Ex Parte Novak

Board of Patent Appeals and Interferences

Jun 18, 2010

10601406 (B.P.A.I. Jun. 18, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAVEL NOVAK
____________

Appeal 2009-010849
Application 10/601,406
Technology Center 2400
____________

Decided: June 21, 2010
____________

Before JAMES D. THOMAS, MAHSHID D. SAADAT,
and CARL W. WHITEHEAD, JR., Administrative Patent Judges.
THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 8, 10 through 29, 31 through 50, 52 through
71, and 73 through 82. Appellant has canceled claims 9, 30, 51, and 72. We
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have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was conducted on
this appeal on June 10, 2010.

We reverse.

INVENTION
A system for controlling medical devices is disclosed, generally
comprising a surgical network, an input device for entering a medical
command, a controller for generating medical command data, and a
translator for communicating with at least one ancillary device, where the
ancillary device is either a device that is not compatible with the surgical
network or is a device that generates high-bandwidth data. In some
embodiments, the ancillary device is connected via Ethernet for high-
bandwidth data transmission or via Bluetooth for wireless control.
(Abstract, page 16 of the Spec., Figure 1.)

REPRESENTATIVE CLAIM
1. A system which controls ancillary medical devices, comprising:

a surgical network;

an input device, connected to said surgical network, which inputs a
medical command;

a controller, connected to said surgical network, which receives the
medical command and generates corresponding medical command data;

a translator, connected to said surgical network, which receives the
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medical command data via said surgical network and translates the medical
command data;

at least one ancillary medical device, in communication with said
translator via an ancillary network, which receives the translated medical
command data and carries out the corresponding medical command; and

a data stream, generated by at least one of said at least one ancillary
medical devices and communicated to said translator via said ancillary
network, with a higher bandwidth than said surgical network is capable of
transmitting.

PRIOR ART AND EXAMINER’S REJECTIONS
The Examiner relies on the following references as evidence of
unpatentability:
Bauer US 5,788,688 Aug. 4, 1998
Igarashi US 6,067,571 May 23, 2000
Flach US 6,589,170 B1 Jul. 08, 2003
(filed May 25, 2000)
Suzuki US 7,103,646 B1 Sep. 05, 2006
(filed Aug. 09, 1999)

All claims on appeal stand rejected under 35 U.S.C. § 103. As
evidence of obviousness as to claims 1, 2, 10 through 12, 18 through 23, 31
through 33, 39 through 44, 52 through 54, 60 through 65, 73 through 75, 81,
and 82, the Examiner relies on Bauer in view of "what is well known in the
art." This initial rejection includes independent claims 1, 22, 40, 41, 42, 43,
64, and 82. The second stated rejection is directed to claims 3, 4, 8, 13, 14,
17, 24, 25, 29, 34, 35, 38, 45, 46, 50, 55, 56, 59, 66, 67, 71, 76, 77, and 80 as
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being obvious over Bauer in view of "what is well known in the art," further
in view of Flach. The third stated rejection of the Examiner appears to rely
upon the same latter combination of references to reject claims 5, 15, 26, 36,
47, 57, 68, and 78. Lastly, in a fourth stated rejection as to claims 6, 7, 16,
27, 28, 37, 48, 49, 58, 69, 70, and 79, the Examiner relies upon Bauer in
view of "what is well known in the art," further in view of Suzuki.

CLAIM GROUPINGS
Based upon Appellant’s arguments in the Appeal Brief, Appellant
argues common features among independent claims 1, 22, 40, 41, 42, 43, 64,
and 82. No arguments are presented as to any dependent claim in any of the
four stated rejections. We consider independent claim 1 as representative.

ISSUE
Did the Examiner err in finding that the combination of Bauer and
"what is well known in the art" would have rendered obvious to a person of
ordinary skill in the art the subject matter of representative independent
claim 1 on appeal?

