Ex Parte Ingmanson et al

Patent Trial and Appeal BoardSep 5, 2018

14143371 (P.T.A.B. Sep. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/143,371 12/30/2013 50855 7590 Covidien LP 60 Middletown A venue Mailstop 54, Legal Dept. North Haven, CT 06473 09/07/2018 FIRST NAMED INVENTOR Michael D. Ingmanson 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-03744 (203-9288) 6935 EXAMINER STEINBERG, AMANDA L ART UNIT PAPER NUMBER 3762 NOTIFICATION DATE DELIVERY MODE 09/07/2018 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 mail@cdfslaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL D. INGMANSON, KELLY VALENTINE, and ELIZABETH HUFNAGEL 1 Appeal2017-008267 Application 14/143,371 Technology Center 3700 Before DEMETRA J. MILLS, ERIC B. GRIMES, and DAVID COTT A, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134 involving claims to an electromechanical surgical system, which have been rejected as obvious. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm-in-part. STATEMENT OF THE CASE "[T]he present disclosure relates to hand-held, electromechanical surgical devices and/or systems for clamping, cutting and/or stapling tissue." Spec. ,r 2. The disclosed device includes, among other components, "[b ]attery 156 ... configured to supply power to any of the electrical 1 Appellants identify the Real Party in Interest as Covidien LP. Br. 1. Appeal2017-008267 Application 14/143,371 components of surgical device 100." Id. ,r 44. "[B]attery 156 includes a first display 157a supported therein and visible through rear wall 156b." Id. ,r 45. The battery can also include additional displays. Id. The display(s) "may provide a user with visual indications and/or notifications prior to, during and/or following a surgical procedure preformed [sic] with surgical device 100." Id. ,r 46. For example, the display(s) "may display potential failures of surgical device 100 ... ; and/or may display features of the internal software EEProm; may display battery life." Id. ,r 58. The "surgical device 100 may include a lower housing portion 104 and/or a door 105 fabricated from a transparent or translucent material. By fabricating lower housing portion 104 and/or door 105 from a transparent or translucent material, the displays 157a[-]157d of battery 156 may be visible therethrough." Id. ,r 48. In an alternative embodiment, lower housing portion 104 can include windows made of a clear material, through which the battery displays are visible. Id. ,r,r 50, 52. [S]ince battery 156 is removed from surgical device 100 prior to any cleaning, sterilizing and/ or autoclaving process, it follows that the displays 157a-157d ... are also removed from surgical device 100 thereby sparing the displays 157a-157d ... from exposure to the deteriorating nature of the cleaning, sterilizing and/or autoclaving process. Id. ,I 56. Claims 1-9, 11-13, and 16-23 are on appeal. 2 Claim 1 is illustrative and reads as follows: 1. An electromechanical surgical system, comprising: a hand-held surgical device, including: 2 Claim 15 is also pending. The Examiner withdrew the rejection of claim 15. Ans. 2. 2 Appeal2017-008267 Application 14/143,371 a device housing defining a connecting portion for selectively connecting with an adapter assembly, the housing being configured to removably receive a battery therein; at least one drive motor supported in the device housing and being configured to rotate at least one rotatable drive shaft; and a circuit board disposed within the housing for controlling power delivered from a battery to the at least one drive motor; a battery configured for disposition in the device housing, the battery being capable of powering the at least one drive motor; and at least one display integral to the battery, wherein the at least one display is configured to display at least one parameter of the surgical device and the device housing is configured such that the at least one display of the battery is visible therethrough. The claims stand rejected as follows: Claims 1-9, 11, 16-19, and 21-23 under 35 U.S.C. Â§ I03(a) as obvious based on Malinouskas3 and Patrick4 (Final Action5 4); and Claims 12, 13, and 20 under 35 U.S.C. Â§ I03(a) as obvious based on Malinouskas, Patrick, and Gross6 (Final Action 10). I The Examiner has rejected claims 1-9, 11, 16-19, and 21-23 as obvious based on Malinouskas and Patrick. The Examiner finds that Malinouskas discloses a system that includes a housing, drive motor, circuit 3 Malinouskas et al. (US 2011/012513 8 A 1; pub 1. May 26, 2011. 4 Patrick et al. (US 2009/0289805 Al; publ. Nov. 26, 2009). 5 Office Action mailed April 7, 2016. 6 Gross et al. (US 2011/0208093 Al; publ. Aug. 25, 2011). 3 Appeal2017-008267 Application 14/143,371 board, and battery, as recited in claim 1. Final Action 4. The Examiner also finds that Malinouskas' device includes a display, but "Malinouskas does not teach the battery including at least one display, wherein the device housing is configured such that the at least one display of the battery is visible therethrough." Id. The Examiner finds, however, that Patrick discloses a "generic hand- held battery-powered device, having a battery" that includes a display and the device housing that is configured so that the battery's display is visible through the housing. Id. The Examiner concludes that it would have been obvious "to modify the hand-held surgical device of Malinouskas to include the battery display of Patrick in order to provide additional information to the user of the device, while the device is in use, e.g. 