Ex Parte Shelton et alDownload PDFPatent Trial and Appeal BoardOct 30, 201211652165 (P.T.A.B. Oct. 30, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte FREDERICK E. SHELTON IV, JEROME R. MORGAN, and STEPHEN J. BALEK ____________ Appeal 2010-005431 Application 11/652,165 Technology Center 3700 ____________ Before GAY ANN SPAHN, MICHAEL C. ASTORINO, and WILLIAM A. CAPP, Administrative Patent Judges. SPAHN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Frederick E. Shelton IV et al. (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 1-31. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART and ENTER A NEW GROUND OF REJECTION PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b). Appeal 2010-005431 Application 11/652,165 2 The Claimed Subject Matter The claimed subject matter relates to “surgical staplers having a curved end-effector.” Spec. 1, para. [0001]. Claims 1, 11, 15, and 19 are independent and claim 1, reproduced below, with emphasis added, is illustrative of the subject matter on appeal. 1. A surgical stapler, comprising: a handle portion; a shaft extending from said handle portion, said shaft including a proximal portion and a distal portion, wherein said distal portion defines an axis; and an end-effector extending from said distal portion, said end-effector comprising: a channel configured for receiving a staple cartridge, the staple cartridge configured to removably store staples therein; an anvil configured to deform said staples, wherein at least one of said anvil and the staple cartridge defines a slot; and a cutting member having a cutting surface, wherein said cutting member is relatively movable with respect to said anvil and the staple cartridge, wherein said slot is configured to receive at least a portion of said cutting member and define a path for said cutting member as it is moved relative to said anvil and the staple cartridge, wherein said path includes a linear portion, and a curved portion defined by at least one radius of curvature, and wherein said linear portion defines an axis that is not parallel to or collinear with said shaft axis. The Rejections The following Examiner’s rejections are before us for review: (1). Claims 1, 3, 8, 9, 11, 13, 18, and 20 are rejected under 35 U.S.C. § 102(b) as anticipated by Yoon (US 5,655,698, iss. Aug, 12, 1997); and App App 35 U Clai antic finds anvi cutti end o Ans. Dece Figu Yoo ann eal 2010-0 lication 11 (2). C .S.C. § 10 ms 1, 3, 8, The Exa ipate inde that Yoon l 322, one ng membe f said pat 3 (citing t mber 10, re 28 to ill Figure Office A n’s Figure otated by 05431 /652,165 laims 2, 4- 3(a) as unp Rejectio 9, 11, and miner find pendent cl ’s surgica of which d r, “wherei h in the jun o Yoon’s 2008, the E ustrate wh 28 of Yoo ction mai 28 depicts the Exami 7, 10, 12, atentable O n (1) – An 13 s that Yoo aims 1 and l stapler 3 efines a sl n the path ction betw Fig. 28). I xaminer i ere the pat n, as anno led Decem a curved ner to sho 3 14-17, 19, over Yoon PINION ticipation n disclose 11. Ans. 10 has a st ot 328 wh includes a een the sh n the Fina nserted an h of Yoon tated by th ber 10, 20 jaw 314 of w a linear and 21-31 . based on Y s each and 3. In part aple cartri ich in turn linear por aft and th l Office A annotated ’s slot 328 e Examin 08, is repr a surgica portion of are reject oon every ele icular, the dge 316, 3 defines a tion (at th e end effe ction mail copy of Y has a line er in the F oduced be l stapler an curved gr ed under ment to Examiner 18 and an path for a e proximal ctor).” ed oon’s ar portion inal low: d has bee oove 328. . n Appeal 2010-005431 Application 11/652,165 4 Appellants argue that Yoon “fails to disclose a slot having a path that includes a linear portion.” App. Br. 16. Appellants note that Yoon’s disclosure describes the slots (grooves 328) as being “curved” and argue that Yoon “simply does not disclose curved grooves 328 as being straight,” i.e., having a linear portion. Id. (quoting Yoon, col. 11, l. 6). Appellants note the Examiner’s citation to In re Mraz, 455 F.2d 1069 (CCPA 1972) (Ans. 6) for the proposition that drawing figures “can anticipate claims if they clearly show the structure which is claimed”; however, Appellants point out that Yoon does not indicate that the drawing figures are to scale1 and argue that