Ex Parte Viola et al

Patent Trial and Appeal Board

Sep 12, 2018

13425618 (P.T.A.B. Sep. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/425,618 03/21/2012
50855 7590
Covidien LP
60 Middletown A venue
Mailstop 54, Legal Dept.
North Haven, CT 06473
09/14/2018
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-00378DivCon3Cip 1859
EXAMINER
LONG, ROBERT FRANKLIN
ART UNIT PAPER NUMBER
3721
NOTIFICATION DATE DELIVERY MODE
09/14/2018 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, GREGG KREHEL,
GUIDO PEDROS, MICHAEL A. SOLTZ,
ROBERT DESANTIS, HENRY E. HOLSTEN, RUSSELL
HEINRICH, MICHAEL INGMANSON, PHILIP IRKA,
DAVID M. MCCUEN, and GENE A. STELLON
Appeal2018-001097
Application 13/425,618
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Frank J. Viola et al. (Appellants) 1 appeal under 35 U.S.C. § 134 from
the Examiner's decision rejecting claims 1, 3-11, 13, and 14. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is "Covidien LP, which
is a wholly-owned subsidiary of Medtronic PLC." Appeal Br. 1.
Appeal2018-001097
Application 13/425,618
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A surgical stapler, comprising:
a handle assembly;
a clamping device having a staple cartridge containing a
plurality of staples and an anvil to compress tissue there between;
a drive assembly at least partially located within the handle
and connected to the clamping device;
a motor operatively coupled to the drive assembly, the
motor variably operable between a first upper and lower
rotational speed value and a second upper and lower rotational
speed value; and
a controller operatively coupled to the motor, the
controller configured to control supply of electrical current to the
motor based on a rotational speed of the motor at a first current
level or a second current level, wherein when the motor operates
between the first upper and lower rotational speed values the
controller controls the supply of electrical current to the motor at
the first current level, and when the motor operates between the
second upper and lower rotational speed values the controller
controls the supply of electrical current to the motor at the second
current level.
REJECTIONS
I. Claims 1, 3-11, 13, and 14 stand rejected under 35 U.S.C. § I02(b) as
anticipated by Hooven (US 5,667,517, iss. Sept. 16, 1997).
II. Claims 1, 3-11, 13, and 14 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Hooven and Holgersson (US 2003/0066858 Al,
pub. Apr. 10, 2003).
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Application 13/425,618
DISCUSSION
Rejection I -Anticipation
Independent claim 1 recites, in relevant part, a
controller configured to control supply of electrical current to the
motor based on a rotational speed of the motor at a first current
level or a second current level, wherein when the motor operates
between the first upper and lower rotational speed values the
controller controls the supply of electrical current to the motor at
the first current level, and when the motor operates between the
second upper and lower rotational speed values the controller
controls the supply of electrical current to the motor at the second
current level.
Appeal Br. 11 (Claims App.). Independent claim 8 recites, in relevant part,
a
controller configured to control supply of electrical current to the
motor at either a first current level or a second current level based
on the rotational speed, the controller further configured to
control supply of the electrical current to the motor at the second
current level when the rotational speed is lower than a first lower
rotational speed value.
Id. at 13. Appellants argue that Hooven fails to disclose such limitations.
See id. at 4---6; Reply Br. 2-3. In particular, Appellants assert that Hooven's
controller does not provide first and second current levels to a motor based
on the rotational speed of the motor. See Appeal Br. 4--5. According to
Appellants, "[a]t best, Hooven ... discloses adjusting current to maintain a
constant or desired motor speed." Id. at 4 (emphasis omitted). For the
reasons that follow, Appellants' argument is persuasive of enor in the
Examiner's rejection.
In rejecting independent claims 1 and 8, the Examiner finds that
Hooven discloses "a controller (31/49) ... configured to control supply of
electrical current to the motor (col. 4, lines 45---67, col. 5, lines 39-53, figs.
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Application 13/425,618
1-14) which is capable of the function[s]" recited in the claims (i.e.,
controlling current based on motor rotational speed). Final Act. 3.
