DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/2/2024 has been entered.
Response to Arguments
Applicant's arguments filed 10/2/2024 have been fully considered but they are not persuasive.
Claim 11 has been canceled by the current amendment. The rejection of Clam 11 under 35 U.S.C. 112(a) is moot, and is therefore withdrawn.
Applicant’s arguments regarding the rejection of Claim 12 under 35 U.S.C. 112(b) as being indefinite have been fully considered and are persuasive to the extent that the indefiniteness issue as previously framed has been resolved. The previous rejection under 35 U.S.C. 112(b) is therefore withdrawn. However, Claim 12 is now indefinite for other reasons. Upon further consideration, new grounds of rejection are made under 35 U.S.C. 112(b).
Applicant’s arguments regarding the rejection of Independent Claim 1 under 35 U.S.C. 102 as being anticipated by US 2014/0051304 A1 to Hoegerle et al. (“Hoegerle”) have been fully considered and are persuasive to the extent the Examiner agrees that (1) Hoegerle’s “intelligent device” is not physically “integrated” into the Hoegerle’s “application part” in the manner the Present Specification suggests, and (2) Hoegerle’s “intelligent device” does not communicate “wirelessly” in the manner claimed. Accordingly, the rejection is withdrawn. However, upon further consideration, new grounds of rejection is made in view of previously cited US 20130331860 A1.
With respect to Applicant’s arguments regarding Claim 7 the rejection of Claim 7 under 35 U.S.C. 102 as being anticipated by Hoegerle, Applicant’s arguments are persuasive to the extent that the Examiner agrees that Hoegerle does not disclose the entirety of Claim 1 as amended, but are otherwise not persuasive. Accordingly, the rejection is withdrawn. However, upon further consideration, new grounds of rejection is made in view of previously cited US 20130331860 A1.
Applicant argues that “Hoegerle’s resistor 264 cannot enable the application parts to communicate with each other” because “[r]esistor 264 is merely a passive element. Applicant’s arguments would be persuasive but-for the indefiniteness issues explained below, which prevent the basis of these arguments from being reflected in the claim language. It is unclear how a single “intelligent device” can be integrated into “several application parts,” and enable communication among “several applications parts.”
Applicant’s arguments regarding the rejection of dependent Claim 4 stands under 35 U.S.C. 103 as unpatentable over Hoegerle in view of US 2017/0258551 ("Smith"), Claim 5 under 35 U.S.C. 103 as unpatentable over Hoegerle, Smith and US 2017/0209145 to ("Swayze"), Claims 6 and 13 under 35 U.S.C. 103 as unpatentable over Hoegerle and Swayze, Claim 8 under 35 U.S.C. 103 as unpatentable over US 2014/0051304 to Hoegerle, Smith and US 2013/0331860 ("Komuro"), Claims 9 and 10 under 35 U.S.C. 103 as unpatentable over Hoegerle, Smith, Komuro and US 2008/0164296 ("Shelton") and Claim 12 stands rejected under 35 U.S.C. 103 as unpatentable over Hoegerle in view of US 2017/0258551 ("Smith") as evidenced by a Wikipedia reference "Radio-frequency identification,” Applicant’s arguments have been fully considered and are persuasive to the extent that the Examiner agrees that Hoegerle does not disclose the entirety of Claim 1 from which each depends. Accordingly, the rejection is withdrawn. However, upon further consideration, new grounds of rejection is made in view of previously cited US 20130331860 A1 and US 2008/0255607 A1.
With respect to Claim 6, Applicant additionally argues that Hoegerle and Swayze teach a different manner of communication than that recited by Claim 6. Applicant’s arguments are not persuasive because the language of Claim 6 does not support the distinction highlighted by Applicant. Claim 6 recites “several inputs for sensor signals of the application part” which appear from Applicant’s diagram (which diagram is not in the Present Drawings) to be relevant to the claimed communication. However, the Present Specification does not explain what such an “input” is in the context of the amorphously described “intelligent device.”
