Ex Parte Hauck et al

Patent Trial and Appeal Board

Sep 22, 2016

11647300 (P.T.A.B. Sep. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/647,300 12/29/2006
55962 7590
Wiley Rein LLP
Patent Administration
1776 K Street, NW
Washington, DC 20006
09/26/2016
FIRST NAMED INVENTOR
John A. Hauck
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
OG-040403US/82410-0135 1689
EXAMINER
SHAY,DAVIDM
ART UNIT PAPER NUMBER
3769
NOTIFICATION DATE DELIVERY MODE
09/26/2016 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):
ptodocket@wileyrein.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN A. HAUCK, JEFFREY A. SCHWEITZER,
TROY T. TEGG, JAMES D. ESSINGTON,
MARKT. JOHNSON, and KEDAR RA VINDRA BELHE
Appeal2014-009953
Application 11/647,3001
Technology Center 3700
Before MURRIEL E. CRAWFORD, KENNETH G. SCHOPPER, and
MATTHEWS. MEYERS, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
1-30 and 42. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
BACKGROUND
According to Appellants, "[ t ]he instant invention relates to robotically
controlled medical devices. In particular, the instant invention relates to a
1 According to Appellants, the real party in interest is St. Jude Medical,
Atrial Fibrillation Division, Inc. Appeal Br. 2.
Appeal2014-009953
Application 11/647,300
robotic surgical system for navigating a medical device through a patient's
body for diagnostic and therapeutic purposes." Spec. i-f 3.
CLAIMS
Claims 1-30 and 42 are on appeal. 2 Claim 1 is illustrative of the
appealed claims and recites:
1. A robotic surgical system, comprising:
a track;
a catheter holding device translatably associated with said
track, said catheter holding device including a catheter receiving
portion;
a translation servo mechanism operatively coupled to said
catheter holding device and adapted to control translation of said
catheter holding device relative to said track;
a catheter deflection control mechanism;
a deflection servo mechanism operatively coupled to said
catheter deflection control mechanism and adapted to control
said catheter deflection control mechanism; and
a controller operatively coupled to at least one of said
translation servo mechanism and said deflection servo
mechanism, wherein said controller is adapted to control said at
least one of said translation servo mechanism and said deflection
servo mechanism,
wherein the catheter receiving portion is configured to
receive a catheter comprising a control handle configured for
manual operation and including a manually-actuable catheter
deflection actuator.
Appeal Br. 16.
2 The rejections of claim 46 have not been appealed. See Appeal Br. 4.
2
Appeal2014-009953
Application 11/647,300
REJECTIONS
1. The Examiner rejects claims 1-5, 7, 8, 13-27, and 42 under
35 U.S.C. § 103(a) as unpatentable over Wallace3 in view of
Brock,4 Bowden,5 and Yi. 6
2. The Examiner rejects claims 6, 9-12, and 28-30 under 35 U.S.C.
§ 103(a) as unpatentable over Wallace in view of Brock, Bowden,
Yi, and Lathrop.7
DISCUSSION
Obviousness over Wallace, Brock, Bowden, and Yi
Claims 1 and 42
With respect to claims 1 and 42, the Examiner finds that Wallace
teaches a robotic surgical system as claimed, but relies on Brock, Bowden,
and Yi to teach that it would have been obvious to use a catheter that "can be
manually or robotically actuated, since these are equivalents." Final Act. 4--
5. In particular, with respect to Wallace, the Examiner finds:
Wallace et al ('554) teaches a robotic surgical system with a
catheter holding device (see the Abstract), the catheter holding
device (see e.g. Figure 97, element 18) translates in a track (see
Figure 97, no element number), including a catheter deflection
control mechanism (see Figures 17 and 18 and paragraphs
[0172], [0173]), and a servo mechanism and controller which
operate the deflection mechanism (see paragraphs [0241]-
[0243], the catheter receiving portion is rotatable by a motor,
which is considered a "servo" within the broadest reasonable
interpretation of that term,( see Figure 98 and paragraph [0208]),
3 Wallace et al., US 2005/0222554 Al, pub. Oct. 6, 2005.
4 Brock et al., US 7,090,683 B2, iss. Aug. 15, 2006.
5 Bowden et al., US 5,935,102, iss. Aug. 10, 1999.
6 Yi et al., US 7 ,466,303 B2, iss. Dec. 16, 2008.
7 Lathrop, Jr. et al., US 5,555,897, iss. Sept. 17, 1996.
3
Appeal2014-009953
Application 11/647,300
the comrouer maimams the cameter posmon as the catheter
rotates (see paragraphs [0247]-[0250]), an expandable and
collapsible tubular shaft (see paragraph [0164]).
