Ex Parte Wright et al

Board of Patent Appeals and Interferences

Jul 22, 2009

10835038 (B.P.A.I. Jul. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DAVID WALTER WRIGHT and LEE WILLIAM TRAVIS
____________________

Appeal 2009-002316
Application 10/835,038
Technology Center 3700
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Decided:1 July 22, 2009
____________________

Before WILLIAM F. PATE III, JOHN C. KERINS and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304 (2008), begins to run from the
Decided Date shown on this page of the decision. The time period does not
run from the Mail Date (paper delivery) or the Notification Date (electronic
delivery).

Appeal 2009-002316
Application 10/835,038

2
STATEMENT OF THE CASE 1
The Appellants appeal under 35 U.S.C. § 134 (2002) from the 2
Examiner’s decision finally rejecting claims 1-5 under 35 U.S.C. § 102(b) 3
(2002) as being anticipated by Donofrio (US 6,945,981 B2, issued Sep. 20, 4
2005). We have jurisdiction under 35 U.S.C. § 6(b) (2002). 5
We AFFIRM. 6
Claim 1 is the sole independent claim on appeal: 7
8
1. A tactile feedback fingertip device for a 9
surgical handpiece comprising: 10
a surgical handpiece for performing a 11
surgical function; and 12
a fingertip device attached to the handpiece 13
and for connection to a control console for 14
providing tactile feedback to a user of a surgical 15
function or parameter. 16
17
ISSUES 18
The Examiner objects to claims 1-5. The Appellants seek to appeal 19
this objection. (App. Br. 3). The Board reviews only “adverse decisions of 20
examiners upon applications for patent,” § 6(b), that is, claim rejections. 21
The Board does not review objections to claims or exercise supervisory 22
authority over examiners. The Appellant may seek review of a claim 23
objection only by petition. 24
The Appellants argue claims 1-5 together for purposes of the rejection 25
of the claims under § 103(a). Independent claim 1 is representative of the 26
group. See 37 C.F.R. § 41.37(c)(1)(vii) (2008). 27
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Application 10/835,038

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This appeal turns on one issue: 1
Have the Appellants shown that the Examiner erred in 2
finding that a switch described by Donofrio is a fingertip device 3
attached to the handpiece for providing tactile feedback to a 4
user of a surgical function or parameter? (See App. Br. 3-4; 5
Reply Br. 2). 6
7
FINDINGS OF FACT 8
The record supports the following findings of fact (“FF”) by a 9
preponderance of the evidence. 10
1. Donofrio describes a system including a generator console 510 11
and a handpiece 530. Donofrio’s handpiece 530 includes a sharp scalpel 12
blade 532. (Donofrio, col. 3, ll. 35-41). 13
2. Donofrio also describes a distally located switch 534 attached 14
to the handpiece 530. (Donofrio, col. 3, ll. 42-46). 15
3. Dinofrio describes the switch 534 as controlling a supply of 16
ultrasonic electrical current from the generator console 510 to the handpiece 17
530. (Donofrio, col. 3, ll. 35-46). This description implies that the switch 18
534 is electrically connected to the console 510. 19
4. Donofrio describes the handpiece 530 as including a 20
piezoelectric transducer for causing the scalpel blade 532 to vibrate in the 21
longitudinal direction at an ultrasonic frequency rate with the transducer. 22
(Donofrio, col. 4, ll. 22-26 and 34-36). Donofrio’s handpiece 530 can 23
perform simultaneous dissection and cauterization of tissue. (Donofrio, col. 24
3, ll. 41-42). 25
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5. Dissection and cauterization of tissue are surgical functions. 1
6. Donofrio describes one embodiment of the switch 534 as being 2
a ring switch 60a. The ring switch 60a includes a relatively flexible center 3
ring 710 sandwiched between two relatively flexible outer rings 711, 712 4
and two relatively rigid rings 713, 714 positioned between the outer rings 5
711, 712 and the center ring 710. The ring switch 60a further includes two 6
piezoelectric rings 715A, 715B fixed to the two sides of the bottom of the 7
center ring 710. The handpiece 530 (62 in Fig. 7i) stimulates the 8
piezoelectric rings 715A, 715B using alternating electric current and 9
monitors the power or resonant frequency needed to maintain a given 10
displacement of the piezoelectric rings 715A, 715B. The application of 11
pressure to the center ring 710 alters the responses of the piezoelectric rings 12
to stimulus by the alternating current. By monitoring the change in the 13
responses of the piezoelectric rings 715A, 715B to the stimulus, the switch 14
60a detects the magnitude of pressure applied to the center ring 710. 15
(Donofrio, col. 15, l. 52 – col. 16, l. 48 and Fig. 7i). 16
7. In this manner, the switch 534 (60a) controls the power or 17
speed of operation of the handpiece 530 (62) depending on the amount of 18
pressure applied to the center ring 710. (Donofrio, col. 16, ll. 19-28). 19
8. The ring structure 710-14 includes relatively rigid rings 713, 20
714 and will exert a reaction force on a user’s fingertip which will tend to 21
increase as an increasing amount of pressure is applied to the center ring 22
710. Therefore, the switch 534 (60a) provides tactile feedback to a user 23
which will tend to increase as the power or speed of operation of the 24
handpiece increases. 25
Appeal 2009-002316
Application 10/835,038