ANALYSIS
Since we find that the Examiner has failed to establish a prima facie
case of obviousness within 35 U.S.C. § 103, we reverse the rejection of
representative independent claim 1 on appeal.
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Since we agree with Appellant’s overview assessment of the teachings
in Bauer as expressed at pages 11 through 13 of the principal Brief, and
because we consider this assessment to be consistent with the Examiner’s
views (and our study of it as well) as to this reference in formulating the first
stated rejection, we reproduce them here:
The present invention relates to a system for simultaneously
controlling primary medical devices, which are connected to a
surgical network, and ancillary devices, which are not compatible
with the surgical network, or at least transmit some data which can not
be carried by the surgical network. Traditional systems, such as the
one disclosed in Bauer, for controlling both primary medical devices
and ancillary devices have relied upon two completely separate
networks for controlling these two different types of devices. Thus,
for example, Bauer includes a first network (i.e., a surgical
network) comprising an IEEE-488 or RS-485 card (designated as 76
in Figure 3) with which devices 44, 46 are in communication, and a
second network (i.e., an ancillary network or video network)
comprising a frame store card (designated as 90 in Figure 3) with
which VGA monitor 68, video fail-safe switch 94, camera control unit
49 and endoscopic camera 74 are in communication. More
specifically, all communications with components of the first network
76, 44, 46 take place via the first network (i.e., no communications
concerning any of these components is communicated over the second
network), and all communications with components of the second
network 90, 68, 94, 49, 74 take place via the second network (i.e., no
communications concerning any of these components is
communicated over the first network).

More specifically, all independent claims recite both a surgical
network and an ancillary network. All independent claims also recite
that at least one medical device is in communication, at least
indirectly, with both networks and that medical command data for
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controlling the medical device be communicated over the surgical
network, and also that a data stream or feedback data generated by the
medical device be communicated over the ancillary network.
Appellant respectfully submits that Bauer does not disclose, teach or
suggest these limitations.

(Brief, pages 11, 12, and 13).

Pages 13 and 14 of the principal Brief further consider the teachings
of Bauer from the perspective of one of ordinary skill in the art as applied to
different, optional limitations of the claims on appeal. Even though we
recognize that Appellant’s positions in all of these noted pages from the
principal Brief are couched in the context of Bauer anticipating the claims
on appeal, the teachings themselves are still pertinent for our consideration
and those of a person of ordinary skill in the art within 35 U.S.C. § 103.
With this understanding of Bauer and the corresponding requirements
reflected among the independent claims on appeal, we find that the
Examiner's initial stated rejection encompassing all independent claims on
appeal must be reversed since the Examiner’s broad statement of "what is
well known in the art" as a modifying teaching is without evidentiary value.
It amounts merely to a brute force argument of obviousness without any
additional evidence supporting the assertions made by the Examiner. The
Examiner’s view as to "what is well known in the art" is presumptuous and
without a factual basis. Couching this reasoning of the Examiner in the
context of Official Notice also is of no help to the Examiner’s weakly based
position.
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Even if we were to consider the Examiner’s assertion as to what was
well known in the art at the time of the present invention was a technical fact
of common knowledge in the art, the Examiner’s views presume that it
would then have been obvious for a person of ordinary skill in the art to have
modified the teachings of Bauer within 35 U.S.C. § 103 in light of this
alleged fact. We take a similar view with respect to the Examiner’s
subsequent brief reliance upon Igarashi at page 20 of the Answer. The
Examiner’s reliance upon this reference at this late stage of the prosecution
would appear to be the formulation of a new ground of rejection in the
Answer that has not been properly approved. Even if it were, we are in
general agreement with Appellant’s remarks as to this reference beginning at
the bottom of page 4 of the Reply Brief. Igarashi appears to teach that his
devices are only connected to one network rather than to the required two
separately stated networks in each independent claim on appeal.

CONCLUSION AND DECISION
Appellant has shown that the Examiner erred by failing to establish a
prima facie case of obviousness of representative independent claim 1 on
appeal based upon Bauer in view of "what is well known in the art."
Therefore, we must reverse the rejection of this representative claim and the
remaining independent claims on appeal, as well as the rejections of all

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dependent claims encompassed by the four stated rejections under 35 U.S.C.
§ 103. The Examiner is reversed.

REVERSED

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