11206298 (B.P.A.I. Sep. 29, 2010)

Ex Parte Schwemberger et al

Board of Patent Appeals and InterferencesSep 29, 2010

11206298 (B.P.A.I. Sep. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/206,298 08/18/2005 Richard F. Schwemberger END-5227 4496 21884 7590 09/29/2010 WELSH & FLAXMAN LLC 2000 DUKE STREET, SUITE 100 ALEXANDRIA, VA 22314 EXAMINER LOW, LINDSAY M ART UNIT PAPER NUMBER 3721 MAIL DATE DELIVERY MODE 09/29/2010 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte RICHARD F. SCHWEMBERGER and WILLIAM D. KELLY ____________ Appeal 2010-000925 Application 11/206,298 Technology Center 3700 ____________ Before WILLIAM F. PATE III, JOHN C. KERINS and STEVEN D.A. McCARTHY, Administrative Patent Judges. McCARTHY, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2010-000925 Application 11/206,298 2 The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s 1 final decision rejecting claims 1-3, 7, 8 and 12-20 under 35 U.S.C. § 102(b) 2 as being anticipated by Schulze (US 5,826,776, issued Oct. 27, 1998). The 3 Examiner indicates that the subject matter of claims 4-6 and 9-11 is 4 allowable. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). 5 We REVERSE. 6 Claims 1 and 15 are independent claims. Claim 1 is illustrative of the 7 claims on appeal: 8 1. A surgical stapler adapted for applying a 9 plurality of surgical fasteners to body tissue, the 10 surgical stapler comprising: 11 an anvil structure; 12 a cartridge housing including at least one 13 component for the application of surgical fasteners 14 housed therein; 15 a firing mechanism including a firing bar 16 having a distal end and a slide bar mounted on the 17 distal end of the firing bar for movement relative 18 to the firing bar; and 19 a lockout mechanism for activation and 20 deactivation of the firing mechanism by 21 disconnecting the distal end of the firing bar from 22 the component housed within the cartridge 23 housing. 24 25 Claim 15 also recites “a slide bar mounted on the distal end of the firing bar 26 for movement relative to the firing bar.” This appeal may be resolved by 27 finding whether Schulze describes a slide bar “mounted on” the distal end of 28 the firing bar. (App. Br. 10-11; see Reply Br. 1-2). 29 The Examiner finds that the lockout member 170 disclosed by 30 Schulze corresponds to the claimed slide bar. (Ans. 3; see also Schulze, col. 31 11, l. 63 – col. 12, l. 25). The Examiner also finds that wedges 122 32 Appeal 2010-000925 Application 11/206,298 3 correspond to the firing bar. (Id.; see also Schulze, col. 7, ll. 50-56 and col. 1 10, ll. 18-24). The Examiner reasons that “the firing bar 122 and the knife 2 160 are both attached to a pusher block 152 (col. 10 lines 18-20). Therefore, 3 the firing bar 122 and the knife 160 move as one during the stapling 4 operation.” (Id.). The Examiner finds that the locking member 170 is 5 mounted on a distal end of the knife 160 by means of a lock tab 162. The 6 Examiner reasons that, “[s]ince the knife and firing bar 122 move as one 7 during the stapling operation, the slide bar 170 is also mounted on the firing 8 bar 122 and moves relative to the firing bar.” (Id.) 9 The Specification does not provide an explicit definition for the term 10 “mounted on.” In making the finding that the lockout member 170 is 11 “mounted on” the firing bar 122, the Examiner adopts as the ordinary usage 12 of the term “mounted on” a definition in WEBSTER’S II NEW RIVERSIDE 13 UNIVERSITY DICTIONARY, namely, “to place or fix on or in a secure place.” 14 (Ans. 5 (italics added)). Assuming, for purposes of this appeal only, that this 15 dictionary definition is consistent with the usage of the term “mounted on” 16 in the Appellants’ Specification, the Examiner finds that “the slide bar 170 is 17 placed on the unit that includes the knife 160 and the firing bar 122.” (Ans. 18 5). 19 The Appellants correctly point to the passage of Schulze at column 20 11, line 63 through column 12, line 25, in explaining why Schulze’s lockout 21 member 170 is not mounted on the wedges 122 or even the knife 160. 22 Schulze describes the lockout member 170 as being provided “within the 23 cartridge so that [it] serves to lift the knife blade 160 over an obstructional 24 block 172 placed within the stationary tube 130 of the mechanism.” 25 Appeal 2010-000925 Application 11/206,298 4 (Schulze, col. 11, l. 67 – col. 12, l. 3 (emphasis added)). Further on, Schulze 1 discloses that, 2 after the knife 160 has been inserted into the 3 cartridge 150, the raised members 170a of lockout 4 member 170 have been caused to be captured 5 below its cartridge retaining member 164 in 6 opening 165, so that lockout member 170 becomes 7 locked permanently within the cartridge 150. 8 Therefore, after the knife 160 is retracted into the 9 shaft 130, obstruction 172 is now level with the 10 notch 166. In this way, there is no longer any 11 clearance, between notch 166 and obstruction 172. 12 (Schulze, col. 12, ll. 13-21). These passages imply that the knife 160 is 13 placed on the lockout member 170 rather than the lockout member 170 14 being placed on the knife 160. 15 The Examiner cites no descriptive passage of Schulze persuasive that 16 the lockout member 170 is placed or mounted on the knife 160. Neither has 17 the Examiner provided persuasive reasoning to explain how the lockout 18 member 170 might be mounted on the wedges or firing bar 122 if not 19 mounted on the knife 160. We do not sustain the rejections of claims 1-3, 7, 20 8 and 12-20 under § 102(b) as being anticipated by Schulze. 21 22 DECISION 23 We REVERSE the Examiner’s decision rejecting claims 1-3, 7, 8 and 24 12-20. 25 26 REVERSED 27 28 Klh 29 Appeal 2010-000925 Application 11/206,298 5 WELSH & FLAXMAN LLC 1 2000 DUKE STREET, SUITE 100 2 ALEXANDRIA, VA 22314 3