Ex Parte Durant et al

Patent Trial and Appeal Board

Feb 1, 2017

11603943 (P.T.A.B. Feb. 1, 2017)

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.
11/603,943 11/21/2006 Kevin Durant NEOG728-201/US 1368
51947 7590 02/03/2017
PATENT DEPT - INTUITIVE SURGICAL OPERATIONS
1020 KIEER RD
SUNNYVALE, CA 94086
EXAMINER
TORRES DIAZ, ARNALDO
ART UNIT PAPER NUMBER
3779
NOTIFICATION DATE DELIVERY MODE
02/03/2017 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):
patent.group@intusurg.com
natalie.hood @ intusurg.com
dana.rubenstein@intusurg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN DURANT, DAVID MINTZ, and ROBERT OHLINE 1
Appeal 2015-002158
Application 11/603,943
Technology Center 3700
Before ERIC B. GRIMES, ULRIKE W. JENKS, and
ROBERT A. POLLOCK, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to a method
of determining the shape of a bendable instrument such as an endoscope,
which have been rejected as obvious. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
STATEMENT OF THE CASE
“Bendable instruments come in many forms such as catheters,
colonoscopes, endoscopes and the like. Control elements are used to bend
1 Appellants identify the Real Party in Interest as Intuitive Surgical
Operations, Inc. (Appeal Br. 2.)
Appeal 2015-002158
Application 11/603,943
the instruments into a desired shape or as part of steering or maneuvering the
instrument as needed for a surgical or exploratory procedure.” (Spec. 12.)
“[Kjnowing the shape of the instrument may provide useful information for
maneuvering the instrument or to aid in the procedure.” (Id.)
Claims 1, 2, 4—14, and 22—26 are on appeal. Claim 1 is illustrative
and reads as follows:
1. A method of determining a shape of a bendable
instrument, comprising:
placing the instrument in a calibration position;
tensioning first and second control elements of the
instrument in the calibration position to remove slack from the
first and second control elements without bending the
instrument, whereby a calibration position of each of the first
and second control elements is determined from the tensioning;
moving the first control element a first amount from the
calibration position of the first control element and moving the
second control element a second amount from the calibration
position of the second control element to bend the instrument;
measuring the first and second amounts; and
determining the shape of the instrument by using a
modeled kinematic relationship that correlates a sum of the first
and second amounts to the shape of the instrument.
DISCUSSION
The Examiner has rejected claims 1, 2, 4—11, and 22—26 under
35 U.S.C. § 103(a) as obvious based on Kawai2 and Lia.3 (Ans. 5.) The
Examiner has rejected claims 12—14 under 35 U.S.C. § 103(a) as obvious
2 Kawai et al., US 2004/0138530 Al, published July 15, 2004.
3 Lia et al., US 2005/0168571 Al, published Aug. 4, 2005.
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Application 11/603,943
based on Kawai, Lia, and Arai.4 (Ans. 10.) The same issue is dispositive for
both rejections.
The Examiner finds that Kawai discloses most of the limitations of
claim 1, including “removing slack from one hauling wire without bending
the instrument. . . and suggests that the same features would apply to other
hauling wire.” {Id. at 6.) The Examiner finds that “Lia evidences tensioning
first and second control elements of the instrument in the calibration position
to remove slack from the first and second control elements without bending
the instrument.” (Id.) The Examiner concludes that it would have been
obvious “to incorporate a second control element for removal of slack as
taught by Lia into the manipulatable endoscope taught by Kawai in order to
remove unnecessary slack that slows down responsiveness of the endoscope
to bending commands.” {Id. at 6—7.)
We agree with the Examiner that the method of claim 1 would have
been obvious based on Kawai and Lia. Kawai states that endoscopes are
widely known that include a “traction member” such as a wire, driven by a
motor to bend the distal tip of the endoscope. (Kawai 14.) Kawai states
that a conventional endoscope includes, among other things, “a tension
detecting unit that detects tension of the wire, and [a] slack control unit
[that] controls the slack of the wire based on outputs of the tension detecting
unit,” as well as units that detect the amount and direction of the wire’s
displacement. {Id. 16.)
4 Arai, JP 2000-300511 A, published Oct. 31, 2000.
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Kawai discloses an apparatus that is “capable of controlling looseness
at a neutral reference position even if the both hauling units become loose at
the neutral reference position.” (Id. 113.) Kawai states that a “hauling unit”
is one that “hauls a subject to be operated and which bends or rotates the
subject” — in other words, a wire. (Id. 114.)
Kawai’s Figure 1 is reproduced, in part, below:
Figure 1 shows an embodiment of Kawai’s motorized endoscope. (Id. 166.)
The device includes “wires 4 and 5 for bending the distal bending section 2
vertically and laterally” and motor 9. (Id. 1 68.) Kawai states that “if the
motor 9 is driven to rotate the pulley 8, the one wire 4 wound around the
pulley 8 is pulled, and the other wire 5 is sent out. With this, the distal
bending section 2 is bent upward.” (Id. 1 69.)
