Ex Parte Shelton et al

Board of Patent Appeals and Interferences

Sep 11, 2012

11529935 (B.P.A.I. Sep. 11, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FREDERICK E. SHELTON IV,
WILLIAM B. WEISENBURGH II, CHRISTOPHER J. HESS,
JEROME R. MORGAN, and MICHAEL CLEM
____________

Appeal 2010-005744
Application 11/529,935
Technology Center 3700
____________

Before STEFAN STAICOVICI, JAMES P. CALVE, and SCOTT A.
DANIELS, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the rejection of claims
1-38. App. Br. 5.1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 Refers to Amended Appeal Brief filed Sep. 3, 2009.
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CLAIMED SUBJECT MATTER
Claim 1 is representative of the claimed subject matter on appeal:
1. A surgical staple for deployment from a surgical
stapler in a patient's body, comprising:
a deformable member;
a base including a midpoint, said deformable member
extending from said base; and
a rigid driver, wherein at least a portion of said base is
embedded in said rigid driver such that said midpoint of said base
remains substantially stationary relative to said rigid driver
during deployment of the staple, said rigid driver including:
a cam-contacting surface, said cam-contacting
surface configured to operatively engage with a cam of the
stapler, wherein said rigid driver extends from said cam-
contacting surface to said base; and
a tissue-contacting surface, said deformable member
configured to hold tissue intermediate said deformable member
and said tissue-contacting surface after the stapler has been
removed from the patient's body.

