Ex Parte Scott

Patent Trial and Appeal Board

Dec 5, 2012

11238794 (P.T.A.B. Dec. 5, 2012)

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.
11/238,794 09/28/2005 Manzo Scott 017516-009320US 9122
51947 7590 12/05/2012
PATENT DEPT - INTUITIVE SURGICAL OPERATIONS
1266 KIFER RD BLDG 101
SUNNYVALE, CA 94086
EXAMINER
GOOD, SAMANTHA M
ART UNIT PAPER NUMBER
3739
MAIL DATE DELIVERY MODE
12/05/2012 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 MANZO SCOTT
__________

Appeal 2011-003997
Application 11/238,794
Technology Center 3700
__________

Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for anticipation and obviousness. We have jurisdiction under 35
U.S.C. § 6(b).
STATEMENT OF CASE
12. A robotic surgical tool comprising:
a pair of end effectors rotatingly coupled together at a pivot point, a
first end effector of the pair of end effectors being a moveable end effector
to pivot about the pivot point open and closed with respect to a second end
effector of the pair of end effectors;
a cam mechanism coupled to an end of at least the first end effector to
pivot the first end effector about the pivot point, the cam mechanism to
translate a linear motion into the pivotal motion of the first end effector;
Appeal 2011-003997
Application 11/238,794

2
an actuation mechanism to couple to the cam mechanism to control
the pivotal motion of the first end effector about the pivot point;
a shaft having a distal end to extend the pair of end effectors into a
surgical site;
an interface base coupled to a proximal end of the shaft, the interface
base to couple to a robotic slave, the interface base including a first spool to
control at least the first end effector; and
a first cable routed in the shaft between the actuation mechanism and
the interface base, the first cable coupled to the actuation mechanism and the
first spool to control the pivotal motion of at least the first end effector.

Cited References

Cooper US 6,132,368 Oct. 17, 2000
Ramans US 6,206,903 B1 Mar. 27, 2001
Wallace et al. US 6,394,998 B1 May 28, 2002
Lee et al. US 6,554,844 B2 Apr. 29, 2003
Bass et al. US 6,616,604 B1 Sep. 9, 2003

Grounds of Rejection
Claims 12, 13, 16, 17, and 32 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Wallace.
Claim 14 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Wallace.
Claim 15 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Wallace in view of Lee.
Claims 33 and 34 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wallace in view of Bass.
Claims 18 and 25 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ramans in view of Cooper.

Appeal 2011-003997
Application 11/238,794

3
Claims 19, 20 and 22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ramans in view of Cooper further in view of Wallace.

FINDINGS OF FACT
The Examiner‟s findings of fact are set forth in the Answer at pages 4-
10. The following facts are highlighted.
1. Figure 5 of Wallace is reproduced below.

Figure 5 of Wallace shows a surgical tool with end effectors (11, 13); pivot
point (60); and actuation mechanism 68.
2. Figures 6B and 6C of the Specification‟s robotic tool with
electrosurgical scissors are reproduced below.
Appeal 2011-003997
Application 11/238,794

4

Figure 6B and C shows end effectors 501 and 502; actuating pin 509; cam
slots 609; wrist 402.

Discussion
Anticipation
Claims 12, 13, 16, 17, and 32 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Wallace.
ISSUE
The Examiner concludes that Wallace teaches each element claimed.
In particular,
Wallace teaches a robotic surgical tool comprising: a pair of
end effectors (11, 13, Figs. 5-8) rotatingly coupled together at a
pivot point (60), a first end effector (11) of the pair of end
effectors being a moveable end effector to pivot about the pivot
point open and closed with respect to a second end effector of
the pair of end effectors; a cam mechanism (58.5, Fig. 8)
coupled to an end of at least the first end effector to pivot the
first end effector about the pivot point, the cam mechanism to
translate a linear motion (of cable C2, Fig. 7) into the pivotal
motion of the first end effector (Fig. 6); an actuation
mechanism (68) to couple to the cam mechanism to control the
Appeal 2011-003997
Application 11/238,794

