Ex Parte Cunningham et al

Patent Trial and Appeal Board

Sep 1, 2016

12714086 (P.T.A.B. Sep. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121714,086
90039 7590
Covidien LP
Attn: IP Legal
5920 Longbow Drive
Mail Stop A36
02/26/2010
09/06/2016
Boulder, CO 80301-3299
FIRST NAMED INVENTOR
James S. Cunningham
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
H-US-02061 (203-7067) 5980
EXAMINER
VAHDAT, KHADIJEHA
ART UNIT PAPER NUMBER
3739
NOTIFICATION DATE DELIVERY MODE
09/06/2016 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):
mail@cdfslaw.com
SurgicalUS@covidien.com
medtronic_mitg-si_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES S. CUNNINGHAM, RICHARD CARLSON,
and ERIC JONES
Appeal2014-008374
Application 12/714,086
Technology Center 3700
Before JOHN C. KERINS, JAMES P. CAL VE, and
WILLIAM A. CAPP, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claim 5 under 35 U.S.C. § l 12(b) as indefinite; claims 1, 5, 6, 8,
13, 15-17, and 20 under 35 U.S.C. § 102(b) as anticipated by Spivey (US
2008/0312506 Al, pub. Dec. 18, 2008); claims 2, 3, and 9-12 as
unpatentable under 35 U.S.C. § 103(a) over Spivey and LAM (US
2009/0312603 Al, pub. Dec. 17, 2009); and claim 7 as unpatentable under
35 U.S.C. § 103(a) over Spivey. We have jurisdiction under 35 U.S.C.
§ 6(b ). 1
We AFFIRM.
1 Appellants have subsequently withdrawn claims 13, 16, and 20 from
consideration. See After Final Amendment, November 6, 2013.
Appeal2014-008374
Application 12/714,086
THE INVENTION
Appellants' invention relates to surgical instruments. Spec. 1.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A surgical instrument, comprising:
a housing having an elongated shaft extending distally
therefrom, the elongated shaft defining a longitudinal axis and
supporting an end effector for treating tissue;
at least one tensile member extending at least partially
through the elongated shaft, a distal end of the at least one
tensile member operatively coupled to the end effector such that
longitudinal motion of the at least one tensile member induces
movement of the end effector, the at least one tensile member
including a pair of articulation cables operatively coupled to the
end effector such that relative longitudinal movement between
the articulation cables induces articulation of the end effector;
a drive mechanism operatively coupled to a proximal end of
the at least one tensile member, the drive mechanism including
an actuator operable to induce longitudinal motion in the at
least one tensile member, a longitudinal center of the actuator
of the drive mechanism being longitudinally movable with
respect to the housing in response to prolonged exposure of
tensile stress imparted to the articulation cables, and the
actuator rotatable with respect to the housing; and
a tensioning mechanism configured to impart a proximally
directed force on the drive mechanism such that the proximally
directed force is transmitted to the at least one tensile member.
OPINION
Indefiniteness of Claim 5
Claim 5 depends directly from claim 2 and indirectly from claim 1
and adds the limitation: "wherein the drive mechanism includes first and
second collars, each collar being coupled to one of the pair of articulation
cables, and wherein the spring bears on the first collar." Claims App.
Appellants amended Claim 5 after entry of the final action. See
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Application 12/714,086
Amendment November 6, 2013. Subsequently, the Examiner issued an
Advisory Action on November 22, 2013, advising Appellants that the after
final amendment did not resolve the indefiniteness rejection.
In their Appeal Brief, Appellants do not contest the Examiner's
indefiniteness rejection. See generally Appeal Br. Accordingly, we
summarily sustain the indefiniteness rejection of claim 5. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2015) (not arguing a ground of rejection results in
waiver). 2
Anticipation of
Claims 1, 5, 6, 8, 15, and 17 by Spivey
Claims 1, 5, 6, and 15
Appellants argue claims 1, 5, 6, and 15 as a group. Appeal Br. 12-14.
