Ex Parte Shelton et al

Patent Trial and Appeal Board

Mar 12, 2013

11652169 (P.T.A.B. Mar. 12, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte FREDERICK E. SHELTON IV and JEROME R. MORGAN
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Appeal 2011-000340
Application 11/652,169
Technology Center 3700
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Before GAY ANN SPAHN, MICHAEL C. ASTORINO, and
WILLIAM A. CAPP, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Frederick E. Shelton IV and Jerome R. Morgan (Appellants) seek our
review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 1-4, 6,
9, 11-16, and 21-29. Appellants cancelled claims 5, 7, 8, 10, and 17-20. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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Claimed Subject Matter
The claimed subject matter relates to a surgical stapler and to a staple
cartridge therefor. Spec. 4, para. [0005]. Claims 1, 11, 13, and 21 are the
independent claims on appeal. Claim 1, reproduced below, is illustrative of
the appealed subject matter.
1. A surgical stapler, comprising:
a channel configured to receive a staple
cartridge, the staple cartridge configured to
removably store staples therein;
an anvil operably coupled to said channel
and being selectively movable between open and
closed positions upon application of opening and
closing motions thereto, wherein said anvil is
configured to deform said staples, and wherein one
of said anvil and the staple cartridge defines a
curved slot;
a curved cutting member operably supported
in said curved slot and being selectively movable
from a proximal end of said curved slot to a distal
end of said curved slot upon application of a drive
motion thereto, wherein said curved slot is
configured to guide said curved cutting member as
it is driven from said proximal end to said distal
end of said curved slot, wherein said curved slot is
defined by at least one radius of curvature, and
wherein at least a portion of said curved cutting
member is predefined by a radius of curvature
which is substantially equal to said radius of
curvature of said curved slot.

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Rejections
The following Examiner’s rejections are before us for review:
I. Claims 1-4, 6, 9, 11-16, 21, and 23-29 are rejected under 35
U.S.C. § 102(b) as anticipated by Green (US 5,379,933, issued Jan. 10,
1995); and
II. claims 22 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Green.

OPINION
Rejection I – Anticipation based on Green
Appellants grouped claims 1-4, 6, 9, 11-16, and 24-29 together. See
Br. 14. Under this grouping, Appellants argued: claims 1 and 13 together
(Br. 15-16); claim 11 separately (Br. 16-17); claims 1, 11, and 13 together
(Br. 17-19); claim 9 separately (Br. 19-20); claims 21 and 23 together (Br.
20-21); and claim 22 separately (Br. 22).
We select independent claim 1 as the representative claim of claims 1-
4, 6, and 13-16. See also 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims 2-4, 6,
and 13-16 fall with claim 1.
We select independent claim 11 as the representative claim of claims
11, 12, 26, and 27. Claims 12, 26, and 27 fall with claim 11.
We select independent claim 21 as the representative claim of claims
21 and 23. Claim 23 falls with claim 21.
We address claims 9 and 22 individually infra.

