Ex Parte ROSS et alDownload PDFPatent Trials and Appeals BoardJun 14, 201913840432 - (D) (P.T.A.B. Jun. 14, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/840,432 90039 7590 Covidien LP Attn: IP Legal 5920 Longbow Drive Mail Stop A36 03/15/2013 06/18/2019 Boulder, CO 80301-3299 FIRST NAMED INVENTOR ANTHONY B. ROSS 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-EB-00542 (203-9078) 7669 EXAMINER LE,TOANM ART UNIT PAPER NUMBER 2864 NOTIFICATION DATE DELIVERY MODE 06/18/2019 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): rs. patents. two@medtronic.com docket@carterdeluca.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. VANTOL, and DAVID PRICE Appeal2018-006148 Application 13/840,432 Technology Center 2800 Before CATHERINE Q. TIMM, BEYERL YA. FRANKLIN, and LILAN REN, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL 1 1 In explaining our Decision, we cite to the Specification of March 15, 2013 (Spec.), Final Office Action of October 26, 2016 (Final), Appeal Brief of April 24, 2017 (Appeal Br.), Examiner's Answer of March 22, 2018 (Ans.), and Reply Brief of May 22, 2018 (Reply Br.). Appeal 208-006148 Application 13/840,432 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § I34(a), Appellant2 appeals from the Examiner's decision to reject claims 1-10 under 35 U.S.C. § I02(e) as anticipated by Boudreaux3. 4 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The claims are directed to an ultrasonic surgical apparatus (see, e.g., claim 1) and a method of determining a type of material an ultrasonic apparatus is contacting (see, e.g., claim 6). Appellant does not argue any claim apart from the others. We select claim 1 as representative and reproduce it below with the claim limitations most at issue highlighted: 1. An ultrasonic surgical apparatus comprising: a signal generator outputting a drive signal having a frequency; an oscillating structure, receiving the drive signal and oscillating at the frequency of the drive signal; a bridge circuit, detecting a mechanical motion of the oscillating structure and outputting a signal representative of the mechanical motion; and a microcontroller receiving the signal output by the bridge circuit, determining an instantaneous frequency at which the oscillating structure is oscillating based on the received signal, determining a frequency adjustment necessary to maintain the oscillating structure oscillating at a resonance 2 Covidien LP, which is subsidiary wholly-owned by Medtronic PLC, is the applicant under 37 C.F.R. § 1.46, and is identified as the real party in interest. Appeal Br. 2. 3 Boudreaux et al., US 2013/0289591 Al, published Oct. 31, 2013. 4 The Examiner withdrew the rejection of claims 6--9 under 35 U.S.C. § 101. Ans. 2. Thus, the 35 U.S.C. § 101 rejection is not on appeal. 2 Appeal 208-006148 Application 13/840,432 frequency of the oscillating structure, determining a quality (Q value) of the received signal, and determining a type of material contacting the oscillating structure based on the determined Q value. Appeal Br. 17 (claims appendix). OPINION At the heart of the dispute between the Examiner and Appellant is the interpretation of "Q value." Compare Final 3, and Ans. 5-10, with Appeal Br. 12-15, and Reply Br. 2-5. The Examiner finds that the Specification defines the Q value as a measure of the quality of the resonance frequency. Ans. 6 ( citing Figs 16- 17; Spec. ,r,r 107-108). Appellant contends that the Examiner's definition is accurate, but incomplete. Reply Br. 3. According to Appellant, "[a]s previously laid out in the Appeal Brief, the term 'Q value' has a more specific meaning." Id. We agree with the Examiner's interpretation of "Q value." First, we note that the Appeal Brief does not clearly state a definition. Instead, in the Appeal Brief, Appellant disagrees with the Examiner's finding that Boudreaux discloses all the elements of claim 1, reproduces the microcontroller limitation with the last determining step underlined, and states that: For example, the specification as originally filed states that "Q [value] may be derived from a plot by measuring the resonant frequency . . . [ and] essentially describes the 'peakiness' of the plot" (if [000109]; emphasis added) and that "the Q will be different for wet as compared to dry tissue; stiff structures