Covidien LP

Patent Trials and Appeals Board

Apr 30, 2021

2020005924 (P.T.A.B. Apr. 30, 2021)

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.
15/512,583 03/20/2017 Peter Hathaway H-
US-04152.USN4(203-1031
7936
50855 7590 04/30/2021
Covidien LP
60 Middletown Avenue
Mailstop 54, Legal Dept.
North Haven, CT 06473
EXAMINER
LOPEZ, ALEXIS F
ART UNIT PAPER NUMBER
3673
NOTIFICATION DATE DELIVERY MODE
04/30/2021 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):
docket@carterdeluca.com
rs.patents.two@medtronic.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER HATHAWAY

Appeal 2020-005924
Application 15/512,583
Technology Center 3600
Before DANIEL S. SONG, BRETT C. MARTIN, and
MICHAEL L. WOODS, Administrative Patent Judges.
WOODS, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 4, 5, 7, 8, 11, 12, and 14. See Appeal
Br. 7. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies Covidien LP, a wholly-owned subsidiary of
Medtronic PLC, as the real party in interest. Appeal Br. 1.
Appeal 2020-005924
Application 15/512,583

2
CLAIMED SUBJECT MATTER
The application is titled “Surgical Robotic Arm Support Systems and
Methods of Use.” Spec. 1. We reproduce independent claim 1, below, with
emphases added to particular language addressed in this Decision:
1. A surgical robotic arm support system, comprising:
a rail configured to be coupled to a surgical table and
including a plurality of discrete robotic arm mounting positions
each having discrete indicia associated therewith;
at least one mounting member configured to be removably
coupled to the rail at a selected one of the plurality of discrete
robotic arm mounting positions, wherein each mounting member
is configured to support a surgical robotic arm; and
a processor configured to:
identify a target mounting position for each surgical
robotic arm relative to the surgical table; and
output the identified target mounting position of
each surgical robotic arm by displaying the discrete
indicia corresponding to the identified target mounting
position on a display.
Appeal Br. 8 (Claims App.) (emphases added).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Jo US 2008/0058776 A1 Mar. 6, 2008
Anvari US 7,979,157 B2 July 12, 2011
Wilson US 8,146,599 B2 Apr. 3, 2012
See Final Act. 2–8.

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Application 15/512,583

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REJECTIONS
The following rejections are before us on appeal:
Claims Rejected 35 U.S.C. § Reference(s)/Basis
1, 5, 7, 8, 12, 14 103 Anvari, Wilson
4, 11 103 Anvari, Wilson, Jo
Ans. 3–7.
OPINION
1. Rejection – Anvari and Wilson
The Examiner rejects claims 1, 5, 7, 8, 12, and 14 as unpatentable
over Anvari in view of Wilson. Final Act. 2. Appellant argues these claims
as a group. See Appeal Br. 3–6. We select independent claim 1 as the
representative claim, with claims 5, 7, 8, 12, and 14 standing or falling with
claim 1. 37 C.F.R. § 41.37(c)(1)(iv).

a. Examiner’s Rejection
In rejecting claim 1, the Examiner finds that Anvari discloses several
of the claimed limitations, citing in part Anvari’s Figure 3. See Final Act. 2–
3. We reproduce Anvari’s Figure 3, below:
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Application 15/512,583

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Figure 3 “shows a coupling between an arm and a base station” of a
“multipurpose robotic operating system.” Anvari 1:39–43. The Examiner
finds that rail 18 is configured to be coupled to surgical table 10. Final Act.
2–3.
We further reproduce Anvari’s Figure 2, below:
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Figure 2 “shows a table of” a “multipurpose robotic operating system.”
Anvari, 3:39–41. The Examiner further finds that Anvari’s system includes
a plurality of discrete robotic mounting positions with “mounting members
16 for mounting robotic arms 12 in one of quadrants 100,” and that these
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Application 15/512,583

