Ex Parte Nahum et al

Patent Trial and Appeal Board

Dec 19, 2018

11610728 (P.T.A.B. Dec. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/610,728 12/14/2006 Bertin Nahum
93758 7590 12/20/2018
NORTON ROSE FULBRIGHT CANADA LLP (Zimmer Cas)
1 Place Ville Marie
Suite 2500
Montreal, QC H3B IRI
CANADA
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.
55214239-88US PTN/tb 3223
EXAMINER
PATTON, SPENCERD
ART UNIT PAPER NUMBER
3664
MAIL DATE DELIVERY MODE
12/20/2018 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 BERTIN NAHUM, ERIC TASSEL,
LUCIEN BLONDEL, and PIERRE MAILLET
Appeal2017-002832
Application 11/610,728 1
Technology Center 3600
Before WILLIAM A. CAPP, BRANDON J. WARNER, and
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Bertin Nahum et al. ("Appellants") seek review under 35 U.S.C.
§ 134(a) of the Examiner's decision, as set forth in the Final Office Action
dated December 21, 2015 ("Final Act."), and as further explained in the
Advisory Action dated February 29, 2016, rejecting claims 1, 3-10, 12-15,
17, 19-21, and 24--28 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement. The record includes a
1 Appellants identify "Zimmer GMBH" as the real party in interest.
Appeal Br. 2.
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transcript of the oral hearing held on November 29, 2018 ("Tr."). We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
BACKGROUND
The disclosed subject matter "relates to mechanical guidance for an
oscillating saw blade or a drill in a variety of surgical applications." Spec.
,r 3. Claims 1, 10, and 14 are independent. Claim 1 is reproduced below,
with emphasis added:
1. A computer-assisted surgical device for
guiding a surgical instrument relative to an
anatomical structure, the device comprising:
a robot arm;
a surgical instrument releasably attachable to
said robot arm; said robot arm operable to move said
surgical instrument;
a force sensor connected to said robot arm,
said force sensor operable to produce a signal in
response to a user-exerted force on said surgical
instrument;
a control unit in communication with said
robot arm, said control unit configured to:
receive said signal from said force
sensor,
calculate a plurality of desired
positions for said surgical instrument, and
control said movement of said surgical
instrument in response to said signal, such
that said surgical instrument is moved toward
at least one of said plurality of desired
positions, said movement produced in
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response to said user-exerted force toward
one of said plurality of desired positions; and
a safety module in communication with said
control unit, said safety module stopping said robot
arm by powering joints of said robot arm
throughout a blocked state to block said robot arm
from moving at a software failure in the control
unit.
DISCUSSION
Appellants argue against the rejection the three independent claims-
claims 1, 10, and 14---based on arguments addressing the language of claim
1. Appeal Br. 5-9; Reply Br. 2-5. According to Appellants, "the same
analysis applies mutatis mutandis for [independent] claims 10 and 14."
Appeal Br. 6. Appellants do not provide separate arguments for any
dependent claims. We select independent claim 1 as representative, with the
remaining claims standing or falling with claim 1. See 3 7 C.F .R.
§ 4I.37(c)(l)(iv).
In rejecting claim 1 as failing to comply with the written description
requirement, the Examiner initially highlighted the entire final clause, shown
with emphasis above. Final Act. 2-3. 2 The Examiner stated that the
Specification "does not provide a written description of blocking an arm
from moving in response to a software failure by powering joints of the arm"
and stated that paragraph 69 of the Specification "is the only part of the
2 For claim 10 (and claims 12 and 13 depending from claim 10), the
Examiner highlighted the final clause, which begins "a safety module."
Final Act. 3. For claim 14 (and claims 15, 17, 10, 20, and 26 depending
from claim 14), the Examiner highlighted the final clause, which begins "the
control unit stopping said arm." Id.
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application as filed which discusses stopping the robot arm during a software
failure." Id. According to the Examiner, the Specification "does not provide
any further details regarding how the safety module stops the robot arm"
and, "[fJurthermore, ... makes no mention of powering joints." Id at 3.
