Ex Parte Green

Board of Patent Appeals and Interferences

May 28, 2002

08709930 (B.P.A.I. May. 28, 2002)

The opinion in support of the decision being
entered today is not binding precedent of the Board.
Paper 81
Filed by: Trial Section Motions Panel
Administrative Patent Judge
Box Interference Filed
Washington, D.C. 20231 May 28, 2002
Tel: 703-308-9797
Fax: 703-305-0942
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES MAILED
YULUN WANG and KEITH PHILLIP LABY m, Y 2 8 201
Junior Party, OAT. & T.M. OFFICE
(Patent 5,907,664), BOARD OF PATENT APPEALS
AND INTERFERENCES
v .
PHILIP S. GREEN
Senior Party
(Application 08/709,930).
Patent Interference No. 104,643
Before SCHAFER, LEE, and MEDLEY, Administrative Patent Judges.
MEDLEY, Administrative Patent Judge.
DECISION ON GREEN REQUEST FOR RECONSIDERATION
AND FINAL JUDGMENT
A. Introduction
A decision on preliminary motions was entered on 30 March
2002 (Paper 76). Wang's preliminary motion 1 for judgment
against Green was granted on the basis that Green's sole involved
claim 144 is unpatentable under 35 U.S.C. § 112, T 1, for lack of
written description support. Green's preliminary motion 4 to add
claims to its application was denied. Since Green lacked
standing to remain in the interference, the remaining preliminary
motions were dismissed. Green was ordered to show cause why
judgment should not be entered against Green, and that the
response be in the form of a request for reconsideration (Paper
76 at 28).
On 30 April 2002 Green filed a request for reconsideration
of the decision on preliminary motions (Paper 79). Although Wang
was authorized to file an opposition to Green's request for
reconsideration and Green was authorized to file a reply to any
opposition filed by Green (Paper 76 at 29), parties Wang and
Green were informed on 6 May 2002 that the parties need not file
an opposition or reply.
For the reasons that follow, Green's request for
reconsideration of our decision on preliminary motions is denied.
B. Decision
At the heart of Green's request for reconsideration is
Green's assertion that.,(l) Wang only raised the issue of
enablement and did not-,ýr aise the issue of written description
support with respect to Green's claimed "end effector" and (2)
the board sua sponte decided, under 37 CFR § 1.641 (a), whether
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Green had written description support for Green's claimed "end
effector."
Green begins its brief by asserting that we did not consider
our own binding precedent of LeVeen v. Edwards, 57 USPQ2d 1406
(BPAI 2000), which Green correctly notes it argued in its
opposition to Wang's preliminary motion 1. Specifically, Green
argues that Wang's preliminary motion 1 should have been
dismissed for failing to set forth facts to support an argument
that Green's claim 144 lacks written description support (Paper
79 at 5)
There were several procedural deficiencies noted in Leyeen.
That the facts were not presented in numbered paragraphs in the
beginning of the brief was only one of several noted
deficiencies. For example, in LeVeen, the movant attempted to
incorporate by reference "arguments" made by its declarants. Id.
at 1414. The issues in LeVeen were ones of anticipation and
obviousness, not of written description support. With respect to
obviousness, Edwards had failed to provide a reason, motivation,
suggestion, or teaching in the prior art as to why the subject
matter of LeVeen's claims would have been obvious, and thus
failed to make out a prdma facie case of obviousness. Id. at
1414. Thus, Green is incorrect that Edwards' motion for judgment
was dismissed because Edwards had failed to set forth sufficient
facts on which relief could be granted (Paper 79 at 5). Not
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setting forth sufficient facts was only one of the noted
deficiencies.
While Wang, in its preliminary motion 1, did not set forth
facts in its facts section to support an argument that the term
"end effector" for holding a surgical instrument was not
described in Green's specification, Wang did set forth facts in
its argument section to support the relief requested. In its
argument section of its preliminary motion, Wang clearly alleges
that Green does.not have written description support for an end
effector for holding a surgical instrument. In the context of an
argument that a term lacks written description support, the
movant has the burden of demonstrating that it is entitled to the
relief sought. In essence, the movant has the burden to prove a
negative, that the substance of a term or phrase that is being
claimed is not described in the specification. The facts
necessary to support such an argument would be that the
specification is lacking a description of what is being claimed.
