Ex Parte Viola

Board of Patent Appeals and Interferences

Jun 24, 2009

10529568 (B.P.A.I. Jun. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FRANK J. VIOLA
____________

Appeal 2009-002711
Application 10/529,568
Technology Center 3700
____________

Decided: 1 June 24, 2009
____________

Before WILLIAM F. PATE, III, JENNIFER D. BAHR, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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Application 10/529,568

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STATEMENT OF THE CASE
Frank J. Viola (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 17-27 and 37. Claims 38-40 have been
withdrawn and claims 1-16 and 28-36 have been canceled. We have
jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

THE INVENTION
The Appellant’s invention is drawn towards a tool assembly 10 for a
surgical stapling device including a pair of jaws having an anvil 12, a
cartridge assembly 14, and an approximation member 16. Specification 6, ll.
16-19 and fig. 1.
Claim 17 is representative of the claimed invention and reads as
follows:
17. A tool assembly comprising:
a pair of jaws including a first jaw and a second jaw, each
of the jaws having a proximal end and a distal end, the
first and second jaws being movable in relation to the
other;
first and second cam followers supported on the first jaw;
and
an approximation member including at least one cam
surface positioned to engage the first and second cam
followers, the approximation member being movable
through an actuating stroke to move the at least one cam
surface in relation to the first and second cam followers;
wherein the approximation member is movable to move
the at least one cam surface in relation to the first and
second cam followers to effect movement of the first jaw
to approximate a distal end of the first jaw with the
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second jaw in a first portion of the actuating stroke, to
subsequently move the distal end of the first jaw away
from the second jaw in a second portion of the actuating
stroke, and to subsequently bring together the first jaw
and the second jaw in substantially parallel closure in a
third portion of the actuating stroke.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Plyley US 5,816,471 Oct. 6, 1998

The Appellant seeks review of the Examiner’s rejection of claims 17-
27 and 37 under 35 U.S.C. § 102(b) as anticipated by Plyley.

THE ISSUE
Has the Appellant demonstrated that the Examiner erred in
determining that the first and second jaws of the tool of Plyley effectuate: (a)
a first movement of the first jaw to approximate a distal end of the first jaw
with the second jaw; (b) a subsequent second movement of the distal end of
the first jaw away from the second jaw; and (c) a third subsequent movement
in which the first jaw and the second jaw are brought together in a
“substantially parallel closure”?

SUMMARY OF DECISION
We REVERSE.

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FINDINGS OF FACT
The following enumerated findings of facts (FF) are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Plyley teaches a surgical stapler 10 including a handle portion
12 adapted to be grasped by a surgeon, an anvil retention
portion 16 (first jaw), and a cartridge retention portion 14
(second jaw). Plyley, col. 10, ll. 50-54 and fig. 1.
2. Figures 1-3 of Plyley teach that the anvil retention portion 16
(first jaw) moves from an open position (fig. 1) to a partially
closed position (fig. 2), and finally to a closed position. Plyley,
col. 12, l. 65 through col. 13, l. 1.
3. Plyley further teaches that the movement of the anvil portion 16
from the open position (fig. 1) to the closed position (fig. 3)
constitutes a “tip to tail” closure. Plyley, col. 13, ll. 53-55.
4. In a “tip to tail” closure the leading portion 71 of the anvil
moves toward the closed position faster than the trailing portion
73, and then the relative speeds of closure of the leading and the
trailing portions are reversed. As such, the leading portion 71
reaches a fully closed position prior to the trailing edge 73.
Plyley, col. 13, ll. 55-60

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PRINCIPLES OF LAW
Anticipation
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros, Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).