With respect to Claim 9, Applicant additionally argues that Shelton does not teach such positioning as recited by Claim 9. Applicant states that Shelton’s intelligent device and coils “always form separate and adjacent units from each other, and that thus “a coil surrounds the intelligent device according to claim 9 is not suggested by Shelton.” Applicant’s position is unclear. In Shelton’s Fig. 13, coil 202 surrounds processor 198. However, any difference in position would be a mere rearrangement of parts. See MPEP 2144.04(VI)(C).
With respect to Applicant’s arguments regarding Claim 12, Applicant’s arguments are persuasive to the extent that the Examiner agrees that Hoegerle’s RFID does not read on the claim. Accordingly, the rejection is withdrawn. However, new grounds of rejection is made in view of US 2008/0255607 A1.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
Claims 4 and 14, “energy storage device,” which is being interpreted as “lithium-ion or lithium-polymer batteries” (Present Specification at Pg. 5, Ln. 30-32) and functional equivalents thereof.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-2, 4-7, 9-10, 12, and 14, and Claims 8 and 13 by dependency, are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding Independent Claim 1, Claim 1 recites “an intelligent device.” However, the Present Specification provides no guidance as to what “an intelligent device” is. The Present Specification states only of the “intelligent device” that “[a]n intelligent device is generally understood to mean a device that deals with the automation of intelligent behavior and machine learning” (Present Specification at Pg. 4, Ln. 27-29). The Present Specification elaborates that “The 'intelligence'/intelligent device of the present invention has various basic information of the application part, such as serial number, date of manufacture, maintenance data, etc.” (Present Specification at Pg. 4, Ln. 29-31). By its broadest reasonable interpretation in view of the Present Specification, the term “intelligent device” includes any physical object that “deals” with the automation of intelligent behavior and machine learning: anything from computer processers and their electrical components to input/output devices or systems that include either. The Present Drawings provide no further detail, depicting only generic rectangular component. Based on the present disclosure, one of ordinary skill in the art would be unable to deduce what is contemplated by the term “intelligent device.” Accordingly, the written description fails to reasonably convey to one skilled in the relevant art that the inventor had possession of the claimed invention at the time the invention was filed.
For purposes of this Office Action, the limitation “intelligent device” is being interpreted to mean any “device that deals with the automation of intelligent behavior and machine learning,” provided such device “has various basic information of the application part, such as serial number, date of manufacture, maintenance data, etc.”
Regarding Claims 2, 4-7, 9-10, 12 and 14, Claims 2, 4-7, 9-10, 12 and 14 contain the same limitation and are fail to comply with the written description requirement for the same reasons as does Claim 1.
Further regarding Claim 6, Claim 6 recites “wherein the intelligent device has several inputs for sensor signals of the application part…” The Present Specification provides no detail regarding the recited” several inputs, but instead recites the claim language nearly verbatim. The Present Drawings provide no additional guidance, but instead show a set of arrows (18a, 18b, and 18c) pointing towards a rectangular block indicated as the intelligent device:
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As such, based on the present disclosure, one of ordinary skill in the art would be unable to deduce what is contemplated by the term “several inputs for sensor signals of the application part.” Accordingly, the written description fails to reasonably convey to one skilled in the relevant art that the inventor had possession of the claimed invention at the time the invention was filed.
For purposes of this Office Action, Claim 6 is being interpreted to require that the intelligent device be capable of interfacing with sensors.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 7 and 12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding Claim 7, Claim 7 recites “wherein the intelligent device is configured to enable communication and exchange of information communicate with the control unit and communicate enable communication and exchange of information among several application parts, each of which is integrated with the intelligent device.” It is unclear how a single “intelligent device” can be integrated into “several application parts,” and enable communication among “several applications parts.”
For purposes of this Office Action, Claim 7 is being interpreted to require that each of the “several application parts” is useable with the “intelligent device.”
Regarding Claim 12, Claim 12 recites “wherein the energy storage device is charged in the OFF state and then supplies energy to the intelligent device in the ON state and/or in the separated state.” That the recited “energy storage device” is “charged” at a particular time and “supplies energy” at a particular time pertains to how the device is used. It is thus unclear how Claim 12 further limits the structure of the “communication device” of Claim 1.
