Ex Parte Smith et al

Patent Trials and Appeals Board

Feb 26, 2019

13961245 - (D) (P.T.A.B. Feb. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/961,245 08/07/2013
92223 7590 02/28/2019
K&L Gates LLP-Pittsburgh
210 SIXTH AVENUE
PITTSBURGH, PA 15222-2613
FIRST NAMED INVENTOR
Bret W. Smith
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.
END6746USCNT2/100070CON2 2917
EXAMINER
HUPCZEY, JR, RONALD JAMES
ART UNIT PAPER NUMBER
3794
NOTIFICATION DATE DELIVERY MODE
02/28/2019 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):
uspatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRET W. SMITH, DAVID C. YATES,
DANIEL J. ABBOTT, RICHARD F. SCHWEMBERGER, and
FREDERICKE. SHELTON, IV
Appeal2018-004496
Application 13/961,245
Technology Center 3700
Before STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 3-7 and 9-18. We have jurisdiction under 35
U.S.C. § 6(b ).
We REVERSE.
1 Ethicon LLC is the Applicant and is identified as the real party in interest.
Br. 2.
Appeal2018-004496
Application 13/961,245
THE CLAIMED SUBJECT MATTER
Appellant's invention relates "to a surgical system comprising a
battery pack." Spec. 2: 15-16. Claims 3 and 12, reproduced below, are
illustrative of the claimed subject matter:
3. A surgical instrument system, comprising:
a surgical instrument comprising an open electrical
circuit; and
a battery pack comprising a housing configured to attach
said battery pack to said surgical instrument, and a plurality of
battery cells, wherein the assembly of said battery pack to said
surgical instrument is configured to close said electrical circuit,
wherein said battery pack comprises a switch configured to
selectively apply a voltage potential to said electrical circuit,
and wherein said switch is in an open condition prior to said
battery pack being assembled to said surgical instrument and a
closed configuration as a result of said battery pack being
assembled to said surgical instrument.
12. A surgical instrument system, comprising:
a surgical instrument comprising an open electrical
circuit; and
a battery pack, comprising:
at least one battery cell;
a drain, wherein the assembly of said battery pack
to said surgical instrument is configured to close said electrical
circuit and to place said drain in a drain position in which said
drain is in electrical communication with said at least one
battery cell; and
a catch configured to hold said drain in said drain
position.
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Appeal2018-004496
Application 13/961,245
REJECTIONS 2
1. Claims 3-7, 9-12, 15, and 16 are rejected under 35 U.S.C.
§ I02(b) as being anticipated by Smith (US 2007/0270784 Al, published
Nov. 22, 2007).
2. Claims 13, 14, 17, and 18 are rejected under 35 U.S.C. § I03(a)
as unpatentable over Smith and Andruk (US 2007 /0273333 Al, published
Nov. 29, 2007).
DISCUSSION
Rejection 1
Claims 3-7 and 9-11
Each of independent claims 3, 6, and 9 recites, in part, "a battery pack
comprising a housing ... a plurality of battery cells ... [and] a switch." Br.
22-23 (Claims App.).
Appellant argues that Smith is not anticipatory because "the on/off
switch 12 of Smith '784 is located on the stapler 1 - not a separate battery
pack." Br. 15. Appellant contends that because each switch of Smith is on
stapler 1, Smith's "switch 12 is completely separate from the electric power
supply 600 and a distinct feature of the surgical assembly 200 - and not a
feature of the electric power supply 600." Id. at 16. According to
Appellant, "Smith '784 fails to disclose a switch located on a battery
pack." Id.
2 An Amendment After Final Rejection was filed June 9, 2017, canceling
claims 1 and 2, and was entered by the Examiner (see Advisory Action
mailed June 20, 2017). Entry of the Amendment obviates the anticipation
rejection of claims 1 and 2. See Ans. 2.
3
Appeal2018-004496
Application 13/961,245
The Examiner responds that, "the alleged feature upon which
applicant relies upon, in this instance the 'separate battery pack' is not
recited in such specificity in the rejected claims." Ans. 3--4. According to
the Examiner, the broadest reasonable interpretation of the claims includes
an "unassembled" state when all elements are apart before assembly, and an
"assembled" state when all elements are fully "assembled." Id. at 4. The
Examiner asserts that, based on this interpretation, Smith's "battery would
comprise ... the proximal portion of housing of the instrument of Smith for
holding cells 600 and assembled to the remainder of the surgical
instrument," and would be "configured to close said electrical circuit given
that the placement of [battery pack] 600 within [instrument] 200 would be
configured to close the open circuit provided by the terminals for connecting
the electrical circuitry of the remainder of200 to 600." Id. (emphasis
omitted). The Examiner contends that "the battery pack of Smith would
further comprise the claimed switch in the form of the switch 12, with this
switch being located on the proximal portion of the instrument of 200 taken
as forming the housing of the battery pack." Id. at 4--5 (emphasis omitted).
