Ex Parte Hoell et al

Patent Trial and Appeal Board

Dec 30, 2016

12189954 (P.T.A.B. Dec. 30, 2016)

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.
12/189,954 08/12/2008 Joseph A. Hoell JR. H-US-01106 7933
50855 7590
Covidien LP
555 Long Wharf Drive
Mail Stop 8N-1, Legal Department
New Haven, CT 06511
EXAMINER
MILLIGAN, ADAM C
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
01/04/2017 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):
mail @ cdfslaw. com
SurgicalUS@covidien.com
medtronic_mitg-si_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH A. HOELL and DAVID CARPENTER1
Appeal 2015-007747
Application 12/189,954
Technology Center 1600
Before ULRIKE W. JENKS, TAWEN CHANG, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
NEWMAN, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a surgical
instrument. The Examiner entered final rejections for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Background
The Specification discloses:
a surgical instrument including a handle and an elongate tubular
member extending distally from the handle and having an
articulating section bendable relative to the remainder of the
elongate tubular member. An articulating mechanism is
1 Appellants identify the Real Party in Interest as Covidien LP. App. Br. 1.
Appeal 2015-007747
Application 12/189,954
provided for bending the articulating section, the articulating
mechanism including a flexible band and a rotatable wheel
mounted on the handle and engag[e]able with the flexible band
such that rotation of the wheel relative to the handle translates
the band. Translational movement of the flexible band moves
the articulation section from a first neutral position to a second
bent position.
The articulating mechanism includes a shuttle
transferring the rotational motion of the wheel to linear motion
in the band. The wheel has a groove and the shuttle is
engag[e]able with the groove. The shuttle includes a pin
movable within the groove in the wheel.
In one embodiment, the groove is in the form of a spiral.
In a more specific embodiment, the spiral groove is in the form
of an Archimedes spiral.
Spec. 2.
Claims 1 and 5—19 are on appeal. Claim 1 is illustrative and reads as
follows:
1. A surgical instrument comprising:
a handle;
an elongate tubular member extending distally from the
handle and including an articulating section bendable relative to
the remainder of the elongate tubular member; and
an articulating mechanism for bending the articulating
section, the articulating mechanism including:
a flexible band having a proximal end and a distal end;
a rotatable wheel mounted on the handle and spaced from
the proximal end of the flexible band; and
a shuttle interconnecting the rotatable wheel and the
proximal end of the flexible band such that rotation of the
wheel relative to the handle causes linear translation of the
shuttle and translation of the band,
wherein the wheel has a groove and the shuttle includes a
pin movable within the groove in the wheel, the articulation
section being configured such that translational movement of
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the band moves the articulation section from a first neutral
position to a second bent position.
App. Br. (Claims App’x.) 13. Claim 16, the only other independent claim,
includes all of the limitations of claim 1, and additionally recites:
a shuttle coupled with the at least one flexible band; and
a rotatable wheel mounted on the handle and being
configured to engage the shuttle such that rotation of the wheel
causes axial translation of the shuttle and at least one flexible
band, the shuttle being restricted to linear movement within the
handle, wherein the articulating section is configured for
bending upon actuation of the shuttle, the at least one flexible
band and the shuttle maintains the proximal portion of the at
least one flexible band in a parallel arrangement with the
longitudinal axis of the elongate tubular member.
Id. at 16.
Claims 1 and 5—19 are rejected under 35 U.S.C. § 103(a) as obvious
over Hino2 and Schlecht.3 Ans. 2.
The Examiner finds that
Hino discloses an endoscope comprising at least a pair of wires which
operate the bending manipulation of the endoscope ... a handle, an
elongate tubular member ... a rotatable wheel. . . connected to the
manipulating wires ... by a coupling member [and] [t]he
manipulating wires connect the rotatable wheel to connection
members [that] operate flexible bands . . . When the wheel is rotated,
the manipulating wire [] on one side pulls the corresponding
connection members [] and flexible band [] while the flexible band on
the opposite side is elongated or extended [resulting in] a curve to the
bending portion of the device.
2 U.S. 6,702,737 B2, issued March 7, 2004 (“Hino”)
3 U.S. 6,279,639 Bl, issued Aug. 28, 2001 “(Schlecht”)
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Application 12/189,954
Ans. 2. The Examiner finds that while Hino teaches “the principle of
rotating a wheel in order to provide translational movement wires/bands,
thereby bending the articulation section of the endoscope, the wheel used by
Hino does not comprise a pin which is movable within the groove of the
wheel,” because the pin disclosed in Hino is in a fixed position within the
wheel. Id. at 3.
The Examiner finds “Schlecht is drawn to a mechanism for extending
and retracting a separator for separating or combining compartments of
station wagons or other vehicles [in which] . . . the separator rolls up neatly
into a housing when one large compartment is desired and extends outward
(i.e. translates) from the housing when separate compartments are desired.”
Id. at 3^4. The Examiner finds Schlecht discloses an Archimedes spiral in
which the separator is moved within the housing as follows: “To extend the
separator from the housing, the user pulls the end of the separator thereby
rotating the roll and loading the spring ... To retract the roll back into the
housing the spring recoils.” Id. at 4. The Examiner finds “[t]he Archimedes
spiral [can] convert rotational movement to translational movement and vice
versa [using the] associated guide pin [] and shaft pin [and] accomplish the
conversion simply through a change in the distance between the guide pin
and the shaft pin.” Id.
The Examiner concludes
[i]t would have been obvious to one of ordinary skill in the art
making the surgical instrument of Hino to use Archimedes
spirals having a guide pin and shaft pin as the spacing
mechanism to control the movement of the wires given that the
goal of Hino is to convert rotational movement to translational
movement and Schlecht teaches the use of an Archimedes spiral
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and associated pins as a means for transferring rotational
movement to linear movement. In doing so, it would have been
obvious to control the bending mechanism [] via the placement
of the pin within the Archimedes spiral. In other words, one of
skill in the art would have attached the component which
controls the bending (i.e. shuttle) to the moveable pin within the
Archimedes spiral.
Ans. 4.
The issue with respect to this rejection is whether a preponderance of
the evidence support the Examiner’s conclusion that Hino and Schlecht
suggest the invention of claims 1 and 16.
Appellants contend, among other points, that “Hino does not teach the
use of a wheel having a groove and a shuttle including a pin movable within
the groove as recited in claim 1.” App. Br. 4. Appellants argue that the
following paragraph of Schlecht explains that the spiral groove and pocket
disclose a nonessential counting mechanism that may be optionally deleted:
the spiral groove 76 together with the pocket 79 acts as a
counting mechanism which detects the number of turns of the
winding shaft 19 to signal the user that now a sufficient amount
of the separating net 15 has been drawn out from the winding
shaft 19, in order to make possible a comfortable suspension of
the drawbar 16 into the receiving pockets 26. If this counting
function is not desired, the entire structure which the spiral
groove 76 defines on the inside of the end cap 28 can be
omitted, ft would be sufficient if simply one stop were only
present, that corresponds to the leaf spring 82.
App. Br. 7—8, quoting Schlecht 8:41—52. Appellants argue
the pin/spiral arrangement in Schlecht does not translate
rotational movement to linear movement as does the
groove/manipulating wire arrangement of Hino. Rather, this
structure “acts as a counting mechanism to detect the number of
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turns of the winding shaft to signal the user that now a
sufficient amount of the separating net 15 has been drawn out
from the winding shaft 19, in order to make possible a
comfortable suspension of the drawbar 16 into the receiving
pockets 26” . . . Such a counting mechanism would be of no
benefit to the endoscope bending manipulation device disclosed
by Hino.
Id. at 9. According to Appellants, because “[s]uch a counting mechanism
would be of no benefit to the endoscope bending manipulation device
disclosed by Hino . . . one of ordinary skill in the art would not find the
teachings of Schlecht useful in attempting to improve the endoscope of
Hino.” Id. Appellants argue this same rationale applies to claim 16, which
incorporates the same limitation of claim 1: “the shuttle includes a pin
movable within the groove in the wheel.” Id. at 11.
We agree with Appellants that a preponderance of the evidence does
not support the Examiner’s finding that the combination of Hino and
Schlecht teach all of the limitations of independent claims 1 and 16.
Appellants’ Specification discloses: “The articulating mechanism includes a
shuttle transferring the rotational motion of the wheel to linear motion in the
band. The wheel has a groove and the shuttle is engag[e]able with the
groove. The shuttle includes a pin movable within the groove in the wheel.”
Spec. 2. After reviewing Schlecht’s disclosure, we find no teaching of “the
shuttle includes a pin movable within the groove in the wheel” such that
rotational movement can be translated to linear movement in a manner
compatible with Hino.
Hino discloses a rotatable wheel 114, as claimed in claims 1 and 16.
The Examiner identifies the shuttle as the manipulating wire 116 or
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alternatively as connection member 120. Ans. 2, 7. The shuttle of Hino has
a rotatable wheel that is rotated by manipulating wire, but the pin is fixed
and not moveable within the groove of the wheel, as acknowledged by the
Examiner. Ans. 3. The Examiner suggests that “the shuttle of Hino would
be slightly modified to include the movable pin within the Archimedes spiral
of Schlecht thereby taking one simple means of rotational movement to
translational movement and changing it to another known means for
converting rotational movement to translational movement.” Ans. 7. The
Examiner identifies the pin of Schlecht as “the associated guide pin 74 and
shaft pin 92.” Ans. 4.
We understand the Examiner’s rationale for incorporating the
Archimedes spiral of Schlecht into the mechanism of Hino as well as the
Examiner’s identification of two alternative components in the Schlecht
disclosure that could comprise a shuttle. We further agree with the
Examiner that the Archimedes spiral of Schlecht could be incorporated into
the mechanism of Hino if the mechanism to be incorporated accomplished
the desired goal.4 However, according to the Specification, the identified
shuttle must “translate rotational motion of the wheel to linear movement” to
meet the limitations of claims 1 and 16. Neither of the shuttles identified by
the Examiner has a pin that engages with the groove or that permits the
shuttle to translate rotational motion of the wheel to linear movement.
4 We note that the Specification claims an embodiment using an Archimedes
spiral. Spec. 2. Therefore, Appellants’ argument that the inventions of Hino
and Schlect are “unrelated” is not persuasive given the function of disclosed
structures.
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Instead, the shuttle comprises a removable counting mechanism, as noted by
Appellants. App. Br. 8. We note that Schlecht discloses at 4:26—32 that
“anchoring members 23 having mushroom-shaped heads 24 project from
both ends of the drawbar or strut 16. When the separating net 15 is stretched
open, the mushroom-shaped heads 24 are introduced into closed T-shaped
grooves 25 of the end side of the receiving pockets 26.” This disclosure
suggests that the anchoring members (not the pins identified by the
Examiner), insert into the groove of the Archimedes spiral, but not
consistently along the entire length of the spiral in both the closed and open
positions as required by the language of claims 1 and 16.
In summary, the Examiner’s explanation for modifying the shuttle of
Hino “to include the movable pin within the Archimedes spiral of Schlecht
thereby taking one simple means of rotational movement to translational
movement and changing it to another known means for converting rotational
movement to translational movement” fails to demonstrate how the pin
would engage with the groove, as required by claims 1 and 16, and the
Examiner has not pointed to any other disclosure in Hino or Schlecht to
explain this requirement. Because the Examiner has not provided evidence
sufficient to support a prima facie case of obviousness, we reverse the rejection
of claims 1 and 5—19 as obvious based on Hino and Schlecht. See In re
Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993) (“In rejecting claims under 35
U.S.C. § 103, the examiner bears the initial burden of presenting a prima facie
case of obviousness. Only if that burden is met, does the burden of coming
forward with evidence or argument shift to the applicant.”).
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SUMMARY
We reverse the rejection of claims 1 and 5—19 under 35 U.S.C. §
103(a) as obvious over Hino and Schlecht.
REVERSED
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