VAN TOL, DAVID J. et al.

Patent Trials and Appeals Board

Sep 30, 2019

14739011 - (D) (P.T.A.B. Sep. 30, 2019)

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.
14/739,011 06/15/2015 DAVID J. VAN TOL H-EB-00818(203-10310) 8656
90039 7590 09/30/2019
Covidien LP
Attn: IP Legal
5920 Longbow Drive
Mail Stop A36
Boulder, CO 80301-3299
EXAMINER
HO, HOAI V
ART UNIT PAPER NUMBER
2827
NOTIFICATION DATE DELIVERY MODE
09/30/2019 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):
docket@carterdeluca.com
rs.patents.two@medtronic.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID J. VAN TOL and KEITH W. MALANG
____________

Appeal 2019-001106
Application 14/739,011
Technology Center 2800
____________

Before JEFFREY T. SMITH, N. WHITNEY WILSON, and
BRIAN D. RANGE, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–19, which constitutes all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appellant claims a method for detecting a mechanical coupling
between an ultrasonic probe and an ultrasonic transducer of an ultrasonic
surgical device (independent claim 10) and an ultrasonic surgical device

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Covidien LP.
Appeal Br. 1.
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(independent claim 1). The method comprises sensing current from the
ultrasonic transducer; performing frequency response analysis based on the
sensed current; calculating the first and second resonant frequency and the
first and second anti-resonant frequency of the ultrasonic transducer;
calculating the first and second coupling coefficient based on the first and
second resonant frequency and the first anti-resonant frequency and
determine whether the ultrasonic probe is mechanically coupled to the
ultrasonic transducer based on the first and second coupling coefficients.
(independent claim 10). The ultrasonic surgical device comprises a
controller configured to receive sensed current from the sensor; perform a
frequency response analysis based on the sensed current; calculate the first
and second resonant frequency and the first and second anti-resonant
frequency of the ultrasonic transducer; and determine whether the ultrasonic
probe is mechanically coupled to the ultrasonic transducer based on the first
and second resonant frequencies and the first and second anti-resonant
frequencies (independent claim 1). Further details of the claimed method
and apparatus are set forth in representative claims 1 and 10. A copy of
these claims, taken from the Claims Appendix of the Appeal Brief, appears
below.
1. An ultrasonic surgical device comprising:
a power source configured to generate power;
an ultrasonic transducer electrically coupled to the power
source and configured to generate ultrasonic motion in response
to the generated power;
a sensor configured to sense current of the generated
power supplied to the ultrasonic transducer;
and
an ultrasonic probe configured to be mechanically
couplable to the ultrasonic transducer;
a controller configured to:
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Application 14/739,011
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receive sensed current from the sensor;
perform a frequency response analysis based on the sensed
current;
calculate a first resonant frequency and a first anti-
resonant frequency of the ultrasonic transducer prior to
coupling the ultrasonic probe based on the frequency
response analysis;
calculate a second resonant frequency and a second anti-
resonant frequency of the ultrasonic transducer based on
the frequency response analysis prior to determining
whether the ultrasonic probe is coupled to the ultrasonic
transducer; and
determine whether the ultrasonic probe is mechanically
coupled to the ultrasonic transducer based on the first and
second resonant frequencies and the first and second anti-
resonant frequencies.

10. A method for detecting a mechanical coupling
between an ultrasonic probe and an ultrasonic transducer of an
ultrasonic surgical device, the method comprising:
applying alternating current (AC) signals to the ultrasonic
transducer without the ultrasonic probe being mechanically
coupled to the ultrasonic transducer;:
sensing current of the AC signals supplied to the
ultrasonic transducer;
performing a frequency response analysis based on the
sensed current;
calculating a first resonant frequency and a first anti-
resonant frequency of the ultrasonic transducer without the
ultrasonic probe being mechanically coupled to the ultrasonic
transducer based on the frequency response analysis;
calculating a second resonant frequency and a second
anti-resonant frequency of the ultrasonic transducer based on
the frequency response analysis prior to determining whether
the ultrasonic probe is mechanically coupled to the ultrasonic
transducer;
calculating a first coupling coefficient based on the first
resonant frequency and the first anti-resonant frequency;
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calculating a second coupling coefficient based the second
resonant frequency and the second anti-resonant frequency; and
determining whether the ultrasonic probe is mechanically
coupled to the ultrasonic transducer based on the first and second
coupling coefficients.

