Ex Parte Shelton et al

Patent Trial and Appeal Board

Nov 28, 2018

13789194 (P.T.A.B. Nov. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/789, 194 03/07/2013
92223 7590 11/30/2018
K&L Gates LLP-Pittsburgh
210 SIXTH AVENUE
PITTSBURGH, PA 15222-2613
FIRST NAMED INVENTOR
Frederick E. Shelton IV
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. CONFIRMATION NO.
END5773USCNT15/050698CN15 2276
EXAMINER
LOPEZ, MICHELLE
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
11/30/2018 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):
uspatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FREDERICK E. SHEL TON IV, JOHN N. OUWERKERK,
JEROME R. MORGAN and JEFFREY S. SWAYZE 1
Appeal2018-004566
Application 13/789,194
Technology Center 3700
Before DANIEL S. SONG, MICHELLE R. OSINSKI, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Office Action ("Final Act.") rejecting claims 1-20 in the present
application (Br. 13). We have jurisdiction under 35 U.S.C. §§ 6(b) and
134(a).
We AFFIRM-IN-PART.
1 The Appellant is the Applicant, Ethicon LLC, which is identified as the real
party in interest (Appeal Brief ("Br.") 2).
Appeal2018-004566
Application 13/789,194
The claimed invention is directed to a surgical instrument (Title,
Abstract). Independent claims 1 and 13 read as follows (Br. 24, 26, Claims
App'x):
1. A surgical stapling instrument, comprising:
a stapling assembly comprising a first jaw and a second
jaw, wherein said first jaw is movably coupled to said second
Jaw;
a shaft configured to support said stapling assembly;
a firing member configured to transmit a firing motion to
said stapling assembly, wherein said firing member comprises:
a cutting member;
a first camming member configured to engage said
first jaw; and
a second camming member configured to engage
said second jaw;
a closure member configured to transmit a push-to-close
motion to said stapling assembly;
a manually-actuatable closure trigger which is operable to
impart said push-to-close motion to said closure member; and
a motor, wherein said motor is operably coupled to said
firing member to impart said firing motion to said firing member.
13. A surgical stapling instrument, comprising:
a stapling assembly comprising a first jaw and a second
jaw, wherein said first jaw is movably coupled to said second
Jaw;
a shaft configured to support said stapling assembly;
a closure member configured to transmit a cam-to-close
motion to said first jaw;
a firing system configured to transmit a firing motion to
said stapling assembly, wherein said firing system comprises:
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Application 13/789,194
a cutting member; and
camming means for positioning said first jaw
relative to said second jaw after said closure member has
applied said cam-to-close motion to said first jaw;
a closure trigger which is operable to impart said cam-to-
close motion to said closure member; and
a motor, wherein said motor is operably coupled to said
firing member to impart said firing motion to said firing member.
REJECTION
The Examiner rejects claims 1-20 under 35 U.S.C. § I03(a) as
obvious over Green (EP O 484 677 Al, pub. May 13, 1992) in view of Alesi
(US 5,779,130, iss. July 14, 1998) (Final Act 2).
ANALYSIS
The Examiner rejects claims 1-20 as obvious over Green in view of
Alesi (Final Act. 2). The Appellant states that it does not appeal the
rejection of claims 9-12, and requests cancellation of those claims (Br. 13).
These claims have not yet been cancelled by the Examiner. "An appeal,
when taken, is presumed to be taken from the rejection of all claims under
rejection unless cancelled by an amendment filed by the applicant and
entered by the Office." 37 C.F.R. § 41.3 l(c); see also 76 Fed. Reg. 72,271
(Nov. 22, 2011) ("This final rule replaces the Office's procedure under [Ex
parte Ghuman, 88 USPQ2d 1478 (BPAI 2008) (precedential)] and also
simplifies practice for examiners by no longer requiring examiners to cancel
non-appealed claims."); 76 Fed. Reg. 72,280 (Nov. 22, 2011) ("Should an
applicant desire to appeal less than all the rejected claims without actually
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cancelling the claims, applicant may simply say nothing as to the claims
applicant does not wish to appeal and the Board may simply affirm the
rejection of those claims."). Accordingly, we summarily affirm the rejection
of claims 9-12.
