Ex Parte SchenaDownload PDFPatent Trial and Appeal BoardMay 26, 201712766794 (P.T.A.B. May. 26, 2017) 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. 12/766,794 04/23/2010 Bruce M. Schena ISRG00171/US 2285 51947 7590 05/31/2017 Patent Dept. - Intuitive Surgical Operations, Inc. 1020 Kifer Road Sunnyvale, CA 94086 EXAMINER YABUT, DANIEL D ART UNIT PAPER NUMBER 3656 NOTIFICATION DATE DELIVERY MODE 05/31/2017 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): dana.mbenstein@intusurg.com patent.group@intusurg.com natalie.hood @ intusurg.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRUCE M. SCHENA Appeal 2016-001958 Application 12/766,7941 Technology Center 3600 Before JEAN R. HOMERE, DEBRA K. STEPHENS, and MICHAEL J. ENGLE, Administrative Patent Judges. ENGLE, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1, 2, 4, and 7—13, which are all of the claims pending in the application. App. Br. 20-25 (Claims App’x). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Technology According to Appellant, “[t]he present invention is a device for maintaining tension in a cable that is arranged in a loop for transferring mechanical forces.” App. Br. 3; Spec. Abstract. 1 According to Appellant, the real party in interest is Intuitive Surgical Operations, Inc. App. Br. 3. Appeal 2016-001958 Application 12/766,794 Illustrative Claim Claim 7 is illustrative and reproduced below with the limitations at issue emphasized: 7. A tension tender device comprising: a drive shaft; a first plate fixedly coupled to the drive shaft and including a first drive stop; a first pulley rotatably coupled to the drive shaft, the first pulley including a first recess that receives the first plate; a second plate fixedly coupled to the drive shaft and including a second drive stop; a second pulley rotatably coupled to the drive shaft, the second pulley including a second recess that receives the second plate; a first cable coupled to the first pulley, the first cable rotating the first pulley in a first direction when the first cable is in tension and thereby causing the first recess in the first pulley to engage the first drive stop; a second cable coupled to the second pulley, the second cable rotating the second pulley in a second direction opposite the first direction when the second cable is in tension and thereby causing the second recess in the second pulley to engage the second drive stop independently of the first recess in the first pulley engaging the first drive stop; and a resilient coupler coupled to the first and second pulleys, the resilient coupler urging the first pulley to rotate in the second direction whenever the first cable is not in tension and urging the second pulley to rotate in the first direction whenever the second cable is not in tension. Rejections Claims 7—13 stand rejected under 35 U.S.C. § 112, second paragraph as indefinite. Final Act. 6—8. 2 Appeal 2016-001958 Application 12/766,794 Claims 1, 2, 4, and 7—13 stand rejected under 35 U.S.C. § 102(b) as anticipated by Wright (US 3,266,335; Aug. 16, 1966). Final Act. 9-14.2 ISSUES 1. Did the Examiner err in concluding “causing the second recess in the second pulley to engage the second drive stop independently of the first recess in the first pulley engaging the first drive stop” renders claim 7 indefinite? 2. Did the Examiner err in concluding “means for rotating the drive shaft in the second direction . . . and for rotating the drive shaft in the first direction” renders claim 12 indefinite? 3. Did the Examiner err in finding Wright teaches or suggests “the resilient coupler to urge the first pulley to rotate in a second direction opposite the first direction whenever the first cable is not in tension,” as recited in claim 1 ? ANALYSIS Indefiniteness (§ 112): Claims 7—11 and 13 Independent claim 7 recites a second cable “causing the second recess in the second pulley to engage the second drive stop independently of the first recess in the first pulley engaging the first drive stop” (emphasis added). Independent claim 11 recites a commensurate limitation. We agree with the Examiner that in Appellant’s Specification, “when the drive shaft 1602 is driven, both of the drive stops 1636 rotate in unison.” 2 A terminal disclaimer was filed with respect to U.S. Patent No. 7,736,254 on December 4, 2014, thereby mooting a double patenting rejection. See Final Act. 2—5. 3 Appeal 2016-001958 Application 12/766,794 Ans. 3. We disagree with the Examiner, however, that it is “[ijmplicit” that “both of the first and second drive stops 1636 each engage their respective pulley recesses when cable 1608 is tensioned.” Id. at 4 (citing Spec. 1 62). Instead, we agree with Appellant that at least in some instances, the second cable 1609 can “rotate the second pulley [1610] counter-clockwise ... to engage the second drive stop [1636 on 1606] even if the first pulley 1620 is engaging the first drive stop [1636 on 1604].” Reply Br. 3-A\ App. Br. 7—9. For example, paragraph 62 of the Specification describes an instance in which the first stop 1622 on the first pulley 1620 engages the drive stop 1636 on the first plate 1604 (i.e., because the first cable 1608 is pulled), but if the second cable 1609 also goes slack, “the stop 1622 on the second pulley [is] separate from the drive stop 1636” on the second plate 1606. Our reviewing court has held that prior to issuance, the test for indefmiteness under 35 U.S.C. § 112, second paragraph is a “lack of clarity (in its several forms) based on the perspective of one of ordinary skill in the art in view of the entire written description and developing prosecution history.” In re Packard, 751 F.3d 1307, 1312 (Fed. Cir. 2014). Because one of ordinary skill in the art having read Appellant’s Specification would have been apprised of the meaning of the disputed limitation, we reverse the indefmiteness rejection of independent claims 7 and 11, and their dependent claims 8—10 and 13. Indefmiteness (§ 112): Claim 12 Dependent claim 12 further recites a “means for rotating the drive shaft in the second direction . . . and for rotating the drive shaft in the first direction.” 