The Examiner rejects claims 1–19 under 35 U.S.C. § 101 “because
the claimed invention is directed to a judicial exception . . . without
significantly more” (Final Action 2). Specifically, the Examiner determines
the following limitations of claim 1 are directed to an abstract idea:
perform a frequency response analysis based on the sensed
current;
calculate a first resonant frequency and a first anti-resonant
frequency of the ultrasonic transducer prior to coupling the
ultrasonic probe based on the frequency response analysis;
calculate a second resonant frequency and a second anti-resonant
frequency of the ultrasonic transducer based on the frequency
response analysis prior to determining whether the ultrasonic
probe is coupled to the ultrasonic transducer; and
determine whether the ultrasonic probe is mechanically coupled
to the ultrasonic transducer based on the first and second resonant
frequencies and the first and second anti-resonant frequencies.
(id. at 3) (emphasis omitted). The Examiner presents similar statements for
independent claim 10 (id. at 4). The Examiner further determines claim
limitations in addition to the abstract idea are “additional elements” that are
not sufficient to make the claim as a whole amount to significantly more
than the abstract idea itself (id. at 5).
Appellant argues “[c]laims 1 and 10 as a whole are directed to an
improvement of ultrasonic surgical instrument and clearly do not seek to tie
up the abstract idea, which the Examiner identifies as the computational
instructions performed by a controller in communication with a current
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sensor.” (App. Br. 6 (citing McRO, Inc. v. Bandai Namco Games Am., Inc.
837 F.3d 1299 (Fed. Cir. 2016))). In particular, Appellant argues that “the
claim’s description of an ultrasonic surgical device including a power
source, an ultrasonic transducer, an ultrasonic probe, and a sensor, forming a
specific structure that uses a controller to determine whether the ultrasonic
probe is mechanically coupled to the ultrasonic transducer makes it clear that
claims 1 and 10 as a whole would clearly amount to significantly more than
any recited exception.” (id. at 7).

OPINION
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014) (internal quotations and citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
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Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
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elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a
patent-eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO’s January 7, 2019, Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance (“Memorandum”). Under that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activities such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial
exception into a practical application (see MANUAL OF PATENT
EXAMINING PROCEDURE (MPEP) § 2106.05 (a)–(c), (e)–(h) (9th
Ed., Rev. 08.2017, Jan. 2018)).2
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception
that is not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)); or

2 The Examiner determines that certain claim elements are routine and
conventional (see, e.g., Ans. 13–16). This determination is not relevant to
steps (1) and (2) of the Guidance analysis. See Guidance.
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(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Memorandum.
Appellant’s invention is directed to an ultrasonic surgical device for
verifying integrity of mechanical coupling between an ultrasonic probe and
an ultrasonic transducer of the ultrasonic surgical device (independent claim
1) and a method for detecting a mechanical coupling between an ultrasonic
probe and an ultrasonic transducer of an ultrasonic surgical device
(independent claim 10). (Spec. ¶ 4). The Specification discloses that when
the ultrasonic transducer is not mechanically coupled or attached to the
ultrasonic probe, the ultrasonic transducer cannot deliver desired mechanical
motion so as to obtain desired therapeutic effects. (id. ¶ 3). The
Specification teaches that there is a need to notify the clinician of the
presence or absence of the connection of the ultrasonic probe and the
ultrasonic transducer. (id.). The Specification teaches an ultrasonic surgical
device for detecting a defect in a connection between an ultrasonic
transducer and an ultrasonic probe of an ultrasonic surgical device. (id. ¶
28).
Independent claim 1 describes an ultrasonic surgical device
comprising a controller configured to:
receive sensed current from the sensor;
perform a frequency response analysis based on the sensed
current;
calculate a first resonant frequency and a first anti-
resonant frequency of the ultrasonic transducer prior to
coupling the ultrasonic probe based on the frequency
response analysis;
calculate a second resonant frequency and a second anti-
resonant frequency of the ultrasonic transducer based on
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the frequency response analysis prior to determining
whether the ultrasonic probe is coupled to the ultrasonic
transducer; and
determine whether the ultrasonic probe is mechanically
coupled to the ultrasonic transducer based on the first and
second resonant frequencies and the first and second anti-
resonant frequencies.

