Ethicon Endo-Surgery, Inc.

Patent Trials and Appeals Board

Jul 28, 2020

2020000017 (P.T.A.B. Jul. 28, 2020)

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.
13/974,202 08/23/2013 David C. Yates END7295USNP/130018 1078
92223 7590 07/28/2020
K&L GATES LLP - ETHICON
K&L GATES CENTER
210 SIXTH AVENUE
PITTSBURGH, PA 15222-2613
EXAMINER
FRY, PATRICK B
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
07/28/2020 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):
uspatentmail@klgates.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID C. YATES, FREDERICK E. SHELTON IV,
and KEVIN L. HOUSER

Appeal 2020-000017
Application 13/974,202
Technology Center 3700
____________

Before MICHAEL J. FITZPATRICK, JILL D. HILL, and
LEE L. STEPINA, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1, 2, and 5–21. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies Ethicon LLC as the sole real party in interest. Appeal
Br. 2.
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STATEMENT OF THE CASE
The Specification
The Specification “relates to surgical instruments and, in various
arrangements, to powered surgical cutting and stapling instruments and
staple cartridges therefor that are designed to cut and staple tissue.”
Spec. ¶1.
The Claims
Claims 1, 2, and 5–21 are rejected. Final Act. 1. No other claims are
pending. Id. There are four independent claims: claims 1, 9, 17, and 21.
Claim 1 is illustrative and reproduced below.
1. A surgical instrument system, comprising:
a surgical instrument comprising a controller;
a first end effector selectively attachable to said surgical
instrument;
a second end effector selectively attachable to said
surgical instrument, wherein said second end effector
comprises:
a memory, comprising:
a first stored datum regarding a first
parameter of said second end effector;
a second stored datum regarding a second
parameter of said second end effector; and
a stored checksum value;
means for communicating said first stored datum to said
surgical instrument while said second end effector is attached to
said surgical instrument;
means for communicating said second stored datum to
said surgical instrument while said second end effector is
attached to said surgical instrument;
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means for communicating said stored checksum value to
said surgical instrument while said second end effector is
attached to said surgical instrument, wherein said surgical
instrument is configured to calculate a calculated checksum
value utilizing at least said first stored datum and said second
stored datum, wherein said surgical instrument is configured to
compare said calculated checksum value to said stored
checksum value, and wherein said surgical instrument is
configured to generate an error response if said calculated
checksum value does not match said stored checksum value;
and
a staple firing system configured to perform a staple
firing stroke, wherein said staple firing system is in
communication with said controller, and wherein said error
response comprises said controller operating said staple firing
system in an operating mode which is suitable regardless of
whether said first end effector or said second end effector is
attached to the surgical instrument in order to perform said
staple firing stroke.
Appeal Br. 28–29.
The Examiner’s Rejections
The rejections before us, all pursuant to 35 U.S.C. § 103, are:
1. claims 1, 2, 5, 9, 10, 13, and 21 as unpatentable over Smith2
and Turner3 (Final Act. 2);
2. claims 11 and 12 as unpatentable over Smith, Turner, and
Hueil4 (id. at 10);

2 US 2009/0057369 A1, published Mar. 5, 2009 (“Smith”).
3 US 7,987,405 B2, issued July 26, 2011 (“Turner”).
4 US 2009/0206132 A1, published, Aug. 20, 2009 (“Hueil”).
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3. claims 6 and 14 as unpatentable over Smith, Turner, and
Analog Dialogue5 (id. at 12); and
4. claims 7, 8, and 15–20 as unpatentable over Smith, Turner,
Analog Dialogue, and Protocol6 (id.).
DISCUSSION
Rejection 1
The Examiner rejected claims 1, 2, 5, 9, 10, 13, and 21 as
unpatentable over Smith and Turner. Final Act. 2. Appellant argues against
the rejection of independent claim 1 and dependent claims 2, 5, 10, and 13
together. Appeal Br. 18–23. For these claims, we choose claim 1 as
representative. 37 C.F.R. § 41.37(c)(1)(iv). Appellant argues against the
rejection of independent claims 9 and 21 under a separate heading, but, in
doing so, Appellant relies exclusively on its arguments with respect to claim
1. Appeal Br. 23–24. Accordingly, we resolve the entire rejection based on
claim 1.
Smith discloses “[a]n electrically operated surgical instrument [that]
includes a surgical end effector having an actuation assembly effecting a
surgical procedure when actuated and a handle connected to the end effector
for actuating the assembly.” Smith, Abstract. The Examiner found that
Smith discloses the subject matter of claim 1 save the limitations directed to
using a “checksum” for determining whether an “error” exists. Final Act. 2–

