Ethicon Endo-Surgery, Inc.

Patent Trials and Appeals Board

Jun 17, 2021

2020005612 (P.T.A.B. Jun. 17, 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.
14/319,013 06/30/2014 Thomas W. Huitema END7468USNP/140144 5639
92223 7590 06/17/2021
K&L GATES LLP - ETHICON
K&L GATES CENTER
210 SIXTH AVENUE
PITTSBURGH, PA 15222-2613
EXAMINER
HIBBERT-COPELAND, MARY CATHERINE
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
06/17/2021 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):
uspatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS W. HUITEMA, MICHAEL E. SETSER, and
GEOFFREY C. HUEIL
Appeal 2020-005612
Application 14/319,013
Technology Center 3700
Before STEFAN STAICOVICI, BENJAMIN D. M. WOOD, and
LISA M. GUIJT, Administrative Patent Judges.
WOOD, 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 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party in interest as Ethicon Endo-Surgery, Inc.
Appeal Br. 3.
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Application 14/319,013

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CLAIMED SUBJECT MATTER
The claims are directed to fastener cartridge assemblies and staple
retainer cover arrangements for surgical staplers. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A fastener cartridge assembly for use with a surgical
instrument comprising a firing member including a tissue
cutting knife, wherein the fastener cartridge assembly
comprises:
a cartridge body including a deck with a longitudinal slot
and a plurality of fastener cavities formed therein;
at least one fastener removably positioned in each said
fastener cavity;
a sled configured to move along said longitudinal slot
during a firing stroke in response to an actuation of the firing
member, wherein said sled is contained within said fastener
cartridge assembly and delivered to the surgical instrument
when said fastener cartridge assembly is assembled to the
surgical instrument, wherein said sled is positioned in a starting
position prior to the firing stroke, wherein said sled abuts the
firing member to defeat a lockout of the surgical instrument
when said sled is in said starting position, wherein the firing
member moves said sled through said firing stroke when the
lockout is defeated and the firing member is actuated; and
a cover removably positioned over at least a portion of
said deck, wherein said cover comprises a locating fin
structured and dimensioned to fit within said longitudinal slot,
and wherein said locating fin comprises a proximal portion
positioned adjacent to said sled.
REFERENCES
Name Reference Date
Rethy US 2005/0222616 A1 Oct. 6, 2005
Baxter US 2010/0072251 A1 Mar. 25, 2010
Hessler US 2014/0252065 A1 Sept. 11, 2014

