Ex Parte Viola

Patent Trial and Appeal Board

Aug 31, 2018

14257086 (P.T.A.B. Aug. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/257,086 04/21/2014
50855 7590
Covidien LP
60 Middletown A venue
Mailstop 54, Legal Dept.
North Haven, CT 06473
09/05/2018
FIRST NAMED INVENTOR
Frank J. Viola
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.
H-US-02511CON(203-7602CON 1006
EXAMINER
JENNESS, NATHAN JAY
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
09/05/2018 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):
rs. patents. two@medtronic.com
mail@cdfslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK J. VIOLA
Appeal2017-005210
Application 14/257 ,086
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 20-39. We have jurisdiction over
this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellant's invention relates to a surgical instrument system.
Claims 20 and 30 are independent. Claim 20 is illustrative of the
claimed invention and reads as follows:
Appeal2017-005210
Application 14/257 ,086
20. A surgical instrument system, comprising:
an energy storage device;
a surgical instrument including:
a housing;
a shaft extending from the housing and having at least one
first electrical contact adapted to electrically communicate
with the energy storage device; and
a tool assembly secured to the shaft;
and
an accessory defining a U-shaped channel, the U-shaped
channel supporting at least one second electrical contact
therein, the U-shaped channel being securable to the shaft
of the surgical instrument to electrically connect the at
least one first electrical contact and the at least one second
electrical contact together upon the shaft being inserted
through an open side of the U-shaped channel, the at least
one first electrical contact and the at least one second
electrical contact being adapted to communicate electrical
energy between the energy storage device and the
accessory.
THE REJECTIONS
The Examiner has rejected:
(i) claims 20-23, 25, 27-33, 35, and 37-39 under 35 U.S.C.
§ I03(a) as being unpatentable over Horrell (US 2006/0291195 Al,
published Dec. 28, 2006) in view of Zemlok (US 2009/0090763 Al,
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Application 14/257 ,086
published Apr. 9, 2009), Becker (EP 1 913 864 Al, published Apr. 23,
2008), and Ring (US 5,943,809, issued Aug. 31, 1999); and
(ii) claims 24, 26, 34, and 36 under 35 U.S.C. § I03(a) as being
unpatentable over Horrell in view of Zemlok, Becker, Ring, and Irion (US
2002/0049367 Al, published Apr. 25, 2002).
ANALYSIS
Claims 20-23, 25, 27-33, 35, and 37-39--§ 103(a)--
Horrell/Zemlok/Becker/Ring
Appellant argues claims 20-23, 25, 27-33, 35, and 37-39 as a group,
providing no separate arguments for patentability of any particular claims.
See Appeal Br. 7-12. Accordingly, we take claim 20 as representative of the
group, and claims 21-23, 25, 27-33, 35, and 37-39 stand or fall with claim
20.
The Examiner finds that the combined teachings of Horrell, Zemlok,
and Becker disclose most of the limitations of claim 20, including, inter alia,
an electrically-powered accessory defining a U-shaped channel (Becker),
with the exception that the combination of these references does not disclose
a shaft having an electrical contact in communication with an energy storage
device, and that the U-shaped channel of the accessory in Becker does not
have an electrical contact to electrically connect to the electrical contact on
the shaft. See Final Act. 6-10. 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, as an alternative way
of connecting a light accessory to an energy storage device via a shaft
extending from a housing. Id. at 10.
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The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art to modify the surgical instrument system resulting
from the combined teachings, of Horrell, Zemlok, and Becker, in applying
the teachings of Ring,
to position the battery and wires required to power the accessory
internal to the surgical instrument ( eliminating the need for the
accessory shaft), such that that the wires connect the battery to a
first pair of electrical contacts on the surgical instrument shaft
that electrically communicate with a second pair of electrical
contacts within a U-shaped channel of the accessory when the U-
shaped channel is inserted over the shaft.
Final Act. 12 (emphasis omitted). The Examiner states that the reason for so
modifying the surgical instrument system is
Id.
to at least improve the mobility of the surgical instrument system
within a surgical cavity by minimizing the size of the distal end
of the surgical system through the elimination of the shaft of the
accessory via the incorporation of its components into the shaft
of the surgical instrument.
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 9. Appellant
