Neff, Thomas

Patent Trials and Appeals Board

May 4, 2020

2019005024 (P.T.A.B. May. 4, 2020)

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.
13/170,690 06/28/2011 Thomas Neff FUBO-11 4289
146902 7590 05/04/2020
Dorton & Willis LLP
10260 Alliance Road
Suite 210
Cincinnati, OH 45242
EXAMINER
CWERN, JONATHAN
ART UNIT PAPER NUMBER
3793
NOTIFICATION DATE DELIVERY MODE
05/04/2020 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):
hliao@dortonwillis.com
uspto@dortonwillis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS NEFF

Appeal 2019-005024
Application 13/170,690
Technology Center 3700
Before MICHAEL L. HOELTER, JILL D. HILL, and ERIC C. JESCHKE,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 10–12, 14–19, and 21–25. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

11 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as KUKA Deutschland
GmbH. Appeal Br. 3.
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BACKGROUND
Independent claims 10 (method) and 21 (apparatus) are pending.
Claim 10, reproduced below, illustrates the claimed invention:
10. A method for operating a medical robot that includes a
robot arm comprising a plurality of links and drives configured
for moving the links, a control device for activating the drives,
and a sound generating device coupled to the robot arm and
configured to apply high-intensity focused ultrasound to a living
organism, the method comprising:
moving the robot arm so as to position the sound
generating device on a surface of the living organism;
moving the robot arm so that the sound generating device
moves along a specified path while simultaneously applying
high-intensity focused ultrasound to treat tissue with the high-
intensity focused ultrasound;
simultaneously with moving the robot arm along the
specified path, operating the drives of the robot arm utilizing
force control such that the sound generating device is pressed
against the living organism with a specified constant value force
while the sound generating device is moving along the specified
path;
creating at least one image while the high-intensity
focused ultrasound is being applied to the living organism;
evaluating the at least one image; and
based on the evaluating step, adjusting a focus of
ultrasound emanating from the sound generating device so that
the focus of the sound generating device falls on a tissue of the
living organism which is to be treated.
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Quistgaard US 2005/0154431 A1 July 14, 2005
Fraser US 2006/0293598 A1 Dec. 28, 2006
Sumanaweera US 2008/0021317 A1 Jan. 24, 2008

