Ex Parte Palmer et al

Patent Trial and Appeal Board

Jul 9, 2015

12534030 (P.T.A.B. Jul. 9, 2015)

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.
12/534,030 07/31/2009 Matthew A. Palmer Syn/TUVS Utility 8810
27316 7590 07/09/2015
MAYBACK & HOFFMAN, P.A.
5722 S. FLAMINGO ROAD #232
FORT LAUDERDALE, FL 33330
EXAMINER
TANNER, JOCELIN C
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
07/09/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte MATTHEW A. PALMER,
DEREK DEE DEVILLE, and KEVIN W. SMITH
__________

Appeal 2013-001378
Application 12/534,030
Technology Center 3700
__________

Before ERIC B. GRIMES, JEFFREY N. FREDMAN, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to an
ultrasonic surgical instrument. The Examiner rejected the claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

1 Appellants identify the Real Party in Interest as Syntheon, LLC
(see App. Br. 2).
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Application 12/534,030

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Statement of the Case
Background
“Cutting instruments that utilize ultrasonic waves employ an
ultrasonic transducer to generate vibrations along a longitudinal axis of a
cutting blade” (Spec. 2 ¶ 2). “These instruments are advantageous because
the mechanical vibrations transmitted to the end of the blade are very
effective at cutting organic tissue and, simultaneously, at generating heat
sufficient to cauterize the tissue” (Spec. 2 ¶ 2).
The Claims
Claims 1–21 are on appeal. Independent claim 1 is representative and
reads as follows:
1. An ultrasonic surgical instrument comprising:
a shaft having a proximal end and a distal end;
a first jaw having a proximal end and a distal end, the
distal end of the shaft terminating at the proximal end of the
first jaw, the first jaw having:
an internal trough running from and through the
proximal end of the first jaw and terminating at a
point prior to the distal end of the first jaw; and
a surface having a plurality of teeth on either
side of the trough and at the distal end of the first jaw;
a second jaw having a surface facing the surface of
the first jaw and having a plurality of teeth thereat; and
an ultrasonic waveguide extending beyond the shaft
and being slidably engagable with the trough and having a
blade, the blade having:
a distal end;
a proximal end;
a tissue compressing surface upwardly sloping
from the distal end of the blade toward the proximal
end of the blade; and
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a substantially horizontal top surface portion at
an upper portion of the tissue compressing surface, at
least one of the tissue compressing surface and the top
surface portion forming a cutting surface,
wherein the jaws are operable to compress tissue
therebetween and the blade is operable to slide within the
trough to further compress and cut the compressed tissue as
the blade moves in a direction from the proximal end of the
first jaw to the distal end of the first jaw.

The Issues
A. The Examiner rejected claims 1–4, 9–13, and 18–21 under 35 U.S.C.
§ 103(a) as obvious over Dumbauld,2 Beaupre,3 and Schulze4 (Ans. 2–4).
B. The Examiner rejected claims 5–8 and 14–17 under 35 U.S.C.
§ 103(a) as obvious over Dumbauld, Beaupre, Schulze, and Timberlake5
(Ans. 4–5).
A. 35 U.S.C. § 103(a) over Dumbauld, Beaupre, and Schulze
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that the combination of
Dumbauld, Beaupre, and Schulze suggests an instrument comprising “an
ultrasonic waveguide extending beyond the shaft and being slidably
engagable with the trough and having a blade” as required by claim 1?

2 Dumbauld et al., US 7,232,440 B2, issued June 19, 2007
(hereinafter “Dumbauld”).
3 Beaupre, J., US 6,660,017 B2, issued Dec. 9, 2003.
4 Schulze, D., US 6,695,840 B2, issued Feb. 24, 2004.
5 Timberlake et al., US 2006/0258954 A1, published Nov. 16,
2006 (hereinafter “Timberlake”).
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Findings of Fact
1. Dumbauld teaches a forceps that
includes a knife which is selectively moveable within a knife
channel defined within at least one of the first and second
jaw members to cut tissue disposed between the first and
second jaw members. Advantageously, a knife actuator
allows a user to selectively move the knife to cut tissue
disposed between the jaw members. The source of
electrosurgical energy carries electrical potentials to each
respective jaw member such that the jaw members are
capable of conducting bipolar energy through tissue held
therebetween to effect a tissue seal.

