Ex Parte Miller et al

Patent Trial and Appeal Board

Jun 25, 2018

14033688 (P.T.A.B. Jun. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/033,688 09/23/2013
100709 7590
Ethicon Endo-Surgery, Inc.
c/o Frost Brown Todd LLC
3300 Great American Tower
301 East Fourth Street
Cincinnati, OH 45202
06/27/2018
FIRST NAMED INVENTOR
Christopher C. Miller
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.
END7287USNP.0606444 1076
EXAMINER
SEIF, DARIUSH
ART UNIT PAPER NUMBER
3721
NOTIFICATION DATE DELIVERY MODE
06/27/2018 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):
patents@fbtlaw.com
lgroves@fbtlaw.com
jdewar@fbtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER C. MILLER,
JOHN P. MEASAMER, BRIAN F. DINARDO,
RICHARD F. SCHWEMBERGER, and
JOHNNY H. ALEXANDER III
Appeal2017-009114
Application 14/033,688
Technology Center 3700
Before: STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Christopher C. Miller et al. ("Appellants") appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 1, 2, 10, 11, 19, and
20. 1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Ethicon Endo-Surgery, LLC, a wholly owned subsidiary of Ethicon LLC,
which is a wholly owned subsidiary of Johnson & Johnson, is the Applicant
and identified as the real party in interest. Appeal Br. 3.
Appeal 2017-009114
Application 14/033,688
THE CLAIMED SUBJECT MATTER
Appellants' invention is directed to a surgical stapler with rotary cam
drive and return. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A surgical instrument comprising:
(a) a body;
(b) a shaft extending distally from the body, wherein the
shaft comprises a proximal end and a distal end;
( c) a stapling assembly, wherein the stapling assembly is
disposed at the distal end of the shaft, wherein the stapling
assembly is configured to selectively move from an open
position to a closed position, and wherein the stapling assembly
is operable to drive a plurality of staples into tissue;
( d) a motor;
( e) a cam assembly comprising:
(i) a first member coupled with the motor, wherein
the motor is configured to rotate the first member of the
cam assembly, and
(ii) a second member pivotally fixed to the body,
wherein the second member is configured to pivot relative
to the body in response to rotation of the first member by
the motor; and
(t) a firing assembly coupled with the cam assembly,
wherein the firing assembly is configured to longitudinally
translate to thereby cause the stapling assembly to drive the
plurality of staples, and wherein the cam assembly is rotatable to
thereby longitudinally actuate the firing assembly.
REJECTIONS2
1) Claims 1, 2, 19, and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Whitman (US 8,025,199 B2, issued Sept. 27, 2011) and
Huang (US 5,337,623, issued Aug. 16, 1994).
2 Appellants filed a Terminal Disclaimer on Oct. 25, 2016, that pertains to
the provisional double patenting rejection of claims 1, 3, and 10-12, and this
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Application 14/033,688
2) Claims 10 and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Whitman, Huang, and Habermehl (US 6,058,815, issued
May 9, 2000).
DISCUSSION
Rejection 1
Appellants argue claims 1, 2, 19, and 20 as a group. Appeal Br. 9-13.
We select claim 1 as representative and claims 2, 19, and 20 stand or fall
with claim 1. 37 C.F.R. §41.37(c)(l)(iv).
Appellants' sole argument for the patentability of claim 1 is that
Huang is non-analogous art because (1) it is in a different field of endeavor
and because (2) it is not reasonably pertinent to the particular problem with
which the inventor is involved. Appeal Br. 10-11. Regarding the second
prong of the analogous art test, Appellants argue that the problem to be
solved by the claimed invention is "to reduce the risk of operator error in
manually driving a staple driver," whereas Huang focuses on a different
problem, namely, "improving an automatic tool-change mechanism to
enhance precision, reliability, durability, and size." Id. at 10-11 (citing
Spec. i-f 98 and Huang 1 :48-57). According to Appellants, the primary
problem is "reducing operator error relating to manually driving a staple
driver" which is solved by adding a motor and Huang would not have
rejection is not repeated in the Examiner's Answer. See Final Act. 3--4; Ans.
2. The Examiner rejected claims 3 and 12 under 35 U.S.C. § 112, second
paragraph as indefinite. Final Act. 5. An Amendment After Final Rejection
was filed on Oct. 25, 2016, cancelling claims 3 and 12, and was entered by
the Examiner (see Advisory Action mailed Nov. 17, 2016). Entry of the
Amendment obviates the indefiniteness rejection of claims 3 and 12.
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Application 14/033,688
commended itself to that problem, because Huang is improving a machine
that "already relies on automatically changing tools, rather than replacing
any manually driven aspect." Id. at 11-13.
The Examiner responds that Appellants' problem is implementing "a
motor-driven cam mechanism on a surgical stapler," and that Huang is
relevant to this problem because Huang relates to improving a motor-driven
cam mechanism. Ans. 4. Further, the "Examiner contends that to modify or
improve a motor-driven cam mechanism on a surgical stapler, a person
