Ex parte PETER J. WILK et al.

Board of Patent Appeals and Interferences

Sep 24, 1997

08125671 (B.P.A.I. Sep. 24, 1997)

Application for patent filed September 23, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte PETER J. WILK
and
CARY W. SCHNEEBAUM
______________
Appeal No. 95-3598
Application 08/125,6711
______________
ON BRIEF
_______________
Before MEISTER, ABRAMS and FRANKFORT, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
Appeal No. 95-3598
Application 08/125,671
2
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 4 and 7 through 25, all of the claims
remaining in this application. Claims 2, 3, 5 and 6 have been
canceled.
The subject matter on appeal is directed to a
laparoscopic surgical apparatus and a laparoscopic surgical
method. Claims 1 and 18 are illustrative of the subject matter on
appeal and a copy of those claims, as reproduced from the
Appendix to appellants' brief, is attached to this decision.
The prior art references relied upon by the examiner in
rejecting the appealed claims are:
Vise 3,845,771 Nov. 5, 1974
Zarudiansky 4,302,138 Nov. 24, 1981
Scott S. Fisher (Fisher), “Telepresence master glove controller
for dexterous robotic end-effectors,” 726 Intelligent Robots and
Computer Vision 396-399 (1986).
Claims 1, 4 and 7 through 25 stand rejected under
35 U.S.C. § 112, first paragraph, as being based on a
Appeal No. 95-3598
Application 08/125,671
3
specification which fails to provide an adequate written
description of
the invention and fails to adequately teach how to make the
invention. In addition, with regard to independent claims 1
and 11 and the claims which depend therefrom, the examiner urges
that the specification, as originally filed, fails to provide
support for the invention as now claimed.
Claims 1, 11 through 13 and 18 through 20 stand
rejected under 35 U.S.C. § 103 as being unpatentable over the
Fisher publication.
Claims 4, 7 through 10, 14 through 17 and 21 through 25
stand rejected under 35 U.S.C. § 103 as being unpatentable over
the Fisher publication as applied to claims 1, 11 through 13
and 18 through 20 above, and further in view of Zarudiansky and
Vise.
Rather than reiterate the examiner's full statement
of the above-noted rejections and the conflicting viewpoints
Appeal No. 95-3598
Application 08/125,671
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advanced by the examiner and appellants regarding those
rejections, we make reference to the examiner's answer (Paper No.
7, mailed March 16, 1995) for the examiner's reasoning in support
of the rejections, and to appellants' brief (Paper No. 6, filed
February 24, 1995) and reply brief (Paper No. 9, filed May 15,
1995) for appellants' arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellants' specification and claims, to
the applied prior art references, and to the respective positions
articulated by appellants and the examiner. As a consequence of
our review we have reached the determinations which follow.
Looking to the examiner's rejection of the appealed
claims under 35 U.S.C. § 112, first paragraph, we understand
this rejection to be based on both lack of enablement and on the
lack of a written description to support the invention as now
claimed. With regard to the first of these grounds of rejection,
we observe that the first paragraph of 35 U.S.C. § 112 requires,
inter alia, that the specification of a patent (or an applica-
Appeal No. 95-3598
Application 08/125,671
5
tion for patent) enable any person skilled in the art to which
it pertains to make and use the claimed invention. Although the
statute does not say so, enablement requires that the
specification teach those skilled in the art to make and use the
invention without "undue experimentation." In re Wands, 858 F.2d
731, 737,
8 USPQ2d 1400, 1404 (Fed. Cir. 1988). That some experimentation
may be required is not fatal; the issue is whether the amount of
experimentation required is "undue." Id. at 736-37, 8 USPQ2d at
1404.
Moreover, in rejecting a claim for lack of enablement,
it is well settled that the examiner has the initial burden of
producing reasons that substantiate the rejection. See In re
Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA 1982);
In re Marzocchi, 439 F.2d 220, 224, 169 USPQ 367, 370 (CCPA
1971). Once this is done, the burden shifts to the appellant to
rebut this conclusion by presenting evidence to prove that the
disclosure in the specification is enabling. See In re Doyle,
482 F.2d 1385, 1392, 179 USPQ 227, 232 (CCPA 1973); cert. denied,
Appeal No. 95-3598
Application 08/125,671
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416 U.S. 935 (1974); In re Eynde, 480 F.2d 1364, 1370, 178 USPQ
470, 474 (CCPA 1973).
