11291174 (B.P.A.I. Mar. 12, 2012)

Ex Parte Houser et al

Board of Patent Appeals and InterferencesMar 12, 2012

11291174 (B.P.A.I. Mar. 12, 2012)

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. 11/291,174 12/01/2005 Kevin L. Houser END5722USNP 9072 7590 03/13/2012 Thompson Hine LLP 2000 Courthouse Plaza N.E. 10 West Second Street Dayton, OH 45402-1758 EXAMINER SIMPSON, SARAH A ART UNIT PAPER NUMBER 3731 MAIL DATE DELIVERY MODE 03/13/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte KEVIN L. HOUSER and LEE E. REICHEL __________ Appeal 2010-010816 Application 11/291,174 Technology Center 3700 __________ Before ERIC GRIMES, LORA M. GREEN, and ERICA A. FRANKLIN, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to an ultrasonic medical instrument. The Examiner has rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE The Specification discloses that “[m]edical instruments are known which include a handpiece and a medical ultrasonic blade assembly,” with the ultrasonic blade connected to the handpiece by a threaded connection Appeal 2010-010816 Application 11/291,174 2 (Spec. 1, ¶ 0004). This “requires a torque-limiting device to correctly attach the blade, and is prone to threads being stripped or broken” (id.). The Specification discloses a handpiece and medical ultrasonic blade assembly connected in a way that “allows for a quick connection (and disconnection) without requiring multiple turns or a torque limiting device while reducing the possibility of stripped or broken threads” (id. at 2, ¶ 0009). Claims 1, 3-12, and 21 are on appeal. Claim 1, the only independent claim, reads as follows: 1. An ultrasonic medical instrument comprising a handpiece and medical ultrasonic blade assembly, wherein the handpiece and medical ultrasonic blade assembly includes: a) a vibration antinode; b) a handpiece; and c) a medical ultrasonic blade, wherein the medical ultrasonic blade includes a first connecting member having a longitudinal axis, wherein the handpiece includes a second connecting member which is substantially coaxially aligned with the longitudinal axis and which has a distal portion which is in non-threadable and ultrasound-transmitting direct physical contact with a proximal portion of the first connecting member proximate the vibration antinode, wherein the handpiece includes a third connecting member which surrounds and is rotatably or fixedly attached to the second connecting member and which is threadably engaged with the first connecting member proximate the vibration antinode, and wherein the third connecting member is attached to the second connecting member when the medical ultrasonic blade is attached to the handpiece and the medical ultrasonic blade can be completely removed from the handpiece without removing the third connecting member from the second connecting member. The Specification’s Figure 1 is reproduced below: App App discl vibra ¶ 00 whic mem well ¶ 00 § 10 claim 1 Ran 2 Bru 3 Cro 2002 eal 2010-0 lication 11 Figure 1 osed medi tion antin 17). These h is in con ber 26 sur as being th 19). The Exa 3(a): claim s 4-7 in v ucci et al mbach, U nin et al., . 10816 /291,174 shows a c cal instrum ode 16, ha elements tact with s rounds an readably miner has s 1, 3, 11, iew of Ran ., US 6,695 S 4,660,57 US Patent ross-sectio ent (Spec ndpiece 12 are conne econd con d is attache engaged to rejected al 12 and 21 ucci, Bru ,782 B2, F 3, Apr. 28 Applicati 3 nal view o . 2, ¶ 0012 , and ultra cted via fir necting m d to secon first conn l of the cla in view o mbach, an eb. 24, 20 , 1987 on Publica f one emb ). The ins sonic blad st connec ember 24; d connect ecting me ims on ap f Ranucci1 d Cronin;3 04 tion 2002/ odiment o trument in e 14 (id. a ting memb third conn ing memb mber 20 ( peal unde and Brum and claim 0103438 A f the cludes t 3, er 20, ecting er 24, as id. at 4, r 35 U.S.C bach;2 s 8-10 in 1, Aug. 1 . , Appeal 2010-010816 Application 11/291,174 4 view of Ranucci, Brumbach, and Kaplan.4 The same issue is dispositive for each of the rejections. The Examiner finds that Ranucci discloses an ultrasonic medical instrument that includes a first connecting member “abuttingly engaging a second monolithic connecting member” of the handpiece, and “a third connecting member (30) which surrounds and is … attached to the second connecting member and which is threadably engaged with the annular wing of the first connecting member” (id. at 4-5). The Examiner finds that Ranucci does not disclose that “the blade can be completely removed from the handpiece without removing the third connecting member from the second connecting member” (id.). The Examiner finds that Brumbach discloses an ultrasonic blade assembly that includes second and third connecting members in contact with a first connecting member on the blade such that “the medical ultrasonic blade can be completely removed from the handpiece without removing the third connecting member from the second connecting member” (id. at 5-6). The Examiner concludes that, in view of Brumbach, “it would have been obvious to one of ordinary skill in the art … to modify the device of Ranucci et al. by being able to completely remove the blade without removing the second or third connecting member” (id. at 6). Appellants argue that Brumbach’s connection “is expressly excluded from the … applicants’ claims” (Appeal Br. 9), and that the “teachings of Brumbach and Ranucci are incompatible because Ranucci teaches a non- 4 Kaplan et al., US 5,810,869, Sept. 22, 1998. App App threa threa expl appe seco the f as di blad the s Brum the E 15-2 Figu a cyl trunc coni col. 3) ha trans eal 2010-0 lication 11 ded conne ded conne We agre ained how al. Indepe nd and thir irst connec sclosing a e can be re econd con bach bec xaminer i Brumbac 8). Figure re 3 shows indrical po ated conic cal portion 2, ll. 51-57 s an adapt ducer port 10816 /291,174 ction for t ction for t e with App the cited r ndent clai d connect ting mem blade asse moved wi necting m ause only o s connecte h disclose 3 of Brum the “trans rtion 41, a al portion 28 and ex .) Brumb er, or first ion 28 and he ultrason he ultrason ellants th eferences m 1 requir ing memb ber of the mbly mee thout remo ember. Ho ne of the d to the fir s an ultras bach is sh ducer and pair of di 28. A slee tends thro ach disclo connector threads 2 5 ic blade, w ic blade” at the Exam would hav es, among ers of the h blade. Th ting this li ving the t wever, th handpiece st connect onic medi own below handpiece sc-shaped ve 47 is th ugh the po ses that the , “which c 9” (id. at c hereas B (id. at 10) iner has e made ob other thin andpiece e Examine mitation, a hird conne is finding connectin ing memb cal probe : .… The tr portions 4 readedly c rtions 41, needle 26 an be thre ol. 2, 62-6 rumbach t . not adequa vious the gs, that bo are in con r relies on nd in whi cting mem is not supp g member er of the b (Brumbach ansducer c 2 and 43 a onnected 42 and 43 (not show aded into t 6). The E eaches a tely claims on th the tact with Brumbach ch the ber from orted by s cited by lade. , col. 1, ll omprises nd a to the .” (Id. at n in Fig. he xaminer . Appeal 2010-010816 Application 11/291,174 6 cites elements 47 and 28, respectively, as being the second and third connecting members of the handpiece. However, Brumbach discloses that elements 47 and 26 are threadably connected to element 28, not directly and non-threadably connected to each other. Therefore, the Examiner’s finding that Brumbach discloses “a second connecting member (47, 27) … which is in non-threadable and ultrasound- transmitting direct physical contact with a proximal portion of the first connecting member” (Answer 5, emphasis added) is not supported by the evidence. The Examiner has not adequately explained how the combination of Ranucci and Brumbach would have suggested a handpiece/medical ultrasonic blade assembly meeting the limitations of claim 1. With regard to the rejections based on Ranucci, Brumbach, and either Cronin or Kaplan, the Examiner relies on Cronin and Kaplan only to supply dependent claim limitations. Thus we reverse all of the rejections on appeal. SUMMARY We reverse the rejection of claims 1, 3-12 and 21 under 35 U.S.C. § 103(a). REVERSED lp