Ex Parte Fitzsimmons et al

Patent Trials and Appeals Board

Feb 4, 2019

14535427 - (D) (P.T.A.B. Feb. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/535,427 11/07/2014
50855 7590
Covidien LP
60 Middletown A venue
Mailstop 54, Legal Dept.
North Haven, CT 06473
02/06/2019
FIRST NAMED INVENTOR
Thomas Fitzsimmons
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-US-03955 (203-10105) 1692
EXAMINER
LUAN,SCOTT
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
02/06/2019 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 THOMAS FITZSIMMONS and
MICHELLE GRASSO
Appeal2018-005070
Application 14/535,427
Technology Center 3700
Before MICHAEL J. FITZPATRICK, JOHN E. SCHNEIDER, and
RYAN H. FLAX, Administrative Patent Judges.
FITZPATRICK, Administrative Patent Judge.
DECISION ON APPEAL
Thomas Fitzsimmons and Michelle Grasso ("Appellants") 1 appeal
under 35 U.S.C. § 134(a) from the Examiner's final decision rejecting
claims 1-20 as containing new matter and for obviousness. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify Covidien LP as the real party in interest. Appeal Br. 1.
Appeal2018-005070
Application 14/535,427
STATEMENT OF THE CASE
The Specification
The claimed invention "relates to surgical instruments and, more
specifically, surgical instruments that transmit an end of life signature to a
user." Spec. i-f2.
In an aspect of the present disclosure, a powered handle for a
surgical instrument includes a processor and a component. The
component has a usage limit and is configured to transmit a
signature to the processor when the component is in proximity to
its usage limit.
In their Appeal Brief, Appellants point to the following disclosures in
the application as filed:
[A] component (e.g., components 110-180) may provide an
audible signature indicating that the surgical instrument 10 is
beyond its usage limit and must be replaced. The audible
signature may be a default tone or tones, which may be specific
to the component that is beyond its usage limit.
* * *
[T]he processing unit 60 directly receives a signature from one
or more components of the surgical instrument 10 ( e.g.,
components 110-180).
* * *
[W]hen the signature is an acoustic signal, the signature,
transmitted by the components 110-180, may be audible to a user
to provide indicia as to the actual usage of the component or the
condition of the surgical instrument 10.
Appeal Br. 4--5 (quoting, in order, Spec. ,r,r 43, 44, and 31). 2
2 The Appeal Brief erroneously cites to paragraphs 45, 46, and 31, but the
quoted passages are found in paragraphs 43, 44, and 31.
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Appeal2018-005070
Application 14/535,427
The Rejected Claims
Claims 1-20 are pending and rejected. Final Act. 1. Claim 1 is
representative and reproduced below.
1. A powered handle for a surgical instrument, the
handle comprising:
a processor; and
a component having a usage limit, the component
configured to transmit a signature to the processor and to provide
the signature directly to a user before the handle is used when the
component is in proximity to its usage limit.
Appeal Br. 9.
The Appealed Rejections
The following rejections under are before us for review:
1. claims 1-20 under 35 U.S.C. § 112(a)/i-fl;
2. claims 1-15 and 20 under 35 U.S.C. § 103 as obvious over
Milton 3 and Chin 4;
3. claim 16 under 35 U.S.C. § 103 as obvious over Milton, Chin,
and Kishi 5; and
4 claims 17-19 under 35 U.S.C. § 103 as obvious over Milton,
Chin, and Kimball. 6 See Ans. 4 (summarizing the rejections).
3 US 2013/0018400 Al, published Jan. 17, 2013 ("Milton").
4 US 5,425,375, issued June 20, 1995 ("Chin").
5 US 2012/0143211 Al, published June 7, 2012 ("Kishi").
6 US 2013/0253480 Al, published Sept. 26, 2013 ("Kimball").
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Appeal2018-005070
Application 14/535,427
DISCUSSION
Rejection 1
The Examiner rejected claims 1-20 under 35 U.S.C. § 112(a)/i-fl
because independent claims 1, 10, and 13 recite limitations not described in
the application as filed. Final Act. 2-5, 8-9; Ans. 5-11.
Independent claims 1 and 10 are apparatus claims and recite a
"component configured to transmit a signature to the processor and to
provide the signature directly to a user before the handle is used when the
component is in proximity to its usage limit." Independent claim 13 is a
method claim and recites "transmitting a signature to the processor and
directly to a user when the component is in proximity to its usage limit."
Thus, as the Examiner construed them, "claims 1, 10, and 13 recite a single,
common signature transmitted or provided to both the user and the
processor." Ans. 6. Appellants agree, stating "each of claims 1, 10, and 13
requires 'the component' to transmit the same 'signature' to both the
processor and a user." Appeal Br. 7.
The Examiner found that the application as filed "does not disclose a
'component configured to transmit a signature to the processor and to
provide the signature directly to a user'." Final Act. 8-9 ( quoting claims 1
and 10).
Appellants argue to the contrary, citing as evidence separate portions
of the application that disclose a signature from component to processor and
a signature from component to user. Appeal Br. 4--5 ( citing Spec. i-fi-f3 l and
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Appeal2018-005070
Application 14/535,427
44 ). 7 Although the application as filed discloses both signatures
(component-to-processor and component-to-user), it does not disclose a
single signature that is transmitted/provided from the component to both a
processor and a user (i.e., a human).
Appellants also argue that the originally filed claims provide written
description support for the rejected claims. See Reply Br. 2-3. Originally
filed claims 1 and 10 recite, in relevant part, "the component configured to
transmit a signature to the processor when the component is in proximity to
its usage limit, the signature configured to provide indicia directly to a user
that the component is in proximity to its usage limit." Spec. 16-1 7
( emphasis added). Originally filed claim 13 similarly recites "transmitting a
signature to the processor when the component is in proximity to its usage
limit, the signature providing indicia directly to a user that the component is
in proximity to its usage limit." Id. at 18 ( emphasis added). But these
claims do not disclose that the signature is provided to a user. Rather, they
disclose that the signature provides indicia to a user.
For the foregoing reasons, we affirm the rejection of claims 1-20
under 35 U.S.C. § 112(a)/i-fl.
Re} ections 2-4
The Examiner's prior art-based rejections are premised on an
erroneous claim construction. See Final Act. 9 ("For purposes of
examination, the claims will be construed such that the signature at issue
may be different signatures."). Because the Examiner admittedly has not
7 The Appeal Brief erroneously cites to paragraphs 31 and 46, but the quoted
passages are found in paragraphs 31 and 44.
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Appeal2018-005070
Application 14/535,427
shown that the prior art meets the claims as correctly construed, we reverse
all of the prior art-based rejections.
DECISION
The Examiner's rejection of claims 1-20 under 35 U.S.C. § 112(a)/i-fl
is affirmed. The Examiner's rejection of claims 1-20 under 35 U.S.C. § 103
is reversed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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