Ex Parte Scott et al

Board of Patent Appeals and Interferences

Jul 24, 2012

11238698 (B.P.A.I. Jul. 24, 2012)

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

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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
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Application 11/238,698

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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.

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Application 11/238,698

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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
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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
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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.
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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.

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Application 11/238,698

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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
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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