Yoon’s disclosure as a whole2 indicates that grooves 328 are curved and a person of ordinary skill in the art would not reach the conclusion that Yoon’s path has a linear portion. App. Br. 17. We agree with Appellants that Yoon’s path (the centerline of the slot or curved groove 328) does not have a linear portion. Yoon’s disclosure describes the jaws 312, 314 of the Figure 28 embodiment as being curved, in contrast to the jaws 212, 214 of a previous embodiment, for the purpose of “apply[ing] arcuate rows of staples thereby providing improved access in certain procedures and facilitating severing of vessels closer to the organ in order to minimize the amount of tissue suspended therefrom.” Yoon, col. 10, ll. 52-57. Yoon’s curved jaw 314 includes a “curved groove[] 328 formed along the length of [the] cartridge 316.” Yoon, col. 11, ll. 6-7. As the ordinary and customary meaning of the adjective “curved” is “having or marked by a curve or smoothly rounded bend” and the ordinary and 1 Citing to Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d 951, 956 (Fed. Cir. 2000). 2 Citing to In re Wright, 569 F.2d 1124 (CCPA 1977). Appeal 2010-005431 Application 11/652,165 5 customary meaning of the noun “curve” is “a line that deviates from straightness in a smooth, continuous fashion,”3 the Examiner has failed to explain how Yoon’s curved slot or groove 328, which defines a curved path (centerline of curved slot or groove 328), has a linear portion. Accordingly, we do not sustain the Examiner’s rejection of independent claims 1 and 11, and claims 3, 8, 9, and 13 dependent thereon, under 35 U.S.C. § 102(b) as anticipated by Yoon. Claims 18 and 20 With respect to the anticipation rejection of dependent claims 18 and 20, the Examiner has not made any findings that Yoon discloses each and every element to anticipate independent claim 15 and independent claim 19 upon which claim 18 and claim 20 depend, respectively. Ans. 3. Indeed, with respect to the Examiner’s obviousness rejection of claims 15 and 19, the Examiner indicates that Yoon does not disclose that “the curved portion includes a distal end positioned along or beyond the shaft axis.” Ans. 6. Since the Examiner has acknowledged that Yoon does not anticipate claims 15 and 19, the Examiner has failed to set forth a prima facie case of anticipation with respect to claims 18 and 20 which depend on claims 15 and 19, respectively. Accordingly, we do not sustain the Examiner’s rejection of claims 18 and 20 under 35 U.S.C. § 102(b) as anticipated by Yoon. 3 See http://www.thefreedictionary.com/curved (last visited on October 20, 2012. Appeal 2010-005431 Application 11/652,165 6 Rejection (2) – Obviousness based on Yoon Claims 2, 4-7, 12, 14, and 21-26 Claims 2, 4-7, and 21-23 depend, either directly or indirectly, from independent claim 1 and claims 12, 14, and 24-26 dependent, either directly or indirectly, from independent claim 11. App. Br., Clms. App’x. Appellants contend that Yoon “does not disclose all of the recited elements” of independent claim 1 and 11, “there is no apparent reason for modifying the teachings of Yoon to arrive at the invention of “dependent claims 2, 4-7, 12, 14, and 21-26, and thus, the rejection of these dependent claims should be reversed.” App. Br. 18-19. As the Examiner’s rejection of claims 2, 4-7, 12, 14, and 21-16 relies upon the erroneous finding that Yoon discloses a path having a linear portion, we do not sustain the Examiner’s rejection of claims 2, 4-7, 12, 14, and 21-26 under 35 U.S.C. § 103(a) as unpatentable over Yoon. Claims 15-17, 19, and 27-31 Appellants argue claims 15-17, 19, and 27-31 as a group and we select independent claim 15 as the representative claim. See App. Br. 19-21; see also 37 C.F.R. § 41.37(c)(1)(vii) (2001). Claims 16, 17, 19, and 27-31 stand or fall with claim 15. Claim 15 is directed to a surgical stapler having a staple cartridge and an anvil, at least one of which defines a slot which in turn defines a path for a cutting member, the path including a curved portion, the curved portion including a distal end, and the distal end being positioned one of along or beyond said axis. App. Br., Clms. App’x. The Examiner finds that Yoon substantially discloses the subject matter of independent claim 15 (Ans. 3 and 4); however, Yoon fails to Appeal 2010-005431 Application 11/652,165 7 disclose that “the curved portion of a slot path [is] positioned along or beyond the shaft axis” (Ans. 7). The Examiner also finds that “Yoon recognizes the need of a curved end effector for facilitating the surgeon in the insertion and positioning of the end effector with respect to the targeted tissue to be fastened” and that since the distal portion of Yoon’s curved end effector extends back towards the shaft axis, “the orientation of the shaft with respect to the targeted tissue will provide the surgeon an indication as to where the distal portion of the end effector will be positioned.” Ans. 6-7 (citing to Yoon, col. 10, ll. 52-66). The Examiner concludes that modifying Yoon’s curved end effector to have a distal end of the curved portion of the slot path be positioned along or beyond the shaft axis “would have been an obvious matter of engineering design choice since such a modification would have involved a mere change in the shape or form of a component and would be for the benefits of properly applying arcuate rows of staples while enhancing the positioning of the device.” Ans. 7 (citing Yoon, col. 3, ll. 7-30 and col. 10, ll. 52-57). Appellants quote portions of paragraphs [0013] and [0020] of the present Specification and argue that these paragraphs disclose advantages that flow from the distal end of the curved portion being positioned beyond or along, respectively, the axis of the shaft of the surgical stapler which the devices of Yoon cannot provide. App. Br. 21. Appellants also argue that Yoon “does not provide any teaching, motivation, or suggestion to arrive at the claimed invention” absent hindsight, “a person of ordinary skill in the art would not have had a sufficient reason to modify the device of Yoon . . . to arrive at the invention of Independent Claim[] 15,” and “the Examiner has Appeal 2010-005431 Application 11/652,165 8 failed to point to an apparent reason, or facts,” for modifying Yoon in the manner set forth in the Answer. Id. We are not persuaded by Appellants’ arguments. The Examiner found that modifying the path of the distal end of Yoon’s curved portion to extend beyond the shaft axis would have been an obvious matter of design choice to one of ordinary skill in the art. Ans. 7. Design choice applies when old elements in the prior art perform the same function as the now claimed structures. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (use of claimed feature solves no stated problem and presents no unexpected result and “would be an obvious matter of design choice within the skill of the art”); see also In re Chu, 66 F.3d 292, 298-99 (Fed. Cir. 1995) (“design choice” is appropriate where the applicant fails to set forth any reasons why the differences between the claimed invention and the prior art would result in a different function). We find that Appellants have failed to rebut the Examiner’s conclusion of obvious design choice for the following reasons. The contested claim language recites in the alternative that either the distal end must be positioned along the shaft axis or beyond the shaft axis. App. Br., Clms. App’x. Because of the alternative recitation, Appellants must establish both that use of the distal end positioned along the shaft axis solves a stated problem and use of the distal end positioned beyond the shaft axis solves a stated problem. We agree with Appellants that the Specification’s paragraph [0020] establishes that the claimed along feature solves a problem by allowing the surgeon to discern the orientation of axis 242 to know that the cutting member will not progress beyond axis 242 and gauge the point at which tissue will no longer be transected. App. Br. 21. Thus, with respect to claim 15’s language of the distal end positioned along Appeal 2010-005431 Application 11/652,165 9 the shaft axis, Appellants have successfully rebutted the Examiner’s conclusion of obvious design choice. However, we do not agree with Appellants that the Specification’s paragraph [0013] establishes that the claimed beyond feature solves any stated problem. Unlike the Specification’s paragraph [0020] which is specifically describing the distal end of slot 364 so as to support claim 15’s language of the distal end of the curved portion of the path, i.e., the centerline of the slot, the Specification’s paragraph [0013] is describing that the end 240 of jaw 210 can extend to one side of the axis 242 so as to be offset in order for the surgeon to be able to more readily see distal end 240 and evaluate whether the pulmonary artery is completely captured within the end-effector. Thus, the Specification’s paragraph [0013] does not support that the positioning of the distal end of the curved slot 264 beyond the axis 242 solves a stated problem. Accordingly, we sustain the Examiner’s rejection of independent claim 15, and claims 16, 17, 19, and 27-31 which fall therewith, under 35 U.S.C. § 103(a) as unpatentable over Yoon. NEW GROUND OF REJECTION We make the following new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Claims 18 and 20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Yoon. Claim 18 depends from independent claim 15 and recites that “said curved portion defines an arc corresponding to an angle at least 90 degrees.” App. Br., Clms. App’x. Claim 20 depends from independent claim 19 and recites that “said curved portion includes a proximal portion that extends Appeal 2010-005431 Application 11/652,165 10 away from said shaft axis and a distal portion that extends toward said shaft axis.” App. Br., Clms. App’x. Since dependent claims 18 and 20 depend from independent claims 15 and 19, respectively, we begin our rejection of claims 18 and 20 by adopting the Examiner’s findings with respect to independent claims 15 and 20, namely, we adopt the Examiner’s findings in the Answer: (1) at page 3, beginning at line 8 with “Yoon discloses the claimed surgical stapler comprising” and continuing to line 14, ending with “figs. 28-30 and 32)”; (2) at page 3, beginning at line 14, that “the path includes,” and continuing, at lines 15-16, “a curved portion with a proximal and distal portion”; (3) at page 3, lines 17-19, that “[t]he proximal portion of the curved portion extends away from the shaft axis and the distal portion extends toward the shaft axis (fig. 28),” and “[t]he curved portion of the path “defines an arc of at least 30 or 90 degrees with respect to the shaft axis”; and (4) at page 6, line 20, beginning with “Yoon doesn’t specifically disclose wherein the curved” and continuing through page 7, line 5, ending with “positioned.” The Examiner finds Yoon discloses the subject matter specifically recited in dependent claims 18 and 20. Ans. 3. In particular, with respect to claim 18, the Examiner finds that the curved portion of Yoon’s path “defines an arc of at least 30 or 90 degrees with respect to the shaft axis.” Id. With respect to claim 20, the Examiner finds that the curved portion of Yoon’s path has a proximal portion, which “extends away from the shaft axis,” and a distal portion, which “extends toward the shaft axis.” Id. (citing to Yoon, Fig. 28). We adopt these findings of the Examiner. Finally, we adopt the Examiner’s conclusion on page 7, line 5, beginning with “[t]herefore, the modification of Yoon’s curved end effector Appeal 2010-005431 Application 11/652,165 11 to provide[] a distal end of,” and continuing through line 12, ending with “(CCPA 1976).” DECISION We reverse the Examiner’s rejections of claims 1-14, 18, and 20-26. We affirm the Examiner’s decision to reject claims 15, 16, 17, 19, and 27-31. We enter a new ground of rejection of claims 18 and 20 under 35 U.S.C. § 103(a) as unpatentable over Yoon. Regarding the affirmed rejection, 37 C.F.R. § 41.52(a)(1) provides “Appellant[s] may file a single request for rehearing within two months from the date of the original decision of the Board.” In addition to affirming the Examiner’s rejection of one or more claims, this decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . Appeal 2010-005431 Application 11/652,165 12 (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . Should Appellants elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the Examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome. If Appellants elect prosecution before the Examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejection, including any timely request for rehearing thereof. 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)(1)(iv). AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b) Klh Copy with citationCopy as parenthetical citation