A. The Legal Standard
We first address the legal standard for the written description
requirement. Appellants "concede[] that the written description does not
provide a verbatim reproduction of these claim recitations in exactly the
same manner as they appear in the claims," but Appellants "respectfully
submit[] ... that the written description requirement of 35 USC § 112 does
not impose such a burden." Appeal Br. 5; see also id. at 8 (quoting MPEP
§ 2163(I)(B) as providing that "there is no in haec verba requirement" when
assessing written description support for claims). Appellants assert that
"[t]he Examiner's comments in the Final Office Action and in the Advisory
Action appear to indicate that [ the Examiner] is looking for verbatim support
of the claim feature in the written description" and Appellants state that, "[i]f
this is the case, then this approach is flawed." Id. at 8.
We agree with Appellants and the Examiner that ( as stated by the
Examiner) "verbatim support for the claim language is not a requirement"
when assessing written description support. Ans. 11; see also Ari ad Pharm.,
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en bane)
( stating that the written "description requirement does not demand any
particular form of disclosure or that the specification recite the claimed
invention in haec verba" (internal citations omitted)). Instead, the proper
standard is "whether the disclosure of the application relied upon reasonably
conveys to those skilled in the art that the inventor had possession of the
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claimed subject matter as of the filing date." Ariad, 598 F.3d at 1351 (Fed.
Cir. 2010) ( en bane). We disagree with Appellants, however, that the
Examiner applied a "verbatim support" requirement in this case. Rather, for
the reasons discussed below (see infra § B), we determine that the Examiner
has applied the proper standard ( as provided above) to show that the
Specification does not provide adequate written description support for the
claim language at issue.
In another discussion addressing the applicable legal standard,
Appellants reference certain portions of MPEP § 2163 and state "that 'newly
added claim limitations must be supported in the specification through
express, implicit, or inherent disclosure"' and that, "'to establish inherency,
the extrinsic evidence must make clear that the missing descriptive matter is
necessarily present in the thing described in the reference, and that it would
be so recognized by persons of ordinary skill."' Appeal Br. 8 ( quoting, with
emphasis added, MPEP §§ 2163(I)(B), (II)(A)(3)(b)). According to
Appellants, "the relevant authority does not require verbatim support for the
claim feature - it is sufficient that the feature be supported by 'implicit or
inherent disclosure."' Id.
We agree with Appellants' discussion as summarized in the prior
paragraph. See MPEP § 2163(I)(B). Specifically, we agree with
Appellants' position (at least as stated in the Appeal Brief) that, to establish
inherency as to written description support, the limitations at issue must be
"necessarily present" in the Specification. Appeal Br. 8; see TurboCare Div.
of Demag Delaval Turbomachinery Corp. v. Gen. Elec. Co., 264 F.3d 1111,
1119 (Fed. Cir. 2001) ("In order for a disclosure to be inherent, 'the missing
descriptive matter must necessarily be present in the [original] application's
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specification such that one skilled in the art would recognize such a
disclosure."' (quoting Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159 (Fed. Cir.
1998))). The Examiner takes the same position, quoting portions of section
2163(II)(A)(3)(b) of the MPEP. Ans. 11 (quoting passages related to Hyatt
v. Boone, 146 F.3d 1348, 1353 (Fed. Cir. 1998), and In re Robertson, 169
F.3d 743, 745 (Fed. Cir. 1999)), see also Ans. 9 (citing Appeal Br. 8 and
stating, "[a]s noted by the Appellant[s], the application as filed must make
clear that the safety module necessarily stops said robot arm by powering
joints of said robot arm . ... ").
In the Reply Brief, however, Appellants change their position on the
requirement for inherent written description support. Specifically,
Appellants argue that neither the Hyatt decision nor the Robertson decision
discussed by the Examiner (see Ans. 11 ( discussing MPEP
§ 2163(II)(A)(3)(b ))) "support the burden of 'necessity' imposed by the
Examiner." Reply Br. 3. As to the Hyatt decision, Appellants argue that
"the [ c ]ourt makes clear that its holding relates specifically to supporting
priority claims of an invention." Id. And Appellants assert that the
Robertson decision dealt with "the 'inherency' requirement in the context of
prior art disclosures" and that "[ t ]he [ c ]ourt makes no pronouncement on
inherency in the context of the written description requirement of 3 5 USC
112, first paragraph." Id. at 3--4.
