Ex Parte Aldridge et al

Patent Trial and Appeal Board

Oct 26, 2018

13251766 (P.T.A.B. Oct. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/251,766 10/03/2011
92223 7590 10/30/2018
K&L Gates LLP-Pittsburgh
210 SIXTH AVENUE
PITTSBURGH, PA 15222-2613
FIRST NAMED INVENTOR
Jeffrey L. Aldridge
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.
END6673USCIP1/100558CIP1 1021
EXAMINER
NGUYEN, HIEN NGOC
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
10/30/2018 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):
uspatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY L. ALDRIDGE, ROBERT A. KEMERLING,
MARKE. TEBBE, CHRISTOPHER A. PAP A, DANIEL W. PRICE,
EITAN T. WIENER, JEFFREY D. MESSERLY, DAVID C. YATES,
MARK A. DAVISON, SCOTT B. KILLINGER, GA VIN M. MONSON,
ROBERT J. LAIRD and MATTHEW C. MILLER
Appeal2017-010275
Application 13/251, 7 66
Technology Center 3700
Before JEFFREY N. FREDMAN, JOHN G. NEW, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1,2 under 35 U.S.C. § 134 involving claims to a
generator to generate a drive signal to a surgical device. The Examiner
rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 Appellants identify the Real Party in Interest as Ethicon Endo-Surgery, Inc.
(App. Br. 2).
2 We have considered and herein refer to the Specification of Oct. 3, 2011
("Spec."); Final Office Action of Jan. 4, 2016 ("Final Action"); Appeal Brief
of Sept. 6, 2016 ("App. Br."); Examiner's Answer of Nov. 3, 2016 ("Ans."),
and Reply Brief of Jan. 18, 2017 ("Reply Br.").
Appeal2017-010275
Application 13/251, 7 66
Statement of the Case
Background
"Ultrasonic surgical devices, such as ultrasonic scalpels, are finding
increasingly widespread applications in surgical procedures" (Spec. ,r 4).
"Electrosurgical devices for applying electrical energy to tissue in order to
treat and/ or destroy the tissue are also finding increasingly widespread
applications in surgical procedures" (Spec. ,r 9). "Due to their unique drive
signal, sensing and feedback needs, ultrasonic and electrosurgical devices
have generally required different generators. Additionally ... ultrasonic and
electrosurgical generators are limited in their ability to recognize the
particular instrument configuration being used and to optimize control and
diagnostic processes accordingly" (Spec. ,r 11 ). "Furthermore, due to their
unique drive signal, sensing and feedback needs, ultrasonic and
electrosurgical devices have generally required different user interfaces for
the different generators" (Spec. ,r 12).
The Claims
Claims 1-9 and 33 are on appeal. Claim 1 is representative and reads
as follows:
1. A generator to generate a drive signal to a surgical
device, the generator comprising:
an ultrasonic generator module to generate a first drive
signal to drive an ultrasonic device;
an electrosurgery/radio frequency (RF) generator module
to generate a second drive signal to drive an electrosurgical
device;
a socket configured to couple to either the ultrasonic
device or the electrosurgical device, wherein the socket is
configured to output the drive signal to either the ultrasonic
device or the electrosurgical device, wherein the generator is
configured to automatically detect the coupled ultrasonic device
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Application 13/251, 7 66
or the coupled electrosurgical device, wherein upon detecting
the coupled ultrasonic device the generator is configured to
operate in a first mode, and wherein upon detecting the coupled
electrosurgical device the generator is configured to operate in a
second mode; and
a foot switch comprising a first pedal coupled to the
generator, wherein the first pedal is configured to operate in the
first mode when the ultrasonic device is coupled to the
ultrasonic generator module and the first pedal is configured to
operate in the second mode when the electrosurgical device is
coupled to the electrosurgery/RF generator module, wherein the
first mode provides an ultrasonic drive signal to the ultrasonic
device according to a first algorithm and the second mode
provides an electrosurgery/RF drive signal to the electrosurgical
device according to a second algorithm, and wherein the first
mode is exclusive of the second mode.
The Rejections
A. The Examiner rejected claims 1-3 and 33 under 35 U.S.C. § I03(a) as
obvious over Weber, 3 Fago, 4 Tanaka, 5 and Ritchie6 (Final Act. 2---6).
B. The Examiner rejected claims 4--7 under 35 U.S.C. § I03(a) as
obvious over Weber, Fago, Tanaka, Ritchie, Underwood,7 and El-Galley8
(Final Act. 6-7).
