Ex Parte Muir et al

Board of Patent Appeals and Interferences

Mar 29, 2012

10869351 (B.P.A.I. Mar. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte STEPHANIE J. MUIR, FRANCIS S. PROCH,
SUDEEP N. DUTTA, and KENNETH S. KRAMER
__________

Appeal 2010-009297
Application 10/869,351
Technology Center 3700
__________

Before RICHARD E. SCHAFER, RICHARD TORCZON, and
LORA M. GREEN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1-13 and 15-18. We have jurisdiction under
35 U.S.C. § 6(b).
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Application 10/869,351

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STATEMENT OF THE CASE
The invention is drawn to an ultrasonic surgical device that has a hand
activated switch positioned on the handle for easy access by the surgeon
(Spec. 1, ¶3). According to the Specification, when a generator is activated
via the triggering mechanism, i.e., the hand activated switch positioned on
the handle, the generator applies electrical energy to a transducer stack (id.
at p. 8, ¶34). A flex circuit provides for the electro-mechanical interface
between the switches and the generator via a drive unit (id. at 12, ¶46). As
taught by the Specification, the generator sends an electrical signal that
causes one or more piezoelectric elements of the acoustic assembly to
expand and contract, converting the electrical energy into mechanical
motion (id. at p. 7, ¶30).
Claim 1 is representative of the claims on appeal, and reads as follows
(emphasis added):
1. An ultrasonic surgical instrument comprising:
a) a housing having a handle configured to interface with a user of the
instrument and a first end for accepting a transducer assembly for converting
electrical energy to mechanical energy;
b) an ultrasonic waveguide positioned within and extending distally
from a second end of the housing;
c) a rotation member operatively coupled to the second end of the
housing for causing rotation of the waveguide; and
d) at least one switch located on the handle and electrically connected
to the transducer assembly for providing an electrical signal from the at
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least one switch to a generator for controlling the level of mechanical
energy delivered by the transducer assembly.

The following grounds of rejection are before us for review:
I. Claims 1-3, 7-10, 12, 13, and 15-18 stand rejected under 35 U.S.C.
§ 102(a) as being anticipated by Shibata.
1
As Appellants only
argue claim 3 separately, claims 2, 7-10, 12, 13, and 15-18 stand or
fall with claim 1.
II. Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by Shibata.
III. Claims 6 and 11 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Shibata and Broadwin.
2

We affirm.
ANALYSIS
The limitation at issue is element (d) of claim 1. According to
Appellants, ―Shibata fails to disclose or suggest that at least one switch is
electrically connected to the transducer assembly‖ (App. Br. 6). Appellants
assert that in the device of Shibata, ―the electrical connection of the hand
switch unit . . . to the generator bypasses the transducer assembly‖ (id.).
Appellants assert that Shibata discloses a hand switch electrically
connected to a generator, which then electrically connects to the hand piece

1
Shibata et al., JP2003000612A, issued January 7, 2003. All references
herein to Shibata are to the English translation.
2
Broadwin et al., US 5,015,227, issued May 14, 1991.
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(App. Br. 7). Appellants argue that the claims require that ―the at least one
switch is electrically connected to the transducer assembly for providing an
electrical signal from the at least one switch to a generator (that is, via the
transducer assembly)‖ (id.). While Appellants acknowledge that ―the hand
switch unit provides a signal to the generator to instruct the generator how to
drive the hand piece,‖ Appellants argue that ―it is impossible to make the
argument that the hand switch unit—electrically connected to the generator's
switch detection circuit, which then provides a signal (connected) to the
control circuit, which then provides a signal (connected) to the drive circuit,
which outputs a signal to the hand piece–is in anyway electrically connected
to the hand piece‖ (id. at 7). That is, according to Appellants, the ―Examiner
has failed to show how the at least one switch connected to the transducer
assembly . . . provides an electrical signal to a generator‖ (id. at 7).
The Examiner relies on Figures 1 and 2 and paragraph 42 of Shibata
for the limitation of ―the at least one switch electrically connected to the
transducer assembly for providing an electrical signal from the at least one
switch to a generator . . . for controlling the level of mechanical energy
delivered by the transducer assembly delivered by the device‖ (Ans. 3). The
Examiner interprets the limitation of ―electrically connected‖ as not
requiring ―the connection to be a single electrical connection or a direct
electrical connection‖ (id. at 5-6). According to the Examiner, ―the at least
one switch . . . is electrically connected to the transducer assembly via the
circuits of the generator and the drive transmission cable which transmits an
electrical signal to the transducer assembly based on the electrical signal
received upon input at the switch‖ (id. at 5).
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During prosecution before the Office, claims are to be given their
broadest reasonable interpretation consistent with the Specification as it
would be interpreted by one of ordinary skill in the art. In re American
Academy Of Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004).
―An essential purpose of patent examination is to fashion claims that are
precise, clear, correct, and unambiguous. Only in this way can uncertainties
of claim scope be removed, as much as possible, during the administrative
process.‖ In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989).
Element (d) of claim 1 recites ―at least one switch located on the
handle and electrically connected to the transducer assembly for providing
an electrical signal from the at least one switch to a generator for controlling
the level of mechanical energy delivered by the transducer assembly.‖ We
interpret that limitation as requiring that the switch be electrically connected
to the transducer such that an electrical signal is sent to the generator from
the switch that controls the level of mechanical energy delivered by the
transducer assembly. That interpretation is consistent with the Specification,
which teaches that when the generator is activated by the switch, the
generator applies electrical energy to a transducer stack (Spec. p. 8, ¶34),
which then causes one or more piezoelectric elements of the acoustic
assembly to expand and contract, converting the electrical energy into
mechanical motion (id. at p. 7, ¶30). Thus, we agree with the Examiner (see
Ans. 6) that claim 1 does not require that the electrical signal produced by
the switch must somehow travel through the transducer to the generator,
which would then send a signal back to the transducer, as argued by
Appellants. As Shibata teaches an ultrasonic surgical instrument that meets
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all of the limitations of claim 1, including element (d), the anticipation
rejection over Shibata is affirmed as to claim 1. The rejection is also
affirmed as to claims 2, 7-10, 12, 13, and 15-18, as those claims stand or fall
with claim 1.
As to claim 3, Appellants argue that the claim ―recites the transducer
assembly comprising an electrical contactor for accepting the electrical
signal from the switch‖ (App. Br. 8). Appellants assert that Shibata does not
teach that the disclosed transducer assembly comprises a contactor (id.).
The Examiner relies on paragraphs 29 and 78 of Shibata for teaching the
electrical contactor that accepts the electrical signal from the switch (Ans.
4). According to the Examiner, ―[a]lthough the signal travels to the
transducer assembly via the generator, . . . the signal provided . . . can be
said to be from the switch because the signal is initiated at the switch‖ (id. at
7).
We conclude that the Examiner has the better position. All that is
required by the contactor is that it allow the transducer to accept electrical
energy from the switch. Thus, as stated by the Examiner, even if in the
ultrasonic surgical instrument of Shibata the electrical signal from the switch
goes to the transducer via the generator, it is still the signal from the switch
that activates the transducer. We thus affirm the anticipation rejection as to
claim 3 as well.
As to the remaining rejections, Appellants rely on the arguments made
with respect to the rejection of claim 1 (App. Br. 8-9). Thus, the remaining
rejections are affirmed for the reasons set forth with respect to claim 1.

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SUMMARY
We affirm all of the appealed rejections.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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