Ex Parte Shelton et al

Patent Trial and Appeal Board

Mar 11, 2013

11652166 (P.T.A.B. Mar. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FREDERICK E. SHELTON IV and JEROME R. MORGAN
____________

Appeal 2011-000266
Application 11/652,166
Technology Center 3700
____________

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 11, 12,
and 21-27 under 35 U.S.C. § 102(b) as anticipated by Tsuruta (US
5,582,611, issued Dec. 10, 1996). Appellants cancelled claims 1-10 and 13-
20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2011-000266
Application 11/652,166

2
CLAIMED SUBJECT MATTER
The claimed subject matter relates to a staple cartridge for a surgical
stapler. Spec. 4, para. [0005]. Claims 11, 26, and 27 are the independent
claims on appeal. Claim 11, reproduced below, with emphasis added, is
illustrative of the appealed subject matter.
11. A staple cartridge, comprising:
a first cavity configured to receive a first staple;
a second cavity configured to receive a second staple;
a third cavity configured to receive a third staple,
wherein said first cavity, said second cavity, and said third
cavity define a curved staple path;
a staple driver relatively movable along a curved driver
path that matches said curved staple path, wherein said staple
driver comprises at least one ramp including a staple driving
surface, wherein said staple driving surface is configured to
deploy said staples from said cavities when said staple driver is
moved along said curved driver path; and
a curved slot configured to receive at least a portion of a
drive bar operably engaged with said staple driver, said curved
slot including first and second curved, nonplanar surfaces
configured to support said drive bar as said drive bar moves
said staple driver along said curved driver path.

OPINION
Independent claim 11 and dependent claims 21, 23, and 24
Appellants argue claims 11, 12, 21-25, and 27 as a group, but provide
further arguments for claims 12, 22, 25, 26, and 27. See Br. 14-25. We will
treat claims 11, 21, 23, and 24 as a group and we select independent claim
11 as the representative claim. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Claims 21, 23, and 24 fall with claim 11.
The Examiner finds that Tsuruta discloses a staple cartridge 2
including, inter alia, “a staple driver (24) relatively movable along a curved
Appeal 2011-000266
Application 11/652,166

3
driver path (i.e.[,] an inner curved cavity within the cartridge 3) that matches
said curved staple path.” Ans. 4 (citing Tsuruta, figs. 2 and 7-9).
Although Appellants admit that Tsuruta’s staple cartridge 3 discloses
a curved staple path, they argue that Tsuruta “fails to disclose a curved
driver path which matches the curved staple path,” because it “is unclear as
to the configuration of the drive bar used to deploy the staples from staple
cartridge 3.” Br. 15. Appellants maintain that “the pusher plates 24 appear
straight, or linear, and, if any were to be inserted into staple cartridge 3,
without more, they would be unable to follow along the curved staple path
of cartridge 3.” Id. Appellants also maintain that Figure 8 of Tsuruta
“discloses that the pusher plates 24 would travel within the space defined
between the interior walls of cartridge 3, i.e., the ‘plate-guiding grooves
23,’” and because Tsuruta “fails to disclose the distance between and/or
configuration of grooves 23, or whether such grooves 23 are aligned with the
staple pushers 21a,” “there is no structure to cause pusher plates 24 to
remain appropriately aligned with the staple path.” Br. 15-16.
Appellants’ Specification does not assign or suggest a particular
definition to the claim term “matches.” Therefore, we consult a general
dictionary for the ordinary and customary meaning of the verb “matches,”
namely “to be the counterpart of.” MERRIAM-WEBSTER’S COLLEGIATE®
DICTIONARY (10th ed. 1997); see also Comaper Corp. v. Antec, Inc., 596
F.3d 1343, 1348 (Fed. Cir. 2010) (If the specification does not assign or
suggest a particular definition to a claim term, it is appropriate to consult a
general dictionary definition of the word for guidance in determining the
ordinary and customary meaning of the claim term as viewed by a person of
ordinary skill in the art.).
Appeal 2011-000266
Application 11/652,166

