Ex Parte Smith et al

Patent Trial and Appeal Board

Nov 8, 2016

12266226 (P.T.A.B. Nov. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/266,226
90039 7590
Covidien LP
Attn: IP Legal
5920 Longbow Drive
Mail Stop A36
11/06/2008
11/10/2016
Boulder, CO 80301-3299
FIRST NAMED INVENTOR
Kevin W. Smith
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-EB-00284-04 3679
EXAMINER
SHI, KATHERINE MENGLIN
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
11/10/2016 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):
mail@cdfslaw.com
SurgicalUS@covidien.com
medtronic_mitg-si_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN W. SMITH, THOMAS 0. BALES,
MATTHEW A. PALMER, and DEREK DEE DEVILLE
Appeal2014-006284 1
Application 12/266,2262
Technology Center 3700
Before KEVIN W. CHERRY, BRADLEY B. BAY AT, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL 3
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1-22. We have jurisdiction under 35 U.S.C.
§ 6(b ).
1 We note related appeals 2014-006185 (Application 12/266,252) and 2014-
006350 (Application 13/539,694). See Appeal Br. 2.
2 According to the Appellants, the real party in interest is "Medtronic, plc.,"
the "ultimate parent" of assignee Covidien AG. Suppl. Info. filed Sept. 16,
2016; Tr. 4; Appeal Br. 2.
3 Throughout this opinion, we refer to the Appellants' Appeal Brief
("Appeal Br.," filed Jan. 9, 2014), Reply Brief ("Reply Br.," filed May 1,
2014), and Specification ("Spec.," filed Nov. 6, 2008), and to the
Examiner's Answer ("Ans.," mailed Mar. 13, 2014) and Final Office Action
("Final Act.," mailed Aug. 15, 2013).
Appeal2014-006284
Application 12/266,226
The Appellants' representative appeared for oral hearing in this appeal
on September 20, 2016 ("Hearing"). 4
We AFFIRM.
STATEMENT OF THE CASE
The Appellants' invention "relates generally to an ultrasonic cutting
device and, more particularly, relates to a cordless, hand-held, fully
electrically powered and controlled, surgical ultrasonic cutting device."
Spec. ,-r 1.
Claims 1 and 14 are the independent claims on appeal. Claim 1
(Appeal Br. 27, Claims App.) is illustrative of the subject matter on appeal
and is reproduced below (bracketing added for reference):
1. A disposable ultrasonic surgical handle, comprising:
[(a)] a disposable handle body defining a battery-holding
compartment shaped to receive a battery therein and operable to
couple a proximal end of an ultrasonic waveguide to a cordless
ultrasonic transducer therethrough, the handle body having:
[ (b)] a transducer dock exposed to the environment and
shaped to interchangeably house at least a portion of the
transducer thereat;
[(c)] a waveguide attachment dock shaped to align and
attach the proximal end of the waveguide to the transducer and
thereby hold the waveguide and the transducer at the handle
body when the transducer is docked in the transducer dock and
the waveguide is docked in the waveguide attachment dock;
and
[(d)] a disposable driving-wave generation circuit m the
handle body and disposed to electrically contact the battery and
the transducer when the battery and the transducer are disposed
4 Throughout this opinion, we refer to the transcript of the Hearing ("Tr.").
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respectively in the battery-holding compartment and the
transducer dock, the generation circuit operable to dynamically
produce a resonant wave along the waveguide to thereby
generate ultrasonic movement along the waveguide by exciting
the transducer when the transducer is coupled to the waveguide.
REJECTIONS
Claims 1, 5-8, 10-13, 21, and 22 stand rejected under 35 U.S.C. § 101
on the ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1-24 of U.S. Patent No. 8,419,757. Final Act. 3.
Claims 1-5, 7-9, 14--18, 21, and 22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Houser (US 2006/0079878 Al, pub.
Apr. 13, 2006), Sakurai (US 2004/0116952 Al, pub. June 17, 2004), and
Kellogg (US 5,897,569, iss. Apr. 27, 1999). Id. at 5.
