Ex Parte Scirica et al

Patent Trial and Appeal Board

Aug 24, 2016

11665108 (P.T.A.B. Aug. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/665,108 07/07/2008
50855 7590 08/26/2016
Covidien LP
555 Long Wharf Drive
Mail Stop SN-I, Legal Department
New Haven, CT 06511
FIRST NAMED INVENTOR
Paul A. Scirica
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.
2962 PCT US (203-4154
PCT
CONFIRMATION NO.
6364
EXAMINER
MILES, JONATHAN WADE
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
08/26/2016 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 PAUL A. SCIRICA, TODD L. DEMMY,
and LEE ANN OLSON
Appeal2013-006955
Application 11/665, 108
Technology Center 3700
Before JENNIFER D. BAHR, JOHN C. KERINS, and
STEP AN ST AI CO VICI, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Paul A. Scirica et al. (Appellants) seek our review under 35 U.S.C.
§ 134(a) of the Examiner's final rejection of claims 1-24. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal2013-006955
Application 11/665, 108
THE INVENTION
Appellants' invention is directed to a surgical stapling device.
Independent claim 1, reproduced below, is illustrative:
1. A surgical stapling device comprising:
a housing;
an elongated body extending distally from and being rotatable
relative to the housing;
an end effector on a distal end of the elongated body, the end
effector including a first jaw supporting an anvil assembly
and a second jaw supporting a cartridge assembly, the first
jaw being movably supported in relation to the second jaw
between an open position and a clamped position, the first jaw
defining a slot on a distal end portion thereof and including a
dissecting tip,
the dissecting tip including,
a proximal portion configured to be secured \'l1ithin the slot on
the distal end portion of the first jaw;
a distal portion extending distally from and contiguous with
the proximal portion, the distal portion having an inner
surface that faces the distal end of the second jaw of the end
effector and is contiguous with a tissue contacting surface of
the anvil assembly, the distal portion having a cross-section
which decreases in area substantially continuously from the
proximal portion to a distal tip, the distal tip extends distally
toward the second jaw from a distal end of the distal portion
to a location beyond and spaced from the distal end of the
second jaw when the first jaw and the second jaw are in the
clamped position.
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Application 11/665, 108
THE REJECTIONS ON APPEAL
The Examiner has rejected:
(i) claims 1-15, 19, and 23 under 35 U.S.C. § 103(a) as being
unpatentable over Gravener (US 5,772,099, issued June 30,
1998) in view of Young (US 5,507,426, issued Apr. 16, 1996)
and Diaz (US 2,887,111, issued May 19, 1959);
(ii) claims 16-18 and 20-22 under 35 U.S.C. § 103(a) as being
unpatentable over Gravener in view of Diaz; and
(iii) claim 24 under 35 U.S.C. § 103(a) as being unpatentable over
Gravener in view of Diaz and Young.
ANALYSIS
Claims 1-15, 19, and 23-Gravener/Diaz/Young
The Examiner finds that Gravener discloses a surgical stapling device,
but fails to teach, inter alia, a housing with an elongated body extending
distally therefrom, with the elongated body being rotatable relative to the
housing. Final Act. 4. The Examiner cites to Young as disclosing a surgical
stapling device having a housing 12 and an elongated body extending
distally therefrom and being rotatable relative to the housing by nut 22. Id.
at 6. The Examiner concludes that it would have been obvious "to provide
the device of Gravener with a housing and to allow the elongated body to
rotate relative [to] the housing." Id. The Examiner states that the motivation
for modifying Gravener to provide a housing is so that outside elements can
be prevented from lodging in the handle portion of Gravener, and that the
motivation for modifying to allow for relative rotation between such housing
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Application 11/665, 108
and an elongated body portion is so that the user can rotate the end effector
easily to reach target tissue. Id.
Appellants point out several differences between the Gravener stapler
construction and the Young stapler construction, and assert that the proposed
modification of Gravener would render the Gravener stapler unsuitable for
its intended purpose. Appeal Br. 11-12. In particular, Appellants note that
the Young stapler "includes a fastener applying assembly on a distal end of
an elongated tubular body," whereas the Gravener stapler is made up of first
and second frames, each having a distal, finger-like projection and a
replaceable actuation assembly holding a cartridge assembly, with the
frames being separable for removal and replacement of the actuation
assembly. Id., see also Gravener, col. 3, 1. 64---col. 4, 1. 34. Appellants assert
that the modification "would prevent the replacement of a significant part of
the actuation assembly." Appeal Br. 12.