In the case before us, we believe the examiner has not
met his burden of advancing acceptable reasons inconsistent with
enablement. While we appreciate the examiner's discomfiture over
the somewhat schematic illustration of the invention in
appellants' drawings, the lack of specific disclosure concerning
exactly how the fingers are attached to the distal end portion of
each of the laparoscopic instruments, exactly how the fingers
are articulated in a working manner, and the paucity of details
concerning how a device of the small proportions required for
introduction through a laparoscopic trocar sleeve might be
fabricated and operatively attached to the various required
linkages and control mechanisms, we nonetheless do not find that
these issues individually or collectively rise to the level of
non-enablement.
It is our opinion that the level of skill in this art
(i.e, the art of micro-robotics) is sufficiently high that the
Appeal No. 95-3598
Application 08/125,671
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ordinarily skilled artisan would have been able to fashion a
laparoscopic surgical apparatus of the type defined in
appellants' claims on appeal based on appellants' disclosure,
without the exercise of undue experimentation, and that such
device would be capable of operation in the manner claimed and
disclosed by appellants. In this regard, we point to, and note
our agreement with appellants' arguments on pages 8 through 13 of
the brief and in the reply brief. Like appellants, we note that
the examiner's concern over the use of prior art references to
support appellants' view of the level of knowledge in the art is
misplaced in a consideration of whether one skilled in the art
would have been
able to make and use the invention disclosed and claimed without
undue experimentation. The mere fact that material extraneous to
the originally filed disclosure, but known to those of ordinary
skill in the art at the time of filing of the application, might
be relied upon by the artisan in making and using the disclosed
laparoscopic surgical apparatus is not fatal. As the Court made
clear in In re Gaubert, 524 F.2d 1222, 1226, 187 USPQ 664, 667
(CCPA 1975), citing Martin v. Johnson, 454 F.2d 746, 751,
Appeal No. 95-3598
Application 08/125,671
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172 USPQ 391, 395 (1972),
[e]nablement is the criterion, and every
detail need not be set forth in the written
specification if the skill in the art is
such that the disclosure enables one to make
the invention.
The statements by the examiner regarding appellants'
use of the prior art cited by the examiner to show what one of
ordinary skill in the art would be expected to know and how one
skilled in the art would go about making the claimed invention,
evidences to us that the examiner's basis for this rejection is
premised on the mistaken belief that only material set forth
expressly in appellants' disclosure is available to demonstrate
enablement. As the case law cited supra, and in appellants'
brief clearly indicates, that belief on the examiner's part is
in error. When this error is coupled with the arguments of
appellants noted above and the fact that the examiner has never
stated, maintained or established that a person of ordinary skill
in the art would be incapable of making and using the disclosed
invention without the exercise of undue experimentation, we are
Appeal No. 95-3598
Application 08/125,671
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led to the conclusion that the examiner here has failed to pro-
vide acceptable reasoning which establishes non-enablement.
For the above reasons, we will not sustain the
examiner's rejection of claims 1, 4 and 7 through 25 under 35
U.S.C. § 112, first paragraph, as being directed to a non-
enabling disclosure.
With regard to the second of the examiner's grounds of
rejection under 35 U.S.C. § 112, first paragraph (i.e., that the
specification, as originally filed, fails to provide support for
the invention as now claimed in independent claims 1 and 11), we
note that as stated in In re Bowen, 492 F.2d 859, 864, 181 USPQ
48, 52 (CCPA 1974), the description requirement of 35 U.S.C.
§ 112, first paragraph, "is that the invention claimed be
described in the specification as filed." It is not necessary
that the claimed subject matter be described identically, but the
disclosure originally filed must convey to those skilled in the
Appeal No. 95-3598
Application 08/125,671
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art that the applicant had invented the subject matter later
claimed. See In re Wilder, 736 F.2d 1516, 1520, 222 USPQ 369,
372 (Fed. Cir. 1984) cert. denied, 469 U.S. 1209 (1985).
