Ex Parte Viola

Patent Trial and Appeal Board

Dec 21, 2016

13281569 (P.T.A.B. Dec. 21, 2016)

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.
13/281,569 10/26/2011 Frank J. Viola H-US-02510 (203-7603) 5056
759050855
Covidien LP
555 Long Wharf Drive
Mail Stop 8N-1, Legal Department
New Haven, CT 06511
12/23/2016 EXAMINER
NGANGA, BONIFACE N
ART UNIT PAPER NUMBER
3769
NOTIFICATION DATE DELIVERY MODE
12/23/2016 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):
mail @ cdfslaw. com
SurgicalUS@covidien.com
medtronic_mitg-si_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK J. VIOLA
Appeal 2017-000806
Application 13/281,569
Technology Center 3700
Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA,
Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Frank J. Viola (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner’s final decision rejecting claims 1—4, 6—9, 13—17, and 20-24. We
have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellant’s invention relates to “an adapter for surgical instruments
that provides power to accessories for use with surgical instruments.” Spec,
para. 1.
Appeal 2017-000806
Application 13/281,569
Claims 1 and 22 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A surgical instrument system comprising:
a surgical instrument including:
a housing;
a shaft defining a longitudinal axis and extending
distally from the housing, the shaft supporting a first electrical
contact that extends around the longitudinal axis of the shaft at
a distal end portion of the shaft; and
a tool assembly disposed on a distal end portion of
the shaft, the tool assembly configured to grasp tissue;
an accessory removably secured to the shaft of the
surgical instrument, the accessory including a second electrical
contact that electrically communicates with the first electrical
contact of the shaft of the surgical instrument while the first and
second electrical contacts are engaged at the distal end portion
of the shaft; and
an adapter, separate and distinct from the accessory,
removably secured around an outer surface of the surgical
instrument at a location separate from the accessory, the adapter
including an energy storage device that powers the accessory
when the accessory and the adapter are secured to the surgical
instrument.
THE REJECTION
The Examiner has rejected:
(i) claims 1—4, 6—9, 13—17, and 20—24 under 35 U.S.C. § 103(a) as
being unpatentable over Zemlok (US 2009/0090763 Al, published Apr. 9,
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Appeal 2017-000806
Application 13/281,569
2009), Becker (US 7,611,256 B2, issued Nov. 3, 2009), and Ring (US
5,943,809, issued Aug. 31, 1999).
ANALYSIS
Appellant argues claims 1—4, 6—9, 13—17, and 20-24 as a group,
providing no separate arguments for patentability of any particular claims.
Accordingly, we take claim 1 as representative of the group, and claims 2—4,
6—9, 13—17, and 20-24 stand or fall with claim 1.
Claim 1 recites, in part, “an accessory removably secured to the shaft
of the surgical instrument, the accessory including a second electrical
contact that electrically communicates with the first electrical contact of the
shaft of the surgical instrument.” Appeal Br. 15.
The Examiner finds that the combined teachings of Zemlok and
Becker disclose most of the limitations of claim 1 including an accessory
removably secured to the shaft of a surgical instrument, and an adapter at a
location separate from the accessory. See Final Act. 8—9. The Examiner
relies on Ring as teaching an accessory having an electrical contact that
electrically communicates with an electrical contact on a distal end of an
elongated shaft. Id. at 9. The Examiner concludes that it would have been
obvious to modify Zemlok to use electrical contacts to provide an electrical
connection between the shaft and the “accessory as taught by Ring, at least
for the added benefit of a compact surgical instrument with internal wiring
free from wiring clutter, that would simplify the process of disinfecting the
surgical instrument.” Id. at 9—10.
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Appeal 2017-000806
Application 13/281,569
Appellant asserts that Ring is non-analogous art because Ring is
neither in the same field of endeavor nor is reasonably pertinent to the
problem faced by the inventor. See Appeal Br. 8—9. Appellant argues that
the claimed invention is in the field of surgery and surgical instrument
systems, which is not “the same field of endeavor as fishing poles or the like
just because they each include an electrical component.” Id. at 10.