As to independent claims 1 and 13, the Examiner rejects these claims,
finding that Green discloses a surgical stapling instrument as claimed, "but
fails to disclose wherein said firing member comprises a first camming
member configured to engage said first jaw and a second camming member
configured to engage said second jaw." (Final Act. 2). The Examiner finds
that "Alesi discloses a powered surgical instrument comprising a firing
member having a cutting member ( 62), a first camming member (102)
configured to engage a first pivotable jaw (64), and a second camming
member ( 106) configured to engage a second jaw ( 44) for the purposes of
maintaining jaw closure during a stapling procedure." (Final Act. 3). The
Examiner concludes that it would have been obvious to one of ordinary skill
in the art to have "provided Green's firing member with camming surfaces
as taught by Alesi in order to maintain a jaw closure during a surgical
procedure." (Final Act. 3).
The Examiner also finds that Green fails to disclose the use of a motor
and a battery to operate the firing trigger, but finds that Alesi discloses such
operation (Final Act. 3). The Examiner concludes that it would have been
obvious to one of ordinary skill in the art "to have provided Green's
instrument with a motor as taught by Alesi in order to control the actuation
of the firing member, as for example self-powering and/or actuating the
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firing member with only minimal physical force by the operator." (Final
Act. 3).
The Appellant argues that claim 1 "recites a closure member which
transmits a push-to-close motion to the stapling assembly and a firing
member which transmits a firing motion to the stapling assembly. Two
different members -two different motions." (Br. 15). The Appellant
points out that in the stapling instrument of Alesi, "[t]he distal advancement
of the camming beam 104 closes the anvil 64 and then fires the staples 48 in
one continuous motion" (Br. 15, citing Alesi, Figs. 1, 6), and that "force
feedback to the clinician's hand" is not provided so that clamping pressure
being applied to the tissue cannot be sensed (Br. 15-16).
These arguments are not entirely persuasive because the Appellant
argues Alesi individually while the rejection is based on the combination of
Green and Alesi. Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references. In re Merck, 800 F.2d 1091, 1097 (Fed. Cir.
1986); In re Keller, 642 F.2d 413,425 (CCPA 1981). As noted by the
Examiner, Green "was cited to show the teaching of a surgical instrument
comprising two actuator, a manually-actuatable closure trigger and a
manually-actuatable firing trigger." (Ans. 2).
The Appellant also points out that Green discloses a manually-
operated closure trigger 602 and a manually operated firing trigger 636, so
that everything is manual and nothing is motorized (Br. 17). The Appellant
argues that Alesi "teaches to motorize every function of the surgical
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instrument, and at no point does Alesi [] remotely stop to suggest that it
might be good to motorize some functions, but not others." (Br. 16).
Accordingly, the Appellant argues that Green and Alesi "disclose all-or-
nothing propositions and nothing in-between," so there would not have been
motivation to motorize the staple firing system of Green, but not its tissue
clamping system when Alesi teaches to motorize both functions (Br. 17).
The Appellant also points out that Alesi was filed after Green, and Alesi
further teaches combining the tissue clamping and staple firing functions
into one continuous stroke or motion (Br. 18). The Appellant concludes that
Alesi "is clearly headed in a different direction," and that the time lapse
between the claimed invention and the prior art is evidence of non-
obviousness (Br. 18-19, citing Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d
1346, 1353 (Fed. Cir. 2013)).
We find these arguments of the Appellant persuasive. Mere age of the
references is not dispositive. In re Wright, 569 F.2d 1124, 1127 (CCPA
1977); see also Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1338 (Fed. Cir.
2016). However, "an invention can often be the recognition of a problem
itself." Leo Pharm., 726 F.3d at 1353 (citing Cardiac Pacemakers, Inc. v.
