Covidien LP

Patent Trials and Appeals BoardMar 2, 2021

2020002484 (P.T.A.B. Mar. 2, 2021)

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. 15/205,169 07/08/2016 Anthony Sgroi Jr. 356105.USU1(203-11192) 5783 50855 7590 03/02/2021 Covidien LP 60 Middletown Avenue Mailstop 54, Legal Dept. North Haven, CT 06473 EXAMINER SHUTTY, DAVID G ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 03/02/2021 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): docket@carterdeluca.com rs.patents.two@medtronic.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANTHONY SGROI, JR. Appeal 2020-002484 Application 15/205,169 Technology Center 3700 Before BRETT C. MARTIN, MICHELLE R. OSINSKI, and MICHAEL L. WOODS, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–20. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Covidien LP. Appeal Br. 1. Appeal 2020-002484 Application 15/205,169 2 CLAIMED SUBJECT MATTER The claims are directed “to circular surgical stapling instruments including replaceable loading units.” Spec. ¶ 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A loading unit comprising: a shell assembly having a coupling ring defining a proximal opening configured to receive a distal end portion of a surgical instrument, the coupling ring defining a lock slot; a lock collar disposed about the coupling ring, the lock collar including a radially extending lock configured to be received within the lock slot, the lock collar being transitionable between a locked configuration, in which the lock is positioned within the lock slot, and an unlocked configuration, in which the lock is lifted from within the lock slot, the lock collar configured to secure the loading unit to a surgical instrument in the locked configuration; and a release collar disposed about the coupling ring proximal of the lock collar, the release collar translatable between an unactuated position and an actuated position, the release collar transitioning the lock collar to the unlocked configuration as the release collar is distally translated from the unactuated position towards the actuated position. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Walen US 5,888,200 Mar. 30, 1999 Estes US 2003/0023256 A1 Jan. 30, 2003 REJECTIONS Claims 1–11, 13, 15–19 are rejected under 35 U.S.C. § 102(a)(1) or 102(a)(2) as being anticipated by Walen. Final Act. 3. Appeal 2020-002484 Application 15/205,169 3 Claims 12, 14, and 20 are rejected under 35 U.S.C. § 103 as being unpatentable over Walen and Estes. Final Act. 16. OPINION The Examiner rejects claim 1 as anticipated by Walen, even though the tool in Walen works exactly opposite of the tool as claimed. In doing so, the Examiner interprets the claim terms “proximal” and “distal” in an unreasonable manner. According to the Examiner, although the Specification states that the terms refer to the ends of the tool with respect to a user/clinician, because the Specification does not state the position of the user, then there is insufficient guidance to determine what is actually distal and what is proximal. See, e.g., Ans. 5. As Appellant argues, these terms “were defined as understood by those of ordinary skill in the art” and “are defined in the context of the normal usage of the device.” Reply Br. 2. The Examiner correctly notes that a recitation relating to the manner in which a claimed apparatus is used does not differentiate from the prior art if the prior art teaches all of the structural limitations. Ans. 5. That use, however, must still be taken into account in the claim interpretation. Under the Examiner’s interpretation, “the clinician is closest to [the] surgical cutting accessory and furthest from the hand piece.” Id. No person of ordinary skill in the art would understand a surgical tool to be used by grasping the cutting accessory and pointing the hand piece away from the user and toward the patient. This interpretation borders on absurdity. Because the Examiner acknowledges that the prior art works exactly opposite of what is claimed, we do not sustain the rejection of claim 1. All of the independent claims recite similar “proximal” and “distal” Appeal 2020-002484 Application 15/205,169 4 limitations and so the rejection of all claims include this error. As such we do not sustain any of the Examiner’s rejections. CONCLUSION The Examiner’s rejections are REVERSED. More specifically, DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–11, 13, 15–19 102(a)(1) or 102(a)(2) Walen 1–11, 13, 15–19 12, 14, 20 103 Walen, Estes 12, 14, 20 Overall Outcome 1–20 REVERSED