Ex Parte Harris et al

Patent Trial and Appeal Board

Dec 14, 2015

12608860 (P.T.A.B. Dec. 14, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/608,860 10/29/2009
27777 7590 12/16/2015
BERNARD F PLANTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
FIRST NAMED INVENTOR
Jason L. Harris
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.
END6544USCIP1 7268
EXAMINER
HOUSTON, ELIZABETH
ART UNIT PAPER NUMBER
3773
NOTIFICATION DATE DELIVERY MODE
12/16/2015 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):
jnjuspatent@corus.jnj.com
lhowd@its.jnj.com
pairjnj@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON L. HARRIS, LAWRENCE CRAINICH,
MICHAEL J. STOKES, MARKS. ZEINER, and DARREL M. POWELL
Appeal2013-006983
Application 12/608,860
Technology Center 3700
Before LINDA E. HORNER, MICHELLE R. OSINSKI, and
MICHAEL L. WOODS, Administrative Patent Judges.
WOODS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jason L. Harris et al. ("Appellants") seek our review under 35 U.S.C.
§ 134(a) of the final rejection of claims 1-10. Br. 4. We have jurisdiction
under 35 U.S.C. § 6(b ).
We REVERSE.
Appeal2013-006983
Application 12/608,860
CLAIMED SUBJECT MATTER
Appellants' invention relates to 'joining of cavity wall tissue with a
surgical stapler." Spec. i-f 2. Claims 1 and 7 are independent and claim 1 is
reproduced below, with emphasis on a certain claim limitation at issue in
this appeal.
1. A method of deploying a surgical fastener comprising
the steps of:
a. introducing said fastener into a body of a
patient while said fastener is in a first shape comprising a
first loop having a back span with an original size and
shape;
b. moving end segments of said fastener away
from each other substantially along an entire length
thereof while keeping said back span in substantially its
original size and shape; and
c. forming said fastener into a second loop having
a width greater than a width of said first loop.
Br. 12 (Claims App.) (emphasis added).
THE REJECTIONS
I. Claims 1-3 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Schulze (US 5,413,584, issued May 9, 1995). Final Act. 2
(dated July 20, 2012).
II. Claims 4--8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Schulze and Harris (US 2009/0318936 Al, published Dec.
24, 2009). Final Act. 3.
III. Claim 9 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Schulze, Harris, and Demarais (US 7,753,870 B2, issued
July 13, 2010). Final Act. 4.
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Appeal2013-006983
Application 12/608,860
IV. Claim 10 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Schulze, Harris, and Yeung (US 6,530,933 Bl, issued
Mar. 11, 2003). Final Act. 5.
ANALYSIS
In rejecting claims 1-10 under Rejections I-IV, the Examiner finds
that Schulze discloses a method of deploying a surgical fastener, including,
inter alia, moving end segments of the fastener away from each other "while
keeping its back span [ 16, 18] in substantially its original size and shape,"
e.g., "an inverted v-shape." Final Act. 2-3 (citing Schulze, Figs. 3b, 3c, and
3d) (rejecting claims 1-3 under Rejection I); id. at 3--4 (rejecting claims 4--8
under Rejection II); see also id. at 4--5 (relying on the findings from
Rejection II in rejecting claims 9 and 10 under Rejections III and IV,
respectively). The Examiner explains, "the back span [ 16, 18] depicted in
Figures 3b-3d is 'substantially the same size and shape' as depicted in
Figure 3a." Id. at 2.
We reproduce Figures 3a-3d of Schulze, below:
FIG-3a FIG-3d
Figures 3a-3d depict "plan views of chronologically successive forms
during setting of the staple," including rectilinear sections 16, 18 that are
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Appeal2013-006983
Application 12/608,860
angled outwards by clamping jaw 120. Schulze, col. 3, 11. 8-9; see id. at 4,
11. 23-26.
In its Brief, Appellants assert that the Examiner erred in finding "' ...
that the back span depicted in Figures 3b-3d [of Schulze] is 'substantially
the same size and shape' as depicted in Figure 3a."' Id. at 10 (citing Final
Act. 2). To illustrate this point, Appellants provide annotated copies of
Figures 3a and 3b of Schulze, which we reproduce, below:
FIG-3a FIG-3b
2, ..
\
,132
}
According to Appellants, "the back span ( 16, 18) [of Schulze] changes
