Ethicon Endo-Surgery, Inc.Download PDFPatent Trials and Appeals BoardJun 17, 20212020005612 (P.T.A.B. Jun. 17, 2021) Copy Citation 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. Appeal 2020-005612 Application 14/319,013 2 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 Appeal 2020-005612 Application 14/319,013 3 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). Appeal 2020-005612 Application 14/319,013 4 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 Appeal 2020-005612 Application 14/319,013 5 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 Appeal 2020-005612 Application 14/319,013 6 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 Appeal 2020-005612 Application 14/319,013 7 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. Appeal 2020-005612 Application 14/319,013 8 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 Copy with citationCopy as parenthetical citation