According to the Examiner, the claim language directed to "controlling
current and motor speed with the controller is a functional intended use
recitation." Id. at 4 (emphasis added). We disagree with the Examiner's
interpretation that the claim language regarding the controller functionality
amounts to recitations of intended use. Instead, the claim language recites
functions that the controller structure must be capable of performing in its
current state (i.e., without further modification or programming). See
Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1381 (Fed. Cir.
2011) ( affirming district court holding that "memory for storing" limitation
"requires that the memory is actually programmed or configured to store the
data collection application"); see also Spec. 15, 11. 7-9 ( describing that
"controller 28 is any electronic device being coupled to a memory for
executing one or more readable program instructions or alternatively may be
a suitable analog circuit"). In other words, to anticipate claims 1 and 8,
Hooven must disclose a controller that provides a first current level or a
second current level to the motor based on the rotational speed of the motor.
Here, the Examiner has not set forth sufficient evidence that Hooven' s
controller provides a first or a second current level to the motor based on the
rotational speed of the motor. Hooven teaches that if an "instrument is to be
interconnected to a controller to accept, store and manipulate data, the motor
may be connected to such controller and information such as current input,
power output, voltage and other parameters may be monitored by the
controller for manipulation, display, and use in a suitable manner." Hooven,
col. 4, 11. 58---62. Hooven discloses that "[t]he power delivered to the
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Application 13/425,618
instrument may be controlled by varying motor voltage and/or current to
achieve a constant motor speed with varying load." Id., col. 5, 11. 50-53.
Although Hooven's controller varies the current provided to the motor to
achieve a constant motor speed, the Examiner does not point to, nor do we
find, sufficient disclosure in Hooven that the controller provides a first
current level or a second current level to the motor based on the rotational
speed of the motor, as required by the claims.
For at least the above reasons, the Examiner fails to establish by a
preponderance of the evidence that Hooven anticipates the subject matter of
independent claims 1 and 8. Accordingly, we do not sustain the rejection of
independent claims 1 and 8, or dependent claims 3-7, 9-11, 13, and 14,
under 35 U.S.C. § 102(b) as anticipated by Hooven.
Rejection II - Obviousness
Claims 1 and 3-7:
In the alternative rejection of independent claim 1 under 35 U.S.C.
§ 103(a), the Examiner finds that, if Hooven's controller does not provide a
first or a second current to the motor based on the rotational speed of the
motor, Holgersson discloses, in relevant part,
controlling supply of electrical current (18) to the motor based
on a rotational speed of the motor at a first current level or a
second current level, wherein when the motor operates between
the first upper and lower rotational speed values the controller
controls the supply of electrical current to the motor at the first
current level and when the motor operates between the second
upper and lower rotational speed values the controller controls
the supply of electrical current to the motor at the second current
level motor variably operable between a first upper and lower
current or speed values, wherein the controller is further
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Appeal2018-001097
Application 13/425,618
configured to supply electrical current to the motor at the varied
current level in response to the rotational speed of the motor and
a driver circuit coupled to the motor and the controller, the driver
circuit (fig. 3) configured to measure the rotational speed of the
motor ( control signal controls supply of current to the motor and
regulates the rotational speed of the drive shaft 9 via analyzing
speed values with microprocessor 22, abstract, [0006, 0017-
0019], and see claim 1 ).
Final Act. 6. The Examiner determines that it would have been obvious to
modify Hooven' s controller to
control the supply of electrical current in response to the
rotational speed of the motor being lower than the second lower
rotational speed value[,] as taught by Holgersson[,] for improved
control means and/or, the motor variably operable between a first
upper and lower rotational speed value and a second upper and
lower rotational speed value as also taught by Holgersson.
Id. at 7-8.
Appellants argue that Holgersson does not remedy the aforementioned
deficiencies of Hooven because "Holgersson, like Hooven, fails to disclose
controlling the current based on the speed of the motor." See Appeal Br. 7-
9. Appellants assert that Holgersson "is completely silent about controlling
current based on the rotational speed of the instrument being between a 'first
upper and lower rotational speed values' or 'a second upper and lower
rotational speed values,' as recited in rejected claim 1." Reply Br. 4. We
agree that a sustainable case of obviousness has not been established.