also argues that the problems faced by the inventor "relate 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
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problems. Id. at 10-11. Appellant contends that by using Ring, the
Examiner improperly relies on hindsight by "[ d]efining the problem in terms
of its solution." Id. at 11-12 (citing Monarch Knitting Machinery Corp. v.
Fukuhara Industrial & Trading Co., Ltd, 139 F.3d 877 (Fed. Cir. 1998),
citing In re Antle, 444 F.2d 1168, 1171-72 (CCPA 1971) (warning against
selection of prior art with hindsight). Appellant also argues 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 infected his
determination about the content of the prior art." Appeal Br. 12.
In the Reply Brief, Appellant raises, for the first time, arguments
directed to whether Horrell, Zemlok, and/or Becker might not be analogous
art, alleges certain shortcomings in the disclosures in those references, and
asserts that there is no motivation or reason to look to Ring. Reply Br. 2-5.
To the extent that these arguments extend beyond whether Ring is or is not
reasonably pertinent to a problem faced by Appellant, and thus is or is not
analogous art, the arguments are not considered for the purposes of the
present appeal, as they are not responsive to any new argument raised in the
Answer, and good cause has not been shown as to why the arguments were
not previously made. 37 C.F.R. § 41.41(b)(2). The Examiner has
consistently taken the position that the teachings of Ring are pertinent to the
problem of providing an electrical connection to a shaft-mounted accessory.
Final Act. 11; Ans. 3. Appellant's expanded arguments regarding the
alleged use of hindsight reconstruction are also not considered for the
purposes of this appeal, for the same reason.
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As noted above, the Examiner maintains that Ring is reasonably
pertinent to the problem of providing an electrical connection to a shaft-
mounted accessory. Ans. 3--4. The Examiner states that Horrell as modified
by Zemlok and Becker teaches the attachment of a powered accessory to a
surgical instrument shaft, and that Ring is applied to "address the second
problem of providing an electrical connection to a powered accessory
mounted to a shaft." Id. at 3. The Examiner maintains that Ring is germane
to the obviousness of selecting a known type of electrical connection
between a shaft and a shaft-mounted power accessory, and that one of
ordinary skill in the art would look to "other references that solve similar
problem( s )" since at least Horrell discloses a need to ensure that the lighting
accessory is as small in size as possible. Id. at 3--4.
Appellant's arguments do not apprise us of error in the Examiner's
position. The problem faced here by the inventor includes how to provide
power to an accessory other than by a self-contained power source, in that
the power source takes up valuable space, and how to increase the longevity
of providing energy to the accessory, while not adversely affecting the time
and complexity of surgeries. Spec. 1. Because a need is apparent to
separate the power source from the accessory, the problem 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 Horrell, Zemlok, and Becker
address the initial 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 Horrell, Zemlock, and Becker provides
one possible solution, namely, to extend a power conduit along the external
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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. at 3--4. As noted above, and not
contested by Appellant, modifying the instrument in view of Ring is for the
purpose of improving the mobility of the surgical instrument system within a
surgical cavity via the incorporation of its components into the shaft of the
surgical instrument. Ans. 12. 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
Examiner improperly defines the problem faced by the inventor." Appeal
Br. 11-12; see also Reply Br. 7-8. 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
the disclosure of Ring, the Examiner fails to establish a prima facie case of
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obviousness. Appeal Br. 13. 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 20 under 35 U.S.C. § 103(a) as being unpatentable over Horrell,
Zemlok, Becker, and Ring. Claims 21-23, 25, 27-33, 35, and 37-39 fall
with claim 20.
Claims 24, 26, 34, and 36--§ 103(a)--Horrell/Zemlok/Becker/Ring/Irion
Appellant does not present any arguments specific to these claims, nor
to the Irion reference included in this ground of rejection. For the reasons
presented above, the rejection of these claims as being unpatentable over
Horrell, Zemlock, Becker, Ring, and Irion, is sustained.
DECISION
The rejections of claims 20-39 are 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)(l )(iv).
AFFIRMED
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