Ex Parte Millman et alDownload PDFPatent Trial and Appeal BoardJan 22, 201511341004 (P.T.A.B. Jan. 22, 2015) Copy Citation 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. 11/341,004 01/27/2006 Paul Millman ISRG00050/US 1234 51947 7590 01/22/2015 PATENT DEPT - INTUITIVE SURGICAL OPERATIONS 1020 KIFER RD SUNNYVALE, CA 94086 EXAMINER SCHMIDT, EMILY LOUISE ART UNIT PAPER NUMBER 3763 MAIL DATE DELIVERY MODE 01/22/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte PAUL MILLMAN, DAVID BAILEY, DEAN HOORNAERT, DAVID STEPHEN MINTZ, and DAVID Q. LARKIN ____________ Appeal 2012-008266 Application 11/341,0041 Technology Center 3700 ____________ Before MICHAEL P. COLAIANNI, JEFFREY N. FREDMAN, and ELIZABETH A. LaVIER, Administrative Patent Judges. LaVIER, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 1, 2, 8–14, 16, 17, and 21–31. Appellants seek reversal of the Examiner’s rejections, pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we AFFIRM. BACKGROUND The Specification describes surgical instruments for robotic surgery, specifically devices for irrigation, aspiration, and blowing. (Spec. 1.) Claim 1 is representative: 1 According to Appellants, the real party in interest is Intuitive Surgical Operations, Inc. (Appeal Br. 3.) Appeal 2012-008266 Application 11/341,004 2 1. A robotic surgical instrument adapted to be coupled to a robotic arm, the robotic surgical instrument comprising: a first robotically controlled rotatable valve having a first port and a second port, the first robotically controlled rotatable valve having a first cylindrical shaft coupled to a first rotatable receiver, the first rotatable receiver adapted to couple to a first rotatable driver of the robotic arm to rotate the first cylindrical shaft; a rigid hollow tube having a first end coupled to the second port of the first robotically controlled rotatable valve and a second end to be positioned within a patient’s body near a surgical site, the rigid hollow tube having an opening at the second end to direct the flow of one or more fluids into and out of the surgical site; a first hose having a first end coupled to the first port of the first robotically controlled rotatable valve, the first hose to transport the first fluid to or from the first robotically controlled rotatable valve; and wherein rotation of the first cylindrical shaft couples the first port and the second port together to variably control a flow of the first fluid through the first robotically controlled valve and the rigid hollow tube in response to first control signals. (Appeal Br. 13 (Claims App.).) REJECTIONS The Examiner maintains the following rejections on appeal: 1. Claims 1, 2, 26, and 27 are rejected under 35 U.S.C. § 103(a) as unpatentable over Ivey2 in view of Martin,3 Tierney,4 Cosmescu,5 and D’Amelio.6 (Ans. 5.) 2 U.S. Patent No. 5,605,537, issued Feb. 25, 1997. 3 U.S. Patent No. 5,472,432, issued Dec. 5, 1995. 4 U.S. Patent Application Pub. No. US 2002/0072736 A1, published June 13, 2002. Appeal 2012-008266 Application 11/341,004 3 2. Claims 8–10, 13, 14, 16, 17, 21–25, and 28–31 are rejected under 35 U.S.C. § 103(a) as unpatentable over Ivey in view of Martin, Tierney, and Cosmescu. (Ans. 8.) 3. Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as unpatentable over Ivey in view of Martin, Tierney, and Cosmescu, and further in view of D’Amelio. (Ans. 15.) FINDINGS OF FACT We agree with and adopt the Examiner’s findings of fact, as set forth on pages 5–15 of the Answer. We note the following for emphasis and context. Ivey describes an endoscopic device for suction, irrigation, and aqua- dissection. (Ivey Abstract.) The Examiner relies on Ivey to teach various aspects of claim 1, but notes that “Ivey does not disclose the valves are robotically controlled and coupled to a rotatable receiver adapted to couple to a first rotatable driver of a robotic arm to rotate the valve.” (Ans. 6.) Thus, the Examiner turns to Martin, which describes a compactly-structured dual lumen vascular access catheter (see Martin Abstract) to teach rotatable valves (Ans. 6), and to Tierney for robotic control of surgical devices (including, inter alia, attaching a robotic arm to suction or irrigation tools) (id. (citing Tierney ¶ 41)). Further, the Examiner cites to Cosmescu for the teaching of “using both manual and automatic valves and automated valves [to] allow for the incorporation of additional safety features.” (Id. (citing Cosmescu col. 2, ll. 3–20; col. 3, ll.40–66).) Finally, as the Examiner also finds Ivey to lack express disclosure regarding connection of the 5 U.S. Patent No. 5,836,909, issued Nov. 17, 1998. 