Ex Parte Palmer et alDownload PDFPatent Trial and Appeal BoardJul 9, 201512534030 (P.T.A.B. Jul. 9, 2015) Copy Citation 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). Appeal 2013-001378 Application 12/534,030 2 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 Appeal 2013-001378 Application 12/534,030 3 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”). Appeal 2013-001378 Application 12/534,030 4 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. Appeal 2013-001378 Application 12/534,030 5 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). Appeal 2013-001378 Application 12/534,030 6 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 Appeal 2013-001378 Application 12/534,030 7 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 Copy with citationCopy as parenthetical citation