Ex Parte Zemlok et al

Patent Trial and Appeal Board

Sep 24, 2013

11543424 (P.T.A.B. Sep. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MICHAEL ZEMLOK, PAUL A. SCIRICA, and
ROBERT J. DESANTIS
____________________

Appeal 2011-009736
Application 11/543,424
Technology Center 3700
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Before: JENNIFER D. BAHR, BENJAMIN D. M. WOOD, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

WOOD, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
16, 18, and 19. Claims 6-15 and 20-35 have been withdrawn and claims 1-5,
17, and 36-41 have been canceled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.
THE INVENTION
The claims are directed to a force-limiting handle mechanism for a
surgical instrument. Claim 16, reproduced below with emphasis added,
illustrates the claimed subject matter:
16. A handle assembly for use with a surgical
instrument having an operative distal end portion
comprising:
a handle housing;
a rack movably mounted within the handle
housing and connected to an operative distal end
portion;
a drive assembly positioned within the handle
housing, the drive assembly including a pawl
engageable with the rack;
a trigger pivotally mounted on the handle
housing; and
an adjustable force-limiting mechanism
releasably attached to a portion of the drive
assembly and mounted for movement within the
trigger, the adjustable force-limiting mechanism
releasably connecting the trigger to the drive
assembly, and wherein the adjustable force-
limiting mechanism includes a connecting rod
having a first end connected to a portion of the
drive assembly and a second end movably mounted
within the trigger.

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REFERENCES
Rodriguez
Kelders
Shelton
US 5,755,362
US 6,050,453
US 7,357,287 B2
May 26, 1998
Apr. 18, 2000
Apr. 15, 2008
REJECTION
Claims 16, 18, and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Shelton, Kelders, and Rodriguez. Ans. 4.
ANALYSIS
Sole independent claim 16 is drawn to a surgical-instrument handle
assembly comprising, inter alia, an “adjustable force-limiting mechanism”
that includes a “connecting rod having a first end connected to a portion of
the drive assembly and a second end movably mounted within the trigger.”
App. Br., Claims Appx. The Examiner found that Shelton discloses most of
claim 16’s structure, i.e., that (1) Shelton’s “assistance mechanism 19”
corresponds to the claimed force-limiting mechanism; (2) Shelton’s
horizontal brake link 344 corresponds to the claimed connecting rod; and (3)
distal end hole 342 of horizontal brake link 344, which is connected to firing
trigger axle 83, corresponds to the claimed “first end connected to a portion
of the drive assembly.” Ans. 4 (citing Shelton, col. 6, ll. 35-39; col. 13, l. 58
– col. 14, l. 6; figs. 20, 21).
Acknowledging that Shelton does not disclose that the second end of
horizontal brake link 344 is movably mounted within the trigger, the
Examiner found this limitation in Kelders. Specifically, the Examiner found
that Kelders teaches a handle assembly comprising a force-limiting
mechanism (Kelders’ adjustable transmission 14) that includes a connecting
rod (Kelders’ lever 16) having a first end 19 connected to a portion of the
drive assembly (Kelders’ thrust plate 27) and a second end 25 movably
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Application 11/543,424

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mounted within the trigger (Kelders’ trigger 4 with pressing element 21).
Ans. 4-5 (citing Kelders, col. 2, ll. 50-67; col. 3, ll. 1-23, 48-60; fig. 5). The
Examiner concluded that “[t]he substitution of one known element” –
Kelders’ lever 16 movably mounted within trigger 4 – “for another” –
Shelton’s horizontal brake link 344 –
would have been obvious to one of ordinary skill in the art at
the time of the invention since the substitution of the
connecting rod movably mounted within the trigger in Kelders
would have yielded predictable results, namely, a positive
adjustment of the force transmitted between the actuator and the
drive assembly, as desired by a user.
Ans. 5.1
Appellants argue, inter alia, that a person of ordinary skill in the art
would not have been motivated to combine Shelton and Kelders in the
proposed manner, because “Shelton is directed to a mechanism for adding to
the firing force generated by the handle mechanism,” whereas “Kelders is
directed to a handle that varies the force required for depressing the trigger.”
App. Br. 14. Appellants also argue that the combination would not result in
the claimed invention. Id.; Reply Br. 7-8.
The Examiner has not provided sufficient evidence or persuasive
argument to support the reason for obviousness. First, the Examiner has not
adequately explained why a person of ordinary skill in the art at the time of
the invention would have substituted a part of Kelders’ transmission

1 The Examiner also found that Shelton does not disclose the claimed pawl,
and relied on Rodriquez for this limitation, finding that a person of ordinary
skill in the art would have combined Rodriguez with Shelton in order to
releasably attach Shelton’s rack with its trigger in order to advance the rack
with the trigger. Ans. 5. Appellants do not dispute these findings, arguing
only that Rodriguez fails to cure alleged deficiencies noted in Shelton and
Kelders. App. Br. 15.
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assembly for a part of Shelton’s brake assembly. The two parts operate in
different ways to perform different purposes. Kelders’ lever 16 rotates about
a pivot point in response to a user squeezing trigger 4 to push against thrust
plate 27 and thereby drive piston rod 6 forward. Kelders, col. 2, ll. 56-65;
col. 3, ll. 50-60; fig. 5. Conversely, Shelton’s horizontal brake link 344
moves linearly to the rear of the handle assembly in response to a user
squeezing firing trigger 28, which in turn releases brake pad 368 from rack
135. Shelton, col. 14, ll. 13-22.
Second, the Examiner has not adequately explained how substituting
Kelders’ lever 16 for Shelton’s horizontal brake link 344 would have
predictably resulted in “a positive adjustment of the force transmitted
between the actuator and the drive assembly,” as the Examiner surmises.
The substituted part 344 plays no role in transmitting force between firing
trigger 28 and Shelton’s drive assembly. If anything, one would more likely
expect the substituting part to play the same role as the substituted part, i.e.,
to prevent the firing mechanism from firing until firing trigger 28 is
squeezed.
Finally, even if a person of ordinary skill in the art at the time of the
invention would have made the proposed substitution, the Examiner has not
adequately explained how the second end of Kelders’ lever 16 could be
“movably mounted” within Shelton’s trigger, as required by claim 16, and
still perform the necessary braking function performed by the substituted
part.
In sum, the Examiner’s reason for obviousness lacks a rational
underpinning, and we therefore do not sustain the Examiner’s rejection of
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claim 16, as well as its dependent claims 18 and 19, as obvious over Shelton,
Kelders, and Rodriguez.
DECISION
For the above reasons, the Examiner’s rejection of claims 16, 18, and
19 is reversed.
REVERSED

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