5 David Katz et al., Fast, Versatile Blackfin® Processors Handle Advanced
RFID Reader Applications, 40 ANALOG DIALOGUE (Sept. 2006) (“Analog
Dialogue”).
6 https://web.archive.org/web/20120429111451 (http://www.nd.edu/~
lemmon/courses/ee224/web-manual/web-manual/lab12/node2.html) [visited
2/1/2016 10:28:32 AM] (“Protocol”).
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4 (citing Smith ¶¶108, 141, 174, 181, 183). Smith teaches a protocol for
verifying/authenticating an end effector but that protocol does not employ a
checksum. For example, Smith discloses the following:
[W]here a medical stapler uses re-loadable, interchangeable
staple cartridges, such as the stapler 1 described herein, an RFID
can be placed in the staple cartridge to ensure compatibility with
the particular stapler and an RFID reader for sensing compatible
staple cartridges can be associated with the handle. In such a
configuration, the reader interrogates the RFID mounted in the
cartridge. The RFID responds with a unique code that the stapler
verifies. If the stapler cartridge is labeled as verified, the stapler
becomes active and ready for use.
Smith ¶174.
However, the Examiner found that Turner teaches “calculating and
verifying the integrity of data transmitted by a RFID system” in which (1)
data and a checksum is transmitted from a remote station to a base station,
(2) the base station calculates a calculated checksum from the data, and (3)
the base station compares the calculated checksum to the transmitted
checksum. Final Act. 4–5 (citing Turner 1:16–32, 2:9–23).
The Examiner found that Turner’s verification routine “would be
beneficial to incorporate into [Smith’s] system because it would provide the
surgical instrument with a means to verify the integrity of the data from the
end effector.” Id. at 5. The Examiner concluded:
[I]t would have been obvious to the person of ordinary skill in
the art, before the effective filling date of the applicant's claimed
invention, to have modified Smith et al. by incorporating the
method of verifying integrity of data as taught by Turner et al.
because the person of ordinary skill in the art would know that
by providing the surgical instrument with a means to verify the
integrity of the data from the end effector would make the system
more reliable and therefore better.
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Id.
Appellant first argues that Smith’s “authentication protocol is not a
checksum.” Appeal Br. 21. This argument is inapposite to the Examiner’s
rejection, which, as discussed above, does not rely on Smith for the
“checksum” limitations. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.”).
Appellant next argues that Smith does not teach the “error response”
limitation of claim 1. Appeal Br. 22. Claim 1 recites that “said error
response comprises said controller operating said staple firing system in an
operating mode which is suitable regardless of whether said first end effector
or said second end effector is attached to the surgical instrument in order to
perform said staple firing stroke.” The Examiner found this limitation
taught by Smith’s disclosure that:
When the microprocessor 2000 detects that a new part 2200 has
been connected to the device 1, it runs an authentication routine.
. . . If there is a difference between the hash code replies, then
the part 2200 is rejected and the device is placed in a state where
the part 2200 either cannot be used or can be used, but only after
certain safeguards are met.
Smith ¶181 (emphasis added); Final Act. 3 (quoting Smith ¶181).
Appellant notes that Smith also teaches that
data regarding the time, date, environment, etc. and
characteristics of the unauthenticated part can be stored for later
or simultaneous transmission to the manufacturer (or its agent)
to inform the manufacturer that the user is attempting to use or
has used an unauthorized part 2200 with the device.
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Smith ¶181; Appeal Br. 22. Appellant then argues that “[n]one of this
information is used to alter the operating mode of the surgical instrument.”
Appeal Br. 22. Appellant’s argument about the information not being used
to alter the operating mode is incoherent. In any event, we agree with the
Examiner’s finding that Smith’s disclosure that a rejected end effector “can
be used, but only after certain safeguards are met” (Smith ¶181) meets the
scope of claim 1’s recitation that “said controller operating said staple firing
system in an operating mode which is suitable regardless” of which end
effector is attached.
Finally, Appellant argues the following:
The Office’s conclusory statement that it would have been
obvious to combine Smith '369 and Turner '405 simply to include
an information identification system - is insufficient to support a
prima facie conclusion of obviousness. The Office has not
provided any sort of reasoning as to why someone skilled in the
art would look to combine Smith '369 with Turner '405 - which,
again, has absolutely nothing to do with the claimed invention -
to arrive at Claim 1 of the Subject Application.
Appeal Br. 23. Putting this argument in its best light, Appellant appears to
challenge, not only the Examiner’s reason to combine, but possibly also
whether Turner is analogous art.
With respect to the former issue, it cannot be reasonably disputed that
the Examiner provided a reason to substitute Turner’s authentication routine
in Smith: “to verify the integrity of the data from the end effector[, which]
would make the system more reliable and therefore better.” Final Act. 5.
Appellant has not disputed this reasoning. Appeal Br. 23. Instead,
Appellant has erroneously disputed that any reasoning was provided. Id.
With respect to the latter issue, whether Turner is analogous art,
Appellant wholly fails to explain why Turner would not be considered
