Ex Parte Smith et al

Patent Trial and Appeal Board

Nov 8, 2016

13465820 (P.T.A.B. Nov. 8, 2016)

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.
13/465,820 05/07/2012 Kevin W. Smith H-EB-00284CIP12DIV 1763
90039 7590
Covidien LP
Attn: IP Legal
5920 Longbow Drive
Mail Stop A36
Boulder, CO 80301-3299
11/10/2016 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 O. BALES JR.,
MATTHEW A. PALMER, and DEREK DEE DEVILLE
Appeal 2014-0063251
Application 13/465,8202
Technology Center 3700
Before KEVIN W. CHERRY, BRADLEY B. BAYAT, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL3
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1—9 and 18—23. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.
1 We note related appeals 2014-006185 (application 12/266,252), 2014-
006284 (application 12/266,226), and 2014-006350 (application
13,539,694). See Appeal Br. 2.
2 According to the Appellants, the real party in interest is Covidien AG.
Appeal Br. 2.
3 Throughout this opinion, we refer to the Appellants’ Appeal Brief
(“Appeal Br.,” filed Feb. 13, 2014), Reply Brief (“Reply Br.,” filed May 1,
2014), and Specification (“Spec.,” filed May 7, 2012), and to the Examiner’
Answer (“Ans.,” mailed Mar. 27, 2014) and Final Office Action (“Final
Act.,” mailed Aug. 20, 2013).
Appeal 2014-006325
Application 13/465,820
STATEMENT OF THE CASE
The Appellants’ invention “relates generally to an ultrasonic surgical
assembly, and, more particularly, relates to a . . . cordless, hand-held, fully
electrically powered and controlled, surgical ultrasonic cutting device.”
Spec. 12.
Claims 1 and 18 are the independent claims on appeal. Claim 1
(Appeal Br. 22, Claims App.) is illustrative of the subject matter on appeal
and is reproduced below (bracketing added for reference):
1. A method of maintaining a constant movement of a
cutting blade of an ultrasonic waveguide of a surgical
instrument, which comprises:
[(a)] providing within a handle of the surgical
instrument:
[(b)] an ultrasonic transducer operable to
convert a received motional current into a
movement of a cutting blade of an ultrasonic
waveguide;
[(c)] a measurement circuit connected in a
parallel configuration with the ultrasonic
transducer; and
[(d)] a variable power source comprising a
battery;
[(e)] supplying current through a set of connection
points of the parallel configuration with the variable
power source to, thereby, create the motional current in
the ultrasonic transducer; and
[(f)] regulating the motional current with a current
controller by varying an output of the power source,
thereby maintaining a resonant condition along the
cutting blade in which there is a substantially constant
rate of movement of the cutting blade across a variety of
cutting loads.
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Appeal 2014-006325
Application 13/465,820
REJECTIONS4
Claims 1—9 and 18—23 stand rejected under 35 U.S.C. § 101 on the
ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1—14 ofU.S. Patent No. 8,197,502. Final Act. 3.
Claims 1—4, 6, 8, and 18—20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Kellogg (US 5,897,569, iss. Apr. 27, 1999),
Sakurai (US 6,666,875 Bl, iss. Dec. 23, 2003), and Shoh (US 3,526,792, iss.
Sept. 1, 1970). Id. at 5.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kellogg, Sakurai, Shoh, and Houser
(US 2006/0079878 Al, pub. Apr. 13, 2006). Id. at 9.5
ANALYSIS
Double Patenting
The Appellants present no arguments against the Examiner’s rejection
of claims 1—9 and 18—23 under 35 U.S.C. § 101 on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1—14 ofU.S. Patent No. 8,197,502. Thus, we summarily affirm the
rejection.
4 The rejection of claim 8 under 35 U.S.C. § 112, second paragraph, has
been withdrawn. Adv. Act. 2 (filed Nov. 26, 2013).
5 “Claims 5, 7, and 21—23 are objected to as being dependent upon a
rejected base claim, but would be allowable if rewritten in independent form
including all of the limitations of the base claim and any intervening claims
in addition to remedying the double patenting rejection as noted above.”
Final Act. 11.
