Ex Parte Notz et al

Patent Trials and Appeals Board

Apr 30, 2019

12936948 - (D) (P.T.A.B. Apr. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/936,948 10/08/2010 hrgenNotz
24998 7590 05/02/2019
Blank Rome LLP
1825 Eye Street, NW
Washington, DC 20006-5403
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.
E7900.2121/P2121 8151
EXAMINER
DELLA,JAYMIE
ART UNIT PAPER NUMBER
3794
NOTIFICATION DATE DELIVERY MODE
05/02/2019 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):
W ashingtonDocketing@blankrome.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JURGEN NOTZ and JURGEN BELLER
Appeal2017-008717
Application 12/936,948 1
Technology Center 3700
Before LINDA E. HORNER, STEFAN STAICOVICI, and
EDWARD A. BROWN, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE-
Jurgen Notz and Jurgen Beller ("Appellants") appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision in the Final Office Action (dated Feb.
26, 2016, hereinafter "Final Act.") rejecting claims 1, 4-8, and 10.2
Appellants' representative presented oral argument on April 25, 2019.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
1 ERBE ELEKTROMEDIZIN GMBH is identified as the real party in
interest in Appellants' Appeal Brief (filed Nov. 15, 2016, hereinafter
"Appeal Br."). Appeal Br. 2.
2 Claim 3 is withdrawn and claims 2 and 9 are canceled. Appeal Br. 2, 12,
13.
Appeal2017-008717
Application 12/936,948
We REVERSE.
SUMMARY OF DECISION
INVENTION
Appellants' invention is directed to "a surgical apparatus for testing
nerves." Spec. para. 1.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A surgical apparatus for facilitating testing nerves during
high-frequency surgery, comprising:
a high-frequency generator for generating a high-
frequency treatment current,
a converter for converting the high-frequency treatment
current into a nerve stimulating current;
connecting lines for feeding the high-frequency treatment
current from the high-frequency generator to the converter; and
a controllable selector switch for selectively feeding one
of the high-frequency treatment current and the nerve
stimulating current to a high-frequency electrosurgical
instrument,
wherein the converter comprises a rectifier circuit for
generating a direct current as the nerve stimulating current.
REJECTIONS3
I. The Examiner rejects claims 1, 4, 5, 7, 8, and 10 under
35 U.S.C. § 103(a) as being unpatentable over Utley et al. (US
3 The rejections also rely on the disclosure of Barreras (US 5,591,217, iss.
Jan. 7, 1997). See Final Act. 3-12. However, in an Advisory Action, dated
June 3, 2016 (hereinafter "Adv. Act."), the Examiner "withdraws the
evidence of Barreras from the rejection." Adv. Act. 2; see also Examiner's
Answer (dated Mar. 24, 2017) 2-3.
2
Appeal2017-008717
Application 12/936,948
6,139,545, iss. Oct. 31, 2000, hereinafter"Utley")4 and Miller,
III (US 5,836,943, iss. Nov. 17, 1998, hereinafter "Miller").
II. The Examiner rejects claims 1, 4, 5, 7, 8, and 10 under
35 U.S.C. § 103(a) as being unpatentable over Utley and Le
(US 6,819,957 Bl, iss. Nov. 16, 2004) or Penner (US
2004/0172083 Al, pub. Sept. 2, 2004).
III. The Examiner rejects claim 6 under 35 U.S.C. § 103(a) as being
unpatentable over Utley, Miller or Le or Penner, and Cory et al.
(US 6,706,016 B2, iss. Mar. 16, 2004, hereinafter "Cory"). 5
ANALYSIS
Rejection I
The Examiner finds that Utley discloses a surgical apparatus for
testing of nerves during high-frequency surgery including, inter alia, a high-
frequency generator 40 for providing a high-frequency treatment current, a
nerve tissue stimulator 50 for providing DC energy pulses for stimulating
nerves, and a controllable selector switch 56 that toggles between tissue
stimulator 50 and high-frequency generator 40. Final Act. 3 ( citing Utley,
col. 5, 11. 3-9, col. 6, 11. 53-57, col. 7, 11. 37-63, col. 8, 11. 47-59, Figs. 2, 3).