(Dumbauld, col. 3, ll. 7–16).
2. Figures 10A and 10B of Dumbauld are reproduced below:

FIGS. 10A and 10B show yet another embodiment of
bottom jaw member 820 which may be utilized for both
bipolar vessel sealing and monopolar tissue dissection or
other monopolar tissue treatments. More particularly, jaw
member 820 includes an outer jaw housing 824 which is
overmolded to encapsulate a tissue sealing plate 822 therein.
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Tissue sealing plate 822 preferably includes a knife channel
815 for reciprocating a knife

(Dumbauld, col. 17, ll. 5–12).
3. Beaupre teaches an “ultrasonic surgical instrument including an
ultrasonic transmission rod and an ultrasonically actuated blade attached to
the distal end of the ultrasonic transmission rod” (Beaupre, col. 2, ll. 38–41).
4. Beaupre teaches that
where, as in the present invention, the asymmetry (e.g. the
triangular treatment region 26), causes the center of mass to
diverge substantially from a line extending from the central
axis of the transmission waveguide and the addition of
balance features within the treatment region is undesirable,
the blade must be balanced using an alternative method.
According to the present invention, end effector 12 is
balanced by reducing or eliminating the torque induced in
end effector 12 proximal to treatment region 26 as a result of
including functional asymmetrical features such as cutout 38

(Beaupre, col. 5, ll. 28–39).
Principles of Law
“In proceedings before the Patent and Trademark Office, the
Examiner bears the burden of establishing a prima facie case of obviousness
based upon the prior art.” In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir.
1992).
“‘[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”’ KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
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Analysis
The Examiner finds that Dumbauld teaches a surgical instrument with
a “first jaw having an internal trough . . . a second jaw being pivotable . . . a
blade (185) slidably engagable with the trough” (Ans. 2–3). The Examiner
acknowledges that Dumbauld fails to disclose an ultrasonic waveguide
functioning as a blade (Ans. 3). The Examiner finds that “Beaupre teaches
an ultrasonic waveguide and an ultrasonically actuated blade that may be
used in a clamping surgical instrument” (Ans. 3). The Examiner finds it
obvious to “have substituted blade of the device of Dumbauld et al. with the
ultrasonic blade, as taught by Beaupre, as this modification involves the
simple substitution of one blade for another, for the predictable result of
cutting and coagulating tissue” (Ans. 3–4).
Appellants contend that “the blade of the bipolar device of Dumbauld
(not an ultrasonic device) is said to allegedly slide in a trough. This device
uses RF energy, not ultrasonic energy. The blade of Dumbauld’s bipolar
device is not analogous to an ultrasonic waveguide” (App. Br. 22).
Appellants contend that the “Beaupre waveguide balances desired
asymmetries in order to obtain adequate ultrasonic action on the waveguide.
Beaupre fails to disclose or even hint at movement of the waveguide with
respect to the ultrasonic device itself” (App. Br. 22).
We find that Appellants have the better position because the Examiner
does not address Beaupre’s teaching that divergence of the center of mass of
the ultrasonic blade is undesirable, and requires balancing (FF 4), and the
impact that this divergence would have on a slidable ultrasonic blade as
required by the claims. The Examiner states that the Dumbauld and Beaupre
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blades are equivalent, and that “the modification of Dumbauld with Beaupre
would also be capable of that same movement” (Ans. 6), but provides no
evidence or argument to establish this equivalent capacity. We are not
persuaded that the Examiner has met the burden of demonstrating the
functionality of Beaupre’s ultrasonic blade when placed in the slidable
trough of Dumbauld.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Dumbauld, Beaupre, and Schulze suggest an instrument comprising “an
ultrasonic waveguide extending beyond the shaft and being slidably
engagable with the trough and having a blade” as required by claim 1.
B. 35 U.S.C. § 103(a) over Dumbauld, Beaupre, Schulze, and
Timberlake
This rejection relies upon the underlying obviousness rejection over
Dumbauld, Beaupre, and Schulze. Having reversed the rejection of claim 1
for the reasons given above, we also necessarily reverse the further
obviousness rejection including Timberlake because Timberlake is not relied
upon to teach an “ultrasonic waveguide” as required by claim 1.
SUMMARY
In summary, we reverse the rejection of claims 1–4, 9–13, and 18–21
under 35 U.S.C. § 103(a) as obvious over Dumbauld, Beaupre, and Schulze.
We reverse the rejection of claims 5–8 and 14–17 under 35 U.S.C.
§ 103(a) as obvious over Dumbauld, Beaupre, Schulze, and Timberlake.
REVERSED
cdc