Ex Parte Koltz et al

Patent Trials and Appeals Board

Mar 27, 2019

13799598 - (D) (P.T.A.B. Mar. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/799,598 03/13/2013 Michael L. Koltz
63496 7590 03/29/2019
DICKE, BILLIG & CZAJA, PLLC
ATTN: MDT SURGICAL TECHNOLOGIES MATTERS
FIFTH STREET TOWERS, SUITE 2250
100 SOUTH FIFTH STREET
MINNEAPOLIS, MN 55402
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.
C00003351.USU2 3354
EXAMINER
CARTER, TARA ROSE E
ART UNIT PAPER NUMBER
3773
NOTIFICATION DATE DELIVERY MODE
03/29/2019 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):
USPTO.PA TENTS@dbclaw.com
DBCLA W-Docket@dbclaw.com
rs.patents.five@medtronic.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL L. KOLTZ, CHRISTOPHER L. FAIR,
MICHAEL S. FERRELL, ANDRZEJ KLIMASZEWSKI,
DAVID J. LITTLE, II, MANFRED K. LUEDI, GEROULD NORMAN,
and ROBERT K. VACCARO
Appeal2018-002120
Application 13/799,598
Technology Center 3700
Before CHARLES N. GREENHUT, MICHAEL J. FITZPATRICK, and
LEE L. STEPINA, Administrative Patent Judges.
FITZPATRICK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 15-21. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 Appellant is the applicant, Medtronic Xomed, Inc., and additionally
identifies Medtronic PLC as a real party in interest. Appeal Br. 3.
Appeal2018-002120
Application 13/799,598
STATEMENT OF THE CASE
The Specification
The disclosure "generally relates to powered handpieces for driving
surgical instruments or tools," and more particularly "to powered rotary-type
surgical handpieces and corresponding control systems for interfacing with
and controlling operation thereof." Spec. ,II.
The Rejected Claims
Claims 1-21 are pending. Final Act. 1. Claims 1-12 were allowed,
claims 13 and 14 were withdrawn, and claims 15-21 were rejected. Id.
Claim 15 is representative of the rejected claims and reproduced below.
15. A surgical system comprising:
a surgical handpiece comprising a motor and an
electrically conductive driveshaft electrically insulated from the
motor, the driveshaft extending along an axis and rotatable about
the axis by the motor;
a surgical tool connected to the surgical handpiece, the
surgical tool electrically coupled to and rotatable by the
driveshaft;
a controller connected to the surgical handpiece and
programmed to interface with the surgical handpiece, the
controller including a data entry device and a display screen,
wherein the controller is programmed to display a real-time
torque value applied by the surgical handpiece on the display
screen where the displayed torque value is based on a motor
current feedback; and
a stimulator assembly electrically coupled to the rotatable
conductive drive shaft to provide an electrical current along the
axis to the surgical tool via the driveshaft.
Appeal Br. 14.
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Application 13/799,598
The Appealed Rejections
The following rejections are before us for review:
1. claims 15-20 under 35 U.S.C. § 103(a) as unpatentable over
Beale,2 Teufelberger, 3 and Giardino4 (Final Act. 2); and
2. claim 21 under 35 U.S.C. § 103(a) as unpatentable over Beale,
Teufelberger, and Escudero5 (id. at 9).
DISCUSSION
Rejection 1
The Examiner rejected claims 15-20 under 35 U.S.C. § 103(a) as
unpatentable over Beale, Teufelberger, and Giardino. Final Act. 2.
Appellant argues these claims together. See Appeal Br. 6-9. Accordingly,
we select independent claim 15 as representative. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
Appellant argues that the asserted prior art fails to teach or suggest the
following limitations of claim 15:
(1) "a surgical handpiece comprising a motor and an electrically
conductive driveshaft electrically insulated from the motor, the
driveshaft extending along an axis and rotatable about the axis
by the motor;
(2) "a surgical tool connected to the surgical handpiece, the
surgical tool electrically coupled to and rotatable by the
driveshaft"; and
2 US 2009/0264940 Al, published Oct. 22, 2009 ("Beale").
3 US 7,972,135 B2, issued July 5, 2011 ("Teufelberger").
4 US 2002/0020538 Al, published Feb. 21, 2002 ("Giardino").
5 US 2009/0234378 Al, published Sept. 17, 2009 ("Escudero").
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(3) "a stimulator assembly electrically coupled to the rotatable
conductive drive shaft to provide an electrical current along the
axis to the surgical tool via the driveshaft."
Appeal Br. 7 ( quoting claim 15) (paragraphing added).
The Examiner relied on Beale and T eufelberger ( and not Giardino) to
meet these limitations. Final Act. 2-6; Ans. 2-14.
With respect to Beale, the Examiner found that it teaches a surgical
handpiece comprising a motor, a surgical tool connected to the surgical
handpiece, a drive shaft disposed within the surgical handpiece, the
driveshaft operably coupled to the surgical tool and rotated by the motor, a
controller connected to the surgical handpiece and programmed to interface
with the surgical handpiece, a stimulator assembly electrically coupled to the
surgical tool to provide an electrical current thereto. Final Act. 2-3 ( citing
Beale i-fi-f44, 51, 145, 148, Fig. 3 (reference numerals 309, 315), and Fig. 30
(reference numerals 3010, 3017).)
In short, the embodiment of Figure 30 of Beale is similar to claim 15
