Ex Parte Hyink et al

Patent Trial and Appeal Board

Sep 18, 2017

13344254 (P.T.A.B. Sep. 18, 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.
13/344,254 01/05/2012 Carolyn A. Hyink AUS920110260US1 7235
35525 7590 09/20/2017
IBM CORP (YA)
C/O YEE & ASSOCIATES PC
P.O. BOX 802333
DALLAS, TX 75380
EXAMINER
MILLER, ALAN S
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
09/20/2017 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):
ptonotifs @yeeiplaw.com
mgamez @ yeeiplaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex Parte CAROLYN A. HYINK, PETER F. HAGGAR,
ASHWIN B. MANEKAR, and ARTEM A. PAPKOV
Appeal 2016-008513
Application 13/344,254
Technology Center 3600
Before HUNG H. BUI, BETH Z. SHAW, and
AARON W. MOORE, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1—20, which represent all the pending
claims. Notice of Appeal. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2016-008513
Application 13/344,254
INVENTION
Appellants’ invention is directed to managing a surgical environment.
See Spec. 1.
Claim 1 is illustrative and is reproduced below:
1. A method for managing a number of surgical tools
comprising:
receiving information transmitted by a tag associated with a
patient about a procedure to be performed on the patient;
determining whether a number of surgical tools is to be used in
performing the procedure based on the information;
responsive to a determination that the number of surgical tools
is to be used in performing the procedure, determining whether a
signal received by the number of surgical tools indicates that the
number of surgical tools is present within a predetermined distance of
a location on the patient where the procedure is to be performed; and
responsive to a determination that the signal received by the
number of surgical tools indicates that the number of surgical tools is
within the predetermined distance of the location on the patient where
the procedure is to be performed, enabling the number of surgical
tools for use in performing the procedure.
REJECTION
The Examiner rejected claims 1—20 under 35 U.S.C. § 101 as directed
to non-statutory subject matter. Final Act. 9—10.
The Examiner rejected claims 1—8 and 10-20 under 35 U.S.C.
§ 103(a) as being unpatentable over Andrie (US 2013/0066647 Al,
published March 14, 2013) and Nix (US 2010/00123560 Al, published May
20,2010). Final Act. 11-18.
The Examiner rejected claim 9 under 35 U.S.C. § 103(a) as being
unpatentable over Andrie, Nix, and Allen (US 2009/0157059 Al, published
June 18, 2009). Final Act. 19.
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Application 13/344,254
ANALYSIS
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejection, and the Examiner’s response to the Appellants’
arguments. However, we are not persuaded of error in the Examiner’s
rejection of the claims under 35 U.S.C. § 103(a). Because we affirm the
rejection of claims 1—20 under 35 U.S.C. § 103(a), we do not reach the § 101
rejection. We agree with and adopt the Examiner’s findings and conclusions
with respect to the rejection of claims 1—20 under 35 U.S.C. § 103(a). Final
Act. 11-19; Ans. 13-23.
Claim 1
Appellants argue that the Examiner erred in finding the combination
of Andrie and Nix teaches, “responsive to a determination that the number of
surgical tools is to be used in performing the procedure, determining
whether a signal received by the number of surgical tools indicates that the
number of surgical tools is present within a predetermined distance of a
location on the patient where the procedure is to be performed,” as recited
in claim 1. App. Br. 11—19.
Appellants do not proffer sufficient evidence or arguments to
persuade us of error in the Examiner’s findings. The Examiner explains that
the broadest reasonable interpretation of “within a predetermined distance”
is encompassed by Andrie’s teachings. Ans. 14. The Examiner finds that
Andrie teaches a system that uses RFID tags to relay the location, status, and
other related surgical information of one or more surgical components to the
system. Ans. 14 (citing Andrie Tflf 67—70). When Andrie’s system is
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Application 13/344,254
determining what surgical component is needed for a patient’s surgery, the
sensor system relates a quantity and quality of each needed surgical tool. Id.