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Independent claims 1 and 13 and dependent claims 2-4, 6, and 14-16
The Examiner finds Green discloses a surgical stapler including, inter
alia, a staple cartridge 16 that defines a curved slot (between 16a-16b)
“configured to guide said curved cutting member [35, 32] as it is driven
from said proximal end to said distal end of said curved slot.” Ans. 3-4
(citing Green, col. 7, ll. 25-28).
Appellants argue that “no teaching can be found in Green . . . of a
curved slot in an anvil or a staple cartridge that guides a cutting member
along a curved path as the cutting member is driven from one end to the
other of the slot.” Br. 15. More particularly, Appellants argue that
“[a]ssuming that the Examiner is referring to a slot along the midline of
cartridge 16 in Figs. 16-17, it appears that gaps are visible between knife bar
32 and the cartridge 16,” and “[i]n view of such gaps and the absence of any
teaching from Green . . . to the contrary, Green . . . does not disclose knife
bar 32 as being guided by a slot.” Br. 15-16. Appellants particularly point
out Green’s disclosure that “‘[i]nwardly extending flanges 30c, 50c extend
toward each other across the opening defined by the sidewalls, leaving a
narrow gap 30d, 50d (FIG. 16) midway between the flanges as shown,’” and
“[o]wing to the apparent gaps between knife bar 32 and the surrounding
components as described by Green . . . , one is lead to conclude the Green . .
. does not teach a staple cartridge or an anvil include a curved slot that is
‘configured to guide said cutting member as it is driven from said proximal
end to said distal end of said slot’ as recited in Claims 1 and 13.” Br. 16
(quoting Green, col. 10, ll. 27-30).
We are not persuaded by Appellants’ argument. The fact that Green’s
slot, as shown in Figures 16 and 17, has gaps between the slot sidewalls and
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the sidewalls of the knife bar 32 is not dispositive as to whether the slot is
configured to guide a curved cutting member as it is driven from a proximal
end to a distal end of the curved slot. Indeed, as shown in Appellants’
Figure 24, the curved slot 264 has curved, nonplanar surfaces 266, 268 with
gaps between the cutting member 120 and the surfaces 266, 268 configured
to guide the cutting member 120. Moreover, the claim language only
requires that the curved slot be “configured to guide said curved cutting
member as it is driven from said proximal end to said distal end of said
curved slot,” and this language does not require that the slot sidewalls touch
the curved cutting member in order to guide it.
Appellants also argue that Green teaches away from a staple cartridge
with a slot configured to guide a cutting member because it discloses that
molded plastic guide insert 33, disposed in the fastener channel 20, has
guide channels 33a-c for the cam bars 34, 36 and knife bar 32. The question
of whether a prior art reference “teaches away” from the claimed subject
matter is irrelevant to an anticipation analysis. See Celeritas Technologies
Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998) (“A
reference is no less anticipatory if, after disclosing the invention, the
reference then disparages it. Thus, the question whether a reference ‘teaches
away’ from the invention is inapplicable to an anticipation analysis.”)
(Citations omitted).
As Appellants have failed to apprise us of error in the Examiner’s
finding that Green’s curved slot is configured to guide its curved cutting
member, we sustain the Examiner’s rejection of independent claim 1, and
claims 2-4, 6, and 13-16 which fall therewith, under 35 U.S.C. § 102(b) as
anticipated by Green.
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Dependent claim 9
Claim 9 depends from claim 1 and recites “wherein said curved slot
includes an inner arcuate sidewall and an outer arcuate sidewall, wherein
said inner arcuate and outer arcuate sidewalls are configured to guide said
curved cutting member.” Br., Clms. App’x.
The Examiner finds that “the opposite sidewalls of Green’s curved
slot (as shown in figs. 3 and 16-17) provide inner arcuate and outer arcuate
sidewalls configured to guide the cutting member, i.e.[,] configured to move
said cutting member along the slot curved path.” Ans. 5.
Appellants argue that Green “simply does not disclose or suggest a
curved slot within an anvil or staple cartridge, let alone arcuate sidewalls of
a curved slot, that are configured to guide a curved cutting member.” Br. 20.
For the same reasons as discussed supra with respect to claim 1, that
there are gaps between the inner and outer arcuate sidewalls and the cutting
member is not dispositive as to whether the inner and outer arcuate sidewalls
are configured to guide a curved cutting member.
Accordingly, we sustain the Examiner’s rejection of claim 9 under 35
U.S.C. § 102(b) as anticipated by Green.
Independent claim 11 and dependent claims 12, 26, and 27
Claim 11 is directed to a staple cartridge including, inter alia, “a
curved slot configured to guide at least a portion of said curved staple driver
when said curved staple driver is moved from a proximal position within
said curved slot to a distal position within said curved slot.” Br., Clms.
App’x.
In addition to the finding discussed supra with respect to claims 1 and
13, the Examiner also finds that “Green discloses a curved staple driver (34,