'an easily viewable fuel gauge,' (Patrick, i"f[0025])." Id. We agree with the Examiner that the system of claim 1 would have been obvious to a person of ordinary skill in the art based on the cited references. Specifically, a skilled artisan would have considered it obvious to modify the device disclosed by Malinouskas by incorporating "a battery having a charge indicator" (Patrick ,r 1 ), "located on the battery pack at a location such that it is registered with a window provided on the device housing and such that the fuel gauge is visible through the window" (id. ,r 14, reference numbers omitted). Patrick states that its battery-and-window invention can be applied to "any battery powered device including, but not limited to, fans, radios, cutters, sprayers, tools, etc." Id. ,r 3. Thus, it would have been obvious to modify Malinouskas' "hand-held, battery-powered surgical device" (Malinouskas ,r 15) to include Patrick's battery pack having 4 Appeal2017-008267 Application 14/143,371 a charge indicator, and a window through which to view it, so that a user could conveniently determine when the battery pack required recharging. Appellants argue that "Patrick is non-analogous art at least because it (1) is not from the same field of endeavor as the electromechanical surgical system disclosed in independent claim 1; and (2) is not reasonably pertinent to the problem faced by the inventor of the electromechanical surgical system disclosed in independent claim 1." Br. 8-9. More specifically, Appellants argue that "a problem identified in Appellant's Specification to be solved is to provide a reusable user interface integrated into an electromechanical surgical device, which may be removed from the electromechanical surgical device prior to exposure to the cleaning, sterilizing, and/or autoclaving process. Patrick is not reasonably pertinent to this stated problem." Id. at 5. Appellants also argue that "the Examiner has improperly defined the problem in terms of its solution. In this manner, the Examiner has merely presented a solution to the problem to be solved by Appellant's Specification, rather than presenting the problem to be solved by Appellant's Specification." Id. at 7. Specifically, Appellants argue that the "Specification states that a problem to be solved is to provide a reusable user interface integrated into an electromechanical surgical device, which may be removed from the electromechanical surgical device prior to exposure to the cleaning, sterilizing, and/or autoclaving process," rather than, as the Examiner reasoned, "the problem of providing a user interface housed within a device and visible therethrough." Id. at 8. Appellants argue that the Examiner's reliance on this reasoning shows that the rejection is based on improper hindsight. Id. at 10. 5 Appeal2017-008267 Application 14/143,371 These arguments are unpersuasive. The Examiner has provided a reasonable rationale "to modify the hand-held surgical device of Malinouskas to include the battery display of Patrick in order to provide additional information to the user of the device, while the device is in use, e.g. 'an easily viewable fuel gauge,' (Patrick, i"f[0025])." Final Action 4. Whether that reason is the same as Appellants' reason for making the claimed system is immaterial. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 419--20 (2007) ("In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls .... [ A ]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed."). We affirm the rejection of claim 1 under 35 U.S.C. Â§ 103(a) based on Malinouskas and Patrick. Claims 2, 7, 16-19, and 21-23 have not been argued separately and therefore fall with claim 1. 37 C.F.R. Â§ 4I.37(c)(l)(iv). Regarding claims 3, 4, 8, and 9, Appellants argue that these claims require the system to have a door through which a battery can be inserted, where the door has a portion that is transparent or has a window, through which the display of the battery is visible. Br. 12-13. Appellants argue that "Malinouskas fails to disclose a display on a hand-held surgical device" and that "Patrick likewise fails to disclose a battery door through which a display can be seen." Id. at 13. This argument is unpersuasive. Malinouskas describes "a hand-held, battery-powered surgical device" and states that "[t]he battery 506 is constrained in the battery housing 515 by a battery door 520 that latches into 6 Appeal2017-008267 Application 14/143,371 a closed position and is unlatched by depressing a release button 525." Malinouskas ,r,r 15, 150. Patrick discloses that its invention can be applied to "any battery powered device" and that "[ t ]he fuel gauge 50 is located on the battery pack 20 at a location such that it is registered with a window 16 provided on the device housing 12 and such that the fuel gauge 50 is visible through the window 16." Patrick ,r,r 3, 14. Thus, it would have been obvious to modify the system disclosed by Malinouskas to have a fuel gauge on the battery, as disclosed by Patrick, visible through any part