COVIDIEN LP

Patent Trials and Appeals Board

Apr 1, 2022

2021004567 (P.T.A.B. Apr. 1, 2022)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/409,593 01/19/2017 DUANE E. KERR 356517.USU1 (203-10959) 5878 90039 7590 04/01/2022 Covidien LP Attn: IP Legal 5920 Longbow Drive Mail Stop A36 Boulder, CO 80301-3299 EXAMINER FOWLER, DANIEL WAYNE ART UNIT PAPER NUMBER 3794 NOTIFICATION DATE DELIVERY MODE 04/01/2022 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): docket@carterdeluca.com rs.patents.two@medtronic.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DUANE E. KERR and JAMES D. ALLEN IV Appeal 2021-004567 Application 15/409,593 Technology Center 3700 ____________ Before BRETT C. MARTIN, MICHAEL J. FITZPATRICK, and, LISA M. GUIJT, Administrative Patent Judges. FITZPATRICK, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1-6 and 11-16, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42. Appellant identifies Covidien LP as the real party in interest and also identifies Medtronic, plc, as the “ultimate parent of Covidien LP.” Appeal Br. 1. Appeal 2021-004567 Application 15/409,593 2 STATEMENT OF THE CASE The Specification The Specification’s “disclosure relates to surgical instruments, and more particularly, to surgical instruments for sealing and clipping tissue.” Spec. ¶2. The Claims Claims 1-6 and 11-16 are rejected. Final Act. 1. Claims 7-10 and 17-20 are cancelled. Appeal Br. 12, 14. Claim 1 is representative and reproduced below with emphasis (italics) added to the claim language Appellant argues the prior art fails to disclose or render obvious. 1. An end effector assembly, comprising: a first jaw member having a first tissue-contacting surface including an inner portion and an outer portion; a second jaw member coupled to the first jaw member and having a second tissue-contacting surface including an inner portion and an outer portion, at least one of the first or second jaw members defining at least one clip slot therein that separates the inner and outer portions of the first or second jaw member; a knife channel defined by at least one of the first or second jaw members and configured to receive a knife assembly therethrough, at least one of the first or second tissue-contacting surfaces including electrically conductive surfaces that extend along an inner portion thereof from the at least one clip slot to the knife channel such that the at least one clip slot electrically isolates the inner portion of the first or second jaw member from the outer portion of the first or second jaw member; the first and second tissue-contacting surfaces configured to contact tissue disposed between the first and second jaw members such that when the first and second tissue-contacting surfaces contact the tissue along contact surfaces of the tissue, at least one of the first or second tissue-contacting surfaces is configured to conduct electrical energy to the contact surfaces of Appeal 2021-004567 Application 15/409,593 3 the tissue to seal the tissue at the contact surfaces of the tissue; and at least one clip received in the at least one clip slot and supported by the first and second jaw members, the first and second jaw members configured to deform the at least one clip such that the at least one clip reinforces a tissue seal formed between the first and second jaw members by at least one of the first or second tissue-contacting surfaces. Appeal Br. 11 (italics added). The Examiner’s Rejection The Examiner rejected claims 1-6 and 11-16 under 35 U.S.C. § 103 as unpatentable over US 2002/0107517 A1, published August 8, 2002 (“Witt”), US 5,389,098, issued February 14, 1995 (“Tsurata”), and US 5,688,270, issued November 18, 1997 (“Yates”). Final Act. 2. DISCUSSION Appellant argues patentability of all rejected claims together. Appeal Br. 6-9. We choose claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv) (“When multiple claims subject to the same ground of rejection are argued as a group or subgroup by appellant, the Board may select a single claim from the group or subgroup and may decide the appeal as to the ground of rejection with respect to the group or subgroup on the basis of the selected claim alone.”). Appellant challenges the rejection on a single basis, namely, that the prior art fails to satisfy the limitation “electrically conductive surfaces that extend . . . from the at least one clip slot to the knife channel.” See, e.g., Appeal Br. 7 (“Appellant respectfully submits that neither Witt nor Tsuruta nor Yates, nor any proper combination thereof, teaches, discloses or suggests Appeal 2021-004567 Application 15/409,593 4 ‘electrically conductive surfaces that extend . . . from the at least one clip slot to the knife channel,’ as recited in claims 1 and 11.”). The Examiner found that “[n]either Witt nor Tsuruta disclose[s] that the electrodes extend between the knife channel and the clip slot, where at least one jaw with . . . inner and outer portions separated by a clip slot and insulated from each other by a clip