Ex Parte Millman et al

Patent Trial and Appeal Board

Jan 22, 2015

11341004 (P.T.A.B. Jan. 22, 2015)

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.
11/341,004 01/27/2006 Paul Millman ISRG00050/US 1234
51947 7590 01/22/2015
PATENT DEPT - INTUITIVE SURGICAL OPERATIONS
1020 KIFER RD
SUNNYVALE, CA 94086
EXAMINER
SCHMIDT, EMILY LOUISE
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
01/22/2015 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 PAUL MILLMAN, DAVID BAILEY, DEAN HOORNAERT,
DAVID STEPHEN MINTZ, and DAVID Q. LARKIN
____________

Appeal 2012-008266
Application 11/341,0041
Technology Center 3700
____________

Before MICHAEL P. COLAIANNI, JEFFREY N. FREDMAN, and
ELIZABETH A. LaVIER, Administrative Patent Judges.

LaVIER, Administrative Patent Judge.

DECISION ON APPEAL

The Examiner finally rejected claims 1, 2, 8–14, 16, 17, and 21–31.
Appellants seek reversal of the Examiner’s rejections, pursuant to 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
BACKGROUND
The Specification describes surgical instruments for robotic surgery,
specifically devices for irrigation, aspiration, and blowing. (Spec. 1.) Claim
1 is representative:

1 According to Appellants, the real party in interest is Intuitive Surgical
Operations, Inc. (Appeal Br. 3.)
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1. A robotic surgical instrument adapted to be coupled to a
robotic arm, the robotic surgical instrument comprising:
a first robotically controlled rotatable valve having a first port
and a second port, the first robotically controlled rotatable valve
having a first cylindrical shaft coupled to a first rotatable
receiver, the first rotatable receiver adapted to couple to a first
rotatable driver of the robotic arm to rotate the first cylindrical
shaft;
a rigid hollow tube having a first end coupled to the second port
of the first robotically controlled rotatable valve and a second
end to be positioned within a patient’s body near a surgical site,
the rigid hollow tube having an opening at the second end to
direct the flow of one or more fluids into and out of the surgical
site;
a first hose having a first end coupled to the first port of the first
robotically controlled rotatable valve, the first hose to transport
the first fluid to or from the first robotically controlled rotatable
valve; and
wherein rotation of the first cylindrical shaft couples the first
port and the second port together to variably control a flow of
the first fluid through the first robotically controlled valve and
the rigid hollow tube in response to first control signals.
(Appeal Br. 13 (Claims App.).)
REJECTIONS
The Examiner maintains the following rejections on appeal:
1. Claims 1, 2, 26, and 27 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ivey2 in view of Martin,3 Tierney,4 Cosmescu,5 and
D’Amelio.6 (Ans. 5.)

2 U.S. Patent No. 5,605,537, issued Feb. 25, 1997.
3 U.S. Patent No. 5,472,432, issued Dec. 5, 1995.
4 U.S. Patent Application Pub. No. US 2002/0072736 A1, published June 13,
2002.
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Application 11/341,004

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2. Claims 8–10, 13, 14, 16, 17, 21–25, and 28–31 are rejected under
35 U.S.C. § 103(a) as unpatentable over Ivey in view of Martin,
Tierney, and Cosmescu. (Ans. 8.)
3. Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ivey in view of Martin, Tierney, and Cosmescu,
and further in view of D’Amelio. (Ans. 15.)
FINDINGS OF FACT
We agree with and adopt the Examiner’s findings of fact, as set forth
on pages 5–15 of the Answer. We note the following for emphasis and
context.
Ivey describes an endoscopic device for suction, irrigation, and aqua-
dissection. (Ivey Abstract.) The Examiner relies on Ivey to teach various
aspects of claim 1, but notes that “Ivey does not disclose the valves are
robotically controlled and coupled to a rotatable receiver adapted to couple
to a first rotatable driver of a robotic arm to rotate the valve.” (Ans. 6.)
Thus, the Examiner turns to Martin, which describes a compactly-structured
dual lumen vascular access catheter (see Martin Abstract) to teach rotatable
valves (Ans. 6), and to Tierney for robotic control of surgical devices
(including, inter alia, attaching a robotic arm to suction or irrigation tools)
(id. (citing Tierney ¶ 41)). Further, the Examiner cites to Cosmescu for the
teaching of “using both manual and automatic valves and automated valves
[to] allow for the incorporation of additional safety features.” (Id. (citing
Cosmescu col. 2, ll. 3–20; col. 3, ll.40–66).) Finally, as the Examiner also
finds Ivey to lack express disclosure regarding connection of the

