Ex Parte Carter et al

Patent Trial and Appeal Board

Jan 22, 2019

14984047 (P.T.A.B. Jan. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/984,047 12/30/2015
50855 7590
Covidien LP
60 Middletown A venue
Mailstop 54, Legal Dept.
North Haven, CT 06473
01/24/2019
FIRST NAMED INVENTOR
Sally Carter
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. CONFIRMATION NO.
H-US-03144DIVBCON(-8482) 8159
EXAMINER
SMITH, SCOTT A
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
01/24/2019 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):
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 SALLY CARTER and RICHARD STEVENSON 1
Appeal2018-004373
Application 14/984,047
Technology Center 3700
Before MICHELLE R. OSINSKI, JEREMY M. PLENZLER, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-11 and 13-162 under 35 U.S.C. § 103(a) as
unpatentable over Bauman (US 7,547,312 B2, iss. June 16, 2009) and Grant
(US 2002/0165559 Al, pub. Nov. 7, 2002). We have jurisdiction under
35 U.S.C. § 6(b ).
We REVERSE.
1 Covidien LP ("Appellant") is the Applicant as provided in 37 C.F.R.
§ 1.46 and is identified as the real party in interest. Appeal Br. 1.
2 Claim 12 is cancelled. Appeal Br. 16 (Claims Appendix).
Appeal2018-004373
Application 14/984,047
THE CLAIMED SUBJECT MATTER
Claims 1 and 8 are independent. Claim 1 is reproduced below. 3
1. An apparatus for joining two hollow organ sections with an
annular array of surgical staples, the apparatus comprising:
a staple cartridge component including a plurality of
surgical staples arranged in an annular array;
an anvil component movable relative to the staple
cartridge component between spaced apart and approximated
positions to adjustably clamp the organ sections between the
staple cartridge and anvil components;
a buttress component configured and dimensioned to be
positioned on a distal surface of the staple cartridge component,
the buttress component including a buttress member and a
plurality of circumferentially arranged tabs extending proximally
from the buttress member;
a plurality of attaching members, each tab of the plurality
of circumferentially arranged tabs of the buttress component
including an attaching member of the plurality of attaching
members; and
a plurality of fastening members disposed on an outer wall
of the staple cartridge component, the plurality of fastening
members corresponding to, and configured and dimensioned to
engage, the plurality of attaching members disposed on the
plurality of circumferentially arranged tabs of the buttress
component to securely position the buttress component on the
staple cartridge component.
OPINION
The Examiner finds that Bauman teaches all of the limitations of
independent claims 1 and 8, except that Bauman "lacks the explicit
3 We understand the Examiner to have entered, for purposes of appeal, the
Amendment Under 3 7 C.F .R. § 1.116 ( June 9, 2017), which was filed along
with a Certification and Request for Consideration Under the After Final
Consideration Pilot Program 2.0 (78 Fed. Reg. 29117 (2013)). Adv. Act. 3
(June 23, 2017).
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Appeal2018-004373
Application 14/984,047
disclosure of the staple cartridge component including fastening members
corresponding to and cooperating with the attaching members of the buttress
tabs." Final Act. 3. Instead, Bauman discloses only that each tab 80 of
buttress 12 "includ[es] an ... attaching member 88 comprising an adhesive
tape, wherein the attaching member 88 could be any suitable attaching
means, if desired." Id. ( citing Bauman 11 :50-65). More particularly,
Bauman contemplates buttress 12 with protrusions 80 covered with an
adhesive substance 88 over which a removable cover 82 has been placed.
Bauman 11 :36-43, Fig. 8A. Each removable cover 82 can be removed so as
to enable attachment of protrusions 80 of buttress 12 to the outer surface of
circular stapler body 22 when buttress 12 is properly positioned. Id. at
11 :45--49, Fig. 8B. Bauman also describes that "the protrusions may be
provided without adhesive should it be desired to secure the buttress 12 to
the circular stapler through other means, such as, for example with a suture,
adhesive tape, or adhesives applied to the protrusions at the time of use." Id.
at 11 :54--58 (boldface omitted). There is, however, no disclosure in Bauman
of circular stapler body 22 having corresponding fastening members on its
outer wall that would engage with adhesive 88 (or other means) when
buttress 12 is positioned to conform to the contours of the outer surface of
circular stapler body 22.
The Examiner finds that Grant teaches "a similar stapler comprising a
buttress 107 comprising a plurality of tabs 108 including attaching members
109 cooperating with corresponding fastening members 106 of anvil surface
89 and ring 105 affixed thereto." Final Act. 3 (citing Grant ,r 55, Fig. 11).
The Examiner concludes that, in view of Grant's teachings, it would have
been obvious "to provide the exterior surface of the cartridge component
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Application 14/984,047
with separate fastening members cooperating with the attaching members of
the buttress in order to more effectively secure the buttress to the cartridge."
Id. at 3--4. More particularly, the Examiner acknowledges that Grant does
not specifically disclose fastening members on an outer wall of the cartridge
component, but explains that Grant is relied on for the more general idea of
"an annular component (105) of a surgical stapler with an outer surface
having a plurality of fastening members ( 106) corresponding to, and
cooperating with[,] attaching members (109) of tabs (108) of a buttress