For purposes of this Office Action, the limitation “wherein the energy storage device is charged in the OFF state and then supplies energy to the intelligent device in the ON state and/or in the separated state” is being interpreted to mean that the recited energy storage device is capable of such charging and supplying energy as claimed.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 2 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over previously cited US 2014/0051304 A1 to Hoegerle et al. (“Hoegerle”) in view of previously cited US 2013/0331860 A1 to Komuro et al. (“Komuro”).
Regarding Independent Claim 1, Hoegerle discloses:
A communication device (Abstract, “The system further comprises an electrical switching device which, in the coupling position, is moveable from an OFF position, in which at least one first electrical coupling contact of the first coupling device and at least one first electrical coupling contact of the second coupling device are out of engagement, into an ON position in which the at least one first electrical coupling contact of the first coupling device and the at least one first electrical coupling contact of the second coupling device are in electrically conductive contact or engagement.”);
The preamble limitation “communication” (Ln. 1, “A communication device”) is being interpreted as a mere statement of purpose or use (i.e., the claimed “device” is used/purposed for communication). See MPEP 2111.02(II).
for a surgical coupling system (Fig. 2, “surgical coupling system 60”);
having a first coupling device (Fig. 2, “coupling device 62”);
and a second coupling device (Fig. 2, “coupling device 64”);
each having at least two mechanically engageable electric coupling contacts, (Para. [0091], “The first coupling device 62 comprises the coupling contacts 66, 67, 68 and 69, the second coupling device 64 comprises the coupling contacts 70, 71, 72 and 73.”);
and having a separated state, Para. [0006], “In a first aspect of the invention, a surgical coupling system comprises a first surgical coupling device and a second surgical coupling device each having at least two electrical coupling contacts that are moveable mechanically into engagement with one another;” Para. [0091], “The coupling system 60 is illustrated in FIG. 2 in a separated position in which the two coupling devices 60 and 62 are completely separated from each other, thus in particular, are mechanically out of engagement.”);
an OFF state in which at least one electric coupling contact of the first coupling device and of the second coupling device are disengaged, (Para. [0006], “The surgical coupling system further comprises an electrical switching device which, in the coupling position, is moveable from an OFF position, in which at least one first electrical coupling contact of the first coupling device and at least one first electrical coupling contact of the second coupling device are out of engagement, into an ON position in which the at least one first electrical coupling contact of the first coupling device and the at least one first electrical coupling contact of the second coupling device are in electrically conductive contact or engagement, and/or vice versa.”);
and having an ON state in which the at least one electric coupling contact of the first coupling device and of the second coupling device are in electrically conductive contact, (Para. [0006]);
the communication device further comprising: an application part that is manually grippable; ” (Para. [0080], “A surgical drive system bearing the general reference symbol 10 is illustrated schematically in FIG. 1 wherein said system comprises a control and/or regulating device in the form of a controller 12, five hand pieces 14 a to 14 e, two shaver hand pieces 16 a and 16 b, a pistol hand piece 18, two supply lines in the form of terminal cables 20 and 22 and also a foot control 24. All of the hand pieces mentioned above comprise an integrated electric motor serving as a drive means and thus form drive units.”);
an electric motor for driving a surgical tool attached to the application part, the electric motor housed in the application part; (Para. [0080], “All of the hand pieces mentioned above comprise an integrated electric motor serving as a drive means and thus form drive units.”)
a control unit for regulating and/or controlling the electric motor; (Para. [0113], “The electric motor 82 can then be controlled by the controller 12 in a desired manner for setting a working tool into rotation by the electric motor 82 for example.”);
an intelligent device … [incorporated] in the application part that is configured to maintain a communication providing an exchange of information between the application part and the control unit in the OFF state and in the ON state; (Para. [0112], “In the OFF position, by applying a voltage to the lines 74 and 76 and by determining the current then flowing together with knowledge of the resistance values of the motor windings 79 and 80, a resistance value of the resistance 264 can be computed and, from the resistance value thereby determined, a conclusion can in turn be drawn as to the type of the electric motor 82. This determination can be effected automatically by appropriate configuration or programming of the controller 12.”);
Hoegerele’s “intelligent device” is not “integrated in the application part” in the manner claimed. This deficiency is addressed below.
Hoegerle’s “resistance 264” is such an “intelligent device” as claimed when the term is afforded its broadest reasonable interpretation.
