shelton explicitly discloses that the
Examiner-defined "crevasse"-the curved portion of Shelton cutting
instrument 2332-is movable through staple cartridge 2334 even with anvil
2324 in the closed position, and thus does not retain the cartridge assembly
in place or prevent relative movement between the anvil and the cartridge.
The Examiner's assertions to the contrary are in error. Moreover, the
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Application 13/106,111
Examiner has not explained sufficiently how Shelton's "crevasse" would
allow the cartridge to be releasably mounted to the elongate body.
Additionally, we find that the Examiner has not established that either
a meshing engagement of cooperating gears or the extension of tab 2327
though opening 2345 renders staple cartridge 2334 or elongated channel
2322 to be releasably mounted to the elongate body.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of independent claim 1 as being anticipated by Shelton.
Because claims 2---6 depend from claim 1, and the Examiner's application of
Shelton to those claims does not remedy the foregoing errors for claim 1, we
likewise reverse the Examiner's rejection of claims 2---6.
Obviousness Rejection
Claims 10--15
Appellant argues claims 10-15 together. App. Br. 9-11. We select
independent claim 10 as representative, treating claims 11-15 as standing or
falling with representative claim 10.
Claim 10 is reproduced below from the Claims Appendix of the
Appeal Brief:
10. A replaceable cartridge assembly comprising:
a staple cartridge; and
a carrier configured to receive the staple cartridge, the
carrier including a proximal end configured for selective
engagement with a stapling assembly, the carrier having a
resilient spring arranged to form a connection with a stapling
assembly.
Regarding independent claim 10, the Examiner finds that Shelton
discloses the invention substantially as claimed, including that "[t]he
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elongated channel (2322) has a proximal end located towards the handle.
Fig. 40 shows the linking mechanism, around 2325, located in this vicinity
that allows the linkage to the stapling assembly." Final Act. 6. The
Examiner further finds that Shelton "fails to teach a spring including a
flange; and the carrier having a resilient spring arranged to form a
connection with the stapling assembly." Id. at 4--5. To cure these
deficiencies, the Examiner turns to the teachings in Morrison, finding that
"Morrison teaches a spring (29) including a flange (31) and aiding to form a
connection for the purpose of connecting and retaining the magazine post
(25) within the fastener coil support platform (34)" and concluding that it
would have been obvious to a skilled artisan "to modify the invention of
Shelton with a spring a flange to retain the cartridge assembly in a certain
position." Id. at 5.
The Appellant argues that "Shelton has not been shown to disclose
that surgical stapler cartridge 2334 is replaceable, much less that elongated
channel 2322 of the cartridge assembly 'includes a proximal end configured
for selective engagement with' end effector 2312 'by a resilient spring
arranged to form a connection with' end effector 2312." App. Br. 10. The
Appellant further argues that, "[l]ike Shelton, Morrison has not been shown
to disclose a device that includes a surgical stapler cartridge that is
replaceable, much less a carrier having a proximal end that is configured for
selective engagement with a stapling assembly." Id. The Appellant further
argues that "[ e ]ven if Morrison could be properly combined with Shelton
(which Appellant does not concede), it has not been shown in the Final
Office Action why a person of ordinary skill in the art would modify the
surgical tool of Shelton with the spring of the Morrison nail gun." Id. at 11.
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The Examiner responds by finding that the Shelton "crevasses allows
[sic] for the locking of the jaws. When the jaws are locked, the cartridge
assembly cannot be removed from the elongate body. When the jaws are
opened, the cartridge assembly can be detached." Ans. 4--5 (citing Shelton,
portions of Pigs. 41, 42.) The Examiner further finds that "springs are added
to provide a restoring property to many things." Ans. 4.
We are persuaded by the Appellant's arguments that the Examiner has
failed to set forth a prima facie rejection. As discussed supra with respect to
claim 1, the Examiner-defined "crevasses" of Shelton cutting instrument
2332 do not lock or prevent relative movement between the jaws of the
Shelton surgical tool, and the Examiner's assertions to the contrary are in
error. Furthermore, we find that the Examiner has not established that the
Shelton "linking mechanism, around 2325" is configured for selective
engagement, nor how and why the Shelton surgical tool would have been
modified in view of the teaching in Morrison of spring latch element 29.
Accordingly, for the foregoing reasons, we do not sustain the rejection
of claim 10 as unpatentable over Shelton in view of Morrison. Because
claims 11-15 depend from claim 10, and the Examiner's application of
Shelton and Morrison to those claims does not remedy the foregoing errors
for claim 1 0, we likewise reverse the Examiner's rejection of claims 11-15.
Claim 7
Claim 7 depends indirectly from claim 1. The Examiner's position
relative to the alleged obviousness of claim 7 over Shelton in view of
Morrison does not propose to modify Shelton in any manner that would
remedy the deficiencies noted above with respect to the anticipation
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rejection of claim 1. Accordingly, the rejection of claim 7 under 35 U.S.C.
§ 103(a) is not sustained.
DECISION
The Examiner's decision to reject claims 1---6 under 35 U.S.C.
§ 102( e) as being anticipated by Shelton is reversed.
The Examiner's decision to reject claims 7 and 10-15 under 35 U.S.C.
§ 103(a) as being unpatentable over Shelton in view of Morrison is reversed.
REVERSED
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