It may be enough then for the moving party to set forth facts in
support of its argument that a claimed term or phrase is not
supported by the written description, without necessarily culling
through the entire specification to demonstrate that something is
simply not there. Here, that is what Wang did. The mere fact
that Wang put the facts in the wrong location of its preliminary
motion is not sufficient grounds, in this 'case, for dismissal of
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Wang's preliminary motion.
Green argues that we sua sponte considered whether Green had
written description support for an end effector for holding a
surgical instrument under 37 CFR § 1.641(a) (Paper 79 at 12-13).
Green argues that Wang's argument, in Wang's preliminary motion
1, was clearly based on enablement and that Wang did not fairly
raise the issue of written description support, such that Green
was improperly denied a chance to respond.
As stated in our decision on preliminary motions, the issue
of written description support was clearly before us (Paper 76 at
11, "We understand Wang's argument to be based on a lack of
written description support ... Wang makes it clear, through the
context of its argument, that written description is at issue
with respect to the "end effector" limitation.").
We disagree with Green that the issue of written description
support for an end effector for holding a surgical instrument was
not fairly raised and presented by party Wang. We further
disagree that Green did not have a chance to properly respond.
Wang's argument is presented below:
A. The 1930 Specification Does Not Provide An Enabling
Disclosure For An',End Effector That Holds A Surgical
Instrument Limitation Of The Count.
2. Green has not identified an end effector that holds
a surgical instrument. In the Fourth Supplemental
Preliminary Amendment, Green stated that articulate arms
100, 142 hold surgical instruments 114, 170. There is no
statement in the Amendment that the specification of the
'930 has an end effector which holds the surgical instrument
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as required by the count. The count recites an articulate
arm having an end effector. The end effector holds a
surgical instrument. Green has not identified an element
that qualifies as an end effector of an articulate arm.
(Wang Exh. 2002, p. 5, 111 para, right side).
3. The '930 application refers to item 170 as an end
effector. (Green Exh. 1103, p. 17, 11. 15-17).
4. Green now states that item 170 is an instrument.
Which one is it? The count requires that the instrument and
end effector be two distinct elements. For how could the
end effector hold itself. If item 170 is an instrument then
where does the '930 application disclose an end effector?
If item 170 is an end effector then the specification of the
1930 application clearly does not show 170 holding a
surgical instrument.
5. Given either interpretation of item 170 the '930
specification does not disclose an end effector for holding
a surgical instrument as required by the count. (Paper 32
at 4-5).
While Wang does use the term "enablement" in the title of
the subsection, it is clear that Wang is arguing that Green's
specification lacks written description support for an end
effector for holding a surgical instrument. Throughout its
argument, Wang repeats that Green has not identified an end
effector for holding a surgical instrument and that there is an
inconsistency between explanations of the term provided by Green
during prosecution of its involved application, with Green's
annotation of claim texms in this proceeding, and with Green's
specification.
Wang, in its preliminary motion 1, points out that Green has
on occasion referred to the same item in Green's specification as
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both the end effector and the surgical instrument. Wang argues
that the claim recites two distinct items and that the one, e.g.
the end effector, is for holding the surgical instrument. Wang
concludes its argument by asserting that Green's specification
does not disclose an end effector for holding a surgical
instrument as required. While Green argues that no where in this
section does Wang mention the phrase "written description" (Paper
79 at 19-20), also absent from Wang's arguments, with the
exception of the.subtitle, is the phrase "lacking enablement."
As correctly pointed out by Green, the issue of written
description support and enablement are two distinct requirements
under 35 U.S.C. § 112, 1 1. Wang's substantive argument
regarding the end effector is based on written description
support and not on enablement. While we recognize that Wang's
subtitle may be misleading, to dismiss Wang's preliminary motion
because Wang failed to use the proper heading would put form over
substance. We do not think that such an outcome would lead to a
just determination in this interference. See 37 CFR § 1.601.
See also PfluQer v. Wertheim, 203 USPQ 874, 877 (Comm'r
1978)("(Plapers will betreated on the basis of their content,
rather than their titlý-.")
Furthermore, party Green itself addresses Wang's arguments
regarding lack of written description support. Specifically,
Green argues in its opposition:
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(Als explained by Dr. Salisbury, the specification of
Green's '665 patent (and thus the '930 application) often
uses the term "end effector" to refer to the operative end
of the surgical instrument used to manipulate tissues.
