Ex Parte Viola

Patent Trial and Appeal Board

Aug 19, 2016

13281572 (P.T.A.B. Aug. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/281,572 10/26/2011
50855 7590 08/23/2016
Covidien LP
555 Long Wharf Drive
Mail Stop SN-I, Legal Department
New Haven, CT 06511
FIRST NAMED INVENTOR
Frank J. Viola
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.
H-US-02511 (203-7602) 1064
EXAMINER
JENNESS, NATHAN JAY
ART UNIT PAPER NUMBER
3769
NOTIFICATION DATE DELIVERY MODE
08/23/2016 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):
mail@cdfslaw.com
SurgicalUS@covidien.com
medtronic_mitg-si_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK J. VIOLA
Appeal2014-008702
Application 13/281,572
Technology Center 3700
Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA,
Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Frank J. Viola (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner's final decision rejecting claims 1-5, 7-16, 18, and 20-23. We
have jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
THE INVENTION
Appellant's invention relates to energy sources for use with surgical
instrument accessories. Spec. para. 1.
Appeal2014-008702
Application 13/281,572
Claims 1, 13, and 16 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A surgical instrument system, comprising:
a surgical instrument including:
a housing;
a shaft extending from the housing; and
a tool assembly operably couplable to the shaft;
an accessory that selectively snap-fits to the shaft of the
surgical instrument while the tool assembly of the surgical
instrument is coupled to the shaft; and
an energy storage device operably coupled to the
accessory when the accessory is operably coupled to the
surgical instrument such that the energy storage device powers
the accessory, the energy storage device removably positionable
within the surgical instrument.
THE REJECTIONS
The Examiner has rejected:
(i) claims 1, 2, 4, 5, 7-10, 16, 20, 21, and 23 under 35 U.S.C.
§ 103(a) as being unpatentable over Zemlok (US 2009/0090763 Al,
published Apr. 9, 2009), Blumenkranz (US 2009/0157092 Al, published
June 18, 2009), and Huo (US 6,464,999 B 1, issued Oct. 15, 2002); 1
1 In the Final Action, the Examiner had included Moskowitz (US
2007 /0167678 Al, pub. July 19, 2007) in each of the rejections. See Final
Act. 3-10 (mailed December 19, 2013). However, in the Examiner's
Answer, the Examiner removes Moskowitz from each of the rejections, in
order to "clarify the rejections and better address the Appellant's
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(ii) claim 3 under 35 U.S.C. § 103(a) as being unpatentable over
Zemlok, Blumenkranz, Huo, and Fletcher (US 3,770,903, issued Nov. 6,
1973);
(iii) claim 9 under 35 U.S.C. § 103(a) as being unpatentable over
Zemlok, Blumenkranz, Huo, and Irion (US 2002/0049367 Al, published
Apr. 25, 2002);
(iv) claims 11 and 12 under 35 U.S.C. § 103(a) as being unpatentable
over Zemlok, Blumenkranz, Huo, and Karasiuk (US 2009/0062815 Al,
published Mar. 5, 2009); and
(v) claims 13-15 and 22 under 35 U.S.C. § 103(a) as being
unpatentable over Zemlok, Blumenkranz, Huo, and Karasiuk.
The Examiner has also provisionally rejected claims 1, 2, 3, 5, 7, and
9 under the judicially-created doctrine of obviousness-type double patenting
as being unpatentable over claims 1, 4, 7, 8, and 10-12 of copending
Application 13/281,569 in view of Zemlok. Final Act. 11-12. Appellant has
not traversed the merits of this rejection. Since the rejection is provisional
and no patent has issued from the cited application, we conclude that it is
premature for the Board to address the rejection, and thus do not reach the
issue presented by the rejection. See Ex parte Monda, 95 USPQ2d 1884
(BPAI 2010).
Claim 18, which depends from claim 16, is not included in any of the
above rejections in either the heading or the body of the rejection. See Ans.
arguments," and because the Examiner considers that "the teachings of
Moskowitz are duplicative of the teachings of Blumenkranz." See Ans. 2.
Thus, Moskowitz is not part of any rejection, and therefore, we do not
discuss Moskowitz in our analysis.