OPINION
Independent claim 17 requires a tool assembly having a first jaw and a
second jaw that can be brought together according to a specific sequence of
movement. That is, claim 17 requires: (a) a first movement of the first jaw
to approximate a distal end of the first jaw with the second jaw; (b) a
subsequent second movement of the distal end of the first jaw away from the
second jaw; and finally, (c) a third subsequent movement in which the first
jaw and the second jaw are brought together in a “substantially parallel
closure.”
The Appellant argues that in the tool of Plyley the distal end of the
first jaw does not move away from the second jaw. Rather, the Appellant
argues that the distal portion 71 of the anvil retention portion 16 (first jaw)
of Plyley moves continuously toward the cartridge (second jaw). App. Br. 8.
In response, the Examiner finds that Plyley suggests movement of the first
jaw so as to:
1) [A]pproximate a distal end of the first jaw with
the second jaw as shown in fig. 2, 2) move the
distal end of the first jaw away from the second
jaw as shown in fig. 1, and 3) bring together the
first and the second jaw as shown in fig. 3.
Ans. 4.
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The Examiner further finds that, because a surgeon manually operates the
tool of Plyley, the tool of Plyley has the capability to be operated in a
desired sequence, such as:
[T]o approximate the distal ends of the jaws in a
first portion of the actuating stroke, to [separate]
said distal ends in a second portion of the actuating
stroke, and to bring the jaws together in a final
portion of the actuating stroke.

Id.
As noted above, Plyley teaches a surgical stapler 10 including a
handle portion 12 adapted to be grasped by a surgeon, an anvil retention
portion 16 (first jaw), and a cartridge retention portion 14 (second jaw). FF
1. Figures 1-3 of Plyley teach that the anvil retention portion 16 (first jaw)
moves from an open position (fig. 1) to a partially closed position (fig. 2),
and finally to a closed position. FF 2. As such, we find that the anvil
retention portion 16 (first jaw) of Plyley moves continuously toward the
cartridge retention portion 14 (second jaw). Hence, the distal end of the first
jaw (anvil retention portion 16) of Plyley does not move away from the
second jaw (cartridge retention portion 14), as required by claim 17.
However, even adopting the Examiner’s suggestion that the tool of
Plyley may be operated in any desired sequence2 (see Ans. 4), we find that
the first and second jaws of the tool of Plyley are not brought together in
“substantially parallel closure,” as required by claim 17. As noted above,

2 In order to match the Appellant’s claimed movement sequence, the
anvil retention portion 16 (first jaw) of Plyley would have to move from a
partially closed position (fig. 2) to an open position (fig. 1), to a partially
closed position once more (fig. 2), and finally to a closed position (fig. 3).

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Plyley teaches that the movement of the anvil portion 16 from the “open
position” (fig. 1) to the “closed position” (fig. 3) constitutes a “tip to tail”
closure. FF 3. That is, the leading portion 71 of the anvil moves toward the
closed position faster than the trailing portion 73, and then the relative
speeds of closure of the leading and the trailing portions are reversed. As
such, Plyley teaches that the leading portion 71 reaches a fully closed
position prior to the trailing edge 73. FF 4. Hence, because the leading and
the trailing portions of the anvil retention portion 16 (first jaw) have
different closure velocities, we find that the anvil retention portion (first jaw)
and the cartridge retention portion (first jaw) of Plyley define an acute angle
and cannot be brought together in a parallel manner. As such, we agree with
the Appellant that the anvil retention portion 16 (first jaw) and the cartridge
retention portion 14 (second jaw) of Plyley “are never brought together ‘in
substantially parallel closure’ as recited in claim 17.” Reply Br. 3.
Inasmuch as we found that Plyley does not teach a tool assembly
having first and second jaws, which are brought together “in [a] substantially
parallel closure” according to the claimed sequence of movement, Plyley
does not teach all the elements of independent claim 17. Accordingly, the
rejection of claims 17-27 and 37 under 35 U.S.C. § 102(b) as anticipated by
Plyley cannot be sustained.

CONCLUSION
The Appellant has shown that the Examiner erred in determining that
the first and second jaws of the tool of Plyley effectuate: (a) a first
movement of the first jaw to approximate a distal end of the first jaw with
the second jaw; (b) a subsequent second movement of the distal end of the
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first jaw away from the second jaw; and (c) a third subsequent movement in
which the first jaw and the second jaw are brought together in a
“substantially parallel closure.”

DECISION
The Examiner’s rejection of claims 17-27 and 37 is reversed.

REVERSED

mls

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