Ex Parte Houser et al

Patent Trial and Appeal Board

Sep 25, 2012

11386399 (P.T.A.B. Sep. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KEVIN L. HOUSER and FOSTER B. STULEN
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Appeal 2011-009569
Application 11/386,399
Technology Center 3700
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Before DONALD E. ADAMS, DEMETRA J. MILLS, and MELANIE L.
McCOLLUM, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
composite end effector and to an assembly including a composite end
effector. The Examiner has rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Claims 1, 4-6, 9, 10, and 22-30 are pending and on appeal (App. Br. 1
& 3). We will focus on claims 1, 26, and 29, the only independent claims on
appeal, which read as follows:
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1. A composite end effector for an ultrasonic surgical instrument
comprising:
a first portion formed from a first material selected from the group
consisting of aluminum, aluminum alloy, titanium and titanium alloy,
wherein said first material exhibits a first ultrasonic propagation wavelength
when excited by an ultrasonic energy input; and
a second portion formed from a second material selected from the
group consisting of ceramic, alumina, sapphire, ruby, alumina nitride,
zirconia, silicon carbide and silicon nitride, wherein said second material
exhibits a second ultrasonic propagation wavelength when excited by said
ultrasonic energy input;
wherein said composite end effector exhibits a composite ultrasonic
propagation wavelength that is between said first and second ultrasonic
propagation wavelengths when excited by said ultrasonic energy input.
26. An ultrasonic transmission assembly comprising:
a waveguide; and
a composite end effector connected to said waveguide, said composite
end effector including:
a first portion formed from a metal or metal alloy that exhibits a
first ultrasonic propagation wavelength when excited by an ultrasonic energy
input; and
a second portion formed from a second, non-metal material that
exhibits a second ultrasonic propagation wavelength when excited by said
ultrasonic energy input, said second ultrasonic propagation wavelength
being at least about 1.25 times said first ultrasonic propagation wavelength,
wherein said composite end effector exhibits a composite ultrasonic
propagation wavelength that is between said first and said second ultrasonic
propagation wavelengths when excited by said ultrasonic energy input, and
wherein a length of said composite end effector is approximately
equal to one fourth of said composite ultrasonic propagation wavelength.
29. A composite end effector for an ultrasonic surgical instrument
comprising:
a first portion formed from a metal or metal alloy, said first portion
defining a cavity; and
a second portion formed from a ceramic, sapphire or ruby, said second
portion being received within said cavity,
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wherein said second portion is connected to said first portion such that
said first and said second portions form a discontinuous interface
therebetween, and
wherein cracks formed in said second portion do not propagate into
said first portion.
Claims 1, 4-6, 9, 10, and 22-30 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Hare et al. (US 2004/0176686 A1, Sep. 9, 2004) in
view of Poole et al. (US 2004/0167496 A1, Aug. 26, 2004) (Ans. 3).
The Examiner relies on Hare for disclosing
an ultrasonic medical device end effector (24) having an outer
member or “first portion” (64) of circular cross section formed
of a first material and an inner member or “second portion” (63)
of a different material coaxially received within the first
portion, thus resulting in a characteristic value of the
combination of the both materials when ultrasonic energy is
utilized.
(Ans. 3.) The Examiner finds that Hare “further discloses titanium as a
material for the end effector,” but “fails to disclose a second material
selected from a group including ceramic, alumina, sapphire, ruby, alumina
nitride, zirconia, silicon carbide and silicon nitride” (id. at 3-4).
The Examiner relies on Poole for teaching “a catheter having a
radiopaque segment formed of radiopaque material including ceramic,
zirconia, alumina and zirconium nitrate” (id. at 4). The Examiner concludes
that it would have been obvious “to have constructed the end effector of
Hare et al. with the ceramic radiopaque material, as taught by Poole et al.,
since it was well known to use ceramic materials as a radiopaque material”
(id.).
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PRINCIPLES OF LAW
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citation omitted).
ANALYSIS
Hare discloses that “ultrasonic probes are typically comprised of a
high capacitance material,” which often has low radiopacity (Hare,
¶ [0008]). Thus, in order to increase their visibility in imaging procedures,
Hare discloses additionally including a high radiopacity material (id. at
¶ [0018]).
Hare discloses using titanium or titanium alloy as a low radiopacity
material (id. at ¶ [0071]; see also ¶ [0062]). Thus, we agree with Appellants
that one of ordinary skill in the art would not have used a material having a
radiopacity lower than titanium as the material of high radiopacity (App.
Br. 11-12). However, the Examiner responds that the “modification of Hare
et al. with Poole is directed toward the second portion of the end effector of
Hare et al. that was formed of low radiopaque material” (Ans. 9).
We conclude that the Examiner has not set forth a prima facie case of
obviousness. First, with regard to claim 1, we agree with Appellants’
argument that, if Hare’s low radiopaque material, e.g., titanium, is replaced
with Poole’s ceramic (Poole, ¶ [0043]), the Examiner has not explained how
the combination would result in a first portion formed from one of the
recited first materials, e.g., titanium (Reply Br. 2).
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In addition, the purpose of Hare’s low radiopaque material is to
provide high capacitance (Hare, ¶ [0018]). We agree with Appellants that
the Examiner has not adequately explained why one of ordinary skill in the
art would have replaced Hare’s high capacitance material with Poole’s
radiopaque ceramic material (Reply Br. 2).
We additionally note that the Examiner has not provided evidence
indicating whether Poole’s ceramic materials have high or low radiopacity,
as these terms are used in Hare.
1
If any of them has high radiopacity, this
highly radiopaque ceramic could be considered the ceramic of claims 1 and
29 and the non-metal material of claim 26 and titanium or titanium alloy, as
taught in Hare, could be considered the first material of claim 1 and the
metal or metal alloy of claims 26 and 29. However, the Examiner does not
even allege that any of Poole’s ceramic radiopaque materials have high
radiopacity and instead appears to acknowledge that “ceramic materials have
a lower radiopacity than metallic materials” (Ans. 9). Thus, we agree with
Appellants that the Examiner has not set forth a prima facie case that it
would have been obvious to incorporate a ceramic in Hare’s device as a
material with high radiopacity (App. Br. 10-11). As a result, we need not
reach the issue raised by Appellants as to whether it would have been

1
Appellants’ argue that, “following the teaching of Hare,” many of the
second materials of claim 1 “are all expected to have substantially lower
radiopacities than . . . titanium” (App. Br. 11). However, Appellants do not
appear to address all of the ceramics disclosed in Poole, all of which would
be encompassed by the term “ceramic” in claims 1 and 29 and by the term
“non-metal material” in claim 26.
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obvious to use a ceramic, if it has high radiopacity, as Hare’s high
radiopacity material (id. at 6-10).
CONCLUSION
The Examiner has not set forth a prima facie case of obviousness.
We therefore reverse the rejection.

REVERSED

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