Ex Parte Scirica

Patent Trial and Appeal Board

Nov 22, 2013

11520343 (P.T.A.B. Nov. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PAUL A. SCIRICA
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Appeal 2012-002569
Application 11/520,343
Technology Center 3700
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Before JOSIAH C. COCKS, BENJAMIN D. M. WOOD, and
BARRY L. GROSSMAN, Administrative Patent Judges.

GROSSMAN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2012-002569
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-7, 11-15, 17-20, 24, and 25. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We reverse the decision of the Examiner.
CLAIMED SUBJECT MATTER
The claimed subject matter relates generally to a surgical stapling
device having a rotatable stapling head. More particularly, the claimed
subject matter relates to a surgical stapling device having a locking
mechanism for preventing the rotation of the stapling head. Spec., para.
[0001]. Claims 1 and 12 are written as independent claims. Claim 1 is
illustrative of the subject matter on appeal, and recites:
1. A surgical stapling device comprising:
a housing;
a handle assembly including a moveable handle;
an elongated body portion defining a longitudinal
axis and being rotatably supported on the housing to rotate
about the longitudinal axis;
a tool assembly mounted on a distal end of the
elongated body portion;
an actuation member operably engaged to the tool
assembly; and
a locking mechanism for preventing the rotation of
the elongate body portion, wherein upon operation of the
moveable handle, the actuation member is advanced and
the locking mechanism is automatically engaged.