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36) operably engaged with the curved cutting member via (38).” Ans. 4
(citing Green, col. 7, ll. 41-51).
Appellants argue that “[n]o evidence is proffered explaining how
Green . . . teaches a staple cartridge having a “curved slot configured to
guide at least a portion of the curved staple driver,” because “[t]he figures of
Green . . . to which the Examiner points, e.g., Figs. 3 and 23, and the
corresponding text, do not appear to show or describe a staple cartridge
having a slot configured to guide at least a portion of a staple driver.” Br.
17.
However, the Examiner relies on the finding made in support of claim
1 (Ans. 3-4) in addition to the findings made in support of claim 11 (Ans. 4).
For claim 1, the Examiner pointed to Figures 16 and 17 as showing a curved
slot. This along with the Examiner’s pointing out that the curved staple
driver (cam plates 34, 36) are operatively engaged with the curved cutting
member (knife 35 and knife edge 32) via bar retainer 38 is sufficient to
apprise one of ordinary skill in the art that Examiner considers the curved
slots within which the cam bars 34, 36 move as shown in Figures 16 and 17
to satisfy the claim language of a curved slot within the staple cartridge 16
which is configured to guide at least a portion of said curved staple driver.
Thus, we are not persuaded that the Examiner provided no evidence as
argued by Appellants.
Appellants also argue “assuming that the Examiner is referring to the
general components surrounding cam bars 34 and 36 of Green . . . seen in
Fig. 17, there appear to be gaps between the cam bars 34 and 36 and the
surrounding cartridge components,” which would lead one to conclude that
Green “does not teach a staple cartridge including ‘a curved slot configured
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to guide at least a portion of the curved staple driver’ as claimed in Claim
11.” Br. 17 (emphasis omitted). We are not persuaded by Appellants’
arguments because there does not appear to be any gap between the driver
(cam bars 34, 36) and the curved slot in which the driver (cam bars 34, 36)
moves. See Green, Fig. 17. However, even if there is a gap between the
driver (cam bars 34, 36) and the curved slot in which the driver (cam bars
34, 36) moves, for the same reasons as discussed supra with respect to claim
1, we do not agree that a gap is dispositive as to whether the curved slot is
configured to guide the driver.
Appellants make a similar teaching away argument with respect to the
subject matter of claim 11 as discussed supra with regard to the rejection of
claim 1; however, for the same reasons as discussed supra with respect to
claim 1, we are not persuaded of error in the Examiner’s rejection of claim
11.
Accordingly, we sustain the Examiner’s rejection of independent
claim 11, and claim 12, 26, and 27 which fall therewith, under 35 U.S.C.
§ 102(b) as anticipated by Green.
Independent claim 21 and dependent claim 23
Claim 21 is directed to a surgical stapler including, inter alia, a
“curved staple driver including at least one curved ramp including a curved
staple driving surface.” Br., Clms. App’x.
The Examiner finds that “Green shows a curved staple driver
including at least one curved ramp via curved bars (34, 36) having curved
staple driving surfaces at their respective distal ends.” Ans. 5.
Appellants argue that Green “does not teach a curved staple driver
including at least one curved ramp including a curved staple driving
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surface as recited in Independent Claim 21,” because “surface 63 of cam bar
34 appears to be linear and not curved” and Green only discloses that the
cam bars 34, 36 have sloped surfaces, but “does not indicate that the sloped
surface 63 is curved.” Br. 21.
We are not persuaded by Appellants’ arguments as Green’s ramps
(sloped surfaces at end of cam bars 34, 36) are curved in the same way that
Appellants’ ramps 276 are curved. See Spec. 14-15, para. [0018] and Fig.
17. More particularly, Figure 17 depicts ramps 276 as having sloped, flat
surfaces, but the vertical sidewalls leading to the slope, flat surfaces of the
ramps 276 are curved at the same radius of curvature of the path 258. Id.
Referring to Green’s Figure 3, it can be seen that in the same way that
Appellants’ ramps 276 are curved (i.e., by having curved, vertical sidewalls
leading to the sloped, flat surfaces), Green’s ramps are defined by sloped,
flat ramp surfaces which are adjacent vertical, curved sidewalls.
Accordingly, we sustain the Examiner’s rejection of independent
claim 21, and claim 23 which falls therewith, under 35 U.S.C. § 102(b) as
anticipated by Green.

Rejection II – Obviousness based on Green
Claim 22 depends from claim 21. Br., Clms. App’x. For claim 22,
Appellants rely on the arguments as set forth for claim 21. Br. 22. As
discussed supra, those arguments are not persuasive. Additionally,
Appellants respectfully submit that “Green ʼ933 does not disclose or suggest
all of the recited elements of Claim 22.” Id. This submission by the
Appellants does not point out any Examiner error.
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Accordingly, we sustain the Examiner’s rejection of claim 22 under
35 U.S.C. § 103(a) as unpatentable over Green.

DECISION
We affirm the Examiner’s decision to reject claims 1-4, 6, 9, 11-16,
and 21-29.
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)(1)(iv).

AFFIRMED

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