Ex Parte FRIEDRICHS et al

Patent Trial and Appeal Board

Aug 30, 2018

14085339 (P.T.A.B. Aug. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/085,339
90039 7590
Covidien LP
Attn: IP Legal
5920 Longbow Drive
Mail Stop A36
11/20/2013
09/04/2018
Boulder, CO 80301-3299
FIRST NAMED INVENTOR
DANIEL FRIEDRICHS
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-EB-00506 (203-9176) 4921
EXAMINER
ZINK, AMANDA L
ART UNIT PAPER NUMBER
3739
NOTIFICATION DATE DELIVERY MODE
09/04/2018 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
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 DANIEL FRIEDRICHS and JOE D. SARTOR1
Appeal2017-007384
Application 14/085,339
Technology Center 3700
Before DONALD E. ADAMS, CHRISTOPHER G. PAULRAJ, and
RICHARD J. SMITH, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a plasma
system. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
Claims on Appeal
Claims 1-16 are on appeal. 2 ( Claims Appendix, Br. 9-13.) Claim 1
is illustrative and reads as follows:
1 According to Appellants, the real party in interest Covidien LP, which is a
wholly owned subsidiary of Medtronic PLC. (Br. 1.) The term "Appellant"
as used herein refers to Covidien LP.
2 Claims 17-20 are withdrawn. (Final Office Action dated May 27, 2016
("Final Act."), at 2.)
Appeal2017-007384
Application 14/085,339
1. A plasma system comprising:
an electrosurgical generator;
an ionizable media source;
a plasma instrument comprising:
a housing having a lumen defined therein
terminating in an opening at a distal end thereof, the
lumen being in fluid communication with an ionizable
media source; and
a pair of electrodes coupled to the electrosurgical
generator;
a return electrode pad configured to electrically couple to
a patient;
a user adjustable input configured to provide a
polarization setting; and
a polarization controller electrically coupled to the return
electrode pad, the polarization controller configured to adjust
conductive coupling of the return electrode pad to the
electrosurgical generator based on the polarization setting.
Examiner's Rejections3
1. Claims 1-3, 6-10, and 13-16 stand rejected under pre-AIA 35
U.S.C. § I03(a) as unpatentable over Lam4 and Cunningham. 5 (Final Act.
3---6.)
2. Claims 4 and 11 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over Lam, Cunningham, and McGreevy. 6 (Id. at 6-
7.)
3 Although the Final Action refers to a rejection of claims 1-3, 6-10, and
13-16 as anticipated by Lam under pre-AIA 35 U.S.C. § I02(e), the Answer
makes clear that only three rejections under section 103 are applicable to the
appealed claims. ( Compare Final Act. 3 with Ans. 2.)
4 Lam, US 2012/0283732 Al, published Nov. 8, 2012 ("Lam").
5 Cunningham et al., US 2002/0022838 Al, published Feb. 21, 2002
("Cunningham").
6 McGreevy et al., US 4,781,175, issued Nov. 1, 1988 ("McGreevy").
2
Appeal2017-007384
Application 14/085,339
3. Claims 5 and 12 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Lam, Cunningham, and Kaliher. 7 (Id. at 7.)
FINDINGS OF FACT
The following findings are provided for emphasis and reference
purposes. Additional findings may also be found in the Final Action, the
Advisory Action dated Sept. 16, 2016 ("Adv. Act."), the Examiner's
Answer, and this Decision.
FF 1. The Examiner finds that Lam discloses a plasma system comprising
an electrosurgical generator, and ionizable media source, a plasma
instrument comprising a housing having a lumen defined therein terminating
in an opening at a distal end thereof, the lumen being in fluid
communication with an ionizable media source. (Final Act. 3, citing Lam ,r,r
206-207.)