6 U.S. Patent No. US 6,234,205 B1, issued May 22, 2001. Appeal 2012-008266 Application 11/341,004 4 irrigation/suction sources to the valves using hoses (Ans. 7), the Examiner cites D’Amelio for the teaching that “flexible hoses are commonly used in the art for connection between an irrigation or suction source and the valve control” (id. (citing D’Amelio Fig. 2; col. 4, ll. 50–55)). As to the combination of these references, the Examiner finds: It would have been obvious to a person of ordinary skill in the art at the time the invention was made to use a suction/irrigation tool and valve system as in Ivey and Martin with the robotic system of Tierney et al. because Tierney et al. teach being able to use various tools with the robotic system including a suction/irrigation tool as provided by Ivey and Martin and further it would be beneficial to robotically control the valves of Ivey and Martin with the system of Tierney et al. because Cosmescu teaches interchangeably using manual and automatic valves and using automated valves can provide additional safety features and Tierney et al. teach robotic assistance enhances the safety, accuracy, and speed of surgical procedures. The rotatable valve control members of Martin (Fig. 1 member 72 and 80) would be able to be modified to be received as needed by the driver of Tierney et al. and the valve of Martin has a rotatable shaft (Fig. 2 shaft 62). . . . It would have been obvious to a person of ordinary skill in the art at the time the invention was made to use a hose to connect the valve of Ivey to the irrigation or suction source because D’Amelio et al. teach such hoses are known in the art. (Id. at 6–7.) DISCUSSION We begin by noting that Appellants focus their arguments on claim 1, and do not present separate arguments for the patentability of the other claims subject to Rejection 1. (See Appeal Br. 7–10.) We thus treat claim 1 as representative of all of the claims subject to rejection 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). For the claims subject to Rejections 2 and 3, Appeal 2012-008266 Application 11/341,004 5 Appellants only refer back to previous arguments. (See id. at 11.) Accordingly, we need only consider claim 1 to decide this appeal. First, Appellants argue that the references, alone or in combination, fail to teach a robotically-controlled cylindrical valve coupled to a rotatable receiver and actuated by a rotatable driver. (Appeal Br. 8; Reply Br. 4.) As Appellants note, several of the references cited by the Examiner describe manual irrigation and suction instruments, while Tierney generally discloses robotic surgery and Cosmescu teaches automatic electronic valves. (See Appeal Br. 8.) In Appellants’ view, Tierney and Cosmescu fail to provide the missing teaching (from the manually-operated references) of robotic control of valves, because Tierney does not discuss valves, or more generally how to operate a suction/irrigation tool (id. at 8–9; Reply Br. 4), and because in Cosmescu, a pump controls fluid flow rather than the valves, which in Cosmescu can only be in a fully-open position or a fully-closed position (Appeal Br. 8; Reply Br. 4). With regard to Tierney, we agree with the Examiner’s finding that despite the generality of Tierney’s teaching with regard to a robotically- controlled irrigation/suction device, “one of ordinary skill would be able to apply the control of Tierney et al. to a variety of devices as its operation has been disclosed. Applicant has not provided any specific argument as to why one of ordinary skill would be prevented from being able to do so.” (Ans. 16.) As to Cosmescu, the distinctions on which Appellants’ arguments rely are not borne out in claim 1. Claim 1 recites a “robotically controlled rotatable valve,” but neither claim 1 nor the Specification defines “robotically controlled” with any particularity that would exclude Cosmescu’s automated valves. And although claim 1 recites that the Appeal 2012-008266 Application 11/341,004 6 rotation of the shaft couples the ports together to “variably control a flow” of fluid through the robotically-controlled valve, this variability could be satisfied by Cosmescu’s fully open/fully closed automated valves, as neither claim 1 nor the Specification requires more precise valve control. Second, Appellants argue that one of ordinary skill in the art would not have been motivated to combine Ivey with Martin, as the combination would render Ivey unsatisfactory for its intended purpose (Appeal Br. 10; Reply Br. 4–5). The Examiner relies on Martin to provide rotatable valves, to combine with Ivey’s (manual) endoscopic device. (Ans. 5–6.) Although Appellants are correct that Martin’s device is for a different purpose than Ivey’s, that is that Martin “is used with the blood circulatory system,” (Appeal Br. 10), we agree with the Examiner that “[u]sing the valve feature of Martin provides for a more compact surface, one of ordinary skill would still be able to adapt the size of the valve as needed to function with the device of Ivey,” (Ans. 16). Further, as Appellants point out, (Appeal Br. 10), Ivey indicates using valves “of a style that is difficult to clog, such as gate valves.” (Ivey, col. 7, ll. 20–21.) Notably, the Specification lists “gate- type valve” among various possibilities for the “rotatable valve,” (Spec. 29), thus providing further support for the viability of the Examiner’s substitution of Martin’s rotatable valves for the gate valves in Ivey. Having considered all of Appellants’ arguments, we are unpersuaded that the Examiner reversibly erred in rejecting claim 1 as obvious. CONCLUSION The Examiner’s final rejections of claims 1, 2, 8–14, 16, 17, and 21– 31 are affirmed for the reasons of record. No time period for taking any Appeal 2012-008266 Application 11/341,004 7 subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED bar Copy with citationCopy as parenthetical citation