Ex Parte Racenet et al

Patent Trial and Appeal Board

May 11, 2016

12898176 (P.T.A.B. May. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/898, 176 10/05/2010
50855 7590 05/13/2016
Covidien LP
555 Long Wharf Drive
Mail Stop SN-I, Legal Department
New Haven, CT 06511
FIRST NAMED INVENTOR
David C. Racenet
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.
2671CON 2
(203-2856CON 2)
3377
EXAMINER
WOO, JULIAN W
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
05/13/2016 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):
mail@cdfslaw.com
SurgicalUS@covidien.com
medtronic_mitg-si_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DA YID C. RACENET, HANSPETER BA YER, and
SCOTT CUNNINGHAM1
Appeal2014-003807
Application 12/898, 176
Technology Center 3700
Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
MARK A. GEIER, Administrative Patent Judges.
GEIER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's rejection of claims 1-11. Appeal Br. 4. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Appellants indicate that the real party in interest is Covidien LP. Appeal
Br. 2.
Appeal2014-003807
Application 12/898, 176
THE CLAIMED SUBJECT MATTER
The claimed subject matter relates to "formable surgical fasteners and,
more particularly, to directionally biased formable staples for use in surgical
staplers having anvil pockets for forming the staples." Spec. 1. 2 Claims 1
and 7 are illustrative and recite:
1. A cartridge for use with a surgical stapler, the cartridge
having a plurality of individual directionally biased surgical
staples therein and associated pushers for ejecting the staples
from the cartridge, each of the staples being supported within the
cartridge in spaced relation from adjacent staples and each of the
staples comprising:
a backspan;
a pair of deformable legs depending from the backspan,
the legs configured to come into contact with anvil pockets for
formation of the staple; and
wherein each of the staples has a substantially uniform
cross-section along substantially the entire length of each leg, the
cross-section being a trapezoid.
7. l1.. directionally biased surgical staple for use \vi th a
surgical stapler having an anvil including a plurality of anvil
pockets, the directionally biased staple comprising:
a backspan having first and second ends and defining a
longitudinal axis; and
a pair of deformable legs depending from the first and
second ends of the backspan, each of the legs diverging
outwardly from the other leg and forming an angle e with respect
to an axis perpendicular to the longitudinal axis of the backspan,
the deformable legs having substantially uniform dimensions
over substantially their entire length;
wherein each of the legs includes a substantially uniform
cross-section along substantially the entire length, the cross-
section being a trapezoid.
2 Appellants' Specification does not provide line or paragraph numbering,
and accordingly, we reference only the page number.
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Appeal2014-003807
Application 12/898, 176
THE REJECTIONS ON APPEAL
The Examiner rejected claims 1-6 under 35 U.S.C. § 103(a) as
unpatentable over Takase (US 5,221,036; iss. June 22, 1993), Gaskill (US
2,807,185; iss. Sept. 24, 1957), and Keikhosrow K. Firoozbakhsh et al.,
Staple Leg Profile Influence on Pullout Strength; A Biomechanical Study,
331 Clinical Orthopaedics and Related Research 302 (1997) (hereinafter
"Firoozbakhsh").
The Examiner rejected claims 7-11under35 U.S.C. § 103(a) as
unpatentable over Blewett (US 5,630,540; iss. May 20, 1997) and Gaskill.
ANALYSIS
Rejection of Claims 1-6 as Obvious over Takase, Gaskill, and Firoozbakhsh
Claim 1
The Examiner finds that Takase discloses the invention substantially
as recited in claim 1. Final Act. 2-3 (referencing Takase, col. 3, 1. 57-col. 4,
1. 47; col. 5, 11. 43-68; Figs. 4-7, 10-12). However, according to the
Examiner, "Takase does not disclose that the cross-section is a trapezoid,
where each of the staples is formed from titanium or stainless steel." Final
Act. 3. The Examiner finds that Gaskill discloses a staple with a trapezoidal
cross-section and further finds that one of skill in the art would have
modified Takase to have such a cross section because "[ s ]uch a modification
would not only allow the staple to have sufficient strength for receiving the
impact of a staple driver, it would allow the staple to be used with the guide
surfaces of an automatic stapler." Id. The Examiner enlarges on the alleged
teachings of Gaskill in the Answer where the Examiner states:
Gaskill indeed provides a rational underpinning or motivation for
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Appeal2014-003807
Application 12/898, 176
modifying the staples of Takase and Blewett. Gaskill teaches
that a staple with a trapezoidal cross-section advantageously has
sufficient strength for receiving an impact of a staple driver. In
other words, the trapezoidal cross-section allows the staple to
have suitable mechanical properties or the structural integrity for
withstanding an impact and for penetration of an object. This