Independent claim 10 requires the following steps:
applying alternating current (AC) signals to the ultrasonic
transducer without the ultrasonic probe being mechanically coupled to
the ultrasonic transducer;:
sensing current of the AC signals supplied to the ultrasonic
transducer;
performing a frequency response analysis based on the sensed
current;
calculating a first resonant frequency and a first anti-resonant
frequency of the ultrasonic transducer without the ultrasonic probe
being mechanically coupled to the ultrasonic transducer based on the
frequency response analysis;
calculating a second resonant frequency and a second anti-
resonant frequency of the ultrasonic transducer based on the
frequency response analysis prior to determining whether the
ultrasonic probe is mechanically coupled to the ultrasonic transducer;
calculating a first coupling coefficient based on the first
resonant frequency and the first anti-resonant frequency;
calculating a second coupling coefficient based the second
resonant frequency and the second anti-resonant frequency; and
determining whether the ultrasonic probe is mechanically
coupled to the ultrasonic transducer based on the first and second
coupling coefficients.

In applying the Guidance to the claims on appeal, we determine that
each of independent claims 1 and 10 recites an abstract idea of a
mathematical concept (e.g., a mathematical relationship) in view of the
“calculating” steps of the claims. We also determine, however, that these
independent claims recite additional elements that integrate the
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mathematical concept into a practical application for the reasons explained
below.
The Specification disclosures noted above reflect that the
mathematical concept of the independent claims improves an ultrasonic
surgical device for verifying integrity of mechanical coupling between an
ultrasonic probe and an ultrasonic transducer of the ultrasonic surgical
device. See MPEP § 2106.05(a). That is, the claim “purport[s]to improve
the functioning of” a “technology or technical field.” Alice, 573 U.S. at 223.
In this instance, the independent claims integrate the mathematical concept
into a practical application of the concept by specifically defining a method
of calculating the first and second coupling coefficient based on the first and
second resonant frequency and the first anti-resonant frequency and
determine whether the ultrasonic probe is mechanically coupled to the
ultrasonic transducer based on the first and second coupling coefficients.
(independent claim 10). The ultrasonic surgical device comprises a
controller configured to receive sensed current from the sensor; perform a
frequency response analysis based on the sensed current; calculate the first
and second resonant frequency and the first and second anti-resonant
frequency of the ultrasonic transducer; and determine whether the ultrasonic
probe is mechanically coupled to the ultrasonic transducer based on the first
and second resonant frequencies and the first and second anti-resonant
frequencies. (Independent claim 1). Therefore, the claims do not attempt to
monopolize the mathematical concept itself, but rather define a specific
method that employs the mathematical concept to achieve multiple
improvements in the technological process of determining whether the
ultrasonic probe is mechanically coupled to the ultrasonic transducer. See
Diehr, 450 U.S. at 176 (1981) (“A claim drawn to subject matter otherwise
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statutory does not become nonstatutory simply because it uses a
mathematical formula.”); see also id. at 191 (“We view respondents’ claims
as nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”).
In summary, the independent claims recite a mathematical concept,
but also recite additional elements that integrate the mathematical concept
into a practical application. Each of these independent claims as a whole
applies, relies on, or uses the mathematical concept in a manner that imposes
a meaningful limit on the mathematical concept, whereby the claims are
more than a drafting effort designed to monopolize the concept. For these
reasons, we ultimately determine that the independent claims, and
concomitantly the claims depending therefrom, define patent eligible subject
matter.
Accordingly, we do not sustain the Examiner’s rejection of claims 1–
19 under 35 U.S.C. § 101 as directed to a judicial exception without
significantly more.
The decision of the Examiner is reversed.

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Application 14/739,011
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CONCLUSION
In summary:
Claims
Rejected
Basis Affirmed Reversed
1–19 § 101 1–19
Overall
Outcome
1–19

REVERSED