Kawai states that “if the wires 4 and 5 extend with time, both the
wires 4 and 5 become loose in some cases in an initial state (neutral
reference position) in which the distal bending section 2 is not bent in the
vertical direction.” (Id. 173.) In that case, “even if attempt is made to bend
the distal bending section 2 in any of upper and lower directions, the distal
bending section 2 is not bent until the motor 9 is rotated to a position where
the slack of the wire in that direction is resolved.” (Id.)
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Application 11/603,943
Kawai discloses a correction table having values for a control signal
Rmot to be sent to motor 9 based on the relationship of the bend angle
(position) R, of distal bending section 2, with a lower limit value R1 and an
upper limit value R2. (M^Hf 74—75.) Kawai states that
the correction table 12 outputs a control signal Rmot in which a
variation amount thereof with respect to the target value R
becomes greater in the target value R including the neutral
reference position where both the wires 4 and 5 become loose
than a range other than the range of the target value R, and the
correction table 12 swiftly rotates the motor 9 and swiftly
resolves the slack of the wires.
(Id. 176.)
Kawai discloses that its device can also include sensors that detect the
amount of movement of each of the hauling wires and output wire position
signals to a wire position detector. (Id. 1130.) The wire position detector
then determines the position of the tip of the distal bending section based on
the two wire position signals. (Id.)
Thus, Kawai discloses placing an endoscope in an initial state
(“neutral reference position”), or calibration position, then removing slack in
the control elements (wires) by sending a control signal to the motor that
controls movement of the wires, based on a value that depends on the bend
angle of the tip of the endoscope. Kawai also discloses that the position of
the tip of the endoscope (i.e., the shape of the device) can be determined,
after the wires are later moved, by measuring the amount of movement of
the wires and determining the position of the endoscope’s tip based on the
wire position signals.
Similar to Kawai, Lia discloses improving the operation of a remote
viewing device such as an endoscope by “removing at least a portion of
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Application 11/603,943
slack from at least one control cable attached to a servo motor.” (Lia 16.)
The method “comprises fixing the servo motor where the specified tension is
encountered and determining a first servo control signal value corresponding
to no angular deflection in a viewing head.” (Id.)
Lia discloses that the “zero-point settings for the servo motors 34
corresponding [to] no deflection in the viewing head 22 are determined . . .
by rotating the servo motors 34 until each of the pair of the control cables
108 is equally taunt [sic, taut].” (Id. 139.) “As part of determining the zero-
point setting, the servo motors 34 are rotated until their rotation in either
direction requires the same increase in torque. This corresponds to the
viewing head 22 being undeflected.” (Id.) “The new zero-point servo
control signal values are then stored ... in memory 46.” (Id.)
Thus, Lia discloses tensioning two control elements (cables) of a
bendable instrument to remove slack from both elements, without bending
the instrument (i.e., the viewing head of the instrument is undeflected) and
storing the zero-point settings, which indicate the position of the control
elements in the instrument’s undeflected condition. We agree with the
Examiner that the cited references would have made obvious the device of
appealed claim 1.
Both Kawai and Lia disclose removing slack from two elements that
control bending of an endoscope. Kawai discloses doing so in a “neutral
reference position” and later determining the position of the tip of the
endoscope, after the wires are moved, based on movement of the wires.
These disclosures are evidence that Kawai’s neutral reference position refers
to a position in which the endoscope is not bent. In addition, as the
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Application 11/603,943
Examiner has noted, Lia discloses “removing the initial slack until a slight
increase in torque is detected (paragraph [0037-0038]). Furthermore, Lia
evidences the ‘zero point settings’ that corresponds to the no deflection of
the viewing head as in paragraph [0039].” (Ans. 17.) Thus, both references
disclose removing slack from control elements with the device in an unbent
position.
Appellants argue that the Examiner’s interpretation of “calibration”
(in the claim phrase “calibration position”) is incorrect. (Appeal Br. 14—16.)
Regardless of what definition of “calibration” the Examiner cited,
however, the claim itself makes clear that “calibration position” refers to a
position in which the instrument is not bent, because it refers to “removing]
slack from the first and second control elements without bending the
instrument, whereby a calibration position of each of the first and second
control elements is determined.” (Claim 1, emphasis added.) The Examiner
correctly found that both Kawai and Lia disclose removing slack from the
control elements of an endoscope without bending the instrument. See Ans.
6: “Kawai discloses removing slack from one hauling wire without bending
the instrument. . . . Lia evidences tensioning first and second control
elements of the instrument in the calibration position to remove slack . . .
without bending the instrument.” Thus, the Examiner has shown that the
cited references disclose the claimed element.
Appellants also argue that “none of the paragraphs of Kawai cited by
the Examiner, nor any other disclosure in Kawai, discloses slack removal
without bending the instrument.” (Appeal Br. 17.)
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As discussed above, however, Kawai’s disclosure of removing slack
from the wires in a “neutral reference position,” and then determining the
position of the tip of the endoscope based on later movement of the wires,
strongly suggests that Kawai’s neutral reference position is one in which the
endoscope is not bent. In any event, the rejection also relies on Lia, which
expressly discloses determining zero-point settings for the motors that move
its control elements, where the zero-point settings correspond to no
deflection in the viewing head. Thus, when the teachings of the cited
references are considered together, they would have made obvious the
disputed limitation.
