Ex Parte Scott et alDownload PDFBoard of Patent Appeals and InterferencesJul 24, 201211238698 (B.P.A.I. Jul. 24, 2012) Copy Citation 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. 11/238,698 09/28/2005 Manzo Scott 017516-009330US 8780 51947 7590 07/24/2012 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 07/24/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte MANZO SCOTT and LISA HEATON __________ Appeal 2011-004089 Application 11/238,698 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 indefiniteness, anticipation and obviousness. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2011-004089 Application 11/238,698 2 STATEMENT OF CASE 1. An electrosurgical end effector cartridge to detachably couple to a robotic surgical instrument of a robotic surgical system, the electrosurgical end effector cartridge comprising: a first moveable end effector having a jaw portion and a base portion; a first latch coupled to the first moveable end effector near the base portion, the first latch is flexible to detachably couple the first moveable end effector to a first receptacle of the robotic surgical instrument; a second moveable end effector having a jaw portion and a base portion; and a second latch coupled to the second moveable end effector near the base portion, the second latch is flexible to detachably couple the second moveable end effector to a second receptacle of the robotic surgical instrument. 31. The electrosurgical end effector cartridge of claim 1, wherein each of the first latch and the second latch further includes an extension portion adapted to extend from the first receptacle and the second receptacle of the robotic surgical instrument, the extension portion adapted to flex each of the first latch and the second latch to decouple the respective retention slots from the respective catches of the first receptacle and the second receptacle of the robotic surgical instrument. 39. The electrosurgical end effector cartridge of claim 38, wherein the first receptacle or the second receptacle of the robotic surgical instrument is actuated by a motor to respectively move the first moveable end effector or the second moveable end effector. Cited References Epstein US 3,762,019 Oct. 2, 1973 Kaiser et al. US 6,006,633 Dec. 28, 1999 Hung et al. US 6,108,845 Aug. 29, 2000 Julian et al. US 6,309,397 B1 Oct. 30, 2001 Appeal 2011-004089 Application 11/238,698 3 Grounds of Rejection Claims 31 and 39 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Claims 1, 2, 8, 9, 30, 31, 37, and 38 are rejected under 35 U.S.C. § 102(b) as being anticipated by Hung et al. Claim 3 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Hung et al in view of Epstein. Claims 4, 10 and 12 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Hung et al in view of Kaiser. Claims 1, 2, 8-12, and 38-39 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Julian et al. in view of Hung. Claim 3 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Julian et al in view of Hung. Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Julian et al in view of Hung et al., further in view of Kaiser. FINDINGS OF FACT The Examiner’s findings of fact are set forth in the Answer at pages 3- 15. Rejection 1 Claims 31 and 39 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Appeal 2011-004089 Application 11/238,698 4 Discussion ISSUE The Examiner concludes that Regarding claim 31, the examiner is unsure if the extension portion is part of the latch or the receptacle. As currently claimed it seems that the extension portion is part of both the latch and receptacle which is unclear since the latch is detachably coupled to the receptacle. For the purpose of examining this claim the examiner is interpreting the claim to read “each of the first latch and second latch further includes an extension portion adapted to extend to the first receptacle and the second receptacle of the robotic surgical instrument.” Regarding claim 39, the scope of the claim is unclear in view of the preamble and earlier claims which recite that the device is for use with a robotic surgical instrument however the robotic surgical instrument is never previously positively recited. Claim 39 seems to positively recite the robotic surgical instrument and therefore there is insufficient antecedent basis for the limitation of 'the robotic surgical instrument' in the claim. (Ans. 4.) Referring to Specification Figures 5 and 7A Appellants argue that The electrosurgical end effector cartridge 414 includes two movable end effectors 60lA- 60lB; a pivot fastener 602; a first spring latch 604A; and a second spring latch 604B. Each of the spring latches respectively include retention slots 606A- 606B and extension portions. The function of the extension portions is better illustrated in Figure 7A. Applicant's Figure 7A (shown below) illustrates the extension portions 734 of the spring latches 604A-604B extending out from the receptacles of the robotic surgical instrument. To dismount the pluggable moveable end effector cartridge 414, the spring latches 604A- 604B are squeezed Appeal 2011-004089 Application 11/238,698 5 together at the extension portions 734 that extend from the receptacles of the robotic surgical instrument. This flexes each of the latches 604A-604B to release the retention slots 606A- 606B of the spring latches from the respective catches 504A- 504B of the receptacles. (App. Br. 13-14.) Appellants further argue that it is clear from Applicant’s Figures 5 and 7A that the limitation of the extension portion is part of each latch as recited in claim 31 and not part of the first or second receptacle. (Id. at 15.) The issue is: Are the claims indefinite for the reasons stated by the Examiner? PRINCIPLES OF LAW “The test for definiteness is whether one skilled in the art would understand the bounds of the claim when read in light of the specification.” Miles Laboratories, Inc. v. Shandon, Inc., 997 F.2d 870, 875 (Fed. Cir. 1993). Claims are in compliance with 35 U.S.C. § 112, second paragraph, if “the claims, read in light of the specification, reasonably apprise those skilled in the art both of the utilization and scope of the invention, and if the language is as precise as the subject matter permits.” Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1385 (Fed. Cir. 1986). ANALYSIS Claim 31 The test for definiteness is whether one skilled in the art would understand the bounds of the claim when read in light of the Specification. Upon review of the Specification and its Figures 5 and 7A, we agree with Appeal 2011-004089 Application 11/238,698 6 Appellants that one of ordinary skill in the art would have understood that the limitation of the extension portion is part of each latch as recited in claim 31 and not part of the first or second receptacle. The indefiniteness rejection of claim 31 is reversed. Claim 39 Claim 39 is ultimately dependent upon claim 1, which recites a “a robotic surgical instrument of a robotic surgical system” in the preamble. Thus, we find antecedent basis for “the robotic surgical instrument” language in claim 39, in claim 1 from which it depends. The indefiniteness rejection of claim 39 is reversed. Remaining Rejections ISSUE The Examiner contends that Hung et al teaches that the latch (22) is flexible because it includes extension (221) with the depression (24) for detachably coupling the first moveable end effect to a first receptacle (30) by interlocking with element 11. In order for element 11 to engage with the latch (22) the latch must be flexible in order to allow for easy and quick attachment (Col. 2, lines 36-42). Hung et al teaches that the latch (22) includes element 221 which is “of a less size” than element 22 (Col. 2, line 9) which therefore would allow for it flex to receive element 11 (Figure 1). Also, Hung et al does not teach that element 11 is a thin tab of metal, as asserted by the applicant on page 8 of the appeal brief. The examiner respectfully disagrees with the applicant's conclusion that element 11 will be more likely to flex. Appeal 2011-004089 Application 11/238,698 7 The examiner maintains that the term flexible is a broad term which is defined as capable of being bent. The term 'flexible' is a relative term and while the examiner agrees that while anything can be bent if enough force is applied, Hung specifically teaches that the latch (22) includes element 221 which is "of a less size" (Col. 2, line 9) as shown in Figure 1. Hung teaches that the latch (22) includes element 221, which is "of a less size" which would therefore make it flexible especially with the depression (24), which is formed within element 221 (Col. 2, lines 5-10; Figure 1). (Ans. 15-16.) Appellants contend that the Examiner has not proven the existence of a flexible latch coupled to moveable end effectors in Hung. (App. Br. 8.) More specifically, Appellants contend that First, Appellant wishes to clarify that Hung refers to element 11 in Hung’s Figure 5 as a latch 11. Second, Hung never states that any part of the Hung’s tool is flexible. It is possible that Hung’s latch 11 rotates into position through an arc so that no part flexes. Third, if a part must flex, then Hung’s latch 11 would flex and not Hung’s leg 221 or extension 22. Hung’s latch 11 is a thin tab of metal supported only on one side. Hung’s leg 221 on the other hand is a part of Hung’s extension 22 which is the fulcrum for the pliers. Hung’s extension 22 and leg 221 are solidly shaped and likely made of rigid metal. Therefore, if any part must flex, Hung’s latch 11 will more likely flex and not Hung’s leg 221 or Hung’s extension 22. (Id. at 7-8.) The dispositive issue for each of the rejections before us is whether Hung discloses a flexible latch. Appeal 2011-004089 Application 11/238,698 8 PRINCIPLES OF LAW 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. Moreover, “obviousness requires a suggestion of all limitations in a claim.” CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)). ANALYSIS We do not find that the Examiner has provided sufficient evidence to support a prima facie case of anticipation or obviousness. The Examiner argues that element 22 in Figure 1 of Hung is a flexible latch. We agree with Appellants that Hung’s extension 22 and leg 221(Fig. 1) are solidly Appeal 2011-004089 Application 11/238,698 9 shaped. Hung’s disclosure provides no specific indication that the extension and leg are flexible. Thus, the Examiner has not provided sufficient evidence that Hung discloses a flexible latch. CONCLUSION OF LAW The cited references do not support the Examiner’s anticipation and obviousness rejections as the Examiner has not provided sufficient evidence that Hung discloses a flexible latch. The anticipation and obviousness rejections are reversed. The claim indefiniteness rejections are also reversed. REVERSED cdc Copy with citationCopy as parenthetical citation