Id. at 4.
Appellants do not dispute the Examiner's findings with respect to
Wallace as they relate to claims 1 and 42, and Appellants argue only that
Wallace discloses only robotic control of catheters and substituting a
manually actuable device for Wallace's highly specialized, robotic only
devices would fundamentally change the principle of operation of Wallace.
Appeal Br. 11-12.
We are not persuaded of error by Appellants' argument for the
reasons provided by the Examiner in response thereto. See Ans. 3-5. In
particular, the Examiner cites another embodiment of Wallace in which an
"off the shelf' catheter with manual controls is used in a robotic guide
instrument similar to the guide instrument cited by the Examiner in the
rejection. Ans. 4--5 (citing Wallace Fig. 172, i-f 310). Appellants contend
that this use of an "off the shelf' catheter is complementary to the
robotically controlled guide member and is not a substitute for it. Reply
Br. 2. Whether or not Appellants' contention is correct, Appellants'
argument does not distinguish Wallace's use of a manually controlled off the
shelf catheter from the claim limitations at issue. For example, claim 1 only
requires that the catheter receiving portion is "configured to receive" a
catheter with manual controls and this embodiment of Wallace is configured
to receive such a catheter. See Wallace i-f 310. Thus, we are not persuaded
that the Examiner erred in concluding that it would have been obvious to a
person of ordinary skill in the art to use a manually actuated catheter in
Wallace's system.
4
Appeal2014-009953
Application 11/647,300
Accordingly, we sustain the rejection of independent claims 1 and 42.
We also sustain the rejection of claims 2, 3, 7, 8, and 13-20, for which
Appellants do not raise separate arguments. Appellants do address certain
dependent claims separately, as discussed below.
Claims 4, 5
Claim 4, from which claim 5 depends, recites, inter alia, a controller
"adapted to control at least one of said deflection servo mechanism and said
rotation servo mechanism to maintain a substantially constant catheter
deflection as said catheter receiving portion rotates." Appeal Br. 16-17.
The rejection does not clearly address the requirements of claims 4
and 5. See Final Act. 4. Appellants contend that the cited portions of
Wallace do not teach or suggest this feature. Appeal Br. 12. In response,
the Examiner finds that Wallace discloses this feature in the Abstract.
Ans. 6. However, the Examiner's response quotes a portion of Appellants'
abstract and Wallace's abstract does not clearly relate to this feature. The
Examiner has not otherwise shown that Wallace or any of the other art of
record teaches or suggests this feature of claim 4. Accordingly, we are
persuaded of error with respect to the rejection of claims 4 and 5, and thus,
we do not sustain the rejection of these claims.
Claims 21 and 22
Claim 21 recites "an expandable and collapsible tubular shaft
surrounding at least a portion of said catheter for maintaining a substantially
sterile field about said catheter outside a patient's body." Claim 22 further
requires that the "tubular shaft comprises a plurality of telescoping tubular
elements."
5
Appeal2014-009953
Application 11/647,300
The Examiner finds that Wallace discloses "an expandable and
collapsible tubular shaft." Final Act. 4 (citing Wallace i-f 164). The
Examiner further explains that Wallace "teaches the use of a surgical drape
which can be configured to surround the driver element, as shown in Figures
7 A-7C, and this is considered a tubular element, within the broadest
reasonable interpretation of that term" and that Wallace discloses another
semi-rigid covering embodiment, "which is considered a telescoping shaft
within the broadest reasonable interpretation of that term." Ans. 6-7 (citing
Wallace i-fi-1 164, 1 71 ).
Appellants argue that Wallace's sterile barrier is a drape and is neither
a tubular shaft nor a plurality of telescoping elements. Appeal Br. 13. In
reply, Appellants further argue that a drape does not have the shape of a
tubular element under the dictionary definition of a tube. Reply Br. 3.