4 We note that the Examiner's reference to US 6,139,545 as "Utely" is a
mere typographical error. See Final Act. 3-13. Like Appellants, we refer to
US 6,139,545 as "Utley," which is the correct spelling. See Appeal Br. 4-
11; first page of US 6,139,545, which names the first inventor as "David
Utley."
5 The Examiner withdraws the rejections under 35 U.S.C. § 103(a) of claims
1, 4, 5, 7, 8, and 10 as being unpatentable over Utley and Barreras and of
claim 6 as being unpatentable over Utley, Barreras, and Cory. See Ans. 2-3.
3
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Application 12/936,948
However, the Examiner finds that Utley "fail[ s] to disclose a converter,
specifically a rectifying circuit, for converting the high-frequency treatment
current of the generator into the nerve stimulating current which is DC
current." Id. at 3-4. Nonetheless, the Examiner finds that Miller discloses a
surgical apparatus including an AC power supply/generator 200 coupled to
an AC/DC converter having rectifying circuit 202 "to output DC power."
Id. at 4 (citing Miller, col. 1, 11. 52-63, Fig. 1). 6 Thus, the Examiner
concludes that
[I]t would have been obvious to one of ordinary skill in the art
to modify the integrated physical structure of the RF generator
and nerve tissue stimulating module of U t[ley] ... to comprise
a converter, specifically a rectifying circuit, for converting the
high-frequency treatment current of the generator into the nerve
stimulating current which is DC current and current connecting
lines for feeding the high-frequency treatment current from the
high-frequency generator to the converter since Miller ...
teach[ es] that an AC/DC converter is known in the art to
convert AC to DC as an output.
Id. The Examiner further determines that "it appears the invention would
work equally well to produce the DC stimulating current with either the
nerve stimulation module ofUt[ley] ... or an AC/DC converter unit taught
by Miller." Id.
In response, Appellants note that in Miller, "the current from the
generator has a tissue destroying effect." Appeal Br. 6 ( emphasis omitted)
( citing Miller col. 3, 1. 65-col. 4, 1. 3, col. 6, 11. 27-29, col. 12, 11. 26-28).
As such, Appellants contend that "any current from the RF generator of
6 The Examiner notes that an ordinary and customary meaning of the term
"rectifier" is "'a device for converting alternating current into direct current'
(www.m-w.com)." Id.
4
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Application 12/936,948
Miller would have the effect of an instant nerve damage or destruction,
which is antithetical to the purpose of the present invention." Id. at 7. Thus,
according to Appellants, Miller "does not teach, disclose, or suggest how to
generate nerve-stimulating pulses from RF treatment energy, for which its
power supply (12) is usuitable." Id.
The Examiner responds that Appellants' arguments amount to "bodily
incorporation of the RF generator of Miller in the proposed modification of
the invention of' Utley. Ans. 4. The Examiner explains that the disclosure
of Miller is employed "only to teach that the nerve stimulating current of
Ut[ley] can be generated by a converter." Adv. Act. 2 (emphasis added). As
such, according to the Examiner, in the combination of Utley and Miller, "a
converter comprising a rectifying circuit can convert any type of AC energy,
not [only] the specific AC energy disclosed by Miller, to DC energy." Ans.
4 ( emphasis added). Therefore, the Examiner takes the position that in the
apparatus of Utley, as modified by Miller, "the nerve stimulating DC current
is generated by the RF generator ofUt[ley] and the converter of Miller." Id.
It is undisputed that Utley fails to disclose a converter, as called for by
independent claim 1. See Final Act. 3-4. We appreciate the Examiner's
position with regard to Miller, "that the use of a converter comprising a
rectifying circuit to convert AC energy to DC energy is well known in the
art." Id. However, just because a converter with a rectifying circuit is
capable of converting AC to DC, in general, this does not mean that it is
specifically capable of converting a "high-frequency treatment current into a
nerve stimulating current," as called for by independent claim 1. In other
words, even though the Examiner's position is that the use of any known
AC/DC converter would have been obvious, the Examiner has not made any
5
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Application 12/936,948
finding as to the particular type of converter called for in claim 1, namely, "a
converter for converting the high-frequency treatment current into a nerve
stimulating current." See Final Act. 4; Appeal Br. 12 (Claims App.).
