Ex Parte Williams

Patent Trials and Appeals Board

Apr 4, 2019

14056301 - (D) (P.T.A.B. Apr. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/056,301 10/17/2013
50855 7590
Covidien LP
60 Middletown A venue
Mailstop 54, Legal Dept.
North Haven, CT 06473
04/08/2019
FIRST NAMED INVENTOR
Justin Williams
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-03843 (203-9623) 4952
EXAMINER
WITTENSCHLAEGER, THOMAS M
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
04/08/2019 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):
rs. patents. two@medtronic.com
docket@carterdeluca.com
PTOL-90A (Rev. 04/07)
UNITED ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUSTIN WILLIAMS 1
Appeal2018-006730
Application 14/056,301
Technology Center 3700
Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
HOELTER,Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a) from the
Examiner's fmal rejection of claims 1-7 and 9-12. Final Act. 1 ( Office
Action Summary). Claim 8 has been withdrawn from consideration. Final
Act. 1,2. Wehavejurisdiction under35U.S.C. §6(b). Forthereasons
explained below, we fmd error in the Examiner's rejections of these claims.
Accordingly, we REVERSE the Examiner's rejections.
1 "The real party in interest for this application is the Assignee of record,
Covidien LP." App. Br. 1. We thus proceed on the basis that, for purposes
of this appeal, Covidien LP is the "Appellant."
Appeal 2018-006730
Application 14/056,301
CLAIMED SUBJECT MATTER
The disclosed subject matter "relates to surgical instruments having a
handle assembly and an end effector." Spec. ,r 1. Claim 1 is the sole
independent claim, is representative of the claims on appeal, and is
reproduced below.
1. A surgical stapling device comprising:
a handle assembly;
an adapter assembly removably and selectively
attachable to the handle assembly and extending from the
handle assembly, the adapter assembly including a connector
assembly and being configured to transmit actuating forces
from the handle assembly;
a loading unit removably and selectively attachable to the
connector assembly of the adapter assembly, the loading unit
including a shell member and a housing extending from an
inner surface of the shell member; and
a memory chip assembly disposed within the housing of
the loading unit and moveable relative to the shell member to
facilitate connection with the connector assembly of the adapter
assembly.
Liikanen et al.
Egawa et al.
Smith et al.
Zemlock et al.
Ahn
REFERENCES
us 5,699,406
US 2007 /0221497 Al
US 2009/0057369 Al
US 2009/0108048 Al
US 2010/0136816 Al
THE REJECTIONS ON APPEAL
Dec. 16, 1997
Sept. 27, 2007
Mar. 5, 2009
Apr. 30, 2009
June 3, 2010
Claims 1--4 and 10-12 are rejected under 35 U.S.C. § 103 as
unpatentable over Smith, Zemlock, and Liikanen.
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Appeal 2018-006730
Application 14/056,301
Claims 5-7 are rejected under 35 U.S.C. § 103 as unpatentable over
Smith, Zemlock, Liikanen, and Egawa.
Claim 9 is rejected under 35 U.S.C. § 103 as unpatentable over Smith,
Zemlock, Liikanen, and Ahn.
ANALYSIS
The rejection of claims 1--4 and 10-12
as unpatentable over Smith, Zemlock, and Li ikanen
Independent claim 1 recites a surgical stapling device comprising a
"loading unit including a shell member and a housing extending from an
inner surface of the shell member." Claim 1 also recites "a memory chip
assembly disposed within the housing of the loading unit." The Examiner
relies on Smith for disclosing these limitations. See Final Act. 3; Ans. 9.
Dependent claims 2--4 and 10-12 also require these limitations. The
Examiner explains that "if the memory chip assembly [ of Smith] is placed
within the loading unit, then there must be a retention member to fix the
memory chip assembly in place." Final Act. 3. Consequently, "[t]his
retention member is interpreted as the housing [ and that] since the memory
chip assembly is disposed in the interior of the loading unit [i.e., shell], the
