Ex parte Rose

Board of Patent Appeals and Interferences

Sep 20, 1999

08116261 (B.P.A.I. Sep. 20, 1999)

Application for patent filed August 9, 1993. According1
to appellant, the application is a continuation of Application
07/832,534, filed February 7, 1992, now abandoned.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 36
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte EMERY S. ROSE
________________
Appeal No. 1995-5010
Application 08/116,2611
________________
ON BRIEF
________________
Before THOMAS, JERRY SMITH and LALL, Administrative Patent
Judges.
LALL, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the Examiner's final rejection of Claims 1 to 4, 6 and 12, all
Appeal No. 1995-5010
Application 08/116,261
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the pending claims in the case.
The invention concerns an apparatus comprised of an
ultrasonic surgical handpiece driven by a piezoelectric
crystal transducer having a frequency control loop and an
automatic gain control loop. The latter has a limiter
connected to its output so a maximum error signal output of
the automatic gain control may be operator adjusted and
limited to achieve tissue selectivity. A low value resistor
in series and an inductor in parallel to the output of the
voltage source amplifier, which drives the transducer, provide
added stability of the operation of the transducer. The
invention is further illustrated by the following claim.
Claim 1 is selected as representative of the invention
and is reproduced below:
1. An electrical apparatus and an ultrasonic
piezoelectric crystal transducer in a surgical handpiece for
the fragmentation and aspiration of tissue the ultrasonic
piezoelectric crystal transducer driven by the apparatus,
which apparatus comprises:
a voltage controlled oscillator in series with an
amplifier and a first electronic control loop connected from a
feedback piezoelectric crystal through a phase comparator and
a loop filter to the voltage controlled oscillator, which
feedback crystal is mechanically coupled to an ultrasonic
Appeal No. 1995-5010
Application 08/116,261
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piezoelectric crystal transducer in a surgical handpiece and
the feedback piezoelectric crystal provides a feedback signal
which is a function of the actual frequency of vibration of
the ultrasonic piezoelectric crystal transducer in a surgical
handpiece and which phase comparator compares the phase of the
feedback signal of the feedback piezoelectric crystal and of a
driving signal and provides a control signal which maintains
the driving signal at the resonant frequency of the ultrasonic
piezoelectric crystal transducer in a surgical handpiece,
wherein said amplifier is a sinusoidally oscillating voltage
source amplifier, the sinusoidally oscillating voltage source
amplifier in parallel with a tuning inductor and having an
output which is connected to the ultrasonic piezoelectric
crystal transducer in a surgical handpiece and to provide the
driving signal, includes a second control loop comprising:
a means for sensing the amplitude of vibration of the
ultrasonic piezoelectric crystal transducer in a surgical
handpiece and providing an amplitude signal in proportion
thereto, means for comparing the amplitude signal with a
command signal adjustable by an operator and generating an
error signal in proportion to the difference between the
amplitude signal and the command signal, the error signal of
the second control loop changing the amplitude of vibration to
a desired level with the second control loop as an automatic
gain control loop, the amplitude signal in proportion with the
command signal under varying loads and in which the automatic
gain control loop including a limiter so the maximum error
signal output of the loop may be adjusted and limited by an
operator to achieve tissue selectivity, and
a switching unit connected to provide a feedback command
signal as input to the second control loop, the switching unit
connects to limit selectivity with the operator amplitude set
point or a low reference point according to second output
signal.
The Examiner relies on the following references:
Takahashi et al. (Takahashi) 4,888,514 Dec. 19, 1989
Sakurai 4,965,532 Oct. 23, 1990
Appeal No. 1995-5010
Application 08/116,261
A supplemental answer [paper no. 34] was written in2
response to the Remand [paper no. 33] from the Board of Patent
Appeals and Interferences. There was no reply brief.
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Wilson 5,113,116 May 12, 1992
(filed Oct. 5, 1989)
Ams et al. (Ams) 5,116,343 May 26, 1992
(filed Aug. 28, 1990)
Claims 1 to 4, 6 and 12 stand rejected 35 U.S.C. § 103
over various combinations of Takahashi, Sakurai, Wilson and
Ams.
Rather than repeat the arguments of Appellant or the
Examiner, we make reference to the brief and the answers for2
the respective details thereof.
OPINION
We have considered the rejections advanced by the
Examiner and the supporting arguments. We have, likewise,
reviewed the Appellant’s arguments set forth in the brief.
It is our view that the rejection under 35 U.S.C. § 103
over Takahashi, Wilson and Ams is reversed with respect to
Appeal No. 1995-5010
Application 08/116,261
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claims 1 through 4 and 6, but affirmed with respect to claim
12 over Takahashi and Sakurai. Accordingly, we affirm in
part.
