Ex Parte Smith et al

Patent Trial and Appeal Board

Mar 19, 2013

12034320 (P.T.A.B. Mar. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/034,320 02/20/2008 INV001Kevin W. Smith EES/ElecStap
CryptoDevice
7923
27316 7590 03/20/2013
MAYBACK & HOFFMAN, P.A.
5722 S. FLAMINGO ROAD #232
FORT LAUDERDALE, FL 33330
EXAMINER
CHUKWURAH, NATHANIEL C
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
03/20/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
1
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

Ex parte KEVIN W. SMITH, THOMAS BALES,
DEREK DEE DEVILLE, CARLOS RIVERA,
and MATTHEW A. PALMER
____________

Appeal 2011-006707
Application 12/034,320
Technology Center 3700
____________

Before, GAY ANN SPAHN, BARRY L. GROSSMAN, and
JILL D. HILL, Administrative Patent Judges.

GROSSMAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-18. Appellants presented arguments at
oral hearing on March 12, 2013. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We REVERSE.

1 The real party in interest is identified as Ethicon Endo-Surgery, Inc.
Appeal 2011-006707
Application 12/034,320

2
CLAIMED SUBJECT MATTER
Claims 1, 9, and 17 are the independent claims on appeal. Claim 1 is
illustrative of the subject matter on appeal, and recites:
1. A surgical instrument, comprising:
a surgical end effector having a receiving
portion for removably receiving therein an
interchangeable part, said receiving portion having
a communication connection;
a handle connected to said end effector for
actuating said end effector, said handle having a
controller electrically connected to said
communication connection for authenticating said
interchangeable part; and
an interchangeable part removably
connected to said receiving portion and having an
encryption device electrically removably
connected to said communication connection when
at said receiving portion, said encryption device
being programmed to authenticate said
interchangeable part when said part is at said
receiving portion.

REJECTIONS
Claims 1-3, 5-11, and 13-18 are rejected under 35 U.S.C. § 102(e) as
unpatentable over Shelton (US 2007/0175964 A1, published Aug. 2, 2007
(hereinafter cited as “Shelton”).
Claims 4 and 12 are rejected under 35 U.S.C. §103(a) as unpatentable
over Shelton.
ANALYSIS
Anticipation Based on Shelton
The anticipation issue before us is whether Appellants have shown
that the Examiner erred in rejecting claims 1-3, 5-11, and 13-18 under 35
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Application 12/034,320

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U.S.C. § 102(e) as anticipated by Shelton. The anticipation issue turns on
whether Shelton expressly or inherently discloses an interchangeable part
having “an encryption device” which is “programmed to authenticate”
(claim 1), which “cryptographically” authenticates (claim 9), or which is
“programmed to cryptographically authenticate” (claim 17), as called for in
the claims.
Independent claims 1, 9 and 17 each require an interchangeable part
having an “encryption device.” The Specification does not define what is an
“encryption device,” although it provides specific examples of products that
are “encryption devices” (e.g., Spec. [0140] and it also explains that
encryption requires processing numbers and the use of processing chips
(e.g., a microprocessor) (Spec. [0139]). The Specification further explains
that cryptographic authentication, as used in the claimed invention, uses a
microprocessor to detect that a new part has been connected to the surgical
instrument. If a new part has been added, the microprocessor runs an
authentication routine. This routine involves a random number request to the
encryption device; applying an algorithm to cryptographically generate a
reply to the request; comparing the request and the reply; and, if they are
identical, the interchangeable part is confirmed as authenticated. The
encryption process uses a code or algorithm to alter information so as to be
unintelligible to unauthorized readers or recipients, whether those readers or
recipients are humans or other microprocessors. If there was no encryption
in the messages, the authentication messages could be intercepted and
counterfeit, pirated, or unauthorized parts could be used. Spec. [0144].
Thus, as used in the claims, the term “encryption device” means a
microprocessor that converts or provides information that cannot be read or
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Application 12/034,320

