Ex Parte Shelton et al

Patent Trial and Appeal Board

Oct 31, 2012

11343545 (P.T.A.B. Oct. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte FREDERICK E. SHELTON IV,
JEROME R. MORGAN, KEVIN R. DOLL, JEFFREY S. SWAYZE,
AND EUGENE L. TIMPERMAN
____________________

Appeal 2010-010587
Application 11/343,545
Technology Center 3700
____________________

Before: DANIEL S. SONG, JONI Y. CHANG, and MICHAEL J.
FITZPATRICK, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-010587
Application 11/343,545

2
STATEMENT OF THE CASE
Frederick E. Shelton IV et al. (Appellants) appeal under 35 U.S.C.
§ 134(a) from a decision finally rejecting claims 1-23 and 26-42. We have
jurisdiction under 35 U.S.C. § 6(b)(1).
We REVERSE.

The Claimed Subject Matter
According to Appellants, the claimed invention relates “to visual and
audible feedback systems for motor-driven surgical instruments.” Spec. 3,
para. [0002]. Claim 11, reproduced below, is illustrative of the claimed
subject matter.
11. A surgical stapler, comprising:
an end effector having an elongate channel configured to
operably support a staple cartridge therein;
an anvil movably couple to elongate channel;
a member operably supported within the end effector,
wherein the member is movable between a first proximal
position and a second distal position relative to the anvil, and
wherein the member includes one of a cutting member and a
staple deploying member;
a plurality of sensors including a first sensor, wherein the
first sensor is configured to detect the presence of the member
in the first proximal position, and a second sensor, wherein the
second sensor is configured to detect the presence of the
member in the second distal position; and
a status module, wherein the status module comprises;
a first contact, wherein the first contact is in
electrical communication with the first sensor;
a second contact, wherein the second contact is
electrical communication with a second sensor;
Appeal 2010-010587
Application 11/343,545

3
a circuit in electrical communication with at least
one of the first and second contacts; and
a firing progress indicator comprising:
a first indicator configured to indicate when
the member is in the first position; and
a second indicator configured to indicate
when the member is in the second position, wherein at
least one of the first and second indicators is in electrical
communication with the circuit.

Evidence
The Examiner relies upon the following prior art references:
Garrett
Muller
Boiarski
Koukline
Whitman
Burdorff
US 4,213,562
US 5,061,269
US 5,535,937
US 5,782,397
US 2002/0165541
US 6,752,768
Jul. 22, 1980
Oct. 29, 1991
Jul. 16, 1996
Jul. 21, 1998
Nov. 7, 2002
Jun. 22, 2004

Rejections
The Examiner makes the following rejections:
I. Claims 1-3, 11-13, 21, 22, 26, 27, 38, and 40 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Koukline and Boiarski.
II. Claims 4, 5, 10, 14, 15, 20, 23, and 28 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Koukline, Boiarski, and
Whitman.
III. Claims 6-9 and 16-19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Koukline, Boiarski, Whitman, and Garrett.
IV. Claims 29-32, 37, and 42 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Boiarski and Muller.
Appeal 2010-010587
Application 11/343,545

4
V. Claims 33, 34, and 36 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Boiarski, Muller, and Whitman.
VI. Claim 35 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Boiarski, Muller, and Garrett.
VII. Claims 39 and 41 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Koukline, Boiarski, and Burdoff.

OPINION
Claims 1-23, 26-28, and 38-41

Independent claims 1 and 11 were rejected over Koukline in view of
Boiarski. Each of claims 1 and 11 requires, in relevant part:
a first sensor, wherein the first sensor is configured to detect the
presence of the member [which “includes one of a cutting
member and a staple deploying member”] in the first proximal
position, and a second sensor, wherein the second sensor is
configured to detect the presence of the member in the second
distal position; and . . .

a firing progress indicator comprising: a first indicator
configured to indicate when the member is in the first position;
and a second indicator configured to indicate when the member
is in the second position[.]

