Anthony B. Ross et al.

Patent Trials and Appeals Board

Sep 24, 2019

13840267 - (D) (P.T.A.B. Sep. 24, 2019)

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.
13/840,267 03/15/2013 ANTHONY B. ROSS H-EB-00541 (203-9077) 2622
90039 7590 09/24/2019
Covidien LP
Attn: IP Legal
5920 Longbow Drive
Mail Stop A36
Boulder, CO 80301-3299
EXAMINER
MANNAN, MIKAIL A
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
09/24/2019 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):
docket@carterdeluca.com
rs.patents.two@medtronic.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte ANTHONY B. ROSS, DAVID J. VAN TOL,
and DAVID PRICE

Appeal 2018-009244
Application 13/840,267
Technology Center 3700

Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
LILAN REN, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1 and 3–25. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “Applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as the
assignee of the entire interest in this patent application, Covidien LP, which
is a subsidiary wholly-owned by Medtronic PLC. Appeal Br. 2.
Appeal 2018-009244
Application 13/840,267

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CLAIMED SUBJECT MATTER
The claims are directed to an ultrasonic surgical apparatus. See, e.g.,
claim 1. An embodiment of the apparatus is shown in Figure 2A. The
apparatus includes integrated transducer and generator (TAG) component
256 that drives waveguide 114 and ultimately drives blade 118. Spec. ¶ 56.
Figure 10 depicts the transducer of TAG 256 at 1018. Spec. ¶ 77. The
combination of transducer 1018, waveguide 114, and blade 118 make up a
first oscillating structure. Spec. ¶ 57. The apparatus also includes a second
oscillating structure, which is an accelerometer. Claim 1. The second
oscillating structure (accelerometer) is integrally formed within a portion of
the first oscillating structure. Spec. ¶ 57. According to the Specification,
accelerometer 150 is imbedded within blade 118, waveguide 114, or both.
Spec. ¶¶ 99, 101, 104, 107; Fig. 15.
Claim 1, reproduced below with reference numerals from Figures 2A,
10, and 15, with explanation from the Specification, and with the limitations
at issue highlighted in italics, is further illustrative of the claimed subject
matter:
1. An ultrasonic surgical apparatus comprising:
a first signal generator [Fig. 2A: generator portion of
(TAG) component 256] outputting a drive signal at a
predetermined frequency;
a first oscillating structure [Fig. 2A: combination of
transducer portion of TAG 256 (Fig. 10: transducer 1018),
waveguide 114, and blade 118], receiving the drive signal and
oscillating at the frequency of the drive signal;
a bridge circuit [Fig. 10: motional bridge 1008], detecting
the mechanical motion of the first oscillating structure
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[combination of 114, 118, 1018] and outputting a signal
representative of the mechanical motion;
a second oscillating structure [Fig. 15:150] integrally
formed within a portion of the first oscillating structure [114,
118, 1018], the second oscillating structure [150] outputting an
electrical signal; and
a microcontroller [Fig. 10:1004] receiving the signal
representative of the mechanical motion output by the bridge
circuit [1008] and the electrical signal output by the second
oscillating structure [150], the microcontroller [1004]
determining an instantaneous frequency at which the first
oscillating structure [114, 118, 1018] is oscillating based on the
received signal representative of the mechanical motion,
comparing the electrical signal from the second oscillating
structure [150] with a known signal value and determining the
temperature of the second oscillating structure [150] based on
the comparison,
wherein the second oscillating structure [150] is an
accelerometer.
Appeal Br. 13 (Claims Appendix)(emphasis added).
REJECTIONS
The Examiner maintains the following rejections:
A. The rejection of claims 1, 3, and 13–18 under 35 U.S.C. § 103(a)
as obvious over Houser2 in view of Smith,3 Northrop,4 and Houser-25;

2 Houser, US 2009/0036914 A1, published Feb. 5, 2009.
3 Smith et al., US 2010/0004669 A1, published Jan. 7, 2010.
4 Northrop, Noninvasive Instrumentation and Measurement in Medical
Diagnosis, p. 27 (Sept. 26, 2001).
5 Houser et al., US 2012/0116391 A1, published May 10, 2012 (“Houser-
2”).
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B. The rejection of claims 4, 5, and 12 under 35 U.S.C. § 103(a) as
obvious over Houser in view of Smith, Northrop, Houser-2, and
further in view of Dannaher6;
C. The rejection of claim 6 under 35 U.S.C. § 103(a) as obvious over
Houser in view of Smith, Northrop, Houser-2, and further in view
of Sinelnikov7;
D. The rejection of claims 7–11 under 35 U.S.C. § 103(a) as obvious
over Houser in view of Smith, Northrop, Houser-2, and further in
view of Witt8; and
E. The rejection of claims 19–25 under 35 U.S.C. § 103(a) as obvious
over Houser in view of Smith, Northrop, Houser-2, and further in
view of Vaitekunas.9
OPINION
Appellant does not argue any claim or rejection apart from the others.
Appeal Br. 5–10. We select claim 1 as representative for resolving the issues
on appeal.
There is no dispute that Houser discloses an ultrasonic surgical
apparatus including a second oscillating structure integrally formed within a
portion of a first oscillating structure. Compare Final Act. 4, with Appeal Br.
5–10. Houser discloses an acoustic sensor embedded within the end effector
of an ultrasonic surgical apparatus for measuring temperature. Houser ¶ 45.
Appellant’s arguments focus on the Examiner’s reliance on Northrop as

