Earl Zergiebel et al.

Patent Trials and Appeals Board

Sep 27, 2019

14559308 - (D) (P.T.A.B. Sep. 27, 2019)

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.
14/559,308 12/03/2014 Earl Zergiebel H-US-04120 (203-10077) 1676
50855 7590 09/27/2019
Covidien LP
60 Middletown Avenue
Mailstop 54, Legal Dept.
North Haven, CT 06473
EXAMINER
BALDWIN, NATHAN AARON
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
09/27/2019 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):
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 EARL ZERGIEBEL, DAVID CHOWANIEC,
RYAN V. WILLIAMS, and ANAND SUBRAMANIAN
____________________

Appeal 2018-002194
Application 14/559,308
Technology Center 3700
____________________

Before MICHAEL J. FITZPATRICK, PAUL J. KORNICZKY, and
ARTHUR M. PESLAK, Administrative Patent Judges.

KORNICZKY, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision, as set forth in the Final Office Action, rejecting claims
1, 2, 4, 7, 9–18 and 21–23.3 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE CLAIMED SUBJECT MATTER
The claims are directed to a manual retraction tool for use with an
electromechanical surgical device. Claim 1, the only independent claim on
appeal, is reproduced below with disputed limitations italicized for
emphasis:
1. A manual retraction tool for use with an electromechanical
surgical assembly including a surgical device including at least
one drive connector disposed within a connecting portion, an
adapter including at least one connector sleeve defining a recess
therein configured to receive the drive connector of the surgical
device, and an end effector attached to the adapter, the manual
retraction tool comprising:
a handle assembly including:
a first handle including an elongated handle body
having a first end and a second end, and including a
channel recessed within at least a portion of the handle
body thereof; and

1 In this Decision, we refer to (1) the Examiner’s Final Office Action
dated January 3, 2017 (“Final Act.”), Advisory Action dated April 17, 2017
(“Adv. Act.”), and Answer dated November 2, 2017 (“Ans.”), and (2)
Appellant’s Appeal Brief dated June 14, 2017 (“Appeal Br.”) and Reply
Brief dated December 20, 2017 (“Reply Br.”).
2 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.
3 Claims 3, 5, 6, 8, 19, and 20 are cancelled. Final Act. 2.
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a second handle including an elongated handle body
having a first end and a second end, and including a
channel recessed within at least a portion of the handle
body thereof, the second end of the first handle being
pivotally connected to and nested within the first end of the
second handle,
wherein the first end of the first handle is nested
within the second end of the second handle when the first
handle and the second handle are disposed in a closed,
approximated position; and
a shaft including an elongated shaft body having a tip
dimensioned to be inserted into the recess of a connector sleeve
of an adapter and to effect rotation of a connector sleeve upon
rotation of the shaft, and a second end pivotally connected to the
handle assembly, the shaft body being movable between:
a first position wherein the shaft is at least partially
disposed within the channel of the handle body of the
second handle, at least partially disposed within the
channel of the handle body of the first handle, and is
longitudinally aligned with the handle body of each of the
first handle and the second handle when the first handle
and the second handle are disposed in the closed,
approximated position, and
a second position wherein the shaft body is
perpendicular to the handle body of at least one of the first
handle or the second handle.

REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Wilkinson
Rue
US 458,087
Des. 111,907
Aug. 18, 1891
Oct. 25, 1938
Smith
Hung
US 2007/0000097 A1
US 2011/0041657 A1
Jan. 4, 2007
Feb. 24, 2011

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REJECTIONS
The Examiner made the following rejections:
1. Claims 1, 2, 4, 7, 9, 10, and 13–18 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Smith and Hung.
2. Claims 11 and 21–23 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Smith, Hung, and La Rue.
3. Claim 12 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Smith, Hung, and Wilkinson.
Appellant seeks our review of these rejections.

