Ex Parte Ineson

Patent Trials and Appeals Board

Apr 22, 2019

14424756 - (D) (P.T.A.B. Apr. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/424,756
90039 7590
Covidien LP
Attn: IP Legal
5920 Longbow Drive
Mail Stop A36
02/27/2015
04/24/2019
Boulder, CO 80301-3299
FIRST NAMED INVENTOR
Leonard Ineson
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.
356549US01(203-l 1129PCTUS 9953
EXAMINER
COLLINS, SEAN W
ART UNIT PAPER NUMBER
3794
NOTIFICATION DATE DELIVERY MODE
04/24/2019 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):
rs. patents. two@medtronic.com
docket@carterdeluca.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEONARD INESON 1
Appeal2018-008177
Application 14/424,756
Technology Center 3700
Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
LISA M. GUIJT, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a Decision on Appeal, under 35 U.S.C. § 134(a), from the
Examiner's final rejection of claims 1-14 and 16-21. Final Act. 1 (Office
Action Summary). Claims 15 and 22 are withdrawn from consideration.
Final Act. 1. Wehavejurisdictionunder35U.S.C. § 6(b). Forthereasons
1 "The real party in interest is the assignee of the entire interest in this patent
application, Covidien LP." Br. 1. We proceed on the basis that, for
purposes of this Appeal, Covidien LP is the "Appellant."
Appeal2018-008177
Application 14/424,756
explained below, we do not find error in the Examiner's rejections of these
claims.
Accordingly, we AFFIRM the Examiner's rejections.
CLAIMED SUBJECT MATTER
The disclosed subject matter "relates to electrosurgical instruments
and more particularly to electrical surgical pencils for cauterizing tissue and
evacuating smoke from a surgical site." Spec. 1:2--4. Claims 1, 11, and 16
are independent. Claim 1 is illustrative of the claims on appeal, and is
reproduced below.
1. An electrosurgical tool for use in performing surgery on a
surgical site, comprising:
a main body having:
a first end defining a front opening; and
an opposite second end defining an exhaust
opening, the main body defining an airflow vent
extending from the first end to the second end, the second
end of the main body being connectable for fluid
communication via flexible tubing to a suction source to
permit evacuation of surgical smoke and debris;
an elongated vent tube mounted in the airflow vent and
slidable therein, the vent tube configured to move
longitudinally from a retracted position to a selected one of a
plurality of extended positions where a forward end of the vent
tube is located forwards of the first end of the main body;
an elongated electrode mounted in the vent tube and
independently slidable therein, the electrode configured to
move longitudinally between a retracted position and a selected
one of a plurality of extended positions where a forward section
of the electrode projects forwards from both the first end of the
main body and the forward end of the vent tube; and
a wire connector attached to the electrode and configured
to electrically connect the electrode to an electrical control.
2
Appeal2018-008177
Application 14/424,756
Walker
Zinnanti
Cosmescu
Gilhuly et al.
Kidder et al.
Kornerup et al.
Lee et al.
Kane et al.
REFERENCES
us 4,562,838
us 5,348,555
us 5,693,044
US 6,210,323 B 1
US 2002/0019631 Al
US 2006/0264928 Al
US 2009/0062791 Al
US 2014/0046413 Al
THE REJECTIONS ON APPEAL 2
Jan. 7, 1986
Sept. 20, 1994
Dec. 2, 1997
Apr. 3, 2001
Feb. 14,2002
Nov. 23, 2006
Mar. 5, 2009
Feb. 13,2014
Claims 1, 5, 8, 11, 16, and 17 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Lee and Kornerup and, alternatively, Kornerup and Lee.
Final Act. 4.
Claim 2 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Lee, Kornerup, and Cosmescu and, alternatively, Kornerup, Lee, and
Cosmescu. Final Act. 10.
Claims 3 and 18 are rejected under 35 U.S.C. § I03(a) as unpatentable
over Lee, Kornerup, and Kidder and, alternatively, Kornerup, Lee, and
Kidder. Final Act. 11.
Claim 4 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Lee, Kornerup, Kidder, and Gilhuly and, alternatively, Kornerup, Lee,
Kidder, and Gilhuly. Final Act. 12.