4 Appeal 2016-001958 Application 12/766,794 The Examiner correctly concludes this is a means-plus-function limitation invoking 35 U.S.C. § 112, sixth paragraph. Final Act. 7—8. We disagree with Examiner, however, regarding whether there is sufficient corresponding structure described in the Specification. Specifically, the Specification discloses “the drive shaft 1602 is rotated counter-clockwise, such as by a motor.'1'’ Spec. 1 63 (emphasis added). A motor is a structure well-known to be capable of rotating a drive shaft. Although the Examiner describes “such as” as “an optional recitation” that can be “omitted” (Ans. 4), we agree with Appellant that the portion of the MPEP cited by the Examiner relates to “the phrase ‘such as’ ... in a claim,” not in a specification. MPEP § 2173.05(d) (emphasis added); Reply Br. 5. In the context of a means-plus-function limitation, if one skilled in the art would be able to identity the structure, material, or acts for performing the claimed function, then the requirements of 35 U.S.C. § 112, second paragraph are satisfied. See Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1381 (Fed. Cir. 1999); see also In re Dossel, 115 F.3d 942, 946— 47 (Fed. Cir. 1997). Here, we determine Appellant’s disclosure that the drive shaft is rotated such as by a motor, although reciting an example of only one structure (i.e., a motor), does describe a structure for performing the claimed function. Therefore, because Appellant identifies a motor as performing the claimed function, we determine the recited “means for rotating the drive shaft” limitations is a motor that performs the rotating functions. With respect to the Examiner’s discussion of “separate recitations” of two means (Ans. 4—5), we agree with Appellant that “claim 12 recites a single means that performs two functions.” Reply Br. 5. 5 Appeal 2016-001958 Application 12/766,794 Accordingly, we reverse the indefiniteness rejection of claim 12. Anticipation (§ 102): Claims 1, 2, 4, and 7—13 Claim 1 recites “the resilient coupler to urge the first pulley to rotate in a second direction opposite the first direction whenever the first cable is not in tension” (emphasis added). Independent claims 7 and 11 recite commensurate limitations for both the first and second pulleys. Appellant argues “Wright, Jr. does not disclose that the resilient coupler urges the first pulley to rotate whenever the attached cable is not in tension” because the brake shoes 13 “prevent[] tension regulation by the regulator compression springs (25, 25’).” App. Br. 16—17 (citing Wright 3:8-21). The Examiner concludes “the features upon which applicant relies (i.e. aspects of tension regulation) are not recited in the rejected claims” and that “resilient coupler 25 is always loaded against the first pulley in the second direction.” Ans. 6—7 (citing Wright 2:61—70). The portion of Wright cited by the Examiner, however, only applies “when a control load is not being applied to the system” (i.e., when no cable is pulled). Wright 2:61—70. A different outcome occurs when one cable is pulled but the other is not: As soon as a control movement is applied to the cables, for example should cable 21 be pulled toward the left . . ., this cable will carry more tension than cable 21', with the result that stress in link 17 will exceed that in link 17', resulting in the slight canting or rocking of the cross-head 12 counter-clockwise as viewed in FIG. 1, thereby locking brake shoes 13 upon regulator body arm 9 and preventing any further tension regulation by springs 25 and 25' while locking the system so that the annular ring sheaves 20 and 20' will turn together as a unit. . . 6 Appeal 2016-001958 Application 12/766,794 Wright 3:8—23 (emphasis added). Thus, in Wright, the resilient coupler (i.e., springs 25 and 25’) does not urge the pulley if one cable in tension but the other is not. This fails to meet the limitation of urging rotation “whenever the first cable is not in tension,” as recited in claim 1 and commensurately recited in independent claims 7 and 11. Accordingly, we reverse the Examiner’s anticipation rejection of independent claims 1, 7, and 11, and their dependent claims 2, 4, 8—10, 12, and 13. Because we agree with at least one anticipation argument advanced by Appellant, we need not reach the merits of Appellant’s other arguments. DECISION For the reasons above, we reverse the Examiner’s decision rejecting claims 7—13 as indefinite and claims 1, 2, 4, and 7—13 as anticipated. REVERSED 7 Copy with citationCopy as parenthetical citation