St. Jude Med., Inc., 381 F.3d 1371, 1377 (Fed. Cir. 2004) ("There can of
course arise situations wherein identification of the problem is itself the
invention.")). As explained by the court in a later decision, Leo "hinged on
the fact that nothing in the cited prior art appreciated the problem the
invention recognized and then solved." Nike, 812 F.3d at 1338. By
providing a manually-actuatable closure trigger, the Appellant appears to
have recognized a problem, and provided a solution (see e.g., Spec. ,r,r 6, 49).
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The Examiner's responses are problematic. In particular, the
Examiner acknowledges that "Alesi's device operates differently, i.e.
motorize both clamping and firing systems," but explains that Alesi was
"relied upon to show the use of a motorized firing trigger" (Ans. 2), and that
"Alesi is merely cited to modified [sic] Green's manual firing trigger for a
motorized one rather than substituting Green'[s] firing system (i.e. cam bars
131 and knife 132) for Alesi'[s] dynamic c[]amming member 100." (Ans.
3). However, in the Final Office Action, the Examiner found that Green
fails to disclose the recited first and second camming members that engage
first and second jaws, respectively (Final Act. 3). Accordingly, the
explanation in the Answer is inconsistent with the actual rejection set forth
in the Final Office Action, making the rejection unclear.
The Examiner also responds that it would have been obvious to
motorize the firing trigger of Green "in order to enhance the control and
operation of the firing trigger such as reducing the physical force applied by
the operator," and that "providing a mechanical or automatic means to
replace manual activity which has accomplished the same result involves
only routine skill in the art. In re Venner, 120 USPQ 199." (Ans. 3). While
that may address the desirability of using a motor as to the firing member of
Green, that does not address why a person of ordinary skill in the art would
not have used the same motor for clamping the jaws as disclosed in Alesi.
Alesi, which is relied upon by the Examiner, appears to indicate that the art
developed in that direction wherein the motor actuates the jaws as well as
the firing member in a continuous stroke or motion. In that regard, in
considering obviousness, the entirety of Alesi must be considered for all that
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it teaches to one of ordinary skill. In re Wesslau, 353 F.2d 238, 241 (CCPA
1965) ("It is impermissible within the framework of section 103 to pick and
choose from any one reference only so much of it as will support a given
position, to the exclusion of other parts necessary to the full appreciation of
what such reference fairly suggests to one of ordinary skill in the art."). The
Examiner does not direct us to any evidence, or provide any rational basis,
establishing that it was known or desirable to maintain a manually actuatable
closure trigger while motorizing firing of the staple. Therefore, in view of
the above considerations, we reverse the Examiner's rejection of claim 1,
and claims 2-8 that depend from claim 1.
The Appellant argues that independent claim 13 is patentable for
similar reasons as to claim 1, and that Alesi "fails to disclose a closure
system including a closure trigger which is operable to impart a cam-to-close
motion to a closure member which is separate and distinct from a staple
firing system configured to perform a staple firing motion." (Br. 21 ). It is
apparent from the Examiner's rejection based on the combination of Green
and Alesi, and the Appellant's arguments, that both the Examiner and the
Appellant interpret claim 13 as requiring the "cam-to-close motion" to be
imparted by manual actuation of the "closure trigger" in the manner recited
in claim 1. In that regard, the Appellant argues that neither Alesi nor Green
"provides an apparent reason for only motorizing the Green [] staple firing
system while leaving the closure system configured to manually generate
and impart a cam-to-close motion to an openjaw." (Br. 21). This
interpretation is consistent with the disclosure in the Specification, which
only discloses manually actuated closure trigger which generates the closure
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motion (Spec. ,r,r 60-61 ). As such, we do not disturb the interpretation of
claim 13.
That said, the rejection of claim 13 is deficient for the reasons
discussed above relative to claim 1. Accordingly, we also reverse this
rejection as to claim 13 and claims 14--20 that depend from claim 13.
While the Appellant's reliance on the Declaration of Mr. Shelton, IV
in asserting commercial success of the claimed invention (Br. 19-20) is
unpersuasive, it is nonetheless immaterial in view of the above reversal.
CONCLUSION
1. The Examiner's rejection of claims 9-12 is summarily
AFFIRMED.
2. The Examiner's rejection of claims 1-8 and 13-20 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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