C. The Examiner rejected claims 8 and 9 under 35 U.S.C. § I03(a) as
obvious over Weber, Fago, Tanaka, Ritchie, Underwood, El-Galley,
Eggers,9 and Custer10 (Final Act. 7-8).
3 Weber et al., US 2001/0025190 Al, published Sept. 27, 2001.
4 Fago et al., US 5,883,615, issued Mar. 16, 1999.
5 Tanaka et al., US 2005/0043828 Al, published Feb. 24, 2005.
6 Ritchie et al., US 2001/0025173 Al, published Sept. 27, 2001.
7 Underwood et al., US 2004/0006339 Al published Jan. 8, 2004.
8 El-Galley et al., US 2005/0143724 Al, published June 30, 2005.
9 Eggers et al., US 2004/0030328 Al, published Feb. 12, 2004.
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Appeal2017-010275
Application 13/251, 7 66
A. 35 USC§ 103(a) over Weber, Fago, Tanaka, and Ritchie
The Examiner finds Weber teaches "an ultrasonic generator module to
generate a first drive signal to drive an ultrasonic device" and "an
electrosurgery/radio frequency (RF) generator module to generate a second
drive signal to drive an electrosurgical device" (Final Act. 2-3).
The Examiner acknowledges that Weber does not teach "a socket
configured to couple to either the ultrasonic device or the electrosurgical
device" (Final Act. 3).
The Examiner finds "Fago discloses a foot switch couple to device"
and Tanaka teaches
a foot switch comprising a first pedal coupled to the generator,
wherein the first pedal is configured to operate in a first mode
when the ultrasonic device is coupled to the ultrasonic
generator module and the foot pedal is configured to operate in
a second mode when the electrosurgical device is coupled to the
electrosurgery/RF generator module.
(Final Act. 3--4).
The Examiner finds Ritchie teaches "a socket configured to couple to
either the ultrasonic device or the electrosurgical device, wherein the socket
is configured to output the drive signal to either the ultrasonic device or the
electrosurgical device" (Final Act. 4).
The Examiner finds the combination obvious "because this allow[ s]
user[ s] to conveniently control multiple devices when their hands are not
free and it would only require routine skill in the art to replace hand button
with footswitch to operate both mode" (Final Act. 5).
1° Custer et al., US 5,109,819, issued May 5, 1992.
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Application 13/251, 7 66
The issue with respect to this rejection is: Does a preponderance of
the evidence of record support the Examiner's conclusion that the prior art
suggests "a socket configured to couple to either the ultrasonic device or the
electrosurgical device ... wherein upon detecting the coupled ultrasonic
device the generator is configured to operate in a first mode, and wherein
upon detecting the coupled electrosurgical device the generator is configured
to operate in a second mode" as required by claim 1?
Findings of Fact (FF)
1. Figure 20 of Weber is reproduced below:
2.\0, 1oo.i
201. 1T'° )"106 <1:~1·· . . .~1-, ~ i
~-~,L#_ -:'s;-- T--==--T .. ,------~---·· ' ---- .
ist to4 tht FIG· .. 20
"FIG. 20 is a side view of the face-lift apparatus" (Weber ,r 111).
2. Weber teaches that the face-lift apparatus may comprise "[a]n
optional electrically conductive element 261 [that] may be provided to bring
RF electro surgical energy from RF source 218 to metal or electrically
conductive elements mounted in the recessions" (Weber ,r 111).
3. Weber teaches that the face-lift apparatus may also comprise
"[a]n ultrasound transducer 232 can also be activated to transmit energy to
the tip 202 and provide additional heating and improve lysing" (Weber
i1111).
4. Fago teaches
[ o ]ne solution that has been offered as an alternative to a hand
control unit is a foot-operated control system having a variety
of engageable devices such as buttons, pedals or joysticks
which may be manipulated by an operator's feet to leave the
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Appeal2017-010275
Application 13/251, 7 66
operator's hands free to perform other tasks, such as during a
medical operation.
(Fago 1 :62---67).
5. Tanaka teaches
a medical system 1 mainly comprises an output control device
2, a foot switch 3, an electric surgical device ( otherwise known
as an electrosurgical unit, hereafter, referred to as "ESU") 4, an
ultrasonic surgical device 5, a patient electrode 6, a handpiece
7, a monitor 8, an endoscope image processing device 9, a
thermal scalpel 10, and a laser surgical device 11.
(Tanaka ,r 53).
6. Tanaka teaches "the switch pedal 32 is used for on/off
operations of monopolar output from the ESU 4, setting output from the
ultrasonic surgical device 5, and so forth" (Tanaka ,r 78).
7. Ritchie teaches an "apparatus 10 for applying energy to human
tissue which includes means for generating energy 12 ... The means for
generating energy 12 may be a generator, such as a laser, capable of
generating infrared, radio-frequency, ultrasound or other energy suitable"
(Ritchie ,r,r 28-29).
8. Ritchie teaches "the energy generator 12 includes means for
connecting 18 with the energy delivery device 20" (Ritchie ,r 34).
9. Ritchie teaches the
delivery device 20 is manufactured to facilitate the provision of
such specific information to the microprocessor 100. That is,
during the manufacture of the delivery device, information
specific to that device, such as its identification, expiration date,
prior usage, associated type of energy, calibration parameters,
and the like, is programmed into the memory circuit 32 of the
delivery device .... the microprocessor [] reads this
programmed information and determines the suitability or
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Application 13/251, 7 66
unsuitability of the delivery device for use in the energy
application apparatus 10.
(Ritchie ,r 51 ).
10. Ritchie teaches "microprocessor controls the source of energy
generation 102 and the conditioning and delivery of energy 104 from the
source to the delivery device 20" (Ritchie ,r 50).
Principles of Law
A prima facie case for obviousness "requires a suggestion of all
limitations in a claim," CFMT, Inc. v. Yieldup Int'! Corp., 349 F.3d 1333,
1342 (Fed. Cir. 2003) and "a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007).
Analysis
Appellants contend
the references fail to disclose the socket as recited in claim 1.
The socket in claim 1 is used to detect the type of device that is
connected to the generator, cause the generator to operate in a
power mode that is consistent with the type of connected
device, and to deliver the appropriate power to the connected
device.
(App. Br. 16). Appellants contend"[ w ]hile Ritchie may disclose a socket, it
does not disclose a socket that is configured to identify the device that is
connected and supply the specific type of energy required for the detected
device" (id. at 17). Appellants contend the Examiner's reasons for
combining "fail to even address the rationale for fundamentally altering the
functionality and operative purpose of the maneuverable handheld face-
lifting surgical instrument disclosed in Weber into a surgical generator
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Application 13/251, 7 66
having a socket connector and foot pedals" (id. at 18).
The Examiner finds these arguments unpersuasive
because Ritchie discloses a socket that is configured to identify
the device that is connected and supply the specific type of
energy required for the detected device (see [0009], [0043] and
[0051 ]; data on memory allow the system to identify the
delivery means (identification of the delivering means); the
delivery means is the device that connect to the system
generator through the socket; data on memory allow the system
to identify the device and the type of energy the device delivery
(the type of energy delivery) when it is connected to the
generator through a socket; see paragraph [0043]; also see
paragraph [0051] information specific to that device, such as its
identification (identify the device connect to the generator
through the socket), expiration date, prior usage, associated
type of energy ( determine the type of energy the device use so
the generator supply the correct energy type), calibration
parameters; also paragraph [0009] discloses generating
mean/generator supply ultrasound or radio-frequency (RF)
energy to delivery meant/treatment device; the generator would
have ultrasound module and RF module in order to supply these
energy to the treatment device).
(Ans. 10-11).
We agree with Appellants. While Weber, when combined with Fago
and Tanaka, reasonably suggests devices that have both ultrasound and
electrosurgical elements controlled by foot petals (FF 1---6), Ritchie does not
teach or suggest a connector that actively determines whether a generator is
coupled to an ultrasonic or electrosurgical device (FF 7-9). While Ritchie's
microprocessor undoubtedly controls the source of energy generation (FF
10), the Examiner has not established that the "associated type of energy" in
paragraph 51 of Ritchie refers to actively determining whether an ultrasound
or electrosurgical element is inserted into the socket.
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Application 13/251, 7 66
Nor does the Examiner provide specific reasoning that would render it
obvious to modify the combination of Weber, Fago, Tanaka, and Ritchie so
that a single socket would be used for both electrosurgical and ultrasound
elements rather than simply using two different sockets or a single integrated
device as in Weber (see, e.g., App. Br. 18).
Conclusion of Law
A preponderance of the evidence of record does not support the
Examiner's conclusion that the prior art suggests "a socket configured to
couple to either the ultrasonic device or the electrosurgical device ...
wherein upon detecting the coupled ultrasonic device the generator is
configured to operate in a first mode, and wherein upon detecting the
coupled electrosurgical device the generator is configured to operate in a
second mode" as required by claim 1.
B. and C. 35 USC§ 103(a)
Having reversed the obviousness rejection of claim 1 for failing to
render the socket limitation obvious for the reasons given above, we also
find that the further combinations do not render the rejected claims obvious
for the same reasons.
SUMMARY
In summary, we reverse the obviousness rejections.
REVERSED
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