The Examiner found that Koukline discloses the recited sensors but
“is silent about” the indicators. Ans. 4. The Examiner relied on Boiarski as
“teach[ing] indicators (col. 6 lines 63-67 and col. 7 lines 1-10).” Ans. 4.
From this, the Examiner concluded “it would have been obvious to one of
ordinary skill in the art at the time of the invention to provide indicators on
Koukline’s device for the purpose of allowing a user to know the status of
the stapler, such as when a stapling operation is complete.” Ans. 4.
Appeal 2010-010587
Application 11/343,545

5
Appellants challenge the rejection, in part, by asserting that the
Examiner “has not provided an apparent reason as to why a person of
ordinary skill in the art would modify a staple cartridge indicator [as taught
by Boiarski] to comprise a firing progress indicator having first and second
indicators.” App. Br. 19 (emphasis added). We agree with Appellants.
It is true that Koukline teaches two sensors (limit switches), stating:
Completion of a stapling operation is detected by a limit switch
56, which initiates a reversal of the motor 50, bringing the
system to the starting position, which is detected by a second
limit switch 58.

Koukline, col. 20, lines 27-32. However, the Examiner does not provide an
adequate reason as to why a person of ordinary skill in the art, when
modifying Koukline in view of Boiarski, would include two indicators – one
corresponding to each Koukline limit switch. More particularly, the
Examiner does not offer a persuasive reason why a person of ordinary skill
in the art would think it useful or important, or otherwise be motivated, to
provide a first indicator to indicate to a user that a member (such as a
stapler) is in a first position, and a second indicator to separately indicate to
the user that the member is in a second position.
According to the Examiner, “Boiarski is relied upon to show the use
of indicators to alert the user of a sensed condition in a surgical instrument.”
Ans. 11. However, the Examiner has not directed us to any reason why a
person of ordinary skill in the art would be motivated to provide separate
indications of the sensed conditions described in Koukline. As the Examiner
acknowledges Koukline is “silent” about indicators. The fact that the
Koukline device may use information gathered from two separate limit
switches 56 and 58 internally does not, without more, suggest that such
Appeal 2010-010587
Application 11/343,545

6
information is useful to a human user such that a person of ordinary skill in
the art would be motivated to provide separate indicators corresponding to
each limit switch when presented with the general concept of using
indicators in surgical instruments.
For the foregoing reasons, we cannot sustain the decision to reject
independent claims 1 and 11 based on the combination of Koukline and
Boiarski. For the same reasons, we cannot sustain the decision to reject
dependent claims 2-10, 12-23, 26-28, and 38-41, each of which ultimately
depends from claim 1 or 11. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir.
1988) (“Dependent claims are nonobvious under section 103 if the
independent claims from which they depend are nonobvious.”)
Claims 29-37 and 42

Independent claim 29 was rejected over Boiarski in view of Muller.
Claim 29 requires, in relevant part: “a sensor . . . configured to detect the
magnitude of force applied to the trigger” and “a trigger force indicator
[that] displays the magnitude of force applied to the trigger.”
The Examiner’s rejection states, in relevant part:
Muller teaches a surgical instrument having a sensor that senses
how much force is being applied to a trigger such that a motor
will run at different speeds depending on the force. This
facilitates operation of the device, as it requires less manual
gripping pressure by the user (col. 4 lines 4-15). Therefore, it
would have been obvious to one of ordinary skill in the art at
the time of the invention to provide Boiarski’s stapler with a
sensor that senses how much force is being applied to the
trigger such that the motor will run at different speeds for the
purpose of reducing the manual gripping pressure of the stapler
by the user.
Appeal 2010-010587
Application 11/343,545

7

Ans. 8. For two separate reasons we cannot sustain the rejection.
First, Muller does not teach a sensor configured to detect the
magnitude of force applied to a trigger, as required by claim 29. Muller
discloses a device that requires less manual gripping pressure due to a power
assist structure. Muller, col. 4, lines 4-15. But, there is no disclosure by
Muller that the device has a sensor that can detect gripping pressure, let
alone the magnitude of the gripping pressure. Muller, col. 4, lines 4-15.
Second, we agree with Appellants that the rejection fails to address
the limitation “a trigger force indicator [that] displays the magnitude of force
applied to the trigger,” as required by claim 29. See App. Br. 23.
For each of these reasons, we cannot sustain the decision to reject
independent claim 29 or the decision to reject dependent claims 28-37 and
42, each of which ultimately depends from claim 29. See In re Fine, 837
F.2d at 1076.

DECISION
The Examiner’s decision to reject claims 1-23 and 26-42 is
REVERSED.

REVERSED