Ex Parte Farascioni

Patent Trial and Appeal Board

Aug 14, 2017

14493483 (P.T.A.B. Aug. 14, 2017)

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.
14/493,483 09/23/2014 DAVID FARASCIONI H-US-02891CON(203-7864CON 1030
50855 7590
Covidien LP
60 Middletown Avenue
Mailstop 54, Legal Dept.
North Haven, CT 06473
08/16/2017 EXAMINER
JALLOW, EYAMINDAE CHOSSAN
ART UNIT PAPER NUMBER
3721
NOTIFICATION DATE DELIVERY MODE
08/16/2017 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):
SurgicalUS@covidien.com
medtronic_mitg-si_docketing@cardinal-ip.com
mail @ cdfslaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID FARASCIONI1
Appeal 2016-005319
Application 14/493,483
Technology Center 3700
Before DANIEL S. SONG, KEN B. BARRETT, and
FREDERICK C. LANEY, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 the Examiner’s Final
Rejection of claims 2—21 in the present application. Claim 1 has been
cancelled. We have jurisdiction under 35 U.S.C. §§ 6(b) and 134.
We AFFIRM-IN-PART.
1 The real party in interest is Covidien LP (Appeal Brief filed August 31,
2015, 1).
Appeal 2016-005319
Application 14/493,483
The claimed invention is directed to a surgical instrument for joining
tissue including a tissue stop (Spec. Title; Abstract). Independent claim 2
reads as follows (Reply to Notification of Non-Compliant Appeal Brief
(hereinafter “Brief’) 12, Claims App’x, emphasis added):
2. A surgical instrument for surgically joining tissue
comprising:
a handle assembly;
an elongate portion extending distally from the handle
assembly and defining a longitudinal axis;
a pair of opposed jaw members operatively coupled to
the elongate portion and extending distally therefrom; and
a tissue stop mechanically engaged with one of the pair
of opposed jaw members such that at least a portion of the
tissue stop is longitudinally movable along an axis of and
relative to the one of the pair of opposed jaw members.
Independent claims 9 and 16 are similar in scope in that they recite a
tissue stop is translatable or movable along an axis of a jaw member (Brief
13—14, Claims App’x).
The Examiner rejects the claims as follows:
1. Claims 2, 5, 6, 7, 9, 11, 13, and 14, on the ground of
nonstatutory double patenting as being unpatentable over claims of
U.S. Patent Application No. 13/208,447 (Final Office Action
(hereinafter “Final Act.”) 2-4).
2. Claims 2, 4, 6, 7, 9, 10, 13, 14, and 16—18 under 35 U.S.C.
§ 102(b) as anticipated by Geiste2 (Final Act. 5—6).
2 Patent No. US 6,681,978 B2 issued to Geiste et al., January 27, 2004.
2
Appeal 2016-005319
Application 14/493,483
3. Claims 3,5, 11, 12, 19, and 20 under 35 U.S.C. 103(a) as
obvious over Geiste in view of Ahlberg3 (Final Act. 7—8).
4. Claims 8, 15, and 21 under 35 U.S.C. 103(a) as obvious over
Geiste in view of Green4 (Final Act. 8).
ANALYSIS
Only those arguments actually made by the Appellant have been
considered in this decision. Arguments that the Appellant could have made
but chose not to make have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(l)(iv).
Double Patenting
Claims 2, 5, 6, 7, 9, 11, 13, and 14, stand rejected on the ground of
nonstatutory double patenting over various claims of U.S. Patent Application
No. 13/208,447 (Final Office Action (hereinafter “Final Act.”) 2-4). The
Examiner finds that “[although the conflicting claims are not identical, they
are not patentably distinct from each other because a person having ordinary
skill in the art would have found the claims to have been obvious variations
of the claims of the patents.” (Final Act. 4).
The Appellant does not appeal, or otherwise acknowledge, this double
patenting rejection in its Appeal Brief. Accordingly, we summarily affirm
this rejection.
3 Patent No. US 7,494,501 B2 issued to Ahlberg et al. February 24, 2009.
4 Patent No. US 5,573,169 issued to Green et al., November 12, 1996.
3
Appeal 2016-005319
Application 14/493,483
Anticipation by Geiste
The Examiner rejects claims 2, 4, 6, 7, 9, 10, 13, 14, and 16—18 as
anticipated by Geiste (Final Act. 5—6). In regards to independent claim 2,
the Examiner finds that Geiste discloses
a tissue stop (61) (see fig. 3 - and col. 6, lines 30-34)
mechanically engaged with one of the pair of opposed jaw
members (22) such that at least a portion of the tissue stop (61)
is longitudinally movable along an axis of the one of the pair of
opposed jaw members (20; Fig. 2) (such as when the instrument
is disassembled).
(Final Act. 5).
The Examiner makes similar findings with respect to independent
claims 9 and 16 (Final Act. 6). The Examiner also asserts that
Geiste shows that the retaining channel is independent of the
remainder of the stapling apparatus and therefore, moves
relative to the remainder of the stapling apparatus. Due to the
tissue stop being fit into the longitudinal channel present in
element 12, it is implicitly disclosed that the tissue stop moves
in the longitudinal direction if being disassembled.
(Final Act. 9).
The Appellant disagrees with the Examiner and argues that “there is
no relative movement between the tissue stop 61 of retaining channel 14 of
Geiste and the cartridge 22/loading unit 20 of Geiste.” (Brief 5). As to the
Examiner’s assertion of movement during disassembly, the Appellant argues
that there is no relative movement when the tissue stop is “mechanically