The Examiner concludes that "the switch 12 of Smith would be in an open
position due to the battery cells of 600 not being in the device" in the
unassembled state and would close in the assembled state. Id. at 5 (emphasis
omitted). For the following reasons, we do not sustain this rejection.
We give claim terms their broadest reasonable interpretation
consistent with the Specification as it would be interpreted by one of
ordinary skill in the art. See In re Suitco Surface, Inc., 603 F.3d 1255, 1259--
60 (Fed. Cir. 2010); In re Morris, 127 F.3d 1048, 1054--55 (Fed. Cir. 1997).
Although the claims are interpreted in light of the Specification, limitations
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Appeal2018-004496
Application 13/961,245
from the Specification are not read into the claims. In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993). We begin our analysis with the claim
language. In re Power Integrations, Inc., 884 F.3d 1370, 1376 (Fed. Cir.
2018) ("[ c ]laim construction must begin with the words of the claims
themselves."). Although we appreciate the Examiner's position that a
separate battery pack is not recited, the battery pack is recited to have a
specific configuration, namely, "a housing configured to attach said battery
pack to said surgical instrument, [] a plurality of battery cells ... [ and a]
switch." Appellant's Specification discloses that "the battery pack 600 is
connected to the instrument 602 (e.g., by placing at least a portion of the
battery pack 600 within the surgical instrument 602 ). " Spec. ,r 107. Thus,
the battery pack as an assembled unit 600, including a housing, a plurality of
batteries 612, and a switch 614, is attached or connected to the surgical
instrument 602. Appellant's Figure 48, reproduced below illustrates the
claimed invention.
602
SURG!CA.L l~JSTRUMENT
604
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Appeal2018-004496
Application 13/961,245
Appellant's Figure 48 schematically depicts that "surgical instrument
602 may comprise a pair of electrodes 604, 606, which, when the battery
pack 600 is connected to the surgical instrument 603, may connect with a
pair of electrodes 608, 610 of the battery pack 600." Spec. ,r 106. The
battery pack 600 may comprise a plurality of cells 612 and switch 614 that
when in the closed position, electrically connects the cells 612 to one
another. Id. ,r 107. Appellant's Figure 51 illustrates a "mechanical
embodiment of a battery pack 700 implementing the schematic of the battery
pack 600 shown in Figure 48," wherein "battery pack 700 comprises a
casing 707 having therein a battery 703 comprising a plurality of cells," and
a switch. Id. ,r 111.
Thus, contrary to the Examiner's assertion, in light of the
Specification, the claims require that the battery pack as a (separate)
assembled unit 600, includes a housing, a plurality of batteries, and a switch
that is attached or connected, as a unit, to the surgical instrument 602.
Accordingly, the Examiner's position that Smith's battery pack includes "the
proximal portion of housing of the instrument of Smith for holding cells 600
and assembled to the remainder of the surgical instrument," and that switch
12, is "located on the proximal portion of the instrument of 200 taken as
forming the housing of the battery pack," in the "assembled" configuration
(Ans. 4--5), is based on an unreasonably broad interpretation of a battery
pack having a housing configured to attach to a surgical instrument. See In
re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir. 2009) ("[t]he protocol of giving
claims their broadest reasonable interpretation ... does not include giving
claims a legally incorrect interpretation.").
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Appeal2018-004496
Application 13/961,245
Specifically, Smith discloses that "[i]nsulated conductive wires or
conductor tracks on the circuit board 500 connect all of the electronic parts
of the stapler 1, such as an on/ off switch 12, a tissue compression indicator
14, the anvil and firing switches 20, 21, 22, the circuit board 500, and the
power supply 600." Smith ,r 81.
Figure 2 of Smith is reproduced below.
200
\
130 FIG. 2
Figure 2 is "a fragmentary side elevational view of the stapler of FIG.
1 with a right half of a handle body and with a proximal backbone plate
removed," wherein stapler 1 includes "a handle body 10 containing three
switches: an anvil open switch 20, an anvil close switch 21, and a staple
firing switch 22 .... electrically connected to a circuit board 500 ... [that] is
electrically connected to a power supply 600 contained within the handle
body 10." Smith ,r,r 43, 80. Smith discloses that "[o]ne exemplary
embodiment utilizes 2 to 6 Lithium CR123 or CR2 cells as the power supply
600," but that other power supplies are contemplated. Id. ,r 80.
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Appeal2018-004496
Application 13/961,245
Thus, Smith discloses that switch 12 is a component of stapler 1
(instrument 200), not part of the power supply 600. Moreover, Smith
discloses that "power supply 600" is batteries, and does not disclose that the
batteries are part of a "battery pack" as we have construed that term, i.e., in a
separate housing with a switch that is then attached to instrument 200. To
the extent that Smith discloses a housing for the battery and a switch, the
housing and switch are part of handle body 10, and are not attached to the
instrument as part of a battery pack that includes a plurality of batteries.
