Ex Parte DARIAN

Patent Trial and Appeal Board

May 18, 2018

14264705 (P.T.A.B. May. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/264,705 04/29/2014
28156 7590 05/21/2018
Cosud Intellectual Property Solutions, P.C.
714 COLORADO AVENUE
BRIDGEPORT, CT 06605-1601
FIRST NAMED INVENTOR
ALEXANDER DARIAN
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.
M24-205US 9188
EXAMINER
NGUYEN, HIEN NGOC
ART UNIT PAPER NUMBER
3737
MAIL DATE DELIVERY MODE
05/21/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXANDER DARIAN
Appeal2017-004286
Application 14/264, 705 1
Technology Center 3700
Before ERIC B. GRIMES, JOHN G. NEW, and
ELIZABETH A. LA VIER, Administrative Patent Judges.
LA VIER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant seeks review of the
Examiner's rejections of claims 1 and 4--26. We have jurisdiction under
35 U.S.C. § 6(b). For the reasons set forth below, we AFFIRM.
BACKGROUND
The Specification notes that although ultrasonic surgical tools are
"more effective" than conventional tools for some types of tissue ablation,
"this very effectiveness can result in unwanted damage to organic tissues,
for instance, when operating conditions are such that a sufficient degree of
care cannot be properly exercised. This may happen, for instance, when the
1 Appellant states the real party in interest is Misonix, Inc. Appeal Br. 1.
Appeal2017-004286
Application 14/264, 705
surgical site is not properly illuminated." Spec. 2:20-24. Accordingly, the
Specification seeks "to provide a surgical method using an ultrasonic
surgical instrument, wherein visualization of tissues at a surgical site is
enhanced or facilitated." J d. at 3: 11-13.
Claim 1 is illustrative:
1. An ultrasonic surgical instrument assembly comprising:
a handpiece;
a transducer or generator of ultrasonic mechanical vibrations
disposed in said handpiece;
a probe attached to a distal end of said handpiece and
operatively connected to said transducer or generator;
a light source attached to said handpiece so as to direct at least
visible electromagnetic radiation along the probe towards a
surgical site distal of the probe; and
a power supply mounted at least indirectly to said handpiece
and operatively connected to said light source, said power
supply including a coil disposed about a power cable feeding
said transducer or generator for inductively generating a
waveform at the same frequency as the signal transmitted
through power cable.
Appeal Br. 12 (Claims Appendix) (emphasis added).
REJECTIONS MAINTAINED ON APPEAL
1. Claims 1 and 10 stand rejected under 35 U.S.C. § 103 as
unpatentable over Wuchinich2 and Rudy. 3 Ans. 3.
2 Wuchinich, 5,176,677, issued Jan. 5, 1993.
3 Rudy et al., 4,526,177, issued July 2, 1985.
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2. Claims 5, 7, and 19 stand rejected under 35 U.S.C. § 103 as
unpatentable over Wuchinich, Rudy, Seow, 4 and Baggett. 5 Ans. 4.
3. Claims 11, 14, and 17 stand rejected under 35 U.S.C. § 103 as
unpatentable over Wuchinich, Seow, and Baggett. Ans. 5.
4. Claims 6 and 20 stand rejected under 35 U.S.C. § 103 as
unpatentable over Wuchinich, Rudy, Seow, Baggett, and Houser. 6
Ans. 6.
5. Claims 8 and 9 stand rejected under 35 U.S.C. § 103 as
unpatentable over Wuchinich, Rudy, and Telles. 7 Ans. 7.
6. Claim 24 stands rejected under 35 U.S.C. § 103 as unpatentable
over Wuchinich, Rudy, Seow, Baggett, and Telles. Ans. 8.
7. Claim 15 stands rejected under 35 U.S.C. § 103 as unpatentable
over Wuchinich, Seow, Baggett, and Telles. Ans. 8.
8. Claim 16 stands rejected under 35 U.S.C. § 103 as unpatentable
over Wuchinich, Seow, Telles, Crowley, 8 and Anderson. 9 Ans. 9.
9. Claims 18 and 23 stand rejected under 35 U.S.C. § 103 as
unpatentable over Wuchinich, Seow, Baggett, and Van Gerpen. 10
Ans. 10.