FF 2. Figure 5a of Lam is illustrated below:
Fig5a
7 Kaliher et al., US 3,952,748, issued April 27, 1976 ("Kaliher").
3
Appeal2017-007384
Application 14/085,339
Figure 5a above depicts a diagram of the electrical circuit of a plasma
system relative to a patient's body 270. (Lam ,r 130.)
FF 3. Lam teaches the following with respect to Figure 5a above (FF 2):
Optional variable impedance 511 is placed in the RF
electrical return line. When the impedance of variable
impedance 511 is low, electrical return current is flowing
primarily from central electrode 530 through ground electrode
525. Thus, the device acts as mainly bi-polar.
In contrast, when the impedance of variable impedance
511 [is] high, the electrical return current is flowing primarily
from central electrode 530 to patient's body 270 and
returning via grounding electrode pad 145 electrically
connected through grounding cable 146. Thus, the device acts
as mainly mono-polar. When the impedance of variable
impedance 511 [is] intermediate, the device acts as a
combination of bi-polar and mono-polar.
(Lam ,r,r 235-236.)
FF 4. The Examiner finds that Lam discloses a pair of electrodes (525, 530)
coupled to the electrosurgical generator, a return electrode pad configured to
electrically couple to a patient, and a polarization controller electrically
coupled to the return electrode pad, the polarization controller configured to
adjust conductive coupling of the return electrode pad to the electrosurgical
generator. (Final Act. 3--4, citing Lam ,r,r 166-170 and 233-243.)
FF 5. The Examiner finds that Lam discloses that the polarity can be
switched. (Final Act. 4, citing Lam ,r 279 ("The polarity of all sources can
be switched while processing thus changing the current flow passes as
desired.").)
FF 6. Cunningham discloses an electrosurgical device wherein a user may
adjust the depth of an electrode "to the desired depth" and "according to the
4
Appeal2017-007384
Application 14/085,339
particular surgical application or preference of the user." (Cunningham 59--
60; see also Adv. Act. at 2.)
FF 7. The Examiner finds that Lam "fails to disclose a user adjustable input
configured to provide a polarization setting," but that "Cunningham
discloses an inert gas enhanced electrosurgical apparatus (title) with a user
adjustment input provided for adjusting various settings for the apparatus."
(Final Act. 4, citing Cunningham ,r,r 59--60 and Figure 2.)
DISCUSSION
We adopt the Examiner's findings, analysis, and conclusions,
including with regard to the scope and content of and motivation to combine
the prior art, as set forth in the Final Action, Advisory Action, and Answer.
We discern no error in the rejection of the claims on appeal as obvious.
Issue
Whether a preponderance of evidence of record supports the
Examiner's rejections under 35 U.S.C. § 103(a).
Rejection No. 1
Analysis
We limit our consideration to claim 1 because the claims were not
argued separately. 8 37 C.F.R. § 4I.37(c )(1 )(iv).
Examiner's Position
The Examiner finds that "Lam discloses a plasma head for welding
tissue which includes a polarization controller ... [ and] that the polarity
8 Claim 9, the only other independent claim, also recites a plasma system
comprising "a user adjustable input configured to provide a polarization
setting," and further recites "a polarization controller electrically coupled to
the return electrode, the polarization controller comprising a variable
resistance controllable by the user adjustable input." (Br. 11.)
5
Appeal2017-007384
Application 14/085,339
itself can be controlled but not necessarily by direct user control." (Adv.
Act. 2.) The Examiner further finds that "Cunningham is used to show that
adjusting a polarity is an obvious modification knowing that the adjustment
assembly can be used to alter various conditions of the device and one
having ordinary skill in the art would utilize this knowledge to enable user
control rather than automatic adjustments." (Id.)
The Examiner concludes that:
It would have been obvious to one having ordinary skill in the
art at the time the invention was made to have the plasma
system of Lam utilize the user adjustment as taught by
Cunningham. Doing so would give the user more control over
the application of plasma to the targeted tissue.
(Final Act. 4.)