We select claim 1 as representative. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Spivey discloses all of the elements of
claim 1. Final Action 3--4. In particular, the Examiner finds that Spivey has
a drive mechanism actuator with a longitudinal center that moves
longitudinally with respect to the housing. Id. at 4. The Examiner further
finds that such movement is in response to prolonged exposure of tensile
2 MANUAL OF PATENT EXAMINING PROCEDURE §§ 1204 Section II, 1205.02,
1215.03 (9th Ed. Rev. 7, Nov. 2015) (failure to address a ground of rejection
in the appeal brief results in waiver, and the Board may affirm the rejection
summarily); see also Hyatt v. Dudas, 551F.3d1307, 1313-14 (Fed. Cir.
2008) (appellant's failure to contest grounds of rejection in the initial
appeals to the Board waived the right to contest those grounds under 37
C.F .R. § 1.192( a), the provisions of which now appear in 3 7 C.F .R.
§ 41.37(c)(l)(iv)).
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Application 12/714,086
stress imparted to articulation cables. Id. at 6 (with respect to rejection of
then pending claim 16). 3
Appellants traverse the Examiner's rejection by arguing that Spivey
fails to teach that its asserted actuator moves longitudinally in response to
prolonged exposure of tensile stress imparted to its articulation cables.
Appeal Br. 13. Appellants argue that Spivey teaches that its trigger moves
the actuator longitudinally between a first position where the actuator is
disengaged from the tensioning elements, and a second position where the
actuator can engage the tensioning elements. Id. Appellants argue that
Spivey further states that disengagement of the actuator from the tensioning
elements allows the elongate shaft to flex as it is inserted through a tortuous
body lumen without interference from tensioning elements. Id. To
summarize, Appellants argue that Spivey's trigger moves the drive
mechanism longitudinally, but fails to teach longitudinal movement "in
response to prolonged exposure of tensile stress" as claimed. Id. at 14.
Appellants otherwise acknowledge that actuation of the trigger causes
longitudinal movement to remove slack in its tensioning elements. Id.
In response, the Examiner reiterates that Spivey teaches that
actuator 25 of the drive mechanism moves longitudinally to remove slack.
Ans. 2. The Examiner finds that actuator 25 is configured to move in the
same direction by squeezing the actuator "a bit harder" in response to
prolonged exposure of tensile stress imparted to the articulation cables that
naturally occurs over time. Id. at 2-3.
3 In the After-Final Amendment, Appellants amended claim 1 to include the
subject matter recited in claim 16 and then cancelled claim 16. See
November 6, 2013 Amendment and accompanying remarks.
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Application 12/714,086
The Examiner characterizes the dispute with Appellants as one of
claim construction. Id. at 3. The Examiner essentially views Appellants'
claim interpretation as requiring that movement "in response to prolonged
exposure of tensile stress" occurs automatically. Id. However, under the
broadest reasonable interpretation, the Examiner contends that Spivey' s
means of taking up slack in the tensile cables by squeezing the trigger
satisfies the disputed claim language. Id.
In reply, Appellants reiterate their position from the Appeal Brief that
Spivey's means of taking up slack through activation of the trigger does not
satisfy the claim language directed to "in response to prolonged exposure of
tensile stress imparted to its tensioning elements." Reply Br. 5---6 (emphasis
omitted).
Appellants' Specification and drawings disclose a compression
spring 104 that is disposed between base hub 102 and carrier 106. Fig. 6.
The Specification teaches that:
Over time, the drive cables 66, 68 may experience fatigue or
slight deformations associated with bodies subject to prolonged
stress. For example, prolonged exposure to the tensile stress
imparted to the drive cables 66, 68 may result in an increase in
a respective length Ll, L2 of each of the drive cables 66, 68.
When Ll and L2 increase, the carrier 106 will move proximally
under the influence of the spring 104. This movement
compensates for the change in the respective length of the drive
cables 66, 68, and thus, the drive cables 66, 68 remain in
tension. In this way, the tensioning mechanism 100 imparts a
tensile force to the drive cables 66, 68 and maintains operability
and responsiveness of the articulation mechanism 80.