Appellants also argue “the Examiner has not clearly set forth the
differences between the claims and Kawai and Lia.” (Appeal Br. 21.)
We disagree. The Examiner found that Kawai discloses most of the
limitations of claim 1 (Ans. 5—6) but “does not explicitly teach tensioning a
second control element of the instrument in the calibration position to
remove slack from the first and second control elements without bending the
instrument.” {Id. at 6.) The Examiner found that this limitation is disclosed
by Lia. {Id.)
[T]he PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
“notifying] the applicant . . . [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.”
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (quoting 35 U.S.C. § 132,
alterations by the Jung court). That burden has been met here. See also id.
at 1363: “[A]ll that is required of the office to meet its prima facie burden of
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Application 11/603,943
production is to set forth the statutory basis of the rejection and the reference
or references relied upon in a sufficiently articulate and informative manner
as to meet the notice requirement of § 132.”
Finally, with respect to claim 1, Appellants argue that a skilled artisan
would have lacked motivation to modify Kawai to remove slack without
bending the instrument because Kawai’s calibration is based on calibrating
an endoscope that is in a bent position. (Appeal Br. 23—24.) Similarly,
Appellants argue that “one of ordinary skill in the art would not have had a
reason to modify Kawai in view of Lia for the purpose asserted by the
Examiner because Kawai already possesses this capability and teaches a
different technique to compensate for slack.” {Id. at 24.)
These arguments are unconvincing for the reasons already discussed.
Specifically, Kawai teaches removing slack from an endoscope when it is in
a “neutral reference position,” which is reasonably interpreted to mean a
position in which the endoscope is not bent, and Lia discloses determining
zero-point settings that correspond to no deflection in an endoscope’s
viewing head. Thus, the cited references disclose the disputed limitation.
Appellants also argue that “[t]he Examiner asserted at pages 7 and 9
of the Office Action that Lia discloses the various recitations of claims 4, 5,
7, 8, and 26 but does not set forth any rationale for modifying Kawai in view
of Lia to provide the various recitations of the claims.” (Appeal Br. 25.)
The Examiner, however, expressly found that Lia or Kawai discloses
each of the elements of the disputed claims (Ans. 8, 10), and concluded that
it would have been obvious “to incorporate a second control element for
removal of slack as taught by Lia into the manipulatable endoscope taught
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Application 11/603,943
by Kawai in order to remove unnecessary slack that slows down
responsiveness of the endoscope to bending commands” {id. at 6—7).
Appellants have not provided any basis for concluding that the Examiner’s
rationale for combining Kawai and Lia would not have suggested including
the additional limitations of claims 4, 5, 7, 8, or 26 in the resulting device.
Appellants’ argument is therefore unpersuasive.
With regard to claim 24, Appellants argue that the Examiner has not
cited a disclosure in the cited references that would suggest determining the
shape of a lumen based on the determined shape of the instrument, as recited
in that claim. (Appeal Br. 26—27.)
This argument is also unpersuasive. Claim 24 depends from claim 22,
which depends from claim 1 and adds the limitation that the bendable
instrument is positioned in a lumen before the control elements are moved
from their calibration positions. Claim 24 adds the limitation of
“determining the shape of the lumen using the determined shape of the
instrument.”
This limitation, however, adds no active step to those recited in claims
1 and 22. It merely requires interpreting the degree to which the instrument
is bent as corresponding to the shape of the lumen in which it has been
positioned. Cf. Genetic Technols. Ltd. v. Merial L.L.C., 818 F.3d 1369,
1379 (Fed. Cir. 2016) (addition of “[t]he mental process of ‘performing a
prenatal diagnosis’ ... to the routine and conventional physical activity of
amplification and analysis of DNA did not distinguish claims 21 and 25,”
referring to Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,1378
(Fed. Cir. 2015)). We therefore conclude that the recited limitation does not
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patentably distinguish claim 24 from claim 22, which was not argued
separately and therefore falls with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Claims 2, 6, 9—11, and 23—25 have also not been argued separately and
likewise fall with claim 1.
Appellants have waived arguments based on Arai. (Appeal Br. 27.)
We therefore affirm the rejection of claims 12—14 under 35 U.S.C. § 103(a)
as obvious based on Kawai, Lia, and Arai. 37 C.F.R. § 41.37(c)(l)(iv) (The
appeal brief must contain “[t]he arguments of appellant with respect to each
ground of rejection. . . . The arguments shall explain why the examiner erred
as to each ground of rejection contested by appellant.”); Hyatt v. Dudas, 551
F.3d 1307, 1314 (Fed. Cir. 2008) (“In the event of such a waiver, the PTO
may affirm the rejection of the group of claims that the examiner rejected on
that ground without considering the merits of those rejections.”).
SUMMARY
We affirm both of the rejections on appeal.
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).
AFFIRMED
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