Ex Parte Houser et al

Patent Trial and Appeal Board

May 1, 2018

13274507 (P.T.A.B. May. 1, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/274,507 10/17/2011 Kevin L. Houser
100709 7590 05/03/2018
Ethicon Endo-Surgery, Inc.
c/o Frost Brown Todd LLC
3300 Great American Tower
301 East Fourth Street
Cincinnati, OH 45202
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.
END6895USNP15.0587839 1036
EXAMINER
TURCHEN, ROCHELLE DEANNA
ART UNIT PAPER NUMBER
3777
NOTIFICATION DATE DELIVERY MODE
05/03/2018 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):
patents@fbtlaw.com
lgroves@fbtlaw.com
jdewar@fbtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN L. HOUSER, MATTHEW C. MILLER,
CORY G. KIMBALL, JOHN W. WILLIS, TIMOTHY G. DIETZ,
and FOSTER B. STULEN
Appeal2017-004008
Application 13/274,507 1
Technology Center 3700
Before ULRIKE W. JENKS, JOHN E. SCHNEIDER, and DAVID COTT A,
Administrative Patent Judges.
COTTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a surgical
instrument. The Examiner rejected the claims on appeal under 35 U.S.C.
§ 103(a) as obvious.
We reverse.
1 According to Appellants, the real party in interest is Ethicon Endo-Surgery,
LLC, a wholly owned subsidiary ofEthicon LLC. App. Br. 3.
Appeal2017-004008
Application 13/274,507
STATEMENT OF THE CASE
Claims 1-15, 21, and 22 are on appeal. Claim 1 is illustrative and
reads as follows:
1. A surgical instrument comprising:
(a) a body portion comprising:
App. Br. 17.
(i) a body casing, and
(ii) a waveguide extending distally from the body
casing; and
(b) a transducer unit comprising:
(i) a transducer, and
(ii) a geared assembly configured to selectively
couple the transducer to the waveguide by rotating and
translating the transducer relative to the waveguide.
The claims stand rejected as follows:
Claims 1--4, 7-11, 14, 15, 21, and 22 were rejected under 35 U.S.C.
§ 103(a) as obvious over the combination of Houser '708, 2 Houser '098, 3
and Price. 4
Claims 5 and 6 were rejected under 35 U.S.C. § 103(a) as obvious
over the combination of Houser '708, Houser '098, Price, and Shelton, IV. 5
Claim 12 was rejected under 35 U.S.C. § 103(a) as obvious over the
combination of Houser '708, Houser '098, Price, and Smith. 6
2 Houser et al., U.S. Patent Publication No. 2008/0234708 Al, published
Sept. 25, 2008 ("Houser '708").
3 Houser et al., U.S. Patent No. 6,063,098, issued May 16, 2000
("Houser '098").
4 Price et al., U.S. Patent Publication No. 2009/0105750 Al, published
Apr. 23, 2009 ("Price").
5 Shelton, IV et al., U.S. Patent Publication No. 2007/0175964 Al, published
Aug. 2, 2007 ("Shelton, IV").
6 Smith et al., U.S. Patent Publication No. 2009/0143797 Al, published
June 4, 2009 ("Smith").
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Appeal2017-004008
Application 13/274,507
Claim 13 was rejected under 35 U.S.C. § 103(a) as obvious over the
combination of Houser '708, Houser '098, Price, Smith, and Prevost. 7
ANALYSIS
The same issue is dispositive with respect to all four obviousness
rejections. Accordingly, we analyze all of the rejections together.
Claim 1 requires "a geared assembly configured to selectively couple
the transducer to the waveguide by rotating and translating the transducer
relative to the waveguide." In finding the pending claims obvious, the
Examiner notes that "Appellant[ s] ha[ ve] not defined the rate of translation
or rotation within the claims, and ha[ ve] only broadly defined the translation
and rotation of the transducer with respect to the waveguide as 'relative."'
Ans. 10. The Examiner then finds that "the translation or rotation of the
transducer relative to the waveguide can be zero." Id; see also Final Act. 3. 8
Based on this interpretation, the Examiner concludes that Houser '708
discloses a device that meets the requirement of a geared assembly
configured to translate and rotate the transducer relative to the waveguide.
Appellants argue that "[ u ]nder no circumstance would a person skilled
in the art find that 'zero' relative translation between the waveguide and the
transducer is the claimed relative translation." App. Br. 11. Appellants
contend that the Examiner's position "is tantamount to a statement that 'a
stationary vehicle is in motion, though the motion is at a speed of 0 mph."'
Id.
7 Prevost, U.S. Patent Publication No. 2010/0030218 Al, published Feb. 4,
2010 ("Prevost").
8 Office Action mailed December 8, 2015 ("Final Act.").
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Appeal2017-004008
Application 13/274,507
We agree with Appellants that the broadest reasonable construction of
a geared assembly configured to "rotat[ e] and translat[ e ]" the transducer
does not encompass a device in which geared assembly is not designed to
rotate or translate the transducer. Put another way, to meet the rotating and
translating limitation of claim 1, the geared assembly must be configured to
translate and rotate the transducer an amount more than zero relative to the
waveguide. As the Examiner's findings rest on an incorrect claim
construction, we reverse the Examiner's finding that claim 1, and the claims
depending therefrom, would have been obvious. 9
Claim 21 and 22 include limitations similar to the "translating and
rotating" limitation of claim 1. Claim 21 thus requires "at least one gear
configured to selectively couple the transducer to the waveguide by rotating
and translating the transducer relative to the waveguide and relative to the
body casing." And claim 22 requires "one or more gears configured to
selectively drive the transducer into engagement with the waveguide by
rotating and translating the transducer relative to the body casing." As with
claim 1, the Examiner's finding of obviousness for these claims depends on
construing these limitations to encompass zero rotation and translation.
Accordingly, we reverse the Examiner's rejection of claims 21 and 22 for
the reasons discussed in connection with claim 1.
9 In the Examiner's Answer, the Examiner asserts that "[t]he components
disclosed by the prior art of record are structurally capable of the
configuration of the transducer and the waveguide translating and rotating
relative to each other at a rate other than zero." Ans. 10. However the
Examiner does not provide a citation, and we do not find any disclosure in
Houser '708 that supports this assertion.
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Appeal2017-004008
Application 13/274,507
SUMMARY
In summary, we reverse the Examiner's rejection of claims 1--4, 7-11,
14, 15, 21, and 22 under 35 U.S.C. § 103(a) as obvious over the combination
of Houser '708, Houser '098, and Price.
We reverse the Examiner's rejection of claims 5 and 6 under
35 U.S.C. § 103(a) as obvious over the combination of Houser '708,
Houser '098, Price, and Shelton, IV.
We reverse the Examiner's rejection of claim 12 under 35 U.S.C.
§ 103(a) as obvious over the combination of Houser '708, Houser '098,
Price, and Smith.
We reverse the Examiner's rejection of claim 13 under 35 U.S.C.
§ 103(a) as obvious over the combination of Houser '708, Houser '098,
Price, Smith, and Prevost.
REVERSED
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