Spec. 12. Similarly, Spivey teaches that:
The trigger 18 can also be adapted to provide slack to the
tensioning elements 29, 31 when the actuator 25 is in the first
position, and to supply a desired tension to (or to remove slack
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Appeal2014-008374
Application 12/714,086
from) the tensioning elements 29, 31 prior to engaging the
elements 29, 31 between respective opposed plates 40, 50, 80,
90. For example, when the trigger 18 is in the initial position,
the entire actuator 25 is free to slide distally within the
housing 16 to provide slack to the tensioning elements 29, 31,
and when the trigger 18 is actuated, an initial force can slide the
entire actuator 25 in a proximal direction within the housing 16
such that the tensioning elements 29, 31 are tensioned around
the respective pair of plates (i.e., the slack is removed), and an
additional force can pull only the wedge 100 in the proximal
direction so as to lock the tensioning elements 29, 31 between
the respective pairs of plates 40, 50, 80, 90.
Spivey i-f 45. Spivey further explains that:
[A]s the trigger 18 is actuated, the entire actuator 25 slides
proximally within the housing 16 until the tension supplied by
the tensioning element( s) reaches an amount which prevents the
actuator 25 from sliding any further in the proximal direction.
While the actuator 25 is prevented from any further proximal
movement, the wedge 100 can continue to move in the
proximal direction thereby locking the tensioning
element(s) 29, 31 therebetween.
Id. Thus, slack, or creep, or elongation of the tensioning elements over time
in Appellants' invention is compensated for by operation of compression
spring 104 disposed between base hub 102 and carrier 106. See Fig. 6. In
Spivey, slack, or creep, or elongation of the tensioning elements over time is
compensated for by operation of trigger 18 which supplies a "desired
tension" to tensioning elements 29 and 31. Spivey i-f 45. We discern no
patentable distinction between the structure actually claimed in claim 1 and
Spivey' s means of supplying a "desired tension" to its tensioning elements.
Spivey i-f 45. While Appellants' device may operate automatically whereas
Spivey operates through activation of a trigger, the Examiner observes,
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Application 12/714,086
correctly, that the claim does not require automatic operation. Ans. 3. 4
Thus, the Examiner's finding that Spivey discloses a drive mechanism
actuator that is longitudinally movable in response to prolonged exposure of
tensile stress via by actuation of trigger 18 is supported by a preponderance
of the evidence.
We sustain the Examiner's rejection of claims 1, 5, 6, and 15.
Claims 8 and 17
Appellants argue these claims together and we select claim 8 as
representative. Appeal Br. 15-16.
Appellants argue that Spivey fails to satisfy the limitation in claim 8
directed to a tensioning mechanism that is configured to impart a "variable
force" on a tensile member. Appeal Br. 15-16. Appellants argue that
Spivey teaches only a tensioned state (second position) and a non-tensioned
state (first position). Id. at 15. Appellants argue that Spivey's tensioning
mechanism does not impart a variable force to the tensioning elements as
claimed and, instead, applies a force that is fixed, not variable. Id.
In response, the Examiner states that Spivey's "variable force" is
interpreted to be the force applied to the tensile members by the actuator at
the time the trigger is squeezed in order to remove the slack, which is during
the interval of time when the tensioning elements are being transitioned from
a non-tensioned state to a fully tensioned state. Ans. 3. The Examiner states
that Appellants' argument fails to contemplate the transitional state when the
4 "In the course of construing the disputed claim terms, a court should not
ordinarily rely on the preferred embodiments alone as representing the entire
scope of the claimed invention." CCS Fitness, Inc. v. Brunswick Corp., 288
F.3d 1359, 1370 (Fed. Cir.2002). While a disclosed embodiment of
Appellants' invention uses compression spring 104 to impart tension (see
Fig. 6), claim 1 is not limited to use of a spring.
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Application 12/714,086
tensioning elements transition from being slack to being fully tensioned. Id.
at 4. The Examiner finds that Spivey' s trigger is configured to apply a
variable force to the tensioning elements during this transition. Id.