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Application 13/281,572
2-8. As such, no rejection of claim 18 is before us, and thus we do not
address claim 18 as part of this appeal.
ANALYSIS
Claims 1, 2, 4, 5, 7-10, 16, 20, 21, and 23--0bviousness--
Zemlok/Blumenkranz/Huo
Appellant argues claims 1, 2, 4, 5, 7-10, 16, 20, 21, and 23 as a group.
Appeal Br. 7-13. We take claim 1 as representative of this group and claims
2, 4, 5, 7-10, 16, 20, 21, and 23 stand or fall with claim 1.
The Examiner finds that Zemlok discloses most of the limitations of
independent claim 1 including a surgical instrument 10 having a housing
110, a shaft 140 extending from the housing, a tool assembly 160 coupled to
the shaft, and an energy storage device/energy source, but that Zemlok does
not disclose a snap-fit accessory operably coupled to an energy storage
device that powers the accessory. Ans. 2-3 (citing Zemlok; paras. 48;
89-91, 173 and Figs. 1, 4, 24, and 34 ). The Examiner relies on
Blumenkranz as teaching "a slip-on accessory (sensor)." Id. at 3 (citing
Blumenkranz, para. 54). The Examiner concludes that it would have been
obvious to modify the shaft of Zemlok to include an electrical slip-on
accessory, as disclosed by Blumenkranz, "in order to predictably provide
energy to sensors/accessories not having their own energy sources and to
permit the use of higher value electronic accessories with lower cost
instruments of limited life cycle." Id. at 3--4 (citing Blumenkranz, para. 54).
Appellant argues that Zemlok already discloses a replaceable and/or
reusable loading unit and that "the proposed combination of the devices of
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Application 13/281,572
Zemlok and Blumenkranz is based upon impermissible hindsight." Br. 8-9.
Appellant argues that the "proposed modification to attach Blumenkranz's
force sensor apparatus to Zemlok's device is a proposed modification
amounting to extra work and greater expense for no apparent reason and
would not have been expected to confer any particular desirable property on
the final product." Id. at 1 0.
The Examiner responds that Zemlok teaches a
removable/replaceable end effector and that Blumenkranz teaches a
removable/detachable accessory, which "are mutually exclusive of one
another i.e. having a removable end effector is different than having a
removable accessory/sensor." Ans. 10.
Although Appellant's point that Zemlok already teaches a replaceable
end effector is well taken, notwithstanding, the Examiner proposes to
modify the surgical instrument shaft of Zemlok '763 "to include electrical
contacts on the instrument shaft and a slip-on accessory" based on the
teachings of Blumenkranz. Ans. 3. Blumenkranz discloses that the sensor
(accessory) may be a modular component that is coupled between the shaft
and end portion (end effector), or may be a slip-on module that mates with
contacts of the shaft. Blumenkranz, para. 54; Fig. 3B. As such, the slip-on
sensor (accessory) of Blumenkranz would be used in conjunction with an
end effector that might itself be removable. As noted above, the Examiner
provides a reason for making such a modification that is supported by
rational underpinnings, and Appellant's conclusory argument that no
"particular desirable property" would result, does not apprise us of error in
the Examiner's position.
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Application 13/281,572
Appellant similarly argues that because "each of the cited references
seek[s] to solve different problems," there is no "apparent reason to
combine" the teachings of the references, "nor would a person of ordinary
skill in the art have known how to do so without requiring significant
modifications to the underlying instruments not disclosed, taught, or
suggested" by the references. 2 Br. 12. Appellant thus asserts that the
Examiner's "proposed combination of all of these references is
unpredictable without any reasonable expectation of success, and thus, the
prior art cannot be combined as proposed by the Examiner."
Appellant further maintains that "the reasoning relied upon in the Final
Office Action to allegedly support the combination of' references "is not
supported by the cited references," and therefore, again maintains that the
rejection "is improper for impermissibly relying on hindsight to suggest the
recited features of independent claims 1 and 16." Id. at 12-13.
The Examiner responds to this argument by pointing out that
"Blumenkranz provides motivation to configure the shaft of Zemlok to
include electrical contacts for powering sensors, and Huo teaches a
particular type of snap-fit coupling mechanism for coupling a component to
a surgical instrument shaft." Ans. 10.
