Ex Parte Prisco

Patent Trial and Appeal Board

Jan 27, 2016

12343274 (P.T.A.B. Jan. 27, 2016)

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.
12/343,274 12/23/2008 Giuseppe M. Prisco ISRG01980/US 4162
51947 7590 01/27/2016
PATENT DEPT - INTUITIVE SURGICAL OPERATIONS
1020 KIFER RD
SUNNYVALE, CA 94086
EXAMINER
KASZTEJNA, MATTHEW JOHN
ART UNIT PAPER NUMBER
3779
MAIL DATE DELIVERY MODE
01/27/2016 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 GIUSEPPE M. PRISCO
________________

Appeal 2013-007675
Application 12/343,274
Technology Center 3700
________________

Before JAMES P. CALVE, BRANDON J. WARNER, and
LEE L. STEPINA, Administrative Patent Judges.

STEPINA, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Giuseppe M. Prisco (Appellant) seeks our review under 35 U.S.C.
§ 134 from the Examiner’s decision rejecting claims 1–8, 10–14, and 21–25.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

THE CLAIMED SUBJECT MATTER
The claimed invention is directed to a flexible surgical instrument.
Spec. 1 (Title). Claim 1 is illustrative of the claims on appeal and is
reproduced below.

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1. A surgical system comprising:
a main tube;
a tip section at a distal end of the main tube, the tip
section including a joint and a link extending from the joint,
wherein the link comprises a material that transforms from a
first state to a second state upon heating to a first temperature
and transforms from the second state to the first state upon
cooling from the first temperature to a second temperature;
a tendon extending through the main tube and coupled to
the link, wherein pulling on the tendon causes actuation of the
link about the joint; and
a temperature control system for changing a temperature
of the link to transform the link between the first state in which
the link is able to bend as needed for insertion of the system for
a medical procedure and the second state in which the link
mechanically supports the actuation.
Appeal Br. 7.

REFERENCES RELIED ON BY THE EXAMINER

Sekiguchi US 5,482,029 Jan. 9, 1996
Maahs US 2006/0189845 A1 Aug. 24, 2006

THE REJECTION ON APPEAL
Claims 1–8, 10–14, and 21–25 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Maahs and Sekiguchi.

ANALYSIS
The Examiner finds that Maahs teaches many of the features recited in
claim 1, but does not disclose that its link comprises material “that
transforms from a first state to a second state upon heating to a first
temperature and transforms from the second state to the first state upon
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cooling from the first temperature to a second temperature and a temperature
control system for changing a temperature of the link.” Final Act. 2–3
(quoting claim 1). The Examiner relies on Sekiguchi to teach a shape
memory alloy wire 12 embedded within an outer cover of a shaft of a
medical device. Final Act. 3. The Examiner finds that the shape memory
alloy wire of Sekiguchi hardens when heated and softens when allowed to
cool. Final Act. 3. The Examiner reasons that it would have been obvious
“to provide a shape memory wire within the shaft of Maahs [] to enable a
user to control the flexibility of the steering platform 82,”1 because “by
controlling the overall flexibility of the link, the user has the ability to stiffen
the link to create a more stable platform to perform a surgical procedure
from as the added stiffness helps to retain, hold or wedge the shaft in a
selected body cavity while instruments are passed therethrough as taught by
Sekiguchi [].” Final Act. 3–4.
Appellant asserts “Sekiguchi uses shape memory alloy for its ability
to release, not for its ability to become rigid enough for actuation about a
joint, and Sekiguchi discloses making the material in the joints more flexible
for actuation of the joint.” Appeal Br. 4. In this regard, Appellant states,
“[i]n contrast, actuation of the link of claim 1 occurs when the link is in ‘the
second state in which the link mechanically supports the actuation.’”
Appeal Br. 4. Appellant contends, “[c]laim 1 is patentable over Maahs in
view of Sekiguchi because neither Maahs nor Sekiguchi suggests tendon
actuation of a link when the link is in ‘the second state in which the link
mechanically supports the actuation.’” Appeal Br. 4; see also Reply Br.

