David W. Weir et al.

Patent Trials and Appeals Board

Jan 24, 2020

13662385 - (D) (P.T.A.B. Jan. 24, 2020)

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.
13/662,385 10/26/2012 David W. Weir ISRG03830/US 6313
160522 7590 01/24/2020
Intuitive Surgical /Kilpatrick Townsend & Stockton
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
HIBBERT-COPELAND, MARY CATHERINE
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
01/24/2020 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
patent.group@intusurg.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID W. WEIR, KEVIN DURANT,
WILLIAM BURBANK, and PATRICK FLANAGAN
____________

Appeal 2018-005829
Application 13/662,385
Technology Center 3700
____________

Before WILLIAM A. CAPP, GEORGE R. HOSKINS, and
NATHAN A. ENGELS, Administrative Patent Judges.

HOSKINS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6, 9, and 24–33 in this application.2
The Board has jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Intuitive Surgical Operations, Inc., as
the real party in interest. Appeal Br. 3.
2 Claims 7, 8, and 10–23 are canceled. See Appeal Br. 11 (Claims App.).
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CLAIMED SUBJECT MATTER
Claim 1 illustrates the claimed subject matter on appeal, and it recites,
with our emphases added:
1. A method of detecting whether a surgical instrument
includes an unfired surgical cartridge mounted to the surgical
instrument, the surgical instrument including a drive member
that is moved in a first direction to fire an unfired surgical
cartridge mounted to the surgical instrument, the method
including:
generating an actuation input that is limited by a
predetermined torque or force as part of an attempt to move the
drive member a predetermined amount in a second direction, the
second direction being opposite to the first direction;
terminating the actuation input in response to an exceedance
of the predetermined torque or force;
measuring an actual movement of the drive member during
the attempt to move the drive member by the predetermined
amount;
detecting that the measured actual movement of the drive
member is less than the predetermined amount; and
in response to detecting that the measured actual movement
of the drive member is less than the predetermined amount,
determining that the surgical instrument includes a surgical
cartridge mounted to the surgical instrument, and that the
surgical cartridge is an unfired surgical cartridge.
Appeal Br. 10 (Claims App.) (emphases added).
REJECTION ON APPEAL
Claims 1–6, 9, and 24–33 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Shelton3 (US 7,721,936 B2, iss. May 25, 2010) and

3 The face of this patent identifies the lead inventor’s last name as
“Shalton.” However, a Certificate of Correction later changed the spelling
to “Shelton.” We use the correct spelling, “Shelton.”
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Whitman (US 6,849,071 B2, iss. Feb. 1, 2005). See Final Act. 2–9 (initially
stating only claims 1, 2, 6, 24, 25, and 29 are rejected, but then analyzing all
pending claims 1–6, 9, and 24–33); Appeal Br. 1, 3, 6 (acknowledging
rejection applies to all pending claims).
OPINION
A. Claims 1–6, 9, 32, and 33
In rejecting claim 1 as having been obvious over Shelton and
Whitman, the Examiner cites Shelton as disclosing, as is required by
claim 1, a drive member “moved in a first direction to fire” a surgical
cartridge, and generating an actuation input to determine that the surgical
cartridge is unfired by “attempt[ing] to move the drive member . . . in a
second direction” that is “opposite to the first direction.” Appeal Br. 10
(Claims App.) (emphases added); Final Act. 2–3; Ans. 3. The Examiner
does not rely on Whitman as disclosing the indicated subject matter. See
Final Act. 3–4 (citing Whitman only as disclosing “measuring an actual
movement of the drive member,” as recited in claim 1).
Appellant argues Shelton does not disclose the indicated subject
matter. Appeal Br. 7–8 (“In contrast to the distal movement employed in
[Shelton], the method recited in claim 1 employs an attempt to retract the
drive member in the proximal direction.”). As explained below, we agree
with Appellant. First we summarize the Shelton disclosure at issue; second
we summarize the Examiner’s findings comparing Shelton with the method
of claim 1; and third we discuss why the Examiner’s findings are not
supported by a preponderance of the evidence.
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1. Shelton Disclosure
Figure 3A of Shelton is reproduced below:

Figure 3A is an exploded view of end effector 16 of Shelton’s surgical
instrument. Shelton, 3:61–62, 4:36–39. Staple channel 26 receives pivot
point 42 of staple anvil 28, so that staple anvil 28 pivots toward staple
channel 26 to clamp tissue therebetween. Id. at 4:63–67, 5:47–48. Staple
cartridge 38 is installed within staple channel 26, and holds several
staples 62. Id. at 5:43–44, 6:5–7.
After tissue is clamped between staple anvil 28 and staple channel 26,
the operator actuates a firing trigger (not shown in Figure 3A) that causes
cutting instrument 34 (also shown in Figure 3B) and sled 36 to advance
distally within channel 26. Id. at 5:55–58, 5:67–6:4. Specifically, actuation
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of the firing trigger rotates helical screw shaft 40 via main drive shaft 80
(shown in Figure 4). Id. at 6:60–66, 7:15–22. Cutting instrument 34 is
threadedly engaged on helical screw shaft 40, so rotation of shaft 40 pushes
cutting instrument 34 and sled 36 distally forward. Id. at 5:44–45, 7:7–15.
Distal movement of sled 36 drives staples 62 upwardly out of cartridge 38
and into the clamped tissue, and distal movement of cutting instrument 34
severs the clamped tissue with cutting surface 56. Id. at Figs. 3A–3B,
5:67–6:9, 7:24–29.
Shelton discloses various “interlock” mechanisms, which prevent
operation of the instrument “when the staple cartridge 38 is not installed in
the channel 26, or when the staple cartridge 38 is installed in the channel 26
but spent.” Id. at 10:51–13:41. Specifically:
Operation of the interlock is twofold. First, in the absence of an
unspent staple cartridge 38 within the channel 26, the interlock
operates to mechanically block distal advancement of the cutting
instrument 34 through the channel 26 in response to actuation of
the firing trigger 24. Using suitable electronics disposed within
the handle 12, the interlock next detects the increase in current
through the motor 106 resulting from the immobilized cutting
instrument 34 and consequently interrupts current to the
motor 106.
Id. at 10:55–63. Shelton accordingly discloses various “blocking
mechanism[s] to prevent actuation of the cutting instrument 34” (id. at
11:5–8), all of which operate to block distal movement of cutting
instrument 34 when cartridge 38 is not installed in channel 26 or when an
installed but spent cartridge 38 is installed in channel 26. Id. at 11:39–12:9
(spring fingers 198 block distal movement of cutting instrument 34),
12:10–51 (ramped ends 206 of hooks 204 block distal movement of cutting
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instrument 34), 12:52–13:33 (blocking members 218 block distal movement
of cutting instrument 34).
2. The Examiner’s Findings
The Examiner cites Shelton as disclosing a method of detecting
whether a surgical instrument includes an unfired staple cartridge, including
“a drive member (80) that is moved in a first direction to fire” the staple
cartridge. Final Act. 2–3. The Examiner finds Shelton discloses “an
interlock to prevent firing when a [staple] cartridge is absent or spent using a
blocking mechanism in cooperation with current and position sensors.” Id.
(citing Shelton, col. 11). The Examiner also finds Shelton’s method
includes “generating an actuation input . . . as part of an attempt to move the
drive member . . . a predetermined amount in a second direction . . . being
opposite to the first direction (retraction of the drive member 80).” Id. at 3
(citing Shelton, 14:24–41, 14:50–65). According to the Examiner, Shelton
“teaches moving a drive member a second direction different than the first
when the drive member is retracted due to the status of the cartridge whether
or not the cartridge is unfired or spent.” Ans. 3.
3. Analysis
The Examiner cites Shelton’s drive shaft 80 as corresponding to the
drive member of claim 1. Final Act. 2–3. As discussed in more detail
above, Shelton fires staple cartridge 38 by rotating drive shaft 80 in the
direction (clockwise or counterclockwise) that moves cutting instrument 34
in the distal direction of Shelton’s instrument (hereafter “distal rotation
direction”). See Shelton, Fig. 3A, 5:67–6:9, 6:60–66, 7:7–29. Therefore, the
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first direction of claim 1 corresponds to the distal rotation direction in
Shelton.
The second direction of claim 1 is defined as being opposite to the
first direction. Therefore, the second direction corresponds to the proximal
rotation direction in Shelton — i.e., the rotational direction (clockwise or
counterclockwise) of drive shaft 80 that moves cutting instrument 34 in the
proximal direction of Shelton’s instrument.
Claim 1 requires generating an actuation input by attempting to move
the drive member in the second, proximal rotation direction in Shelton. As
discussed in more detail above, Shelton instead discloses generating an
actuation input by attempting to move the drive member in the first, distal
rotation direction. See Shelton, 10:51–13:41, 14:24–41, 14:50–65. Because
the Examiner’s reliance on Shelton in this regard is therefore in error, we do
not sustain the rejection of claim 1, or claims 2–6, 9, 32, and 33 depending
from claim 1, as having been obvious over Shelton and Whitman.
B. Claims 24–31
Independent claim 24, similarly to claim 1 discussed above, recites a
drive member “moved in a first direction to fire,” a surgical cartridge, and
commanding an actuator “to generate a movement of the drive member in a
second direction” that is “opposite to the first direction,” to determine that
the surgical cartridge is unfired. Appeal Br. 11 (Claims App.) (emphases
added). For the reasons provided above, we determine the Examiner errs in
finding Shelton discloses this claimed subject matter. See Final Act. 6–7.
We therefore do not sustain the rejection of claim 24, or claims 25–31
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depending from claim 24, as having been obvious over Shelton and
Whitman.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
References Affirmed Reversed
1–6, 9,
24–33
103 Shelton, Whitman 1–6, 9,
24–33
REVERSED