15011018 (P.T.A.B. Dec. 20, 2018)

Ex Parte Orban III et al

Patent Trial and Appeal BoardDec 20, 2018

15011018 (P.T.A.B. Dec. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 15/011,018 01/29/2016 51947 7590 12/25/2018 Patent Dept. - Intuitive Surgical Operations, Inc. 1020 Kifer Road Sunnyvale, CA 94086 FIRST NAMED INVENTOR Joseph P. Orban III 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. ISRG01500Dl/US 9020 EXAMINER GIULIANI, THOMAS ANTHONY ART UNIT PAPER NUMBER 3794 NOTIFICATION DATE DELIVERY MODE 12/25/2018 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): dana.ru bens tein @intusurg.com patent.group@intusurg.com natalie.hood@intusurg.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSEPH P. ORBAN III, AMYE. KERDOK, and HUBERT STEIN Appeal2018-000950 Application 15/011,018 1 Technology Center 3700 Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and SCOTT C. MOORE, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL The Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 1-13. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). We AFFIRM-IN-PART. 1 "The real party in interest is Intuitive Surgical Operations, Inc." Appeal Br. 1. Appeal2018-000950 Application 15/011,018 STATEMENT OF THE CASE Claimed Subject Matter Claim 1, the sole independent claim, is representative of the subject matter on appeal and is reproduced below. 1. A vessel sealing instrument, comprising: a first jaw including a metal portion having a first face with a raised portion and a recessed portion; a second jaw including a metal portion having a second face; an actuating mechanism coupled to the first and second jaws and operable to bring the first face and the second face together and to apply sealing pressure to tissue between the first and second jaw, wherein shapes of the first face and the second face limit the sealing pressure to an area of the raised portion; and an electrical system coupled to drive an electrical current between the first jaw and the second jaw. Rejections I. Claims 3 and 4 are rejected under 35 U.S.C. Â§ 112, second paragraph, as indefinite. II. Claims 1--4, 7, 11, and 12 are rejected under 35 U.S.C. Â§ I02(b) as anticipated by Johnson et al. (US 2006/0271038 Al, pub. Nov. 30, 2006) (hereinafter "Johnson"). III. Claims 5 and 6 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Johnson and Morley et al. (US 2007/0123855 Al, pub. May 31, 2007) (hereinafter "Morley"). IV. Claim 8 is rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Johnson and Kanehira et al. (US 7,329,257 B2, iss. Feb. 12, 2008) (hereinafter "Kanehira"). 2 Appeal2018-000950 Application 15/011,018 V. Claims 9 and 10 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Johnson and Javna et al. (US 3,367,337, iss. Feb. 6, 1968) (hereinafter "Javna"). VI. Claim 13 is rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Johnson and Dycus et al. (US 2003/0018331 Al, pub. Jan. 23, 2003) (hereinafter "Dycus"). ANALYSIS Rejection I. Indefiniteness The Appellants do not contest the Examiner's rejection of claims 3 and 4 under 35 U.S.C. Â§ 112, second paragraph, as indefinite. Appeal Br. 3. Thus, we summarily sustain this ground of rejection. Rejection II. Anticipation Independent claim 1 calls for a vessel sealing instrument that includes a first jaw having a first face with a raised portion and a recessed portion and a second jaw having a second face, wherein shapes of the first face and the second face limit the sealing pressure to an area of the raised portion. See Appeal Br., Claims App. In other words, claim 1 requires that the recessed portion of the first face does not apply a sealing pressure. The foregoing requirement is clear from the claim as written and is consistent with the Specification. See Spec. Fig. 2A, ,r 21 ("The lower elevation of recessed portion 232B keeps recessed portion 232B away from the tissue of the vessel being sealed, so that only the area of raised portion 232A applies the sealing pressure to the vessel." ( emphasis added)); see also id. ,r 23 ("Recessed portion 232B can be recessed by about 0.3 to 0.5 mm relative to raised 3 Appeal2018-000950 Application 15/011,018 portion 232A if jaw 234 has a matching recessed portion or up to 1 mm or more if jaw 234 does not have a matching recessed portion."). The Examiner finds that claim 1 reads on Johnson's vessel sealing instrument as shown in Figures IA and 3C. Final Act. 3. The Examiner finds that the claimed first jaw and second jaw read on opposing jaw members 110 and 120, respectively. Id.; see Johnson ,r 55. The Examiner relies on Johnson's Figure 3C to show a jaw having a first face with a raised portion (i.e., cutting elements 427 a) and a recessed portion (i.e., sealing surfaces 412a, 412b). Final Act. 3; see Johnson ,r 78. The Appellants argue that the Examiner erred in finding that Johnson discloses the "shapes of the first face and the second face limit the sealing pressure to an area of the raised portion," as recited in claim 1, because the sealing portions 412a, 412b of Johnson's jaws also apply sealing pressure. See Appeal Br. 4, 5. The Appellants' argument is persuasive. In response, the Examiner explains that sealing portions 412a, 412b apply a lower sealing pressure than cutting elements 427 a. Ans. 3. The Examiner's position is flawed as a lower sealing pressure still applies a sealing pressure. In other words, because sealing surfaces 412a, 412b apply a sealing pressure they do not correspond to the claimed recessed portion of the first face, which does not apply a sealing pressure. See Appeal Br. 3 ("Johnson ... does not limit sealing pressure to the area of the raised portion of a jaw."). Thus, we do not sustain the Examiner's rejection of independent claim 1 or dependent claims 2--4, 7, 11, and 12 as anticipated by Johnson. 4 Appeal2018-000950 Application 15/011,018 Rejections III-VI. Obviousness The remaining rejections based on Johnson in combination with Morley, Kanehira, Javna, or Dycus rely on the same inadequately supported finding discussed above. The inadequately supported finding is not cured by the additional findings and/or reasoning of the remaining rejections. Thus, we do not sustain the rejections of claims 5, 6, 8-10, and 13. DECISION We SUMMARILY AFFIRM the Examiner's decision rejecting claims 3--4 under 35 U.S.C. Â§ 112, second paragraph, as indefinite (Rejection I). We REVERSE the Examiner's decision rejecting claims 1--4, 7, 11, and 12 under 35 U.S.C. Â§ 102(b) (Rejection II) and claims 5, 6, 8-10, and 13 under 35 U.S.C. Â§ 103(a) (Rejections III-VI). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED-IN-PART 5