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“are discrete robotic arm mounting positions.” Final Act. 2; see also id. at 3
(citing Anvari, 2:38–67).
The Examiner acknowledges, however, that Anvari does not explicitly
disclose “a plurality of discrete robotic arm mounting positions each having
a discrete indicia associated therewith.” Id. at 3. To address this
shortcoming, the Examiner relies on Wilson and finds that Wilson teaches a
plurality of indexing apertures and indexing indicia. Id. (citing Wilson,
7:31–45). In modifying Anvari based on Wilson’s teachings, the Examiner
reasons,
It would have been obvious to one of ordinary skill in the art
before the effective filing date of the claimed invention to have
modified the robotic arm support system disclosed by Anvari
with the mounting positions and indicia as taught by Wilson in
order to facilitate mounting the robotic arms in a systematic and
repeatable way.
Id. at 3–4.
The Examiner further acknowledges that “Anvari (as modified by
Wilson) does not explicitly teach to output the identified target mounting
position of each surgical robotic arm by displaying the discrete indicia . . .
on a display,” but points out that Anvari’s system has a computer processor
and a display “that identifies the position and orientation of the robotic arms
and displays said position to a user.” Id. at 4 (citing Anvari, 7:31–46,
10:10–16). Based in part on these teachings, the Examiner reasons,
[I]t would have been obvious to one of ordinary skill in the art
before the effective filing date of the claimed invention to have
modified the robotic arm support system of Anvari to have tracks
with indexed apertures and indicia for repeatable placement of
robotic arms as taught by Wilson where the robotic operating
system as taught by Anvari can display to a user, the identified
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indicia of the mounted robotic arms via sensors that calculate the
position of said robot arms.
Id. at 4.

b. Analysis
In contesting the rejection, Appellant presents the following
arguments.
i. “displaying the discrete indicia corresponding to
the identified target mounting position on a
display”
First, Appellant argues that “the applied art fails to disclose, teach, or
suggest at least identifying ‘a target mounting position for each surgical
robotic arm’ and/or ‘displaying the discrete indicia corresponding to the
identified target mounting position on a display,’ as recited in independent
claims 1 and 8.” Appeal Br. 3. Appellant asserts that the Examiner’s
understanding of Anvari is wrong. See id. at 4 (“Appellant disagrees with
[the Examiner’s] interpretation of Anvari.”). Appellant explains that that
Anvari’s system only “displays on display 334 a virtual movement of a
surgical tool based on . . . movement of the surgical tool by an operator, and
not a ‘target’ mounting position.” Id.
Appellant’s argument is not persuasive.
When a rejection rests on the combined disclosures in the references,
an appellant cannot establish nonobviousness by attacking the references
individually. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986);
see also Ans. 4 (explaining the same). Appellant’s contention that Anvari
does not disclose a system that “targets” a mounting position and “displays”
the discrete indicia corresponding to the identified target mounting position
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attacks Anvari individually, without appreciating that the Examiner relies on
a combination of Anvari and Wilson for satisfying the claimed limitations.
See Appeal Br. 3–4.
In the present case, the Examiner cites to Anvari’s disclosure that
The position/orientation manager 204 is responsible for such as
but not limited to receiving sensor data from the data manager
210 for calculating the position and orientation of the respective
arm 12 components, tools 123, base stations 16, patient 24, and
tabletop 118. The calculated position/orientation information is
made available to such as but not limited to the actuation of the
hand controllers 332, the display manager 216, and the control
manager 208. The configuration manager 212 provides for such
as but not limited to dynamic configuration of selected arms 12,
base stations 16, controllers 320, 322, 328, 330, and the table top
118 comprising the desired robotic system 112 setup for a
particular surgical procedure. The dynamic configuration can be
automatic, semi-automatic, and/or manual operator 22
intervention. A display manager 216 of the software 200
coordinates/renders the calculated position/orientation
information and the patient/ tool images on the display 334 (see
FIG. 4) of the user inter-face 302, as directed by the operator 22.
Anvari, 10:5–20 (emphases added); see Final Act. 3 (citing in relevant part
the same).
Importantly, Anvari discloses that its configuration manager provides
for “dynamic configuration of selected arms . . . comprising the desired
robotic system [] setup for a particular surgical procedure.” Id. at 10:10–14
(emphasis added). Anvari further discloses that this “dynamic configuration
can be automatic.” Id. at 10:15 (emphasis added). Accordingly, Anvari’s
system discloses that setup of its robotic system, including its arms, can be
automatically controlled. Id. at 10:10–15. As to the claimed “identify a
target mounting position . . .,” we agree with the Examiner’s finding that the
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described “capability of the configuration manager to provide the robotic
arm system setup . . . provid[es] the claimed ‘target’ areas along the table to
an operator.” Ans. 3; see also Adv. Act. (dated Apr. 23, 2020) (finding the
same).
Turning to Wilson, the Examiner relies on Wilson for teaching “a
patient positioning system comprising rails . . . having a plurality of indexing
apertures . . . and indexing indicia . . . for the purpose of repeatable
mounting of components.” Final Act. 3 (citing Wilson, 7:31–45). Based on
Wilson’s teachings, the Examiner reasons that a skilled artisan would have
modified Anvari’s system “with the mounting positions and indicia as taught
by Wilson in order to facilitate mounting the robotic arms in a systematic
and repeatable way.” Id. at 3–4. The Examiner explains that a skilled
artisan would have further modified the system to “display to a user, the
identified indicia of the mounted robotic arms via sensors that calculate the
position of said robot arms.” Id. at 4.
As to the claimed “displaying the discrete indicia . . .,” Anvari
discloses that its “display manager . . . coordinates/renders the calculated
position/orientation information and the patient/tool images on the display.”
See Anvari, 10:16–19. We find that this disclosure supports the Examiner’s
position that Anvari, as modified in view of Wilson’s teachings, satisfies the
claimed “displaying the discrete indicia corresponding to the identified
target mounting position.” See Final Act. 4.
Accordingly, Appellant’s argument attacking Anvari does not identify
error in the Examiner’s combination of Anvari and Wilson.

