COVIDIEN LP

Patent Trials and Appeals BoardOct 29, 2020

2019004486 (P.T.A.B. Oct. 29, 2020)

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. 14/948,471 11/23/2015 DANIEL A. JOSEPH H- EB-00091CON(203-7662CON 8204 90039 7590 10/29/2020 Covidien LP Attn: IP Legal 5920 Longbow Drive Mail Stop A36 Boulder, CO 80301-3299 EXAMINER AZAD, ABUL K ART UNIT PAPER NUMBER 2656 NOTIFICATION DATE DELIVERY MODE 10/29/2020 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 DANIEL A. JOSEPH ____________________ Appeal 2019-004486 Application 14/948,471 Technology Center 2600 ____________________ Before ELENI MANTIS MERCADER, JOHN A. EVANS, and JULIET MITCHELL DIRBA, Administrative Patent Judges. DIRBA, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellant2 seeks review of the Examiner’s rejection of claims 20–30. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 This Decision uses the following abbreviations: “Spec.” for the original Specification, filed November 23, 2015, which claims the benefit of at least one earlier-filed application; “Final Act.” for the Final Office Action, mailed September 13, 2018; “Appeal Br.” for Appellant’s Appeal Brief, filed January 11, 2019; “Ans.” for Examiner’s Answer, mailed March 20, 2019; and “Reply Br.” for Appellant’s Reply Brief, filed May 16, 2019. 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. According to Appellant, the real party in interest is Covidien LP, a wholly-owned subsidiary of Medtronic PLC. Appeal Br. 1. Appeal 2019-004486 Application 14/948,471 2 BACKGROUND Appellant’s disclosed embodiments and claimed invention relate to “an electrosurgical system including an electrosurgical generator configured to communicate information embedded in an audible tone generated by the electrosurgical generator.” Spec. ¶ 1. Claim 20, reproduced below, is illustrative of the claimed subject matter: 20. An electrosurgical generator comprising: a memory configured to store data pertaining to the electrosurgical generator; a processor in operable communication with the memory; an audio output module coupled to the processor and configured to generate an audio signal encoding the data pertaining to the electrosurgical generator; a speaker coupled to the audio output module and configured to output the audio signal encoding the data pertaining to the electrosurgical generator; and an audio collector configured to receive the audio signal encoding the data pertaining to the electrosurgical generator and decode the data pertaining to the electrosurgical generator encoded in the audio signal. Appeal Br. 10 (Claims App.). REJECTIONS3 R1. Claims 20, 23, 24, 27, and 28 stand rejected under pre-AIA 35 U.S.C. § 103(a) as obvious over Howard (US 2003/0169862 A1, 3 The Final Office Action also included a double patenting rejection (Final Act. 3), but the Examiner later withdrew this rejection after Appellant filed a terminal disclaimer (Ans. 3; see also Appeal Br. 4). Appeal 2019-004486 Application 14/948,471 3 published September 11, 2003) and Falkenstein (US 2009/0248007 A1, published October 1, 2009). Final Act. 3–8. R2. Claims 21, 22, 25, 26, 29, and 30 stand rejected under pre-AIA 35 U.S.C. § 103(a) as obvious over Howard, Falkenstein, and Wong (US 2015/0134959 A1, published May 14, 2015). Final Act. 9. ANALYSIS We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). To the extent Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv). We have considered all of Appellant’s arguments and any evidence presented. We highlight and address specific findings and arguments for emphasis in our analysis below. Obviousness Rejection R1 of Claims 20, 23, 24, 27, and 28 Appellant argues claims 20, 23, 24, 27, and 28 as a group (see Appeal Br. 4–7); therefore, consistent with the provisions of 37 C.F.R. § 41.37(c)(1)(iv), we limit our discussion to independent claim 20. Independent claims 24 and 28 and dependent claims 23 and 27 stand or fall with claim 20. Representative claim 20 recites: “an audio output module . . . configured to generate an audio signal encoding the data pertaining to [an] electrosurgical generator” and “an audio collector configured to receive the audio signal . . . and decode the data.” Appeal Br. 10 (Claims App.) Appeal 2019-004486 Application 14/948,471 4 (collectively the “disputed limitations”). Appellant argues that the Howard- Falkenstein combination fails to teach or suggest the disputed limitations. Appeal Br. 4–7; see also Reply Br. 2–3. In the Final Office Action, the Examiner found that Howard discloses almost every limitation of claim 20, including the claimed “audio output module configured to generate an audio signal encoding data” and the claimed “audio collector configured to . . . decode the data.” Final Act. 3–4 (citing Howard, Figs. 1–3, elements 24, 278, 280, 288, 389, 602). But, the Examiner found that Howard does not disclose “data pertaining to [an] electrosurgical generator,” as