5
pivotal motion of the first end effector about the pivot point; a
shaft (14.1, Fig.3) having a distal end to extend the pair of end
effectors into a surgical site; an interface base (150) coupled to
a proximal end of the shaft, the interface base to couple to a
robotic slave, the interface base including a first spool (136,
Fig. 22) to control at least the first end effector; and a first cable
(C2) routed in the shaft between the actuation mechanism and
the interface base, the first cable coupled to the actuation
mechanism and the first spool to control the pivotal motion of
at least the first end effector (col. 12, lines 48-55).

(Ans. 4.)
Appellant argues that the Examiner cites Wallace, a reference with an
effective date of May 28, 2002. Appellant's application Serial No.
10/126,451 has an effective filing date of April 19, 2002, thus Wallace is an
invalid reference. (App. Br. 9.) Appellant submits that claims 12-17 and
32- 34 are not anticipated by Wallace under 35 U.S.C. § 102(b), because
Wallace is an invalid reference. (Id. at 12.)
Appellant particularly argues that
U.S. Application number 11/238,794, the application at issue, is
a CIP Application of U.S. Non-provisional Application no.
10/126,451, which claims priority to U.S. Provisional
Application no. 60/285,502.

60/285,502 10/126,451 11/238,794
Provisional Non-provisional CIP
Filed 04/19/2001 Filed 04/18/2002 Filed 09/28/2005
“Manzo lp” “Manzo 1n” “Manzo lc”

Manzolc claims priority to the filing date of Manzoln. Manzoln
claims priority to Manzolp. Both Manzoln and Manzolp
Appeal 2011-003997
Application 11/238,794

6
incorporate by reference the subject matter of U.S. Patent No.
6,394,998[
1
] issued to Daniel T. Wallace et al. (“Wallace”).
On page 2 of the Final Office Action (“FOA”) mailed
12/04/10, claims 12-17 and 19-24 were not given a priority date
of 04/19/2001 because the limitation “a first cable routed in the
shaft between the actuation mechanism and the interface base,
the first cable coupled to the actuation mechanism and the first
spool to control pivotal motion of at least the first end
effector”, was allegedly not supported in the parent application
(Manzoln).

(App. Br. 9.)

Thus, Appellant argues that, the subject matter of claims 12-17 and
19-24 in Manzo lc (this application) is entitled to claim priority date of May
18, 2002 of Manzo ln, “because of the latter's incorporation by reference of
Wallace. Wallace discloses a first cable routed in the shaft ... [See
Amendment, dated 9/4/2009, page 13]” (id., fn 12).
The issue is: Has there been a proper incorporation by reference to
Wallace „998 in parent application Serial No. 10/126,451 (filing date of
April 19, 2002) to provide a disclosure under §112 supporting the pending
claim scope, and removing Wallace „998 as prior art?

PRINCIPLES OF LAW
“[A] claim complies with 35 U.S.C. § 120 and acquires an earlier
filing date if, and only if, it could have been added to an earlier application
without introducing new matter.” Studiengesellschaft Kohle M.B.H. v. Shell
Oil Co., 112 F.3d 1561, 1564 (Fed. Cir. 1997).“35 U.S.C. § 120 requires an

1
U.S. Application No. 09/398,958 filed Sept. 17, 1999, was incorporated by
reference in Manzo 1n and Manzo 1p on page 1.
Appeal 2011-003997
Application 11/238,794

7
applicant to meet the disclosure requirements of § 112 ¶ 1 in a single parent
application in order to obtain an earlier filing date for individual claims.”
Studiengesellschaft Kohle, 112 F.3d at 1564.
For claims in a non-provisional application to obtain the benefit of the
filing date of a provisional parent application, “the specification of the
provisional must „contain a written description of the invention and the
manner and process of making and using it, in such full, clear, concise, and
exact terms,‟ 35 U.S.C. § 112 ¶ 1, to enable an ordinarily skilled artisan to
practice the invention claimed in the non-provisional application.” New
Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir.
2002).
Incorporation by reference provides a method for integrating
material from various documents into a host document—a
patent or printed publication in an anticipation determination—
by citing such material in a manner that makes clear that the
material is effectively part of the host document as if it were
explicitly contained therein. To incorporate material by
reference, the host document must identify with detailed
particularity what specific material it incorporates and clearly
indicate where that material is found in the various documents.

Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed.
Cir. 2000) (citations omitted).
To incorporate material by reference, the host document must
identify with detailed particularity what specific material it
incorporates and clearly indicate where that material is found in the
various documents. In re de Seversky, 474 F.2d 671, 674 (CCPA
1973) (providing that incorporation by reference requires a statement
Appeal 2011-003997
Application 11/238,794

8
“clearly identifying the subject matter which is incorporated and
where it is to be found”).
“(1) [T]he right to have benefit of the filing date of an earlier
application under § 120 for subject matter claimed in a later application
because that subject matter is disclosed in an earlier application to which “a
specific reference” is made—i.e., a reference to the earlier application per se,
and (2) the incorporation by reference in an application of matter elsewhere
written down (not necessarily in a patent application), for economy,
amplification, or clarity of exposition, by means of an incorporating
statement clearly identifying the subject matter which is incorporated and
where it is to be found,” are two different things. See de Seversky, 474 F.2d
at 674.
With respect to incorporation by reference, the standard is whether
one reasonably skilled in the art would understand the application as
describing with sufficient particularity the material to be incorporated.
Zenon Environmental, Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378-79
(Fed. Cir. 2007) (applying the Advanced Display standard and concluding
that the material incorporated by reference was not the detail at issue but a
separate and distinct element of the invention from that argued). Every
concept of the incorporated patent is not necessarily imported. See Modine
Mfg. Co. v. U.S. Int'l Trade Comm'n, 75 F.3d 1545, 1553 (Fed. Cir. 1996)
(“[I]ncorporation by reference does not convert the invention of the
incorporated patent into the invention of the host patent”), overruled on
other grounds by Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,
Ltd., 234 F.3d 558 (Fed. Cir. 2000).
Appeal 2011-003997
Application 11/238,794

9
In order for a prior art reference to serve as an anticipatory reference,
it must disclose every limitation of the claimed invention, either explicitly or
inherently. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). To
anticipate, every element and limitation of the claimed invention must be
found in a single prior art reference, arranged as in the claim. Karsten Mfg.
Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001).
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).

ANALYSIS
The Examiner argued in the Final Office Action and in the Answer
11, that
[S]ince the limitation of "a first cable routed in the shaft
between the actuation mechanism and the interface base, the
first cable coupled to the actuation mechanism and the first
spool to control the pivotal motion of at least the first end
Appeal 2011-003997
Application 11/238,794

10
effector" from claim 12 is not supported directly in application
10/126,451, it is not given the priority date. Therefore both
Wallace et al (6,394,998) and Ramans (6,206,903) are still
available as prior art references under 102 (b).

(Final Rej. 11.)

The Examiner further argues that

Even if the incorporation by reference were technically proper,
… this incorporation by reference is not specific enough to
establish that applicant had possession of the invention claimed
in the instant application including the limitation in question
when Manzo1n and U.S. Provisional Application 60/285,502
were filed. The incorporation by reference in Manzo1n is a non-
specific incorporation by reference in that it just makes a
blanket incorporation by reference of a plurality of disclosures
("the full disclosures of which are incorporated herein by
reference"). There is absolutely no evidence in the record that
would establish that applicant had possession of an invention
that included that specific element recited in Wallace and now
claimed in claim 12 of the instant application. A broad, non-
specific incorporation by reference is not sufficient to establish
that applicant had possession of an invention that claims an
element disclosed in one of those plurality of applications.