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PRINCIPLES OF LAW 1
A claim under examination is given its broadest reasonable 2
interpretation consistent with the underlying specification. In re American 3
Acad. of Science Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In the 4
absence of an express definition of a claim term in the specification, the 5
claim term is given its broadest reasonable meaning in its ordinary usage as 6
the term would be understood by one of ordinary skill in the art. In re ICON 7
Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In re Morris, 8
127 F.3d 1048, 1054 (Fed. Cir. 1997). Properties of preferred embodiments 9
described in the specification which are not recited in a claim do not limit 10
the reasonable scope of the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 11
F.3d 1364, 1369 (Fed. Cir. 2003). 12
13
ANALYSIS 14
Donofrio discloses a surgical handpiece (FF 1) which performs a 15
surgical function (FF 4 and 5). Donofrio also discloses a fingertip device, 16
namely, a switch 534 (60a), attached to the handpiece and connected to a 17
control console. (FF 2 and 3). The switch provides tactile feedback to a 18
user in the form of a reaction force on a user’s fingertip indicative of the 19
power or speed of operation of the handpiece. (FF 8). 20
The power or speed of operation of the handpiece 530 (62) is a 21
“surgical parameter” as that term is used in representative claim 1. The 22
Appellants do not identify any special definition of the term “surgical 23
parameter” in the Specification. Although the Appellants provide examples 24
of surgical parameters in the Specification, the Specification itself indicates 25
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that the list of examples is not exclusive. (See Spec. 3, ¶ 0007). The 1
ordinary usage of the term “surgical parameter” is sufficiently broad to 2
include a parameter relating to a surgical function. Both power and speed 3
are parameters. Both the power and the speed of the handpiece 530 (62) 4
relate to the performance of surgical functions, namely, dissecting and 5
cauterizing tissue. Therefore, Donfrio’s switch 534 (60a) provides tactile 6
feedback to a user of a surgical parameter. 7
Donofrio’s disclosure that the switch 534 (60a) controls the power 8
and speed of operation of the handpiece 530 (62) (see FF 3 and 7) does not 9
prevent the switch from being a “fingertip device” as recited in 10
representative claim 1. The switch 534 is a fingertip device in the sense that 11
the switch is capable of applying a reaction force to a user’s fingertip. (See 12
FF 8). Claim 1 does not limit the recited “fingertip device” so as to exclude 13
devices capable of performing control functions in addition to providing 14
tactile feedback. The Appellants’ identification of modes of tactile feedback 15
other than pressure in the examples provided in the Specification does not 16
imply that the term “tactile feedback” is limited to those modes of tactile 17
feedback to the exclusion of the feedback provided by Donofrio’s switch 18
534 (60a). 19
20
CONCLUSIONS 21
The Appellants have not shown that the Examiner erred in finding that 22
the switch 534 (60a) described by Donofrio is a fingertip device attached to 23
the handpiece 530 (62) for providing tactile feedback to a user of a surgical 24
function or parameter. Therefore, the Appellants have not shown that the 25
Appeal 2009-002316
Application 10/835,038

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Examiner erred in rejecting representative claim 1, along with grouped 1
claims 2-5, under § 102(b) as being anticipated by Donofrio. 2
3
DECISION 4
We AFFIRM the Examiner’s decision rejecting claims 1-5. 5
No time period for taking any subsequent action in connection with 6
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 7
§ 1.136(a)(1)(iv) (2007). 8
9
10
AFFIRMED 11
12
Klh 13
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