member ( 107)." Ans. 3. The Examiner determines that it would have been
obvious "to provide the cartridge component outer surface of Bauman,
which is adjacent to the tabs of the buttress, with 'fastening members'
cooperating with the attaching members (88) [ of the buttress] in order to
more securely attach the buttress to the cartridge component." Id.
Appellant argues that the Examiner's proposed modification of
Bauman "appears to be based on impermissible hindsight" because the
Examiner has not adequately shown why a person of ordinary skill in the art
"would have sought to include fastening members and attaching members in
the claimed configuration ... and why one would have understood said
configuration to more effectively secure a buttress to a cartridge." Appeal
Br. 9. More particularly, Appellant argues that:
a person of ordinary skill in the art would not have understood
secure attachment to be an issue that remained to be improved
upon with respect to the buttress of Bauman, and/or the Examiner
has not offered reasoning to explain how a person of ordinary
skill in the art would have understood fastening members
disposed on an outer wall of the circular stapler body of Bauman
to have resulted in more secure attachment of the buttress thereto.
Reply Br. 3.
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Appeal2018-004373
Application 14/984,047
As an initial matter, we note that the Examiner has not adequately
explained what the proposed "separate fastening members cooperating with
the attaching members of the buttress" (Final Act. 4) would be. Assuming
that the proposed separate fastening members provided on an exterior of the
cartridge component would be a second adhesive, we agree with Appellant
that Grant uses a two-part connector "because the tab hooks 106 and the tab
openings 109 are both necessary for attaching the buttress ring 107 to the
circular anvil 89" (Reply Br. 2-3) ( emphasis added), but a two-part
connector is not necessary for adhesive, nor is it clear that a two-part
connector would provide any improvement in secure attachment with respect
to an adhesive (id. at 3).
The Examiner also finds that Grant teaches that it "is well known to
provide both surfaces of a buttress 60 and cartridge surface 45 with an
adhesive 66 for securing the buttress 60 to the cartridge 45." Final Act. 3
( citing Grant Fig. 3). In the Answer, the Examiner clarifies that "Grant is
not relied upon to teach a process of 'applying' adhesive to both surfaces of
a buttress and cartridge component, which is more specific than claimed, but
rather to disclose that the adhesive is 'disposed' on both surfaces of the
buttress and cartridge component." Ans. 3. The Examiner takes the position
that adhesive being disposed on both the buttress surface and the cartridge
component surface "would be inherent after the buttress ( 60) ... is pressed
into position onto cartridge component ( 46), regardless of whether the
adhesive remained molten, or had solidified." Id.
Whether or not adhesive would be disposed on both the buttress
surface and the outer surface of the circular stapler body after the buttress is
pressed into position relative to the circular stapler body and attached with
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Application 14/984,047
Bauman's adhesive does not explain what would have led one of ordinary
skill in the art "to provide the exterior surface of the cartridge component
with separate fastening members cooperating with the attaching members of
the buttress" (Final Act. 3--4 ( emphasis added)) in accordance with the
Examiner's articulated rejection.
Thus, the Examiner has failed to articulate reasoning having a rational
underpinning to explain what would have led one of ordinary skill in the art
to provide separate fastening members on the exterior surface of Bauman's
staple cartridge assembly for cooperating with the adhesive on the
protrusions of Bauman' s buttress.
To the extent that the separate fastening members provided on the
exterior surface of the cartridge component proposed by the Examiner (Final
Act. 3--4) would be based on the tab hooks and tab openings of Grant (with
some corresponding modification to the adhesive on the protrusions of
Bauman's buttress), we note that Grant is concerned with "removably
attach[ing] the perforated buttress ring 107 to the tab hooks 106 of
attachment ring 105" by rotary motion. Reply Br. 2 (citing Grant ,r 56)
( explaining that either counterclockwise or clockwise rotation can remove an
attached buttress ring). The intended removable nature of the attachment of
Grant's two-part connector undermines the Examiner's position that that a
two-part connector would more effectively secure the buttress to the staple
cartridge assembly in Bauman.
In sum, the Examiner fails to adequately explain what-absent
impermissible hindsight reconstruction-would have led an ordinary artisan
to provide the exterior surface of the cartridge component with separate
fastening members cooperating with the attaching members of the buttress.
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Application 14/984,047
For the foregoing reasons, we find that the Examiner did not articulate
adequate reasoning to support a conclusion that the subject matter of
independent claims 1 and 8 is rendered obvious by Bauman and Grant. We
do not sustain the rejection of claims 1 and 8, or claims 2-7, 9-11, and 13-
16 depending therefrom, under 35 U.S.C. § 103(a) as unpatentable over
Bauman and Grant.
DECISION
The Examiner's decision to reject claims 1-11 and 13-16 under
35 U.S.C. § 103(a) as unpatentable over Bauman and Grant is reversed.
REVERSED
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