(Ans. 12.)

Appellant argues that

MPEP §608.01(p) I.B., specifically states that limitations on
incorporation by reference do not apply to establishing an
earlier effective filing date. MPEP §608.01(p) I.B states:

The limitations on the material which may be incorporated by
reference in U.S. patent applications which are to issue as U.S.
patents do not apply to applications relied on only to establish
an earlier effective filing date under 35 U.S.C. 119 or 35 U.S.C.
Appeal 2011-003997
Application 11/238,794

11
120. Neither 35 U.S.C. 119(a) nor 35 U.S.C. 120 places any
restrictions or limitations as to how the claimed invention must
be disclosed in the earlier application to comply with 35 U.S.C.
112, first paragraph. Accordingly, an application is entitled to
rely upon the filing date of an earlier application, even if the
earlier application itself incorporates essential material by
reference to another document. See Ex parte Maziere, 27
USPQ2d 1705, 1706-07 (Bd. Pat. App. & Inter.
1993).

(App. Br. 11.)

We find that Appellant‟s position is nonpersuasive, and the
Examiner‟s position is supported by a sound basis in the law.
“35 U.S.C. § 120 requires an applicant to meet the disclosure
requirements of § 112 ¶ 1 in a single parent application in order to obtain an
earlier filing date for individual claims.” Studiengesellschaft Kohle, 112
F.3d at 1564. Thus, in order to remove Wallace „998 (issued May 28, 2002)
as prior art under 35 U.S.C. § 102(b), and obtain the benefit of an earlier
filing date, Appellant must show disclosure in his parent application
(nonprovisional 10/126,451 filed April 18, 2002) which meets the disclosure
requirements of § 112 ¶ 1 for individual claims, including claim 12, in the
pending application.
Appellant argues that the claimed “a first cable routed in the shaft
between the actuation mechanism and the interface base, the first cable
coupled to the actuation mechanism and the first spool to control the pivotal
motion of at least the first end effector,” which the Examiner finds is not
supported for purposes of §112 by the parent „451 application, is supported
by the parent „451 application through its incorporation by reference on page
1 to, “U.S. Application No. 09/398,958, filed September 17, 1999 (Atty.
Appeal 2011-003997
Application 11/238,794

12
Docket 17516-4410), entitled "Surgical Tools For Use In Minimally
Invasive Telesurgical Applications.‟”
We agree with the Examiner that for the incorporation by reference to
Wallace „998 in the „451 application to serve as § 112 support for pending
claim 12, it must be a proper incorporation by reference. To incorporate
material by reference, the host document must identify with detailed
particularity what specific material it incorporates and clearly indicate where
that material is found in the various documents. See de Seversky, 474 F.2d
at 674 (providing that incorporation by reference requires a statement
“clearly identifying the subject matter which is incorporated and where it is
to be found”).
Appellant‟s purported incorporation by reference to Wallace „998 in
the „451 application does not identify with detailed particularity what
specific material it incorporates and clearly indicate where that material is
found in the various documents. Appellant‟s incorporation by reference
does not particularly indicate where support for the limitation “a first cable
routed in the shaft between the actuation mechanism and the interface base,
the first cable coupled to the actuation mechanism and the first spool to
control the pivotal motion of at least the first end effector” is found.
Appellant argues that a Board Decision, Ex parte Maziere, 27
USPQ2d 1705 (BPAI 1993) supports Appellant‟s priority position. (App.
Br. 11.)
We are not convinced by Appellant‟s citation to Maziere. We do not
dispute that an application is entitled to rely upon the filing date of an earlier
application, even if the earlier application itself incorporates essential
material by reference to another document. That being said, the host
Appeal 2011-003997
Application 11/238,794

13
document or parent application still must identify with detailed particularity
what specific material it incorporates and clearly indicate where that
material is found in the various documents to comply with 35 U.S.C. § 112,
first paragraph. That has not been done in the present case.
Appellant does not dispute that Wallace described the invention now
claimed. Therefore, the anticipation rejection is affirmed.