Claims 6 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Houser, Sakurai, Kellogg, and Bishop (US 5,954,736, iss.
Sept. 21, 1999). Id. at 8.
Claims 13 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Houser, Sakurai, Kellogg, and Akagi (WO 2006/087885;
with US 2008/0033248 Al, pub. Feb. 7, 2008, as the English language
equivalent). Id. at 9.
Claims 10-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Houser, Sakurai, Kellogg, and Denning (EP 1 594 209
Al, pub. Sept. 11, 2005). Id.
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Application 12/266,226
ANALYSIS
Double Patenting
The Appellants present no arguments against the Examiner's rejection
of claims 1, 5-8, 10-13, 21, and 22 under 35 U.S.C. § 101 on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1-24 of U.S. Patent No. 8,419,757. Thus, we summarily affirm the
rejection.
Obviousness
The Appellants argue independent claims 1 and 14 as a group. See
Appeal Br. 9. Claims 1 and 14 recite substantially similar limitations. We
consider claim 1 as representative; claim 14 stands or falls with claim 1. See
37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Houser discloses the ultrasonic surgical
assembly of claim 1 comprising a disposable handle body operable to couple
an end of a waveguide to a transducer as partially recited by limitation (a),
the handle body having a transducer dock, as recited by limitation (b ), a
waveguide attachment dock, as recited by limitation ( c ), and a driving-wave
generation circuit operable to generate ultrasonic movement, as partially
recited by limitation (d). See Final Act. 5. The Examiner finds Houser does
not, however, disclose a handle body defining a battery-holding
compartment, and the generation circuit being disposable, in the handle
body, and electrically contacting the battery in the holding compartment and
transducer in the dock, as partially recited by limitations (a) and (d). The
Examiner cites to Sakurai to cure these deficiencies, finding that one of
ordinary skill in the art would modify the device of Houser with the handle,
compartment, battery, and circuit configuration of Sakurai "to enhance
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portability of the ultrasonic instrument, and to efficiently merge the system
into a light-weight, self-contained, hand-held, compact device." Id. at 5---6
(citing Sakurai i-fi-17-13). The Examiner further finds that Houser and
Sakurai do not disclose the generation circuit being operable to dynamically
produce a resonant wave as partially recited by limitation ( d). The Examiner
cites to Kellogg to cure this deficiency, finding that one of ordinary skill in
the art would modify the generation circuit of Houser and Sakurai with that
of Kellogg "to increase the life and performance of the ultrasonic surgical
device." Id. at 6 (citing Kellogg, col. 1, 1. 39-col. 2, 1. 30).
The Appellants contend the Examiner's rejection of claim 1 is in error
because "the Examiner has failed to establish a prima facie case of
obviousness as there is no teaching, no suggestion, and no motivation found"
in Houser, Sakurai, and Kellogg "to arrive at each and every element."
Appeal Br. 9. Specifically, the Appellants argue that the Examiner's
rejection is in error because the Examiner relies on impermissible hindsight
(see id. at 11, 15), and that one of ordinary skill in the art5 would not have
been able to combine Houser, Sakurai, and Kellogg with predictable results
(see id. at 15-20; see also Reply Br. 3-8 and Tr. 9, 11. 11-21). The
Appellants argue
the combined teachings of Houser, Sakurai, and Kellogg do not
render obvious the ultrasonic surgical handle of claim 1 and the
ultrasonic surgical instrument assembly of claim 14, in which the
handle body (1) defines a battery-holding compartment shaped
to receive a battery, and (2) encloses a disposable driving-wave
5 We note the Appellants do not discuss the level of ordinary skill in the art.
Thus, we do not consider the level of one of ordinary skill in the art at issue.
But, regardless, the level of skill in the art is evidenced by the prior art of
record. Okajima v. Bourdeau, 261F.3d1350, 1355 (Fed. Cir. 2001).