primary teaching is a rational underpinning or motivation for
modifying the staples of Takase and Blewett, which, like other
staples, are subject to driver impact for penetration of objects.
Ans. 5.
Appellants contend the foregoing Examiner's reason for modifying
the surgical staple of Takase with features from the non-surgical staple of
Gaskill "(i.e., to provide a surgical staple with 'sufficient strength for
receiving the impact of a staple driver') does not have any rational
underpinning to support the legal conclusion of obviousness." Appeal Br.
13 (referencing Final Act. 3). More particularly, Appellants elaborate on the
disclosure of Gaskill by stating
Gaskill discloses that the purpose of its particular trapezoidal
cross-section of the cross bar 131 of the staple (more particularly,
the particular angle of the lower surface of the cross bar 13 1
with respect to the upper surface of the cross bar 131) is to
provide "the correct angle for feeding the staples to the staple
slot" (column 2, lines 51-52; and see FIGS. 2-4 of Gaskill
below). That is, the cross bar 131 of Gaskill includes a
trapezoidal cross-section to enable the "under surface of the cross
bar 131 [to slide] over the guide bar channel member and the
guide block" (column 2, lines 47-49) and into the staple slot. In
contrast, the surgical staples of Takase do not form part of a
staple stack where many staples are adhered together, and are not
fed into a staple slot over guide surfaces.
Id.; see also id. at 14-15; Reply Br. 7.
We find Appellants' arguments persuasive. Although the Examiner
need not find a reason to combine the references in the prior art itself, in this
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Appeal2014-003807
Application 12/898, 176
case the Examiner purports to do so. Ans. 5; see also KSR Int'! Co. v.
Teleflex Inc., 550 U.S. 398, 419 (2007). As Appellants argue, Gaskill does
not support the Examiner's findings regarding such a reason because
Gaskill' s geometric shape is due to a specific manner of feeding that is not
present in Takase. See Appeal Br. 13-15. Indeed, we find nothing in
Gaskill that teaches a staple should have a trapezoidal cross-section to have
suitable mechanical properties or the structural integrity for withstanding an
impact and for penetration of an object as relied upon by the Examiner.
Ans. 5. Gaskill teaches provision of a staple cross bar under surface that
facilitates sliding of the staples over a guide bar channel member and a guide
block and into a staple slot. Gaskill, col. 2, 11. 47-52. Because the Examiner
premises the reason to combine the references on an unsupported finding
regarding Gaskill, we conclude that the Examiner's reason lacks a rational
underpinning. Accordingly, we do not sustain the Examiner's rejection of
independent claim 1 and its dependent claims 2-6 over Takase, Gaskill, and
Firoozbakhsh.
Rejection of Claims 7-11 as Obvious over Blewett and Gaskill
Claim 7
The Examiner finds that Blewett discloses the invention substantially
as claimed in claim 7. Final Act. 3--4 (referencing Blewett, col. 5, 11. 11-67;
Figs. 4, 5). However, according to the Examiner, "Blewett does not disclose
that the cross-section of the staple is a trapezoid. Nevertheless, Blewett
discloses that the cross-section may 'alternatively' have 'oval, rectangular,
semicircular or other cross-sectional configurations."' Id. at 4; see also
Blewett, col. 5, 11. 18-22. The Examiner again relies on Gaskill for its
teaching of a staple having a trapezoidal cross-section and asserts:
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Appeal2014-003807
Application 12/898, 176
Blewett teaches that "altematively ... other cross-sectional
configurations" may be applied in a staple. Blewett is thus
suggesting that it would be obvious to one of ordinary skill in the
art to select a cross-sectional configuration on the basis of its
suitability for the intended use as a matter of design choice.
Gaskill teaches a trapezoidal cross-sectional configuration as a
suitable and effective choice for a staple.
Ans. 5; see also Adv. Act. 2; Final Act. 4.
In our view the Examiner's reasoning is supported by rational
underpinnings and in accordance with applicable law. Indeed, Appellants
offer no counter-argument to the foregoing. That is, Appellants offer no
reasons such as unexpected results or other advantages associated with
forming the cross-section of the claimed staple, including the legs thereof, as
a trapezoid. Lacking any definitive statement from Appellants in rebuttal to
the Examiner's proffered combination of Blewett and Gaskill, we sustain the
Examiner's rejection of claim 7 and its dependent claims 8-11 as
unpatentable over Blewett and Gaskill.
CONCLUSION
We reverse the Examiner's rejection of claims 1-6 under 35 U.S.C.
§ 103(a) as unpatentable over Takase, Gaskill, and Firoozbakhsh.
We affirm the Examiner's rejection of claims 7-11 under 35 U.S.C.
§ 103(a) as unpatentable over Blewett and Gaskill.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED-IN-PART
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