For example, Utley's system provides a tissue ablation current
"having a frequency in the range of about 400 kHz to about 10 MH[ z ]" and a
nerve stimulating current at "low current levels (e.g., from about 0.5 mA to
about 1.0 mA)." Utley, col. 6, 11. 55-57, col. 7, 11. 60-61. In contrast, as
Appellants correctly note, the resulting DC current in Miller is suited only
for tissue ablation,7 which Utley discloses as ohmically heating tissue, and
not for nerve stimulation, which does not ohmically heat tissue. See Appeal
Br. 6-7; see also Miller, col. 1, 11. 21-22, col. 7, 11. 56-57.
The Examiner does not make adequate findings as to whether Miller's
converter is capable of converting Utley's AC having a frequency of about
400 kHz to about 10 MHz (i.e., a high frequency treatment current) to a DC
current having a level from about 0.5 mA to about 1.0 mA (i.e., a nerve
stimulating current). In other words, the Examiner has not shown by a
preponderance of the evidence that Miller's AC/DC converter unit would
work equally as well with Utley's system to produce a DC nerve stimulating
current (a current from about 0.5 mA to about 1.0 mA). See Final Act. 4.
Moreover, because Miller's AC/DC converter generates a DC current
appropriate for tissue ablation, not nerve stimulation, the Examiner's
7 Miller describes desiccation as tissue heating, fulguration as "providing
coagulation of the tissue," cutting as "vaporiz[ing] cell moisture," and
cutting with hemostasis as a combination of cutting and dessication. See
Miller, col. 1, 11. 23-51.
6
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position that "a converter ... can convert any type of AC energy" requires
speculation on the Examiner's part. See Ans. 4 ( emphasis added).
Accordingly, as the Examiner's legal conclusion of obviousness is not
supported by sufficient factual evidence, we do not sustain the rejection
under 35 U.S.C. § 103(a) of independent claim 1, and its respective
dependent claims 4, 5, 7, 8, and 10, as unpatentable over Utley and Miller.
See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (holding that "[t]he
legal conclusion of obviousness must be supported by facts. Where the legal
conclusion is not supported by facts it cannot stand.").
Rejection II
The Examiner finds that although Utley discloses most of the
limitations of independent claim 1, Utley "fail[ s] to disclose a converter,
specifically a rectifying circuit, for converting the high-frequency treatment
current of the generator into the nerve stimulating current which is DC
current." Final Act. 6. Nonetheless, the Examiner finds that "Le discloses
an electric stimulation device (10) that is powered by DC voltage obtained
from an AC/DC converter comprising a rectifier circuit for generating a
direct current to stimulate nerves." Id. ( citing Le, 5, 1. 56-col. 6, 1. 6). The
Examiner further finds that "Penner discloses an electric stimulation device
(12) that is powered by DC voltage obtained from an AC/DC converter
comprising a rectifier circuit (54) for generating a direct current to stimulate
nerves." Id. at 6-7 ( citing Penner, paras. 66, 88). Thus, the Examiner
concludes that
[I]t would have been obvious to one of ordinary skill in the art
to modify the integrated physical structure of the RF generator
and nerve tissue stimulating module of U t[ley] ... to comprise
7
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Application 12/936,948
a converter, specifically a rectifying circuit, for converting the
high-frequency treatment current of the generator into the nerve
stimulating current which is DC current and current connecting
lines for feeding the high-frequency treatment current from the
high-frequency generator to the converter since Le and Penner
teach that an AC/DC converter is known in the art to convert
AC to DC as an output.
Id. at 7. The Examiner further determines that "it appears the invention
would work equally well to produce the DC stimulating current with either
the nerve stimulation module ofUt[ley] ... or an AC/DC converter unit
taught by" Le or Penner. Id. 8
Appellants argue that although the devices of both Le and Penner
relate to "nerve stimulation," nonetheless, as both Le and Penner's
converters reduce an already low voltage, the Examiner's combination does
not disclose "the conversion of a high frequency current," as called for by
independent claim 1. See Appeal Br. 9-10.
