Ex Parte Nield

Patent Trial and Appeal Board

Sep 14, 2016

12469293 (P.T.A.B. Sep. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/469,293 0512012009
92223 7590 09/16/2016
K&L Gates LLP-Pittsburgh
210 SIXTH AVENUE
PITTSBURGH, PA 15222-2613
FIRST NAMED INVENTOR
Scott A. Nield
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.
END6494USNP/080595 1632
EXAMINER
SZPIRA, TIJLIE ANN
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
09/16/2016 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):
uspatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT A. NIELD
Appeal2015-000251
Application 12/469 ,293 1
Technology Center 3700
Before MICHAEL C. ASTORINO, CYNTHIA L. MURPHY, and
BRADLEY B. BAY AT, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-11under35 U.S.C. § 103(a) as being
unpatentable over Cronin et al. (US 6,561,983 B2, iss. May 13, 2003
(hereinafter "Cronin")) and Coe et al. (US 2008/0243106 Al, pub. Oct. 2,
2008 (hereinafter "Coe")). We have jurisdiction over the appeal under 35
U.S.C. § 6(b).
We REVERSE.
1 According to the Appellant, "[t]he real party in interest in this appeal is
Ethicon Endo-Surgery, Inc." Br. 3.
Appeal2015-000251
Application 12/469,293
Claimed Subject Matter
Claims 1 and 9 are the independent claims on appeal. The claimed
subject matter "generally relates to coupling arrangements ... for attaching a
surgical tool to an ultrasonic surgical instrument." Spec., para. 1. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. An ultrasonic surgical instrument having a handpiece
operably supporting at least one ultrasonic transducer therein,
said surgical instrument comprising:
a surgical tool having a proximal end with a cavity therein;
and
a waveguide protruding distally from the handpiece and
interacting with the at least one ultrasonic transducer, said
waveguide having a distal end portion sized to be inserted into
said cavity in said proximal end of said surgical tool and
selectively expanded into an acoustically coupled retaining
engagement therewith.
ANALYSIS
The Appellant argues that the Examiner's rejection uses
impermissible hindsight to arrive at the subject matter of independent
claims 1 and 9. Br. 15, 23. In particular, the Appellant contends that:
Without the benefit of Appellants' disclosure and guided
only by the teachings of Cronin and Coe, a skilled artisan would
not arrive at a waveguide having a distal end portion sized to be
inserted into a cavity in a proximal end of a surgical tool and
selectively expanded into an acoustically coupled retaining
engagement therewith, as recited in Claim 1, merely by
combining the teachings of Cronin and Coe.
Br. 23-24. The Appellant's argument is persuasive.
For the rejection of claim 1 the Examiner finds that Cronin discloses
substantially all of the claimed subject matter, including a waveguide that
transmits ultrasonic (acoustic) energy. See Final Act. 2-3. The Examiner
2
Appeal2015-000251
Application 12/469,293
appears to specifically rely on the embodiment of Cronin's Figure 7, which
includes a union between a distal end portion (male post member) 72 of a
first component 70 and a proximal end of a cavity (female recess) 76 of a
second component (surgical tool) 74. See Final Act. 2-3; Cronin, Fig. 7,
col. 6, 11. 8-13.
The Examiner also finds that Cronin "fails to disclose the waveguide
being selectively radially expanded to engage the cavity of the surgical
tool." Final Act. 3. This finding implicates that the Examiner does not rely
on Cronin to disclose a waveguide having a distal end portion selectively
expanded into an acoustically coupled retaining engagement with a proximal
end of a surgical tool as required by claim 1. The Examiner appears to
remedy this deficiency by relying on Coe's teachings, particularly the
engagement mechanism depicted in Coe' s Figures 7 A-7 C. Final Act. 3.
The Appellant points out correctly that the engagement mechanism of
Coe' s Figures 7 A-7 C is not disclosed as a waveguide. See Br. 20-21. But
see Ans. 3. Indeed, Coe' s disclosure of the engagement mechanism of
Figures 7 A-7C is directed only to a mechanical coupling. See Br. 20; Coe,
para. 85. Also, Coe's disclosure does not teach that the engagement
mechanism disclosed in Figures 7 A-7C uses ultrasonic (acoustic) energy.
See Br. 20. Although Coe teaches that an end effector can be configured to
deliver ultrasonic energy, this teaching is associated with the embodiment
depicted in Figures 12A and 12B (i.e., "an end effector in the form of a
monopolar probe that uses a threaded engagement mechanism" (Coe,
para. 42)). See Coe, para. 93. Additionally, the structure of the end effector
of Figures 12A and 12B is significantly different than the structure of the
"engagement mechanism having expanding fingers for engag[ing] a bore" of
3
Appeal2015-000251
Application 12/469,293
Figures 7 A-7C (Coe, para. 32). Moreover, it is unclear from Coe's
disclosure the extent the structure of engagement mechanism of Figures 7 A-
7C would need to be modified to deliver ultrasonic energy.
Further, assuming arguendo that one of ordinary skill in the art would
contemplate a modification of the structure of Cronin's union (i.e., male post
member 72 and female recess 7 6) in view of the engagement mechanism of
Coe's Figures 7A-7C, we determine that the Examiner fails to provide
adequate details to understand the resulting positive surface contact and
connection of Cronin's modified union. As such, we are left to speculate
how the Examiner's proposed modification would affect the transmission of
ultrasonic (acoustic) energy of Cronin's union. See also Cronin, col. 4,
11. 51---61; Br. 23-24.
For the foregoing reasons we are persuaded by the Appellant's
argument that one of ordinary skill in the art would not have combined the
teachings of Cronin and Coe as proffered in the Examiner's rejection
without resorting to impermissible hindsight. Br. 23-24. Thus, we do not
sustain the Examiner's rejection of independent claim 1 and dependent
claims 2-8 as unpatentable over Cronin and Coe.
The Examiner's rejection of independent claim 9 is based on the same
reasoning as claim 1 discussed above. Because the subject matter of claim 9
is similar to that of claim 1, we do not sustain the Examiner's rejection of
independent claim 9 and dependent claims 10 and 11 as unpatentable over
Cronin and Coe.
4
Appeal2015-000251
Application 12/469,293
DECISION
We REVERSE the Examiner's decision rejecting claims 1-11.
REVERSED
5