of the housing, including the battery door. Appellants argue that"[ c ]laim 5 recites a hand-held surgical device wherein 'the battery includes multiple displays'." Br. 16. Appellants argue that Malinouskas and Patrick both fail to disclose a battery having multiple displays, and therefore "no prima facie case of obviousness has been made by the Examiner and the rejection of claim 5 (and claims 6 and 11 which depend from claim 5) should be reversed." Id. at 17. We agree with Appellants that the Examiner has not shown that the system of claim 5 would have been obvious based on the cited references. The Examiner acknowledged that Malinouskas and Patrick do not teach a battery having multiple displays. Final Action 6. The Examiner concluded, however, that it would have been obvious Id. to substitute multiple displays for the single display as taught, in order to allow the displayed information to be visible at all possible orientations for the hand-held surgical device. It is additionally obvious as "mere duplication of parts has no patentable significance unless a new and unexpected result is produced," In re[ ]Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). 7 Appeal2017-008267 Application 14/143,371 The Examiner has not, however, pointed to evidence in the record to show that a person of ordinary skill in the art would have had a reason to modify the system suggested by Malinouskas and Patrick to allow the battery charge indicator of Patrick to be visible at all possible orientations of Malinouskas' device. Although the Examiner cites In re Harza to support the position that "mere duplication of parts has no patentable significance," Final Action 6, a conclusion of obviousness requires "a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007) (emphasis added). See also In re Ochiai, 71 F .3d 1565, 1572 (Fed. Cir. 1995) ("The use of per se rules, while undoubtedly less laborious than a searching comparison of the claimed invention-including all its limitations-with the teachings of the prior art, flouts section 103 and the fundamental case law applying it."). The Examiner has not provided a reason, supported by evidence, to modify the prior art as recited in claim 5. We therefore reverse the rejection of claim 5, as well as dependent claims 6 and 11. II The Examiner has rejected claims 12, 13, and 20 as obvious based on Malinouskas, Patrick, and Gross. Each of these claims requires "an orientation device configured to change an orientation of an image displayed on the at least one display depending on a particular orientation" of the surgical device or the battery. Br. 21-22, 24 (Claims App.). The Examiner finds that Gross "discloses a display for use with hand- held devices, wherein at least one of the device and a battery include an orientation device (i1[o 106]) configured to change an orientation of an image 8 Appeal2017-008267 Application 14/143,371 displayed on the at least one display depending on a particular orientation of the device (i1[0106])." Final Action 10-11. The Examiner concludes that it would have been obvious "to modify the display of Malinouskas as modified to include the orientation sensor of Gross in order to 'locate the orientation of an axis in the body ... or otherwise to assist in an orthopedic procedure(s),' (Gross, Abstract)." Id. at 11. Appellants argue that [ r ]ather than change an orientation of an image displayed, the portion of Gross relied on by the Examiner states that the Gross orientation device "to determine an aggregate, or overall, position and/or orientation of the surgical orientation device 14" (Gross at [0106]) or "to determine the spatial location of an anatomical axis and the reference device can be used for other purposes, such as to track relative position changes of a patient's femur, leg, or other bone or limb" (Gross at [0107]). Thus, the Examiner has not identified any portion of Gross that discloses an orientation device that is "configured to change an orientation of an image displayed". Br. 14. We agree with Appellants that the Examiner has not shown that the disputed limitation is disclosed by Gross. In response to Appellants' argument, the Examiner finds that "the display of Gross does alter by at least one image in response to a determined orientation (see Fig. 5 lk, resection plane indicator rotates)." Ans. 5. However, claims 12, 13, and 20 require "an orientation device configured to change an orientation of an image displayed on the at least one display." Figure 51K of Gross shows a change of orientation of the depicted resection plane from 0.0Â° to 0.5Â°, but the orientation of the image itself remains unchanged. We therefore conclude that the Examiner has not provided sufficient evidence to support a conclusion of obviousness with respect to claims 12, 13, and 20. 9 Appeal2017-008267 Application 14/143,371 SUMMARY We affirm the rejection of claims 1--4, 7-9, 16-19, and 21-23 under 35 U.S.C. Â§ 103(a) based on Malinouskas and Patrick. We reverse the rejection of claim 5, 6, and 11 under 35 U.S.C. Â§ 103(a) based on Malinouskas and Patrick. We reverse the rejection of claims 12, 13, and 20 under 35 U.S.C. Â§ 103(a) based on Malinouskas, Patrick, and Gross. 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. Â§ 1.136(a). AFFIRMED-IN-PART 10