In this instance, we are in agreement with the exami-
ner that the disclosure as originally filed would not convey to
those skilled in the art that appellants had invented the sub-
ject matter now claimed. Independent claim 1 sets forth a
cauterization means including a laser-transmitting optical fiber
that is at least partially connected to the laparoscopic
instrument at the distal end portion and, as added in the
amendment filed August 1, 1994 (Paper No. 3), further indicates
that the laser-transmitting optical fiber is connected to the
instrument "independently of motions of said fingers in response
to said actuator means." A similar limitation is set forth in
independent claim 11 regarding a fluid transfer means being at
least partially connected to the laparoscopic instrument at the
distal end portion "independently of motions of said fingers in
response to said actuator means."
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Application 08/125,671
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In the specification and in Figure 3 of the application
drawings, it is clearly indicated that the laser-transmitting
optical fiber (66) and the fluid transfer tube (71) are each
attached to one of the manipulating fingers (75 and 74,
respectively) and extend to a tip thereof. Given this
disclosure, we see no way that these elements can be said to be
connected to the distal end portion of the laparoscopic
instrument "independently of motions of said fingers in response
to said actuator means." On the contrary, the connection of these
elements to the distal end of the instrument in the manner
disclosed clearly will require that those elements move with the
fingers to which they are attached in response to movement of the
fingers by the actuator means.
Appellants' assertion in the brief and reply brief that
these limitations are intended to distinguish prior art according
to which an instrument (such as a laser-transmitting optical
fiber or a fluid transfer tube) may be grasped by the fingers of
a robotic hand, has been considered. However, we are not
convinced by appellants' argument that the language used in these
Appeal No. 95-3598
Application 08/125,671
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claims merely conveys that the attached instruments remain
attached to the laparoscopic robotic hand irrespective of
motions of the fingers. From our perspective, the clear import
of the claim language in claims 1 and 11 on appeal is that the
cauterization means and the fluid transfer means are connected to
the distal end portion of the instrument "independently of
motions of said fingers in response to said actuator means,"
i.e., that the fingers may be moved by the actuator means without
the cauterization means and the fluid transfer means being moved
at the same time. This is clearly not what the originally filed
disclosure of appellants' application would have conveyed to one
of ordinary skill in the art.
In accordance with the foregoing, we will sustain the
examiner's rejection of independent claims 1 and 11, and of the
claims which depend therefrom (i.e., claims 4, 7 through 10 and
12 through 17) under 35 U.S.C. § 112, first paragraph, based on
the lack of a written description supporting the invention as
now claimed.
Appeal No. 95-3598
Application 08/125,671
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We next look to the examiner's prior art rejection
of appealed claims 1, 11 through 13 and 18 through 20 under
35 U.S.C. § 103 as being unpatentable over the Fisher
publication. In this regard, the examiner has taken the position
that given the general knowledge and recognition of the sizing of
tools and instrumentation for laparoscopic procedures, one of
ordinary skill in the art would "recognize the potential of the
robotic tools and instrumentation of the Fisher teaching for
laparoscopic use, particularly in a conceptual sense . . ."
(answer, page 9) thereby rendering appellants' claimed invention
obvious. We do not agree.
The law followed by our court of review, and thus by
this Board, is that "[a] prima facie case of obviousness is
established when the teachings from the prior art itself would
appear to have suggested the claimed subject matter to a person
of ordinary skill in the art." In re Rinehart, 531 F.2d 1048,
1051, 189 USPQ 143, 147 (CCPA 1976). See also In re Lalu,
747 F.2d 703, 705, 223 USPQ 1257, 1258 (Fed. Cir. 1984) ("In
determining whether a case of prima facie obviousness exists, it
Appeal No. 95-3598
Application 08/125,671
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is necessary to ascertain whether the prior art teachings would
appear to be sufficient to one of ordinary skill in the art to
suggest making the claimed substitution or other modification.")
Absent reliance on appellants' own disclosure, our
review of the Fisher publication applied by the examiner reveals
no teaching, suggestion, or incentive which would have led one of
ordinary skill in the art to modify the robotic surgical device
seen on page 6 of the Fisher publication, or only the arms and
hands of such a robotic device, so as to provide a laparoscopic
instrument having a distal end insertable through a laparoscopic
trocar sleeve into an abdominal cavity of a patient, as is
required in appellants' independent claims 1 and 11 on appeal.