Obviousness Wallace
Claim 14 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Wallace.
Claim 15 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Wallace in view of Lee.
Claims 33 and 34 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wallace in view of Bass.

ISSUE
With respect to the obviousness rejection over Wallace, the Examiner
argues that “Wallace is a valid reference under 35 U.S.C 102 (b) for the
reasons stated above.” (Ans. 13.)
Appellant argues that
The subject matter of Wallace and the claimed present
invention were, at the time the invention was made, owned by
or subject to an obligation of assignment to Intuitive Surgical
Inc. The patent cover page of Wallace indicates an assignment
to Intuitive Surgical Inc that was recorded at Real/Frame Nos.
010451/0234. An assignment of this patent application from
inventor Scott Manzo to Intuitive Surgical Inc. was recorded at
Appeal 2011-003997
Application 11/238,794

14
Reel/Frame No. 017349/0667 in the U.S. Patent and Trademark
Office.
Therefore, Wallace is excluded by 35 USC 103(c),
making it an invalid 35 U.S.C 103(a) reference with respect to
independent claim 12. Claims 14, 15, 33 and 34 depend from
claim 12 with added limitations. Thus, Wallace is also an
invalid reference against dependent claims 14, 15, 33 and 34.

(App. Br. 13.)

The issue is: Does the § 103 (c) exception for commonly owned or
assigned inventions remove the § 103 (a) rejection?

PRINCIPLES OF LAW
35 U.S.C. § 103 Conditions for patentability; non-obvious subject matter.
…
(c)(1) Subject matter developed by another person, which
qualifies as prior art only under one or more of subsections (e),
(f), and (g) of section 102, shall not preclude patentability under
this section where the subject matter and the claimed invention
were, at the time the claimed invention was made, owned by the
same person or subject to an obligation of assignment to the
same person. [Emphasis added.]

ANALYSIS
As found above with respect to the anticipation rejection, Wallace
qualifies as § 102 (b) prior art. Because Wallace qualifies as § 102 (b) prior
art it is not prior art “only under one or more of subsections (e), (f), and (g)
of section 102,” and Wallace may be used to preclude patentability under §
103.
Appeal 2011-003997
Application 11/238,794

15
As Appellant does not argue the merits of Wallace with respect to the
obviousness rejections, the rejection of Claim 14 under 35 U.S.C. § 103(a)
as being unpatentable over Wallace; the rejection of Claim 15 under 35
U.S.C. § 103(a) as being unpatentable over Wallace in view of Lee; and the
rejection of Claims 33 and 34 under 35 U.S.C. § 103(a) as being
unpatentable over Wallace in view of Bass; these obviousness rejections are
affirmed.

Obviousness Ramans
Claims 18 and 25 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ramans in view of Cooper.
Claims 19, 20 and 22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ramans in view of Cooper further in view of Wallace.

ISSUE
The Examiner contends that
Regarding claim 18, Ramans teaches a robotic surgical
system including: a robotic surgical tool comprising an
interface base (53, Fig. 3), a shaft (14.1) having a first end
coupled to the interface base, a replaceable end effector
cartridge (Fig. 8) to selectively couple to a second end of the
shaft and to selectively decouple from the second end of the
shaft (the end effector cartridge is capable of coupling and
decoupling to receptacle 52), the replaceable end effector
cartridge including at least one moveable end effector
responsive to a control cable (CI) from the interface base. It is
noted that Ramans does not disclose an electrosurgical
instrument. However, Cooper teaches that it is well known in
the art of robotic surgery to deliver electrical energy through
replaceable end effectors (col. 8, line 61 - col. 9, line 5).
Appeal 2011-003997
Application 11/238,794

16
Cooper discloses an interface base (58) and shaft (56) in Fig. 7,
with a wire having a first end coupled to the base and a second
end to electrically couple to an end effector, the wire to couple
electrical current to tissue through the end effector (col. 9, lines
5-9). It would have been obvious to one of ordinary skill in the
art at the time of the invention to modify the system of Ramans
such that an electrically conductive end effector cartridge
applies electrosurgical energy to tissue, as disclosed in Cooper
(and to include a generator for supplying energy) in order to
cauterize tissue which has been cut with the scissors of Ramans.

