Ex Parte Viola

Patent Trial and Appeal Board

May 30, 2017

12189947 (P.T.A.B. May. 30, 2017)

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”).
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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.
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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:
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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.
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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,
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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
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