Ex Parte Wenchell et al

Board of Patent Appeals and Interferences

Jan 9, 2012

10490790 (B.P.A.I. Jan. 9, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/490,790 03/24/2004 Thomas Wenchell 2757 (203-2973) 1687
7590 01/10/2012
Paul R Audet
U.S. Surgical, a division of
Tyco Healthcare Group
150 Glover Avenue
Norwalk, CT 06856
EXAMINER
CHUKWURAH, NATHANIEL C
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
01/10/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS WENCHELL, STANISLAW MARCZYK,
KENNETH H. WHITFIELD, ROMAN CZERNIK, HENRY E. HOLSTEN,
and FRANK C. MAFFEI
____________

Appeal 2010-002684
Application 10/490,790
Technology Center 3700
____________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and
ERICA A. FRANKLIN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL

This appeal under 35 U.S.C. § 134 involves claims 11-13, 15, and 19-
24 (App. Br. 4).
1
We have jurisdiction under 35 U.S.C. § 6(b).

1
Pending “[c]laims 2-7 have been allowed” (App. Br. 4). Pending “[c]laims
16-18 have been objected to” (id.).
Appeal 2010-002684
Application 10/490,790

2
STATEMENT OF THE CASE
The claims are directed to a surgical stapling device. Claims 11, 22,
and 24 are representative and are reproduced in Appellants‟ “APPENDIX
OF CLAIMS” (App. Br. 24-27).
Claims 11-13, 15, and 19-24 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Milliman.
2

We reverse.
ISSUE
Does the preponderance of evidence on this record support the
Examiner‟s finding that Milliman teaches the claimed invention?
FACTUAL FINDINGS (FF)
FF 1. Appellants‟ surgical stapling device comprises a blow out plate
assembly 254a (Spec. 23).
FF 2. Appellants‟ blow out plate assembly 254a is illustrated in
Appellants‟ figure 28a reproduced below:

“Fig. 28a is an enlarged side perspective view of the blow out plate
assembly of the surgical stabling device” (Spec. 6: 10-11).
FF 3. Appellants‟ “[b]low out plate assembly 254a includes a flexible body
255a” (Spec. 22: 30-31).

2
Milliman et al., US 6,241,139 B1, issued June 5, 2001.
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Application 10/490,790

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FF 4. “A central portion of [Appellants‟] blow out plate assembly 254a
includes a pair of substantially U-shaped spring portions 262a . . . [that]
allows the central portion of body 255a to flex slightly outwardly to
accommodate sliding and articulating movement of [the] drive assembly”
(Spec. 23: 13-17).
FF 5. The “U-shaped spring portion 644 [of Appellants‟ blow out plate]
allows the central portion of body 610 to lengthen axially and flex slightly
outwardly relative to or of the longitudinal axis” (Spec. 26: 8-12).
FF 6. Milliman teaches a surgical stapling device that comprises “[a] pair
of blow out plates 254 . . . [that] prevent outward bulging of [the] drive
assembly” (Milliman 12: 34-37).
FF 7. Milliman‟s blow out plates 254 are illustrated in Milliman‟s FIG. 27
and 57 reproduced below:

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Application 10/490,790

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“FIG. 27 is an enlarged perspective view with parts separated of the
proximal housing portion and mounting assembly of the disposable loading
unit” of Milliman‟s surgical stapling device (Milliman, col. 4, ll. 44-46).
“FIG. 57 is a top view of the distal end of the [surgical stapling device‟s]
elongated body, the mounting assembly, and the proximal end of the tool
assembly during articulation of the stapling apparatus” (Milliman, col. 6, ll.
1-3).
FF 8. The Examiner finds that Milliman‟s “support member (254) ha[s] an
intermediate spring portion (middle portion) that flexes to support and
prevent element (266) from bulging outwardly during articulation of the end
effector as shown in Figure 57” (Ans. 7).
FF 9. The Examiner finds that since Milliman‟s support member 254 “is
restricted within recesses as shown in Figure 57” it is “fixedly attached”
(id.).
FF 10. The Examiner finds that Milliman‟s support member 254 “includes
an axially extendable central portion” (Ans. 5 and 8).
FF 11. The Examiner finds that Milliman teaches “a locking member (192,
288)” (Ans. 5).
FF 12. Milliman teaches that blocking plate 192‟s function relates to
preventing longitudinal movement of the control rod during assembly and
that when the disposable loading unit is properly positioned with respect to
the elongated body, blocking plate 192 returns to its distal position to permit
subsequent longitudinal movement of the control rod (Milliman, col. 11, ll.
9-18).
FF 13. Milliman identifies element 288 as a “lockout device” (Milliman,
col. 15, l. 66).
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FF 14. Milliman teaches that prior to firing the lockout device is configured
to permit the anvil “to be opened and repositioned onto the tissue”
(Milliman, col. 16, ll. 6-10).
FF 15. After firing Milliman‟s lockout device disables “the disposable
loading unit . . . and inhibit[s] distal movement of the control rod”
(Milliman, col. 16, ll. 20-31).
ANALYSIS
Independent claims 11, 22, and 24 are before us on this appeal and are
separately argued by Appellants. We take each in turn.

Claim 11:
Appellants‟ concede that the “central or „intermediate‟ portion” of
Milliman‟s support member 254 “can be properly characterized as flexible”
(Reply Br. 3). Nevertheless, Appellants contend that Milliman‟s support
member 254 does “not include an „intermediate spring portion‟” (id.). We
agree.
Milliman‟s and Appellants‟ blow out plates are flexible (FF 3 and 8;
see also Reply Br. 3). However, in addition to being flexible Appellants‟
blow out plate also contains a spring portion 262a (FF 2 and 4). The
Examiner fails to identify a teaching in Milliman that accounts for the
additional spring portion feature of Appellants‟ claimed invention.

Claim 22:
Appellants contend that Milliman‟s lockout device prohibits axial
movement of the drive assembly only after firing (App. Br. 16). We agree
(FF 15; Cf. FF 14). In addition, Appellants‟ contend that Milliman‟s
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element 192 (1) “is not „operatively connected to the drive assembly‟ as”
required by Appellants‟ claim 22 and (2) completes its function “upon the
attachment of the disposable loading unit to the Milliman device and is
subsequently inoperative” (App. Br. 16 and 17). We agree (FF 11).
Therefore, notwithstanding the Examiner‟s finding that Milliman teaches
locking members (FF 11), the Examiner fails to establish that Milliman
teaches a locking member that is operatively connected to the drive
assembly and prevents axial movement of the drive assembly prior to firing
(see Claim 22).

Claim 24:
The Examiner finds that Milliman‟s support member 254 “includes an
axially extendable central portion” (FF 10). Stated differently, the Examiner
postulates that because Milliman‟s support member 254 is capable of flexing
it must also axially extend. We are not persuaded.
As discussed above with respect to claim 11, Milliman fails to teach a
blow out plate, or support member 254, that has a spring portion. As
Appellants explain, while Milliman‟s support member 254 can flex, “[t]he
axial length of the central portion of the „support member‟ . . . remains
substantially constant during articulation” (App. Br. 19). In contrast,
Appellants‟ blow out plate comprises a spring portion 644, according to
Appellants‟ Specification, the “U-shaped spring portion 644 [of Appellants‟
blow out plate] allows the central portion of body 610 to lengthen axially
and flex slightly outwardly relative to or of the longitudinal axis” (FF 5).
For the foregoing reasons we find that the Examiner failed to establish
an evidentiary basis that supports a conclusion that Milliman teaches a
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support member that includes an axially extendable central portion as is
required by Appellants‟ claim 24.

CONCLUSION OF LAW
The preponderance of evidence on this record fails to support the
Examiner‟s finding that Milliman teaches the claimed invention. The
rejection of claims 11-13, 15, and 19-24 under 35 U.S.C. § 102(b) as being
anticipated by Milliman is reversed.

REVERSED

cdc