1 Maahs refers to the component identified by reference number 82 as a
“lumen.” See Maahs, para. 92.
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3–5. Rather, Appellant contends, Sekiguchi “describes that selected sections
of the normally flexible portion can be hardened for better utilization of
insertion force.” Reply Br. 4 (emphasis added).
In response, the Examiner states that in Sekiguchi, “any portion or
segment along the entire length of the endoscope can be ‘hardened’ or
remain in a ‘flexible’ state as desired by the user.” Ans. 7 (citing Sekiguchi,
col. 7, ll. 1–45). The Examiner further finds, “any segment or portion of an
endoscope may be provided with a shape memory material within the outer
cover thereof, to enable a user to control the overall flexibility of each
individual segment, S1, S2, S3, etc.” Ans. 7. The Examiner explains,
“Maahs [] clearly teach[es] actuation of link 82 about joint 21/96.
Sekiguchi [] teach[es] . . . segments or ‘links’ which may be made flexible or
rigid as desired. Any segment S1, S2, S3 etc. of Sekiguchi [] may be
hardened and the endoscope shaft would still be fully capable of
‘supporting’ actuation.” Ans. 8–9. As the Examiner finds, “in the ‘second
state,’ when link 82 is stiffened/rigid, the user still has the ability to actuate
the link about linkages 21 by pulling/pushing members 24a-b.” Final Act. 4.
We agree with the Examiner on this issue. Sekiguchi provides for
“controlling current passed through the shape memory alloy wire 12
provided for each of the segments S1, S2, . . . [] S10.” Sekiguchi, col. 6, ll.
61–63 (boldface omitted; ellipsis in original). Sekiguchi states, “[w]hen
heated by the current flowing therethrough, the shape memory alloy wire 12
is hardened and therefore the shape thereof is stored or held in the high
temperature phase (austenite phase) state.” Sekiguchi, col. 7, ll. 7–10. Thus,
Sekiguchi controls the hardness of segments via control of the current.
Further, Sekiguchi selectively hardens and softens the shape memory wires
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12 as needed during insertion. See Sekiguchi, col. 7, ll. 22–32. Regarding
Appellant’s contention that Sekiguchi hardens its device for insertion (rather
than for actuation), this contention does not address the Examiner’s rationale
for modifying Maahs and the Examiner’s finding that the device resulting
from the proposed combination would be capable of stiffening “to create a
more stable platform to perform a surgical procedure, as the added stiffness
helps to retain, hold or wedge the shaft in a selected body cavity while
instruments are passed therethrough as also taught by [Sekiguchi].” Ans. 8.
In other words, the fact that Sekiguchi teaches stiffening and softening
segments of its device as is appropriate for the situation, but does not
specifically teach stiffening in order to “actuate” a link, does not render the
Examiner’s rationale inadequate. Rather, “[i]n determining whether the
subject matter of a patent claim is obvious, neither the particular motivation
nor the avowed purpose of the patentee controls.” KSR Int’l. Co. v. Teleflex
Inc., 550 U.S. 398, 419 (2007). Further, Appellant does not show that the
Examiner’s finding that the ability to control stiffness would help “to retain,
hold or wedge the shaft in a selected body cavity” is incorrect. Accordingly,
we are not persuaded by Appellant’s argument on this point.
Appellant also contends, “if the combination the Examiner suggests
were employed, platform 80 could be actuated and perform its function
regardless of whether all, some, or none of the sections of attached
endoscope were hardened.” Reply Br. 5. In this regard, Appellant asserts,
“Maahs in view of Sekiguchi does not suggest hardening to support
actuation. The only teaching of hardening of shape memory alloy wire 12 is
to improve an insertion process, not support actuation.” Reply Br. 5.
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Appellant’s arguments are unpersuasive at least because the Examiner
relies on link 82 to teach the recited link, not (tip section) platform 80. Final
Act. 2, Ans. 9. Moreover, it is the modified link 82 that supports actuation in
the Examiner’s proposed combination, i.e., the Examiner states:
if link 82 is provided with a shape memory wire embedded
therein, then the link would be able to easily transform from a
“first state” (i.e.[,] flexible) wherein the link is able to “bend as
needed”, to a “second state” (i.e.[,] hardened) in which the link
mechanically supports actuation about joint 21/96. As stated
above, it would be beneficial to provide the shape memory wire
within link 82 to enable a second state, where the link is
hardened, which creates a stable platform through which
surgical instruments can be readily passed to/from a target site
within the body.
Ans. 9. Thus, the Examiner finds that link 82, modified as proposed,
transforms from a first state in which it bends as needed to a second state
that supports actuation. Appellant does not direct our attention to any
definition in the Specification or elsewhere of the term “support[ing]
actuation” that would exclude the function of link 82 described by the
Examiner. Accordingly, we are not persuaded by Appellant’s argument.
Appellant further contends, “Maahs in view of Sekiguchi fails to
suggest that the endoscope of Sekiguchi would be applicable to mounting on
a platform 80 in place of visualization lumen 82 of Maahs.” Reply Br. 4.
We are not persuaded by Appellant’s argument on this point because
the Examiner’s rejection of claims 1 and 11 does not rely on the bodily
incorporation of the endoscope of Sekiguchi with platform 80 of Maahs. In
other words, Appellant’s argument does not address the Examiner’s
rejection, i.e, that “[i]t would have been obvious to one skilled in the art at
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the time the invention was made to provide a shape memory wire within the
shaft of Maahs [].” See Final Act. 3.
Appellant further argues:
if lumen 82 of Maahs is the “link” that the Examiner suggests
replacing with the endoscope structure of Sekiguchi, the
combination of Maahs in view of Sekiguchi fails to suggest
both a tendon is “coupled to the link” and “pulling on the
tendon causes actuation of the link about the joint” as required
in claim 1. Maahs hinges platform 80 to move platform 80 and
avoid obstructing the main lumen 74, not for actuation or
rotation of visualization lumen 82.
Reply Br. 5 (citation omitted).
We are not persuaded by Appellant’s argument on this point. First,
the Examiner’s rejection does not replace the lumen (link) 82 of Maahs with
the endoscope of Sekiguchi. See Final Act. 2–4. Further, Appellant does
not explain persuasively how the tendons disclosed in Maahs are not coupled
to link 82.
We have considered all of Appellant’s arguments for the patentability
of claim 1, but we are not apprised of Examiner error. Accordingly, we
sustain the Examiner’s rejection of claim 1. Appellant’s argument that claim
11 is patentable over Maahs and Sekiguchi for the same reasons as claim 1
(see App. Br. 5–6) is not persuasive for the reasons discussed above for
claim 1.
Appellant does not make separate arguments for any of dependent
claims 2–8, 10, 12–14, and 21–25. Id. at 5, 6. Accordingly, these claims fall
with independent claims 1 and 11.

DECISION
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We affirm the Examiner’s decision to reject claims 1–8, 10–14, and
21–25.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

rvb