The Examiner responds that the rejection "is not intending to bodily
incorporate Young with G[ r ]avener. Examiner cites Young to teach the
concepts of a housing and an elongate body being rotatable relative [to] the
housing." Ans. 13. Appellants respond that "[i]t is unclear how the
Examiner intends the surgical stapling apparatus 100 of Gravener to be
modified to include a rotatable body portion extending from a handle portion
without changing the respective functions" of the Gravener stapler. Reply
Br. 5.
We share Appellants' concern that the Examiner has failed to explain,
with sufficient specificity, how one of ordinary skill in the art would modify
Gravener in view of Young to reach the claimed subject matter. The
proximal ends of frame members 110 and 120 of Gravener appear to form a
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Application 11/665, 108
handle of sorts, and given that the Examiner's reason to provide Gravener
with a housing is "to prevent outside elements from lodging into the handle
portion," it would appear that the Examiner is proposing to enshroud the
handle portion in a housing. Ans. 8. However, not only do the two handle
portions appear to be capable of acting as a housing themselves for the
proximal portion of actuating assembly 130, the Examiner does not explain
how providing a further housing would allow frames 110, 120 to remain
separable for removal and replacement of the actuating assembly. Gravener,
col. 4, 11. 32-34.
Further to that, the Examiner does not make clear whether the entire
Gravener structure, were a housing provided around the handle, would
somehow be rotatable relative to the housing, or only the finger-like
projection portions of frames 110, 120, would be rotatable. Seemingly, the
latter would most closely track the claim language, and most closely
resemble the configuration of the Young stapler. However, such a
modification fails to take into account the effect this would have on
actuating assembly 130, which is disclosed as being operated to move
linearly from a position within the proximal portion of the Gravener device
to a position at the distal end of the device. Gravener, col. 4, 11. 19-24. It
would appear that, at a minimum, substantial modification of the Gravener
actuating assembly would be necessary in order to provide the ability to
rotate a distally extending elongated body relative to a housing located at the
proximal end of the device.
As such, the Examiner fails to articulate the necessary findings and
reasoning to establish that it would have been obvious to modify the
Gravener stapler in view of the teachings of Young. Accordingly, we do not
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sustain the rejection of claims 1-15, 19, and 23 under 35 U.S.C. § 103(a) as
being unpatentable over Gravener, Diaz, and Young.
Claims 16--18 and 20--22-Gravener/Diaz
Independent claim 16 is generally similar in scope to independent
claim 1, but omits the limitation requiring a housing and an elongated body
portion extending distally from the housing, with the elongated body portion
being rotatable relative to the housing. As such, the Examiner does not rely
on Young in rejecting these claims, and the deficiencies in the proposed
combination of Young with Gravener are not presented in this rejection.
The Examiner finds that Gravener discloses an anvil assembly and a
cartridge assembly as set forth in claim 16, as well as a dissecting tip. Final
Act. 6-8. The Examiner finds that Gravener does not disclose the claimed
configuration of the dissecting tip. Id. at 8. The Examiner cites to Diaz as
disclosing a dissecting tip having the configuration attributes set forth in
claim 16, and concludes that it would have been obvious to modify the
dissecting tip in Gravener to take on this configuration so that the Gravener
stapler would be capable of performing several functions with the same
instrument. Id. at 8-9.
Appellants restate the limitations set forth in claim 16, and, in the
main, refer back to the arguments presented with respect to claim 1
regarding the alleged impropriety of the combination of Diaz with Gravener.
Appeal Br. 13-15. Appellants first argue that:
A person of ordinary skill would not combine the teachings [of]
Diaz with the stapler of Gravener. The forceps of Diaz is a
different device than the stapler disclosed by Gravener. It is
difficult to see how a staple cartridge could be incorporated into
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Application 11/665, 108
the Diaz device, or why a person of skill would look to Diaz for
a teaching of how to include a dissect [sic] tip in a stapler jaw.
Id. at 9; see also id. at 13-14.
As to the specific statements regarding modification of one reference
in view of the other, the Examiner does not propose to modify Diaz to
incorporate a staple cartridge therein, and the Examiner's position is that
Gravener discloses a dissecting tip 124, and uses Diaz only for its teaching
of a shape or configuration of a dissecting tip. Final Act. 7, 9. These
arguments do not apprise us of Examiner error.