Even assuming that the Hyatt decision and the Robertson decision are
somehow distinguishable on their facts, the law is clear that, to establish
inherent disclosure in the context of the written description requirement,
"'the missing descriptive matter must necessarily be present in the [ original]
application's specification such that one skilled in the art would recognize
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such a disclosure."' Turbo Care, 264 F .3d at 1119 ( quoting Tronzo, 156
F.3d at 1159) (affirming a determination that an dependent claim was invalid
for failing to satisfy the written description requirement when the claimed
feature was not inherently disclosed in the specification).
B. Applying the Legal Standard to the Rejection
In the Answer, the Examiner narrows the focus from the entirety of
the final clause in claim 1 to the language "said safety module stopping said
robot arm by powering joints of said robot arm" ("the By Powering
limitation"). See Ans. 3. According to the Examiner, the other claim
language in the final clause "has support in the application as filed." Id. at 3
(addressing the language preceding the By Powering limitation), 8-9
(addressing the language following the By Powering limitation).
We tum now to Appellants' arguments as to the alleged written
description support for the By Powering limitation. Overall, Appellants
identify alleged written description support in "th[ e] inherent and described
understanding on the functioning of the robot arm and its joints, and from
the example provided in paragraph [0065]," from which, according to
Appellants, "the skilled person would reasonably conclude that 1) movement
of the robot arm is effected by powering its joints, and that 2) the movement
of the robot arm is stopped in many degrees of freedom by the control unit
and/or the safety module." Appeal Br. 7. We summarize Appellants'
discussion as to each of these two contentions below.
As to the first contention, Appellants argue that "[a] person skilled in
the art would reasonably conclude from the description of the robot arm that
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it includes powered joints." Appeal Br. 6. 3 Appellants argue that paragraph
69 "explains the function of the safety module, which 'stops robot arm 120"'
and that "[ s ]upport for stopping the robot arm by powering joints is found in
paragraph [0065], and is inherent to the manner in which robotized arms
function." Id. Appellants highlight the disclosures in paragraph 47 that
"robot arm 120 is a six joint arm" and that "each joint is provided with an
encoder which measures its angular value." Spec. ,r 47, quoted at Appeal
Br. 6. According to Appellants, "[a] person skilled in the art would
recognize the importance of knowing the angular value of each joint because
the disclosed robot arm functions by transforming rotational displacement at
its joints into an overall controlled movement of the tool 190." Appeal Br.
6. Referring to Figure 1, Appellants argue that "the skilled person would
recogni[ z ]e that by coordinating the rotation of each arm member of the
robot arm (this rotation being performed at the joints between the arm
members), the arm members are able to linearly displace the tool 190 at the
end of the robot arm" and that "[t]his is described in paragraphs [0058] to
[0065] as the cooperative mode." Id. Appellants also state that paragraph
72 "adds that the control module 137 sends position commands to control
the robot arm 120." Id. Appellants contend that "[t]he person skilled in the
art would therefore reasonably conclude that the joints of the robot arm are
3 By "includes powered joints," Appellants mean that the joints in the
robot arm rotate using electric motors as opposed to, for example, hydraulic
actuators, pneumatic actuators, or other structures. See Tr. 4: 14--17; see also
Ans. 5 ("Angular rotations about robotic joints can be made in a variety of
ways, not all of which require the joints to be powered. For example, a
robot could be actuated via linear hydraulic actuators connecting links on
either side of a joint, via pneumatic artificial muscles, via Bowden cables, or
in any number of other ways.").
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'powered' so that they constrain the movements of the tool 190, and thus
'generate the movement desired by the user', as described in paragraph
[0058]." Id.
As to the second contention, Appellants contend that paragraph 65
"complements th[ e] inherent understanding of the operation of the
cooperative mode by describing the constrained movement of the robot arm
120." Appeal Br. 7. Appellants highlight that paragraph's disclosure that
the control unit "operates to 'restrict movements of robot arm 120 to a plane
or an axis"' and argue that, "[f]rom th[is] description, the skilled person
would find explicit teaching that movement of the robot arm along different
degrees of freedom can therefore be restricted to one or two degrees of
freedom." Id.