See Present Specification at Pg. 9, Ln. 7-14 (“The motor winding 21 is connected in an electrically conductive manner on the one hand to the coupling contact 9 and on the other hand to the intelligent device 13, which is connected in series with the electric coupling contact 10. The electric coupling contact 9 is connected in parallel with the intelligent device 13 and the electric coupling contact 10. A kind or type of the application part 11 can be unambiguously identified via the intelligent device 13. By a corresponding design or programming of the control unit, this determination/identification can be carried out automatically.”);
See Present Specification at Pg. 4, Ln. 27-32 (“An intelligent device is generally understood to mean a device that deals with the automation of intelligent behavior and machine learning. The 'intelligence'/intelligent device of the present invention has various basic information of the application part, such as serial number, date of manufacture, maintenance data, etc. The intelligent device passes this basic information to the control unit. In the control unit, the information is collected/stored and evaluated/processed.”).
Hoegerle’s “resistance 264” “deals with the automation of intelligent behavior and machine learning” in the same manner as alluded to in the Present Specification because Hoegerle’s “resistance 264” “has various basic information of the application part” in that the type of electric motor can be determined based on Hoegerle’s “resistance 264.”
This interpretation may merit reconsideration were the specifics of the claimed “intelligent device” elaborated upon (e.g., additional structure, additional details regarding implementation of the claimed intelligence, etc.).
When Hoegerle’s device is in the “ON position,” Hoegerle’s “resistance 264” is still “maintain[ing] a communication between the application part and the control unit” when the term is afforded its broadest reasonable interpretation. The communication being maintained is whether a conclusion can be drawn as to the type of the electric motor in use. When Hoegerle’s device is in the ON position, the device is communicating that such a determination cannot be made.
This interpretation would merit reconsideration were the particulars of the described communication and/or intelligent device expanded upon in the claim.
and a supply cable having a maximum of three lines between the application part and the control unit, (Para. [0091], “The terminal cable 20 comprises just three lines 74, 75 and 76 via which three motor windings 78, 79 and 80 of an electric motor 82 integrated into the hand-piece 14 can be supplied with current.”).
Hoegerle does not disclose:
an intelligent device integrated in the application part…
wherein the communication between the application part and the control unit is wireless.
Komuro describes a “…surgical operation support system on which a surgical instrument is mounted for use…” (Para. [0003]).
Komuro teaches:
an intelligent device integrated in the application part… (Para. [0085], “FIG. 8B shows a configuration example of an IC (a wireless communication portion) 105 for wireless communication of the surgical instrument 100 and an IC (a wireless communication portion) 204 for wireless communication of the arm portion 200.”);
wherein the communication between the application part and the control unit is wireless. (Para. [0085]).
It would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Hoegerle with the teachings of Komuro (i.e., to use such an IC as taught by Komuro as the “intelligent device” of Hoegerle) in order to allow for wireless communication of measurement results (Komuro at Para. [0085]).
Regarding Claim 2, the combination of Hoegerle and Komuro renders obvious the entirety of Claim 1 as explained above.
Hoegerle additionally teaches:
wherein the intelligent device is directly connected in a signal path between a second electric coupling contact of the second coupling device and the electric motor (Figs. 16a-16c; see Annotated Fig. 16a, below).
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Regarding Claim 7, the combination of Hoegerle and Komuro renders obvious the entirety of Claim 1 as explained above.
Hoegerle additionally teaches:
wherein the intelligent device is configured to enable communication and exchange of information communicate with the control unit and communicate enable communication and exchange of information among several application parts, each of which is integrated with the intelligent device. (Para. [0069], “In order to enable the type of hand-piece that is connected thereto to be automatically determined by a control and/or regulating device for example, it is expedient if the hand-piece comprises at least one coding element for coding the type of the hand-piece. For example, the coding element can be in the form of an electronic circuit. In particular thereby, it may be an RFID chip;” Para. [0112], “…from the resistance value thereby determined, a conclusion can in turn be drawn as to the type of the electric motor 82. This determination can be effected automatically by appropriate configuration or programming of the controller 12.”).