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analogous art. A prior art reference is analogous art if it meets either
criterion of In re Clay: “(1) whether the art is from the same field of
endeavor, regardless of the problem addressed, and (2) if the reference is not
within the field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved.” In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992). Although
Turner is not from the field of surgical instruments, we find that Turner is
analogous art under the second criterion of In re Clay. Turner discloses a
“method . . . of calculating and verifying the integrity of data in a data
communication system.” Turner, Abstract. This disclosure is reasonably
pertinent to a particular problem with which the inventor was involved, as
the Specification states, for example, the following:
Such IDs may be, for example, RFIDs that the power
management circuit 2006 read via a RFID transponder 2034. The
RFID transponder 2034 may read RFIDs from the power sources
that include RFID tags. The ID values may be read, stored in the
memory 2030, and compared by the processor 2032 to a list of
acceptable ID values stored in the memory 2030 or another store
associated with the power management circuit 2006, to
determine, for example, if the removable/replaceable primary
power source 2002 associated with the read ID value is authentic
and/or proper. In such circumstances, if the processor 2032
determines that the removable/replaceable component associated
with the read ID value is not authentic, the power management
circuit 2006 may be configured to prevent use of the instrument
10, such as by opening a switch (not shown) that would prevent
power from being delivered to the instrument 10. Various
parameters that the processor 2032 may evaluate to determine
whether the component is authentic and/ or proper include date
code, component model/type, manufacturer, regional
information, and/or previous error codes, for example.
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Spec. ¶220. Although Appellant asserts that Turner “has absolutely nothing
to do with the claimed invention” (Appeal Br. 23), Appellant has not argued,
let alone substantiated, that Turner is not analogous art under the controlling
legal test articulated in In re Clay.
For the foregoing reasons, we affirm Rejection 1.
Rejection 2
The Examiner rejected claims 11 and 12 as unpatentable over Smith,
Turner, and Hueil. Final Act. 10. Appellant argues against this rejection
solely on the basis that Hueil fails to cure the alleged deficiency in the
rejection of claim 9 (Rejection 1) from which claims 11 and 12 depend.
Appeal Br. 24–25. As Appellant does not establish any such deficiency in
Rejection 1 as discussed above, Appellant likewise does not apprise us of
error in Rejection 2. Accordingly, we affirm Rejection 2.
Rejection 3
The Examiner rejected claims 6 and 14 as unpatentable over Smith,
Turner, and Analog Dialogue. Final Act. 11–12. Appellant argues against
this rejection on the basis that Analog Dialogue fails to cure the alleged
deficiency in the rejection of claims 1 and 9 (Rejection 1), from which
claims 6 and 14 respectively depend. Appeal Br. 25. However, Appellant
does not establish any such deficiency in Rejection 1 as discussed above.
Appellant also argues that the Examiner “has failed to provide any
articulated reasoning or rational underpinning as to why a person skilled in
the art would look to a reference [(i.e., Analog Dialogue)] which is entirely
unrelated to surgical instruments, to arrive at the claimed subject matter of
the Subject Application.” Id. This argument against the Examiner’s reliance
on Analog Dialogue tracks an argument presented against Rejection 1 with
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respect to the Examiner’s reliance on Turner. Appellant’s argument here is
likewise undeveloped and ultimately does not apprise us of error. Analog
Dialogue, like Turner, is not directed to the field of surgical instruments.
But that fact alone does not render it non-analogous art under the controlling
legal test set forth, for example, In re Clay. Analog Dialogue relates to
processors for handling advance RFID reader applications. Analog
Dialogue, Title. The Examiner relies on its first paragraph merely for
evidencing that “a radio-frequency identification (RFID) tag transmit
information in the form of a bit stream to a RFID reader.” Final Act. 12
(citing Analog Dialogue ¶1).
Accordingly, we affirm Rejection 3.
Rejection 4
The Examiner rejected claims 7, 8, and 15–20 as unpatentable over
Smith, Turner, Analog Dialogue, and Protocol. Final Act. 12. Appellant
argues claim 17 separately from claims 7, 8, 15, 16, and 18–20. Appeal Br.
26–27.
For claim 17, Appellant references and relies upon arguments already
found unpersuasive above. Id. at 26. Appellant’s only additional argument
for claim 17 is that Protocol “is also entirely unrelated to surgical
instruments.” Again, such an assertion speaks only to the first criterion set
forth in In re Clay. That is, Appellant again fails to argue, let alone
substantiate, that a reference (here, Protocol) is not reasonably pertinent to a
particular problem with which the inventor was involved. Appeal Br. 26.
For claims 7, 8, 15, 16, and 18–20, Appellant relies exclusively on
arguments already found unpersuasive above. Id. at 27.
Accordingly, we affirm Rejection 4.
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SUMMARY
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1, 2, 5, 9,
10, 13, 21
103 Smith, Turner 1, 2, 5, 9,
10, 13, 21

11, 12 103 Smith, Turner,
Hueil
11, 12
6, 14 103 Smith, Turner,
Analog Dialogue
6, 14
7, 8, 15–20 103 Smith, Turner,
Analog Dialogue,
Protocol
7, 8, 15–20
Overall
Outcome
1, 2, 5–21

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