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generation circuit that is operable to dynamically produce a
resonant wave along an ultrasonic waveguide.
Id. at 9-10 (emphases omitted).
After careful consideration and review of the arguments presented in
the Appellants' Appeal and Reply Briefs and Hearing, and of the
Declarations, 6 we disagree with the Appellants' contention for at least the
reasons discussed below.
To the extent the Appellants argue that the references are not
analogous art because the references are "directed at solving very different
problems" (Appeal Br. 15) and are not in the "applicable field of prior art"
(id. at 21), we are not persuaded. See In re Klein, 647 F.3d 1343, 1348 (Fed.
Cir. 2011) (discussing the two separate tests for determining whether the art
is analogous: (1) whether the art is in the same field of endeavor and (2) if
not in the same field, if the reference is "reasonably pertinent to the
particular problem with which the inventor is involved"). The Appellants do
not state what problems the references solve that are different than those
solved by the Appellants' invention. The Appellants also do not state what
the "applicable" field of prior art should be, but simply state "the applicable
field of prior art is defined by art that is far closer in similarity to the
operational complexity- e.g., operating under resonance - and the power
and voltage requirement of Appellants' invention and the device of
Kellogg." Appeal Br. 21. The Appellants' Specification does not
specifically provide an "applicable field of prior art," but, rather, that the
6 Declaration of Thomas 0. Bales, Jr., dated Sept. 12, 2011 (hereinafter "Ex.
A"); Dr. James F. Barter, dated Sept 13, 2011 (hereinafter "Ex. B"); and
Thomas 0. Bales, Jr., dated Oct. 4, 2012 (hereinafter "Ex. C"). Appeal Br.
(Evid. App.).
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invention "relates generally to an ultrasonic cutting device." Spec. i11. The
field of endeavor is determined "by reference to explanations of the
invention's subject matter in the patent application, including the
embodiments, function, and structure of the claimed invention." In re Bigio,
381F.3d1320, 1325 (Fed. Cir. 2004). Houser is similarly directed to
"ultrasonic surgical instruments" that can be configured to permit cutting of
tissue. Houser i-f 10, Abstract. Sakurai is directed to a surgical instrument
such as an ultrasonic knife, i.e., an ultrasonic cutting instrument. Sakurai i-fi-1
82, 83, Abstract. Kellogg is also directed to generating ultrasonic signals
that are incorporated in surgical cutting instruments. Kellogg, col. 1, 11. 5-
20. Thus, we find that the references are within the "applicable field of prior
art" and are analogous art. See Tyco Healthcare Group LP v. Ethicon Endo
Surgery, Inc., 774 F.3d 968, 977 (Fed. Cir. 2014) ("The parties do not
dispute that both the Davison patent and the Ethicon Prototype disclose
ultrasonic surgical devices, a fact which situates them clearly within a
common field of endeavor.").
We also find unpersuasive the Appellants' argument that
[ d]ue to the fact that the motion induced in the devices and
their control, or lack thereof, is vastly different between Sakurai
and the Houser and Kellogg references, there is not the necessary
teaching, suggestion, or motivation to a person of ordinary skill
in the art that a combination of the references, in accordance with
their predictable uses, could achieve the cordless handle of
independent claims 1 and 14 of the present invention with any
reasonable expectation of success.
Appeal Br. 20 (emphases omitted); see also id. at 15 ("because the motion
induced in the devices and their control, or lack thereof, are very different,
the teachings of the references are not properly combinable and the
combination is achieved only through impermissible hindsight.").