Hoegerle’s intelligent device (i.e., “resistor 264”) communicates with Hoegerle’s “application parts” (i.e., hand pieces 14 a to 14 e, 16 a and 16 b) by “enable[ing] the type of hand-piece that is connected thereto to be automatically determined” (Hoegerle at Para. [0069]).
Hoegerle’s intelligent device (i.e., “resistor 264”) communicates with Hoegerle’s control unit (i.e., “controller 12”) because the above determination “can be effected automatically by appropriate configuration or programming of the controller 12.”Para. [0080], “All of the hand pieces mentioned above comprise an integrated electric motor serving as a drive means and thus form drive units.”);
As explained above, Claim 7 is being interpreted to require that each of the “several application parts” is useable with the “intelligent device.”
Claims 4, 8, 12 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over previously cited US 2014/0051304 A1 to Hoegerle et al. (“Hoegerle”) in view of US 2013/0331860 A1 to Komuro et al. (“Komuro”) as applied to Claim 1 above, and further in view of US 2008/0255607 A1 to Zemlock (“Zemlock”).
Regarding Claim 4, the combination of Hoegerle and Komuro renders obvious the entirety of Claim 1 as explained above.
Komuro further teaches:
wherein an energy … device is provided in or attached to the application part and is electrically connected to the intelligent device (Para. [0088], “The IC 204 for wireless communication has the loop antennas 204 a and 204 b, a power supply 204 c, and an A/D conversion portion 204 d.”).
As explained above, the limitation “energy storage device” is being interpreted to mean a “lithium-ion or lithium-polymer batteries” and functional equivalents thereof.
Komuro’s “power supply 204c” is an “energy device,” but does not perform the function of “energy storage.”
Zemlock describes a “Powered surgical instrument” (Title) which includes an “identification system” (Para. [0056]). Zemlock is analogous art.
Zemlock teaches:
an energy storage device (Para. [0057], “The power or battery pack 400 can incorporate a component for identifying the type of power pack 400 loaded with powered surgical instrument 100 or for sending feedback concerning the status of power pack 400.”).
It would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of combined Hoegerle and Komuro with the teachings of Zemlock (i.e., to use such a battery as taught by Zemlock in the device of combined Hoegerle and Komuro) in order to power the device (Zemlock at Para. [0050]).
It would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of combined Hoegerle and Komuro with the teachings of Zemlock (i.e., to use such a battery as taught by Zemlock in the device of combined Hoegerle and Komuro) because such a modification entails only the simply substitution of one known element for another to yield predictable results.
The prior art contained a device (i.e., the device of combined Hoegerle and Komuro) which differed from the claimed device by the substitution of some components (i.e., a DC power supply) with other components (i.e., a battery).
The substituted components and their functions were known in the art. For example, Zemlock discloses such a battery at Para. [0057].
One of ordinary skill in the art could have substituted one known element for another, and the results of the substitution would have been predictable.
Regarding Claim 8, the combination of Hoegerle, Komuro and Zemlock renders obvious the entirety of Claim 4 as explained above.
Komuro additionally discloses:
further comprising a voltage supply that is indirect. (Para. [0087], “In addition, by inductive coupling between the loop antenna 204a and the loop antenna 105a of the IC 105 for wireless communication, the loop antenna 204a supplies power generated in the power supply 204c to the potentiometer 102. The loop antenna 204b is connected to the A/D conversion portion 204d. In addition, the loop antenna 204b outputs the voltage value V transmitted by inductive coupling between the loop antenna 204b and the loop antenna 105b of the IC 105 for wireless communication to the A/D conversion portion 204d.”).
Regarding Claim 12, the combination of Hoegerle, Komuro and Zemlock renders obvious the entirety of Claim 4 as explained above.
Zemlock additionally discloses:
wherein the energy storage device is charged in the OFF state and then supplies energy to the intelligent device in the ON state and/or in the separated state (Para. [0058], “Power pack 400, in certain embodiments according to the present disclosure, comprises a rechargeable battery;” Para. [0050], “It is also envisioned that any combination of battery cells 400 (FIG. 4), a battery pack, fuel cell and/or high-energy capacitor may be used to provide power…”).
As explained above, the limitation “wherein the energy storage device is charged in the OFF state and then supplies energy to the intelligent device in the ON state and/or in the separated state” is being interpreted to mean that the recited energy storage device is capable of such charging and supplying energy as claimed.