REJECTIONS
I. Claims 10–12, 14–19, and 21–25 stand rejected under 35
U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to
comply with the written description requirement. Final Act. 2.
II. Claims 10–12, 14–19, and 21–25 stand rejected under 35
U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as
indefinite. Final Act. 3.
III. Claim 21 stands rejected under 35 U.S.C. § 102(b) as
anticipated by Quistgaard. Final Act. 4.
IV. Claims 10–12 and 14–17 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Quistgaard and Fraser. Final Act. 6.
V. Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Quistgaard, Fraser, and Sumanaweera. Final Act. 8.
VI. Claims 22 and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Quistgaard and Sumanaweera. Final Act. 9.
VII. Claims 24 and 25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Quistgaard and Fraser. Final Act. 10.
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ANALYSIS
Rejection I: Written Description
Regarding claims 10, 11, 18, 19, and 21, the Examiner finds that
“specified constant value force” is not mentioned in Appellant’s
Specification and is new matter. Final Act 2; Ans. 3. Regarding claims 22
and 23, the Examiner finds that “specified constant force” is not mentioned
in Appellant’s Specification and is new matter. Id.
Appellant argues that the limitations “specified constant force” and
“specified constant force value” are supported by the Specification at
paragraphs 37, 50, and 51 (of the published application US 2012/0022552
(“the ’552 Publication”)). Appeal Br. 7. Paragraph 37 of the ’552
Publication states that “‘it is possible to move the sound generating device
. . . on the surface of the living organism during the treatment, without
changing the pressing force of the transducer.’” Id. (emphasis added by
Appellant). According to Appellant, a skilled artisan would understand from
paragraph 37 “that a pressing force that is not changing is a ‘constant’
force.” Id. Paragraph 50 of the ’552 Publication states that “‘during the
treatment of living organism 10, robot 2, in particular robot arm 5, controlled
by control device 6, automatically presses sound generating device 3 against
living organism 10 with a previously set pressure.’” Id. at 7–8 (emphasis
added by Appellant). Further, paragraph 51 of the ’552 Publication states
that “‘so that robot arm 5 presses sound generating device 3 against living
organism 10 with the set force,’” a control program “‘activates robot arm 5,
or the drives 15 of robot arm 5, in such a way that they press attaching
device 9 and hence sound generating device 3 against living organism 10
under force regulation with the specified force.’” Id. at 8 (emphasis added
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by Appellant). Appellant asserts that a skilled artisan having read these
paragraphs of the ’552 Publication “would understand that the inventor had
possession of the claim language ‘specified constant force.’” Id.
The Examiner responds that paragraph 51 of the ’552 Publication
states that “[t]he specified force is for example 10N to 50N” to create “at
least a satisfactory coupling between sound generating device 3 and living
organism 10 during the treatment, even if living organism 10 moves relative
to sound generating device 3, for example due to breathing.” Ans. 3.
According to the Examiner, Appellant thus intended for the “specified force”
recited in the original claims to encompass a range of specified forces
between 10N and 50N. Id. at 3–4. The Examiner contends that paragraph
37 of the ’552 Publication “refers to moving the transducer on the surface of
the living organism during the treatment, without changing the pressing
force of the transducer,” without using the claim limitation “specified
constant value force.” Id. at 4. The Examiner further contends that
paragraph 50 of the ’552 Publication “refers to the robot arm, during
treatment, automatically pressing sound generating device against living
organism ‘with a previously set pressure,’” leaving it unclear whether “set
pressure” is the same as “specified constant force value.” Id.
Appellant has the better argument. A review of the whole of
Appellant’s Specification, including paragraphs 37, 50, and 51 of the ’552
Publication, shows that a skilled artisan would understand that the inventor
had possession of the specified force having a constant value selected from
within the range of, for example, 10N to 50N. Appellant’s disclosure points
to an intent to select a single force value for pressing the ultrasound device
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against the patient, regardless of whether movement of the patient could
cause the force value to vary.
Regarding claim 11, the Examiner additionally finds that “the
specified constant force value is a force value selected from the range of 10
N to 50 N” is not mentioned in Appellant’s Specification and is new matter.
Id. at 3. The Examiner appears to be taking issue with Appellant’s revision
of the term “specified constant force” to “specified constant value force.”
Appellant has the better argument for the reason explained above.
Appellant’s disclosure points to an intent to select a single force value for
pressing the ultrasound device against the patient, regardless of whether
movement of the patient could cause the force value to vary.
Regarding claims 10 and 21, the Examiner additionally finds that
“moving the robot arm so that the sound generating device moves along a
specified path while simultaneously applying high-intensity focused
ultrasound to treat tissue” is not mentioned in Appellant’s Specification and
is new matter. Id.
Appellant argues that a skilled artisan having read paragraphs 8, 9, 16,
24, and 37 of the ’552 Publication “would reasonably understand that the
inventor had possession of the invention as claimed.” Appeal Br. 10.
Paragraph 16 of the ’552 Publication states that there “‘may be provision to
move the sound generating device by means of the robot along a specified
path while simultaneously operating the drives with force regulation, so that
the robot arm presses the sound generating device against a living organism
with the specified force while . . . moving along the path.’” Id. This
paragraph further states that, because Appellant’s robot “‘is operated with
force regulation during the motion, the relatively good coupling between the
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sound generating device and the living organism is preserved, even during
the motion along the path.’” Id. According to Appellant, a skilled artisan
“would understand that ‘coupling’ between the sound generating device and
the living organism relates to the effectiveness of the applied high intensity
