Ex Parte Mark

Patent Trial and Appeal Board

Sep 26, 2017

13485494 (P.T.A.B. Sep. 26, 2017)

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.
13/485,494 05/31/2012 Joseph L. Mark NICO0108PUS 3470
22045 7590 09/28/2017
RROOKS KTTSHMAN P C EXAMINER
1000 TOWN CENTER IGBOKO, CHIMAU
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075 ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
09/28/2017 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):
docketing @brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH L. MARK
Appeal 2015-008150
Application 13/485,4941
Technology Center 3700
Before MICHAEL C. ASTORINO, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—20. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We REVERSE.
1 According to the Appellant, “[t]he real party in interest is Nico
Corporation.” Appeal Br. 3.
Appeal 2015-008150
Application 13/485,494
STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1,13, and 20 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A surgical system comprising:
a surgical tool having a fluidic motor with a shaft
configured to rotate, a cutting device operably connected to the
motor and configured to reciprocate in response to the rotation
of the shaft, and a position sensor located in a housing of the
surgical tool and configured to determine a state of the motor and
output a position signal representing the state of the motor;
a fluid regulator in fluid communication with the motor
and configured to provide fluid to the motor; and
a controller in communication with the position sensor and
the fluid regulator and configured to generate a fluid flow
command based at least in part on the position signal and an
operation command,
wherein the fluid regulator is configured to receive the
fluid flow command and regulate fluid flow to the motor in
accordance with the fluid flow command, and wherein the shaft
of the motor is configured to rotate in accordance with the fluid
flow provided by the fluid regulator.
Rejections
Claims 1—3, 5—14, and 16—20 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Mark (US 2010/0152756 Al, pub. June 17,
2010) and Brennan et al. (US 2008/0145817 Al, pub. June 19, 2008)
(hereinafter “Brennan”).
Claim 4 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Mark, Brennan as applied to claim 1 above, and further in
view of Balamuth et al. (US 3,924,335, iss. Dec. 9, 1975) (“Balamuth”).
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Appeal 2015-008150
Application 13/485,494
Claim 15 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Mark and Brennan as applied to claim 13 above, and
further in view of Balamuth.
ANALYSIS
The Appellant argues that the combination of teachings of Mark and
Brennan, as proffered by the Examiner, fails to result in a ‘“controller . . .
configured to generate a fluid flow command based ... on the position
signal’ to ‘regulate fluid flow to the motor,’” as required by independent
claim 1. See Appeal Br. 5—6, 8—9.
The Examiner relies on Mark to disclose many of the limitations of
independent claim 1. See Final Act. 2—3. Notably, Mark’s “disclosure
relates to tissue cutting devices, [and] in particular, [to] tissue cutting
devices that are suited for neurosurgical and spinal surgical procedures.”
Mark, para. 1. The Examiner finds that Mark discloses a tissue cutting
device having a surgical tool with a fluidic motor 62, a shaft 64, 66, a
position sensor 174, and a controller 132, which is in communication with
position sensor 174. See Final Act. 2—3; see also Mark, paras. 38, 45, 76,
77.
The Examiner also finds that Mark lacks a fluid regulator and a
controller as required by independent claim 1. Final Act. 2—3. Among other
things, the Examiner finds that Mark’s controller 132 is not configured to
generate a fluid flow command based on the position signal from position
sensor 174 to regulate fluid flow to a motor. See id. at 3.
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Appeal 2015-008150
Application 13/485,494
The Examiner relies on Brennan to cure this deficiency. Id. The
Examiner finds:
Brennan teaches (Fig. 1) a surgical tool having a fluidic motor
(10), a fluid regulator (Par. 0009) in fluid communication with
the motor and configured to provide fluid to the motor; and a
controller (90) in communication with the fluid regulator and
configured to generate a fluid flow command based at least in
part on the position signal, wherein the fluid regulator is
configured to receive the fluid flow command and regulate fluid
flow to the motor in accordance with the fluid flow command,
and wherein the shaft (20) of the motor is configured to rotate in
accordance with the fluid flow provided by the fluid regulator
(Par. 0009).
Id. (emphases added). In light of the forgoing, it is clear that the Examiner
relies on Brennan’s position signal, which is output to Brennan’s controller
90, to show that Brennan’s teachings correspond to the controller of claim 1.
See Brennan, para. 35.
In sum, the Examiner’s rejection relies on the position sensor of
Mark, but the position signal from Brennan’s position sensor to meet the
claimed subject matter. See Final Act. 2-4. Thereafter, the Examiner’s
rejection modifies Mark’s tissue cutting device with Brennan’s teachings.
Id. at 4. We understand that this modification entails applying Brennan’s
teaching of the position signal, which relates to a rotating tip of a dental tool,
to the controller of Mark’s tissue cutting device. This is incongruous. Here,
the Examiner seeks to add a teaching of a position signal from Brennan’s
position sensor to modify Mark’s tissue cutting device without also adding
Brennan’s position sensor. However, the Examiner does not persuasively
explain — in the Final Office Action or the Answer — how the teaching of a
position signal from Brennan’s position sensor, which relates to a rotating
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Appeal 2015-008150
Application 13/485,494
tip of a dental tool, would modify Mark’s tissue cutting device. Further, to
the extent that the Examiner implies a potential commonality between the
use of position signals for Mark’s and Brennan’s devices — i.e., the
capability of determining a “speed of rotation” of a motor shaft and the
“speed of the rotating tip” of a dental tool, respectively (see Ans. 4, 5—6) —
such is not persuasively explained on the record. See also Appeal Br. 9.
Thus, we do not sustain the Examiner’s rejection of claim 1 and
claims 2, 3, and 5—12, as unpatentable over Mark and Brennan. The
Examiner’s rejection of independent claims 13 and 20, which have similar
limitations as claim 1, is substantially similar to the rejection of claim 1. See
Final Act. 8—9, 12. As such, we do not sustain the Examiner’s rejection of
claims 13 and 20, and dependent claims 14 and 16—19, as unpatentable over
Mark and Brennan for the reasons discussed above. We also do not sustain
the rejections of dependent claims 4 and 15 based on Mark and Brennan in
further view of Balamuth for the same reasons.
DECISION
We REVERSE the Examiner’s decision rejecting claims 1—20.
REVERSED
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