4
As noted by the Examiner, Tsuruta specifically describes “[a] pair of
plate-guiding grooves 23 extend[ing] within the cartridge 3, along the
curving axis thereof,” and “[a] pair of pusher plates 24 [that] can be moved
back and forth along the plate-guiding grooves 23.” Tsuruta, col. 8, ll. 51-
55; see Ans. 6-7. A person of ordinary skill in the art would understand
from this disclosure of Tsuruta that the staple drivers (pusher plates 24) are
relatively movable along a curved driver path (the centerline of the plate-
guiding grooves 23) within the staple cartridge 3 and the curved driver path
is the counterpart of or matches the curved staple path (path of slits 21). In
other words, in order for the staple driver (pusher plates 24) to push up the
staples 22 in the manner shown in Tsuruta’s Figure 8, the curved driver path
23 is the counterpart of or matches the curved staple path, otherwise the
staples 22 would not be pushed up into the shallow grooves 25 in the anvil 4.
Thus, the sidewalls of Tsuruta’s plate-guiding grooves 23 provide the
structure for the pusher plates 24 to follow along the curved staple path of
cartridge 3 so that we are not persuaded of Examiner error by Appellants’
arguments.
The Examiner also finds Tsuruta discloses that the “curved slot (23)
includ[es] first and second curved non-planar surfaces (i.e.[,] curved
sidewalls) projecting upwardly from the cartridge bottom surface . . .
configured to support said drive bar as said drive bar moves said staple
driver along said curved driver path.” Ans. 4 (citing Tsuruta, col. 8, ll. 52-
55 and fig. 7).
Appellants argue that Tsuruta “fails to disclose a staple cartridge
including a curved slot with curved, nonplanar surfaces configured to
support a drive bar as the drive bar moves the staple driver along the
Appeal 2011-000266
Application 11/652,166

5
curved driver path which matches the curved staple path,” because “it
appears [that] the element 23 [of Tsuruta’s Figure 8] only corresponds to the
interior surfaces of the cartridge 3,” and “element 23 does not include
curved, nonplanar surfaces configured to support a drive bar as the drive
bar moves the staple driver along the curved drive path which matches the
curved staple path.” Br. 16. Rather, Appellants interpret “‘groove’ 23 [as]
appear[ing] to be nothing more than the interior walls or cavity of cartridge 3
in which both pusher plates 24 and wire cutter 20 move” since “it is
“believed that the dotted line near the bottom of Tsuruta[’s] . . . FIG. 8
represents the cutter-guiding groove 18, which does not support a staple
driver’s drive bar either.” Br. 16-17.
As depicted in Tsuruta’s Figure 7, the slots or plate-guiding grooves
(unnumbered, but what the bottom of pusher plates 24 are seated in) have
surfaces configured to support the drive bars or pusher plates 24. While
Figure 7 is a cross-section of the distal end of the insertion section 2, one of
ordinary skill in the art would ascertain from Tsuruta’s disclosure in Figure
8 that the slots or plate-guiding grooves 23 continue in the cartridge 3 as is
consistent with Tsuruta’s disclosure at column 8, lines 51-54 pointed to the
by the Examiner and quoted supra. In our opinion, the dashed line at the
bottom of the cartridge 3 in Figure 8 represents the outline of the slots or
plate-guiding grooves 23, not the cutter-guiding groove 18 as suggested by
Appellants and the lead line ending in an arrow and leading from reference
numeral 23 was simply drawn to the wrong structure, i.e., the lead line
should have been drawn to point to the dashed lines at the bottom of the
cartridge 3. Tsuruta’s statement that the plate-guiding grooves 23 extend
within the cartridge 3 along the curving axis of the cartridge 3 supports that
Appeal 2011-000266
Application 11/652,166

6
the surfaces shown in cross-section in Figure 7 become curved and
nonplanar as the plate-guiding grooves 23 continue from the insertion
section 2 into the cartridge 3. Therefore, we again are not persuaded of
Examiner error by Appellants’ arguments.
Accordingly, we sustain the Examiner’s rejection of independent
claim 11, and dependent claims 21, 23, and 24 which fall therewith, under
35 U.S.C. § 102(b) as anticipated by Tsuruta.
Dependent claim 12
Claim 12 depends from claim 11 and calls for the curved slot to
include first and second projections extending from the first and second
curved, nonplanar surfaces, respectively, the first and second projections
defining a curved path for the drive bar. See Br., Clms. App’x.
The Examiner finds that “Tsuruta’s curved slot (23) include[s] first
and second projections (at the vicinity of 30 which is flush with respect to
the groove 23, thus providing the claimed projections.” Ans. 5 (citing
Tsuruta, col. 9, ll. 11-17, and fig. 7).
Appellants argue, and we agree, that Tsuruta “does not show a curved
slot configured to receive a portion of a drive bar as having projections
extending from the curved, nonplanar surfaces of the slot.” Br. 19. The
portion of Tsuruta relied upon by the Examiner does not disclose or suggest
any evidence of first and second projections extending from the first and
second curved, nonplanar surfaces of the curved slots (plate-guiding grooves
23).
Accordingly, we do not sustain the Examiner’s rejection of claim 12
under 35 U.S.C. § 102(b) as anticipated by Tsuruta.