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ii. Different Field of Endeavor
The Examiner finds that both Anvari and Wilson relate to the field of
the application’s endeavor, namely, surgical tables. See Ans. 4.
Appellant contends that “Wilson is non-analogous to the claimed
invention” and that “Wilson is clearly not from the same field of endeavor as
the present application given that the present application is directed to a
surgical robotic arm support system and not a system for immobilizing a
patient on a treatment table.” Appeal Br. 5. Appellant explains that Wilson
provides a system “for reproducible patient positioning and immobilization
during [stereotactic body radiotherapy, or ‘SBRT’].” Id. at 6.
Appellant’s argument is not persuasive. We disagree with Appellant’s
assertion that Appellant’s field of endeavor is narrowly limited to a “surgical
robotic arm.” See id. at 5.
“[T]he field of endeavor test . . . requires the PTO to determine the
appropriate field of endeavor by reference to explanations of the invention’s
subject matter in the patent application, including the embodiments,
function, and structure of the claimed invention.” In re Bigio, 381 F.3d
1320, 1325 (Fed. Cir. 2004).
Appellant’s Specification describes a surgical table “for supporting a
patient thereon” that may include a “rail” or “discrete mounting units” for
mounting a robotic arm to the table. See Spec. ¶ 38. The Specification
further describes “a need for a more efficient process for positioning surgical
robotic arms that reduces overall setup time in the operating room” (id. ¶ 3)
and explains that different target mounting positions of the robotic arms may
be selected depending on the relative position of the patient on the table (see
id. ¶ 47).
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Application 15/512,583