DISCUSSION
Rejection 1: Claims 1, 2, 4, 7, 9, 10, and 13–18
as Unpatentable Over Smith and Hung
Appellant argues claims 1, 2, 4, 7, 9, 10, and 13–18 as a group.
Appeal Br. 10. We select claim 1 as the representative claim, and claims 2,
4, 7, 9, 10, and 13–18 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv)
(2019).
The Examiner finds that Smith discloses all of the limitations of claim
1 except for a “second end of the first handle being pivotally connected to
and nested within the first end of the second handle, wherein the first end of
the first handle is nested within the second end of the second handle when
the first handle and the second handle are disposed in a closed, approximated
position.” Final Act. 3–4. Smith discloses that each handle has a flange that
lies between the flanges of the other handle, but the Examiner construes the
term “nested” to mean that the entire end of the first handle, not just a
portion, fits within the end of the second handle. Id. at 4.
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Referring to Figure 1 of Hung, the Examiner finds that Hung teaches
a folding handle where the second end (the end where hole 24 is
located) of the first handle (20) being nested within the first end
(the end where hole 51) of the second handle (50), wherein the
first end (The end where protrusion 25 is located) of the first
handle is nested within the second end (the end where protrusion
53 is located) of the second handle when the first handle and the
second handle are disposed in a closed, approximated position.
Id. The Examiner reasons that it would have been obvious to one of
ordinary skill in the art
to modify the first and second handles taught by Smith to nest
within each other as disclosed by Hung in order to allow for the
additional latching component 53 taught by Hung to be added
to the handle assembly in order to prevent the two handles
taught by Smith to come out the first position randomly.
Id. (citing Hung ¶ 17).
The Examiner’s annotated Figure 8 of Smith is reproduced below:

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Ans. 11. In annotated Figure 8, the Examiner has labeled Smith’s detents
484 and locking pins 480.
Appellant argues that the Examiner’s rejection is erroneous for several
reasons. First, Appellant argues that the Examiner’s “proposed modification
of the handle wings 410, 412 of Smith to include the nesting configuration
of the wrench body 20 within the grip handle 50 of Hung would have
resulted in a change in the fundamental operating principle of the tool handle
of Smith.” Appeal Br. 7. According to Appellant,
[a] person of ordinary skill in the art would not have
understood locking of the handle wings in a desired position,
resulting from the engagement of the locking pins 480 with the
detents 484 of the respective flanges 442, 460 of the handle
wings 410, 412 positioned adjacent the flange 416 of the shank
402, to have occurred in a tool handle that includes the flanges
442, 444 of handle wing 410 nested within the flanges 460, 462
of handle wing 412. Rather, if the flanges 442, 440 of handle
wing 410 were nested within the flanges 460, 462 of handle wing
412, only handle wing 410 would be lockable thereby rendering
the tool handle unable to adopt the variety of configurations
described by Smith. (See e.g., Smith, ¶ [0014] and FIGS. 1–5).
Id. at 8.
Appellant’s “incorporation” arguments are not persuasive. “The test
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference[,] . . . [r]ather,
the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413,
425 (CCPA 1981); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir.
1983) (“[I]t is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review.”); KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has
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been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill.”).
Here, the Examiner, based on the teachings of Hung, proposes
modifying the second end of Smith’s first handle so that it is nested within
the first end of the second handle when the shaft is disposed between the two
handles, and then using Hung’s latching components 53 to hold Smith’s first
and second handles in the nested position. Final Act. 4; Ans. 8; Adv. Act. 2.
Appellant’s arguments (Appeal Br. 8) regarding nesting flanges 442, 440 of
handle wing 410 within the flanges 460, 462 of handle wing 412 do not
address the rejection as articulated by the Examiner. Consequently,
Appellant does not show that the Examiner’s proposed modification changes
the fundamental operating principle of Smith or is beyond the skill of one
skilled in the art. Thus, Appellant does not apprise us of error.
Second, Appellant argues that the Examiner “has not provided a
rational underpinning for the proposed modification of the tool handle of
Smith to include the positioning protrusions of Hung” because the Examiner
“has not shown why a person of ordinary skill in the art would have sought
to include positioning protrusions in a tool handle that already includes a
locking mechanism for locking the handle wings in a desired position.”
Appeal Br. 8. Appellant also argues that a person of ordinary skill in the art
would not have understood “preventing handle movement to be an issue that
remained to be improved upon with respect to the tool handle of Smith,” and
the Examiner’s proposed combination of Smith and Hung is based on
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“impermissible hindsight, using claim 1 as a roadmap for formulating the
present rejection.” Id. Appellant’s arguments are not persuasive.
As the Examiner correctly explains, in Smith’s locking mechanism,
“pin (480) is located on flange 416 such that in the normal locked position it
can engage detents 484 formed about the periphery of aperture 448 in flange
442.” Ans. 10 (quoting Smith ¶ 33). The Examiner also correctly explains
that Smith indicates that the pin must engage or insert into the detents to
lock the mechanism, and, referring to the annotated Figure 8 above, that
detents are shown only on the top and bottom of handle 410 (about 180°
apart) and the only locking pin for these detents is fixed by bore 420 at the
top of the shaft/shank 402. Id. We agree with the Examiner that, because of
the positioning of the detents and locking pin, the handles are only locked
when the handles are extended perpendicularly from the shaft. Id. Thus,
there is a rational underpinning for the Examiner’s articulated rationale for
combining Smith and Hung –– a person of ordinary skill in the art would
have known there is a need for the Hung’s nested configuration and locking
mechanism to keep Smith’s handles in close approximation position to the
shaft. Appellant’s hindsight argument is of no import where the Examiner
has stated a rationale for the modification that we determine is supported
adequately by sufficient facts. See In re Cree, 818 F.3d 694, 702, n.3 (Fed.
Cir. 2016).
For the above reasons, the rejection of claim 1 is sustained. Likewise,
we sustain the Examiner’s rejections of claims 2, 4, 7, 9, 10, and 13–18,
which depend from claim 1.