(citing Andrie Tflf 43—49, Figs. 5, 9, and 11). The system searches within
inventory to determine if the needed tools are present. Id. The Examiner
finds that Andrie’s system can detect tools within a predetermined location
(i.e., the tool’s location in a department’s inventory). Id. The Examiner
concludes that “[i]f tools are within a hospital’s inventories, they are within
a predetermined distance where the procedure is to be performed.” Id.
We are not persuaded that the Examiner’s broad, but reasonable,
interpretation of “predetermined distance” as recited in claim 1 is erroneous.
Moreover, the Examiner goes on to find, and we agree, that Nix further
demonstrates that a smaller proximity range can be used to determine needed
medical tools. Id. (citing Nix, Figs. 5, 9, 11, H 43^49). For example, Nix
explains that tags within a particular zone of 5, 10, or 15 feet may be
activated. Nix. 143.
Appellants also argue that Nix fails to teach “enabling the number of
surgical tools for use in performing the procedure.” App. Br. 20-21.
However, the Examiner finds, and we agree, that Nix teaches that a number
of surgical tools can be activated based on a predetermined distance to an
activation sensor. Final Act. 12 (citing Nix, Summary and 33, 42).
Appellants argue that Andrie fails to teach “receiving information
transmitted by a tag associated with a patient about a procedure to be
performed on the patient,” as recited in claim 1. App. Br. 21—27.
Appellants acknowledge that Andrie describes receiving surgery information
including a type and location of the surgery, but argue that the surgery
information is not described as having been transmitted by a tag, as claimed.
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Application 13/344,254
Id. at 25. However, the Examiner explains that Andrie’s system uses RFID
tags to relay the location, status, and other related surgical information of
one or more surgical components to the system. Ans. 14 (citing Andrie Tflf
32, 67—70, 72—77). We agree with the Examiner’s finding that Andrie
teaches electronically receiving surgery information. Andrie 133. We
understand the Examiner to conclude that Andrie teaches sending
information via RFID tags (e.g., Andrie 176, Fig. 2). Claim 1 does not
place any limitation on what “associated with a patient” means. Appellants
provide insufficient evidence proving that the claims limit “associated with a
patient” in a way that, under a broad but reasonable interpretation, is not
encompassed by Andrie’s teachings of transmitting information.
Accordingly, we sustain the rejection of claim 1.
Claim 2
Claim 2 depends from claim 1, and further recites additional elements
including “determining whether the number of surgical tools is no longer
present. . . .” Appellants present essentially the same argument as regarding
the predetermined distance of the location on the patient where the
procedure is to be performed. App. Br. 27. For the same reasons as
discussed with respect to claim 1, we sustain the rejection of claim 2, and of
claims 11 and 17, which were argued together with claim 2.
Claim 3
Appellants argue that Andrie and Nix fail to teach “determining
whether the tag is within a predetermined distance of the number of surgical
tools using the information,” as recited in claim 3. App. Br. 28. The
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Examiner finds, and we agree, that Nix shows that a predetermined distance
can be adjusted based on the desired sensor range. Ans. 17 (citing Nix 142).
Moreover, Andrie shows that the RFID tag of each tool will indicate whether
one or more tags are within a predetermined distance of the number of
surgical tools. Id.
Accordingly, we sustain the rejection of claim 3, and of claims 8, 9,
12, and 18, which were argued together with claim 2.
Claims 4 and 5
Claim 4 depends from claim 1, and further recites “wherein the
number of surgical tools comprises a cutting tool, and wherein enabling the
number of surgical tools for use in performing the procedure comprises:
extending a cutting instrument for the cutting tool from a housing associated
with the cutting tool.” Claim 5 depends from claim 2, and further recites, in
part, “retracting a cutting instrument for a bladed tool into a housing
associated with the cutting tool.”
