Ex Parte Gunday et al

Patent Trial and Appeal Board

Jun 8, 2018

13867761 (P.T.A.B. Jun. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/867,761
151971 7590
Forge IP, PLLC
1077 Bridgeport Ave
Suite 301
Shelton, CT 06484
FILING DATE FIRST NAMED INVENTOR
04/22/2013 Erhan H. Gunday
06/12/2018
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
04530-P0033B 1090
EXAMINER
HOLWERDA, STEPHEN
ART UNIT PAPER NUMBER
3664
NOTIFICATION DATE DELIVERY MODE
06/12/2018 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):
patent@forge-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EHRAN H. GUNDA Y and
LAWRENCE J. GERRANS
Appeal2017-008310
Application 13/867, 7 61
Technology Center 3600
Before ANTON W. PETTING, CYNTHIA L. MURPHY, and
TARA L. HUTCHINGS, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants 1 appeal under 35 U.S.C. § 134 from the Examiner's
rejections of claims 1-10, 12-25, and 27-36. We have jurisdiction over this
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 The real party in interest is Sanovas, Inc." (Appeal Br. 2.)
Appeal2017-008310
Application 13/867,761
STATEMENT OF THE CASE
The Appellants' invention "relates to the field of robotically assisted
medical diagnosis and treatment," and, more specifically, to "a robotic
system and method for performing medical diagnosis and treatment using a
plurality of remotely controlled in vivo robotic units." (Spec. i-f 1.)
Illustrative Claim
1. A surgical robotic system, comprising:
at least one robotic unit that is mechanically self-
contained such that said robotic unit is movable on a bodily
surface inside a patient's body independently of any structure
positioned outside of the patient's body, said robotic unit
compnsmg:
a transporting device for transporting said robotic
unit on the bodily surface;
a lifting device mounted to said transporting
device; and
a working device carried by said lifting device;
wherein said lifting device is movable relative to
the transporting device to position the working device
adjacent target tissue; and
a control device positioned remotely from said at least
one robotic unit, wherein said control device transmits
commands that manipulate said at least one robotic unit inside
the patient's body.
Alfano
Fowler
Gilad
References2
US 6,240,312 Bl
US 2005/0014994 Al
US 2007/0156015 Al
May 29, 2001
Jan.20,2005
July 5, 2007
2 Our quotations from these documents will omit, where applicable, bolding
and/ or italicization of references numerals.
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Application 13/867,761
Rejections
The Examiner rejects claims 1-10, 13-25, and 28-36 under 35 U.S.C.
§ 103(a) as unpatentable over Alfano and Fowler. (Final Action 4.)
The Examiner rejects claims 12 and 27 under 35 U.S.C. § 103(a) as
unpatentable over Alfano, Fowler, and Gilad. (Final Action 14.)
ANALYSIS
Claims 1, 16, and 3 0 are the independent claims on appeal, with the rest
of the claims on appeal (i.e., claims 2-10, 12-15, 17-25, 27-29, and 31-36)
depending therefrom. (See Appeal Br., Claims App.) Independent claims 1
and 16 are drawn to a "surgical robotic system," and independent claim 30
is drawn to a "method of performing a robotically assisted medical
procedure." (Id.)
The Examiner determines that the claimed system/method would have
been obvious over Alfano and Fowler. (See Final Action 4---6.) We have
carefully considered the Appellants' arguments regarding error in this
determination by the Examiner (see Appeal Br. 5-10; see also Reply Br. 2-3),
but we are not persuaded thereby. We are unpersuaded because the Examiner
establishes adequately that the claimed invention constitutes a combination of
familiar elements according to known methods.
Independent claims 1, 16, and 30 require a "robotic unit" comprising a
"transporting device," a "lifting device" that is "mounted to" the transporting
device, and a "working device" (e.g., a "medical tool") that is "carried by"
the lifting device. (Appeal Br., Claims App.) The Examiner finds that all
the claimed elements "were known in the prior art" (Answer 5); and this
finding is supported by the record. Alfano discloses a robotic unit that
comprises a motion mechanism ("treads 43") for "enabling the device to
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Application 13/867,761
move on the inner surfaces of an organ." (Alfano, col. 4, 11. 58---63.) Fowler
discloses a robotic unit comprising a housing 102, a functional element 106
(e.g., a surgical instrument), and a shuttle 135 to extract the functional
element 106 into and out of the housing 102. (See Fowler i-f 33, 44, 47.)
Thus, Alfano discloses a transporting device; Fowler discloses a lifting
device; and Fowler discloses a working device. 3
The Examiner also finds that "one skilled in the art could have
combined the elements as claimed by known methods." (Answer 6.) Here,
the elements being combined are Alfano's treads 43, Fowler's housing 102,
Fowler's functional element 106, and Fowler's shuttle 135. As noted by the
Examiner (see Final Action 6), Alfano shows that it is known for treads to be
fixed to a housing holding medical instruments. (See e.g., Alfano Fig. 3.)
And the Examiner's combination can be accomplished by Alfano's treads 43
being fixed to Fowler's housing 102 in this known manner.
The Examiner further finds that there is "no change" in the
"respective functions" of the combined elements, and that the combination
would yield a "predictable" result. (See Answer 6.) In the above-described
