Ex Parte Houser et alDownload PDFPatent Trial and Appeal BoardMay 1, 201813274507 (P.T.A.B. May. 1, 2018) Copy Citation 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"). 2 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."). 3 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. 4 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 5 Copy with citationCopy as parenthetical citation