GYRUS MEDICAL LIMITED

Patent Trials and Appeals Board

Sep 21, 2021

2021000307 (P.T.A.B. Sep. 21, 2021)

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.
15/404,286 01/12/2017 Marno NAGTEGAAL 174290 1081
25944 7590 09/21/2021
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
EXAMINER
GIULIANI, THOMAS ANTHONY
ART UNIT PAPER NUMBER
3794
NOTIFICATION DATE DELIVERY MODE
09/21/2021 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):
OfficeAction25944@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARNO NAGTEGAAL

Appeal 2021-000307
Application 15/404,286
Technology Center 3700
____________

Before JOHN C. KERINS, JILL D. HILL, and
CYNTHIA L. MURPHY, Administrative Patent Judges.

MURPHY, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals from the Examiner’s rejections of claims 1–13,
18, and 19 under 35 U.S.C. § 103 (Rejections I–III) and the Examiner’s
rejection of claims 8 and 19 under 35 U.S.C. § 112 (Rejection IV). We do not
sustain the Examiner’s rejections under 35 U.S.C. § 103, however, we do
sustain the Examiner’s rejection under 35 U.S.C. § 112. Thus, we AFFIRM
IN PART.2

1 The Appellant is the “applicant” as defined by 37 C.F.R. § 1.42 (e.g., “the
inventor or all of the joint inventors”). “The real party in interest for this
appeal and the present application is Gyrus Medical Limited.” (Appeal
Br. 1.)
2 We have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a). A hearing was
held on June 25, 2021.
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APPELLANT’S INVENTION
The Appellant’s invention relates to “a surgical instrument” having a
“handle,” a “rotatable shaft” that projects from the handle, and an “effector”
that is located on the end of the rotatable shaft. (Spec. p2:2–3.) A
“thumbwheel” which controls shaft rotation and a “switch” which controls
the end effector are both located on the handle. (Id. p2:4–9.) More
specifically, “the switch is oriented on the handle so as to be generally above
the thumbwheel” so that “both the thumbwheel and the switch may be
activated by the user's thumb, without the user having to alter his grip on the
handle with his other fingers.” (Id. p2:9–13.) According to the Appellant,
“[s]uch a configuration provides for an ergonomic arrangement that
increases the ease of use of the instrument by the user.” (Id. p2:14–16.)
ILLUSTRATIVE CLAIM
1. A surgical instrument comprising:
a handle, having a longitudinal axis defining a generally
forward and a rearward direction such that the handle comprises
a forward end and a rearward end, the handle also comprising
an upper and a lower direction;
an elongate shaft extending from the forward end of the
handle and extending in the longitudinal axis and having a
distal end;
an end effector positioned at the distal end of the
elongate shaft;
a handswitch in the form of a push button, actuation of
which causes the condition of the end effector to change;
a rotatable thumb-wheel located on the handle, rotation
of the thumb-wheel causing a corresponding rotation of the
elongate shaft; and
a trigger for actuating a cutting mechanism, the trigger
provided at a position fully in front of the handswitch and the
rotatable thumbwheel along the longitudinal axis;
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wherein the handswitch is located on the handle in a
position directly above the thumb-wheel and spaced from the
thumb-wheel in a direction orthogonal to the longitudinal axis,
and
wherein the handswitch comprises a textured upper
surface adapted to allow a user’s thumb to activate the
handswitch without slipping.
REJECTION I
The Examiner rejects claims 1–13 under 35 U.S.C. § 103 as
unpatentable over Lyons,3 Castro,4 and Olson.5 (Non-Final Act. 4.)
Independent claim 1 sets forth a surgical instrument comprising a
“handle,” an “elongated shaft,” an “end effector,” a “trigger,” a
“handswitch,” and a “thumbwheel.” (Appeal Br., Claims App.) The
elongated shaft “extend[s] from the forward end of the handle” and the end
effector is “positioned at the distal end of the elongate shaft.” (Id.) The
trigger is “for actuating a cutting mechanism,” “actuation” of the handswitch
“causes the condition of the end effector to change,” and “rotation” of the
thumbwheel “caus[es] a corresponding rotation of the elongate shaft.” (Id.)
The Examiner finds that Lyons discloses a surgical instrument comprising
these elements. (See Non-Final Act. 3–4.)
Lyons discloses a surgical instrument comprising a “handle assembly
12” (Lyons ¶ 28), an “elongated shaft 114” (id.), an “end effector
assembly 200” (id.), a “trigger 24” (id. ¶ 29), a “switch 19” (id.), and a
“rotation knob 26” (id.). Lyons’s surgical instrument is shown in Figure 1,
reproduced below.