Accordingly, the disclosure of the system taught by Smith does not support a
finding that this system has the "battery pack" called for by independent
claims 3, 6, and 9.
For the reasons discussed above, we determine that the Examiner's
finding that Smith anticipates claims 3, 6, and 9 is not supported by a
preponderance of the evidence. We, therefore, do not sustain the rejection of
claims 3, 6, and 9 as anticipated by Smith. We also do not sustain the
rejection of claims 4, 5, 7, 10, and 11, depending therefrom, as anticipated
by Smith for the same reasons.
Claims 12, 15, and 16
Appellant argues that Smith "is entirely silent regarding a drain
which is in electrical communication with a battery cell. The Examiner
erroneously identifies the on/off switch 12 of Smith '784 and the actuator of
the switch 12 as satisfying this element." Br. 1 7. Appellant asserts that no
element of Smith is a drain catch that is configured to hold the drain in the
drain position. Id.
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Appeal2018-004496
Application 13/961,245
The Examiner responds that Smith's drain is "the electrical contacts of
switch 12 functioning to output energy to the system thereby causing the
battery to drain." Ans. 6. According to the Examiner, Smith's catch is "the
actuator of switch 12 configured to hold the drain in the drain position." Id.
Claim 12 recites, in relevant part, "a drain, wherein the assembly of
said battery pack to said surgical instrument is configured to close said
electrical circuit and to place said drain in a drain position." Br. 23 (Claims
App.). Appellant's Specification discloses that, "[ w ]hen the discharge
switch 618 is in the closed position, the resistive element 620 may be
electrically connected across the cells 612 of the battery pack 600. In this
way, the cells 612 may drain when the discharge switch is closed 618."
Spec. ,r 108. In an exemplary embodiment, the Specification discloses
"plac[ing] resistive element 546 in series with the battery pack 506, causing
the battery to drain. In this way, the battery pack 506 may be drained either
prior to or during disposal, reducing hazard disposal." Id. ,r 105. As such,
Appellant uses the term "drain" to mean a component that discharges the
battery.
Although we appreciate that leaving an on/off switch in the on
position would cause the batteries to drain, the term "configured to" is
generally used to mean that the drain is "made to" or "constructed to"
perform the claimed function. See In re Giannelli, 739 F.3d 1375, 1379
(Fed. Cir. 2014). Here, for the drain, as recited in claim 12, assembly of the
battery pack to the surgical instrument performs the function of closing the
circuit and placing the drain in the drain position. Appellant's Specification
discloses that, "discharge switch 620 may be any type of mechanical or solid
state switch ... manually or automatically transitioned from the open to the
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Appeal2018-004496
Application 13/961,245
closed position, for example, upon installation of the battery pack 614 to the
instrument 602." Spec. ,r 108. Thus, connecting the battery pack to the
instrument closes the circuit and causes the battery to discharge. The
Examiner does not point to any portion of Smith that discloses that Smith's
switch 12 is made to close upon assembly of Smith's battery pack to the
surgical instrument or that the actuator of switch 12 functions as a catch.
Nor does the Examiner provide persuasive technical reasoning why this
would necessarily be so.
For the reasons discussed above and in light of our construction of
claim 12, we determine that the Examiner's finding that Smith anticipates
claim 12 is not supported by a preponderance of the evidence. We,
therefore, do not sustain the rejection of claim 12 as anticipated by Smith.
We also do not sustain the rejection of claims 15 and 16, which depend from
claim 12 for the same reason.
Rejection 2
Claims 13 and 14
Claims 13 and 14 depend directly or indirectly from claim 12. Br. 23-
24 (Claims App.). The Examiner rejects these claims as unpatentable over
Smith and Andruk, but does not rely on the additional disclosure from
Andruk to cure the deficiencies in Smith discussed above for claim 12.
Final Act. 9-10. Therefore, we do not sustain the rejection of claims 13 and
14 under 35 U.S.C. § 103(a) for the same reasons stated in connection with
claim 12.
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Appeal2018-004496
Application 13/961,245
Claims 17 and 18
The Examiner rejects independent claim 17 based on the same
findings as for claim 3. Final Act. 9--10. Specifically, the Examiner finds
that Smith's battery pack comprises a housing configured to attach the
battery pack to the surgical instrument, a plurality of battery cells 600, and
switch 12. Id. The Examiner does not rely on the additional disclosure from
Andruk to cure the deficiencies in Smith discussed above for claim 3. Id.
We do not sustain the rejection of independent claim 17, and claim 18
depending therefrom, as unpatentable over Smith and Andruk for the same
reasons as stated above for claim 3.
DECISION
The Examiner's decision to reject claims 3-7 and 9--18 is reversed.
REVERSED
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