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Appeal 2014-006325
Application 13/465,820
Obviousness
The Appellants argue independent claims 1—4, 6, 8, and 18—20 as a
group. See Appeal Br. 8. Independent claims 1 and 18 recite substantially
similar limitations. We consider claim 1 as representative; claims 2—4, 6, 8,
and 18—20 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Kellogg discloses the method of claim 1 of
maintaining a constant movement, the method comprising providing, within
the handle: an ultrasonic transducer as recited by limitations (a) and (b), “a
circuitry system outside the handle for controlling movement of the cutting
blade to maintain a resonant condition along the cutting blade,” as partially
recited by limitations (c) and (f), and a variable power source comprising a
battery that is outside the handle, as partially recited by limitation (d). Final
Act. 5. The Examiner finds Kellogg does not, however, disclose the circuit
and battery are within the handle of the device, as partially recited by
limitations (b) and (c). Id. at 6. The Examiner cites to Sakurai to cure these
deficiencies, finding that one of ordinary skill in the art would modify the
device of Kellogg “to provide a portable, cord-free device to improve
mobility and to provide a device which can be used in a sterilized surgical
instrument without the risk of contamination.” Id. (citing Sakurai, col. 1,11.
23—48, 52—24). The Examiner further finds that Kellogg and Sakurai do not
disclose a measurement circuit connected in a parallel configuration with the
ultrasonic transducer, as recited by limitation (c), supplying current through
a set in connection points, as recited by limitation (e), and “regulating the
motional current with a current controller by varying an output of the power
source, thereby maintaining a substantially constant rate of movement of the
cutting blade across a variety of cutting loads,” as partially recited by
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Appeal 2014-006325
Application 13/465,820
limitation (f). Id. The Examiner cites to Shoh to cure these deficiencies,
finding that one of ordinary skill in the art would modify the generation
circuit of Kellogg and Sakurai with that of Shoh “to protect the transducer
and prolong its life by preventing excessive power dissipation.” Id. at 6—7.
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. There is no teaching, no suggestion, and no motivation found”
in Kellogg, Sakurai, and Shoh “to arrive at each and every element.” Appeal
Br. 8. Specifically, the Appellants argue that the Examiner’s rejection is in
error because the Examiner relies on impermissible hindsight (see id. at 9,
13), and that one of ordinary skill in the art6 would not have been able to
combine Kellogg, Sakurai, and Shoh with predictable results (see id. at 13—
18; see also Reply Br. 4—6). The Appellants argue
the combined teachings of Kellogg, Sakurai, and Shoh do not
render obvious the method of claims 1 and 18, in which there is
a measurement circuit and a variable power source both housed
within a surgical instrument handle, whereby a current controller
regulates the motional current by varying an output of the
variable power source to thereby maintain a resonant condition
along a cutting blade.
Id. at 8 (emphases omitted).
After careful consideration and review of the arguments presented in
the Appellants’ Appeal and Reply Briefs, we disagree with the Appellants’
contention for at least the reasons discussed below.
6 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, 261 F.3d 1350, 1355 (Fed. Cir. 2001)
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Application 13/465,820
To the extent the Appellants argue that the references are not
analogous art because the references are “directed at solving very different
problems” (id. at 13) and are not in the “applicable field of prior art” (id. at
18), 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 to the operational
complexity — e.g., operating under resonance — and the power and voltage
requirements of Appellants’ invention and the device of Kellogg.” Appeal
Br. 18—19. The Appellants’ Specification does not specifically provide an
“applicable field of prior art,” but, rather, that the invention “relates
generally to an ultrasonic surgical assembly.” Spec. 12. 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, 381 F.3d
1320, 1325 (Fed. Cir. 2004). Kellogg is directed to generating ultrasonic
signals that are incorporated in surgical cutting instruments. Kellogg, col. 1,
11. 5—20. Sakurai is directed to a surgical instrument such as an ultrasonic
knife, i.e., an ultrasonic cutting instrument. Sakurai 82, 83, Abstract.
Shoh is directed to an “apparatus for controlling the power supplied to an
ultrasonic transducer,” such as one used for “dispersing and disrupting
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Application 13/465,820
biological cells.” Shoh, Title, col. 1,11. 39-42. 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., 11A 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 Kellogg and Shoh 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 self-contained device
and regulation of the motional current of the methods of
independent claims 1 and 18 with any reasonable expectation of
success.
Appeal Br. 17 (emphases omitted); see also id. at 13 (“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.”).
In support of this argument, the Appellants contend that prior to the
invention, all known ultrasonic cutting devices like that of Kellogg and the
assembly of Shoh used an electric cord plugged into an electric means due to
the “relatively high voltage . . . required to drive a typical piezoelectric
transducer” (Appeal Br. 13 (emphasis omitted)), 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 14). Additionally, the Appellants assert that Kellogg uses multiple
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Application 13/465,820
control loops and separate circuitry and Shoh uses a “detailed circuit” (id. at
15), such that “generation and control of the energy applied to the ultrasonic
transducer as contemplated by Kellogg and Shoh is highly complex” (id.).
Thus, the Appellants argue, “[njeither Kellogg nor Shoh 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 Kellogg and Shoh
(see id. at 15—18; see also Reply Br. 16—19.