4 Seow, US 2014/0207002 Al, published July 24, 2014.
5 Baggett, US 6,379,296 Bl, issued Apr. 30, 2002.
6 Houser et al., US 2012/0116265 Al, published May 10, 2012.
7 Telles et al., US 2007/0166663 Al, published July 19, 2007.
8 Crowley, US 2004/02233321 Al, published Nov. 11, 2004.
9 Anderson, 5,361,503, issued Nov. 8, 1994.
10 Van Gerpen et al., US 2006/0025836 Al, published Feb. 2, 2006.
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Application 14/264, 705
10. Claims 4, 12, 13, 21, 22, 25, and 26 stand rejected under
35 U.S.C. § 103 as unpatentable over Wuchinich, Rudy, Seow, and
Cadossi. 11 Ans. 11.
DISCUSSION
Appellant arranges the Appeal Brief around the four independent
claims, in the following order: claim 1, claim 25, claim 11, claim 19. We
follow suit.
A. Claim 1 (Rejection 1)
Wuchinich describes "an endoscopic aspirator which utilizes
ultrasonic vibration and a rotating tip to dissect and remove tissue, while
also being capable of imparting reciprocal linear movement and electro-
cauterizing current to the tip for enhanced tissue removal." Wuchinich 1 :7-
11. The Examiner relies on Wuchinich as teaching all of the elements of
claim 1 except the "power supply" limitation italicized above. See Final
Rejection 3. For this, the Examiner turns to Rudy. See id. (citing Rudy
3: 10-21, 4:7-26, Fig. 1 ). Rudy generally discloses an electronic detector
that surgeons can use during surgery to locate metallic objects that may be
hidden from view in a wound or surgical opening. Rudy 1:5-9. The
Examiner finds that "[i]t would have been obvious to one of ordinary skill in
the art before the effective filing date of the claimed invention to modify
Wuchinich to have a coil about the cable as taught by Rudy because this is a
common feature that enable[s] the device to produce inductance." Final
Action 3.
11 Cadossi et al., 4,683,873, issued Aug. 4, 1987.
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Application 14/264, 705
Figure 1 of Rudy is reproduced below:
I 23
2-8
FIG :t
!8
Figure 1 of Rudy diagrams a probe 10 comprising a tube 22. Rudy 4:7.
Rudy further explains:
Cable 12 extends into one end of tube 22 (the right end thereof
as shown in FIG. 1) to a point adjacent a counterbore which is
formed in the opposite end or tip of the tube. Mounted in the
counterbore end of tube 22 is a cylindrical, ferrite core 23.
Wound around the outside of core 23 within tube 22 is a wire
coil 24, one end of which is connected to the central conductor
or core wire 25 in cable 12, and the other end of which is
connected to the shield 26 of the cable to be grounded thereby.
Id. at4:14-20.
Appellant does not take issue with the Examiner's reliance on
Wuchinich, but instead offers two arguments regarding Rudy. The first is
largely a matter of claim construction. Appellant argues that "[t]he coil of
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Application 14/264, 705
the Rudy reference is not wrapped about a power cable. Instead the coil is
wrapped around a ferrite core at the tip of a detection probe." Appeal Br. 6;
see also Reply 2. This argument is not persuasive because, as the Examiner
notes, claim 1 does not require the coil to be "wrapped about" the power
cable. Ans. 12. Rather, claim 1 requires a "coil disposed about a power
cable" ( emphasis added). "Disposed," as used here, is commonly defined as
"[ a ]rranged, appointed, prepared, suitably placed, or situated, etc." 12 When
"about" is used to express position, it can mean "[ o ]n every side of, all
round, surrounding; on the outside or outer surface of," but also "[i]n and
around, in the vicinity of; in some part of, in various parts of." 13 Thus, the
broadest reasonable construction of "disposed about" encompasses both
"wrapped about" and "located near," which is the sense in which the
Examiner uses the term. As the description of Figure 1 above makes clear,
and as Appellant acknowledges, in Rudy, "[t]he coil is connected in series to
a coaxial cable." Appeal Br. 6. This is enough.