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In support of this argument, the Appellants contend that prior to the
invention, all known ultrasonic cutting devices like those of Houser and
Kellogg used an electric cord plugged into an electric means due to the
"relatively high voltage ... required to drive a typical piezoelectric
transducer" (Appeal Br. 16), and that the claimed invention "render[ s]
superfluous" the dependency on high voltage input power devices by using
"low-voltage switching throughout the wave-forming process and
amplification of the driving signal at a specific stage" (id. at 16-17
(emphasis omitted)). Additionally, the Appellants assert that the systems of
Houser and Kellogg "focus on inducing efficient longitudinal movement of
an ultrasonic surgical blade" (id. at 17), such that "[t]he feedback
mechanisms and processing of the feedback occur solely in the bench-top
generator" and "generation and control of the energy applied to the
ultrasonic transducer as contemplated by Kellogg are highly complex." Id.
at 18. The Appellants argue, "[ n ]either Houser nor Kellogg describe or
suggest operating these systems at battery voltages nor do they describe or
suggest reducing all of the complex circuitry contained in the desktop
generator down to a size that is solely resident within a handpiece of the
surgical device," (id.) and, thus, one of ordinary skill in the art would not
combine Sakurai' s "simple" device with the "complex" device of Houser
and Kellogg (see id. 18-20; see also Reply Br. 16-19.
To the extent the Appellants argue that Houser and Kellogg teach
away from the invention, we are not persuaded. The Appellants' statements
that the prior art systems "focus on inducing efficient longitudinal
movement of an ultrasonic surgical blade" (id. at 17) and "critical to the
operation of Kellogg is the ability to establish, maintain and, if necessary,
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Application 12/266,226
reestablish operation of the ultrasonic scalpel at the system's resonant
frequency" (id. at 18) are not supported by sufficient evidence. Further, the
Appellants do not provide sufficient evidence that either reference criticizes,
discredits, or otherwise discourages the device being cordless. See In re
Fulton, 391F.3d1195, 1201 (Fed. Cir. 2004).
We note that the Appellants do not rebut the Examiner's findings that
Houser discloses a driving-wave generation circuit operable to generate
ultrasonic movement (Final Act. 5) and that Kellogg discloses the generation
circuit being operable to dynamically produce a resonant wave (id. at 6).
The Appellants further do not rebut the Examiner's reasoning for combining
Houser and Kellogg. Rather, as noted above, the Appellants argue that
Houser and Kellogg do not "describe or suggest operating these systems at
battery voltages nor do they describe or suggest reducing all of the complex
circuitry contained in the desktop generator down to a size that is solely
resident within a handpiece of the surgical device," (Appeal Br. 17-18), and
thus, Sakurai's "simple" device cannot be combined with the device of
Houser and Kellogg. See id. at 18-20.
We find the Appellants' argument unpersuasive at least because it is
not commensurate with the scope of the claim. Claim 1 does not require a
piezoelectric transducer, does not specify a particular voltage, nor does it
recite limitations regarding low-voltage switching. Claims are to be given
their broadest reasonable interpretation in light of the Specification, but
limitations from the Specification are not read into the claims. See In re
Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1992); see also In re Hiniker Co.,
150 F.3d 1362, 1369 (Fed. Cir. 1998) ("The invention disclosed in [the]
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written description may be outstanding in its field, but the name of the game
is the claim.").
Furthermore, the Appellants' characterization of Kellogg's operation
that "[ t ]he feedback mechanisms and processing of the feedback occur
solely in the bench-top generator," and that "generation and control of the
energy applied to the ultrasonic transducer as contemplated by Kellogg are
highly complex," (Appeal Br. 18) are statements not supported by factual
evidence. Even assuming arguendo that Kellogg's circuit is complex, the
Appellants provide insufficient evidence regarding the required size of
Kellogg's or Rouser's circuit. We note that neither reference discusses the
size or complexity of the generator circuit. Moreover, the claim does not
recite any limitations regarding how complex or simple the circuit must be.
The Appellants also contend, in support of the argument,
in stark contrast to Houser and Kellogg, Sakurai actually teaches
a relatively simple device that does not teach any methods or
systems for controlling movement of a blade or shaft and does
not even seek to establish resonance or to control any aspect of
the movement of the ultrasonic blade or shaft at or near a
resonant frequency. Sakurai is only concerned with the relatively
simple ability to propagate energy to a distal treatment section of
its instrument. In actuality, the operation the Sakurai device is
no different from an ultrasonic toothbrush.