(Green EXHIBIT 1014, page 4, paragraph 8; additional fact
paragraph 3, supra.) As can be understood with reference to
Fig. 9 of Green's '665 patent, robotic arms generally define
a kinematic chain of joints and links between a base 110 of
the robot and a working end of a robotic tool 114R. In
robotics, the working end of the tool is often referred to
as the "end effector" (as in Green's '665 patent).
Alternatively, it is also known in robotics to define some
other convenient location (often a joint) along the
kinematic chain as the "end effector." (Green EXHIBIT 1014,
page 4, paragraph 8; additional fact paragraph 3, supra.)
This is merely a difference in nomenclature. Any convenient
interface or joint along the kinematic chain may be
designated the "end effector," so that the '665 patent, and
thus the '930 application. effectively discloses an
articulate arm having an end effector for holding surgical
instrument, (Green EXHIBIT 1014, page 4,paragraph 8;
additional fact paragraph 3, supra.) (Emphasis added)
(Paper 50 at 8).
The above-noted argument is responsive to Wang's argument
regarding written description support for the end effector. We
specifically addressed Green's argument presented above in our
decision as follows:
Dr. Salisbury's testimony is of little value because
the meaning defined by Green in 1930 is contrary to the
alleged "common meaning." The term "end effector" is used
in'930 to describe a surgical instrument and not the end of
an instrument or tool, or an intermediate joint or link
along a kinematic-chain of joints and links.
Green has not used the term "end effector" according to
its common meaning as pointed out by Dr. Salisbury. Nothing
stemming from Green's specification indicates that Green was
aware of the asserted broad meaning of "end effector" urged
by Dr. Salisbury. Green used the term in a very narrow
sense that is even outside of the broad scope of the meaning
urged by Dr. Salisbury. The surgical instrument necessarily
embodies its own end and thus cannot be a joint or link
located between the robot base and an end of itself.
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Note, that expert testimony which contradicts the
meaning of a term as is defined in the specification is
entitled to little weight. Vitronics Corp. v. Conceptronic
Inc., 90 F.3d 1576, 1585, 39 USPQ2d 1573, 1579 (Fed. Cir.
1996). An inventors' definition and explanation of a claim
term, as evidenced by the specification, controls the
interpretation of that claim term. Serrano v. Telular
Corp., Ill F.3d 1578, 1582, 42 USPQ2d 1538, 1541 (Fed. Cir.
1997). Here, the '930 specification defines the term "end
effector" to mean a surgical instrument, and as used, the
end effector does not hold a surgical instrument. [FN
omitted]. The '930 specification does not describe the "end
effector" as a part located along a kinematic chain of
joints and links between the robot base and the end of a
tool.
Furthermore, Salisbury fails to sufficiently set forth
facts to support a conclusion that one of ordinary skill in
the art at the time of the Green '930 invention, would know
that the term "end effector" means any convenient location
along a kinematic chain, or alternatively that "end
effector" means the end of a working tool. Salisbury makes
his assertions in the present tense as follows:
In robotics, the working end of the tool is often
referred to as the "end effector" ... it is also known
in robotics to define some other convenient location
(often a joint) along the kinematic chain as the "end
effector". (Green Ex. 1014, 1 8).
Green fails to direct us to where in Salisbury's
testimony, Salisbury indicates what was known at the time
the '930 application was filed regarding the term "end
effector". What is important is that which was known when
the application was filed, not what was known when Salisbury
testified. (Paper 76 at 13-15).
For the above reasons, we are not persuaded that (1) the
issue of written description support for the end effector for
holding a surgical instrument was not fairly raised and presented
to Green, or that (2) we sua sponte considered the issue on our
own. Wang raised the issue of written description support and
Green responded.
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Green next argues that we construed "end effector" too
narrowly in light of Green's full disclosure (Paper 79 at 23).
At the outset, Green argues that we improperly shifted roles by
looking into Green's specification on our own without being
directed to certain passages by Wang. As stated above, Wang has
a negative burden of demonstrating that something isn't so. That
Wang did. That we "on our own" verified the truth of the
assertions does not mean that Wang failed to meet its burden.
