Ex Parte TWOMEY et al

Patent Trials and Appeals Board

Mar 28, 2019

14268140 - (D) (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/268,140
90039 7590
Covidien LP
Attn: IP Legal
5920 Longbow Drive
Mail Stop A36
05/02/2014
04/01/2019
Boulder, CO 80301-3299
FIRST NAMED INVENTOR
JOHN R. TWOMEY
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-EB-00595 (203-9400) 2977
EXAMINER
HOLLM, JONATHAN A
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
04/01/2019 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
docket@carterdeluca.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN R. TWOMEY, JESSICA E.C. OLSON,
GRANT T. SIMS, LOREN TOTH,
MONTES. FRY, and MICHAEL B. LYONS
(Applicant: Covidien LP)
Appeal2018-002158
Application 14/268, 140 1
Technology Center 3700
Before DAVID M. KOHUT, NATHAN A. ENGELS, and
LEE L. STEPINA, Administrative Patent Judges.
KOHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-3, 8, and 20 under 35 U.S.C. § 102(a)(l) as
being anticipated by Shelton '952 (US 2007/0175952 Al, publ. Aug. 2,
2007) (see Final Office Action, mailed May 2, 2017 ("Final Act."), at 4, 7);
and claims 11, 12, and 17 under§ 102(a)(l) as being anticipated by
The Appellants identify Covidien LP, of Mansfield, Massachusetts,
the Applicant under 37 C.F.R § l .43(a), as the real party in interest. (See
Appeal Brief, dated Sept. 29, 2017, at 1).
Appeal2018-002158
Application 14/268, 140
Shelton '951 (US 2007/0175951 Al, publ. Aug. 2, 2007) (see Final Act. 5).
In addition, the Appellants appeal from the Examiner's decision rejecting
claims 4--7 and 10 under 35 U.S.C. § 103 as being unpatentable over
Shelton '952 and Castroviejo (US 2,652,832, issued Sept. 22, 1953) (see
Final Act. 9); claim 9 under§ 103 as being unpatentable over Shelton '952
(see Final Act. 11 ); claims 13-16 and 19 under § 103 as being unpatentable
over Shelton '951 and Castroviejo (see Final Act. 12); and claim 18 under
§ 103 as being unpatentable over Shelton '951 (see Final Act. 15). We have
jurisdiction under 35 U.S.C. § 6(b).
1 We REVERSE.
2 Claims 1, 11, and 20 are independent. Claim 1 is illustrative and self-
3 explanatory:
4 1. A surgical instrument, comprising:
5 a housing;
6 a mechanical housing interface disposed within the
7 housing;
8 a movable handle coupled to the housing and configured
9 to approximate a pair of jaw members toward and away from one
10 another; and
11 a latch mechanism operably coupled to the movable
12 handle, the latch mechanism including at least one mechanical
13 interface configured to selectively engage the mechanical
14 housing interface to lock and unlock the jaw members in and
15 from an approximated configuration,
16 wherein, when the movable handle is in a jammed
17 position, the at least one mechanical interface of the latch
18 mechanism is configured to deform beyond a structural integrity
19 thereof and separate from the mechanical housing interface when
20 the movable handle is moved from the jammed position.
2
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Application 14/268, 140
1 Both Shelton '951 and Shelton '952 describe surgical instruments 10.
2 As depicted in Figure 1 of Shelton '951 and Shelton '952, each surgical
3 instrument 10 includes a handle 6, a shaft 8, and an end effector 12. (See
4 Shelton '951, para. 35; Shelton '952, para. 47). The end effector 12 includes
5 a staple channel 22 and an anvil 24 pivotable with respect to the staple
6 channel about a pivot point 25. In addition, each surgical instrument 10
7 includes a closure trigger 18 that may be pulled to close the anvil 24 against
8 the staple channel 22 to clamp tissue and a firing trigger 20 that may be
9 pulled to cause stapling and severing of the tissue. (See Shelton '951, paras.
10 36, 37, 40; Shelton '952, paras. 48, 49, 52). More specifically, "[o]nce the
11 clinician is satisfied with the positioning of the end effector 12, the clinician
12 may draw back the closure trigger 18 to its fully closed, locked position
13 proximate to the pistol grip 26" of the handle 6. (Shelton '951, para. 39;
14 Shelton '952, para. 51).
15 Shelton '951 and Shelton '952 teach various mechanisms for locking
16 the closure trigger 18 against the pistol grip 2 6 of the handle 6 in order to
17 lock the staple chamber 22 and the anvil 24 in clamped engagement. In one
18 such mechanism, depicted in Figures 17-22 of Shelton '951 and Shelton
19 '952:
20 [T]he closure trigger 18 includes a flexible longitudinal arm 176
21 that includes a lateral pin 178 extending therefrom. The arm 176
22 and pin 178 may be made from molded plastic, for example. The
23 pistol grip portion 26 of the handle 6 includes an opening 180
24 with a laterally extending wedge 182 disposed therein. When the
25 closure trigger 18 is retracted, the pin 178 engages the wedge
26 182, and the pin 178 is forced downward (i.e., the arm 176 is
27 rotated [in a counter-clockwise direction]) by the lower surface
28 184 of the wedge 182, as shown in FIGS. 17 and 18. When the
29 pin 178 fully passes the lower surface 184, the [clockwise] force
3
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Application 14/268, 140
1 on the arm 176 is removed, and the pin 178 is rotated [ counter-
2 clockwise] such that the pin 178 comes to rest in a notch 186
3 behind the wedge 182, as shown in FIG. 19, thereby locking the
4 closure trigger 18. The pin 178 is further held in place in the
5 locked position by a flexible stop 188 extending from the wedge
6 184.
7 To unlock the closure trigger 18, the operator may further
8 squeeze the closure trigger 18, causing the pin 178 to engage a
9 sloped backwall 190 of the opening 180, forcing the pin 178
10 upward past the flexible stop 188, as shown in FIGS. 20 and 21.
11 The pin 178 is then free to travel out an upper channel 192 in the
12 opening 180 such that the closure trigger 18 is no longer locked
13 to the pistol grip portion 26, as shown in FIG. 22.
14 (Shelton '951, paras. 69-70; Shelton '952, paras. 81-82).
15 Claim 1 recites a surgical instrument "wherein, when the movable
16 handle is in a jammed position, the at least one mechanical interface of the
17 latch mechanism is configured to deform beyond a structural integrity
18 thereof and separate from the mechanical housing interface when the
19 movable handle is moved from the jammed position." Claims 11 and 20
20 similarly recite surgical instruments, each such instrument including "at least
21 one mechanical interface ... configured to deform beyond a structural
22 integrity thereof and separate from the mechanical housing interface when
23 the movable handle is moved from a jammed position." The Examiner and
24 the Appellants disagree as to the proper interpretation of these limitations.
25 (See Appeal Brief, dated Sept. 29, 2017 ("App. Br."), at 6-9; Examiner's
26 Answer, mailed Nov. 1, 2017 ("Ans."), at 6-8; Reply Brief, dated Dec. 19,
27 2017 ("Reply Br."), at 2-3).
28 The Examiner interprets "configured to deform beyond a structural
29 integrity thereof' as "configured to deform beyond the ability of a material
30 to resist deformation." (See Ans. 7). The Examiner's interpretation would
4
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1 render the phrase, "beyond a structural integrity thereof," superfluous. See
2 Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007)
3 ( declining to adopt an interpretation that rendered a claim term superfluous
4 in view of other limitations of the claim, where an alternative interpretation
5 was available). The fundamental problem is that the Examiner's phrasing is
6 circular. A force could not deform the mechanical interface unless the force
7 first overcame any ability of the mechanical interface to resist deformation.
8 Thus, the Examiner's interpretation says no more than that the mechanical
9 interface is configured to deform. Under the Examiner's interpretation, the
10 phrase "beyond a structural integrity thereof' has no effect on the scope of
11 the limitation.
12 In the past, our reviewing court and its predecessor have interpreted
13 the term "integral" or "formed integrally" as encompassing unitary
14 structures as well as connected, multi-piece structures. See, e.g., In re
15 Morris, 127 F.3d 1048, 1055-56 (Fed. Cir. 1997); Advanced Cardiovascular
16 Syss. Inc. v. Scimed Life Syss. Inc., 887 F.2d 1070, 1074 (Fed. Cir. 1989). If
17 the ordinary meaning of "structurally integral" encompasses either a unitary
18 structure or a connected, multi-piece structure, then the ordinary meaning of
19 the phrase "deform[ ation] beyond a structural integrity thereof'
20 encompasses either breakage of a unitary structure or breakage of
21 connections between pieces of a multi-piece structure. This ordinary
22 meaning is consistent with the Specification.
23 Paragraph 28 of the Specification describes a mechanical interface
24 that includes a latching pin 34 that "serves as a mechanical fuse that is
25 configured to predictably 'fail' when a surgeon attempts to force the latch
26 mechanism 26 open." The verb "fail" implies breakage. At the very least,
5
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1 the verb "fail" indicates a more catastrophic result than mere detachment of
2 parts connected in their normal configuration. The broadest reasonable
3 interpretation of the term "configured to deform beyond a structural integrity
4 thereof and separate from the mechanical housing interface when the
5 movable handle is moved from a jammed position" encompasses a
6 mechanical interface configured to break and, in breaking, separate from the
7 mechanical housing interface when the movable handle is moved from a
8 jammed position.
9 Because the phrase "configured to deform beyond a structural
10 integrity thereof' is susceptible of a reasonable interpretation that does not
11 render the phrase "beyond a structural integrity thereof' superfluous, the
12 Examiner's interpretation is unreasonably broad.
13 The Examiner finds the combination of the arm 176 and the pin 178
14 described by Shelton '951 and Shelton '952 corresponds to the recited
15 "mechanical interface." (See Final Act. 4, 6). Both references describe the
16 arm 176 as "flexible." (Shelton '951, para. 69; Shelton '952, para. 81).
17 Figures 17-22 of each reference, viewed in sequence, suggest that the arm
18 17 6 flexes as the pin 17 8 moves into, and out of, engagement with the notch
19 186 as the trigger 18 is squeezed. (See Ans. 9). Nevertheless, nothing about
20 the flexure of the arm 176 as depicted in Figures 17-22 persuasively
21 demonstrates inelastic or non-resilient behavior, much less breakage. Unless
22 one accepts the Examiner's unreasonably broad interpretation of the claim
23 language, the Examiner provides no persuasive explanation for the finding
24 that the arm 17 6 and the pin 17 8 are configured to deform "beyond the
25 integrity required to maintain the arm (176) and pin (178) in [their] normal
26 configuration (e.g., beyond the integrity required to maintain the arm (176)
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1 and pin (178) in [their] normal configuration ... )" (Final Act. 4, 6; see also
2 Ans. 9).
3 Because the Examiner's rejection of claims 1, 11, and 20 is based on
4 an unreasonable interpretation of the claim language, we do not sustain the
5 rejections of those claims. Furthermore, because the rejections of
6 independent claims 1, 11, and 20 are based on an unreasonably broad
7 interpretation of the claim language, we need not separately address whether
8 the Appellants' proposed interpretation is reasonable. We do not sustain the
9 rejection of claims 1-3, 8, and 20 under§ 102(a)(l) as being anticipated by
10 Shelton '952 or the rejection of claims 11, 12, and 17 under§ 102(a)(l) as
11 being anticipated by Shelton '951.
12 The rejection of claim 9 under§ 103 as being unpatentable over
13 Shelton '952, as well as the rejection of claim 18 under§ 103 as being
14 unpatentable of Shelton '951, rest on the same findings the Examiner relied
15 on in rejecting respective parent claims 1 and 11 under§ 102(a)(l). (See
16 Final Act. 15). We do not sustain these rejections.
17 With respect to the remaining claims, Castroviejo describes a surgical
18 needle holder including mutually pivotable jaws 1, 2 for grasping a needle.
19 (See Castroviejo, col. 1, 11. 1--4; col. 2, 11. 10-15; Figs. 1-3). Actuating
20 extensions 4, 5 mount latch elements 12, 13 having interengaging lugs or
21 detents 18, 19 for releasably securing the jaws 1, 2 in a closed, clamping
22 relationship. (See Castroviejo, col. 2, 11. 20-26; col. 2, 1. 42 - col. 3, 1. 55;
23 Figs. 1-3). The Examiner cites Castroviejo as teaching:
24 configuring a latch pin (18) to extend from left ( e.g., forward
25 side; see figures 5-8) and right ( e.g., rear side; see figures 5-8)
26 sides of a generally elongated medial portion ( 17) of a latch
27 mechanism (e.g., as the pin (18) extends between front and rear
7
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1 sides of the post (17) in the perspective shown in figures 5-8) in
2 order to allow for travel of the pin with respect to a mechanical
3 interface (14) to releasably lock jaw members (column 2, line
4 42---column 3, line 55).
5 (Final Act. 9). This teaching does not remedy the deficiencies in the
6 teachings of Shelton '951 and Shelton '952, as applied to ultimate parent
7 claims 1 and 11. We do not sustain the rejection of claims 4--7 and 10 under
8 § 103 as being unpatentable over Shelton '952 and Castroviejo or the
9 rejection of claims 13-16 and 19 under§ 103 as being unpatentable over
10 Shelton '951 and Castroviejo.
11
12 DECISION
13 We REVERSE the Examiner's decision rejecting claims 1-20.
14 More specifically, we do not sustain the rejection of claims 1-3, 8,
15 and 20 under§ 102(a)(l) as being anticipated by Shelton '952; the rejection
16 of claims 11, 12, and 17 under § 102( a )(1) as being anticipated by
17 Shelton '951; the rejection of claims 4--7 and 10 under 35 U.S.C. § 103 as
18 being unpatentable over Shelton '952 and Castroviejo; the rejection of claim
19 9 under§ 103 as being unpatentable over Shelton '952; the rejection of
20 claims 13-16 and 19 under§ 103 as being unpatentable over Shelton '951
21 and Castroviejo; or the rejection of claim 18 under § 103 as being
22 unpatentable of Shelton '951.
REVERSED
8