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REJECTIONS
Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
1–8, 12–14, 17, 18 103 Rethy, Baxter
9–11, 15, 16, 19, 20 103 Rethy, Baxter, Hessler
OPINION
Claims 1–8, 12–14, 17, and 18—§ 103—Rethy, Baxter
Independent Claim 1
In the May 13, 2019 Final Action, the Examiner found that Rethy’s
knife 24 corresponds to the claimed “sled configured to move along said
longitudinal slot during a firing stroke in response to an actuation of the
firing member” (Rethy’s cam pusher 40). Final Act. 2–3 (citing Rethy
¶ 203); see Rethy Fig. 3. The Examiner further found that Remy’s loading
lockout mechanism 50 corresponds to the mechanism that allows the sled’s
abutting the firing member “to defeat a lockout of the surgical instrument
when said sled is in said starting position.” Id. (citing Rethy ¶ 210, Figs. 4–
9). According to the Examiner, Rethy’s loading lockout mechanism 50
“locks out the knife sled until actuation and proper loading of the cartridge
[disposable staple cartridge assembly 16] and wedge [shipping wedge 30] is
removed.” Id. at 3. Baxter is relied upon to teach a sled assembly 160
contained within a disposable staple cartridge assembly 150. Id. (citing
Baxter ¶ 69, Figs. 8–10). The Examiner determines that it would have been
obvious to one of ordinary skill in the art “to modify the sled as taught by
Rethy with a contained sled structure within the cartridge assembly of
Baxter as a simple substitution between sled assemblies in a surgical stapling
instrument with the added safety of a disposable cartridge including a sled
arrangement.” Id. (citing Rethy ¶ 6).
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Appellant argues in the Appeal Brief that Rethy’s firing bars 36, 38—
not knife 24—corresponds to the claimed sled. Appeal Br. 27 (citing Rethy
Figs. 2, 3). Appellant further asserts that “lockout mechanism 50 is defeated
when the staple cartridge assembly 16 is seated in the cartridge half-section
12 and the anvil half-section 14 is assembled to the cartridge half-section
12.” According to Appellant:
When the anvil half-section 14 is assembled to the cartridge
half-section 12, the rocker 52 is moved out of engagement with
the cam bar channel 40 (i.e., the firing member) to allow the
firing bars 36 and 38 to be moved distally. More specifically,
the staple cartridge assembly 16 and anvil half-section 14
engage the rocker 52 to move the rocker 52 out of engagement
with the firing member which is connected to the firing bars 36
and 38. This arrangement has nothing to do with the invention
of Independent Claim 1.
Id. at 27–28.
In the Answer, the Examiner appears to agree with Appellant that
camming surfaces 36, 38 (rather than knife 24, as previously found)
correspond to the claimed sled:
Rethy discloses as recited above wedges 36, 38 which push the
staple pushers to fire the unspent staple cartridge, and the firing
lockout is only overcome when an unspent staple cartridge is
seated correctly into the stapler, the wedges interpreted as the
sled is directly connected to the pusher bar 40 which rocks the
locking mechanism out of the way to prevent premature firing
of the cartridge.
Ans. 12. The Examiner submits that one of ordinary skill in the art would
have been motivated “to modify the sled or wedge drivers as taught by
[R]ethy with the independent sled/wedge as taught by Baxter as a relocation
of parts which puts the sled fully in the cartridge assembly vs connected to
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the pusher bar which allows for the wedges to be replaced with every use.”
Id. Thus, according to the Examiner, “the argument that Rethy in view of
Baxter fails to teach a sled that defeats a lockout is unpersuasive because,
the safety lockout of Rethy is a direct result of the starting position and
placement of the pusher bar and firing wedges which are the sled of Rethy.”
Id.
We understand the Examiner’s position to be that the combination of
Rethy and Baxter would result in camming surfaces 36, 38 (which
correspond to the claimed sled) being independent of, and pushed by, cam
pusher bar 40 (rather than integrated with cam pusher bar 40) and contained
within disposable staple cartridge assembly 16. We understand Appellant’s
response to be that camming surfaces 36, 38—whether or not they are
independent of cam pusher bar 40—do not abut cam pusher bar 40 to defeat
a lockout of the surgical instrument when they are in the starting position.
Rethy teaches that when staple cartridge assembly 16 is installed on
cartridge receiving half-section 12, rocker 52 remains “in the locked-out
position.” Rethy ¶ 212, Fig. 8. Thus, even if installing cartridge assembly
16—which, based on the Examiner’s proposed combination, would result in
the delivery of the sled to the surgical instrument—results in the sled
abutting the firing member (cam pusher bar 40), the lockout is not defeated,
as claim 1 requires. Instead, Rethy explains that “[i]t is only when anvil
half-section 14 is joined with cartridge receiving half-section 12 and the
half-sections clamped together . . . that rocker 52 is urged to rotate . . .
thereby permitting a distal longitudinal movement of cam bar channel 40.”
Id.; see id. at Fig. 9. Thus, the combination of Rethy and Baxter would not
teach or suggest all of the limitations of claim 1. Accordingly, we do not
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sustain the Examiner’s rejection of claim 1, as well as claims 2–8, which
ultimately depend therefrom, as unpatentable over Rethy and Baxter.
Independent Claim 12
Independent claim 12 recites a cover member comprising “means for
retainingly engaging the wedge sled such that the wedge sled is retained in
the starting position when the top portion is in the covering position.”
Appeal Br. 44 (Claims App.). The Examiner relies on Rethy’s post 30b of
shipping wedge cover 30, which, according to the Examiner, “extends into
knife slot 34 for friction fit to hold cover 30 prior to firing the knife sled, and
to retain knife sled as lockout before use.” Final Act. 5 (citing Rethy ¶ 208).
In the Answer, however, the Examiner again makes clear that the claimed
sled is interpreted as the camming surfaces (wedges) 36, 38, rather than
knife 24: “the wedge sled is interpreted as the wedges 36, 38 as argued
above.” Ans. 14. Thus, it appears that that Examiner is no longer relying on
this analysis.
Appellant responds that the Examiner has not identified any evidence
establishing that cover 30 retainingly engages the sled when the top portion
of the cover is in the covering position. Appeal Br. 37.
Rethy teaches that when shipping wedge 30 is in place, post 30b fits
into knife track 34, and thereby “blocks potential distal movement of knife
26 [sic, 24].” Rethy ¶ 208. The Examiner has not identified any teaching in
Rethy that post 30b engages with, or blocks the movement of, camming
surfaces 36, 38, which do not travel along knife track 34. Instead, camming
surfaces 36, 38 travel along a pair of slots formed along the sides of
longitudinal ridge 22a of bottom cover 22. Id. ¶ 204. It does not appear that
any portion of shipping wedge cover 30 fits into these slots, or otherwise
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blocks the movement of camming surfaces 36, 38 when shipping wedge
cover 30 is in place. Therefore, we are not persuaded that the combination
of Rethy and Baxter teaches or suggests all of the limitations of independent
claim 12, and therefore decline to sustain the Examiner’s rejection of claims
12, as well as claims 13, 14, 17, and 18, which ultimately depend therefrom.
Claims 9–11, 15, 16, 19, and 20—§ 103—Rethy, Baxter, and Hessler
Independent claim 20 recites a cover member comprising “a
downwardly extending locating fin protruding from the top portion and
configured to be received within the longitudinal slot, wherein a proximal
portion of the locating fin is configured to retainingly engage the wedge sled
when the wedge sled is in the starting position and the cover member is
attached to the cartridge body.” Appeal Br. 45 (Claims App.). This
limitation is similar to the limitation in claim 12, which, as discussed above,
we are not persuaded is taught by the combination of Rethy and Baxter.
Accordingly, for the reasons discussed above, we do not sustain the rejection
of claim 20 as unpatentable over Rethy, Baxter, and Hessler.
Claims 9–11 ultimately depend from claim 1. Appeal Br. 43 (Claims
App.). Claims 15, 16, and 19 ultimately depend from claim 12. Id. at 44–
45. Therefore, for the reasons discuss above in connection with independent
claims 1 and 12, we do not sustain the Examiner’s rejection of claims 9–11,
15, 16, and 19 as unpatentable over Rethy, Baxter, and Hessler.
CONCLUSION
The Examiner’s rejections are reversed.
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8, 12–14,
17, 18
103 Rethy, Baxter 1–8, 12–14,
17, 18
9–11, 15,
16, 19, 20
103 Rethy, Baxter,
Hessler
9–11, 15,
16, 19, 20
Overall
Outcome
1–20

REVERSED