Appeal 2011-000266
Application 11/652,166

7
Dependent claim 22
Claim 22 depends from claim 11 and recites that “said curved slot
defines a curved slot path including more than one radius of curvature.” Br.,
Clms. App’x.
The Examiner finds that “Tsuruta shows a curved cartridge (3)
including an inner radius of curvature and an outer radius of curvature,
wherein the slots (23) extend along said curved cartridge,” and “[t]herefore,
the curved slots (23) define a path conforming the curvature and/or radius of
the cartridge.” Ans. 5.
Appellants argue, and we agree, that “[w]hile ‘slot’ 23 does, in fact,
have two walls, it does not define two paths, or two portions of a path,
having a first radius of curvature and then a second radius of curvature,” and
“[t]he curved slot path of Claim 22 is directed to a curved line having at least
two radii of curvature, which is simply not disclosed by Tsuruta . . . , as
suggested by the Examiner.” Br. 20.
Accordingly, we do not sustain the Examiner’s rejection of claim 22
under 35 U.S.C. § 102(b) as anticipated by Tsuruta.
Dependent claim 25
Claim 25 depends from claim 11 and recites that “at least a portion of
said cutting member is curved to substantially match a curved slot path
defined by said curved slot.” Br., Clms. App’x.
The Examiner finds that Tsuruta “discloses wherein a portion of the
cutting member (i.e.[,] the staple driver 24 which is fastened to cutting
surface 20 . . . ) is curved to substantially match a curved slot path defined
by slots (23).” Ans. 6.
Appeal 2011-000266
Application 11/652,166

8
Appellants argue that “[t]he applicable cutting member of Tsuruta . . .
is a wire, i.e., wire-cutter 20 (see col. 8, lines 31-38), and Tsuruta . . . does
not disclose whether wire-cutter 20 bends or curves during operation. Br.
20-21. More particularly, Appellants note that “because wire-cutter 20 is a
wire, it can move, without bending, along the curved slot of Tsuruta.” Br.
21.
The Examiner’s finding that staple driver 24 is fastened to the cutting
surface 20 and constitutes the portion of the cutting member that is curved to
substantially match a curved slot path of the curved slot is not supported by
Tsuruta. Tsuruta never discloses that the pusher plates 24 and the wire-
cutter 20 are fastened to one another. Rather, Tsuruta discloses that “[t]he
wire-cutter 20 and the cutter holder 28 constitute a knife unit 29” and “[t]he
cutter holder 28 has two wire-holding projections protruding from its distal-
end face and spaced apart from each other,” wherein “[t]he wire-cutter 20,
which is a wire, is stretched vertically between the wire-holding projections
of the holder 28.” Tsuruta, col. 9, ll. 4-10. Accordingly, the Examiner has
failed to establish a prima facie case of anticipation with respect to claim 25
because the Examiner’s finding that “staple driver 24 . . . is fastened to
cutting surface 20” is in error.
Accordingly, we do not sustain the Examiner’s rejection of claim 25
under 35 U.S.C. § 102(b) as anticipated by Tsuruta.
Independent claim 26
Claim 26 is directed to a staple cartridge including, inter alia, “a
curved slot . . . , said curved slot including buckling prevention means for
preventing said drive bar from buckling as said drive bar moves said staple
driver along said curved driver path.” Br., Clms. App’x.
Appeal 2011-000266
Application 11/652,166

9
The Examiner finds that “Tsuruta’s curved sidewalls of slot (23)
prevent the driver bar attached to the staple driver (24) from buckling (e.g.[,]
bend[ing] to a side) as said drive bar moves said staple driver (24) along said
curved driver path.” Ans. 6.
Appellants argue that Tsuruta “fails to disclose or suggest buckling
prevention means for preventing a drive bar from buckling as the drive
bar moves the staple driver along the curved driver path,” because
Tsuruta’s Figure 8 “shows pusher plates 24 as residing within elongated
cavity or groove 23, with no apparent means for supporting the plates 24
laterally (i.e., in and out of the plane of the page of FIG. 8) such that they
remain aligned with the curved staple path of staple cartridge 3.” Br. 24.
In order for a prior art element to meet a section 112, paragraph 6
means-plus-function limitation, the prior art element must either be the same
as the disclosed structure or be a section 112, paragraph 6 equivalent. In re
Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994). Two structures may
be “equivalent” for purposes of section 112, paragraph 6 if they perform the
identical function, in substantially the same way, with substantially the same
result. Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1364 (Fed.
Cir. 2000).
The Specification identifies curved, nonplanar surfaces 266, 268 of
slot 264 as supporting the drive bar 226 to prevent it from buckling in the
event that it is overloaded. Spec. 18, para. [0024]. As depicted in Figure 25,
it appears that buckling is prevented because the curved, nonplanar surfaces
266, 268 of slot 264 extend along substantially the entire central portion of
the side walls of the drive bar 226 in order to prevent lateral movement of
the drive bar 226.
Appeal 2011-000266
Application 11/652,166