REFERENCE
The Examiner relied on Mastri, US 5,762,256, issued June 9, 1998 to
reject all the claims.
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REJECTIONS
The following rejections are before us for review:
1. Claims 1-7, 11-15, 17, 19, 20, 24, and 25 rejected under 35 U.S.C.
§ 102(b) as anticipated by Mastri; and
2. Claim 18 rejected under 35 U.S.C. § 103(a) as being unpatentable
over Mastri.
ANALYSIS
Appellant argues only independent claims 1 and 12. App. Br. 4, 14.
No separate argument is provided for any dependent claim. Id. at 14, 16, 17.
The Rejection of Claims 1-7, 11-15, 17, 19, 20, 24, and 25
under Section 102
The first step in an anticipation analysis under Section 102 is a proper
construction of the claims. The second step is to compare the properly-
construed claim to the prior art. Medichem, S.A. v. Rolabo, S.L., 353 F.3d
928, 933 (Fed. Cir. 2003).
We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims “their broadest
reasonable interpretation consistent with the specification” and “in light of
the specification as it would be interpreted by one of ordinary skill in the
art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(citations omitted); see also, In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir.
1999) (“Although the PTO must give claims their broadest reasonable
interpretation, this interpretation must be consistent with the one that those
skilled in the art would reach.”). (Citations omitted).
Claim 1 calls for “an elongated body portion” that defines “a
longitudinal axis” with the elongated body portion “being rotatably
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supported on the housing to rotate about the longitudinal axis.” The claim
also requires “a locking mechanism for preventing the rotation of the
elongate body portion.” Claim 12 has similar limitations. In the locked or
engaged position, locking mechanism (reference numeral 50) provides
resistance to the rotation of rotatable member 32. Spec., para. [0026]. In
turn, this provides resistance to the rotation of the elongated body portion
14.
Claims 1 and 12 both call for a moveable handle that automatically
engages the locking mechanism upon operation of the moveable handle. As
explained in the Specification, by partially triggering movable handle 28, a
surgeon may engage locking mechanism 50 while grasping tissue without
discharging staples. Spec., para. [0028]. By locking rotatable member 32,
the entire stapling device is locked in a fixed position and any rotation of
handle assembly 12 by the surgeon is directly translated to tool assembly 20.
Id. In this manner, the surgeon may use the stapling device as surgical
forceps. Id.
Against this background, we compare the claimed invention to the
Mastri reference applied by the Examiner.
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed.
Cir. 1987). “The identical invention must be shown in as complete detail as
is contained in the . . . claim.” Richardson v. Suzuki Motor Co., 868 F.2d
1226, 1236 (Fed. Cir. 1989). The elements must be arranged as required by
the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology
is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
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An Elongated Body
Mastri discloses a surgical stapler similar in general construction to
the invention disclosed and claimed. For example, Mastri discloses a
surgical stapling device (reference numeral 10; col. 6, ll. 30-34) having an
elongated body portion (reference numeral 14; col. 6, l. 53). As shown
clearly in the figures of Mastri, elongated body 14 defines a longitudinal axis
(see, e.g., Fig. 1). Elongated body 14 in Mastri is rotatably supported on a
housing to rotate about the longitudinal axis (col. 7, ll. 47-49 (“Thus,
rotation of collar 70 will cause corresponding rotation of body portion
14.”)). As noted above, claims 1 and 12 each require an elongated body
portion that is rotatably supported on a housing. The Examiner, however,
did not rely on these similarities and common terminology of similar parts
between Mastri and the claimed invention to support the rejection. Instead,
the Examiner presented two alternative theories of anticipation that
compared the claimed invention to various internal operating parts of Mastri.
Ans. 4-5.
The Examiner found that Mastri discloses, “an elongated body 80
rotatably supported relative to the housing 12.” Ans. 4; see Fig. 2 of Mastri.
In the alternative, the Examiner found that element 126 in Mastri (see Fig. 1)
is the elongated body as called for in the claims. Ans. 5.
With respect to the Examiner’s first theory, Mastri states that element
80 is a “[r]ack lock.” Mastri, col. 7, ll. 53-54. Rack lock 80 is located
within handle assembly 80. Id. at l. 51. Rack lock 80 functions to maintain
the longitudinal position of actuation shaft 40. Id. at ll. 54-55.
Appellant argues that Mastri fails to disclose an elongated body as
claimed. App. Br. 5, 12 (“it is clear from the recitation of claim 1 that the
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rack lock 80 is not the elongated body.”) Thus, we determine whether
element 80 of Mastri discloses an elongated body as set forth in the claims in
as complete detail as is contained in the claims.
The Specification refers to “an elongated body 14.” Spec., para.
[0022]. Elongated body 14 is shown clearly in Figure 1 and various other
figures. As shown, it is located outside of the handle assembly 12 or
housing 38. Spec., para. [0022]. The Specification also explains that
“[r]otatable member 32 is configured to facilitate rotation of elongated body
member 14 in relation to handle assembly 12.” Id.
Additionally, the Specification explains that a tool assembly 20 is
located on the distal end of elongated body 14. Spec., para. [0025]. This
arrangement is shown in Figures 1 and 2. Claim 1 recites that a tool
assembly is mounted on a distal end of the elongated body portion. Claim
12 does not include this limitation.
The tool assembly in Mastri, such as disposable loading units 30, 45,
or 60, is not mounted on a distal end of rack lock 80, as specifically required
by independent claim 1. Instead, these tool assemblies are mounted to an
elongated body (reference numeral 14). Mastri, col. 8, ll. 13-15.
The Examiner found that rack lock 80 is mounted to housing 12 for
rotation relative to the housing 12 through boss 56 upon actuation of handle
26. Ans. 6. However, whatever rotation may occur through boss 56 is not
rotation about the longitudinal axis as called for in the claims.
Elongated body 14 of Mastri appears to be more akin to the elongated
body called for in the claims than rack lock 80. However, the Examiner
made no findings that elongated body 14 of Mastri met any of the limitations
of the claims.
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Accordingly, contrary to the Examiner’s findings, rack lock 80 is not
an “elongated body” as called for in the claims.
Locking Mechanism
The Examiner also found that Mastri discloses a pivotable locking
mechanism 210 that prevents rotation of the elongated body 80. Ans. 4.
Alternatively, the Examiner found that elements 14 and 130 (see Fig. 5)
were a locking mechanism. Ans. 5.
Appellant argues that Mastri fails to disclose the locking mechanism
as claimed. App. Br. 5.
Element 210 in Mastri is a lift arm. Mastri, col. 10, l. 61. Lift arm
210 projects from actuation handle 26 and serves to disengage clasp portion
102 from actuation shaft 40 under certain operating conditions. Id. at col.
10, ll. 61-66; see also col. 11, ll. 26-34 (explaining that lift arm 210 serves to
unlock or open the surgical stapling device). It does not prevent rotation of
an elongated body, as required by the claims.
The Examiner alternatively found that element 126 in Mastri is an
“elongated body,” and that element 14 and element 130 form a locking
mechanism. Ans. 5.
Mastri discloses that element 126 is the proximal end section of
mounting portion 120 of carrier 32. Mastri, col. 8, ll. 40-45. A coupling
stem 128 projects radially outwardly from end section 126 for interacting
with the J-shaped coupling slot 130 defined in the wall of the distal end
portion of elongated body 14. Id. at ll. 49-52. Stem 128 and slot 130
together define a conventional bayonet-type coupling which facilitates quick
and easy engagement and removal of the stapling unit from the stapler
during a surgical procedure. Id. at ll. 52-55. The combination of elements
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14 and 130 does not prevent rotation of element 126 about housing 12,
because element 126 remains rotatable with element 14 in Mastri upon
rotation of collar 70. Mastri, col. 7, ll. 47-49. Elements 14 and 130 also are
not automatically engaged through an actuation member upon operation of a
moveable handle, as called for in independent claims 1 and 12.
Accordingly, the evidence does not support the Examiner’s finding that
elements 14 and 130 in Mastri are a locking device as called for in the
claims.
Accordingly, because the evidence does not support the Examiner’s
findings under either alternative rejection, we do not sustain the rejection of
independent claims 1 and 12, and the claims dependent thereon, under 35
U.S.C. § 102(b) as anticipated by Mastri.
The Rejection of Claim 18 under Section 103
Claim 18 depends indirectly from claim 1. Since Mastri does not
disclose the elongated body or locking element as called for in claim 1, we
also cannot sustain the rejection of claim 18.

DECISION
Upon consideration of the record as a whole in light of Appellant’s
contentions and the preponderance of relevant evidence, we reverse the
Examiner’s decision rejecting claims 1-7, 11-15, 17-20, 24, and 25.

REVERSED

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