Claims 6, 7, 13, and 19 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Lee, Kornerup, and Walker and, alternatively, Kornerup,
Lee, and Walker. Final Act. 13.
2 In the Final Office Action, claim 1 is objected to for informalities. See
Final Act. 3. However, the objection is not within the jurisdiction of the
Board. See 3 7 C.F .R. § 1.181.
3
Appeal2018-008177
Application 14/424,756
Claims 9, 10, 12, 20, and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lee, Kornerup, and Kane and, alternatively, Kornerup,
Lee, and Kane. Final Act. 15.
Claim 14 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Lee, Kornerup, Walker, and Zinnanti and, alternatively, Kornerup, Lee,
Walker, and Zinnanti. Final Act. 16.
ANALYSIS
The rejection of claims 1, 5, 8, 11, 16, and 17
as being obvious over Lee and Kornerup
Appellant argues claims 1, 5, 8, 11, 16, and 17 together. App. Br. 5-
17. We select claim 1 for review, with claims 5, 8, 11, 16, and 17 standing
or falling therewith. See 37 C.F.R. § 41.37(c)(l)(iv).
Lee in view of Kornerup
The Examiner finds that Lee discloses an electrosurgical tool having
most of the limitations of claim 1 including a main body (housing 26), an
elongated vent tube ( suction tube 28), and an elongated electrode 24
mounted in the vent tube. Final Act. 4--5 ( citing Lee Figs. 1-7). The
Examiner acknowledges that "Lee fails to teach the position of the electrode
being independently slidable, with a retracted and plurality of extended
positions." Final Act. 5. The Examiner finds that "Kornerup teaches an
independently adjustable electrode." Final Act. 5 (citing Kornerup Figs. 1-
2). The Examiner concludes that it would have been obvious to modify the
electro surgical tool of Lee to have the electrode be adjustable as taught by
Kornerup, "to overcome the known problem that it is difficult and time
consuming to exchange the extension pieces (such as the different[-]length
electrodes ... ) during a surgical procedure" as "there is a risk of such
4
Appeal2018-008177
Application 14/424,756
extension pieces or blades unintentionally fall[ing] off and drop[ping] down
into the surgical site or wound." Final Act. 6 (citing Lee ,r 10; Komerup ,r
10).
Appellant contends that the Examiner errs in making this rejection
because "the modification of Lee proposed in the Final Office Action would
require a significant and substantial reconstruction of the electro surgical
pencil 20 of Lee as well as a change in the basic principle under which Lee's
electrosurgical pencil 20 was designed to operate." Br. 7; see also id. at 10.
According to Appellant, "[m]aking the otherwise stationary electrode 24 of
Lee slidable within the suction tube 28- as proposed in the Final Office
Action - would render superfluous the entire electrode anchor unit 72 of Lee
and the many components related to its functionality" such as Lee's
insulating collet member 74, electrically conductive socket member 76, and
electrically conductive anchor rod 78. Br. 7-8; see also id. at 9 (arguing that
"making the electrode 24 of Lee slidable would require at least modifying
how the right angle bend 122 and the rod support socket 126 couple to one
another"). In addition to the need to modify/remove components from Lee
as above, Appellant also states, "it is the electrode anchor unit 72 of Lee that
is disclosed as providing the significant 'improvements and advantages of
the present invention' over the prior art." Br. 8. Appellant states, "doing
away with the core feature disclosed in Lee, namely the electrode anchor
unit 72, would require substantial experimentation or redesign of the
electrosurgical pencil 20 of Lee." Br. 8. This is because "Lee lacks any
additional embodiments for the electrode 24 or even contemplates making
the electrode 24 movable." Br. 8 (citing Lee ,r 53). Appellant additionally
contends that "the proposed modification of Lee would render the
5
Appeal2018-008177
Application 14/424,756
electro surgical pencil 20 of Lee unsatisfactory for its intended purpose of
providing 'an effective structure for maintaining electrodes stationary within
a slidable suction tube."' Br. 11 (quoting Lee ,r 53); see also id. at 10.
