Ex Parte ViolaDownload PDFPatent Trial and Appeal BoardMay 30, 201712189947 (P.T.A.B. May. 30, 2017) 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. 12/189,947 08/12/2008 Frank J. Viola H-US-00905 (203-5512) 7917 50855 7590 Covidien LP 60 Middletown Avenue c/o Legal - Mailstop MS 54 North Haven, CT 06473 06/01/2017 EXAMINER MILLIGAN, ADAM C ART UNIT PAPER NUMBER 1612 NOTIFICATION DATE DELIVERY MODE 06/01/2017 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): SurgicalUS@covidien.com medtronic_mitg-si_docketing@cardinal-ip.com mail @ cdfslaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRANK J. VIOLA1 Appeal 2016-001706 Application 12/189,947 Technology Center 1600 Before DONALD E. ADAMS, ULRIKE W. JENKS, and JOHN E. SCHNEIDER, Administrative Patent Judges. JENKS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims directed to a drive mechanism that uses nutating gear reduction arrangement. The Examiner rejects the claims as obvious and on the ground of nonstatutory obviousness-type double patenting. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellant, the Real Party in Interest is Covidien LP with ultimate parent as Medtronic, pic. App. Br. 2. Appeal 2016-001706 Application 12/189,947 STATEMENT OF THE CASE Claims 1—10 and 14—21 on appeal, and can be found in the Claims Appendix of the Appeal Brief. Claim 1 is representative of the claims on appeal, and reads as follows (emphasis added): 1. A drive mechanism for transmitting rotational force in surgical devices, comprising: a nutating gear reduction drive having an input gear and an output gear, the input gear configured to be driven at high speed, low torque by a proximal drive shaft of a surgical device, and the output gear configured to transmit a low speed, high torque rotational force; wherein the proximal drive shaft includes a crank that rotates about a longitudinal axis, wherein the crank includes a distally-extending pin that is offset from the longitudinal axis, wherein the pin is configured to engage the output gear, and wherein rotation of the crank transmits rotational force from the proximal drive shaft to the output gear. Claim 14, the only other independent claim, similarly recites “a distally-extending pin that is offset from the longitudinal axis, wherein the pin is configured to engage the output gear.” The Examiner’s rejection are as follows: Claims 1—10 and 14—212 under 35 U.S.C. § 103(a) as being unpatentable over Whitman3 in view of Scott,4 and further in view of Milliman.5 2 We note that the Answer does not list claim 21 in the statement of the rejection. However, claim 21 is included in the Final Action mailed Oct. 24, 2014, 2 (“Final Act.”), and is recognized in the Appeal Brief and Reply Brief as included in the rejection. See Appeal Br. 7; Reply Br. 5. 3 Whitman et al., US 2001/0031975 Al, pub. Oct. 18, 2001 (“Whitman”). 4 Scott, RE29,860, reissued Dec. 12, 1978. 5 Milliman et al., US 2006/0049229 Al, pub. Mar. 9, 2006 (“Milliman”). 2 Appeal 2016-001706 Application 12/189,947 Claims 1—10 and 14—21 on the ground of nonstatutory obviousness- type double patenting over claims 1—13 of US 8,631,988 B2 issued Jan. 21, 2014. See Ans. 4; see Final Act. 3^4. Appellant does not identify any error in the Examiner’s obviousness-type double patenting rejection. See Appeal Br. 7—13. We therefore summarily affirm the rejection based upon the Examiner’s explanation and reasoning as set forth an in the Final Action and Answer. See MPEP § 1205.02 (“If a ground of rejection stated by the examiner is not addressed in the appellant’s brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it, unless the examiner subsequently withdrew the rejection in the examiner’s answer”). Obviousness over Whitman, Scott, and Milliman Does the preponderance of evidence relied on by the Examiner support a conclusion of obviousness? Findings of Fact FF1. Whitman teaches a surgical stapler that is attaches to a flexible drive shaft. [T]he flexible shaft 20 may require a higher torque input than the torque transmittable by the drive shafts 30, 32. The drive shafts 30, 32 may thus be configured to transmit low torque but high speed, the high speed/low torque being converted to low speed/high torque by gearing arrangements disposed, for example, at the distal end and/or the proximal end of the drive flexible shaft 20. . . . Such gearing arrangement(s) may include, for example, a spur gear arrangement, a planetary gear arrangement, a harmonic gear arrangement, cycloidal drive arrangement, an epicyclic gear arrangement, etc. 3 Appeal 2016-001706 Application 12/189,947 Whitman | 