Ex Parte Cabrera et al

Patent Trial and Appeal Board

Aug 21, 2018

12896364 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/896,364 10/01/2010
50855 7590
Covidien LP
60 Middletown A venue
Mailstop 54, Legal Dept.
North Haven, CT 06473
08/23/2018
FIRST NAMED INVENTOR
Ramiro Cabrera
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.
H-US-01325 CIP
(203-6079
CONFIRMATION NO.
9557
EXAMINER
TEMPLETON, CHRISTOPHER L
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
08/23/2018 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
mail@cdfslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAMIRO CABRERA, THOMAS WINGARDNER,
DAVID N. FOWLER, BRIAN J. CRESTON, DMITRI MENN,
PAUL D. RICHARD, and GENE STELLON 1
Appeal2017-008100
Application 12/896,364
Technology Center 3700
Before ERIC B. GRIMES, FRANCISCO C. PRATS, and JOHN G. NEW,
Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
endoscopic stitching device, which have been rejected as obvious and as
lacking adequate written description in the Specification. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm the written description rejection but reverse the
obviousness rejections.
1 Appellants identify the Real Party in Interest as Covidien LP. Br. 1.
Appeal2017-008100
Application 12/896,364
STATEMENT OF THE CASE
The Specification discloses a device for endoscopic stitching that
includes an end effector that extends from an elongate tubular body portion,
which itself extends distally from a handle assembly. Spec. ,r 129. The end
effector includes a jaw assembly on the distal end of a neck assembly, which
includes a plurality of links. Id. ,r 130. The "[l]inks 212 are configured to
enable end effector 200 to move between a substantially linear configuration
and a substantially angled, off-axis or articulated configuration. Links 212
are also configured so as to permit end effector 200 to be articulated in solely
a single direction." Id. ,r 13 1.
In certain embodiments, each link includes a pair of opposed stiffener
plate receiving slots and
neck assembly 1210 includes a pair of stiffener plates 218a,
218b translatably disposed in the plate receiving slots 216a,
216b, respectively. As seen in FIG. 87, a distal-end of each
stiffener plate 218a, 218b includes an anchor portion 219 to
securely attach respective distal-end of stiffener plate 218a, 218b
to stem 212f of neck assembly 1210, while allowing the
proximal-end of each stiffener plate 218[a], 218b to translate
freely through plate receiving slots 216a, 216b.
Id. ,r 191. "Since stiffener plates 218a, 218b are oriented such that the planes
thereof are substantially orthogonal to a direction of articulation of end
effector 200, movement or articulation of end effector 200 is restricted solely
in two dimensions (i.e., a single plane)." Id. ,r 193.
Claims 1--4, 6-8, 10-21, and 23-29 are on appeal. Claim 18 is
illustrative and reads as follows (emphasis added):
18. An endoscopic stitching device, comprising:
a handle assembly;
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Application 12/896,364
an elongate shaft supported by and extending from the handle
assembly;
an end effector supported on a distal end of the elongate shaft,
the end effector including:
a neck assembly configured and adapted for articulation in
one direction between a substantially linear configuration and an off-
axis configuration; and
a pair of juxtaposed jaws pivotally associated with one
another; and
a pair of spaced apart stiffener plates disposed in the neck
assembly and axially extending therein, wherein each of the pair of spaced
apart stiffener plates defines a plane and includes a proximal end and a distal
end, wherein only the distal ends of the respective spaced apart stiffener
plates are secured with the neck assembly.
Claims 1 and 6 are the other independent claims. Claim 6 also requires
a stiffener plate "wherein only the distal end of the stiffener plate is secured
with the neck assembly." Claim 1 similarly requires a stiffener plate
"wherein only the distal end is affixed to one link of the plurality of links."
The claims stand rejected as follows:
Claims 1--4, 6-8, 10-21, and 23-29 under 35 U.S.C. § 112, first
paragraph, based on inadequate written description (Final Action2 2);
Claims 18-20, 23, and 25-29 under 35 U.S.C. § I03(a) as obvious
based on Viola3 and Cohen4 (Final Action 4);
Claims 6-8, 10-17, and 24 under 35 U.S.C. § I03(a) as obvious based
on Viola, Cohen, and Heideman 5 (Final Action 7); and
2 Office Action mailed June 9, 2016.
3 WO 2008/045333 A2, published Apr. 17, 2008.
4 US 4,686,963, issued Aug. 18, 1987.
5 US 2008/0091169 Al, published Apr. 17, 2008.
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Application 12/896,364
Claim 21 under 35 U.S.C. § 103(a) as obvious based on Viola, Cohen,
and Heckele6 (Final Action 9).
I
The Examiner has rejected all of the claims on appeal on the basis that
the claimed subject matter is not adequately described in the Specification.
Final Action 2--4. Appellants did not present any argument directed to the
written description rejection in the Appeal Brief. We therefore summarily
affirm this rejection.
II
The Examiner has rejected all of the claims on appeal as obvious based
on Viola and Cohen, by themselves or combined with either Heideman or
Heckele. The same issue is dispositive for all of the rejections.
The Examiner finds that Viola discloses most of the limitations of
claim 18, but "does not expressly disclose a stiffener plate." Final Action 5.
The Examiner finds that "Cohen, in the analogous art of steerable catheters
... , teaches a pair of spaced apart stiffener plates 60 for the purpose of
imparting torque stability to the links." Id. The Examiner finds that "Cohen
also teaches only a distal end of the stiffener plates being securely attached to
the neck assembly (it is attached at '76'-see Fig. 3, illustrated below)." Id.
6 US 5,448,989, issued Sept. 12, 1995.
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Appeal2017-008100
Application 12/896,364
Cohen's Figure 3, as annotated by the Examiner, is reproduced below:
The annotated figure shows the parts of Cohen's device that the Examiner
considers to be the "neck assembly" and the "distal end" of stiffener plate 60.
Final Act. 6.