ultrasound – in other words, while the sound generating device is applying
the ultrasound.” Id.
Further, paragraph 9 of the ’552 Publication discusses force regulated
operation of the drives, “‘so that the robot arm presses the sound generating
device against a living organism with a specified force while the sound is
being applied to the living organism.’” Id. (emphasis added by Appellant).
Paragraph 37 of the ’552 Publication states that “‘it is possible to move the
sound generating device . . . on the surface of the living organism during the
treatment, without changing the pressing force,’” and “‘for the focus of the
ultrasound to remain constantly in the tumor during the motion.’” Id. at 10–
11 (emphasis added). Appellant contends that a skilled artisan would
understand: (1) “that, in order for the focus of the ultrasound to remain in
the tumor during the motion, the sound generating device must necessarily
be applying the ultrasound during the movement”; and (2) “from at least
these paragraphs that the inventor had possession of the invention as
claimed.” Id. at 11.
The Examiner responds that “simultaneously” is only used in
Appellant’s Specification to describe other aspects of the apparatus and
method. Ans. 5. According to the Examiner, Appellant’s Specification
“fails to disclose that the robot arm is moved ‘while simultaneously applying
high-intensity focused ultrasound’” because, “while the specification
discloses moving the robot arm and transducer along the path, the
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specification fails to disclose at what times the transducer is energized to
apply ultrasound,” and “it must also be considered that the transducer may
be moved along the path, and then the ultrasound transducer may be
energized to provide treatment energy at discrete points along the path, as
opposed to continuously applying treatment energy at all points along the
path.” Id. The Examiner further contends that, while paragraph 9 of the
’552 Publication “refers to moving the transducer during treatment . . . and
maintaining the focus of the transducer,” this disclosure “fails to state that
the transducer is moved and treatment energy is simultaneously applied.” Id.
(emphasis added).
Appellant replies that “persons skilled in the art would understand that
the sound generating device must necessarily be operating to apply
ultrasound during the movement in order for the focus of the ultrasound to
remain in the tumor, as clearly set forth in the Specification.” Reply Br. 6.
Appellant has the better argument. A review of the whole of
Appellant’s Specification, including paragraphs 8, 9, 16, 24, and 37 of the
’552 Publication, shows that a skilled artisan would understand that the
inventor had possession of “moving the robot arm so that the sound
generating device moves along a specified path while simultaneously
applying high-intensity focused ultrasound to treat tissue,” even though the
Specification does not employ the term “simultaneously” in describing
application of ultrasound during movement. Indeed, paragraph 16 of the
’552 Publication describes “mov[ing] the sound generating device by means
of the robot along a specified path while simultaneously operating the drives
with force regulation, so that the robot arm presses the sound generating
device against a living organism with the specified force while . . . moving
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along the path.” This paragraph, considered in context of the entirety of
Appellant’s Specification, indicates to us that the inventor had possession of
moving the sound generating device along a treatment path while
(simultaneously) applying ultrasound to treat tissue.
Regarding claim 21, the Examiner finds that “wherein the specified
constant value force is dependent upon a direction of movement along the
specified path” is not mentioned in Appellant’s Specification and is new
matter. Final Act. 3.
Appellant argues that a skilled artisan, having read paragraph 16 of
the ’552 Publication, would reasonably understand that the inventor had
possession of the claimed invention, because paragraph 16 states that “the
drives of the robot are operated ‘with force regulation, so that the robot arm
presses the sound generating device against a living organism with a
specified force while a sound generating device moving along the path.’”
Appeal Br. 12 (emphasis added by Appellant). Paragraph 16 of the ’552
Publication also states that, because the robot arm “‘is operated with force
regulation during the motion, the relatively good coupling between the
sound generating device in the living organism is preserved, even during the
motion along the path. In particular, there may be provision to operate the
robot in one or more spatial directions with force regulation.’” Id. (emphasis
added by Appellant).
We agree with the Examiner on this point. It is unclear to us how a
skilled artisan would determine that the inventor had possession of a force
that is dependent upon a direction of movement from Appellant’s disclosure
of operating with a specified force while moving along a path in a given
spatial direction, even while preserving good coupling between the device
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and the patient. Simply disclosing the device operating while moving in
paragraph 16 of the ’552 Publication is insufficient to create the claimed
dependency.
For the reasons explained above, we only sustain the written
description rejection of independent claim 21 as it applies to the claim
language “wherein the specified constant value force is dependent upon a
direction of movement along the specified path.” We, thus, also sustain the
rejection of claims 22–25, which depend therefrom, for this sole reason. The
rejection of claims 10–12 and 14–19 is not sustained.
Rejection II: Definiteness
Regarding claims 10, 11, 18, and 21, the Examiner finds that the term
“specified constant value force” renders these claims indefinite, because the
“term is not defined in the specification.” Final Act. 3. Regarding claims 22
and 23, the Examiner finds that the term “specified constant force” renders
the claims indefinite, because the “term is not defined in the specification.”
Id. at 4. The Examiner finds that “[i]t is unclear what is meant by the term
‘constant,’” because Appellant’s Specification “(and the claims for example
claim 11) discloses that the force is between 10 N and 50 N, however, it is
unclear if a constant force is a single value or may for example vary within
this range of values.” Id. at 3–4. The Examiner finds that, “[f]urthermore, it
is unclear how a ‘specified constant force’ would differ from a ‘specified