10
The Examiner indicates that:
the structure of slots (23) having curved non-planar surfaces
and/or sidewalls (at the vicinity of flush portions 30; as shown
in fig. 7) is equivalent to the claimed non-planar surfaces. Note
that the sidewalls of curved slots (23) extend along the curving
axis of the cartridge (3; col. 8, l[l.] 51-55), thus, conforming the
curvature of said cartridge, wherein said extension of the slots
along the curving axis of the cartridge provides the curved
nonplanar sidewalls of the slots (23) for preventing the drive
bar (24) from buckling.
Ans. 7-8.
The Examiner also indicates that “Tsuruta’s curved slots (23)
perform[] the same function as claimed by guiding the movement of the
drive bar (24) along the curving axis of the slots (23; col. 8, l[l.] 51-55),
which . . . is the identical function[] as claimed.” Ans. 9.
Although it appears that Tsuruta’s plate-guiding grooves 23 do have
short sidewalls to guide pusher plates 24 in movement, it is speculative that
the short sidewalls would be capable of performing the identical function of
preventing buckling as the drive bar moves the staple driver along the
curved driver path that is performed by the present application’s buckling
prevention means.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 26 under 35 U.S.C. § 102(b) as anticipated by Tsuruata.
Independent claim 27
Claim 27 is directed to a staple cartridge including, inter alia, a
curved slot defining a curved slot path, wherein said slot path includes: a
first segment defined by at least one of a first line and a first curve; and
a second segment defined by at least one of a second line and a second
Appeal 2011-000266
Application 11/652,166

11
curve, wherein said first line is different than said second line, and wherein
said first curve is different than said second curve. See Br., Clms. App’x.
The Examiner finds that Tsuruta discloses:
the slot path of curved slot (23; which extends along the
curving axis of the cartridge; col. 8, lines 51-55) is defined by a
curve of about 90° with respect to an elongated shaft (2),
wherein said curvature of the slot includes a first segment
defined by a first line (at the vicinity of 16) and a first curve
(before a middle portion of the end effector; as best shown in
fig. 3), and a second segment defined by a second line (at the
distal end of slot 18) and a second curve (after the middle
portion of the end effector).
Ans. 6.
Appellants argue that Tsuruta “does not teach that the curvature
should have two segments, where one of the segments is a line or a curve
and the other segment is a different line or a different curve.” Br. 21.
Appellants also argue that the Examiner has not met the burden of proof of
establishing that a drive bar slot path has at least two different segments as
recited because the Examiner is relying solely on the drawings and there is
no indication that the drawings of Tsuruta are to scale. Br. 22-23.
The Examiner responds that Tsuruta discloses
the proximal end of the end effector (5), indeed, provides a first
segment defined by a first line (at the vicinity of 16) and a first
curve (before a middle portion of the end effector; as best
shown in fig. 3), and a second segment defined by a second line
(at the distal end of slot 18) and a second curve (after the
middle portion of the end effector).
Ans. 8.
App
App

inclu
mad
Tsur
lines

proo
segm
Figu
bar s
anno
Mor
findi
line
seco

unde

eal 2011-0
lication 11
The Exa
Figure 2
ding a dis
e up of a c
uta’s Figu
, a first inn
We agre
f of establ
ents as re
re 2, and w
lot path in
tation “Fir
eover, ann
ng that Ts
and a first
nd line and
Accordin
r 35 U.S.C
We affir
00266
/652,166
miner’s an
of Tsuruta
tal end of
artridge 3
re 2 to sho
er curve,
e with App
ishing that
cited. The
e cannot t
cludes a st
st line” po
otated Figu
uruta discl
curve and
a second
gly, we d
. § 102(b)
m the Exa
notated Fi
depicts a
the insertio
and an anv
w that the
and a seco
ellants th
a drive ba
Examiner
ell from T
raight line
inting to t
re 2 does
oses a firs
a second s
curve.
o not susta
as anticip
DE
miner’s de
12
gure 2 of
n exploded
n section
il 4. The
cartridge 3
nd outer c
at the Exam
r slot path
is relying
suruta’s F
as sugges
he proxim
not suffic
t segment
egment de
in the Exa
ated by Ts
CISION
cision to r
Tsuruta is
view of t
2 and the
Examiner
includes
urve.
iner has
has at lea
solely on
igure 2 wh
ted by the
al end of T
iently supp
defined by
fined by a
miner’s re
uruta.
eject claim
reproduce
he surgica
stapling m
has annota
first and s
not met th
st two diff
Tsuruta’s
ether Tsu
Examiner
suruta’s c
ort the Ex
at least o
t least one
jection of
s 11, 21,
d below:
l stapler
ember 5
ted
econd
e burden o
erent
drawing
ruta’s driv
’s
artridge 3
aminer’s
ne of a firs
of a
claim 27
23, and 24

f
e
.
t
.
Appeal 2011-000266
Application 11/652,166

13
We reverse the Examiner’s decision to reject claims 12, 22, and 25-
27.
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-IN-PART

mls