6 Dannaher et al., US 2013/0282038 A1, published Oct. 24, 2013.
7 Sinelnikov, US 2012/0143233 A1, published June 7, 2012.
8 Witt et al., US 6,454,781 B1, issued Sept. 24, 2002.
9 Vaitekunas, US 5,630,420, issued May 20, 1997.
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evidence that an accelerator is equivalent to an acoustic sensor for detecting
vibration and outputting a signal. Appeal Br. 5–10.
Appellant has not identified a reversible error in the Examiner’s
finding of equivalence.
Houser discloses that temperature may be monitored by measuring
resonant frequency in the end effector and discloses using an acoustic sensor
for the measurement. Houser ¶¶ 45, 106–107. In other words, Houser
discloses that acoustic sensors can be used to measure resonant frequency in
the ultrasonic range.
Northrop is directed to the detection of sounds emitted by the heart,
lungs, and other body parts. Northrop 27. Northrop explains that most of
these sounds have “acoustic spectral energy in the lowest range of human
hearing, as well as at audible low frequencies.” Northrop 27. According to
Northrop, “sound can be picked up electronically by an accelerometer, low-
frequency microphone, or laser Doppler microphone.” Northrop 27.
Northrop, thus, establishes that it was known in the art to use accelerometers
to sense acoustic vibrations. In other words, accelerometers were known
acoustic sensors.
Appellant contends that accelerometers and acoustic sensors are not
equivalents and cites definitions from IEEE. Appeal Br. 6. First, Appellant
has not provided copies of the IEEE documents that are cited. Thus, we do
not know in what context IEEE provided the definitions. Second, the
definitions do not dissuade us that accelerometers where known to have the
ability pick up sound vibrations. Northrop 27.
Appellant argues that Northrop says nothing of the general
equivalency of an acoustic sensor and an accelerometer. Appeal Br. 7.
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We do not agree that Northrop’s statement that “sound can be picked
up electronically by an accelerometer” is limited to picking up low-
frequency sound. The statement of Northrop must be considered in view of
the knowledge of those of ordinary skill in the art. The ordinary artisan
would have understood that accelerometers are, as Appellant’s state, inertial
sensors that can detect motion. Appeal Br. 6. This detection includes the
detection of the motion of vibrational waves. Northrop 27. This is not
limited to low-frequency sound waves, but any type of vibrational energy
waves.
Appellant further contends that “while an acoustic sensor within an
end effector may be configured to sense acoustics remote from vibrations of
an end effector, an accelerometer would not be able to sense such acoustics
because the accelerometer’s motion sensing mechanisms would likely be
saturated by the end effector vibrations.” Appeal Br. 8. Appellant provides
no evidence to support this contention. Moreover, Houser discloses
embedding an acoustic sensor in the end effector as required by the claim
and does not specify the type of acoustic sensor used. Houser ¶ 45. An
accelerometer can be used as an acoustic sensor and both sense vibrations.
Northrop 27. It is not clear why the vibration sensing mechanism of an
acoustic sensor would not be saturated, but the vibration sensing mechanism
of an accelerometer would be saturated.
Appellant also contends it would not have been obvious to a person
having ordinary skill in the art to combine Houser and Northrop because
Northrop is not analogous art. Appeal Br. 9–10.
“In order to rely on a reference as a basis for rejection of the
applicant’s invention, the reference must either be in the field of the
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applicant’s endeavor or, if not, then be reasonably pertinent to the particular
problem with which the inventor was concerned.” In re Oetiker, 977 F.2d
1443, 1447 (Fed. Cir. 1992).
Northrop is a book entitled “Noninvasive Instrumentation and
Measurement in Medical Diagnosis” and the Examiner has relied on the first
page of Chapter 3, which is entitled “Using Sounds from Within the Body.”
Appellant’s claims are directed to an ultrasonic surgical apparatus. As stated
by the Examiner, Northrop relates to medical instrumentation and is
concerned with measuring sound, i.e., acoustic vibration. Northrop is
directed to medical diagnostic tools while Appellant is concerned with
medical treatment (surgical) tools. The two fields are not exactly the same,
but they are related medical fields.
In deciding in which fields a person of ordinary skill would
reasonably be expected to look for a solution to the problem facing the
inventor, it is necessary to consider “the reality of the circumstances”—in
other words, common sense. Oetiker, at 1447 (quoting In re Wood, 599 F.2d
1032, 1036 (CCPA 1979)). The reality of the circumstances here is that
Appellant and Houser both seek to use a sensor to measure the frequency of
vibrations. Houser specifically teaches using an acoustic sensor, but does not
give any details about the sensor. Northrop provides evidence that
accelerometers were known for sensing acoustic vibrations. Northrop, thus,
provides evidence of the types of acoustic sensors that the ordinary artisan
would select and we cannot say that Northrop is non-analogous art under
these circumstances.
Appellant has not identified a reversible error in the Examiner’s
rejections.
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DECISION
The Examiner’s rejection is affirmed.
DECISION SUMMARY
Claims
Rejected
Basis  Affirmed Reversed
1, 3, and 13–18 § 103(a) Houser, Smith,
Northrop, and Houser-2 
1, 3, and 13–18
4, 5, and 12 § 103(a) Houser, Smith,
Northrop, Houser-2, and
Dannaher 
4, 5, and 12
6 § 103(a) Houser, Smith,
Northrop, Houser-2, and
Sinelnikov
6
7–11 § 103(a) Houser, Smith,
Northrop, Houser-2, and
Witt
7–11
19–25 § 103(a) Houser, Smith,
Northrop, Houser-2, and
Vaitekunas
19–25
Overall Outcome 1 and 3–25
FINALITY AND RESPONSE
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)(1)(iv).
AFFIRMED