required by claim 20. See id. For this limitation, the Examiner relied on Falkenstein, which discloses an electrosurgical generator that receives data from an associated tool and, based on that data, applies an electrosurgical signal profile to the tool. Id. at 4 (citing Falkenstein ¶¶ 15–16). The Examiner articulated a motivation and corresponding rationale to combine these teachings. Id. at 4–5. Appellant contends that Howard fails to teach or suggest an electrosurgical generator (Appeal Br. 4–5) and that “Howard fails to disclose the use of its invention in medical devices” (id. at 6). Appellant argues that, although Falkenstein discloses an electrosurgical generator, it transmits “tool data” rather than “data pertaining to the electrosurgical generator.” Id. (emphasis omitted). Appellant further asserts that neither Howard nor Falkenstein “teaches or suggests transmitting ‘data pertaining to the electrosurgical generator’ through audio input and output modules, speakers, etc.” Id. Appellant argues that, for these reasons, Howard and Falkenstein fail to teach or suggest the disputed limitation. Id. at 7. Appeal 2019-004486 Application 14/948,471 5 We do not agree with Appellant’s argument. Appellant first argues that Howard fails to teach or suggest an electrosurgical generator (Appeal Br. 4–6), but the Examiner relied on Falkenstein for this limitation (Final Act. 3–4; see also Ans. 7). Appellant then argues that neither Howard nor Falkenstein alone teaches or suggest all aspects of the disputed limitations. However, this does not address the rejection as articulated, in which the Examiner relied on certain combined teachings of the prior art. See Final Act. 3–4. Because these arguments do not address the rejection as articulated, we do not find error on the part of the Examiner. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.”) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“[T]he test [for obviousness] is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”)). In addition, we are not persuaded of error in the Examiner’s finding that Falkenstein discloses “data pertaining to [an] electrosurgical generator,” as required by claim 20. See Final Act. 4 (citing Falkenstein ¶¶ 15–16). Falkenstein’s electrosurgical generator “receive[s] the tool data from the memory module and appl[ies] an electrosurgical signal profile to the electrosurgical tool based on the tool data.” Falkenstein ¶ 15. Appellant does not sufficiently explain (and we do not perceive) why Falkenstein’s tool data does not “pertain[]” to its electrosurgical generator, under the broadest reasonable construction of that term,4 especially given the breadth 4 During prosecution, claims must be given their broadest reasonable interpretation in light of the specification as it would be interpreted by one of Appeal 2019-004486 Application 14/948,471 6 conveyed by the Specification. See, e.g., Spec ¶¶ 10 (“The information pertaining to the electrosurgical generator may include, but is not limited to . . . type of electrosurgical instrument connected to the electrosurgical generator . . . .”), 27 (stating that the data embedded on the audible tone may include information input to electrosurgical generator). Ultimately, Appellant does not identify any error in the Examiner’s individual factual findings regarding Howard and Falkenstein. Therefore, on this record, we are not persuaded of error in the Examiner’s reliance on the cited prior art combination to teach or suggest the disputed limitations of claim 20, nor do we find error in the Examiner’s resulting legal conclusion of obviousness. Accordingly, we sustain the Examiner’s obviousness rejection of independent claim 20, and grouped claims 23, 24, 27, and 28. Obviousness Rejection R2 of Claims 21, 22, 25, 26, 29, and 30 The Examiner rejects dependent claims 21, 22, 25, 26, 29, and 30 over a combination of Howard, Falkenstein, and Wong. Final Act. 9. For these claims, relying on the arguments made with respect to independent claim 20, Appellant asserts that the additionally cited reference (Wong) does not cure the deficiencies of Howard and Falkenstein. Appeal Br. 7–9. However, for the reasons discussed above, we are not persuaded of a deficiency in the ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard, we interpret claim terms using “the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Appeal 2019-004486 Application 14/948,471 7 Howard-Falkenstein combination. Consequently, Appellant’s arguments do not show error in the Examiner’s factual findings and the conclusion of obviousness of dependent claims 21, 22, 25, 26, 29, and 30. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 20, 23, 24, 27, 28 103 Howard, Falkenstein 20, 23, 24, 27, 28 21, 22, 25, 26, 29, 30 103 Howard, Falkenstein, Wong 21, 22, 25, 26, 29, 30 Overall Outcome 20–30 TIME PERIOD FOR RESPONSE 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