2020004134 (P.T.A.B. Feb. 18, 2021)

Covidien LP

Patent Trials and Appeals BoardFeb 18, 2021

2020004134 (P.T.A.B. Feb. 18, 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. 15/179,293 06/10/2016 Thomas Wenchell H- US-02721.USV1(203-7907 1056 50855 7590 02/18/2021 Covidien LP 60 Middletown Avenue Mailstop 54, Legal Dept. North Haven, CT 06473 EXAMINER TECCO, ANDREW M ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 02/18/2021 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): 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 THOMAS WENCHELL Appeal 2020-004134 Application 15/179,293 Technology Center 3700 Before JEREMY M. PLENZLER, BRANDON J. WARNER, and LEE L. STEPINA, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 2–10. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Covidien LP, a subsidiary wholly-owned by Medtronic, PLC. Appeal Br. 1. Appeal 2020-004134 Application 15/179,293 2 CLAIMED SUBJECT MATTER The claims are directed to a surgical tool. Claim 2, reproduced below, is illustrative of the claimed subject matter: 2. A powered surgical instrument comprising: a processor configured to control operation of the powered surgical instrument; a memory configured to store a tissue compression program; a motor configured to control a reload to apply a compressive force to tissue by the reload; and at least one sensor configured to measure a current draw on the motor, wherein, when the powered surgical instrument is placed in a reload simulation state to test the powered surgical instrument, the processor executes a simulation program to measure the current draw on the motor during the simulation state when the powered surgical instrument simulates a staple firing through a predetermined nominal thickness; and wherein the measured current draw on the motor during the simulation state is used to adjust the tissue compression program. Appeal 2020-004134 Application 15/179,293 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Whitman US 2004/0111081 A1 June 10, 2004 Soltz US 2007/0179408 A1 Aug. 2, 2007 Zemlok US 2009/0108048 A1 Apr. 30, 2009 REJECTIONS2 Claims 2, 7, 8, and 10 are rejected under 35 U.S.C. § 102(b) as being anticipated by Zemlok. Claim 3 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Zemlok. Claims 4, 6, and 9 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Zemlok and Whitman. Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Zemlok and Soltz. OPINION Independent claims 2 and 7 each recite “a tissue compression program” and “a simulation program” included in a “powered surgical instrument.” The simulation program determines parameters “used to adjust [the] tissue compression program.” The Examiner finds that Zemlok discloses these features, relying primarily on the disclosure in paragraph 46 of Zemlok. Final Act. 3–5. Appellant disputes the Examiner’s findings regarding Zemlok’s disclosure 2 The rejection under 35 U.S.C. § 112, second paragraph, has been withdrawn. Ans. 4. Appeal 2020-004134 Application 15/179,293 4 of the two programs and the adjustment of the tissue compression program. Appellant has the better position. The Examiner fails to identify two separate programs in Zemlok (i.e., a simulation program and a tissue compression program). The Examiner also fails to identify sufficient disclosure to support the finding that Zemlok discloses adjusting the tissue compression program. Rather, paragraph 46 of Zemlok appears to have a program that receives feedback information without necessarily adjusting that program. For example, the cited portion of Zemlok simply explains that “DCM 130 [(memory)] is . . . capable of storing information relating to the force applied to rod 306.” Zemlok ¶ 46. Although “the voltage and current from drive motor 210 may be measured to provide information and/or feedback regarding the state of powered surgical instrument 100,” the Examiner does not identify disclosure that this information is used to modify Zemlok’s program. Id. Rather, the information is discussed relative to “the user . . . attempting to clamp down on tissue that is too thick, [where] the voltage and/or current will increase.” Id. Zemlok explains that “[t]his information can be provided to the user and/or the power can be interrupted or ceased” to “help[] prevent damage to the mechanisms in the instrument.” Id. Because the Examiner’s rejection relies on findings that are not supported by the cited portion of Zemlok, we do not sustain the Examiner’s decision to reject claims 2 and 7, or claims 3–6 and 8–10 depending therefrom. CONCLUSION The Examiner’s rejections are reversed. Appeal 2020-004134 Application 15/179,293 5 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 2, 7, 8, 10 102(b) Zemlok 2, 7, 8, 10 3 103(a) Zemlok 3 4, 6, 9 103(a) Zemlok, Whitman 4, 6, 9 5 103(a) Zemlok, Soltz 5 Overall Outcome 2–10 REVERSED