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Rejection 2: Claims 11 and 21–23
as Unpatentable Over Smith, Hung, and La Rue
In response to the Examiner’s rejection of claims 11 and 21–23,
Appellant argues that this rejection is erroneous because of the erroneous
rejection of independent claim 1, from which claims 11 and 21–23 depend,
and La Rue does not remedy the deficiencies of Smith and Hung. Appeal
Br. 10–11. As discussed above in connection with claim 1, Appellant’s
arguments about the alleged deficiencies of the rejection of claim 1 are not
persuasive, and the rejection is sustained. Likewise, the rejection of claims
11 and 21–23 is sustained.

Rejection 3: Claim 12
as Unpatentable Over Smith, Hung, and Wilkinson
In response to the Examiner’s rejection of claim 12, Appellant argues
that this rejection is erroneous because of the erroneous rejection of
independent claim 1, from which claim 12 depends, and Wilkinson does not
remedy the deficiencies of Smith and Hung. Appeal Br. 11–12. As
discussed above in connection with claim 1, Appellant’s arguments about
the alleged deficiencies of the rejection of claim 1 are not persuasive, and
the rejection is sustained. Likewise, the rejection of claim 12 is sustained.

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CONCLUSION
In summary:
Claims
Rejected
Basis
(35 U.S.C.)
Affirmed Reversed
1, 2, 4, 7, 9,
10, 13–18
§103 Smith, Hung 1, 2, 4, 7, 9,
10, 13–18

11, 21–23 §103 Smith, Hung, La Rue 11, 21–23
12 §103 Smith, Hung,
Wilkinson
12
Overall
Outcome
1, 2, 4, 7, 9–
18, 21–23

For the above reasons, we AFFIRM the Examiner’s rejection of
claims 1, 2, 4, 7, 9–18, and 21–23 under 35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED