Ex Parte Zemlok et al

Patent Trial and Appeal BoardAug 25, 2014

12189834 (P.T.A.B. Aug. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MICHAEL A. ZEMLOK and ADAM J. ROSS ____________ Appeal 2012-003605 Application 12/189,834 Technology Center 3700 ____________ Before STEFAN STAICOVICI, MICHAEL L. HOELTER, and BRANDON J. WARNER, Administrative Patent Judges. WARNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Michael A. Zemlok and Adam J. Ross (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 34 and 36– 46. Appeal Br. 4. Claims 1–33 and 47–51 have been withdrawn and claim 35 has been canceled. Id. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2012-003605 Application 12/189,834 2 CLAIMED SUBJECT MATTER Appellants’ claimed invention relates to a surgical stapler, which is powered by a motor, for implanting mechanical surgical fasteners into the tissue of a patient. See, e.g., Spec., p. 1, ll. 20–24. Claim 34, reproduced below, is the sole independent claim appealed and is representative of the subject matter on appeal. 34. A powered surgical stapler comprising: a housing; an endoscopic portion extending distally from the housing and defining a first longitudinal axis; a drive motor disposed at least partially within a housing; a firing rod disposed in mechanical cooperation with the drive motor, the firing rod including a first indicator and a second indicator disposed thereon; a position calculator for determining the linear position of the firing rod, the position calculator coupled to a linear displacement sensor disposed adjacent to the firing rod and configured to detect linear movement of the firing rod; and a speed calculator for determining at least one of a linear speed of the firing rod and rotational speed of the drive motor. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Viola US 2006/0278680 A1 Dec. 14, 2006 Appeal 2012-003605 Application 12/189,834 3 REJECTION The following rejection is before us for review: Claims 34, 36–42, 45, and 461 stand rejected under 35 U.S.C. § 102(e) as anticipated by Viola. ANALYSIS Claims 34, 37–42, 45, and 46 Appellants argue the rejection of independent claim 34 and dependent claims 36–42, 45, and 46 together. See Appeal Br. 9–12. We thus select claim 34 as the representative claim to decide the appeal of the rejection of these claims, with claims 36–42, 45, and 46 standing or falling with claim 34. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner found that Viola discloses all of the limitations as recited in independent claim 34. Ans. 5 (citing Viola, paras. 49, 53–55, 73, 91–94, and identifying numerous elements shown in Figs. 7, 8). Appellants argue that Viola “fails to teach, disclose or suggest ‘the firing rod including a first indicator and a second indicator disposed thereon,’ as recited in independent claim 34.” Appeal Br. 11. At the outset, we note that Appellants’ argument hinges on an assertion that Viola discloses only a single indicator (magnetic member 112), rather than “a first indicator and a second indicator,” as recited in the claim. See Appeal Br. 9– 1 We note that claims 43 and 44 depend directly and indirectly, respectively, from withdrawn claim 31. See Appeal Br., Clms. App. Appellants neither appeal claim 31 (see Appeal Br. 4), nor present any substantive arguments for the patentability of claims 43 or 44 (see Appeal Br. 11–12). Accordingly, we do not consider claims 43 or 44 as part of the instant appeal, despite their seemingly inadvertent inclusion in the Appeal Brief and the Examiner’s Answer. Appeal 2012-003605 Application 12/189,834 4 11. This assertion is premised on selection of a single embodiment of Viola shown in Fig. 12 (reproduced in the Appeal Brief), with Appellants contending that this embodiment of Viola discloses “only a single magnetic member 112 [indicator] disposed at the distal end of the rod 74,” and further contending that “the fact that a single member 112 [indicator] provides varying readings at varying positions, does not disclose a firing rod 74 including two such members.” Appeal Br. 11. We are not persuaded by Appellants’ argument because the assertion relied upon is faulty. In particular, while the contentions regarding the single embodiment of Viola shown in Fig. 12 may be accurate, the rejection presented by the Examiner is not so limited and does not rely only on Fig. 12. Rather, the rejection identifies numerous elements shown in Figs. 7 and 8 of Viola, including first and second switches 80, 82, which interact with first and second ends (indicators) of firing rod 74. See Ans. 5–6 (citing Viola, paras. 77–79, describing interaction between sensors/switches 80, 82 and ends/portions of firing rod 74). The Examiner is correct to note that during patent examination, claims are to be given their broadest reasonable interpretation consistent with the specification, with claim language being read in light of the specification as it would be interpreted by one of ordinary skill in the art. See Ans. 6; In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Of particular relevance here, Appellants’ Specification describes interaction between sensors/switches and first and second indicators disposed on the firing rod, and provides examples of such indicators as being “bumps, grooves, indentations, etc.” See Spec., p. 34, l. 26–p. 35, l. 19. Appeal 2012-003605 Application 12/189,834 5 Under this standard, we agree with the Examiner’s finding that the first and second ends or threads of firing rod 74 of Viola “are found to meet the limitations of [Appellants’] claimed invention.” Ans. 6. In particular, we agree with the Examiner’s finding that “[d]isposed on the firing rod 74 of Viola are several threads extending along the length of the firing rod,” which include at least grooves therebetween, with such grooves corresponding to an example of the claimed indicators, as discussed supra. Id. Therefore, for the foregoing reasons, we sustain the rejection of independent claim 34, and claims 36–42, 45, and 46 falling with claim 34, under 35 U.S.C. § 102(e) as anticipated by Viola. Claim 36 Appellants argue the rejection of dependent claim 36 separately. See Appeal Br. 12–13. With respect to the rejection of dependent claim 36, which recites the addition of “a shaft start position sensor” and “a clamp position sensor,” Appellants argue that the Examiner “interprets the first switch 80 as a shaft start position sensor and the first switch 80’ as a clamp position sensor,” and Appellants further contend that “the first switch 80’ does not interface with the second indicator, which is disposed on the shaft,” making reliance on switch 80’ as the clamp position sensor improper. Appeal Br. 12. Although Appellants’ contention initially appears to be correct (see Ans. 5), the reliance on switch 80’ as the clamp position sensor seems to be an inadvertent error that the Examiner corrected and clarified in the Response to Argument section of the Examiner’s Answer. See Ans. 6. In particular, the Examiner relied on sensors 80 and 82 (rather than 80 and 80’) Appeal 2012-003605 Application 12/189,834 6 of Viola for disclosing the claimed shaft start position sensor and clamp position sensor, and specifically explained (with respect to sensor 82 as the clamp position sensor) that “a second portion of the firing rod interfaces with sensor 82 to signal the controller that firing of staples from the endoscopic portion of the stapler is complete.” Ans. 6 (citing Viola, para. 79). Given the clarification provided in the Examiner’s Answer, we agree with the Examiner’s findings that Viola discloses “a shaft start position sensor” and “a clamp position sensor” as claimed, and that these findings are supported by a preponderance of the evidence. See Ans. 6 (citing Viola, paras. 77–79, describing interaction between sensors/switches 80, 82 and ends/portions of firing rod 74, discussed supra). Appellants do not contest these clarified findings and thus do not apprise us of error. In the absence of any persuasive arguments contesting sensor 82 of Viola as reading on the claimed clamp position sensor, we sustain the rejection of claim 36 under 35 U.S.C. § 102(e) as anticipated by Viola. DECISION We AFFIRM the Examiner’s decision rejecting claims 34 and 36–46 under 35 U.S.C. § 102(e) as anticipated by Viola. 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 Klh