such as bone create a different Q that softer structures such as blood 3 Appeal 208-006148 Application 13/840,432 vessels and connective tissue" (i-f [000106]). Thus, based on the determined Q value, a type of material contacting the oscillating structure can be determined. Boudreaux fails to disclose at least the above-recited features of independent claim 1. Appeal Br. 12-13. It is not clear from the above discussion what definition Appellant is advancing. Second, to the extent we can glean a definition from the Appeal Brief, this definition is not supported. It appears that Appellant attempts to equate Q value with the "peakiness" of a plot, but the words "for example" and "may be" used in the Specification tend to indicate that the Q value is not so limited. Third, the portions of the Specification Appellant reproduces do not provide a definition; they merely discuss a method of deriving the Q value and its correlation to the material contacting the oscillating structure. Spec. ,r,r 106, 109. Fourth, and most important, the Specification specifically states that "Q is a measure of the quality of the resonance of a system." Spec. ,r 106. This definition of "Q" corresponds to the use of "Q value" in claim 1, which itself intrinsically defines "Q value" by placing the term in parentheses after the word quality. See claim 1 ("determining a quality (Q value) of the received signal."). We decline to limit "Q value" to Q values derived from the plot described in the written description. Spec. ,r 109. To do so would amount to inserting a limitation from the Specification into the claims, which would be improper. Although claims are to be interpreted in light of the specification, limitations from the specification are not to be read into the claims. See In 4 Appeal 208-006148 Application 13/840,432 re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). We determine that "Q value" is broad enough to encompass any measure of the quality of the received signal. The Examiner finds that Boudreaux describes "determining a quality (Q value) of the received signal, and determining a type of material (e.g., hard tissue/change in tissue state/tissue debris) contacting the oscillating structure based on the determined Q value (e.g., tissue algorithm[)]." Final 3--4, citing Boudreaux, Figs. 20-21, ,r,r 295, 297-306. Appellant argues that Boudreaux's "Q factor" is different from Appellant's "Q value." Appeal Br. 14--15. This argument is not persuasive because it does not address the Examiner's finding. The Examiner's finding depends on Boudreaux's teaching of the algorithm described in paragraphs 295-306. The paragraphs cited by the Examiner disclose a tissue algorithm that performs the determining steps of claim 1. Boudreaux determines a quality ( Q value) of the signal. Boudreaux ,r 2 99 ( disclosing that the algorithm "relies on the monitoring of electrical drive signals, especially those correlating to the resonant frequency of the drive signal."). Boudreaux explains that the resonance of the blade correlates with its temperature. Boudreaux ,r,r 295, 297. As the temperature rises, the blade stiffness changes and, thus, the resonance changes. Boudreaux ,r 299. A generator tracks this resonance change. Id. The change in temperature and, thus, resonance corresponds to a number of different clinical scenarios based on the material the blade is contacting such as when the blade is activated against the clamp arm (minimal-to-no-tissue, tissue debris or fluid is against the blade) or where rapid heating occurs when the blade is activated against 5 Appeal 208-006148 Application 13/840,432 bone or other hard materials or excessive force is used to couple the blade to tissue targets. Boudreaux ,r 295. Thus, Boudreaux is describing a step of "determining a type of material contacting the oscillating structure based on the determined Q value," i.e., a quality of the received resonance signal, as required by claim 1. Appellant has not identified a reversible error in the Examiner's interpretation of "Q value" or the finding that Boudreaux teaches the determining steps. 1-10 CONCLUSION In summary: § 102(e) Boudreaux DECISION The Examiner's decision is affirmed. 1-10 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). AFFIRMED 6 Copy with citationCopy as parenthetical citation