Appellant also argues that the problem faced by the inventor “relates to the
valuable space in the accessory, limited energy storage capacity, and the
time and complexity of surgery,” and that Ring’s fishing pole with a
detachable light, would not logically commend itself to an inventor faced
with these problems. Id. at 11—12 (citing Spec, para 2). Appellant contends
that by using Ring, the Examiner improperly relies on hindsight by
“[djefining the problem in terms of its solution.” Id. at 12 (citing Monarch
Knitting Machinery Corp. v. Fukuhara Industrial & Trading Co., Ltd, 139
F.3d 877 (Fed. Cir. 1998), citing In reAntle, 444 F.2d 1168, 1171-72
(CCPA 1971) (warning against selection of prior art with hindsight).
The Examiner responds that the finding that Ring is from the same
field of endeavor is withdrawn. Ans. 2. However, the Examiner maintains
that Ring is reasonably pertinent to the problem of providing an electrical
connection to a shaft-mounted accessory. Id. at 3. The Examiner states that
Zemlok as modified by Becker teaches one type of electrical connection
between the accessory and the shaft, but that one of ordinary skill in the art
would look to “other references that solve similar problem(s) of electrical
connection between a shaft and a mounted accessory such as an illumination
device,” and thus would look to Ring. Id.
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Appeal 2017-000806
Application 13/281,569
Appellant replies that because the Examiner has defined the problem
to be solved in terms of its solution, the Examiner “has adapted an overly
narrow view that has infected the Examiner’s determination about the
content of the prior art,” and thus, “has improperly relied upon hindsight
reasoning in selecting the cited art.” Reply Br. 4.
Appellant’s position does not address the entire problem faced by the
inventor because the problem described by Appellant also includes how to
provide power to the distal end of the shaft where the accessory is to be
secured. Here, the combined teachings of Zemlok and Becker address the
aspects of the alleged problems identified by Appellant. See Ans. 3. As to
the additional aspect of how to provide power to a distal end of the shaft, the
combination of Zemlock and Becker provides one possible solution, namely,
to extend a power conduit along the external surface of the shaft. The
Examiner looks to Ring as an alternative approach for supplying power to a
distal end of a shaft, and thus Ring is pertinent to this aspect of the problem.
See id. Notwithstanding that Ring is in the field of fishing equipment, the
analogous prior art is not limited to surgical devices having remote power
sources, but includes other devices having an elongated shaft and a need to
provide power at a distal end thereof. See, e.g., Graham v. John Deere Co.
of Kansas City, 383 U.S. 1,35 (1966) (rejecting the argument that the cited
references were not “pertinent prior art” and stating that “[t]he problems
confronting [the patentee] and the insecticide industry were not insecticide
problems; they were mechanical closure problems”).
Appellant’s argument that the Examiner relied upon hindsight
reasoning in selecting Ring is based on the erroneous assertion that “the
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Appeal 2017-000806
Application 13/281,569
Examiner improperly defines the problem faced by the inventor.” Appeal
Br. 12; see also Reply Br. 4. Appellant, however, fails to point to any
instance in which the Examiner has not relied upon the teachings in the prior
art, and instead only upon teachings contained solely within Appellant’s
Specification in arriving at the conclusion that the claimed subject matter
would have been obvious.
Appellant also argues that because the Examiner improperly relies on
Ring, the Examiner fails to establish a prima facie case of obviousness.
Appeal Br. 13; see also Reply Br. 5. For the reasons set forth above, we do
not find persuasive Appellant’s arguments that Ring is non-analogous art.
Appellant has not persuasively shown error in the Examiner’s findings and
reasoning.
Accordingly, for the foregoing reasons, we sustain the rejection of
claims 1—4, 6—9, 13—17, and 20—24 under 35 U.S.C. § 103(a) as unpatentable
over Zemlok, Becker, and Ring.
DECISION
The decision of the Examiner to reject claims 1—4, 6—9, 13—17, and
20—24 under 35 U.S.C. § 103(a) as unpatentable over Zemlok, Becker, and
Ring is affirmed.
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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