slot.” Final Act. 3. However, the Examiner made several additional findings regarding the argued limitation. First, the Examiner found that “the art is replete with forceps devices having various electrode configurations and Applicant has not disclosed that the particularly claimed configuration produces any unexpected results.” Id. Second, the Examiner found: Yates discloses an electrosurgical device which also uses “staples, clips, absorbable fasteners etc.” (fig. 1, col. 3 lines 38- 42) and teaches that the electrodes can have several different configurations (figs. 18-24), including one where the electrodes (452, fig. 21) extend between the knife slot (429) and the area that holds the “staples, clips, absorbable fasteners etc.” (area extending laterally from ridges 456). That is, the electrodes reside entirely and only between the knife slot and the depression from which the “staples, clips, absorbable fasteners etc.” are applied to tissue. Id. at 3-4. The Examiner determined that it would have been obvious to a person of ordinary skill in the art at the time of the claimed invention to provide the proposed combined device of Witt-Tsuruta with electrodes “positioned between a knife channel and ‘staples, clips, absorbable fasteners etc.’ region as taught by Yates,” as it “would produce the predictable result of allowing a user to apply energy to tissue to create a seal.” Id. at 4 (citing MPEP § 2141(III)(A)); see MPEP § 2141(III)(A) (“Exemplary rationales that may Appeal 2021-004567 Application 15/409,593 5 support a conclusion of obviousness include: (A) Combining prior art elements according to known methods to yield predictable results”). Appellant argues that its Figure 3A illustrates an example of “electrically conductive surfaces that extend along an inner portion thereof from the at least one clip slot to the knife channel.” Appeal Br. 6 (reproducing Spec. Fig. 3A). Appellant also argues that, in contrast to its Figure 3A, the prior art figure on which the Examiner’s rejection relies (i.e., Yates Fig. 21) includes electrodes that extend to the knife channel but not from the clip slots. Appeal Br. 7. Appellant’s Figure 3A and Yates Figure 21 are reproduced below, left and right, respectively. Appellant’s Figure 3A (reproduce above at left) shows first and second jaw members 110 and 120 of an end effector. Spec. ¶23. According to Appellant, in Figure 3A, “reference characters 116a, 116b, 126a and 126b indicate electrically conductive surfaces, reference characters 114a, 114b, Appeal 2021-004567 Application 15/409,593 6 124a and 124b indicate the clip slots, and reference characters 112 and 122 indicate the knife channel.” Appeal Br. 6. Yates Figure 21 (reproduce above at right) shows first and second jaw members 432 and 434 of an end effector. Yates 10:20-30. Inner surface 433 of the first jaw member acts as anvil with left and right pockets (shown but not labelled in Figure 21) for closing fired staples. See Yates 6:52-55 (In reference to Figure 16: “The drive rod 41 simultaneously advances the block 43 and thus the wedge 13 which drives the drivers 24 into the staples 17 causing the staples 17 to fire through tissue and into the pockets 36 of the anvil 18.”). Appellant argues that the claim term “clip slot” reads only on the areas of the second (lower) jaw member from which the staples are fired. See Appeal Br. 7 (annotating Yates Fig. 21). Thus, according to Appellant, “there is clearly a space or a gap between the electrode 452 and the asserted staple pocket.” Appeal Br. 7. We are not persuaded by this argument. Rather, we agree with the Examiner that Appellant’s argument about “what constitutes a ‘clip slot’ is unreasonably narrow.” Ans. 5. We also agree with the Examiner that “clip slot” reasonably reads on “the entire depressed region which holds the [staple] pocket(s) . . . since the depression is a slot (e.g. ‘a narrow opening or groove’ from Merriam-Webster) which holds clips (‘staples, clips, absorbable fasteners etc.’ from Yates, as cited in the Final Action).” Id. at 5-6. Appellant responds that it is “not claiming depressed regions.” Reply Br. 3. However, it does not follow that a depressed region is excluded from the scope of the term “clip slot.” Appellant further responds that the Examiner’s “interpretation of ‘clip slot’ is neither consistent with its plain meaning, nor consistent with Appellant’s specification, nor consistent with Appeal 2021-004567 Application 15/409,593 7 how the claimed ‘clip slot’ would be interpreted by one of ordinary skill in the art.” Id. However, Appellant does not support this argument with evidence. We have considered Appellant’s arguments but they do not apprise us of error in the rejection of claim1. Accordingly, we affirm the rejection of claim 1, as well as that of claims 2-6 and 11-16, which fall therewith. 37 C.F.R. § 41.37(c)(1)(iv). DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-6, 11-16 103 Witt, Tsuruta, Yates 1-6, 11-16 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