Addressing Appellant's last argument first, Lee discloses that
"adjusting the length of the suction tube relative to the different lengths of
the electrode achieves effective evacuation." Lee Abstract. Appellant does
not explain how rendering Lee's electrode movable ( as expressed by the
Examiner above) would preclude Lee's suction tube from continued relative
movement with respect to the electrode. As such, we do not agree with
Appellant's contention that "the proposed modification of Lee would render
the electrosurgical pencil 20 of Lee unsatisfactory for its intended purpose."
See Br. 11.
Next, we agree with Appellant that the proposed modification of Lee
would require removing components that make Lee's electrode stationary.
However, we disagree with Appellant that such a modification would require
significant and substantial reconstruction that would change "the basic
principle under which Lee's electrosurgical pencil 20 was designed to
operate." See Br. 7. As above, Appellant does not explain why making
Lee's electrode adjustable would prevent Lee's adjustment of the length of
its suction tube vis-a-vis the electrode. Moreover, Appellant does not
explain why it is not possible to add the electrode-adjustable components of
Komerup's device to Lee's electrosurgical tool. In other words, Appellant
does not provide any evidence or argument sufficient to show that the
proposed modifications would have been beyond the level of ordinary skill
in the art in view of the adjustable-electrode teachings of Komerup. We
note that the Supreme Court has emphasized that "the [obviousness] analysis
6
Appeal2018-008177
Application 14/424,756
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). As noted by the Court in
KSR, "[a] person of ordinary skill is also a person of ordinary creativity, not
an automaton." KSR, 550 U.S. at 421. "The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results." KSR, 550 U.S. at 416; see also In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) ("[A]ttomey argument [is] not
the kind of factual evidence that is required to rebut a prima facie case of
obviousness."); see also Ans. 4.
To the extent Appellant is arguing that the references must be capable
of bodily incorporation in order to combine their teachings, 3 the test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of a primary reference. In re Keller,
642 F.2d 413,425 (CCPA 1981); see also Ans. 4. "Rather, the test is what
the combined teachings of the references would have suggested to those of
ordinary skill in the art." Keller, 642 F.2d at 425; see also Ans. 4.
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in rejecting claim 1 as being obvious over Lee and
Komerup. We, thus, sustain the rejection of claim 1, and claims 5, 8, 11, 16,
and 17 fall therewith.
3 See, e.g., Br. 8 ("Lee lacks any additional embodiments for the electrode
24 or even contemplates making the electrode 24 movable.").
7
Appeal2018-008177
Application 14/424,756
As we sustain the rejection of claims 1, 5, 8, 11, 16, and 17 over Lee
in view of Kornerup, we decline to reach the alternative rejection of these
claims premised upon Kornerup in view of Lee. 4
The rejection of claim 2
as being obvious over Lee, Kornerup, and Cosmescu
The rejection of claims 3 and 18
as being obvious over Lee, Kornerup, and Kidder
The rejection of claim 4
as being obvious over Lee, Kornerup, Kidder, and Gilhuly
The rejection of claims 6, 7, 13, and 19
as being obvious over Lee, Kornerup, and Walker
The rejection of claims 9, 10, 12, 20, and 21
as being obvious over Lee, Kornerup, and Kane
The rejection of claim 14
as being obvious over Lee, Kornerup, Walker, and Zinnanti
For these rejections, Appellant does not provide any substantive
arguments and rely on the arguments provided for claims 1, 11, and 16. See
Br. 5-17. Because we find no deficiencies in the Examiner's rejection of
independent claims 1, 11, and 16 as being obvious over Lee and Kornerup
we, likewise, sustain the Examiner's rejections of claims 2--4, 6, 7, 9, 10,
12-14, and 18-21 as being obvious over the various combinations of cited
prior art. As above, we decline to reach the alternative rejections of these
claims.
4 See 37 C.F.R. § 4I.50(a)(l) (2018) ("The affirmance of the rejection of a
claim on any of the grounds specified constitutes a general affirmance of the
decision of the examiner on that claim, except as to any ground specifically
reversed.").
8
Appeal2018-008177
Application 14/424,756
DECISION
The Examiner's rejection of claims 1-14 and 16-21 under 35 U.S.C.
§ 103(a) is 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).
AFFIRMED
9