its size and shape" and does not meet the claimed step of "forming the
fastener while keeping said back span in substantially its original size and
shape." Br. 9-10.
Upon reviewing the record, we find Appellants' argument persuasive.
In particular, we do not agree with the Examiner's finding that "the back
span [ 16, 18] depicted in Figures 3b-3 d is 'substantially the same size and
shape' as depicted in Figure 3a." Final Act. 2.
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
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Appeal2013-006983
Application 12/608,860
Upon reviewing Appellants' Specification, we find that Figures 1 and
2 (reproduced below) provide support for the limitation at issue. See Spec.
para. 148.
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I
t..-. ----------------------------- \)·~:-1 ------------------------------ !
"------ ... ..•'
FIG. 1
Appellants' Specification describes, "[ s ]tap le legs 14, 16 are bent
outward by applying a deploying force [32] ... to the inside of each staple
leg 14, 16, adjacent the intersection between the leg and back span 12[, and
that while the] outward deploying forces 32 are applied to staple legs 14,
16[,] ... back span 12 is held fixed ... [and] retains a non-linear
characteristic." Spec. para. 148 (referring to Figs. 1, 2) (emphasis added);
see also id. para 149 ("During deployment, staple 10 transitions between the
initial, intermediate and final, formed conditions ... so as to first open staple
10 to the intermediate condition of FIG. 2, and then bend each of the staple
legs 14, 16 back around into the formed condition shown in FIG. 3 ....
During staple transformation the staple back span maintains substantially the
same size and shape.").
In light of the above-description, we interpret "while keeping said
back span in substantially its original size and shape," as used in the claim
language, to permit only a de minimis amount of change from the original
size and shape, as the Specification describes back span 12 as being "held
fixed" while staple legs 14, 16 are bent outward. Id. This meaning is also
consistent with the ordinary and customary meaning of the term. See, e.g.,
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Appeal2013-006983
Application 12/608,860
Oxford Dictionaries, available at
http://www.oxforddictionaries.com/us/ definition/ american_english/ substanti
ally (last visited Dec. 10, 2015) (defining "substantially" as "[ f]or the most
part; essentially").
Accordingly, we agree with Appellants' argument that the Examiner's
interpretation of the relevant claim limitation is unreasonably broad. See Br.
9-10. Although Schulze's back span is an inverted v-shape in the forms
depicted in both Figures 3a and 3b, the amount of change in the inverted v-
shape is more than a de minimis amount. In particular, because Schulze' s
"back span" 16, 18 bends outwardly by clamping jaw 120, as illustrated in
Schulze's Figures 3a and 3b, Schulze's "back span" 16, 18 does not "keep"
"substantially its original size and shape," as called for in the claims.
Schulze, col. 4, 11. 23-26; id. at Figs. 3a, 3b; Appeal Br. 12-13 (Claims
App.). Appellants, therefore, have shown that the Examiner erred in finding
that Schulze discloses the step of "moving end segments of said fastener
away from each other ... while keeping said back span in substantially its
original size and shape."
Rejections II-IV rely on the same erroneous finding by the Examiner
(Final Act. 3-5), and the Examiner does not explain how Harris, Demarais,
or Yeung cure this underlying deficiency.
For the foregoing reasons, we do not sustain the rejection of claims 1-
10 under Rejections I-IV.
SUMMARY
The Examiner's rejection of claims 1-3 as anticipated under
35 U.S.C. § 102(b) by Schulze is reversed.
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Appeal2013-006983
Application 12/608,860
The Examiner's rejection of claims 4--8 as unpatentable under
35 U.S.C. § 103(a) over Schulze and Harris is reversed.
The Examiner's rejection of claim 9 as unpatentable under 35 U.S.C.
§ 103(a) over Schulze, Harris, and Demarais is reversed.
The Examiner's rejection of claim 10 as unpatentable under 35 U.S.C.
§ 103 (a) over Schulze, Harris, and Yeung is reversed.
REVERSED
llw
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