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Claim 1 recites a system that comprises a surgical table with “discrete
robotic arm mounting positions.” Appeal Br. 8 (Claims App.). Although
the claim recites a “surgical robotic arm,” we find that the claimed invention
is primarily directed to the manner in which the mounting position of the
arms to the table are “targeted” and “displayed.” See id. (reciting, “identify
a target mounting position for each surgical robotic arm relative to the
surgical table; and output the identified target mounting position”)
(emphases added).
Upon reviewing Appellant’s “subject matter in the patent application,
including the embodiments, function, and structure of the claimed invention”
(Bigio, 381 F.3d at 1325), we find that Appellant’s field of endeavor is a
surgical table with a system for mounting some structure, such as a robotic
arm or other accessory, to the table.
Turning to Wilson, Wilson describes a “system for positioning a
patient on a treatment couchtop for SBRT.” Wilson, code (57). Wilson
describes SBRT as “a new and rapidly developing area of cancer
management” (id. at 1:57–58) utilizing radiation therapy to treat malignant
tumors (see id. at 1:32–33). Wilson further discloses, “Patients undergoing
SBRT typically are disposed on a treatment couch or table associated with
[linear accelerator, or ‘LINAC’] or other radiation therapy apparatus.” Id. at
2:8–10. Wilson provides for a system that treats tumors using radiation
therapy, and achieves this by ensuring the patient, and the patient’s tumor, is
precisely positioned to a treatment beam. See, e.g., id. at 15:52–54 (“When
so mounted the device 280 will serve to verify the precise location of the
SBRT patient support panel 22 and the patient/target tumor relative to the
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treatment beam isocenter.”); see also id. at Fig. 1 (depicting patient 10 on
patient support panel 22).
We reproduce Wilson’s Figure 1, below:

Figure 1 shows “a patient support panel and four exemplary
positioning/fixation devices mounted thereon.” Wilson, 2:34–37. Wilson
further discloses,
The locking bar 30 of this invention includes releasably
securable members, e.g., expandable push pins (to be described
later), to render it particularly suited for releasable mounting on
the patient support panel 22 via any of the index positions
established by the aligned pairs of apertures 24. Thus, by using
a locking bar 30 one can readily mount and position any
positioning/fixation component or any other accessory or
component on the patient support panel at any of the discrete
index positions therealong.
Id. at 7:22–30 (emphasis added).
Although we agree with Appellant that Wilson discloses a system for
patient positioning during SBRT (see Appeal Br. 6), Appellant fails to
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persuade us that Wilson is outside the scope of Appellant’s field of endeavor
(see id. at 5). Rather, we agree with the Examiner and find that Wilson is in
the same field of endeavor as Appellant’s invention. See Ans. 4.
The treatment table disclosed in Wilson shares many similarities to
Appellant’s claimed invention, and absent any detailed explanation from
Appellant, we see no reason why Wilson’s table for treating malignant
tumors is not a surgical table. See Appeal Br.; see also Reply Br. Wilson’s
disclosure, like Appellant’s claimed subject matter, includes a patient table
with a system that can “readily mount and position any positioning/fixation
component or any other accessory” thereon to aid with patient treatment.
See Wilson, 7:27–30. The fact that Appellant’s invention describes
mounting a “robotic arm” to the table, whereas Wilson describes mounting
“any other accessory” to the table, does not persuade us that Wilson is
outside the field of endeavor of the claimed invention.
For the foregoing reasons, Appellant’s second argument is not
persuasive.

c. Summary of Rejection Based on Anvari and Wilson
In summary, Appellant’s arguments do not persuade us of Examiner
error in the rejection of independent claim 1. As such, we affirm the
rejection of claim 1, along with claims 5, 7, 8, 12, and 14, which fall
therewith (see 37 C.F.R. § 41.37(c)(1)(iv)), as unpatentable over Anvari and
Wilson.

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2. Rejection – Anvari, Wilson, and Jo
The Examiner rejects claims 4 and 11 as unpatentable over Anvari,
Wilson, and Jo. Final Act. 7.
Appellant does not present additional arguments contesting the
rejection of these claims. See Appeal Br. 3–6.
Accordingly, Appellant does not persuade us of Examiner error in the
rejection of claims 4 and 11 as unpatentable over Anvari, Wilson, and Jo.

CONCLUSION
We affirm the rejections of claims 1, 4, 5, 7, 8, 11, 12, and 14.

DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 5, 7, 8, 12,
14
103 Anvari, Wilson 1, 5, 7, 8, 12,
14

4, 11 103 Anvari, Wilson, Jo 4, 11
Overall
Outcome
1, 4, 5, 7, 8,
11, 12, 14

TIME PERIOD FOR RESPONSE
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)(1)(iv).

AFFIRMED