To the extent the Appellants argue that Kellogg and Shoh teach away
from the invention, we are not persuaded. The Appellants’ statement that
the prior art systems “critical to the operation of Kellogg and Shoh is the
ability to establish, maintain and, if necessary, re-establish operation of the
ultrasonic instrument at the transducer system’s resonant frequency”
(Appeal Br. 15) is 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, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
We note that the Appellants do not rebut any of the Examiner’s
findings regarding the teachings of the prior art Kellogg and Shoh (Final
Act. 5—7). The Appellants further do not rebut the Examiner’s reasoning for
combining Kellogg and Shoh. Rather, as noted above, the Appellants argue
that Kellogg and Shoh 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
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Application 13/465,820
resident within a handpiece of the surgical device,” (Appeal Br. 15
(emphases omitted)), and thus, Sakurai’s “simple” device cannot be
combined with the device of Houser and Kellogg. See id. at 16—18.
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, does not
exclude multiple loop in addition to a parallel circuit, 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]
written description may be outstanding in its field, but the name of the game
is the claim.”).
Furthermore, the Appellants’ characterization of Kellogg’s and Shoh’s
devices that “generation and control of the energy applied to the ultrasonic
transducer as contemplated by Kellogg and Shoh is highly complex”
(Appeal Br. 15), “Kellogg teaches the use of multiple control loops and
separate circuitry that is employed to try to re-establish resonance when the
operating frequency falls outside a range controlled by a first control loop -
which circuitry is all resident in the set-top box” {id. at 15), and “[i]n Shoh,
a detailed circuit is used to derive the motional current” {id.) are statements
not supported by factual evidence. Even assuming arguendo that Kellogg’s
circuit is complex, and Shoh’s circuit is “detailed,” the Appellants provide
insufficient evidence regarding the required size of Kellogg’s or Shoh’s
circuit. We note that neither reference discusses the size or complexity of
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Appeal 2014-006325
Application 13/465,820
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 Kellogg and Shoh, Sakurai actually teaches a
relatively simple device that does not teach any methods or
systems for controlling movement of a blade or any other
propagation device 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,
operation of the Sakurai device is no different from an ultrasonic
toothbrush.
Id. at 16 (emphases 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 17.
We are not persuaded at least because, as noted above, the Examiner
relies on Sakurai for having an ultrasonic cutter with the circuit and battery
contained within the handle assembly that, in combination with Kellogg,
teaches a variable power source within the handle (see Final Act. 6; see also
Ans. 9); Shoh is relied on for modifying the circuit of Kellogg and Sakurai
to be a measurement circuit connected in a parallel configuration, to supply
current to create a motional current, and to regulate the motional current, i.e.,
to modify the device of Kellogg and Sakurai to be “complex enough” to
establish and maintain a resonant condition. See Final Act. 6; see also
Ans. 9. The test for obviousness is not whether the features of Sakurai may
be bodily incorporated into the structure (or method) of Kellogg, but what
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Application 13/465,820
the combined teachings of Kellogg, Sakurai, and Shoh 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.” As discussed above, claim 1 also does not require a “control
system” nor that the device must be “complex” and cannot be “simple.” Cf.
Appeal Br. 16 (arguing that Sakurai’s device is simple and does not teach a
control system in the handpiece). To the extent the Appellants assert that
one of ordinary skill in the art would understand the limitation regarding
regulating the motional current to incorporate a piezoelectric transducer,
maintain a particular voltage, low-voltage switching, or monitoring the
motional current and being able to change input in response thereto (see
Appeal Br. 13—18), we disagree. The Specification discusses regulating the
motional current by varying an output of the power source, maintaining a
constant rate of movement (Spec. 18—21, 113), and that variations of the
motional current can be identified and regulated based on the total current
and the measured current through the bridge capacitor (id. 1113). However,
the Specification does not provide a specific definition of “regulating” or a
description of the term such that one of ordinary skill in the art would
understand the limitation of regulating the motional current 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
establishment and maintenance of a resonant condition” (Appeal Br. 17),
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Application 13/465,820
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.
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
claim 1, and claims 2-4, 6, 8, and 18—20, which fall with claim 1. The
Appellants provide no separate arguments against the rejection of claim 9,
but rely on its dependency from claim 1. See Appeal Br. 20. Therefore, for
the same reasons we sustain the rejection of independent claim 1, we also
sustain the rejection of dependent claim 9.
DECISION
The Examiner’s rejection of claims 1—9 and 18—23 under 35 U.S.C.
§ 101 on the ground of nonstatutory obviousness-type double patenting is
AFFIRMED.
The Examiner’s rejections of claims 1—4, 6, 8, 9, and 18—20 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
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