Appellant's second argument is that "[t]he coil in the Rudy reference
is not part of a power supply and is not connected to the light source." Id.;
see also Reply Br. 2. We agree with the Examiner that this is not persuasive
because the coil [in Rudy] is part of the power supply that is
connected to the power cable and light source ( see Figs. 1-2
and col. 3, lines 10-21; Rudy discloses the coil 24 is located
12 "Disposed," Oxford English Dictionary, available online at:
http://www.oed.com/view/Entry / 5 5114 ?isAdvanced =false&result=2&rskey
=yILli7& (last accessed May 11, 2018).
13 "About," Oxford English Dictionary ( definitions B(I)(l )(a) and (B)(I)(3)),
available online at:
http://www.oed.com/view/Entry/527?isAdvanced=false&result=3&rskey=b
6EmKt& (last accessed May 11, 2018).
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Application 14/264, 705
about or attached to the power cable 12 that connects to power
supply 31 (31 is inside 14); similar to appellant's Fig. 1 and
[0039]; the coil 70 is located about or attached to cable 20 that
is attached to power supply 28'; the coil is connected to an
indicator lamp which is a light source; the voltage drop across
the coil energizes/powers the indicator lamp).
Ans. 12.
Accordingly, Appellant has not persuaded us of any error in the
Examiner's rejection of claim 1. We affirm the rejection of claim 1.
B. Claim 25 (Rejection 10)
Appellant gives claim 25 its own heading in the Appeal Brief, but
states that it is patentable for "the same reasons as claim 1." Appeal Br. 6-7.
As we discern no error in the Examiner's rejection of claim 1, we likewise
discern none as to claim 25.
C. Claim 11 (Rejection 3)
Claim 11 recites:
11. An accessory for a surgical instrument comprising a
handpiece, a transducer or generator of ultrasonic mechanical
vibrations disposed in said handpiece, and a probe attached to a
distal end of said handpiece and operatively connected to said
transducer or generator, said accessory comprising:
a light source;
a fastener for removably attaching said light source to said
handpiece externally thereof so as to direct at least visible
electromagnetic radiation along the probe towards a surgical
site distal of the probe, said light source including an optical
fiber attachable to said handpiece eternally[14} thereof; and
14 The Examiner states that claim 11 "is objected to because of the following
informalities: the word 'eternally' should be 'externally'." Ans. 2. Appellant
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at least one power supply component operatively connectable to
said light source.
Appeal Br. 14--15 ( Claims Appendix) ( emphasis added).
As with claim 1, the Examiner largely relies on Wuchinich in
rejecting claim 11. See Final Action 5. However, the Examiner
acknowledges that "Wuchinich does not explicitly disclose a fastener for
removably attaching said light source to said handpiece and a battery," nor
"at least one power supply component operatively connectable to said light
source." Id. And so the Examiner turns to Seow as teaching a fastener for
removably attaching a light source to a handpiece and a battery (id. ( citing
Seow ,r,r 11, 13, 15, 33)), and Baggett as teaching a fastener for removably
attaching an external light source to a handpiece (id. (citing Baggett Fig. 2)).
The Examiner finds that "it would have been obvious to one of ordinary skill
in the art before the effective filing date of the claimed invention that there is
a power supply connect[ ed] to a light source to supply power for the light
source in order for the light source and transducer to work." Id.
Figure 2 (shown alongside Figure 3) of Baggett is reproduced below:
responds that "[t]his will be corrected upon allowance of claim 11." Reply
Br. 5.
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Application 14/264, 705
55
53
FIG. 3
58
FfG. 2
36
Figure 2 of Baggett is a perspective view of a vaginal speculum to which a
lighting device can be attached. Baggett 3: 14--16. The Examiner explains:
Baggett discloses a faste[]ner removably attaching the light
source to handpiece externally (see Fig. 2 and col. 5, lines 5-
13; elements 20, 40 and 50 are light source device and
faste[]ner/bracket, the arm is the handpiece; element 65 is a
removable sheath that cover[ s] the arm; the light source is
attach[ed] under the sheath, but external to the arm therefore the
light source is attached external of the handpiece ).
Ans. 13.
