Ex Parte Fitzsimmons et al

Patent Trial and Appeal BoardFeb 4, 2019

14535427 (P.T.A.B. Feb. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/535,427 11/07/2014 50855 7590 Covidien LP 60 Middletown A venue Mailstop 54, Legal Dept. North Haven, CT 06473 02/06/2019 FIRST NAMED INVENTOR Thomas Fitzsimmons 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-US-03955 (203-10105) 1692 EXAMINER LUAN,SCOTT ART UNIT PAPER NUMBER 3792 NOTIFICATION DATE DELIVERY MODE 02/06/2019 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 THOMAS FITZSIMMONS and MICHELLE GRASSO Appeal2018-005070 Application 14/535,427 Technology Center 3700 Before MICHAEL J. FITZPATRICK, JOHN E. SCHNEIDER, and RYAN H. FLAX, Administrative Patent Judges. FITZPATRICK, Administrative Patent Judge. DECISION ON APPEAL Thomas Fitzsimmons and Michelle Grasso ("Appellants") 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final decision rejecting claims 1-20 as containing new matter and for obviousness. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. 1 Appellants identify Covidien LP as the real party in interest. Appeal Br. 1. Appeal2018-005070 Application 14/535,427 STATEMENT OF THE CASE The Specification The claimed invention "relates to surgical instruments and, more specifically, surgical instruments that transmit an end of life signature to a user." Spec. i-f2. In an aspect of the present disclosure, a powered handle for a surgical instrument includes a processor and a component. The component has a usage limit and is configured to transmit a signature to the processor when the component is in proximity to its usage limit. In their Appeal Brief, Appellants point to the following disclosures in the application as filed: [A] component (e.g., components 110-180) may provide an audible signature indicating that the surgical instrument 10 is beyond its usage limit and must be replaced. The audible signature may be a default tone or tones, which may be specific to the component that is beyond its usage limit. * * * [T]he processing unit 60 directly receives a signature from one or more components of the surgical instrument 10 ( e.g., components 110-180). * * * [W]hen the signature is an acoustic signal, the signature, transmitted by the components 110-180, may be audible to a user to provide indicia as to the actual usage of the component or the condition of the surgical instrument 10. Appeal Br. 4--5 (quoting, in order, Spec. ,r,r 43, 44, and 31). 2 2 The Appeal Brief erroneously cites to paragraphs 45, 46, and 31, but the quoted passages are found in paragraphs 43, 44, and 31. 2 Appeal2018-005070 Application 14/535,427 The Rejected Claims Claims 1-20 are pending and rejected. Final Act. 1. Claim 1 is representative and reproduced below. 1. A powered handle for a surgical instrument, the handle comprising: a processor; and a component having a usage limit, the component configured to transmit a signature to the processor and to provide the signature directly to a user before the handle is used when the component is in proximity to its usage limit. Appeal Br. 9. The Appealed Rejections The following rejections under are before us for review: 1. claims 1-20 under 35 U.S.C. Â§ 112(a)/i-fl; 2. claims 1-15 and 20 under 35 U.S.C. Â§ 103 as obvious over Milton 3 and Chin 4; 3. claim 16 under 35 U.S.C. Â§ 103 as obvious over Milton, Chin, and Kishi 5; and 4 claims 17-19 under 35 U.S.C. Â§ 103 as obvious over Milton, Chin, and Kimball. 6 See Ans. 4 (summarizing the rejections). 3 US 2013/0018400 Al, published Jan. 17, 2013 ("Milton"). 4 US 5,425,375, issued June 20, 1995 ("Chin"). 5 US 2012/0143211 Al, published June 7, 2012 ("Kishi"). 6 US 2013/0253480 Al, published Sept. 26, 2013 ("Kimball"). 3 Appeal2018-005070 Application 14/535,427 DISCUSSION Rejection 1 The Examiner rejected claims 1-20 under 35 U.S.C. Â§ 112(a)/i-fl because independent claims 1, 10, and 13 recite limitations not described in the application as filed. Final Act. 2-5, 8-9; Ans. 5-11. Independent claims 1 and 10 are apparatus claims and recite a "component configured to transmit a signature to the processor and to provide the signature directly to a user before the handle is used when the component is in proximity to its usage limit." Independent claim 13 is a method claim and recites "transmitting a signature to the processor and directly to a user when the component is in proximity to its usage limit." Thus, as the Examiner construed them, "claims 1, 10, and 13 recite a single, common signature transmitted or provided to both the user and the processor." Ans. 6. Appellants agree, stating "each of claims 1, 10, and 13 requires 'the component' to transmit the same 'signature' to both the processor and a user." Appeal Br. 7. The Examiner found that the application as filed "does not disclose a 'component configured to transmit a signature to the processor and to provide the signature directly to a user'." Final Act. 8-9 ( quoting claims 1 and 10). Appellants argue to the contrary, citing as evidence separate portions of the application that disclose a signature from component to processor and a signature from component to user. Appeal Br. 4--5 ( citing Spec. i-fi-f3 l and 4 Appeal2018-005070 Application 14/535,427 44 ). 7 Although the application as filed discloses both signatures (component-to-processor and component-to-user), it does not disclose a single signature that is transmitted/provided from the component to both a processor and a user (i.e., a human). Appellants also argue that the originally filed claims provide written description support for the rejected claims. See Reply Br. 2-3. Originally filed claims 1 and 10 recite, in relevant part, "the component configured to transmit a signature to the processor when the component is in proximity to its usage limit, the signature configured to provide indicia directly to a user that the component is in proximity to its usage limit." Spec. 16-1 7 ( emphasis added). Originally filed claim 13 similarly recites "transmitting a signature to the processor when the component is in proximity to its usage limit, the signature providing indicia directly to a user that the component is in proximity to its usage limit." Id. at 18 ( emphasis added). But these claims do not disclose that the signature is provided to a user. Rather, they disclose that the signature provides indicia to a user. For the foregoing reasons, we affirm the rejection of claims 1-20 under 35 U.S.C. Â§ 112(a)/i-fl. Re} ections 2-4 The Examiner's prior art-based rejections are premised on an erroneous claim construction. See Final Act. 9 ("For purposes of examination, the claims will be construed such that the signature at issue may be different signatures."). Because the Examiner admittedly has not 7 The Appeal Brief erroneously cites to paragraphs 31 and 46, but the quoted passages are found in paragraphs 31 and 44. 5 Appeal2018-005070 Application 14/535,427 shown that the prior art meets the claims as correctly construed, we reverse all of the prior art-based rejections. DECISION The Examiner's rejection of claims 1-20 under 35 U.S.C. Â§ 112(a)/i-fl is affirmed. The Examiner's rejection of claims 1-20 under 35 U.S.C. Â§ 103 is reversed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 6