In rejecting claims under 35 U.S.C. § 103, the Examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting evidence that the
reference teachings would appear to be sufficient for one of
ordinary skill in the relevant art having the references
before him to make the proposed combination or other
modification. See In re Lintner, 458 F.2d 1013, 1016, 173
USPQ 560, 562 (CCPA 1972). Furthermore, the conclusion that
the claimed subject matter is prima facie obvious must be
supported by evidence, as shown by some objective teaching in
the prior art or by knowledge generally available to one of
ordinary skill in the art that would have led that individual
to combine the relevant teachings of the references to arrive
at the claimed invention. See In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Rejections based
on § 103 must rest on a factual basis with these facts being
Appeal No. 1995-5010
Application 08/116,261
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interpreted without hindsight reconstruction of the invention
from the prior art. The Examiner may not, because of doubt
that the invention is patentable, resort to speculation,
unfounded assumption or hindsight reconstruction to supply
deficiencies in the factual basis for the rejection. See In
re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968). Our reviewing court has
repeatedly cautioned against employing hindsight by using the
Appellant's disclosure as a blueprint to reconstruct the
claimed invention from the isolated teachings of the prior
art. See, e.g., Grain Processing Corp. v. American
Maize-Products Co., 840 F.2d 902, 907, 5 USPQ2d 1788, 1792
(Fed. Cir. 1988). On the other hand, we are also guided by
the precedence of our reviewing court that the limitations
from the disclosure are not to be imported into the claims.
In re Lundberg, 244 F.2d 543, 113 USPQ 530 (CCPA 1957); In re
Queener, 796 F.2d 461, 230 USPQ 438 (Fed. Cir. 1986).
With this as background, we analyze the prior art applied
by the Examiner in the rejection of the claims on appeal.
Rejection of claims 1 to 4 and 6 under 35 U.S.C. § 103
Appeal No. 1995-5010
Application 08/116,261
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These claims are rejected as being obvious over
Takahashi, Wilson and Ams. We treat the independent claim 1
first. With respect to this claim, the Examiner states:
Takahashi thus lacks an additional limiter
(connected to the output of comparing means 56), and
a loop filter, and explicit showing of a tuning
inductor in parallel with a voltage source amplifier
within driving circuitry 22. However, the first two
elements are very common in the art and would have
been obvious in order to provide smoothness and
stability to the feedback signals. Likewise, to
combine the Wilson teaching of employing a parallel
inductor so as to counter the capacitance of the
piezoelectric transducer 1 or 2 would have been
obvious from Wilson’s disclosure on utilizing a
parallel tuning inductor in conjunction with "the
most common situation of driving from a constant
voltage source" (... ) and would have been motivated
by Takahashi’s expositions on the transducer
equivalent circuit (Figure. 10(b)) [final rejection,
pages 4 to 5].
We note that the Examiner recognizes that Takahashi does
not show the claimed limiter but alleges that it would have
been obvious to incorporate such along with a smoothing filter
in Takahashi. No evidence, based on either a prior art
reference or technological reasoning, is presented to support
Appeal No. 1995-5010
Application 08/116,261
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this view. Appellant argues, and we agree, that there is no
reason in Takahashi to consider such a limiter and further how
this limiter would operate in Takahashi’s transducer is not
explained by the Examiner [brief, pages 4, 7 and 8]. The
Federal Circuit states that “[the] mere fact that the prior
art may be modified in the manner suggested by the Examiner
does not make the modification obvious unless the prior art
suggested the desirability of the modification.” In re Fitch,
972 F.2d 1260, 1266 n.4, 23 USPQ2d 1780, 1783-84 n.4 (Fed.
Cir. 1992), citing In re Gordon, 773 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir. 1984). “Obviousness may not be
established using hindsight or in view of the teachings or
suggestions of the inventor.” Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d 1087, 37 USPQ 2d at 1239 (Fed.
Circuit. 1995), citing W. L. Gore & Assocs., v. Garlock, Inc.,
721 F.2d at 1551, 1553, 220 USPQ at 311, 312-13 (Fed. Cir.
1983). Furthermore, the Examiner contends that Wilson’s
teachings would have made it obvious to incorporate an
inductor in Takahashi to meet the limitation: “the
sinusoidally oscillating voltage source amplifier in parallel
with a tuning inductor” (claim 1, lines 21 to 22). The
Appeal No. 1995-5010
Application 08/116,261
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Examiner has not identified a sinusoidally oscillating voltage
source amplifier and even though Wilson teaches the concept of
tuning inductors for transducer driving circuits, it is not
seen how an inductor can be placed in Takahashi’s transducer
circuit to meet the above limitation. The closest the
Examiner comes to dealing with this issue is that “[t]he
tuning inductor 6 of Wilson certainly works for both types of
waves, since a square wave comprises a fundamental
(sinusoidal) component along with (sinusoidal) harmonics
(Wilson: column 6, line 55 et seq.) ” [supplemental answer,
page 3]. Appellant argues, and we agree, that Wilson’s quoted
passage does not teach the claimed sinusoidally oscillating
voltage source amplifier in combination with a parallel tuning
inductor resonance [brief, pages 6 to 8]. Furthermore, Ams
does not cure the deficiency of Takahashi and Wilson discussed
above. For these reasons, we do not sustain the obviousness
rejection of claim 1 and its dependent claims 2 to 4 and 6
over Takahashi, Wilson and Ams.