Appellant first argues that the light source of Seow would not have
been understood to be removable from the tubular member, as doing so
would require disassembly of Seow's device. Rather, Appellant maintains
that Seow's light source is "an integral part of the entire assembled device."
Appeal Br. 8. The Examiner responds that because Seow's light source "can
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Application 14/264, 705
be removed by unscrewing the leadscrew" (Ans. 13 (citing Seow ,r,r 11-13,
15, 33, Fig. 1)), it is "removabl[e]" within the scope of claim 11. We agree
with the Examiner, as claim 11 does not place any conditions on the ease
with which the light source must be detachable from the handpiece.
Next, Appellant argues that Baggett's removable light source
isinserted into a sheath, which is not the same as "attaching the light source
to a handpiece externally thereof." Appeal Br. 8. But we discern no
reversible error in the Examiner's mapping of claim 11 's "fastener" element
to Baggett, as quoted above. 15 Appellant takes issue with the Examiner's
treatment of Baggett' s "arm" as satisfying the "handpiece" of claim 11 (see
Reply Br. 3), but this is not persuasive because Appellant points us to no
limiting definition of "handpiece" that would exclude Baggett' s arm.
Implicit in the Examiner's finding is that Baggett's arm can be moved by
hand, making it a "handpiece" under the broadest reasonable construction of
the term.
Appellant's arguments regarding the combination of references (see
Appeal Br. 8-9) are interrelated with Appellant's assertions regarding Seow
and Baggett individually, and are unpersuasive for the same reasons.
Furthermore, these arguments place too little faith in the ordinarily skilled
artisan, who is "a person of ordinary creativity, not an automaton," and "in
many cases ... will be able to fit the teachings of multiple patents together
like pieces of a puzzle," KSR International Co. v. Teleflex Inc., 550 U.S.
398, 420-21 (2007).
15 Also, as the Examiner points out, "the claim structure is a faste[]ner that is
used to removably attach the light source. Removably attach[ing] the light
source external to the handpiece is an intended use." Ans. 13.
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Accordingly, we affirm the Examiner's rejection of claim 11.
D. Claim 19 (Rejection 2)
Claim 19 recites:
19. A surgical method comprising:
providing a surgical instrument having a handpiece, a
transducer or generator of ultrasonic mechanical vibrations
disposed in said handpiece and a probe attached to a distal end
of said handpiece and operatively connected to said transducer
or generator;
providing a light source, said light source including an optical
fiber;
applying a fastener to said handpiece to attach said light source
externally of said handpiece so that said optical fiber extends to
deliver light parallel to said probe to a surgical site proximate a
distal end of said surgical instrument;
operating said surgical instrument to apply ultrasonic vibratory
energy to said surgical site;
during the operating of said surgical instrument, conducting
electrical energy from a power supply to said light source; and
during the operating of said surgical instrument and the
conducting of said electrical energy, illuminating said surgical
site with light from said source and guided through said optical
fiber.
Appeal Br. 16-17 (Claims Appendix) (emphases added).
Appellant argues claim 19 by reference back to arguments for claim
11. See Appeal Br. 10. As discussed above, we are not persuaded.
However, Appellant adds that, in regard to claim 19 specifically, "none of
the references disclose or suggest illuminating a surgical site with light from
a source and guided through an optical fiber extending parallel to the probe."
Id. This argument is not persuasive. As the Examiner explains:
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Application 14/264, 705
Wuchinich discloses illuminating a surgical site with light from
a source and guided through an optical fiber extending parallel
to the probe (see Fig. 1 and col. 10, lines 7-22; illumination
cable fiber optic 26 guided light from light source 23 to surgical
site and it is extending parallel to the probe; fiber optic 26 is
parallel relative to the probe body).
Ans. 14. Appellant's responses (see Reply Br. 4--5) argue the references
individually rather than their combination, which is also not persuasive.
Accordingly, we affirm the rejection of claim 19.
E. The Dependent Claims (2-10, 12-18, 20-24, & 26)
Appellant does not argue separately the dependent claims, or the
rejections related solely thereto. Accordingly, the dependent claims fall
with the independent claims. See 37 C.F.R. § 41.37( c )(1 )(iv).
CONCLUSION
The rejections of claims 1 and 4--26 are 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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