REJECTIONS
Claims 1-3, 6-10, 13-16, 19, 21-23, 27, 33, 34, and 36-38 are rejected
under 35 U.S.C. § 102(b) as being anticipated by Johnson (US 6,010,054;
iss. Jan. 4, 2000).
Claims 1, 2, 6-9, 13, 21-23, and 27 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Gayton (US 7,056,330 B2; iss. Jun. 6,
2006).
Claims 4, 5, 11, 12, 24, 25, and 28 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Gayton and Laufer (US 2006/0100643
A1; pub. May 11, 2006).
Claims 4, 5, 11, 12, 17, 18, 24, 25, 28, 29, and 35 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Johnson and Laufer.
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Claims 20, 26, and 30-32 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Johnson and Chow (US 4,633,874; iss. Jan. 6,
1987).
ANALYSIS
Claims 1-3, 6-10, 13-16, 19, 21-23, 27, 33, 34, and 36-38 as anticipated by
Johnson
Claims 1-3, 6, and 7
The Examiner found that Johnson discloses a surgical staple 60 with a
deformable member, a base, and a rigid driver 66, wherein at least a portion
of the base is embedded in the recess 65 of the rigid driver 64, 66. Ans. 3-4.
Pointing to a dictionary, the Examiner interpreted the term “embedded” “to
structurally require the staple base to be fixed into a surrounding mass” and
“[i]n this case, the surrounding mass is the upper portions of the driver 64,
66 that extend over the base and define the recess 65.” Ans. 7.
Appellants argue that Johnson’s drivers 64, 66 merely support staples
60 within a staple cartridge. App. Br. 17 (citing figs. 17, 18). Appellants
also argue that the drivers are separate components from the staples because
the upper surface of a driver (plate 64b) “defines a U-shaped staple trough
65 which receives and supports an inverted staple 60” and the staple
drivers eject the staples from the openings of the staple cartridge. App. Br.
17-18 (citing col. 11, ll. 24-25 and col. 12, ll. 9-14). Appellants further
argue that the drivers of Johnson are separate from the staples and are not
deployed from the staple cartridge; therefore, “they cannot be configured to
hold tissue intermediate a deformable member and a surface of the driver
after the stapler has been removed from the patient’s body as recited in
[c]laim 1.” App. Br. 18.
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The Examiner’s finding that Johnson’s staple base is embedded in a
rigid driver is within the broadest reasonable interpretation of that term and
consistent with Appellants’ Specification, which discloses that crown-driver
1302 “may be separately manufactured and then assembled to base 1301”
which “can be at least partially embedded into crown-driver 1302.” Spec.
para. [0350]. We decline to read features from Appellants’ Specification
into claim 1 such that the base is inseparably embedded in the rigid driver, or
to limit claim 1 to particular embodiments when the language of claim 1 is
broader than such embodiments. During examination, claims are given their
broadest reasonable interpretation consistent with the specification to serve
the public interest by reducing the possibility that claims, once allowed, will
be given broader scope than is justified. In re Am. Acad. of Sci. Tech Ctr.,
376 F.3d 1359, 1364 (Fed. Cir. 2004) (construing claims broadly during
prosecution is not unfair to an applicant, because an applicant can amend the
claims to obtain more precise claim coverage).
Appellants also argue that the drivers of Johnson are not configured to
hold tissue intermediate a deformable member and a surface of the driver
after the stapler has been removed from the patient’s body as recited in claim
1 because the drivers are not deployed from the staple cartridge. App. Br.
18. This argument is not commensurate with the scope of claim 1, which
calls for the deformable member to be configured to hold tissue intermediate
the deformable member and tissue-contacting surface. Claim 1 does not call
for the tissue-contacting surface of the driver to be configured to hold tissue
intermediate the deformable member and tissue-contacting surface after the
stapler has been removed from the patient’s body.
Accordingly, we sustain the rejection of claims 1-3, 6, and 7.
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Claims 8-10, 13-16, 19, 33, 34, and 36-38
Independent claim 8 recites that the “rigid driver is integrally attached
to at least one of said deformable members and said base” while independent
claim 14 recites that “said rigid driver is integrally attached to said staple.”
Emphasis added. Independent claim 33 recites that “said driver is attached
to at least one of said deformable member and said base” while independent
claim 37 recites that “said driver is attached to at least one of said
deformable member and said base.” Emphasis added. The Examiner found
that the limitation “integrally attached” defines two structural limitations
between the staple and driver in that the term “integral” “addresses the
association of the staple with the driver, such that the distinct elements
operate as a single unit” and the term “attached” “requires there to be
engagement or contact between a surface of the staple and a surface of the
driver, such that the two elements are connected.” Ans. 8. The Examiner
found that Johnson meets these limitations. Ans. 8.
Appellants argue that Johnson does not disclose a driver attached or
integrally attached to a staple because the driver “receives and supports” an
inverted staple and the driver ejects the staple and separates from the staple
when the staple is deployed unlike the claimed arrangement “wherein the
staple drivers remain attached to the staples.” App. Br. 17, 19.
We agree with the Examiner that Johnson discloses drivers that are
“attached” to at least one of a deformable member and base as recited in
claims 33 and 37. The Examiner’s interpretation is within the broadest
reasonable interpretation of the term “attached” consistent with Appellants’
Specification, which discloses that crown-driver 1302 “may be separately
manufactured and then assembled to base 1301” which “can be at least
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partially embedded into crown-driver 1302.” Spec. para. [0350]. We
decline to read features from Appellants’ Specification into claims 33 and 37
such that the base is inseparably attached to a rigid driver, or limit claims 33
and 37 to a particular embodiment when the language of claims 33 and 37 is
broader than such embodiments. Johnson discloses drivers 64, 66 that are
attached to staple bases by a U-shaped staple trough 65 that receives and
supports the staples 60. Col. 11, ll. 22-27; see figs. 17, 18. Appellants’
arguments do not persuade us of error in the Examiner’s findings.
However, we agree with Appellants that Johnson’s drivers are not
integrally attached to a deformable member or a base of a staple as recited
in claims 8 and 14. The Examiner’s interpretation effectively reads the term
“integrally” out of claims 8 and 14 because the Examiner interpreted the
term “attached” to require engagement or contact between a surface of the
staple and a surface of the driver, which also would encompass association
of the driver and staple and effectively render the term “integral” redundant.
See Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir.
2005) (“A claim construction that gives meaning to all the terms of the claim
is preferred over one that does not do so.”).
An ordinary, customary meaning of “integral” includes “formed as a
unit with another part.” MERRIAM WEBSTER’S COLLEGIATE® DICTIONARY
(11th ed. 2005). We thus interpret the term “integrally engaged” consistent
with Appellants’ Specification to mean that the driver and staple base are