Green argues that we failed to look at Green's entire
specification in making our decision, since we ignored non
surgical embodiments when interpreting the term "end effector"
(Paper 79 at 25). Green's entire disclosure was considered in
rendering our decision. Green claim 144 recites "A system for
allowing a surgeon to control a surgical instrument ... an
articulate arm having an end effector for holding the suraical
instrument..." The challenge mounted by Wang was that Green
failed to provide written description support for an end effector
for holding the surgical instrument. In this respect, Green's
specification was reviewed for a description (including all
drawings) that describedan end effector for holding the surgical
instrument. As we stated in our decision, in the context of
surgery, e.g. using a surgical instrument, Green's specification
describes the end effector as the surgical instrument. The end
effector is not for holding the surgical instrument, but rather
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is described as the surgical instrument itself. Thus, we did not
ignore the other embodiments, but rather looked for where Green
possibly has support for the claimed term of an end effector for
holding the surgical instrument. The logical place to look is
with respect to the embodiments that describe surgery and use of
a surgical instrument. Even so, the entire specification
(including the drawings) was reviewed for support for the claimed
term.
Green argues that it is confused as to what the panel
considers is the "common meaning" of the term end effector as
discussed in our decision. The "common meaning" was provided by
Green, through the Green's expert Dr. Salisbury, as clearly
provided in our decision (Paper 76 at 13-15, "Green has not used
the term "end effector" according to its common meaning as
pointed out by Dr. Salisbury.").
Lastly, Green argues that it should have an opportunity to
address the facts and legal issues presented to it for the first
time in our decision (Paper 79 at 28-29). Green argues that it
should have an opportunity to file new supporting evidence, and
new preliminary motionq. As stated above, Wang's preliminary
motion 1 raised the issue of written description support with
respect to the term of an end effector for holding a surgical
instrument. Green responded, by providing evidence and arguments
addressing why Green did have written description support for an
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end effector for holding a surgical instrument. Accordingly, our
decision did not raise a new issue. Green had the opportunity to
respond when opposing Wang's preliminary motion. We simply
resolved the issue raised in Wang's motion while giving full
consideration to the points made and evidence submitted by both
parties.
We note, that Green has already filed a responsive
preliminary motion 4 in which Green proposed to change the term
"end effector" for holding a surgical instrument to an "outer
operating end" for holding a surgical instrument. That
preliminary motion was denied (Paper 76 at 20).
Having considered Green's arguments in its request for
reconsideration, we conclude that Green has failed to demonstrate
that we misapprehended or overlooked any fact or argument first
presented prior to the filing of the request for reconsideration.
The decision on preliminary motions (Paper 76) has been
reconsidered to the extent necessary to provide the discussion
here. No change in the decision will be made. Green's request
for reconsideration is denied.
.Since Green lacks.standing to continue in this interference
(Paper 76 at 21-28), judgment is entered against Green.
Upon consideration of the record, it is
ORDERED that Green's request for reconsideration is denied.
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FURTHER ORDERED that judgment as to Count 1 (Paper I at 5),
the sole count in the interference, is awarded against senior
party Philip S. Green.
FURTHER ORDERED that senior party Philip S. Green is not
entitled to a patent containing claim 144 (corresponding to Count
1) of application 08/709,930.
FURTHER ORDERED that a copy of this paper shall be made of
record in files application 08/709,930 and U.S. Patent 5,907,664.
FURTHER ORDERED that if there is a settlement agreement,
attention is directed to 35 U.S.C. § 135(c) and 37 CFR § 1.661.
ýý ý -1,,/
Richard E. Schaf r
Administrative Patent Judge)
BOARD OF PATENT
;4Ason Lee APPEALS
ýýministrative Patent Judge) AND
INTERFERENCES
Sa ly C-/ Medley
Adminis1rative Patent /dge)
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cc (via federal express):
Attorney for Wang:
Jan P. Weir
STRADLING, YOCCA, CARLSON 6 RAUTH
660 Newport Center Drive, Suite 1600
Newport Beach, CA 92660
Tel: 949-725-4000
Fax: 949-725-4100
Attorney for Green:
Edward J. Keeling
TOWNSEND and TOWNSEND and CREW LLP
Two Embarcadero Center, 8t' Floor
San Francisco, CA 94111-3834
Tel: 415-576-0200
Fax: 415-576-0,300
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