Appeal No. 1995-5010
Application 08/116,261
We note that claim 12 is not clear. For example, the3
clause “a second control loop” (claim 12, line 9) is not
defined. We take it to mean that it refers to the “automatic
gain control loop” mentioned in lines 5 and 6 of claim 12.
Also, the clause “second output signal” (claim 12, line 11) is
undefined. We interpret it to mean any kind of output. Our
discussion is based on this interpretation of the claim.
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Rejection of claim 12 under 35 U.S.C. § 103
Claim 12 is rejected as being obvious over Takahashi and3
Sakurai’532. The Examiner states:
Takahashi et al. lacks a limiter component
distinct from and in series with the amplitude
detector 51a. However, such a feature is well
known, as seen in Figure 9 (element 69) of Sakurai,
and would have been obvious in order to provide
smoothness and stability to the feedback signals.
Furthermore, to incorporate the Takahashi et al.
circuitry into an ultrasonic surgical hand piece
would have been obvious because the inherent
advantages are applicable to piezoelectric
transducers in general [final rejection, page 4].
Appellant first argues that the Examiner has combined
non- analogous references of Takahashi and Sakurai to reject
claim 12 [brief, page 13]. However, we believe that the
ultrasonic motor of Takahashi is of the same type as disclosed
by Appellant, and Sakurai discloses a control circuit for an
ultrasonic motor. Therefore, we disagree with Appellant’s
conclusory statement that Takahashi and Sakurai are from non-
Appeal No. 1995-5010
Application 08/116,261
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analogous art. Next, Appellant further argues a lack of an
express teaching or suggestion in either Takahashi or Sakurai
to combine the two references [brief, page 13]. This argument
is misplaced. We note that while there must be some teaching,
reason, suggestion, or motivation to combine existing elements
to produce the claimed device, it is not necessary that the
cited references or prior
art specifically suggest making the combination (see B.F.
Goodrich Co. v. Aircraft Braking Systems Corp., 72 F.3d 1577,
1583, 37 USPQ2d 1314, 1319 (Fed. Cir. 1996) and In re Nilssen,
851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988)) as
Appellant would apparently have us believe. Rather, the test
for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in
the art. See In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089,
1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981). Moreover, in evaluating such
references it is proper to take into account not only the
specific teachings of the references but also the inferences
which one skilled in the art would reasonably be expected to
draw therefrom. In re Preda, 401 F.2d 825, 826, 159 USPQ 342,
Appeal No. 1995-5010
Application 08/116,261
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344 (CCPA 1968). We agree with the Examiner that, to the
extent claimed, the “frequency control loop” (claim 12, line
3) and the “automatic gain control loop” (claim 12, line 3)
are shown by circuit 50 and 51a of Takahashi in figure 5 as
controlling the speed of the ultrasonic motor 23. The
reference voltage at element 55 in Takahashi can be switched
from one setting to another to achieve a desired speed (column
7, lines 23 to 25 and column 8, lines 57 to 60]. This meets
the limitation: “a switching unit ... to second output” (claim
12, lines 8 to 11). We further agree with the Examiner that
to broadly add a limiter, such as element 69 of Sakurai, to
the output of the feedback control loop 51a of Takahashi would
have been obvious because the purpose of such a limiter in
Takahashi would have been the same as in Sakurai as well as in
Appellant’s device, i.e., to limit the amplitude of the
feedback signal below an undesirable speed limit in Sakurai to
avoid damage to the ultrasonic motor, or to match a particular
tissue selectivity in Appellant’s device. Therefore, we
sustain the obviousness rejection of claim 12 over Takahashi
and Sakurai.
In conclusion, the decision of Examiner rejecting Claims
Appeal No. 1995-5010
Application 08/116,261
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1 to 4, 6 and 12 under 35 U.S.C. § 103 is affirmed in part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
JERRY SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
Appeal No. 1995-5010
Application 08/116,261
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Appeal No. 1995-5010
Application 08/116,261
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John C. Andres
Chief Patent Counsel
Legal Department
United States Surgical Corporation
150 Glover Avenue
Norwalk, CT 06865
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