combination, Fowler's functional element 106 would still be a "surgical
instrument" (Fowler i-f 47), Fowler's shuttle 135 would still "extract the
functional elements into and out of the device" (id. i-f 44), and Alfano's
treads 43 would still "enable[] the device to move on the inner surfaces of an
3 Independent claims 1, 16, and 30 additionally require a "control device"
that is positioned "remotely" from the robotic unit and that "transmits
commands" to manipulate the robotic unit inside the patient's body.
(Appeal Br., Claims App.) Alfano discloses such a control device for its
robotic unit (see e.g., Alfano, col. 7, 11. 7-11, Fig. 10); and Fowler discloses
such a control device for its robotic unit (see e.g., Fowler, i-f 51, Fig. 7).
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Appeal2017-008310
Application 13/867,761
organ" (Alfano, col. 4, 11. 58---64). In other words, the predictable result of
this combination would be enabling Fowler's housing 102, and the
functional elements 106 and shuttle 135 contained therein, to move on inner
surfaces of an organ thanks to treads 43.
The Appellants appear to argue that the Examiner does not provide a
clear picture of how Alfano' s illustrated capsule housing would be modified
to incorporate Fowler's shuttle 135; and/or how this theoretical shuttle
implementation would result in Alfano's wall-mounted components being
carried by a lifting device. (See Appeal Br. 9; see also Reply Br. 2-3.)
However, as discussed above, the Examiner's rejection need not involve
Alfano's illustrated capsule housing and/or the incorporation of Fowler's
shuttle 135 thereinto. The Examiner's proposed combination can entail
Alfano's treads 43 being fixed to Fowler's housing 102.
The Appellants also argue that Fowler's shuttle 135 does not
constitute a "lifting device" as required by the independent claims on appeal.
(Appeal Br. 9.) According to the Appellants, Fowler's shuttle 135 "slides
within" the housing 102, and it is "unfair" to equate such a sliding shuttle to
the claimed "lifting device." (Id.) Fowler does teach that its shuttle 135 can
obtain a "degree of longitudinal freedom" that is "essentially parallel to" its
longitudinal axis. (Fowler i-f 37.) However, as pointed out by the Examiner
(see Answer 5), Fowler also teaches that its shuttle 135 can afford a "degree
of rotational freedom" that allows the functional elements 106 "to be
retracted into and extracted from the housing 102." (Fowler i-f 37.) As
depicted in Fowler's drawings, when an actuating element 108 moves a
pedestal in the direction of arrow 130, the functional element 106 is carried
by the pedestal and lifted from the housing 102. (See id. Figs. 6, 8, 9.)
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Application 13/867,761
The Appellants additionally argue that the alleged lifting device,
namely Fowler's shuttle 135, is not mounted to a transporting device as
required by the independent claims on appeal. (See Appeal Br. 9.)
However, in the robotic unit produced by the Examiner's combination of the
prior art, the lifting device (shuttle 135) is mounted to, and movable relative
to, the housing 102; and the transporting device (treads 43) is fixed to the
housing 102. Thus, the lifting device (shuttle 135) is mounted to the
transporting device (treads 43) via the housing 102, and is movable relative
to both the housing 102 and the transporting device (treads 43). 4
In summary, the Examiner finds that "all the claimed elements were
known in the prior art," that "one skilled in the art could have combined the
elements as claimed by known methods with no change in their respective
functions," and that the combination "would have yielded nothing more than
predictable results to one of ordinary skill in the art." (Answer 6.) These
findings by the Examiner, which have not been challenged persuasively by
the Appellants, support an obviousness rationale premised upon the
combination of familiar elements according to known methods. See KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) ("[A] combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results").
4 The Appellants contend that their claimed invention "employs no such
housing, but instead has a lifting device mounted and movable relative to a
transporting device." (Reply Br. 2-3.) But independent claims 1, 16, and 30
do not preclude the robotic unit from having a housing, and they do not
require the lifting device to be mounted directly to the transporting device.
Moreover, in the robotic unit produced by the Examiner's combination of
the prior art, the housing 102 and the treads 43 can viewed as collectively
forming the transporting device.
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Thus, we sustain the Examiner's rejection of independent claims 1,
16, and 30 under 35 U.S.C. § 103(a) as unpatentable over Alfano and
Fowler. As the Appellants do not argue the dependent claims separately (see
Appeal Br. 10), we also sustain the Examiner's rejection of dependent
claims 2-9, 13-15, 17-25, 28, 29, and 31-36 under 35 U.S.C. § 103(a) as
unpatentable over Alfano and Fowler, and the Examiner's rejection of
dependent claims 12 and 27 under 35 U.S.C. § 103(a) as unpatentable over
Alfano, Fowler, and Gilad.
DECISION
We AFFIRM the Examiner's rejections of claims 1-10, 12-25,
and 27-36.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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