Zemlock’s battery is capable of “being charged in the OFF state” by virtue of being “rechargeable.”
Zemlock’s batter is capable of “suppl[ying] energy to the intelligent device in the ON state and/or in the separated state” by virtue of it “provid[ing] power.”
Regarding Independent Claim 14, Hoegerle discloses:
A communication device (Abstract, see rejection of Claim 1, above);
for a surgical coupling system (Fig. 2, “surgical coupling system 60”);
having a first coupling device (Fig. 2, “coupling device 62”);
and a second coupling device, (Fig. 2, “coupling device 64”);
each of the first coupling device and the second coupling device having a first electric coupling contact, a second electric coupling contact, a third electric coupling contact, and a fourth electric coupling contact that are mechanically engageable, (Para. [0091], “The first coupling device 62 comprises the coupling contacts 66, 67, 68 and 69, the second coupling device 64 comprises the coupling contacts 70, 71, 72 and 73.”);
the first coupling device and the second coupling device each having a separated state, an OFF state in which the second electric coupling contact and the third electric coupling contact of the first coupling device and of the second coupling device are disengaged and the first electric coupling contact and the fourth electric coupling contact of the first coupling device and of the second coupling device are electrically connected with each other, and having an ON state in which the first electric coupling contact, second electric coupling contact, third electric coupling contact and fourth electric coupling contact of the first coupling device and of the second coupling device are in electrically conductive contact, (Para. [0006], “In a first aspect of the invention, a surgical coupling system comprises a first surgical coupling device and a second surgical coupling device each having at least two electrical coupling contacts that are moveable mechanically into engagement with one another;” Para. [0091], “The coupling system 60 is illustrated in FIG. 2 in a separated position in which the two coupling devices 60 and 62 are completely separated from each other, thus in particular, are mechanically out of engagement;” Para. [0091], “The first coupling device 62 comprises the coupling contacts 66, 67, 68 and 69, the second coupling device 64 comprises the coupling contacts 70, 71, 72 and 73.”);
the communication device further comprising: A. an application part that is manually grippable (Para. [0080], “A surgical drive system bearing the general reference symbol 10 is illustrated schematically in FIG. 1 wherein said system comprises a control and/or regulating device in the form of a controller 12, five hand pieces 14 a to 14 e, two shaver hand pieces 16 a and 16 b, a pistol hand piece 18, two supply lines in the form of terminal cables 20 and 22 and also a foot control 24. All of the hand pieces mentioned above comprise an integrated electric motor serving as a drive means and thus form drive units.”);
and an electric motor for driving a surgical tool attached to the application part, the electric motor being housed in the application part; (Para. [0080], “All of the hand pieces mentioned above comprise an integrated electric motor serving as a drive means and thus form drive units.”)
B. a control unit for regulating and/or controlling the electric motor, (Para. [0113], “The electric motor 82 can then be controlled by the controller 12 in a desired manner for setting a working tool into rotation by the electric motor 82 for example.”);
wherein: the electric motor comprises a first motor winding, a second motor winding and a third motor winding, (Para. [0091], “The terminal cable 20 comprises just three lines 74, 75 and 76 via which three motor windings 78, 79 and 80 of an electric motor 82 integrated into the hand-piece 14 can be supplied with current.”);
the first motor winding is at a first end connected in a star shape with the second motor winding and the third motor winding, (Para. [0105], “The motor winding 79 is connected to the motor windings 78 and 80 in a star configuration.”);
and at a second end to the first electric coupling contact of the second coupling device in an electrically conductive manner, (Para. [0105], “…the coupling contact 70 is connected to the motor winding 79 in an electrically conductive manner. “);
the second motor winding is connected in an electrically conductive manner to the second electric coupling contact of the second coupling device, (Para. [0105], “Furthermore, the motor winding 78 is connected to the coupling contact 71 in electrically conductive manner.”);
C. an intelligent device … [incorporated] in the application part that is configured to maintain a communication providing an exchange of information between the application part and the control unit in the OFF state and in the ON state, …; (Para. [0112], “In the OFF position, by applying a voltage to the lines 74 and 76 and by determining the current then flowing together with knowledge of the resistance values of the motor windings 79 and 80, a resistance value of the resistance 264 can be computed and, from the resistance value thereby determined, a conclusion can in turn be drawn as to the type of the electric motor 82. This determination can be effected automatically by appropriate configuration or programming of the controller 12;” see rejection of Claim 1, above);