In reply, Appellants argue that the transitional force described by the
Examiner merely moves the tensioning elements between a first position,
where the actuator is disengaged from the tensioning elements, and a second
position, where the actuator can engage the tensioning elements. Reply
Br. 6-7. Appellants argue that Spivey does not impart a variable force "to
maintain" them in a tensile state, as claimed. Id. at 7. Appellants argue that,
in Spivey, any force "to maintain" the tensioning elements in a tensile state
would be a constant, as opposed to a variable, force. Id.
We think the Examiner has stated the more persuasive position.
Spivey teaches that:
[T]rigger 18 can also be adapted to provide slack to the tensioning
elements 29, 31 when the actuator 25 is in the first position, and to
supply a desired tension to ... the tensioning elements 29, 31
prior to engaging the elements 29, 31 between respective opposed
plates 40, 50, 80, 90.
Spivey i-f 45. Thus, when Spivey's trigger is in the process of being
activated so as to transition the tensioning elements from a slack condition to
a tensile condition, the force applied during the transition varies from some
lesser amount to some greater amount that holds the elements in tension.
After the trigger is fully activated, Spivey then maintains the tensile member
in a tensile state. A person of ordinary skill in the art would understand
"variable ... to maintain" in terms of a transition to a state of equilibrium
when opposing forces would then be in balance. Appellants' claim language
is sufficiently broad to encompass the variable force applied by compression
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Application 12/714,086
spring 104 in Appellants' disclosure as well as the trigger mechanism and
accompanying tensioning in Spivey' s apparatus.
The Examiner's findings of fact are thus supported by a
preponderance of the evidence and we sustain the rejection of claims 8
and 17.
Claims 2 and 3
Unpatentability of Claims 2, 3, and 9-12
over Spivey and LAM
Claims 2 and 3 depend, directly or indirectly, from claim 1. Claims
App. Appellants do not argue for the separate patentability of claims 2 and 3
apart from arguments presented with respect to claim 1 which we have
previously considered. Appeal Br. 16.
We sustain the rejection of claims 2 and 3. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2015) (not arguing a ground of rejection results in waiver).
Claims 9-12
Claims 9-12 depend, directly or indirectly, from claim 8. Claims
App. Appellants do not argue for the separate patentability of claims 9-12
apart from arguments presented with respect to claim 8. Appeal Br. 16-17.
Appellants argue that LAM fails to cure the deficiencies in Spivey that
Appellants asserted in connection with the rejection of claim 8. Id.
Inasmuch as we have previously found adversely to Appellants
regarding alleged deficiencies in Spivey, we are not apprised of error with
respect to the Examiner's rejection. We sustain the rejection of claims 9-12.
Unpatentability of Claim 7
over Spivey
Claim 7 depends from claim 6 and adds the limitation: "wherein at
least one of the pair of jaw members is coupled to a source of electrical
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Application 12/714,086
energy." Claims App. The Examiner finds that Spivey teaches that its
control mechanism can be incorporated into virtually any device that utilizes
a tensioning element. Final Action 9. The Examiner concludes that it would
have been obvious to a person of ordinary skill in the art at the time of the
invention for Spivey' s drive mechanism and control mechanism to be used
in a forceps device that is capable of being coupled to an energy source. Id.
at 9-10. Appellants do not argue for the separate patentability of claim 7
apart from arguments presented with respect to claim 1 which we have
previously considered. Appeal Br. 17. We sustain the rejection of claim 7.
DECISION
The decision of the Examiner to reject claim 5 under 35 U.S.C.
§ 112(b) as indefinite is affirmed.
The decision of the Examiner to reject claims 1, 5, 6, 8, 15, and 17
under 35 U.S.C. § 102(b) as anticipated by Spivey is affirmed.
The decision of the Examiner to reject claims 2, 3, and 9-12 under 35
U.S.C. § 103(a) as unpatentable over Spivey and LAM is affirmed.
The decision of the Examiner to reject claim 7 under 35 U.S.C.
§ 103(a) as unpatentable over Spivey is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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