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understood by anyone or anything other than an authorized or intended
recipient.
Appellants argue, in relevant part, that Shelton does not disclose an
interchangeable part having “an encryption device” which is programmed to
authenticate the interchangeable part when the part is mounted in the
surgical instrument. See, e.g., App. Br. 23-262; Reply Br. 2-33 et seq.
With respect to independent claim 1, the Examiner found, in relevant
part, that Shelton discloses a surgical instrument having “a controller
(microcontroller 0121) “for authenticating through sensors the
interchangeable part.” Ans. 44. The Examiner made similar findings for
independent claim 9 (Ans. 5) and independent claim 17 (Ans. 7). With
respect to independent claims 1 and 17, the Examiner made no finding that
Shelton discloses that the interchangeable part has “an encryption device”
programmed to authenticate the interchangeable part.
In explaining the rejections, the Examiner acknowledged that Shelton
did not use the phrase “an encryption device,” which the Examiner
considered to be “simply [a] device for identifying [the] interchangeable part
for compatibility in the instrument.” Ans. 10. The Examiner found that
such a device was “implicitly” disclosed in Shelton, but cited no authority or
persuasive analysis for this finding. Id.

2 Citations to “App. Br. ___” are to the indicated page in the Appeal Brief
filed August 9, 2010.
3 Citations to “Reply Br. ___” are to the indicated page in the Reply Brief
filed January 10, 2011.
4 Citations to “Ans. ___” are to the indicated page in the Examiner’s Answer
mailed November 10, 2010.
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Application 12/034,320

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The Examiner erred in defining an encryption device as simply
identifying whether an interchangeable part is compatible with the surgical
instrument. That may be one end result of authenticating, but an encryption
device for authenticating, as defined in the Specification, requires more than
just authenticating. The authentication must involve a device that uses a
code or algorithm to alter information so as to be unintelligible to
unauthorized readers or recipients. Moreover, Shelton does not authenticate
the interchangeable part, it merely senses and records information about it.
Appellants argue that “for the same reasons set forth . . . with respect
to claim 1, . . . Shelton likewise does not disclose each and every element of
independent claim 17. App. Br. 34. We agree.
In the context of independent claim 9 and some of the dependent
claims, the Examiner stated that element 2001 in Shelton was an “encryption
device.” E.g., Ans. 4, 6. Shelton refers to element 2001 as a “memory
device.” Shelton, p. 13, para. [0148]. Shelton explains that sensors sense
“instrument conditions” and send a signal to the memory device 2001.
Shelton, p. 13, paras. [0147] – [0148]. The memory device merely receives
information from the sensors. It does not authenticate that information using
encryption or cryptography. The memory device may include a
microprocessor (Shelton, p. 13, para. [0148]), but the Examiner has not cited
any disclosure in Shelton, and we find none on our review, that states that
the memory device in Shelton serves as an “encryption device” as that term
is used in the claims.
The Examiner also pointed to the “lock out” feature described in
Shelton. Ans. 10. As explained in Shelton, the cartridge lockout sensor 136
senses whether the end effector 12 includes or doesn’t include a staple
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Application 12/034,320

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cartridge 34. Shelton, p. 6, para. [0091]. If a cartridge is present, the
instrument can operate. Id. This sensor does not cryptographically
authenticate the interchangeable part.
Accordingly, for the reasons discussed supra, we do not sustain the
Examiner’s rejection of independent claims 1, 9, and 17, and claims 2, 3, 5-
8, 10, 11, 13-16, and 18 which depend therefrom, under 35 U.S.C. § 102(e)
as anticipated by Shelton.
Obviousness Based on Shelton
Because Shelton fails to disclose or suggest the invention recited in
the independent claims, it also fails to support the rejections of claims 4 and
12 under 35 U.S.C. § 103. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir.
1988) (If an independent claim is nonobvious under 35 U.S.C. § 103, then
any claim dependent therefrom is nonobvious); see also In re Fracalossi,
681 F.2d 792, 794 (CCPA 1982) (Evidence establishing anticipation
necessarily evidences at least prima facie obviousness).
Accordingly, we do not sustain the Examiner’s rejection of claims 4
and 12 under 35 U.S.C. § 103(a) as unpatentable over Shelton.
DECISION
The decision of the Examiner to reject claims 1-18 is REVERSED.

REVERSED

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