Id. at 18-19 (emphasis omitted). The Appellants assert that Sakurai does not
mention a control system in the device's handpiece, and that Sakurai has an
open loop system with no means for altering the energy applied to the
transducer as opposed to a "complex closed-loop feedback system operating
internally by the battery and circuitry of the device." Id. at 19-20.
We are not persuaded at least because, as noted above, the Examiner
relies on Sakurai for having an ultrasonic cutter with a handle body
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containing within it a battery, a battery compartment, and, in combination
with Houser, teaches a disposable drive-wave generation circuit (see Final
Act. 6; see also Ans. 12); Kellogg is relied on for modifying the circuit of
Houser and Sakurai to produce a resonant wave, i.e., to modify the circuit of
Houser and Sakurai to be "complex enough" to produce resonant waves.
See id. The test for obviousness is not whether the features of Sakurai may
be bodily incorporated into the structure of Houser, but what the combined
teachings of Houser, Sakurai, and Kellogg suggest to one of ordinary skill in
the art. See Keller, 642 F.2d at 425; see also In re Nievelt, 482 F.2d 965,
968 (CCPA 1973) ("Combining the teachings of references does not involve
an ability to combine their specific structures.").
Furthermore, the argument is not commensurate with the claim.
Claim 1 does not recite limitations regarding "a complex closed-loop
system." Claim 1 also does not require a "control system" nor that the
device must be "complex" and cannot be "simple." Cf Appeal Br. 1819
(arguing that Sakurai's device is simple and does not teach a control system
in the handpiece). We disagree with the Appellants' assertion that one of
ordinary skill in the art would understand the limitation regarding
dynamically producing a resonant wave to incorporate a piezoelectric
transducer, maintain a particular voltage or resonance, low-voltage
switching, or monitoring the motional current and being able to change input
in response thereto. See Appeal Br. 16-19 and Tr. 12-15. The Specification
discusses that frequency, current, and voltage must be controlled
"dynamically" (Spec. 2), that the battery can dynamically change its power
output (id. at 44 ), and that the "total power output needs to be adjusted
dynamically" (id.). However, the Specification does not provide a specific
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definition of "dynamically" or a description of the term such that one of
ordinary skill in the art would understand the limitation of dynamically
producing a resonant wave to incorporate a specific voltage, complexity, or
switching.
We further find unpersuasive the Appellants' assertion that "Sakurai
simply does not contemplate the realm of complexity that is required for the
dynamic production of a resonant condition" (Appeal Br. 20), because it
is a statement without factual support. The Appellants do not point to, nor is
it clear, where Sakurai contemplates or even discusses the complexity or
simplicity of its device.
The Appellants further submit evidence in the form of two
Declarations by inventor Thomas 0. Bales, Jr., (Exs. A and C) as evidence
that there is "no reasonable expectation of success as set forth in MPEP
716C. 7" Tr. 11, 11. 12-14; see also Reply Br. 2. The Appellants rely on
these Declarations to show "the state of the art at the time of Appellants'
invention and the monumental and non-obvious engineering task in
developing an ultrasonic surgical handle having a driving-wave generation
circuit that is both cordless and capable of dynamically producing a resonant
wave along an ultrasonic waveguide" (Appeal Br. 18 n.1 ), i.e., in support of
the argument that it would not have been obvious at the time of the filing of
the application for one of ordinary skill in the art to combine the references
(see Tr. 9, 11. 11-24; see also Reply Br. 4).
7 The current MPEP, revision of November 2015, does not contain a section
716C, thus it not clear to what the Appellants are referring. For purposes of
this appeal, we consider the Appellants to be referring to MPEP § 2143.02,
requiring a reasonable expectation of success. See Reply Br. 2.
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We first note that we find unpersuasive the Appellants' arguments that
the Examiner discounts the Declarations (see Reply Br. 3-5) and fails to
give them "full consideration" (Tr. 16, 11. 16-23 ). The Examiner provides
adequate reasoning as to why the Declarations are not persuasive. See Ans.