3 US 2016/0089177 A1, published March 31, 2016.
4 US 9,517,059 B2, issued December 13, 2016.
5 US 8,197,479 B2, issued June 12, 2012.
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The above drawing “is an elevation view” of Lyons’s surgical instrument.
(Id. ¶ 17.) As shown in this drawing, the elongated shaft 114 extends from
the forward end of the handle assembly 12 and the end effector assembly
200 is positioned at the distal end of the elongated shaft 114. Lyons
discloses that the trigger 24 is “selectively operable to extend and retract a
knife member 220,” that the switch 19 is for “electrically coupling [a]
generator to the end effector assembly 200,” and that “actuation” of the
rotation knob 26 “rotates elongated shaft 114.” (Id. ¶ 29.)
Independent claim 1 requires the handswitch to be “located on the
handle” and also requires the thumbwheel to be “located on the handle.”
(Appeal Br., Claims App.) As shown in the drawing above, in Lyons’s
surgical instrument, the trigger 24, the switch 19, and the rotation knob 26
are located on the handle assembly 12. More particularly, Lyons’s
trigger 24 is located on a lower rear portion of the handle assembly 12 (e.g.,
generally adjacent handle 22), Lyons’s switch 19 is located on an upper rear
portion of the handle assembly 12 (e.g., generally adjacent to handle 20),
and Lyons’s rotation knob 26 is located on a front portion of the handle
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assembly 12 adjacent the proximal end of the elongated shaft 114. (See id.
¶¶ 28–29.)
Independent claim 1 further requires the handswitch to be “located on
the handle in a position directly above the thumb-wheel.” (Appeal Br.,
Claims App.) The Examiner finds that Castro teaches a surgical instrument,
“similar” to Lyons’s surgical instrument, with an “interchangeable”
thumbwheel configuration. (Non-Final Act. 4.) And the Examiner
determines that the claimed surgical instrument can be achieved by “a
simple substitution of interchangeable thumb-wheel configurations.” (Id.)
Castro discloses a surgical instrument 200 that includes a
“handle 205” (Castro c10:55), a “trigger 208” (id. c11:15), a “ratchet
selector 271” (id. c16:32), and a “rotation knob 261” (id. c17:35). Castro’s
surgical instrument is shown in Figure 2, reproduced below.

The above drawing is a “cutaway side view” of Castro’s surgical instrument.
(Id. c9:36.) The above drawing shows that, in Castro’s surgical instrument,
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the rotation knob 261 is located on the handle 205 in a position directly
above the trigger 208.
But the above drawing also shows that, in Castro’s surgical
instrument, there is no handswitch located on the handle 205 directly above
the rotation knob 261. As such, insofar as Castro teaches a thumbwheel
configuration, it does not teach a thumbwheel configuration involving a
handswitch that is located on the handle directly above the thumbwheel.
Thus, as pointed out by the Appellant, neither Lyons nor Castro “suggests a
handswitch located on the handle in a position directly above the thumb-
wheel.” (Appeal Br. 13.)
The Examiner maintains that the rejection “utilized the teaching of
Castro to reposition the thumb-wheel of Lyons directly above its actuating
mechanism.” (Ans. 3.) In other words, with the Examiner’s proposed
modification of Lyons’s surgical instrument, the switch 19 remains in the
same position, and only the rotation knob 26 is somehow relocated.
However, as noted by the Appellant, these control elements interact with,
and must be arranged corresponding to, the internal workings of Lyons’s
surgical instrument. (See Reply Br. 4–5.) Thus, while the Examiner’s
proposed modification may sound straightforward, it might require one of
ordinary skill in art “to entirely reconfigure the full handle assembly 10 in a
nonobvious manner.” (Id. at 5.)
The Examiner correctly contends that “the test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference.” (Ans. 4.) Here, however, the
concern is not with the bodily incorporation of Castro’s rotation knob 261
into Lyons’s surgical instrument. Here, the concern is that the Examiner’s
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proposed relocation of the rotation knob 26 would likely require a
reconfiguration of the internal parts of Lyons’s surgical instrument. And,
insofar as such a reconfiguration purportedly “involves only routine skill in
the art” (Ans. 4), we still see no discussion of the details of this
reconfiguration on the record.
Thus, we do not sustain the Examiner’s rejection of independent
claim 1, and claims 2–13 depending therefrom, under 35 U.S.C. § 103.6
REJECTION II
The Examiner rejects dependent claim 18 under 35 U.S.C. § 103 as
unpatentable over Lyons, Castro, Olson, and Hixon.7 (Non-Final Act. 7.)
The Examiner’s further findings and determinations with respect to this
claim do not compensate for the shortcomings in the rejection of
independent claim 1, from which claim 18 depends. (See id.)
Thus, we do not sustain the Examiner’s rejection of dependent
claim 18 under 35 U.S.C. § 103.
REJECTION III
The Examiner rejects independent claim 19 under 35 U.S.C. § 103 as
unpatentable over Lyons and Castro. (Non-Final Act. 3.) Independent
claim 19, like independent claim 1, requires a handswitch to be “located on
the handle in a position directly above the thumb-wheel” (Appeal Br.,
Claims App.) and the Examiner relies upon the same findings and
determinations with respect to Lyons and Castro (see Non-Final Act. 3–4).

6 The Examiner’s further findings and determinations with the dependent
claims 2–13 (see Non-Final Act. 4–6) do not compensate for the
shortcomings of the Examiner’s rejection of independent claim 1.
7 US 2009/0012520 A1, published January 8, 2009.
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Thus, for the same reasons discussed above in connection with
independent claim 1, we do not sustain the Examiner’s rejection of
independent claim 19.
REJECTION IV
The Examiner rejects claims 8 and 19 under 35 U.S.C. § 112(b) as
being indefinite. (See Non-Final Act. 3.) The Appellant does not address
this rejection in the appeal papers. (See Appeal Br. 6–20; Reply Br. 1–7).
Thus, we summarily sustain the Examiner’s rejection of claims 8
and 19 under 35 U.S.C. § 112.
CONCLUSION
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–13 103 Lyons, Castro,
Olson
1–13
18 103 Lyons, Castro,
Olson, Hixson
18
19 103 Lyons, Castro 19
8, 19 112(b) Indefiniteness 8, 19
Overall
Outcome
8, 19 1–7,
9–13, 18

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED IN PART