(Ans. 8.)

The Examiner maintains that the effective filing date for claims 18-25
and 35-39 is 04/18/2002. The applicant never expressly claimed priority
back to Manzo1p in the instant application. (Id. at 13-14.)
Appellant argues that

As discussed in Section VII.B above, the Application at
issue (Manzo1c) has an effective filing date of 04/19/2001.
Ramans has an effective date of 03/27/2001 and is thus an
invalid 35 U.S.C §103(a) reference by way of §102(b). Ramans
is also owned by Intuitive Surgical, Inc. and thus is unavailable
as a 35 U.S.C § 103(a) reference by way of § 103(c) and §
102(e).
…
Even if Ramans is a valid reference neither Ramans nor Cooper,
singularly or III combination, teaches a “replaceable cartridge”.

(App. Br. 14.)

The issue is: Has Appellant perfected a priority claim to provisional
Application 60/285,502 filed April 19, 2001 (Manzo 1p) in the present
application and is Ramans a valid reference to the pending claims?

Appeal 2011-003997
Application 11/238,794

17
ANALYSIS
The Examiner maintains that the effective filing date for claims 18-25
and 35-39 is 04/18/2002, from Manzo1n. (Ans. 13-14.) We agree.
Although Appellant filed a request for corrected filing receipt in this
Application on May 27, 2010 which was granted in a corrected filing receipt
dated June 3, 2010, priority for the Application was filed as:
Domestic Priority data as claimed by applicant
This application is a CIP of 10/126,451 04/18/2002 PAT
6,994,708 and is a CIP of 10/611,411 06/30/2003 PAT
7,367,973 and claims benefit of 60/617,341 10/08/2004.

While there is a perfected claim of priority to a provisional application
60/617,341 10/08/2004, there is no perfected claim of priority to provisional
Application 60/285,502 filed April 19, 2001 (Manzo 1p) in the present
application. Thus we agree with the Examiner that the effective filing date
for claims 18-25 and 35-39 is 04/18/2002, from Manzo1n and that Ramans
qualifies as prior art under § 102(b) with an issue date of March 27, 2001.
Because Ramans qualifies as § 102(b) prior art it is not prior art “only
under one or more of subsections (e), (f), and (g) of section 102,” and
Ramans may be used to preclude patentability of the pending claims under §
103.
Appellant argues that Ramans and Cooper do not teach a
“‟replaceable cartridge.‟” (App. Br. 14.) The Examiner respectfully
disagrees, citing Ramans for the disclosure of a replaceable end effector
cartridge (Fig. 8) such that the end effector is capable of being replaced.
(Ans. 14.)
[T]he examiner is modifying the teaching of Ramans, with the
teaching of Cooper, that is well known in the art of robotic
Appeal 2011-003997
Application 11/238,794

18
surgery to deliver electrical energy through replaceable end
effectors (Col. 8, line 61 through Col. 9, line 5). Furthermore,
Cooper specifically teaches the structure of providing these
electrosurgical components, which would be obvious to include
in the robotic surgical system of Ramans, in order to cauterize
tissue which is being cut with the scissors of Ramans. The
examiner is not destroying the primary reference of Ramans by
including the electrosurgical components of Cooper therefore
the examiner maintains that it is a proper combination.

(Id. at 15.)
We find that the Examiner has provided evidence to support a prima
facie case of obviousness which remains unrebutted by Appellant. The
obviousness rejections over Ramans in view of Cooper and Wallace, are
affirmed.

CONCLUSION OF LAW
The cited references support the Examiner‟s anticipation and
obviousness rejections, which are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

cdc