value constant force’ set forth in claim 21.” Id. at 4.
Appellant contends that a skilled artisan “would have been able to
understand the language of the claims with a reasonable degree of precision
and particularity as directed to a force value that is maintained constant (in
other words, not changing).” Appeal Br. 13. Appellant further argues that
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the Examiner fails to explain why a skilled artisan “would not have been
able to understand the language of the claims with a reasonable degree of
precision and particularity as being directed to a single force value that is
maintained constant.” Reply Br. 7.
Appellant has the better argument. A decision on whether a claim is
indefinite requires a determination of whether a skilled artisan would
understand what is claimed when the claim is read in light of the
Specification. See Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343,
1350 (Fed. Cir. 2010); Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806
F.2d 1565 (Fed. Cir. 1986). As explained above, a skilled artisan,
considering Appellant’s disclosure as a whole, would understand that the
terms “specified constant value force” and “specified constant force”
describe a single force selected from, for example, the range between 10N
and 50N. For this reason, we do not sustain the indefiniteness rejection.
Rejection III: Anticipation of Claim 21 by Quistgaard
The Examiner finds that Quistgaard discloses, inter alia, a medical
robot arm with links and drives controlling movement of a scan head that
moves along a specified path while simultaneously treating tissue. Final
Act. 4–5 (citing Quistgaard ¶¶ 55–57, 65, 68, 76, 120, 158, 180, 199, 203).
The Examiner also finds that Quistgaard discloses moving the robot arm
while utilizing force control “such that the scan head is pressed against the
tissue with a specified constant force while the scan head is moving along
the specified path,” the specified constant force being “dependent upon a
direction of movement along the specified path (load balancing takes into
account positional changes of the therapy head during the procedure . . . ).”
Id. at 5 (citing Quistgaard ¶¶ 70, 71, 83, 85, 89, 92, 120).
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Appellant argues that Quistgaard fails to disclose “‘the sound
generating device pressed against the living organism with a specified
constant value force,’” instead disclosing therapy head force application
being controlled to not exceed a maximum value. Appeal Br. 15–16.
The Examiner responds that Quistgaard’s paragraphs 70 and 71
disclose that its therapy head “is not controlled simply not to exceed a
maximum value, but rather to maintain a constant force against the patient so
that the therapy head remains in contact with the patient without the tissue
volume being overly compressed.” Ans. 6. The Examiner finds that
Quistgaard’s robotic arm “maintain[s] the transducer against the patient’s
skin in the same manner as [A]ppellant’s invention, in order to achieve
adequate coupling while not pressing too forcefully.” Id. at 6–7. The
Examiner also finds that Quistgaard discloses that its “active load balancing
mechanism can operate independently (or based on commands provided by
user to robotic driver),” which “allows for the articulating arm to
compensate the positioning of the arm automatically during the procedure
while leaving the therapy head in the desired position.” Id. at 7 (citing
Quistgaard ¶ 89). The Examiner further finds that Quistgaard discloses a
manual embodiment, and also a controller “perform[ing] the procedure
automatically without manual intervention, by following a data file of a map
for example to provide movement commands that the therapy head must
follow.” Id. (citing Quistgaard ¶¶ 92, 96).
Appellant replies that Quistgaard provides no teaching or suggestion
of “a ‘constant value force,’ or maintaining a therapy head pressed against a
living organism with a constant force.” Reply Br. 8. Rather, Appellant
argues, Quistgaard’s disclosure in paragraphs 70 and 71 of “not overly
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compressing or deforming the tissue volume is consistent with operation of
the device such that the therapy head applies a variable degree of force
against a patient without exceeding a maximum value.” Id. Appellant
argues that Quistgaard’s haptic sensor providing “a pressure feedback to a
user . . . to allow a user to feel the amount of pressure they are exerting with
a therapy head, is evidence that the applied force varies.” Id. According to
Appellant, “[s]uch graduated pressure information would not be necessary if
the force of Quistgaard[] were constant as alleged by the Examiner.” Id.
Appellant again has the better argument. Quistgaard indeed does not
explicitly disclose applying a therapy head to a patient with a constant value
force. Further, although Quistgaard discloses maintaining contact between
its therapy head and the patient (Quistgaard ¶ 71), Quistgaard also employs
haptic feedback to indicate pressure applied to the patient or employing a
“safety limitation” to prevent patient injury (Quistgaard ¶ 70), which imply
that the applied force can vary. Further, we are not persuaded that
Quistgaard’s disclosure of “load balancing” (Quistgaard ¶ 89) is evidence
that the therapy head is applied to the patient with a constant force value.
Thus, because the Examiner’s finding that Quistgaard discloses a
therapy head pressed against a patient with a “specified constant value
force” is in error, we do not sustain the anticipation rejection of claim 21.
Rejections IV–VII: Obviousness of Remaining Claims
The Examiner’s findings regarding Quistgaard are discussed above.
The Examiner does not find that either Fraser or Sumanaweera disclose a
therapy head pressed against a patient with a “specified constant value
force.” For this reason, and the reasons set forth above, the Examiner has
not established that the prior art discloses a therapy head pressed against a
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patient with a “specified constant value force,” and we do not sustain the
pending obviousness rejection for this reason.
CONCLUSION
More specifically,
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
10–12, 14–
19, 21–25
112, ¶ 1 Written Description 21–25 10–12, 14–
19
10–12, 14–
19, 21–25
112, ¶ 2 Indefiniteness 10–12, 14–
19, 21–25
21 102 Quistgaard 21
10–12, 14–
17
103 Quistgaard, Fraser 10–12, 14–
17
18, 19 103 Quistgaard, Fraser,
Sumanaweera
18, 19
22, 23 103 Quistgaard,
Sumanaweera
22, 23
24, 25 103 Quistgaard, Fraser 24, 25
Overall
Outcome:
21–25 10–12 and
14–19

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-IN-PART