Holgersson discloses that sensor 23 obtains rotational speed and
rotation count values of drive shaft 9, and "microprocessor 22 analyzes the
obtained values in a known manner and sends a control signal to the
transistor switches 28 and 31, whereupon the supply of current to the drive
motor 2 is regulated, thereby also regulating the rotational speed of the drive
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shaft 9." Holgersson ,r 19 (boldface omitted). Holgersson characterizes this
as an improvement over a prior art control device in which the
microprocessor controls the supply of current to the motor based on analysis
of values of measured current supplied to the motor. Id. ,r 6. Although
Holgersson discloses that the microprocessor controls current provided to
the motor to regulate the rotational speed of the drive shaft, based at least in
part on the rotational speed of the drive shaft, the Examiner does not point
to, nor do we discern, any disclosure in Holgersson that the microprocessor
controls the current level provided to the motor based on the rotational speed
of the drive shaft being in a first range or a second range. 2 In other words,
there is insufficient evidence that Holgersson's microprocessor controls the
supply of current to the motor at a first current level when the rotational
speed is between first upper and lower rotational speed values, and a second
current level when the rotational speed is between second upper and lower
rotational speed values, as called for in claim 1. Thus, the Examiner has not
established by a preponderance of the evidence that Holgersson discloses the
feature for which it was cited in the rejection.
Accordingly, based on the record before us, the Examiner has not met
the burden of establishing a proper case that independent claim 1 is
unpatentable based on the cited references. On this basis, we do not sustain
2 Paragraph 17 of Holgersson, also cited by the Examiner, is not directed to
the control of current to the drive motor. Paragraph 18 of Holgersson is
directed to the manner in which microprocessor 22, sensor 23, power supply
18, drive shaft 9, and drive motor 2 are connected, but does not provide any
details regarding the manner in which microprocessor 22 analyzes the
rotational speed values to generate a control signal.
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the rejection of independent claim 1, or its dependent claims 3-7, under
35 U.S.C. § 103(a) as unpatentable over Hooven and Holgersson.
Claims 8-11, 13, and 14:
In contrast to independent claim 1, independent claim 8 does not
require that the controller is configured to control supply of current at a first
level when the motor operates between first upper and lower rotational speed
values, and control supply current at a second level when the motor operates
between second upper and lower rotational speed values. Compare Appeal
Br. 12-13 (Claims App.), with id. at 11. As such, Appellants' arguments
regarding the controller controlling current supply based on the motor
rotational speed being in a first range or a second range, which we found
persuasive with respect to the rejection of claim 1 (see id. at 6-9; Reply Br.
3--4 ), are not commensurate with the scope of claim 8, and thus, are not
persuasive with respect to the rejection of claim 8. See In re Self, 671 F.2d
1344, 1348 (CCPA 1982) (noting that it is well established that limitations
not appearing in the claims cannot be relied upon for patentability).
Appellants' argument that Holgersson "fails to disclose controlling the
current based on the speed of the motor" (Appeal Br. 7) is not persuasive
because it is factually incorrect. Holgersson discloses that microprocessor
22 analyzes rotational speed values from sensor 23 and sends a control
signal to transistor switches 28 and 31 to regulate the supply of current to
drive motor 2. See Holgersson ,r 19.
For these reasons, Appellants' arguments do not apprise us of error in
the Examiner's determination that the subject matter of independent claim 8
would have been obvious. Accordingly, we sustain the rejection of claim 8,
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Application 13/425,618
and of its dependent claims 9-11, 13, and 14, for which Appellants rely on
the same arguments (see Appeal Br. 9), under 35 U.S.C. § 103(a) as
unpatentable over Hooven and Holgersson.
DECISION
The Examiner's decision rejecting claims 1, 3-11, 13, and 14 under
35 U.S.C. § 102(b) as anticipated by Hooven is REVERSED.
The Examiner's decision rejecting claims 1, 3-11, 13, and 14 under
35 U.S.C. § 103(a) as unpatentable over Hooven and Holgersson is
REVERSED as to claims 1 and 3-7, and is AFFIRMED as to claims 8-11,
13, and 14.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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