10-11. After further consideration of the Declarations, we agree that the
Declarations are not persuasive to show nonobviousness.
Bales's Declarations are directed to references that are not the subject
of the rejection on appeal. In the Declaration of September 12, 2011
(Ex. A), Bales states he "disagree[ s] that it would have been obvious to a
person of ordinary skill in the art to modify the corded ultrasonic device in
Bishop with various features of the devices in Vaitekunas and Rabin" (Ex. A
i-f 8), and directs further statements to the differences between that prior art
and the invention (see id. i-fi-19, 35). Similarly, Bales's Declaration of
October 4, 2012 (Ex. C) is directed to the combination of Houser and prior
art Jewett8. See Ex. C i-fi-15-9, 12-15. However, the Examiner relies on the
combination of Houser, Sakurai, and Kellogg as rendering the claims
obvious. Thus, to the extent the Declarations are relied upon as evidence
that one of ordinary skill in the art would not combine Houser, Sakurai, and
Kellogg because
there is not the necessary teaching, suggestion, or motivation to
a person of ordinary skill in the art that a combination of the
references, in accordance with their predictable uses, could
achieve the cordless handle of independent claims 1 and 14 of
the present invention with any reasonable expectation of success
8 US 2002/0138090 Al; pub. Sept. 26, 2002.
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(Appeal Br. 20 (emphasis omitted)), these Declarations are not probative
because they do not deal with the specific prior art that was the subject of the
rejections. See In re Beattie, 974 F.2d 1309, 1313 (Fed. Cir. 1992).
The Appellants further rely on Bales' s Declaration statements that
having a self-contained, self-powered, cordless, battery-powered, ultrasonic
surgical cutting and cauterizing device exceeded "the electrical and
mechanical capabilities that were available in the art at the time the
invention was made" (Ex. A i-f 8; Reply Br. 5) as support that the Examiner
relies on hindsight (see Reply Br. 3). The Appellants argue that the
Declarations provide sufficient evidence that others at the time the
application was filed did not believe the combination of an ultrasonic cutting
device that produces a resonant wave and is cordless was possible. See
Reply Br. 5-7 and Appeal Br. 18; see also Tr. 12, 11. 3-7. In support
thereof, the Appellants emphasize the necessity of "the generator/control
box [of corded devices due to] significant power at a high voltage, along
with significant signal processing, [being] required to operate the ultrasonic
handpiece" (Reply Br. 5---6 (citing Ex. A i-f 18) ), the cost of the
generator/control box (id. (citing Ex. A i-f 13)), and the evolution in the
devices requiring "complex circuitry and high-voltage power generation"
(id. (citing Ex. A i-f 15)); see also Tr. 12-17). However, as noted above, the
claim does not require a specific complexity or voltage such that it would be
clear to one of ordinary skill in the art that the ultrasonic cutting device of
Houser could not be modified by Sakurai to be cordless and self-contained
and by Kellogg to dynamically produce a resonant wave. The Declarations
are not commensurate with the scope of the claim. See In re Lindner, 457
F.2d 506, 508 (CCPA 1972) ("It is well established that the objective
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evidence of nonobviousness must be commensurate in scope with the
claims."). Thus, the Appellants' argument, as supported by Bales's
Declarations, that the Examiner improperly relies on hindsight is not
persuasive.
The Appellants also submit a Declaration of Dr. James F. Barter,
M.D. (Ex. B) as evidence of the current state of the art (see Appeal Br. 10).
Dr. Barter states that he reviewed the Appellants' application and the prior
art Bishop9 (Ex. B i-f 8) that is not relied upon by the Examiner in the
rejection of record. Dr. Barter also states:
Similar to the device described in Bishop, all ultrasonic
laparoscopic surgical devices currently in use, as well as those
that I have used in the past, to surgically cut and cauterize tissue
during a procedure, include a sterile ultrasonic laparoscopic
hand-held surgical instrument connected to a separate and
relatively expensive, large, and heavy non-sterile generator box
by a long cord.