The Examiner concludes that it would have been obvious to "modify
the device of Viola and include the stiffener plates and stiffener plate
receiving slots, as taught by Cohen, for the purpose of imparting torque
stability to the links," and that the resulting device would meet all of the
limitations of claim 18. Id. at 5.
Appellants argue that "Cohen does not disclose or suggest at least
'wherein each of the pair of spaced apart stiffener plates ... includes a
proximal end and a distal end, wherein only the distal ends of the respective
spaced apart stiffener plates are secured with the neck assembly,' as recited
in independent claim 18." Br. 6. Appellants argue that,
[i]n fact, Cohen teaches away from the claimed configuration,
explicitly stating that:
[i]n order that adjacent pivot ridges 53 of adjacent
vertebrae 52 provide operable pivot points it is necessary
that adjacent ridges 53 be butted one against the other
and remain in contact with one another when vertebrae
assembly 36 is in a flexed position.
This is accomplished in the invention by securing
member 60 at a rear portion to transitional coupler 34
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Appeal2017-008100
Application 12/896,364
and at a forward portion to objective head 38 by the use
of pins 74 which are inserted through a pair of coupler
pinning apertures 72 and objective pinning apertures
76.
(Cohen, col. 7, 11. 20-30, emphasis added).
Id. at 7. Appellants conclude that "the combination of Viola and Cohen fails
to render obvious independent claim 18." Id.
We agree with Appellants that the Examiner has not established that
the broadest reasonable interpretation of claim 18 includes stiffener plates
attached as required by the claim; specifically, two stiffener plates "wherein
only the distal ends of the respective spaced apart stiffener plates are secured
with the neck assembly." Claim 18, emphasis added.
Cohen discloses "a flexible inspection system for use in both industrial
and medical applications." Cohen 1: 6-7. Cohen's Figure 2 is reproduced
below:
46
38 34
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/
36
Figure 2 shows a plan view of an inspection instrument according to
Cohen's invention. Id. at 4:26-29. The instrument includes "a control
assembly 30, a flexible tube, or shaft, 32, a transitional coupler 34, an
articulating vertebrae assembly 36, and an objective, or distal, head 38." Id.
at 5:9-11.
The "[ v ]ertebrae assembly 36 is comprised of a plurality of vertebrae
52, each of ... a substantially annular shape having opposing faces tapered to
form off-centered diametrically extending pivot ridges 53." Id. at 5 :46-51.
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Application 12/896,364
The vertebrae assembly also includes "a torsion inhibiting resilient stiffening
means." Id. at 3:54--55. The resilient stiffening member 60, which the
Examiner interprets as the "stiffener plate" recited in claim 18, is shown in
Cohen's Figures 4, 4A, and 4B, and "is of a substantially rectangular shape
and a substantially rectangular cross section." Id. at 6:37-43. Cohen states
that,
[i]n order that adjacent pivot ridges 53 of adjacent vertebrae 52
provide operable pivot points it is necessary that adjacent ridges
53 be butted one against the other and remain in contact with
one another when vertebrae assembly 36 is in a flexed position.
This is accomplished in the invention by securing member 60 at
a rear portion to transitional coupler 34 and at a forward portion
to objective head 38 by the use of pins 74 which are inserted
through a pair of coupler pinning apertures 72 and objective
pinning apertures 76.
Id. at 7 :20-29.
Thus, Cohen describes resilient stiffening member ( stiffener plate) 60
as being attached to both transitional coupler 34 and objective head 38. The
Examiner reasons that this arrangement meets the claim limitation of having
only the distal end of the stiffener plate secured with the neck assembly
because "[ o ]nly the distal ends of stiffener plates 60 are secured at '7 6' in the
neck assembly (see Fig. 3 illustrated [above]). The proximal ends of the
stiffener plates are secured outside of the neck assembly." Ans. 2. That is,
the Examiner interprets the "neck assembly" of Cohen's device as including
articulating vertebrae assembly 36 and objective head 38, but not transitional
coupler 34. See Cohen's Figure 2, reproduced above.
The Examiner, however, points to no description in Cohen that
supports interpreting its vertebrae assembly 36 and objective head 38 as part
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Appeal2017-008100
Application 12/896,364
of a neck assembly component that does not include transitional coupler 34.
The Examiner's interpretation is also contrary to the Specification's
description of the parts of its device because the Specification describes the
jaw assembly that is distal to the neck assembly as a separate component.
See Spec. ,r 130: "[E]nd effector 200 includes a neck assembly 210 ... and a
tool or jaw assembly 220 supported on a distal end of neck assembly 210."
In summary, the Examiner has not persuasively explained how, under
the broadest reasonable interpretation of the claim language, Cohen's device
includes a stiffener plate that is secured only at the distal end with the neck
assembly, as required by claim 18. We therefore reverse the rejection of
claims 18-20, 23, and 25-29 under 35 U.S.C. § 103(a) based on Viola and
Cohen.
The rejections based on Viola and Cohen, further combined with either
Heideman or Heckele, rely on the same interpretation of Cohen that is
discussed above. For the reasons discussed above, therefore, we also reverse
the rejection of claims 6-8, 10-17, and 24 under 35 U.S.C. § 103(a) based on
Viola, Cohen, and Heideman, and the rejection of claim 21 under 35 U.S.C.
§ 103(a) as obvious based on Viola, Cohen, and Heckele.
SUMMARY
We affirm the rejection under 35 U.S.C. § 112, first paragraph, based
on lack of adequate written description.
We reverse all of the rejections based on 35 U.S.C. § 103(a).
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Appeal2017-008100
Application 12/896,364
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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