5 U.S. Patent No. 5,836,909, issued Nov. 17, 1998.
6 U.S. Patent No. US 6,234,205 B1, issued May 22, 2001.
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irrigation/suction sources to the valves using hoses (Ans. 7), the Examiner
cites D’Amelio for the teaching that “flexible hoses are commonly used in
the art for connection between an irrigation or suction source and the valve
control” (id. (citing D’Amelio Fig. 2; col. 4, ll. 50–55)).
As to the combination of these references, the Examiner finds:
It would have been obvious to a person of ordinary skill in the
art at the time the invention was made to use a suction/irrigation
tool and valve system as in Ivey and Martin with the robotic
system of Tierney et al. because Tierney et al. teach being able
to use various tools with the robotic system including a
suction/irrigation tool as provided by Ivey and Martin and
further it would be beneficial to robotically control the valves of
Ivey and Martin with the system of Tierney et al. because
Cosmescu teaches interchangeably using manual and automatic
valves and using automated valves can provide additional
safety features and Tierney et al. teach robotic assistance
enhances the safety, accuracy, and speed of surgical procedures.
The rotatable valve control members of Martin (Fig. 1 member
72 and 80) would be able to be modified to be received as
needed by the driver of Tierney et al. and the valve of Martin
has a rotatable shaft (Fig. 2 shaft 62). . . . It would have been
obvious to a person of ordinary skill in the art at the time the
invention was made to use a hose to connect the valve of Ivey
to the irrigation or suction source because D’Amelio et al. teach
such hoses are known in the art.
(Id. at 6–7.)
DISCUSSION
We begin by noting that Appellants focus their arguments on claim 1,
and do not present separate arguments for the patentability of the other
claims subject to Rejection 1. (See Appeal Br. 7–10.) We thus treat claim 1
as representative of all of the claims subject to rejection 1. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011). For the claims subject to Rejections 2 and 3,
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Appellants only refer back to previous arguments. (See id. at 11.)
Accordingly, we need only consider claim 1 to decide this appeal.
First, Appellants argue that the references, alone or in combination,
fail to teach a robotically-controlled cylindrical valve coupled to a rotatable
receiver and actuated by a rotatable driver. (Appeal Br. 8; Reply Br. 4.) As
Appellants note, several of the references cited by the Examiner describe
manual irrigation and suction instruments, while Tierney generally discloses
robotic surgery and Cosmescu teaches automatic electronic valves. (See
Appeal Br. 8.) In Appellants’ view, Tierney and Cosmescu fail to provide
the missing teaching (from the manually-operated references) of robotic
control of valves, because Tierney does not discuss valves, or more
generally how to operate a suction/irrigation tool (id. at 8–9; Reply Br. 4),
and because in Cosmescu, a pump controls fluid flow rather than the valves,
which in Cosmescu can only be in a fully-open position or a fully-closed
position (Appeal Br. 8; Reply Br. 4).
With regard to Tierney, we agree with the Examiner’s finding that
despite the generality of Tierney’s teaching with regard to a robotically-
controlled irrigation/suction device, “one of ordinary skill would be able to
apply the control of Tierney et al. to a variety of devices as its operation has
been disclosed. Applicant has not provided any specific argument as to why
one of ordinary skill would be prevented from being able to do so.” (Ans.
16.) As to Cosmescu, the distinctions on which Appellants’ arguments rely
are not borne out in claim 1. Claim 1 recites a “robotically controlled
rotatable valve,” but neither claim 1 nor the Specification defines
“robotically controlled” with any particularity that would exclude
Cosmescu’s automated valves. And although claim 1 recites that the
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rotation of the shaft couples the ports together to “variably control a flow” of
fluid through the robotically-controlled valve, this variability could be
satisfied by Cosmescu’s fully open/fully closed automated valves, as neither
claim 1 nor the Specification requires more precise valve control.
Second, Appellants argue that one of ordinary skill in the art would
not have been motivated to combine Ivey with Martin, as the combination
would render Ivey unsatisfactory for its intended purpose (Appeal Br. 10;
Reply Br. 4–5). The Examiner relies on Martin to provide rotatable valves,
to combine with Ivey’s (manual) endoscopic device. (Ans. 5–6.) Although
Appellants are correct that Martin’s device is for a different purpose than
Ivey’s, that is that Martin “is used with the blood circulatory system,”
(Appeal Br. 10), we agree with the Examiner that “[u]sing the valve feature
of Martin provides for a more compact surface, one of ordinary skill would
still be able to adapt the size of the valve as needed to function with the
device of Ivey,” (Ans. 16). Further, as Appellants point out, (Appeal Br.
10), Ivey indicates using valves “of a style that is difficult to clog, such as
gate valves.” (Ivey, col. 7, ll. 20–21.) Notably, the Specification lists “gate-
type valve” among various possibilities for the “rotatable valve,” (Spec. 29),
thus providing further support for the viability of the Examiner’s substitution
of Martin’s rotatable valves for the gate valves in Ivey.
Having considered all of Appellants’ arguments, we are unpersuaded
that the Examiner reversibly erred in rejecting claim 1 as obvious.
CONCLUSION
The Examiner’s final rejections of claims 1, 2, 8–14, 16, 17, and 21–
31 are affirmed for the reasons of record. No time period for taking any
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subsequent action in connection with this appeal may be extended under
37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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