and D. a supply cable having a maximum of three lines between the application part and the control unit, (Para. [0091], “The terminal cable 20 comprises just three lines 74, 75 and 76 via which three motor windings 78, 79 and 80 of an electric motor 82 integrated into the hand-piece 14 can be supplied with current.”);
wherein the three lines supplies power to the first motor winding, the second motor winding and the third motor winding of the electric motor, Para. [0091], “The terminal cable 20 comprises just three lines 74, 75 and 76 via which three motor windings 78, 79 and 80 of an electric motor 82 integrated into the hand-piece 14 can be supplied with current.”);
wherein the third motor winding is at a first end connected in an electrically conductive manner to the third electric coupling contact of the second coupling device and at a second end to the intelligent device, (Para. [0105], “The resistance 264 is connected in series between the motor winding 80 and the coupling contact 73;” Fig. 16A, see Annotated Comparison 1, below);
As can be seen in Annotated Comparison 1, Hoegerle’s Fig. 16A depicts the exact configuration that Applicant cites at Pg. 12 of Applicant’s Remarks filed 10/2/2024 as supporting Claim 14.
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the intelligent device being connected in series with the fourth electric coupling contact of the second coupling device, (Para. [0112]; Fig. 16A, see Annotated Comparison 1, above);
wherein the third electric coupling contact of the second coupling device is connected in parallel with the intelligent device and the fourth electric coupling contact of the second coupling device, (Para. [0112]; Fig. 16A, see Annotated Comparison 1, above);
Hoegerle does not disclose:
an intelligent device integrated in the application part…
wherein the communication between the application part and the control unit is wireless
and wherein an energy storage device is provided in or attached to the application part and is electrically connected to the intelligent device.
Komuro describes a “…surgical operation support system on which a surgical instrument is mounted for use…” (Para. [0003]).
Komuro teaches:
an intelligent device integrated in the application part… (Para. [0085], “FIG. 8B shows a configuration example of an IC (a wireless communication portion) 105 for wireless communication of the surgical instrument 100 and an IC (a wireless communication portion) 204 for wireless communication of the arm portion 200.”);
wherein the communication between the application part and the control unit is wireless (Para. [0085]).
and wherein an energy … device is provided in or attached to the application part and is electrically connected to the intelligent device (Para. [0088], “The IC 204 for wireless communication has the loop antennas 204 a and 204 b, a power supply 204 c, and an A/D conversion portion 204 d.”).
As explained above, the limitation “energy storage device” is being interpreted to mean a “lithium-ion or lithium-polymer batteries” and functional equivalents thereof.
Komuro’s “power supply 204c” is an “energy device,” but does not perform the function of “energy storage.”
It would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Hoegerle with the teachings of Komuro (i.e., to use such an IC as taught by Komuro as the “intelligent device” of Hoegerle) in order to allow for wireless communication of measurement results (Komuro at Para. [0085]).
Zemlock describes a “Powered surgical instrument” (Title) which includes an “identification system” (Para. [0056]). Zemlock is analogous art.
Zemlock teaches:
an energy storage device (Para. [0057], “The power or battery pack 400 can incorporate a component for identifying the type of power pack 400 loaded with powered surgical instrument 100 or for sending feedback concerning the status of power pack 400.”).
It would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of combined Hoegerle and Komuro with the teachings of Zemlock (i.e., to use such a battery as taught by Zemlock in the device of combined Hoegerle and Komuro) in order to power the device (Zemlock at Para. [0050]).
It would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of combined Hoegerle and Komuro with the teachings of Zemlock (i.e., to use such a battery as taught by Zemlock in the device of combined Hoegerle and Komuro) because such a modification entails only the simply substitution of one known element for another to yield predictable results.
The prior art contained a device (i.e., the device of combined Hoegerle and Komuro) which differed from the claimed device by the substitution of some components (i.e., a DC power supply) with other components (i.e., a battery).