50; see Ans. 2. FF2. The Examiner finds that “Whitman does not teach that the gearing arrangement is [a] nutating” arrangement. Ans. 3. FF3. Scott teaches that “nutating gear arrangement offers an extremely favorable speed reduction ratio with an absolute minimum of parts.” Scott 1:40-43. Scott Figure 7, is reproduced below, shows an exploded view of “the rotor, coupler, and speed reducer.” Scott 1:68— 69. Fig 7, shows rotator element 76 that has an “inner bearing surface and rotates freely on the surface of shaft 54.” Scott 2:59-61. Wiper arm 80 is secured by elongated pin 82. Scott 2:65—68. FF4. The Examiner finds that Scott teaches a pin relying on a portion of Figure 7 Scott reproduced below: 4 Appeal 2016-001706 Application 12/189,947 “Scott does teach a pin which is offset from the longitudinal axis wherein the pin is configured to engage and transmit rotational force to an output gear.” Advisory Action6 3. FF5. Milliman teaches a “surgical stapling apparatus [that] is also adapted to receive articulating and non-articulating disposable loading units.” Milliman 113. Analysis Based on the combination of Whitman, Scott, and Milliman, the Examiner concludes that, at the time Appellant’s invention was made, it would have been prima facie obvious to modify the surgical stapler of Whitman to use a nutating gear to reduce speed of the high speed/low torque flexible shafts to the low speed/high torque required by a stapler, given that Scott teaches a nutating gear provides an extremely favorable speed reduction ratio. Further, the skilled artisan would have found it obvious to use a flexible distal drive member in order to permit articulation and more precise use of the stapler as taught by Milliman. Ans. 3. We are not persuaded. The claim requires a “‘proximal drive shaft [that] includes a crank that rotates about a longitudinal axis, wherein the crank includes a distally- extending pin that is offset from the longitudinal axis, wherein the pin is configured to engage the output gear. Appeal Br. 12. Appellant contends that the Examiner has not “indicate which feature of Scott[’s Fig 7] was interpreted as a pin, and where the claimed longitudinal axis was.” Appeal Br. 12-13. 6 Advisory Action mailed Dec. 31, 2014. 5 Appeal 2016-001706 Application 12/189,947 Whitman teaches a surgical stapler that uses a flexible drive shaft that requires torque reduction using various gearing arrangements to convert high speed/low torque to low sped/high torque. FF1. The combination of Whitman and Scott reasonably suggests a device that can apply torque reduction using a variety of gearing mechanisms. FFlandFF3. The Examiner, however, failed to establish an evidentiary basis on this record to support a conclusion that Scott’s nutating gearing arrangement contains a pin that is offset form the longitudinal axis to engage the output gear as required by the claims. The Examiner directs us to a portion of Figure 7 of Scott (see FF4) but fails to direct us to the pin. In other words, the Examiner has not explained what part of the figure the Examiner considers to meet the “pin” limitation. See also Appeal Br. 12—13 (the Examiner “failed to indicate which feature of Scott was interpreted as a pin, and where the claimed longitudinal axis was”); see also Reply Br. 3 (“the entirety of the shaft 54 is disposed about a common ‘longitudinal axis.’”). The Examiner did not establish that Scott alone, or in combination with Whitman, discloses a pin that is offset from the longitudinal axis and engages with the output gear as required by the claims. Examiner also did not articulate how Milliman makes up for the deficiencies in the combination of Whitman and Scott discussed above. See FF5. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“rejections 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”). We conclude that the preponderance of the evidence of record does not support the Examiner’s conclusion that the combination of Whitman, 6 Appeal 2016-001706 Application 12/189,947 Scott, and Milliman discloses a drive mechanism as recited in claims 1 and 14 and dependent claims thereto. We thus reverse the rejections under 35 U.S.C. § 103(a) that rely on the teachings of Whitman, Scott, and Milliman. SUMMARY We reverse the rejection of claims 1—10 and 14—21 under 35 U.S.C. 103(a) over Whitman, Scott, and Milliman. We summarily affirm the rejection of claims 1—10 and 14—21 on the ground of nonstatutory obviousness-type double patenting over claims 1—13 of US 8,631,988 B2. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 7 Copy with citationCopy as parenthetical citation