The Examiner understands this line of argument to be that Gravener
and Diaz are nonanalogous art. Ans. 11-12. In the event that this is
Appellants' intent, we do not view bald statements to the effect that the
references disclose different devices, and that Appellants find it difficult to
see how one might be modified in view of the other, as being effective in
establishing that the references are not from the same field of endeavor or
that, if not from the same field of endeavor, they are not reasonably pertinent
to a problem faced by Appellants. See Scientific Plastic Prods., Inc. v.
Biotage AB, 766 F.3d 1355, 1360 (Fed. Cir. 2014) (setting forth criteria for
determining analogous and nonanalogous art). In contrast, the Examiner
provides an analysis as to why Gravener and Diaz would be regarded as
analogous art. Ans. 11-12. Again, we are not apprised of Examiner error.
Appellants next argue that, "[ e ]ven if the dissecting tip of Diaz were
properly combinable with the surgical stapler of Gravener ... Diaz does not
cure the deficiencies of Graven er." Appeal Br. 9. Appellants contend, in
this respect, that the dissecting tip or terminal 11 of Diaz does not extend
toward opposing jaw 5, as claimed, but rather extends away from that jaw.
This argument pertains to a limitation found in claim 1, but not in claim 16,
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which instead recites that a distal portion of the dissecting tip have an inner
surface defined by a curve that extends through a plane defined by a tissue-
contacting surface of the opposite jaw, and is spaced from that opposite jaw
when the jaws are in the closed position. Appellants present no argument
that the proposed combination of Diaz with Gravener would not include this
limitation, and thus, we are not apprised of error in the rejection.
Appellants additionally maintain that the spacing of the dissecting tip
from the distal end of the opposing jaw when the jaws are clamped or
closed, is so that "tissue lying outwardly of the jaws is not pinched when the
jaws are in the closed position." Appeal Br. 9, 14. According to Appellants,
"[i]n Gravener, the tip does not extend toward the other jaw, and therefore,
would not pinch tissue," which purportedly evidences a lack of a teaching,
suggestion, or motivation to modify Gravener in view of Diaz. Id. at 9. The
Examiner essentially responds, correctly, that this argument takes into
account only the Gravener reference, whereas the rejection is based upon a
combination of the teachings of Gravener and Diaz, with the articulated
reason to combine finding its basis in the Diaz reference. Ans. 12. As such,
we are not apprised of error in the rejection.
Appellants additionally maintain that "[t]he Diaz terminal 11 is
entirely inappropriate to an endoscopic device, as the terminal 11 extends
beyond the envelope of the forceps, and would not be insertable through a
trocar." Appeal Br. 9. This argument also does not apprise us of error in the
rejection for several reasons, but mainly, as argued by Appellants, Gravener
is not an endoscopic stapler, so the argument is a red herring. Appeal Br. 6-
7. Further, although on the Diaz forceps, the terminal extends beyond what
Appellants refer to as "the envelope of the forceps," the stapler of Gravener
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Application 11/665, 108
appears to have a much larger cross-sectional "envelope," as the jaws do not
fit into one another as in Diaz, and changing the configuration of dissecting
tip 24 of Gravener to be curved as in Diaz would not seemingly result in the
dissecting tip extending beyond that envelope.
In view of the foregoing, the rejection of claim 16 as being
unpatentable over Gravener and Diaz is sustained. Appellants do not argue
for the separate patentability of claims 17, 18, and 20-22, relying instead on
arguments advanced for independent claims 1 and 16. Appeal Br. 15. These
claims thus fall with claim 1, from which they depend.
Claim 24-Gravener/Diaz/Young
Claim 24 depends from claim 16, and further includes the limitations
that the stapling device include a housing, and that the elongated body
portion extends distally therefrom and is rotatable relative thereto.
The Examiner's basis for rejecting claim 16 includes the same
defective findings and conclusions advanced for claim 1, discussed above.
Final Act. 9. The rejection of claim 24 is therefore not sustained, for the
same reasons as set forth above with respect to the proposed modification of
Gravener in view of Young.
DECISION
The rejection of claims 1-15, 19, and 23 under 35 U.S.C.
§ 103(a) as being unpatentable over Gravener in view of Diaz and Young is
REVERSED.
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Appeal2013-006955
Application 11/665, 108
The rejection of claims 16-18 and 20-22 under 35 U.S.C. § 103(a) as
being unpatentable over Gravener in view of Diaz is AFFIRMED.
The rejection of claim 24 under 35 U.S.C. § 103(a) as being
unpatentable over Gravener in view of Diaz and Young is REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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