Ex Parte Smith et al

Patent Trial and Appeal Board

Sep 26, 2017

13654073 (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.
Endo Div 8 1669
EXAMINER
SMITH, SCOTT A
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
13/654,073 10/17/2012
27316 7590 09/26/2017
MAYBACK & HOFFMAN, P.A.
5846 S. FLAMINGO ROAD #232
FORT LAUDERDALE, EL 33330
Kevin W. Smith
09/26/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN W. SMITH, MATTHEW A. PALMER,
KOREY R. KLINE, and DEREK DEE DEVILLE
Appeal 2015-006232
Application 13/654,073
Technology Center 3700
Before STEVEN D.A. McCARTHY, JILL D. HILL, and
NATHAN A. ENGELS, Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kevin W. Smith et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s final decision rejecting claims 1—7. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2015-006232
Application 13/654,073
BACKGROUND
Independent claims 1—7 are pending. Independent claim 1,
reproduced below, illustrates the claimed subject matter.
1. A medical device end effector connection
assembly, comprising:
a passive articulation joint connecting an end effector to
an instrument shaft that is disposed between the end effector
and a control handle.
REJECTION
I. Claims 1—7 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Green (US 4,566,620, iss. Jan. 28, 1986). Final Act. 2.
ANALYSIS
The Examiner finds that Green discloses, inter alia, a passive
articulation joint 150 having a first portion (ball 152) on the instrument shaft
120 and a second portion (seat member 162) on the end effector 200. Final
Act. 2. The Examiner infers that Green’s joint 150 is passive because it is
not rigid. Ans. 3 (citing Green 1:52—55, 1:60-67, 2:32—33, 3:55—57).
Further, considering the disclosed detailed operation of Green and its joint
150, the Examiner finds that Green’s collar 170 forces an annular ring 172
against ball 152, which inhibits joint movement after adjustment, but reasons
that “the collar 170 is nonetheless threadably connected and could allow for
an even more ‘passive’ connection after loosening the collar 170, if desired.
Id. (citing Green 6:11—53). The Examiner interprets the term “passive” to
include “not directly acting or operating absent environmental influences,”
and finds that Green’s joint 150 is passive because Green “establishes that
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Appeal 2015-006232
Application 13/654,073
this adjustment [of the joint 150] is performed by an operator, or
equivalently an outside influence in relation to the apparatus.” Id. at 4.
Appellants argue that “that there is no actual support in Green for the
Examiner’s characterization of joint 150 as being ‘passive.’” Reply Br. 2.
First, Appellants argue that a connection being “not completely rigid” or a
shaft being “flexible” to conform to a surrounding shape does not define or
necessitate a “passive articulation joint” as claimed. Id. at 3^4. Appellants
further argue that Green discloses that, although its joint 150 allows rotation
(pivoting) to adjust relative positioning of its handle 20 and its end effector
200, the joint 150 is “stiff enough so that” the handle 20 and the end effector
200 “tend to retain their relative rotational orientations except when the
configuration of the instrument is deliberately altered by the user.” Id. at 5
(citing Green 2:33—38). According to Appellants, this shows that Green’s
joint 150 “is not intended to change position by mere contact with the
surrounding environment during its intended use.” Id. Regarding Green’s
disclosure describing operation of its joint 150, Appellants note Green’s
statement that “[sjurfaces 166 and 172 preferably engage ball 152 with
sufficient force to frictionally maintain whatever relative angular orientation
of assemblies 20 and 200 is established by the user of the apparatus.” Id. at
7 (citing Green 6:47—51 (emphasis removed)). At no point, Appellants
contend, does Green contemplate loosening collar 170 as suggested by the
Examiner, “[t]here is no indication in Green that removal or loosening of
collar 170 would even leave the ball 152 and, ultimately joint 150, intact and
operational.” Id.
Regarding the meaning of “passive articulation” and “passive
articulation joint,” Appellants’ Specification states that such passive
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Appeal 2015-006232
Application 13/654,073
articulation “requires a torque external to the device to articulate the end
effector about the axis of the passive articulation joint.” Spec. 113.
Appellants have the better argument regarding whether Green
discloses a torque external to its device articulating its end effector 200
about its joint 150. While Green does make mention of its joint 150 being
able to rotate about axes 102, 104, 106 when its ball 152 “is captured
between seat surface 166 and retaining ring 172” (Green 6:45—48, Fig. 9),
Green also discloses that (1) despite its joint 150 being pivotable about axes
102, 104, 106, joint 150 is “tight enough” that handle 20 and end effector
200 “maintain whatever relative angular orientation they are placed in”
(Green 4:11—16 (emphasis added)), and (2) “[sjurfaces 166 and 172
preferably engage ball 152 with sufficient force to frictionally maintain
whatever relative angular orientation” of handle 20 and end effector 200 “is
established by the user” (Green 6:48—52 (emphasis added)). Thus, it appears
that Green contemplates the user articulating its end effector 200 about its
joint 150, rather than external forces causing such joint articulation. The
Examiner’s finding that Green discloses a passive articulation joint is
therefore at best speculative. We therefore do not sustain the rejection of
claims 1—7.
DECISION
We REVERSE the rejection of claims 1—7 under 35 U.S.C. § 102(b)
as anticipated by GREEN.
REVERSED
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