Id. i-f 9. However, Dr. Barter provides no evidence as to why one of ordinary
skill in the art would not combine Houser, Sakurai, and Kellogg for the
reasons identified by the Examiner. Thus, to the extent Dr. Barter's
Declaration is relied on as support for the argument that the Examiner
improperly relies on hindsight (see Reply Br. 3), it is not persuasive.
Thus, we find the Examiner has established a prima facie case of
obviousness as the Examiner has provided articulated reasoning with
rational underpinning to support a legal conclusion of obviousness. See KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
The Appellants submit Dr. Barter's Declaration (Ex. B) for the
secondary consideration of long-felt need. See Reply Br. 8-11; see also
9 US 5,954,736; issued Sept. 21, 1999.
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Tr. 11, 11. 16-18, 18, 1. 17-19, 1. 16, 23, 11. 21-25,19, 11. 17-20. We have
fully considered Dr. Barter' s Declaration provided in support of secondary
considerations and, weighing all evidence of obviousness against all
evidence of non-obviousness, we find the secondary considerations
unpersuasive to rebut the prima facie obviousness determination.
We consider anew the issue of obviousness under 35 U.S.C. § 103,
carefully evaluating and weighing both the evidence relied upon in finding
obviousness and the evidence provided by the Appellants. See In re
Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984); Stratoflex, Inc. v. Aeroquip
Corp., 713 F.2d 1530, 1538 (Fed. Cir. 1983).
Dr. Barter discusses: (1) a desire to use laparoscopic instruments
(Ex. B i-f 4); (2) all such devices currently in use require cords (id. i-f 9) and a
non-sterilized generator box (id. i-fi-19, 12, 13); (3) the cords and box present
logistical challenges (id. i-fi-1 1017); and ( 4) examining and using the
Appellants' prototype that "is a lightweight, cordless ultrasonic surgical
cutting/cautery instrument that contains a battery, a transducer, and all of the
circuitry necessary to provide the functionality of the generator box in a
single hand-held device" that would solve those challenges (id. i-f 18). Even
assuming that Dr. Barter is factually correct about the need for a cordless,
battery-operated surgical cutting instrument, Dr. Barter's Declaration does
not consider that Sakurai provides a solution in the form of a cordless,
battery-operated surgical knife. See Sakurai i-fi-17-13, 83. Furthermore, we
agree with the Examiner (see Ans. 11) that Dr. Barter's Declaration does not
provide "objective evidence that an art-recognized problem existed in the art
for a long period of time without solution." Ex Parte Jell a, 90 USPQ2d
1009, 1019 (BPAI 2008) (precedential). Thus, we find the secondary
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consideration advanced by Dr. Barter's Declaration of long-felt need
inadequate to establish nonobviousness. Therefore, we do not find the
Appellants' evidence of secondary considerations outweighs the prima facie
showing of obviousness.
Thus, we are not persuaded the Examiner's rejection of claim 1 is in
error, and, therefore, we sustain the Examiner's rejection of independent
claims 1 and 14. The Appellants provide no separate arguments against the
rejection of claims 2-5, 7-9, 15-18, 21, 22, but rely on their dependency
from claims 1 and 14. See Appeal Br. 22. Similarly, the Appellants rely on
the arguments presented for claims 1 and 14 for the rejections of dependent
claims 6, 10-13, 19, and 20 (see id. at 22-25). Therefore, for the same
reasons we sustain the rejection of independent claims 1 and 14, we also
sustain the rejections of dependent claims 2-13 and 15-22.
DECISION
The Examiner's rejection of claims 1, 5-8, 10-13, 21, and 22 under
35 U.S.C. § 101 on the ground ofnonstatutory obviousness-type double
patenting is AFFIRMED.
The Examiner's rejections of claims 1-22 under 35 U.S.C. § 103(a) as
obvious are AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
17