Ex Parte Soltz et alDownload PDFPatent Trial and Appeal BoardSep 26, 201611408492 (P.T.A.B. Sep. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111408,492 04/21/2006 50855 7590 09/28/2016 Covidien LP 555 Long Wharf Drive Mail Stop SN-I, Legal Department New Haven, CT 06511 FIRST NAMED INVENTOR Michael A. Soltz 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. H-US-00551 (203-4980) 9531 EXAMINER EISEMAN, ADAM JARED ART UNIT PAPER NUMBER 3736 NOTIFICATION DATE DELIVERY MODE 09/28/2016 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 MICHAEL A. SOLTZ, MEGAN L. PROMMERSBERGER, and JOSHUA STOPEK Appeal2015-000033 1 Application 11/408,4922 Technology Center 3700 Before PHILIP J. HOFFMANN, JAMES A. WORTH, and TARA L. HUTCHINGS, Administrative Patent Judges. WORTH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Final rejection of claims 1-3, 5-7, 9, 11-13, and 29-34. We have jurisdiction under 35 U.S.C. §§ 134 and 6(b ). We REVERSE. 1 Our decision refers to the Appellants' Appeal Brief ("Br.," filed June 4, 2014), and the Examiner's Final Office Action ("Final Act.," mailed Feb. 12, 2014) and Answer ("Ans.," mailed July 17, 2014). 2 According to Appellants, the real party in interest is Covidien LP (Br. 3). Appeal2015-000033 Application 11/408,492 Introduction Appellants' disclosure relates to "surgical stapling devices and sutures and, in particular, a buttress device used in connection or in combination with a surgical instrument for ensuring that an optimal amount of tissue compression is applied to tissue for an optimal formation of staples and sutures." (Spec. 1, 11. 18-21 ). Claims 1, 11, and 29 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal: 1. A surgical indicator to indicate proper formation of a surgical element comprising: a surgical buttress having a substrate made from a biocompatible material that is configured to be fixed to tissue by the surgical element, the substrate having a modulating property, wherein the substrate modulates from a first condition when no stress is applied to a second condition when a stress is applied; and wherein the modulating property is configured to provide an indication when compressed to a predetermined compress10n stress level, wherein the predetermined compression stress level indicates an optimal tissue compression for a tissue type, the indication being a tissue state that is optimal for the formation of the surgical element for the tissue type. (Br., Claims App.) Rejections on Appeal The Examiner maintains, and Appellants appeal, the following rejections: 2 Appeal2015-000033 Application 11/408,492 I. Claims 1, 3, and 5-7 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Sumimoto (JP 2002/202213, pub. July 19, 2002). II. Claims 1-3, 5-7, and 9 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Roberts (US 3,469,439, iss. Sept. 30, 1969). III. Claims 11-13, 29, 31, 32 and 33 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Shelton (US 2006/0212069 Al, pub. Sept. 21, 2006) and Sumimoto. IV. Claims 30 and 34 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Shelton, Sumimoto, and Roberts. ANALYSIS Rejection I (Anticipation) Independent claim 1 and dependent claims 3 and 5-7 We are persuaded by Appellants' argument that Sumimoto does not disclose "a surgical buttress having a substrate made from a biocompatible material" (Br. 3-7). In particular, Appellants argue that there is insufficient evidence that Sumitomo' s rubber is necessarily "biocompatible," as recited in independent claim 1 (Br. 7). The Examiner points to paragraph 67 of Lahtinen (US 2003/0059463 Al, pub. Mar. 27, 2003) as evidence that rubber and plastic substrates qualify as biocompatible materials because they are used in a multitude of biocompatible implants (Final Act. 11; Ans. 11 ). However, we agree with Appellants that as a matter of anticipation, there is 3 Appeal2015-000033 Application 11/408,492 insufficient evidence that the particular rubber disclosed in Smnimoto would have been biocompatible. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) ("Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient."). Therefore, we do not sustain the Examiner's rejection under § 102(b) of independent claim 1 as anticipated by Sumimoto. For the same reason, we do not sustain the Examiner's rejection under § 102(b) of claims 3 and 5-7, which depend from independent claim 1. Rejection II (Anticipation) Independent claim 1 and dependent claims 2, 3, 5-7, and 9 We are persuaded by Appellants' argument that Roberts does not disclose "a biocompatible material," for similar reasons as set forth above with respect to the rejection under § 102(b) over Sumimoto. Therefore, we do not sustain the Examiner's rejection under§ 102(b) of claims 1-3, 5-7, and 9, as anticipated by Roberts. Rejection III (Obviousness) Independent claims 11 and 29 and dependent claims 12, 13, and 31-33 Independent claim 11 stands rejected under§ 103(a) as being unpatentable over Shelton and Sumimoto. We are persuaded by Appellants' argument that Shelton does not disclose that its buttress material has the property of changing color when stress is applied, as recited in independent claim 11, as follows: wherein the predetermined biocompatible material has an initial color when no stress is applied to the substrate, and wherein the 4 Appeal2015-000033 Application 11/408,492 predetermined biocompatible material has a second color when a predetermined compression stress is applied to the substrate (Appeal Br. 18). To the extent that the Examiner relies on a combination of Shelton's teachings with the teachings of Sumimoto (Ans. 12), the Examiner is relying on the material of Sumimoto, which as set forth above, is not necessarily biocompatible. To the extent that the Examiner is relying on the buttress material of Shelton, and concluding that it would have been obvious to induce a color change in a material under stress, as taught by Sumitomo, we are persuaded by Appellants' argument that the Examiner has not provided adequate evidence or reasoning for such a modification (see Appeal Br. 13-15). Putting aside the rationale for the combination, the Examiner does not address issues relating to a reasonable expectation of success of maintaining the biocompatibility of the material. As such, we do not sustain the Examiner's rejection under § l 03 of independent claim 11, as unpatentable over Shelton and Sumimoto. For the same reason, we do not sustain the Examiner's rejection under§ 103 of claims 12 and 13, which depend therefrom. Independent claim 29 contains similar requirements as independent claim 11, inasmuch as it recites a change in conditions when stress is applied (although does not recite color as a variable). We do not sustain the Examiner's rejection under§ 103 of independent claim 29 as unpatentable over Shelton and Sumimoto, for similar reasons as for independent claim 11. For the same reason, we do not sustain the Examiner's rejection under§ 103 of dependent claims 31-33. 5 Appeal2015-000033 Application 11/408,492 Rejection IV (Obviousness) Dependent claims 30 and 34 Claims 30 and 34 depend from claim 29, and stand rejected under § 103 as unpatentable over Shelton, Sumimoto, and Roberts. Roberts does not remedy the deficiency in the Examiner's rejection of independent claim 29 under§ 103 as unpatentable over Shelton and Sumimoto. We, therefore, do not sustain the Examiner's rejection under§ 103 of claims 30 and 34. DECISION The Examiner's decision to reject claims 1-3, 5-7, 9, 11-13, and 29-34 is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation