Ex Parte Manwaring et al

Patent Trial and Appeal Board

Jun 30, 2016

12647350 (P.T.A.B. Jun. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/647,350 12/24/2009 Kim Manwaring
27472 7590 07/05/2016
Snow, Christensen & Martineau
10 Exchange Place, 11th Floor
SALT LAKE CITY, UT 84111
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.
4340.DOMA.NP3 1824
EXAMINER
DELLA, JAYMIE
ART UNIT PAPER NUMBER
3739
NOTIFICATION DATE DELIVERY MODE
07/05/2016 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):
uspto@scmlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KIM MANWARING and DAVID MCNALL Y 1
Appeal2014-003276
Application 12/647 ,350
Technology Center 3700
Before GEORGE R. HOSKINS, LISA M. GUIJT, and
MARK A. GEIER, Administrative Patent Judges.
GEIER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's rejection of claims 1-3, 5-15, 19-25, 31-35, 37, 38, and 40. 2
Appeal Br. 3. Appellants' counsel presented arguments at an oral hearing on
June 24, 2016. We have jurisdiction under 35 U.S.C. § 6(b).
1 According to Appellants, Domain Surgical, Inc. is the real party in
interest. Appeal Br. 3.
2 Appellants withdrew claims 4 and 16-18 and cancelled claims 26-30.
Appeal Br. 3; see also Appeal Br., Claims Appx. The Examiner has
determined that claims 36, 39, and 41 are allowable but for their dependency
from rejected claims. Final Act. 17-18; see also Adv. Act. 2, and Ans. 10.
As such, claims 4, 16-18, 26-30, 36, 39, and 41 are not before us on this
Appeal.
Appeal2014-003276
Application 12/647 ,350
We AFFIRM-fN-PART.
THE CLAIMED SUBJECT MATTER
The claimed subject matter "relates to thermally adjustable tools used
in open and minimally invasive surgical procedures and interventional
surgical and therapeutic procedures." Spec. i-f 1. Claim 1 is representative
and recites:
1. A thermally adjustable surgical tool comprising:
a cold cutting scalpel having a blade with a cutting edge;
a first electrical conductor having a portion disposed
adjacent and extending along the blade, the first electrical
conductor configured for attachment to a power source to receive
an oscillating electrical signal from the power source and to
return the oscillating electrical signal to the power source; and
at least one ferromagnetic coating covering a part of the
first electrical conductor extending along the blade and not
covering another part of the first electrical conductor extending
along the blade and wherein sending an oscillating electrical
signal through the first electrical conductor heats the at least one
ferromagnetic coating to selectively apply heat to tissue cut by
the cutting edge.
THE REJECTIONS ON APPEAL 3
The Examiner rejected claims 1-3, 5-10, 12-14, 19, 20, 31, 33-35,
37, 38, and 40 as unpatentable under 35 U.S.C. § 103(a) over Shaw (US
4,848,337; iss. July 18, 1989) and McGaffigan (US 5,182,427; iss. Jan. 26,
1993).
3 The Examiner withdrew various rejections and objections in an Advisory
Action mailed on June 19, 2013. The Examiner also "notes" that "the gold
scalpel" in "claim 33[] lacks antecedent basis since 'a cold cutting scalpel' is
recited in claim 31." Adv. Act. 2.
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Appeal2014-003276
Application 12/647 ,350
The Examiner rejected claim 15 as unpatentable under 35 U.S.C.
§ 103(a) over Shaw, McGaffigan, and Durden (US 3,825,004; iss. July 23,
1974).
The Examiner rejected claims 21 and 25 as unpatentable under 35
U.S.C. § 103(a) over Shaw, McGaffigan, and Sartor (US 2005/0113824 Al;
pub. May 26, 2005).
The Examiner rejected claims 22 and 23 as unpatentable under 35
U.S.C. § 103(a) over Shaw, McGaffigan, and Garrison (US 2004/0006335
Al; pub. Jan. 8, 2004).
The Examiner rejected claim 24 as unpatentable under 35 U.S.C.
§ 103(a) over Shaw, McGaffigan, and Mcfarlin (US 2007/0100336 Al; pub.
May 3, 2007).
The Examiner rejected claim 32 as unpatentable under 35 U.S.C.
§ 103(a) over Shaw, McGaffigan, and Eggers (US 5,480,398; iss. Jan. 2,
1996).
The Examiner rejected claims 1, 5-7, 9, 11-14, and 31-35 as
unpatentable under the doctrine of non-statutory obviousness-type double
patenting over claim 13 of U.S. Patent No. 8,377,052. 4
In the Answer, the Examiner issued a new ground of rejection of
claim 11 as unpatentable under 35 U.S.C. § 103(a) over Shaw and
Mc Gaffigan.
4 We note that the Examiner identifies claim 4 as rejected, but Appellants
withdrew claim 4 from consideration. See supra note 2. Accordingly, we
treat this rejection as applicable to claims 1, 5-7, 9, 11-14, and 31-35.
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Appeal2014-003276
Application 12/647 ,350
ANALYSIS
Claims 1-3, 5-10, 12-14, 19, 20, 31, 33-35, 37, 38, and 40
under 35 US.C. § 103
The Examiner finds that Shaw discloses the elements of claim 1
except for the claimed ferromagnetic coating. Final Act. 5---6. The
Examiner finds that McGaffigan discloses such a coating:
McGaffigan discloses a tool comprising a conductor (14f), a
portion of which is coated with a ferromagnetic coating (72)
where oscillating electrical energy passes from power source
(17f), through the ferromagnetic coating (72), and returns to
power source (17f) via conductor (14f) such that the oscillating
current remains in the conductor (14f) and heats the coating (72).
Final Act. 6. Based upon the findings, the Examiner determines that one of
skill in the art would have combined the references in a manner that utilizes
the coating ofMcGaffigan on Shaw's scalpel
to provide the benefit of having a self-regulated heater having
substantially constant temperature regulation, high efficiency
and high watt-density without the use of layers or skin effect,
eddy current heating and do not require the presence of a multiple
tum, wire coil or an induction coil and associated high
temperature electrical insulation for the coil wire such that it can
be made in small sizes as taught by McGaffigan.
Final Act. 6 (citing McGaffiganAbstract, 1:6-8, 4:60-5:24, 6:15-31, 7:48-
8:10, 14:65-15:61, Figs. 1, 2, and 15); see also Adv. Act. 2 ("McGaffigan
discloses that the ' [ f]errite type body can be selected from conventional
ferrite beads, blocks, rings, etc.[,]' McGaffigan teaches that the chosen
ferrite-type body must have sufficient magnetic permeability for the
coupling with the high frequency magnetic field, be highly lossy, and have
the desired Curie temperature (Col. 8, 11. 11-23)."); Ans. 8 ("[T]hus, where a
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Appeal2014-003276
Application 12/647 ,350
precise high temperature in tissue treatment is desired, the adaptability of a
ferrite type body on a scalpel blade such as Shaw et al. would be recognized
by those skill in the art at the time of the invention.").
Appellants argue that one of skill in the art would not have combined
McGaffigan with Shaw because McGaffigan teaches away from such a
combination. Appeal Br. 16. In particular, Appellants contend that
McGaffigan discloses that: "[E]xtreme thermal shock can cause a ferrite
bead in the device of this invention to break or crack." Appeal Br. 16
(quoting McGaffigan 14: 17-19). 5 Moreover, Appellants point to their
Specification as evidence that such a problem was known in the art:
[O]ne major problem with the use of these [ferromagnetic]
materials is that a large temperature differential can cause the
material to fracture, especially when it comes into and out of
contact with liquids. In other words, if a hot ferrite surgical
instrument is quenched by a cooler pool of liquid, such as blood
or other body fluids, the material's corresponding temperature
drops rapidly and may cause the material to fracture. These
fractures not only cause the tool to lose its effectiveness as a heat
source, because the magnetic field is disrupted, but may require
extraction of the material from the patient. Obviously, the need
to extract small pieces of ferrite product from a patient is highly
undesirable.
Spec. i-f 12; see also Appeal Br. 16.
"A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant." In re Gurley, 27 F.3d 551, 553
5 Although Appellants cite to column 15 of McGaffigan, the quoted portion
of Mc Gaffigan is at column 14, lines 17-19. See Mc Gaffigan 14: 17-19.
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Application 12/647 ,350
(Fed. Cir. 1994). "A reference does not teach away, however, if it merely
expresses a general preference for an alternative invention but does not
'criticize, discredit, or otherwise discourage' investigation into the invention
claimed." DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
1314, 1327 (Fed. Cir. 2009) (citing In re Fulton, 391F.3d1195, 1201 (Fed
Cir. 2004) ).
In this case we agree with Appellants that McGaffigan teaches away
from the combination proposed by the Examiner. In our view, McGaffigan
presents a concrete problem with ferromagnetic materials sufficient to
discourage one of skill in the art from making the combination. See
McGaffigan 14: 17-19. This is particularly so given that Appellants'
independent claims each recite a scalpel (see Appeal Br., Claims Appx.),
which we interpret as a limitation on the structure of the invention requiring
that the recited structure or methods be capable of being used in surgical and
anatomical operations and dissections. See www.dictionary.com/browse
/scalpel?s=t (last visited June 24, 2016) (defining scalpel as "a small, light,
usually straight knife used in surgical and anatomical operations and
dissections"). Indeed, as stated by Appellants, "a person of skill in the art
would appreciate that a surgical device breaking in a patient is generally
unfavorable and the tendency to do so clearly teaches away from using the
structures of McGaffigan (for use on a soldering iron) on a scalpel such as
Shaw (for use inside a human body)." Appeal Br. 17
The Examiner states that Appellants' argument is ineffective because
it relies upon the Appellants' improper bodily incorporation of the ferrite
bead ofMcGaffigan into the scalpel of Shaw. Ans. 6-7. We disagree with
the Examiner's view of Appellants' argument. As stated above, Appellants
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Application 12/647 ,350
argue more broadly that one of skill in the art would have appreciated a
problem with using ferrite materials as a coating on a cutting scalpel during
a surgical operation. See Appeal Br. 16 (citing Spec. i-f 12). As such, we do
not see Appellants' arguments as premised on an improper bodily
incorporation of the bead structure of McGaffigan into Shaw.
For the foregoing reasons, we do not sustain the Examiner's rejection
of claims 1-3, 5-10, 12-14, 19, 20, 31, 33-35, 37, 38, and40 as
unpatentable under 35 U.S.C. § 103 over Shaw and McGaffigan.
Claims 11, 15, 21-25, and 32 under 35 US.C. § 103
The Examiner relies upon the combination of Shaw and McGaffigan
in the rejection of each of claims 11, 15, 21-25, and 32 over the cited art.
See Final Act. 13-16; Ans. 3. Although the Examiner cites additional
references in making some of those rejections, the Examiner does not find
that such additional references cure the defect we have identified with
respect to the Examiner's combination of Shaw with McGaffigan.
Accordingly, for the same reasons stated with respect to claims 1-3, 5-10,
12-14, 19, 20, 31, 33-35, 37, 38, and 40, we also do not sustain the
Examiner's rejection of claims 11, 15, 21-25, and 32 as unpatentable.
Claims 1, 5-7, 9, 11-14, and 31-35 under
the Doctrine of Obviousness-Type Double Patenting
Appellants do not address the Examiner's rejection of claims 1, 5-7,
9, 11-14, and 31-35 under the doctrine of obviousness-type double
patenting. See Appeal Br. 8-21. Accordingly, we summarily sustain the
Examiner's rejection.
DECISION
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Appeal2014-003276
Application 12/647 ,350
We REVERSE the Examiner's rejections of claims 1-3, 5-15, 19-25,
31-35, 37, 38, and 40 under 35 U.S.C. § 103(a).
We AFFIRM the Examiner's rejection of claims 1, 5-7, 9, 11-14, and
31-35 under the doctrine of non-statutory obviousness-type double
patenting.
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-IN-PART
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