and is operable to both rotatably drive and electrically stimulate a tool
attached thereto. However, in Beale, the electrical stimulation is not
conducted to the tool via the driveshaft, but rather through a separate
structure, i.e., "conductive portion 3010." See Beale i-fi-fl44-45. Appellant
concedes as much. See Appeal Br. 7 ("The output shaft 315 ... does not
serve to provide a current from the stimulator assembly to the surgical tool.
Instead, the Beale Publication applies an electrical signal to a bit at the end
of the output shaft 315 via the conductive portion 3010.").
Teufelberger also teaches a surgical handpiece for driving a tool.
Teufelberger at (57). The Teufelberger handpiece comprises:
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Application 13/799,598
an outer sleeve, a connecting device for connecting the handpiece
to a control and analyzing unit, a measurement circuit having a
power source and to a drive unit, an electrically conducting tool
receptacle and an electrically conducting driving device, wherein
the tool receptacle and the driving device are mechanically and
electrically connected together so that a driving motion generated
by the drive unit can be transmitted via the driving device to the
tool receptacle and electrical measurement signals can be
transmitted between the driving device and the tool receptacle.
Id.; see also Final Act. 6 (citing Teufelberger at (57)).
The Examiner concluded that it would have been obvious to
incorporate into Beal' s handpiece an electrically conductive driveshaft as
taught by Teufelberger "to provide a surgical handpiece wherein the surgical
tool and the driveshaft are both mechanically and electrically connected."
Final Act. 6; see also Ans. 11 ("Note that the combination of Beale with the
electrically coupled driveshaft, stimulation assembly and tool of
Teufelberger will also result in a device with more simple construction.").
Appellant argues that, in the rejection, "the Examiner attempts to
conceptually-combine the output shaft 315 with a separate and distinct
feature called the conductive portion 3010 of the Beale Publication to meet
the terms of the drive shaft in claim 15." Appeal Br. 7. But that is not
accurate. The Examiner explicitly relies on another reference, Teufelberger,
as teaching a driveshaft that it is both mechanically and electrically
connectable to a tool. Final Act. 6; Ans. 8-11. "Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references." In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986). Thus, Appellant's arguments that Beale's
drive shaft, in combination with its conductive portion, does not meet the
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driveshaft of claim 15 are not persuasive. See, e.g., Appeal Br. 8 ("One
skilled in the art would not be inclined to interpret the features of the
relatively stationary conductive portion 3010 to be included as part of the
output shaft 315 to form a driveshaft.").
Appellant also argues that a person of ordinary skill in the art would
not would not be inclined to combine Beale with Teufelberger, as proposed
by the Examiner, because their teachings are "superfluous" of each other.
Appeal Br. 9. This argument, which is not developed, is unpersuasive.
As a matter of pure fact, Beale and Teufelberger do not have identical
disclosures. Of particular significance here is Teufelberger's teaching of a
driveshaft for a handpiece that provides both rotation and electrical
stimulation, a teaching that Beale lacks. If Appellant's implicit argument is
that Teufelberger is superfluous to Beale because both accomplish electrical
stimulation in the tool, albeit by different structures, such an argument
would also be unpersuasive. We agree with the Examiner that it would have
been obvious to substitute one known method of achieving a desired
objective for another. See, e.g., In re Fout, 675 F.2d 297,301 (CCPA 1982)
("Because both [references] ... teach a method for separating caffeine from
oil, it would have been prima facie obvious to substitute one method for the
other."). In fact, "when a patent claims a structure already known in the
prior art that is altered by the mere substitution of one element for another
known in the field, the combination must do more than yield a predictable
result." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007).
For the foregoing reasons, we affirm the rejection of claim 15, as well
as claims 16-20, which fall therewith. See 37 C.F.R. § 4I.37(c)(l)(iv).
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Rejection 2
The Examiner rejected claim 21 under 35 U.S.C. § 103(a) as
unpatentable over Beale, Teufelberger, and Escudero. Final Act. 9.
Appellant argues against the rejection of claim 21 based solely on
arguments already considered and rejected above. See Appeal. Br. 10.
Accordingly, for the same reasons as discussed above, we also affirm
the rejection of claim 21.
DECISION
The Examiner's rejection under 35 U.S.C. § 103(a) of claims 15-20 as
unpatentable over Beale, Teufelberger, and Giardino is affirmed.
The Examiner's rejection under 35 U.S.C. § 103(a) of claim 21 as
unpatentable over Beale, Teufelberger, and Escudero is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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