Ex Parte DUMBAULD et al

Patent Trials and Appeals BoardJun 25, 2019

14563059 - (D) (P.T.A.B. Jun. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/563,059 90039 7590 Covidien LP Attn: IP Legal 5920 Longbow Drive Mail Stop A36 12/08/2014 06/27/2019 Boulder, CO 80301-3299 FIRST NAMED INVENTOR PATRICKL. DUMBAULD 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-00685 (203-9850) 1004 EXAMINER LAU,KEVIN ART UNIT PAPER NUMBER 2683 NOTIFICATION DATE DELIVERY MODE 06/27/2019 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 PA TRICK L. DUMBAULD, JEFFREY L. JENSEN, SCOTT E.M. FRUSHOUR, WILLIAM G. PATERSON, PAULE. OURADA, ROBERT M. SHARP, and ERICH M. VELANDIA Appeal2018-003065 Application 14/563,059 1 Technology Center 2600 Before JENNIFER S. BISK, LARRY J. HUME, and SCOTT E. BAIN, Administrative Patent Judges. BAIN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1-22, which constitute all claims pending in the application. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. 1 Appellants identify the real parties in interest as Medtronic PLC and its wholly-own subsidiary, Covidien LP. App. Br. 1. Appeal2018-003065 Application 14/563,059 BACKGROUND The Claimed Invention Appellants' claimed invention relates to medical devices, and more particularly, controlling the usage of limited-use medical devices that must be sterilized between uses. Spec. ,r,r 2-3. According to the Specification, Appellants' invention utilizes embedded radio-frequency identification (RFID) tags to track and verify sterilization of limited-use medical devices, and control activation of such devices for subsequent use. Id. Claims 1, 11, and 1 7 are independent. Claim 1 is illustrative of the invention and the subject matter of the appeal, and reads as follows: 1. A method for controlling the usage of a device compnsmg: connecting the device to an energy source; reading data from a memory device incorporated in the device, the data including a unique identifier (UID), a usage value, an activation value, a reprocessing value, and a sterilization indicator; incrementing the usage value when the device is connected to the energy source; incrementing the activation value when the device is activated permitting energy to flow from the energy source to an energy consuming component of the device; verifying that the UID is not on a list of prohibited UIDs; and following verification of the UID, preventing usage of the device if at least one of the following conditions are met: the reprocessing value is equal to a reprocessing limitation value, the activation value is equal to an activation limitation value, and/ or the sterilization indicator does not indicate that the device has been sterilized since its previous usage. 2 Appeal2018-003065 Application 14/563,059 App. Br. 11 (Claims App 'x) ( emphases added). The Re} ections on Appeal Claims 1, 10, 17, 21, and 22 stand rejected under 35 U.S.C. Â§ 103 as being unpatentable over Katsuki et al. (US 2012/0203269 Al; pub. Aug. 9, 2012) ("Katsuki") and Ross et al. (US 2011/0034910 Al; pub. Feb. 10, 2011) ("Ross"). Final Act. 3-12. Claims 7, 8, and 18 stand rejected under 35 U.S.C. Â§ 103 as being unpatentable over Katsuki, Ross, and Kamdar et al. (US 6,165,173; iss. Dec. 26, 2000 ("Kamdar"). Final Act. 12-15. Claim 9 stands rejected under 35 U.S.C. Â§ 103 as being unpatentable over Katsuki, Ross, Kamdar, and Clothier (US 2004/0149736 Al; pub. Aug. 5, 2004). Final Act. 15-16. Claims 12, 14, and 16 stand rejected under 35 U.S.C. Â§ 103 as being unpatentable over Katsuki, Ross, Brannan (US 2013/0345693 Al; pub. Dec. 26, 2013) and Maschke (US 2007/0202005 Al; Aug. 30, 2007). Final Act. 17-19. Claim 13 stands rejected under 35 U.S.C. Â§ 103 as being unpatentable over Katsuki, Ross, Brannan, and Clothier. Final Act. 19-20. Claim 15 stands rejected under 35 U.S.C. Â§ 103 as being unpatentable over Katsuki, Ross, Brannan, and Scott et al. (US 2009/0254851 Al; pub. Oct. 8, 2009) ("Scott"). Final Act. 20-21. Claim 11 stands rejected under 35 U.S.C. Â§ 112(a) as failing to comply with the written description requirement. Final Act. 2-3. 3 Appeal2018-003065 Application 14/563,059 DISCUSSION We have reviewed the Examiner's rejection in light of Appellants' arguments presented in this appeal. Arguments which Appellants could have made but did not make in the Brief are deemed to be waived. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). On the record before us, we are not persuaded the Examiner erred. We adopt as our own the findings and reasons set forth in the rejection from which the appeal is taken and in the Examiner's Answer, and provide the following discussion for highlighting and emphasis. Rejections Under 35 U.S. C. Â§ 103 Appellants argue the Examiner erred in finding the prior art teaches or suggests "incrementing the usage value when the device is connected to the energy source" and "incrementing the activation value when the device is activated permitting energy to flow ... [to] the device," as recited in claim 1. App. Br. 3-5 ( emphasis added). 2 Specifically, Appellants argue that "both Katsuki and Ross merely disclose using a single counter to track usage of a device" and cannot, therefore, teach both a "usage value" and "activation value." Id. at 4 (emphasis added). We, however, are not persuaded by Appellants' arguments. As the Examiner finds, Katsuki teaches a surgical instrument with a "controller for ... incrementing a usage count [i.e., usage value]" and "disable[ing] the working unit if the usage count ... exceeds a preset count." Ans. 20-21; Katsuki ,r 10. Katsuki further teaches that the usage count may be incremented based on a variety of rules, including when the instrument is 2 No reply brief was filed to rebut the Examiner's factual findings and legal conclusions in the Answer. 4 Appeal2018-003065 Application 14/563,059 connected to or disconnected from a "power cable" (i.e., an energy source). Katsuki ,r,r 186-187. Figure 14 ofKatsuki, which is reproduced below, further indicates that the usage count is incremented "when the device is connected to [an] energy source," as recited in claim 1. FIG. 14 (3RD RULE) I SURGICAL CASF. 1 SURGICAL CASE i --~~~~---- ~------- ----"-5 .=HD=UR.,__,,_S __ ____,, i USAGE i Cfl!JNT: ' i