Appellant's Arguments
Appellant argues that the Examiner has failed to establish a prima
facie case of obviousness, contending that "Lam fails to teach or suggest
controlling a polarization setting, either manually or automatically," and
"Cunningham merely teaches manually controlling the depth of an electrode
rather than a polarization setting." (Br. 3--4.)
Appellant argues that "Cunningham teaches controlling only the
stream of electrosurgical energy by adjusting the depth of the electrode via
an adjustment assembly, rather than 'a polarization setting."' (Id. at 5.)
According to Appellant, the control taught by Cunningham "is not in any
way related to a polarization setting," and "the Examiner failed to
demonstrate that a skilled artisan would have had reason to combine the
variable impedance as taught in Lam with the adjustment mechanism of
Cunningham." (Id. at 5---6.)
Appellant summarizes its argument by asserting that:
6
Appeal2017-007384
Application 14/085,339
Lam fails to describe how to adjust the variable impedance.
Moreover, Cunningham merely discloses how to adjust a
physical property of the instrument. Thus, the gap in Examiner's
reasoning is twofold; Lam fails to disclose how the variable
impedance is adjusted and Cunningham fails to disclose how an
adjustment mechanism for a physical property of an instrument
can be modified to control a polarization setting by adjusting
variable impedance.
(Id. at 6.)
We find that the Examiner's position is supported by a preponderance
of evidence. It is well settled that:
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
In re Keller, 642 F.2d 413,425 (CCAP 1981); see also Ans. 4. Moreover,
an obviousness analysis "need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007).
Here, contrary to Appellant's contention, Lam does teach or suggest
controlling a polarization setting. (See FF 2-5 ( e.g. "variable" impedance).)
Furthermore, the Examiner sets forth a sufficient reason to combine Lam
with Cunningham - "that it is well known in the medical art to use a user
controlled adjustment element" - based on Cunningham. (Ans. 4; see also
Adv. Act. 2 ("one having ordinary skill in the art would utilize this
knowledge to enable user control rather than automatic adjustments").)
Moreover, the "background knowledge" of a person of ordinary skill in the
7
Appeal2017-007384
Application 14/085,339
art can be used to "bridge the gap between the prior art and a conclusion of
obviousness." Perfect Web Technologies, Inc. v Info USA, Inc., 587 F.3d
1324, 1329 (Fed. Cir. 2009) (citing KSR, 550 U.S. at 418-21).
We thus agree with the Examiner that, given Lam's teaching of a
variable impedance for controlling polarity (FF 2-5), it would have been
obvious to provide Lam with "a user adjustable input configured to
provide a polarization setting" based on the knowledge of one skilled in
the art (as shown in Cunningham) of a user controlled adjustment
element. Accordingly, for the reasons of record and as set forth above, we
affirm the rejection of claim 1. Claims 2, 3, 6-10, and 13-16 fall with claim
1 because they were not argued separately.
Rejection Nos. 2 and 3
Appellant argues that claims 4 and 5 depend from claim 1 and claims
11 and 12 depend from claim 9, that McGreevy (Rejection No. 2) and
Kaliher (Rejection No. 3) "fail[] to cure the above-described deficiencies of
Lam and Cunningham," and that the respective claims are patentable "for at
least the reasons claims 1 and 9 are patentable." (Br. 7.) Having found no
deficiencies in the combination of Lam and Cunningham, as addressed
above, and in the absence of any substantive arguments by Appellant, we
affirm the rejection of claims 4 and 11 (Rejection No. 2) and claims 5 and
12. (Rejection No. 3.) See 37 C.F.R. § 4I.37(c)(l)(iv); see also In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011).
Conclusion of Law
A preponderance of evidence of record supports the Examiner's
rejections of claims 1-16 under pre-AIA 35 U.S.C. § 103(a).
8
Appeal2017-007384
Application 14/085,339
SUMMARY
We affirm the rejections of all claims on appeal.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
9