Although we appreciate that the isolated teachings of each of the
references address different problems, the references are each in the field of
surgical instruments and the use of the disclosed devices in various surgical
2 In this line of argument, Appellant also includes reference to Huo, relied on
by the Examiner for its disclosure of snap-fitting an article to a shaft of a
surgical instrument. See Final Act. 4. Appellant does not contest the
Examiner's finding. Br., passim.
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Application 13/281,572
procedures, and thus would logically have been considered by a person
looking to improve a surgical instrument that is used in other surgical
procedures. Regarding the alleged unpredictability and absence of a
reasonable chance of success, Appellants do not state with any particularity
why, based on the teachings of Blumenkranz, one of ordinary skill would
not know how to implement this type of configuration for another element
(accessory) and would not reasonably expect it to function in the same
manner. 3
Likewise, given that the coupler of Huo performs the same function as
the connecting ring of Blumenkranz's slip-on module, namely, connecting
an accessory to a shaft of a surgical instrument, the Examiner has a sound
basis for finding that the coupler of Huo would have been a suitable
substitute for connecting ring of Blumenkranz. See Ans. 4 and 10. Hence,
because the Examiner has articulated that the coupler of Huo is being
substituted for the coupler of Blumenkranz as they perform similar functions
and because Appellant has not provided persuasive reasoning showing that
the Examiner's substitution would have been either beyond the level of
ordinary skill in the art or would produce unpredictable results, we are not
persuaded that the Examiner's position is in error.
Furthermore, the Examiner's rationale for combining the teachings of
the references in the manner proposed appears to be grounded in teachings
present in the references themselves (see Answer 10) and knowledge which
was within the level of ordinary skill at the time the claimed invention was
3 Zemlok similarly uses a contact/conductive ring type configuration to
provide power to an external component (see Zemlok, paragraph 72; Fig. 4),
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made, and not on Appellant's disclosure alone. Thus, we do not agree that
the Examiner's rejection is based on impermissible hindsight.
Accordingly, for the reasons discussed above, the rejection of claim 1
as unpatentable over Zemlok, Blumenkranz, and Huo is sustained, with
claims 2, 4, 5, 7-10, 16, 20, 21, and 23, falling with claim 1.
Claim 3--0bviousness--Zemlok/Blumenkranz/Huo/Fletcher
Claim 9--0bviousness--Zemlok/Blumenkranz/Huo/Irion
Claims 11 and 12--0bviousness--Zemlok/Blumenkranz/Huo/Karasiuk
Appellant does not separately argue claims 3, 9, 11, and 12 and rather,
asserts that, "Fletcher, Irion, and/or Karasiuk fail to cure the above noted
deficiencies .... with respect to the rejection of independent claim 1." Br.
14--15. For the same reasons as discussed for claim 1, we likewise sustain
the rejection of claim 3 as being unpatentable over Zemlok, Blumenkranz,
Huo, and Fletcher, the rejection of claim 9 as being unpatentable over
Zemlok, Blumenkranz, Huo, and Irion, and the rejection of claims 11 and 12
as being unpatentable over Zemlok, Blumenkranz, Huo, and Karasiuk.
Claims 13-15 and 22--0bviousness--Zemlok/Blumenkranz/Huo/Karasiuk
As with claims 1 and 16, Appellant takes issue with the Examiner's
reason to combine the references, and asserts that the references are "not
combinable with Zemlok with respect to independent claim 13," and that
"Karasiuk does not cure the deficiencies." Br. 15-16. For the reasons
discussed supra, Appellant does not apprise us of Examiner error with
respect to the Examiner's rationale for combining the teachings of the
references. Thus, for the same reasons, the rejection of independent claim
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Application 13/281,572
13 as unpatentable over Zemlok in view of Blumenkranz, Huo, and Karasiuk
is sustained. Appellant does not separately argue claims 14, 15, and 22, and
therefore, the rejection of claims 14, 15, and 22, which depend from claim
13, is likewise sustained.
DECISION
The rejections of claims 1-5, 7-16, and 20-23 under 35 U.S.C.
§ 103(a) are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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