Ex Parte Smith et al

Patent Trial and Appeal BoardNov 15, 2012

11705334 (P.T.A.B. Nov. 15, 2012)

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. 11/705,334 02/12/2007 Kevin W. Smith Elec Stapler Batt Div 1 5095 27316 7590 11/15/2012 MAYBACK & HOFFMAN, P.A. 5722 S. FLAMINGO ROAD #232 FORT LAUDERDALE, FL 33330 EXAMINER WEEKS, GLORIA R ART UNIT PAPER NUMBER 3721 MAIL DATE DELIVERY MODE 11/15/2012 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 KEVIN W. SMITH, THOMAS BALES, DEREK DEE DEVILLE, CARLOS RIVERA, and MATTHEW A. PALMER ____________ Appeal 2010-007646 Application 11/705,334 Technology Center 3700 ____________ Before STEFAN STAICOVICI, JAMES P. CALVE, and LYNNE H. BROWNE, Administrative Patent Judges. CALVE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the rejection of claims 1-12. App. Br. 2.1 Claims 13-21 were cancelled. We have jurisdiction under 35 U.S.C. § 6(b). Appellants’ representative presented oral argument in this appeal on November 9, 2012. We REVERSE. 1 Refers to Corrected Appeal Brief filed November 16, 2009. Appeal 2010-007646 Application 11/705,334 2 CLAIMED SUBJECT MATTER Claim 1 is illustrative of the claimed subject matter on appeal: 1. A surgical instrument, comprising: a surgical end effector having an actuator to effect a surgical procedure when actuated; an electric motor being operationally connected to said end effector to operate said actuator; a power supply electrically connected to said motor and actuating said actuator when said power supply powers said motor, said power supply having at least one battery cell with a given rated power for an operating period of greater than 15 seconds; and said motor and said power supply being configured to utilize said battery cell at a power greater than said given rated power. REJECTIONS Claims 1, 3, 5, 7, 9, and 11 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Viola (US 2006/0278681 A1; pub. Dec. 14, 2006) and Sturman (US 6,076,018; iss. Jun. 13, 2000). Claims 2, 4, 6, 8, 10, and 12 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Viola, Sturman, and Yates (US 5,810,811; iss. Sep. 22, 1998). ANALYSIS Claims 1, 3, 5, 7, 9, and 11 a unpatentable over Viola and Sturman Claims 1 and 3 The Examiner found that Viola discloses a surgical instrument with an end effector 20, electric motor 30 connected to a power supply with at least Appeal 2010-007646 Application 11/705,334 3 one battery cell 29 wherein the power supply is connected to a controller to regulate the amount of power to be released according to a desired amount of force to be exerted by the assembly. Ans. 3. The Examiner found that Viola does not disclose the life span of the power supply or whether the motor is operated at a power greater than the recommended power rating. Id. The Examiner found that Sturman teaches a surgical instrument with a lithium battery cell power supply electrically connected to a motor where the power supply is operated at a super-critical rate and pulse discharge period that is less than the pulse discharge period of the power supply operated at a given rate to optimize the life of the battery. Ans. 4 (citing to column 5, lines 6-33). The Examiner determined that it would have been obvious to modify Viola “to have a power greater than the given rated power for a desired time period (i.e. 15 seconds) for the purpose of maximizing the discharge current of the battery without totally depleting the battery, as suggested by column 6, lines 1-25 of Sturman et al.” Ans. 3-4. Appellants argue that the portion of Sturman cited by the Examiner discloses the battery discharging at an optimal discharge rate, which does not exceed the given rated power as claimed. App. Br. 30. Appellants also argue that Sturman discloses an “intermediate device (NOT the battery!) that discharges the “stored current in a high current, short pulse width.” App. Br. 31. Appellants assert that “the battery itself is never discharged at ‘a battery cell at a power greater than said given rated power,’ as is recited in claim 1” and Sturman teaches against exceeding a battery’s optimal output in order to enhance the life of the battery. App. Br. 32. We agree. Sturman controls a battery to deliver current within the optimal discharge rate and peak current draw to extend the battery life and stores the low amplitude Appeal 2010-007646 Application 11/705,334 4 pulses on a storage capacitor that periodically delivers a high current, short pulse width therapeutic pulse to a patient that far exceeds the battery’s optimal current draw and voltage. Col. 3, l. 57 to col. 4, l. 11; col. 5, ll. 5- 33; col. 6, ll. 1-29; fig. 2. We agree with Appellants that Sturman does not disclose a surgical instrument with a motor and/or power supply that are configured to use a battery cell of the power supply at a power greater than the given rated power of the battery (claims 1, 3, 9, and 11) or at a current greater than the given rated current of the battery (claims 5 and 7).2 Instead, Sturman is configured to enhance battery life, that is, to draw power and current from a battery without exceeding the rated current or power of the battery. As such, we cannot sustain the rejection of independent claims 1, 3, 5, 7, 9, and 11 or claims 2, 4, 6, 8, 10, and 12, which depend therefrom. DECISION We REVERSE the rejection of claims 1-12. REVERSED Klh 2 Appellants disclose configuring a motor with a lower rated voltage than a power supply (i.e. low number of windings and resistance) to draw the most current from the power supply (i.e., battery pack) and thereby run the motor at a much higher voltage than the motor rating to draw significantly greater power from the motor. See Spec. 61, para. [0141] to Spec. 62, para. [0142].