Turning back to the first contention-that "[a] person skilled in the art
would reasonably conclude from the description of the robot arm that it
includes powered joints" (Appeal Br. 6}-the Examiner responds that "a
disclosure of a robot arm being 'a six joint arm,' that 'each joint is provided
with an encoder which measures its angular value,' and the control module
'sends position commands' does not imply that the joints of the robot are
powered." Ans. 5 (discussing Spec. ,r,r 47, 72). The Examiner states:
"Angular rotations about robotic joints can be made in a variety of ways, not
all of which require the joints to be powered. For example, a robot could be
actuated via linear hydraulic actuators connecting links on either side of a
joint, via pneumatic artificial muscles, via Bowden cables, or in any number
of other ways." Id. According to the Examiner, "[a]ll of these actuation
methods cause rotation about the joints of a robot, and the robot's control
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system would benefit from knowing the angular value of the rotated joints of
such a robot." Id.
We agree with the Examiner that the aspects of the Specification
relied on by Appellants do not demonstrate that the recited "robot arm"
necessarily includes powered joints (i.e., with electric motors (see n.3)), as
opposed to, for example, one of the alternative structures identified by the
Examiner that would also provide rotational movement. See Ans. 5; see also
id. at 7 (stating that "while movement of the robot arm may be effected by
powering its joints, the application as filed certainly does not necessitate that
movement is effected by powering the joints as there are numerous other
ways in which robots may be actuated as discussed above" at page 5).
Moreover, the presence of data regarding the "angular value" at each 'joint"
(Spec. ,r 4 7) and that the control module "receives data encoder values of
each joint and sends position commands" (id. ,r 72) does not necessarily
indicate the presence of powered joints. See Ans. 5; see also Tr. 9:20-21
( counsel addressing paragraph 72 and stating that "if we had a hydraulic
system, we would be communicating with [the hydraulic actuators] by way
of electrical signals"), 7: 12-17 (Appellants acknowledging that the
discussion in paragraph 65 "in and of itself' does not necessarily indicate the
presence of powered joints).
In the Reply Brief, Appellants do not challenge the finding that these
other structures would, in the alternative, provide rotational movement (Ans.
5); rather Appellants note that "neither the [S]pecification nor the [F]igures
of the present [ A Jpplication suggest the 'linear hydraulic actuators
connecting links on either side of a joint, via pneumatic artificial muscles,
via Bowden cables' or any of the other techniques suggested by the
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Examiner." Reply Br. 3 (quoting Ans. 5). This argument is not persuasive,
however, because whether the alternative structures are supported by the
written description is not the issue. Here, the unchallenged finding that the
alternative structures would provide the disclosed rotational movement at
the joints undermines Appellants' assertion that powered joints are
inherently (i.e., necessarily) disclosed as providing the rotational movement.
Cf Appeal Br. 6 ("A person skilled in the art would reasonably conclude
from the description of the robot arm that it includes powered joints.").
Moreover, even assuming that the Specification did support the view
that powered joints provide the disclosed rotational movement, that would
not necessarily demonstrate support for the By Powering limitation, which
recites "said safety module stopping said robot arm by powering joints of
said robot arm." Appeal Br. 10 (Claims App.) (emphasis added). On this
issue, the Examiner highlights certain aspects of U.S. Patent Publication No.
