Ex Parte Schena

Patent Trial and Appeal Board

May 26, 2017

12766794 (P.T.A.B. May. 26, 2017)

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.
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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.”
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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.
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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. . .
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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
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