The Examiner takes Official Notice that extending and retracting an
instrument via wireless signal was obvious at the time of the invention.
Final Act. 14—15.
Appellants argue the Examiner’s finding is erroneous. The issue
before us is whether the Appellants have shown error in the Examiner’s
taking of Official Notice. “To adequately traverse such a finding [of official
notice], an applicant must specifically point out the supposed errors in the
examiner’s action, which would include stating why the noticed fact is not
considered to be common knowledge or well-known in the art. See 37 CFR
1.111(b).” MPEP § 2144.03(C). An adequate traverse must contain
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adequate information or argument to create on its face, a reasonable doubt
regarding the circumstances justifying notice of what is well known to one
of ordinary skill in the art. In re Boon, 439 F.2d 724, 728 (CCPA 1971).
The Examiner explains that “some surgical instruments can be
enabled or disabled when it is within a predetermined boundary of a surgical
site.” Final Act. 14. The Examiner explains “[i]t would have been obvious
for one of ordinary skill in the art at the time of the invention to modify
Andrie and Nix with Examiner’s official notice, because extending a knife
blade is a commonly known active state for a knife with housing, and using
a remote control to change activate/inactive state is well known in the art as
disclosed in Nix.” Id. The Examiner further refers to US 8,517,243 to
demonstrate that wirelessly putting a mechanical surgical tool in an active
state (extended) or passive state (retracted) is old and well known. Ans. 19.
The Examiner also refers to US 8,746,530 to demonstrate wirelessly activing
and deactivating an instrument. Final Act. 15.
Contrary to Appellants’ argument, the Examiner offers evidence to
support the Examiner’s taking of Official Notice that wirelessly extending a
cutting instrument for a cutting tool was well known and expected in the art.
Appellants do not address this evidence; nor do they contest that extending
or retracting a cutting instrument for a cutting tool was well known and
expected in the art. None of Appellants’ arguments contain adequate
information to create, on their face, a reasonable doubt regarding the
circumstances justifying notice of what is well known to one of ordinary
skill in the art.
Accordingly, we sustain the rejection of claims 4 and 5, and of claims
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13, 14, 19, and 20, which were argued together with claims 4 and 5.
Claim 6
Appellants argue that Andrie fails to teach the “information comprises
the procedure to be performed” as recited in claim 6. App. Br. 30. We are
not persuaded of Examiner error for the reasons stated in the Answer. Ans.
21.
Accordingly, we sustain the rejection of claim 6, and of claim 15,
which was argued together with claim 6.
Claim 7
Appellants argue that Andrie fails to teach “wherein the information is
selected from an identifier for the procedure to be performed, a number of
steps to be performed for the procedure, and a patient identification,” as
recited in claim 7. App. Br. 30. The Examiner finds that Andrie teaches a
number of steps including a location of surgery, implants needed, and a
patient identification. Final Act. 16. Appellants repeat their argument made
with respect to claim 1 that the information is not received from a tag
“associated with a patient.” App. Br. 30. For the same reasons discussed
above with respect to claim 1, we are not persuaded of error. Moreover, we
agree with the Examiner’s finding that Nix also teaches a physical tag used
to communicate needed information. Ans. 22 (citing Nix, Figs. 5, 9, 11,
1143-49). Further, we note the issue raised by Appellants in the Reply Brief
regarding a new ground of rejection relates to a petitionable matter and is not
for this panel to address. See 37 C.F.R. § 41.40(a) (“Any request to seek
review of the primary examiner’s failure to designate a rejection as a new
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ground of rejection in an examiner’s answer must be by way of a petition to
the Director”). Accordingly, we sustain the rejection of claim 7.
Non-Statutory Subject Matter Rejection
Because we affirm the rejection of claims 1—20 under 35
U.S.C. § 103(a), we do not reach the § 101 rejection.
DECISION
The decision of the Examiner rejecting claims 1—20 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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