2004/0111183 Al to Sutherland, which, according to the Examiner,
discloses "a robot which uses servo motors, which are powered for their
normal operation," however, "Sutherland does not teach powering the joints
during an emergency shutdown." Ans. 8. The Examiner states that, instead
of "powering the joints during an emergency shutdown," Sutherland
"teaches disabling power to a braking system which then actuates normally
actuated brakes to stop the robotic arm at paragraph [0075]." Id. According
to the Examiner, "[t]his further demonstrates that even if one of ordinary
skill would recognize that the present application utilizes powered joints, it
would still not be inherent that the safety module stops the robot arm by
powering the joints." Id. In the Reply Brief, Appellants do not address this
discussion by the Examiner. We agree with the Examiner's position on this
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issue. For example, paragraph 69 (relied on by Appellants (Appeal Br. 6)),
discloses that "[ s ]afety module 134 monitors the system status and stops
robot arm 120 when a critical situation is detected, such as an emergency
stop, software failure, or collision with an obstacle, for example," but does
not describe how the disclosed stoppage occurs. For these reasons, we do
not agree with Appellants that the identified aspects of the Specification
demonstrate that the disclosed "robot arm" necessarily includes "powered
joints." Appeal Br. 6
We tum now to Appellants' second contention-that, in paragraph 65,
"the skilled person would find explicit teaching that movement of the robot
arm along different degrees of freedom can therefore be restricted to one or
two degrees of freedom." Appeal Br. 7. We agree with Appellants that
paragraph 65 teaches, for example, "restrict[ing] movement of robot arm
120 to a plane or axis." Spec. ,r 65; see also Ans. 7 (stating that "the
application as filed does disclose that the robot may be restricted to
movement in a plane or along an axis, or the robot may be stopped to hold a
guiding tool in place in a cooperative mode during normal operation of the
robot"). Appellants have not adequately explained, however, why the
relevant teachings demonstrate that, for example, the disclosed "restrict[ ed]
movements of robot arm 120" are necessarily "by powering joints of said
robot arm" as required by the By Powering limitation. See Ans. 7 (stating
that "[ t ]he application does not disclose what means are used to restrict the
movement of the robot or to stop the robot"), 6 (stating that "paragraph
[0065]'s teaching that the cooperative mode's restricting movement of the
robot arm to a plane or an axis is not a teaching of 'said safety module
stopping said robot arm by powering joints of said robot arm throughout a
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blocked state to block said robot arm from moving at a software failure in
the control unit' as is claimed").
Overall, as to Appellants' position that the By Powering limitation is
inherently disclosed, we agree with the Examiner that because "the
application as filed does not disclose how the safety module stops said robot
arm, and the prior art discloses other ways of doing this, the application as
filed does not make clear that the limitation at issue is necessarily present."
Ans. 9.
Appellants also appear to assert that the By Powering limitation is
implicitly disclosed. See, e.g., Appeal Br. 8 ( discussing implicit disclosure
in the context of the written description requirement), Reply Br. 4 (same).
Appellants note that the MPEP provides that "[i]nformation which is well
known in the art need not be described in detail in the specification." MPEP
§ 2163(II)(A)(2), quoted at Appeal Br. 8. Appellants contend that "[t]his
applies to the inherent knowledge that the skilled person would have of the
robot arm and the presence of its powered joints." Appeal Br. 8.
The Examiner responds that "the evidence of record does not support
that the limitation at issue is well known in the art, and thus need not be
described in detail in the [S]pecification." Ans. 10.
We agree with the Examiner on this issue. Here, Appellants do not
provide evidence-via testimony or other means----of the asserted
understanding of one of ordinary skill in the art; rather, Appellants only
provide attorney argument on the issue. See In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974) ("Attorney's argument in a brief cannot take the place of
evidence."). For example, Appellants do not provide evidence that one of
ordinary skill in the art at the time of the invention would have understood,
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upon reading the Specification, that electric motors must be used to move the
joints and that the disclosed "safety module" must operate as required in the
By Powering limitation. See also Tr. 6: 10-17 ( acknowledging that
Appellants did not raise the argument that, "in the field of surgical robots[,]
no one uses ... other than electrical power").
Because the Examiner has found that the Specification fails to
describe a "safety module stopping said robot arm by powering joints of said
robot arm" as recited, and Appellants have not shown error in this finding,
we sustain the rejection of claim 1 as lacking written description support.
Claims 3-10, 12-15, 17, 19-21, and 24--28 fall with claim 1.
DECISION
We affirm the decision to reject claims 1, 3-10, 12-15, 17, 19-21, and
24--28 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement.
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). See 37 C.F.R.
§ 1.136(a)(l)(iv); 37 C.F.R. § 4I.50(f).
AFFIRMED
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