With regard to appellants' method claim 18, we find nothing in
the Fisher publication that relates in any way whatsoever to a
laparoscopic surgical method comprising, inter alia, the steps of
providing a laparoscopic instrument having a distal end portion
including a plurality of at least partially opposable articulated
manipulating fingers, and inserting said distal end portion
through a laparoscopic trocar sleeve into an abdominal cavity of
Appeal No. 95-3598
Application 08/125,671
15
a patient. For these reasons alone, we would refuse to sustain
the examiner's rejection of claims 1, 11 through 13 and 18
through 20 under 35 U.S.C. § 103 based on the Fisher publication,
since we consider that the examiner has engaged in the
impermissible use of hindsight in concluding that appellants'
claimed invention would have been obvious from the disclosure of
the Fisher publication.
Moreover, we must also agree with appellants that none
of the references relied upon by the examiner, whether viewed
individually or collectively, would have suggested using a
robotic instrument like that of the claims on appeal in
laparoscopic surgery, or disclose or suggest a laser-transmitting
optical fiber for cauterizing organic tissue (claim 1), or a
fluid transfer means for conveying fluid between a patient's
abdominal cavity and an environment external to the patient
(claim 11), connected to the distal end of such an instrument in
the manner set forth in claims 1 and 11 on appeal. Thus, even
when the teachings of Zarudiansky and Vise are taken into
consideration in the rejection of claims 4, 7 through 10, 14
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Application 08/125,671
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through 17 and 21 through 25 under 35 U.S.C. § 103, these
references do not supply the deficiencies noted above with regard
to the Fisher publication.
Accordingly, we conclude that the examiner has failed
to make out even a prima facie case of obviousness with regard to
the subject matter of claims 1, 4 and 7 through 25 on appeal.
To summarize our decision, we note that the examiner's
rejection of appealed claims 1, 4 and 7 through 25 under 35
U.S.C. § 112, first paragraph, based on lack of an enabling
disclosure has been reversed, but that the rejection of claims 1,
4, 7 through 10 and 11 through 17 under 35 U.S.C. § 112, first
paragraph, based on the lack of a written description supporting
the invention as now claimed has been sustained. The examiner's
rejections of the appealed claims under 35 U.S.C. § 103 have not
been sustained.
It follows from the foregoing that the decision of the
examiner is affirmed-in-part.
Appeal No. 95-3598
Application 08/125,671
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No time period for taking any subsequent action in con-
nection with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
Appeal No. 95-3598
Application 08/125,671
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Coleman & Sudol
261 Madison Avenue
New York, NY 10016
Appeal No. 95-3598
Application 08/125,671
- A1 -
APPENDED CLAIMS
1. A laparoscopic surgical apparatus comprising:
a laparoscopic instrument having a distal end portion
insertable through a laparoscopic trocar sleeve into an abdominal
cavity of a patient, said distal end portion including a
plurality of at least partially opposable articulated
manipulating fingers;
a glove having a plurality of hollow finger parts;
position sensing means operatively connected to said
glove for detecting positions and configurations of said hollow
finger parts upon insertion of a surgeon’s hand into said glove
and upon movement of said finger parts by said surgeon during a
laparoscopic procedure;
actuator means operatively connected to said sensing
means and to said instrument for moving said manipulating fingers
to essentially duplicate positions and configurations of said
finger parts in response to signals from said sensing means; and
cauterization means including a laser-transmitting
optical fiber for cauterizing organic tissues of the patient,
said optical fiber being at least partially connected to said
instrument at said distal end portion independently of motions
of said fingers in response to said actuator means.
18. A laparoscopic surgical method comprising the
steps of:
providing a laparoscopic instrument having a distal end
portion including a plurality of at least partially opposable
articulated manipulating fingers;
inserting said distal end portion through a
laparoscopic trocar sleeve into an abdominal cavity of a patient;
automatically detecting positions and configurations of
a surgeon’s fingers upon movement of said surgeon’s fingers
outside of the patient during a laparoscopic procedure; and
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automatically moving said manipulating fingers to
essentially duplicate positions and configurations of the
surgeon’s fingers in response to signals from said sensing means.