having ordinary skill in the art would not be limited to the field of surgical
staplers." Id. at 3. According to the Examiner, because Huang's motor-
driven cam mechanism is used "to enhance precision, reliability, durability,
and size," a person having ordinary skill in the art would have looked to
Huang in order to improve the motor-driven cam mechanism of Whitman for
the same reasons. Id. at 4.
Appellants reply that the Examiner is using improper hindsight to
select the prior art by defining the problem in terms of its solution because
the Examiner states that "providing a motor driven cam mechanism achieves
the goal (i.e. is the solution) regarding reducing risks associated with
operator error in driving a staple driver and a knife (i.e. the problem)."
Reply Br. 7. Appellants argue that the Examiner impermissibly selected
Huang "'with the claimed invention in mind,' which is strictly prohibited."
Id. at 8 citing Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309, 313
(Fed. Cir. 1985).
The analogous art test requires that a reference either be in the field of
the applicant's endeavor or reasonably pertinent to the problem with which
the inventor was concerned in order to rely on that reference as a basis for
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Application 14/033,688
the rejection. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992).
References are selected as being reasonably pertinent to the problem based
on the judgment of a person having ordinary skill in the art. Id. ("[I]t is
necessary to consider 'the reality of the circumstances,' -in other words,
common sense--in deciding in which fields a person of ordinary skill would
reasonably be expected to look for a solution to the problem facing the
inventor." (quoting In re Wood, 599 F.2d 1032, 1036 (CCPA1979))).
Furthermore, the scope of analogous art is to be construed broadly. Wyers v.
Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) ("The Supreme
Court's decision in KSR International Co. v. Teleflex, Inc., 550 U.S. 398
(2007), directs us to construe the scope of analogous art broadly, stating that
'familiar items may have obvious uses beyond their primary purposes, and a
person of ordinary skill often will be able to fit the teachings of multiple
patents together like pieces of a puzzle.' Id. at 402 (emphasis added).").
We agree with the Examiner that Huang is reasonably pertinent to the
problem solved by the claimed invention and, thus, constitutes analogous art.
As correctly noted by the Examiner, Whitman already uses a motor to drive
a cam (see Ans. 3), and thus, the problem of reducing operator error by
driving a surgical stapler with a motor is disclosed by Whitman. Indeed,
Appellants recognize that the motor solves the problem. See Appeal Br. 12
("the problem is solved by adding a motor to actuate the staple driver. In
other words, the motor is the solution.") Hence, we agree with the Examiner
that Whitman provides a starting point and that one of ordinary skill in the
art would then determine whether there is a known motor driven cam that
can be used to improve upon Whitman's motor driven cam mechanism. See
Ans. 3. Here, the Examiner finds that Huang discloses an improved motor
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driven cam and considers that it would have been obvious to use the
improved cam mechanism of Huang in Whitman's device in order "to
convert the rotary motion of a motor driven cam, to a linearly reciprocating
motion of the shaft, to drive the staples in a single revolution, while
minimizing mechanical wear on the device." Final Act. 7. Specifically,
Huang teaches "an improved motion characteristic so as to enhance the
precision of the mechanism ... to provide a reliable and durable []
mechanism." Huang, 1:5-53. Appellants do not dispute the Examiner's
findings or reasoning. Because both Appellants and Huang use a cam and
link arm to convert revolving motion to linear motion (see Spec. i-f 197;
Huang 4:8-28), we agree with the Examiner that Huang is reasonably
pertinent to improving a motor-driven cam mechanism in a surgical stapler.
Appellants' assertion of differences between applications for surgical
staplers and tool-change mechanisms may be relevant to the first prong of
the analogous art test but does not persuasively illustrate a meaningful
difference regarding the problems that are solved in connection with the
second prong of the analogous art test. Nor are Appellants' comments
regarding Huang's improving an already motor-driven mechanism
persuasive to differentiate the problems identified by the Examiner.
We have considered all of Appellants' arguments and determine that
they fail to apprise us of error in the Examiner's finding that Huang is
analogous art. We, thus, sustain the rejection of claim 1 under 35 U.S.C.
§ 103(a). Claims 2, 19, and 20 fall with claim 1.
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Rejection 2
Appellants rely on the same arguments as for claim 1 to overcome
this rejection. Appeal Br. 13. For the reasons stated above in connection
with the rejection of claim 1, we sustain the rejection of claims 10 and 11.
DECISION
The Examiner's decision rejecting claims 1, 2, 10, 11, 19, and 20 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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