The substituted components and their functions were known in the art. For example, Zemlock discloses such a battery at Para. [0057].
One of ordinary skill in the art could have substituted one known element for another, and the results of the substitution would have been predictable.
Claims 5, 6 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over previously cited US 2014/0051304 A1 to Hoegerle et al. (“Hoegerle”) in view of US 2013/0331860 A1 to Komuro et al. (“Komuro”) and US 2008/0255607 A1 to Zemlock (“Zemlock”) as applied to Claim 4 above, and further in view of previously cited US 2017/0209145 A1 to Swayze et al. (“Swayze”).
Regarding Claim 5, the combination of Hoegerle, Komuro and Zemlock renders obvious the entirety of Claim 4 as explained above.
The combination of Hoegerle, Komuro and Zemlock does not disclose:
wherein the intelligent device has a discharge protection fuse.
Swayze describes “A powered surgical instrument including an end effector, which includes jaws that are configured to transition between various closure states. The surgical instrument includes a sensor configured to measure the closure state of the jaws and a display configured to display information indicative to the detected closure state. The surgical instrument further includes a firing member movable between a first position and a second position to transition the end effector between the plurality of closure states and a motor configured to drive the firing member between the first position and the second position.” Swayze is thus analogous art.
Swayze teaches:
wherein the intelligent device has a discharge protection fuse (Para. [0521], “In one embodiment, to reduce electronic damage during large current draws in a sensing surgical instrument, the electronic subsystem 7028 of the surgical instrument comprises an over current/voltage protection circuit 7030 for the conductors for the sensors and/or electronic components 7005. … The over current/voltage protection circuit 7030 may utilize a mixture of integrated circuits, solid state components, micro-processors, firmware, circuit breaker, fuses, or PTC (positive temperature coefficient) type technologies.”).
It would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of combined Hoegerle, Komuro and Zemlock with the teachings of Swayze (i.e., to include a discharge protection fuse in the intelligent device of combined Hoegerle, Komuro and Zemlock) in order to prevent circuit damage (Swayze at Para. [0521]).
Regarding Claim 6, the combination of Hoegerle and Komuro renders obvious the entirety of Claim 1 as explained above.
wherein the intelligent device has several inputs for sensor signals of the application part and the intelligent device integrated in the application part is configured to receive the sensor signals of the application part and send the sensor signals to the control unit connected with the application part via the supply cable.
Swayze is analogous art as explained above.
Swayze teaches:
wherein the intelligent device has several inputs for sensor signals of the application part (Para. [0192]);
Swayze’s “microcontroller” is such an “intelligent device” as claimed when the term is afforded its broadest reasonable interpretation, and receives inputs from multiple sensors.
Swayze’s “closure trigger 32” and “firing trigger 130” are such “application parts” as claimed.
and the intelligent device integrated in the application part is configured to receive the sensor signals of the application part and send the sensor signals to the control unit connected with the application part via the supply cable ((Para. [0192], “After the safety button 134 has been moved to its firing position, referring primarily to FIG. 18A, the firing trigger 130 can be depressed to operate the motor of the surgical instrument firing system;” Para. [0189], “The distal housing portion 96 is configured for removable operable attachment to a control circuit board assembly 100 which is also operably coupled to the motor 82;” Para. [0192], “The sensors 803 and 804 can track the movement of the magnet 802 and can be in signal communication with a microcontroller on the circuit board 100.”).
As explained above, Claim 6 is being interpreted to require that the intelligent device be capable of interfacing with sensors.
Swayze’s “microcontroller” is capable of interfacing with sensors.
It would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of combined Hoegerle and Komuro with the teachings of Swayze (i.e., to configure the “intelligent device” of combined Hoegerle and Komuro such that it is capable of interfacing with sensors in the manner of Swayze’s microcontroller) in order to “provide information and/or feedback regarding the state of powered surgical instrument” (Swayze at Para. [0192]).
Regarding Claim 13, the combination of Hoegerle, Komuro and Swayze renders obvious the entirety of Claim 6 as explained above.
Swayze additionally discloses:
wherein the control unit is configured to process and evaluate the received sensor signals to control/drive the electric motor according to the sig