engaged” (claim 2 and similar language in claims 9 and 16) (Brief 6, 7), and
that this claim language in conjunction with language “such that,” makes it
“clear that the longitudinal movement occurs while the tissue stop is
connected to the jaw member and not during disassembly.” (Reply Br. 2—3).
4
Appeal 2016-005319
Application 14/493,483
Moreover, while the Appellant disagrees that the cartridge 22 is a jaw
member, it argues that even if such interpretation is applied, the retention
channel 14/tissue stop 61 is not movable relative to the cartridge 22 because
it is the cartridge 22 that is moved relative to the retention channel 14 during
disassembly (Reply Br. 3).
We generally agree with the Appellant. Relative movement during
disassembly does not satisfy the independent claims under the broadest
reasonable interpretation thereof. Claim 2 requires the tissue stop to be
engaged with a jaw member such that it longitudinally moves relative to the
jaw member. Claim 9 similarly recites that the tissue stop is slidably
coupled with a jaw member such that the tissue stop is translatable along the
axis of the jaw member. Claim 16, while phrased differently, still requires
the tissue stop to be “configured for mechanical engagement with a jaw
member” such that the tissue stop is movable relative to the jaw member.
In contrast, in referring to Figures 2 and 4C, Geiste discloses that
Retention structures are provided at the distal end of each of the
walls 62, 64 to engage corresponding structures provided on the
disposable loading unit 20. In particular, notches 66a and 66b
are provided for engaging corresponding protuberances, such as
protuberance 67, and slots 68a and 68b are provided for
engaging corresponding detents, such as detent 69. These
structures inhibit lateral, longitudinal and perpendicular shifting
of the cartridge 22 (and disposable loading unit 20) within the
retaining channel 14.
(Geiste, col. 5,11. 41—49; Figs. 2, 4C).
Thus, the corresponding retention structures on the retention channel
14 and the loading unit 20/cartridge 22 of Geiste prevent relative movement
there between along the axis of the jaw member when assembled.
5
Appeal 2016-005319
Application 14/493,483
In addition, even during disassembly, we generally agree with the
Appellant that it is the cartridge 22 that is moved relative to the retention
channel 14 during disassembly (Reply Br. 3). Cartridge 22 is part of the
“disposable loading unit 20,” and during disassembly after use, “the spent
disposable loading unit 20 is removed from retaining channel 14,” and a new
one is inserted (Geiste, col. 4,11. 43—50, col. 7,1. 63—col. 8,1. 3). To any
extent that the Examiner may be asserting that the body portion/handle
portion 12 of Geiste corresponds to a recited “jaw member,” we disagree
with such an expansive interpretation of “jaw member.”
In setting forth what appears to be an alternative application of Geiste,
the Examiner states that “if tool of Geiste were to be disassembled, the
retaining channel (14) would be capable of moving relative to jaw member
(88).” (Ans. 9). Hence, the Examiner appears to assert relative movement
between the retaining channel 14 and the distal portion 88 of the “anvil
support beam 80” of Geiste. However, the Appellant is correct that the
retention channel 14 and the tissue stop 61 of Geiste is not part of the
disclosed anvil half-section 1 lb (Reply Br. 2). The claims require the tissue
stop to move relative to the arm on which it is engaged or coupled. The
tissue stop of Geiste is not engaged or coupled to anvil half-section lib
having distal portion 88 and anvil support beam 80 (Geiste, Fig. 1, 2). Thus,
even under this alternative application, Geiste fails to satisfy the limitations
at issue.
Therefore, in view of the above, we reverse the Examiner’s
anticipation rejection of claims 2, 4, 6, 7, 9, 10, 13, 14, and 16—18.
6
Appeal 2016-005319
Application 14/493,483
Geiste in view of Ahlberg
As to the rejection of claims 3,5, 11, 12, 19, and 20, the Examiner
relies on Ahlberg for disclosing a “tissue stop being made of a first part
including stamped metal and a second part including overmolded plastic
section.” (Final Act. 7). The Appellant argues that Ahlberg “fails to cure the
above-noted deficiencies of Geiste.” (Brief 8). Indeed, the Examiner’s
application of Ahlberg fails to address the deficiencies of Geiste discussed
supra. Correspondingly, this rejection is also reversed.
Geiste in view of Green
As to the rejection of claims 8, 15, and 21, the Examiner relies on
Green for disclosing “tissue stop includes a proximal portion pivotably
engaged with the one of the pair of opposed jaw members.” (Final Act. 8).
The Appellant argues that Green “fails to cure the above-noted deficiencies
of Geiste.” (Brief 9). Indeed, the Examiner’s application of Green fails to
address the deficiencies of Geiste discussed supra, and we reverse this
rejection as well.
DECISION
1. The Examiner’s rejection of claims 2, 5, 6, 7, 9, 11, 13, and 14,
on the ground of nonstatutory double patenting is summarily
AFFIRMED.
2. The Examiner’s prior art rejections of claims 2—21 are
REVERSED.
7
Appeal 2016-005319
Application 14/493,483
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)(l)(iv).
AFFIRMED-IN-PART
8