Appellants assert, "[e]ven interpreted broadly, a 'tubular element' must have
the shape of a tube - 'a hollow, usually cylindrical body ... used especially
for conveying or containing liquids or gases.'
http://dictionary.reference.com/browse/tube (retrieved Sept. 11, 2014). A
surgical drape does not have such a shape." Id.
We are not persuaded of error. Appellants do not adequately explain
why the drape depicted in Wallace and relied upon by the Examiner is not
tubular under the definition provided by Appellants. See, e.g. Wallace Fig.
7 A (depicting a drape 50/52 in a cylindrical configuration). Further, to the
extent the Examiner relies on the embodiment described in Wallace, at
paragraph 171, as disclosing telescoping elements, Appellants do not
respond other than to indicate that this "cannot be found in the asserted
combination of references." Appeal Br. 12. This embodiment includes a
6
Appeal2014-009953
Application 11/647,300
semi-rigid sterile covering for the instrument driver with overlapping pieces
"to allow relative motion without friction binding." Wallace i-f 1 71.
Appellants' mere recitation of the claim language and the statement that is
not found in the art is not sufficient to show error in the rejection.
We find that a preponderance of the evidence supports the Examiner's
findings that Wallace teaches a tubular shaft as required by claims 21 and
22. Accordingly, we are not persuaded of error and we sustain the rejection
of claims 21 and 22.
Claims 23-27
Claims 23-27 relate to "an introducer." See Appeal Br. 19 (claim 23,
from which claims 24--27 depend). Appellants argue that the rejection "fails
to even mention this aspect of the invention," and thus, the Examiner has not
established a prima facie showing of obviousness with respect to these
claims. Id. at 13.
The rejection does not specifically indicate where the art teaches an
introducer. Final Act. 4. However, in response to Appellants' argument, the
Examiner finds:
However, the "introducer" as described in the originally filed
disclosure, is simply a structure that is steerable with at least one
degree of freedom, is stationary at the proximal end, and extends
into the patient proximate the target site (see the first full
paragraph on page 14 of the originally filed disclosure). But in
Wallace et al, the catheter is supported by and contained within
both a guide instrument and a sheath (see e.g. Figure 74, elements
18 and 30, respectively and Figure 161, elements 354 and 355,
respectively) either of which constitute "an introducer" as
claimed, within the broadest reasonable interpretation of that
term, since the proximal ends thereof are stationary, by virtue of
their attachment to the drive mechanism, 16 (see e.g. Figure 6),
and the distal ends thereof extend into the patient to a location
7
Appeal2014-009953
Application 11/647,300
proximate the target site (see e.g. Figures 161-163 and paragraph
[0307]).
Ans. 7.
Appellants do not address this issue in the Reply Brief. We find that
the Examiner's interpretation that either the guide instrument or the sheath
may be considered an introducer as claimed is supported by a preponderance
of the evidence. Thus, we are not persuaded of error, and we sustain the
rejection of claims 23-27.
Obviousness over Wallace, Brock, Bowden, Yi, and Lathrop
Claims 6 and 9-12
With respect to claims 6 and 9-12, Appellants rely on their arguments
with respect to claim 1. Appeal Br. 13. Having found no error in the
rejection of claim 1, we are not persuaded of error with respect to the
rejection of claims 6 and 9-12. Accordingly, we sustain the rejection of
claims 6 and 9-12.
Claims 28-30
Independent claims 28 recites a limitation similar to claim 4, i.e. a
controller that "maintain[ s] a substantially constant catheter deflection
during rotation of said catheter receiving portion." Appeal Br. 20. The
Examiner does not specifically address this limitation in the rejection. See
Final Act. 5. Further, in response to Appellants' arguments, the Examiner
relies on the same reasoning discussed above with respect to the rejection of
claims 4 and 5. Specifically, the Examiner again relies on Wallace's
abstract for this claim limitation, but, as noted above, the Examiner quotes
Appellants' abstract. Ans. 8. The Examiner has not otherwise shown that
Wallace or any of the other art of record teaches or suggests this feature of
claim 28. Accordingly, we are persuaded of error with respect to the
8
Appeal2014-009953
Application 11/647,300
rejection of independent claim 28 and dependent claims 29 and 30, and thus,
we do not sustain the rejection of these claims.
CONCLUSION
For the reasons set forth above, we AFFIRM the rejections of claims
1-3, 6-27, and 42, and we REVERSE the rejections of claims 4, 5, and
28-30.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
9