In response, the Examiner takes a similar position as discussed supra,
namely, that Appellants' arguments amount to "bodily incorporation of the
power supply generator of [either] Le [ or Penner] in the proposed
modification of the invention of' Utley. Ans. 5, 7. The Examiner explains
that Le and Penner are relied upon to disclose that "the use of a converter
comprising a rectifying circuit to convert AC energy to DC energy is well
known in the art." Id. at 6 (citing Le, col. 5, 11. 57-61 ("DC voltage obtained
from an external AC/DC converter."), 7 ( citing Penner, para. 66 ("rectifier
54 that then transforms the AC components of the pulsed electrical current
into DC components."). As such, according to the Examiner, in the
8 We view the Examiner's reliance on Miller here as a typographical error.
8
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Application 12/936,948
combination of Utley and Le or Penner, "a converter comprising a rectifying
circuit can convert any type of AC energy, not [only] the specific AC energy
disclosed by Le [or Penner], to DC energy." Id. (emphasis added).
Therefore, the Examiner takes the position that the apparatus of Utley, as
modified by Le or Penner does not use their respective energy source, but
rather employs "the RF energy source ofUt[ley]." Id. at 6, 8.
As discussed supra, just because a converter with a rectifying circuit
can convert AC to DC, in general, this does not mean that it is specifically
capable of converting a "high-frequency treatment current into a nerve
stimulating current," as called for by independent claim 1. Stated
differently, even though the Examiner's position is that the use of any
known AC/DC converter would have been obvious, the Examiner has not
made any finding as to the particular type of converter called for in claim 1,
namely, "a converter for converting the high-frequency treatment current
into a nerve stimulating current." See Final Act. 7; Appeal Br. 12 (Claims
App.).
Utley's system provides a tissue ablation current "having a frequency
in the range of about 400 kHz to about 10 MHz" and a nerve stimulating
current at "low current levels (e.g., from about 0.5 mA to about 1.0 mA)."
Utley, col. 6, 11. 55-57, col. 7, 11. 60-61. In contrast, although we agree with
the Examiner's finding that the external AC/DC converter of Le converts
120 V AC to 9 VDC (see Le, col. 5, 11. 57-59), nonetheless, a skilled artisan
would appreciate that a 120 VDC voltage has a frequency of 60 Hz, and,
thus, does not constitute a "high-frequency treatment current." See In re
Jacoby, 309 F.2d 513, 516 (CCPA 1962) (An artisan must be presumed to
know something about the art apart from what a reference discloses).
9
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Application 12/936,948
Penner also fails to disclose a converter capable of converting a "high-
frequency treatment current" into a "nerve stimulating current" because
"Penner generates an initial voltage of only 10 V that is reduced to 2.5 V for
nerve stimulation purposes." Appeal Br. 10 (citing Penner, para. 63).
The Examiner does not make adequate findings as to whether the
converters of Le and Penner are capable of converting Utley's AC having a
frequency of about 400 kHz to about 10 MHz (i.e., a high frequency
treatment current) to a DC current having a level from about 0.5 rnA to
about 1.0 rnA (i.e., a nerve stimulating current). The Examiner has not
shown by a preponderance of the evidence that either of Le or Penner' s
AC/DC converters would work equally as well with Utley's system to
produce a DC nerve stimulating current. See Final Act. 7. Moreover,
because the converters of Le and Penner convert a low frequency current ( as
per Le) or a low voltage (as per Penner), not a high-frequency current, the
Examiner's position that "a converter ... can convert any type of AC
energy" requires speculation on the Examiner's part. See Ans. 7 ( emphasis
added).
In conclusion, as the Examiner's legal conclusion of obviousness is
not supported by sufficient factual evidence, we do not sustain the rejection
under 35 U.S.C. § 103(a) of independent claim 1, and its respective
dependent claims 4, 5, 7, 8, and 10, as unpatentable over Utley and Le or
Penner.
Rejection III
The Examiner's reliance on the disclosure of Cory does not remedy
the Examiner's combination of Utley and Miller, as per Rejection I, and
10
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Utley and Le or Penner, as per Rejection II, discussed supra. See Final Act.
8-9.9
Accordingly, for the reasons discussed above, we also do not sustain
the rejection of claim 6 over the combined teachings of Utley, Miller or Le
or Penner, and Cory.
SUMMARY
The Examiner's decision to reject claims 1, 4-8, and 10 under
35 U.S.C. § 103(a) is reversed.
REVERSED
9 The Examiner relies on Cory to disclose a "surgical apparatus for testing
nerves having a constant current source that is adjustable by the user." Id.
11