housing must extend from the shell member's inner surface." Final Act. 3.
In other words, "the shell member and the housing are the same in the
disclosure of Smith[ and] a shell member and housing that are separate
elements are not disclosed." Ans. 9.
Appellant disagrees stating, "[i]n order for the housing to extend from
an inner surface of the shell member, the shell member and the housing must
indeed be distinguishable from one another." App. Br. 4; see also Reply Br.
2. In contrast, in Smith, "the portion of the [shell] in which the memory chip
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Appeal 2018-006730
Application 14/056,301
is imbedded is within the inner surface of the [shell], and thus is not a
housing that extends from an inner surface of the [shell], as recited in
independent claim 1." App. Br. 4; see also Reply Br. 2.
Appellant's Specification provides guidance on this point. Paragraph
32 of Appellant's Specification states, "shell member 20 defmes a cutout 23
and includes a housing 3 0 formed about cutout 23" and that " [ c ]utout 23 is
configured to permit external loading of a chip assembly 100 into a recess 31
formed by housing 30." Paragraph 33 explains that "[h ]ousing 30 includes a
lip 32 formed about recess 31 for retaining chip assembly 100 within recess
31." See also Spec. Figs. 4--5. In other words, Appellant's housing 30 is
described as something distinct from Appellant's cutout 23 in shell 30. This
is consistent with the limitation in claim 1 addressing "a shell member and a
housing extending from an inner surface of the shell member." Accordingly,
we construe the claimed "housing" to be separate and distinct from the
claimed "shell member."
To the extent the Examiner is construing the claimed housing as
simply part of the shell's cutout ( and not a separate, stand-alone component
accompanying the cutout), such a construction is not consistent with
Appellant's Specification nor how claim 1 is presentedand/orunderstood.
See supra. "[C]laims are interpreted with an eye toward giving effect to all
terms in the claim." Bi con, Inc. v. Straumann Co., 441 F.3d. 945,950 (Fed.
Circ. 2006). Smith discloses that its memory chip "can be embedded on a
side of the [shell]" and is silent as to how this is accomplished, or what (if
any) additional structure may be involved in doing so. Smith ,r 178. We
thus agree with Appellant that Smith does not disclose a "loading unit
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Appeal 2018-006730
Application 14/056,301
including a shell member and a housing extending from an inner surface of
the shell member," as claimed. App. Br. 2--4; see also Reply Br. 2.
The Examiner's reliance on Zemlock as disclosing a handle assembly
and an adapter assembly (Final Act. 3--4) and on Liikanen as disclosing a
spring that applies inward force to facilitate connection (Final Act. 4--5),
does not cure the deficiencies of Smith. Accordingly, for the reasons
discussed above, we do not sustain the rejection of claims 1--4 and 10-12
over Smith, Zemlock, and Liikanen.
The rejection of claim 5-7
as being obvious over Smith, Zemlock, Li ikanen, and Egawa
The rejection of claim 9
as being obvious over Smith, Zemlock, Li ikanen, and Ahn
Claims 5-7 and 9 depend from claim 1. App. Br. 13-14 ( Claims
App.). The Examiner's rejections of claim 5-7 as unpatentable over Smith,
Zemlock, Liikanen, and Egawa, and of claim 9 as unpatentable over Smith,
Zemlock, Liikanen, and Ahn, are based on the same unsupported fmdings
regarding the combination of Smith, Zemlock, and Liikanen as those
discussed above for claim 1. See Final Act. 6-9. The Examiner does not
rely on Egawa and Ahn to remedy the deficiencies of Smith, Zemlock, and
Liikanen. Accordingly, for reasons similar to those discussed above, we do
not sustain the rejections of claims 5-7 and 9 over the indicated
combinations of cited art.
DECISION
The Examiner's rejections of claims 1-7 and9-12 under35 U.S.C.
§ 103 are reversed.
REVERSED
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