engaged or connected to form a single, inseparable unit. Johnson does not
disclose a driver and staple that are integrally attached because the staple
and driver separate once the drivers eject the staples from the openings of
the staple cartridge. Col. 12, ll. 1-14. Accordingly, we sustain the rejection
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of claims 33, 34, and 36-38 but we cannot sustain the rejection of claims 8-
10, 13-16, and 19.
Claims 21-23 and 27
Independent claim 21 recites that “at least a portion of said rigid
driver is formed on at least one of said base and said deformable member.”
Independent claim 27 recites that “said rigid driver is integrally formed with
at least one of said base and said deformable member.” Emphasis added.
The Examiner found that Johnson discloses this arrangement. Ans. 3-4, 9.
Appellants argue that Johnson does not disclose this arrangement for the
reason set forth supra. App. Br. 16-18. The Examiner’s finding that
Johnson discloses a driver “formed on” a base or deformable member is
within the broadest reasonable interpretation of that term consistent with
Appellants’ Specification, which discloses that crown-driver 1302 “may be
separately manufactured and then assembled to base 1301” which “can be at
least partially embedded into crown-driver 1302.” Spec. para. [0350]. We
agree that Johnson discloses this arrangement for the reasons discussed
supra. However, we agree with Appellants that Johnson does not disclose a
driver “integrally formed” on a base or deformable member because the
driver is not formed on the staple to form a single, inseparable unit. The
Examiner’s interpretation effectively reads the term “integrally” out of claim
27. As such, we sustain the rejection of claims 21-23, but do not sustain the
rejection of claim 27.
Claims 1, 2, 6-9, 13, 21-23, and 27 as being anticipated by Gayton
Independent claim 1 recites a surgical staple “wherein at least a
portion of said base is embedded in said rigid driver such that said midpoint
of said base remains substantially stationary relative to said rigid driver
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during deployment of the staple.” Independent claims 8 and 21 recite that
“said rigid driver spans substantially the entire length of said base.”
Independent claim 27 recites that “said rigid driver extends substantially
along the entire length of said base.”
The Examiner found that Gayton discloses a surgical staple with a
rigid driver (bosses 62, 64) that are molded over the length of the base 66 of
the staple and integrally attached to the deformable members 72, 74 of the
staple. Ans. 4-5, 10. The Examiner also found that the base 66 of the staple
of Gayton is embedded in the drivers 62, 64 such that the driver spans the
entire length of the deformable base. Ans. 11. The Examiner interpreted the
drivers 62, 64 as forming a midpoint of the base that does not move relative
to the drivers 62, 64 during deployment of the staple. Ans. 10-11.
We agree with Appellants that Gayton does not disclose a staple in
which the midpoint of the base of the staple remains substantially stationary
relative to the rigid driver during deployment of the staple. Instead, Gayton
discloses that the midpoint 70 of the staple base moves relative to the bosses
62, 64 during deployment of the staple from an open position (fig. 5A) to a
closed position (fig. 5B). Col. 5, ll. 24-28. Gayton discloses element 70 as a
connecting member that is connected to the bosses 62, 64, which in turn are
connected to deformable staple legs 72, 74 such that the connecting member
70 forms the base of the staple that connects the staple legs 72, 74. Col. 5,
ll. 1-19. The Examiner’s interpretation of the term “base” as the ends of the
staple legs 72, 74 that are attached to each boss 62, 64 does not identify a
midpoint of each base or explain how such a midpoint remains substantially
stationary relative to the rigid driver (bosses 62, 64) during deployment of
the staple because, in contrast, Figures 5A and 5B of Gayton show that the
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only parts of the staple legs 72, 74 that do not move relative to the bosses 62,
64 are the very ends of the legs 72, 74 that are secured to the bosses. See
figs. 5A, 5B. The same holds true for the connecting member 70 to the
extent that the Examiner has relied on the ends of the connecting member 70
that are attached to each boss 62, 64 to correspond to the claimed base. As
such, we cannot sustain the rejection of claims 1, 2, 6, and 7.
The Examiner also has not explained how the very ends of the staple
legs 72, 74 or the very ends of connecting member 70 provide “a base
including a length” “wherein said rigid driver spans substantially the entire
length of said base” as recited in claims 8, 21, and 27. To the extent the
bottom portions of the legs 72, 74 include a length beyond the very end that
is attached to a boss 62, 64, the rigid driver (bosses 62, 64) does not cover
substantially the entire length of that base. The same holds true to the extent
that the Examiner relies on the connecting member 70. As such, we cannot
sustain the rejection of claims 8, 9, 13, 21-23, and 27.
Claims 4, 5, 11, 12, 24, 25, and 28 as being unpatentable over Gayton and
Laufer
The Examiner relies on Laufer to disclose a bioabsorbable material.
Ans. 5. We agree that Laufer does not cure the deficiencies of Gayton as to
claims 1, 8, 21, and 27 from which claims 4, 5, 11, 12, 24, 25, and 28
depend. App. Br. 25-26. As such, we cannot sustain the rejection of claims
4, 5, 11, 12, 24, 25, and 28.
Claims 4, 5, 11, 12, 17, 18, 24, 25, 28, 29, and 35 as unpatentable over
Johnson and Laufer
The Examiner relies on Laufer to disclose a bioabsorbable material.
Ans. 6. Appellants argue that claims 4, 5, 11, 12, 24, 25, and 28 are
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allowable at least due to their dependency from independent claims that are
allowable for the reasons previously stated in the rejection based on
Johnson. App. Br. 26. This argument is not persuasive as to claims 4, 5, 24,
25, and 35 because we sustain the rejection of claims 1, 21, and 33 from
which these claims depend as anticipated by Johnson but is persuasive as to
claims 11, 12, 17, 18, 28, and 29 because we do not sustain the rejection of
claims 8, 14, and 27 as anticipated by Johnson. Appellants’ argument that
Laufer teaches away because it is required to be very flexible so that it can
be resiliently bent and inserted into a tubular member is not persuasive
because the Examiner relied on Johnson to disclose a rigid driver and Laufer
to disclose a bioabsorbable material. Moreover, we are not persuaded that
Laufer teaches away from the claimed subject matter. See In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004) (reference does not teach away unless prior
art criticizes, discredits, or discourages the claimed solution). As such, we
sustain the rejection of claims 24, 25, and 28.
Claims 20, 26, and 30-32 as unpatentable over Johnson and Chow
The Examiner relied on Chow to disclose sterilizing and storing a
stapler in a sterile container as recited in claims 20, 26, and 30-32. Ans. 6.
Appellants argue that Chow does not cure the deficiencies of Johnson. App.
Br. 26. This argument is persuasive as to claims 20, 30, and 32, which
depend from claims 8, 14, and 27, but not as to claims 26 or 31, which
depend from claims 1 and 21.
DECISION
We AFFIRM the rejections of claims 1-7, 21-26, 31, and 33-38 and
REVERSE the rejections of claims 8-20, 27-30, and 32.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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