ENDOMASTER PTE LTD et al.

Patent Trials and Appeals Board

Dec 2, 2021

2021001782 (P.T.A.B. Dec. 2, 2021)

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.
15/127,397 09/19/2016 Tomonori Yamamoto AXIS.4309 4636
24943 7590 12/02/2021
INTELLECTUAL PROPERTY LAW GROUP LLP
1871 THE ALAMEDA, SUITE 250
SAN JOSE, CA 95126
EXAMINER
WU, PAMELA F
ART UNIT PAPER NUMBER
3795
NOTIFICATION DATE DELIVERY MODE
12/02/2021 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):
pt_docket@iplg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOMONORI YAMAMOTO, ISAAC DAVID PENNY,
CHRISTOPHER LEE SHIH HAO SAM SOON, HOANG-HA TRAN,
TAE ZAR LWIN, TSUN EN TAN, NAOYUKI NAITO,
TAKAHIRO KOBAYASHI, and MAKIO OISHI
Appeal 2021-001782
Application 15/127,397
Technology Center 3700
Before CARL M. DEFRANCO, LISA M. GUIJT, and ERIC C. JESCHKE,
Administrative Patent Judges.

DEFRANCO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 7, 8, 11, and 39–43, which are the only
claims pending. Claims 1–6, 9, 10, and 12–38 are cancelled. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies EndoMaster Pte. Ltd. and Hoya Corporation
as the real parties in interest. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claimed subject matter relates to a tendon-driven, robotic
endoscopic instrument. Spec. 1:4–15. Of the pending claims, claims 7 and
40 are independent. Claim 7, reproduced below, is illustrative:
7. A master-slave endoscopy system comprising:
an endoscope having a main body from which a flexible
elongate shaft extends, the flexible elongate shaft spanning a
length between a proximal end and a distal end thereof, the
flexible elongate shaft having a set of channels disposed therein
along its length into which a set of flexible robotically driven
actuation assemblies are insertable;
the set of flexible robotically driven actuation assemblies
carried by the set of channels, each flexible robotically driven
actuation assembly including:
a robotic arm having a robotically driven end
effector coupled thereto; and
a plurality of tendons coupled to the robotic arm
and configured for controlling motion of the robotic arm
and its end effector in accordance with a predetermined
number of degrees of freedom (DOF), wherein two
tendons of the plurality of tendons control each DOF of
the robotic arm;
a set of actuators corresponding to each flexible
robotically driven actuation assembly, each actuator of the set
of actuators controllable by way of a set of input devices with
which a surgeon can interact, each actuator of the set of
actuators configured for selectively applying torque to a tendon
of its corresponding flexible robotically driven actuation
assembly in response to surgeon input directed to the set of
input devices, wherein two actuators of the set of actuators
control each DOF of the robotic arm; and
a processing unit configured for performing a tendon
pretensioning or retensioning procedure to automatically
establish a level of tension in the plurality of tendons of each
flexible robotically driven actuation assembly by way of
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applying torque to each actuator of the set of actuators of the
flexible robotically driven actuation assembly in accordance
with stored torque parameters associated with a representative
tortuosity configuration corresponding to a tortuosity of an
expected path along which the flexible robotically driven
actuation assembly is routed.

Appeal Br. 19–20 (Claims App.) (emphasis added).
REJECTIONS ON APPEAL
1. Claims 7, 8, 11, and 39–43 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Miyamoto (US 2010/0081874 A1, published Apr. 1,
2010) and Roelle (US 2011/0319714 A1, published Dec. 29, 2011).
2. Claims 7, 8, 11, and 39 stand rejected as being unpatentable over
Miyamoto and Wallace (US 2013/0035537 A1, published Feb. 7, 2013).
ANALYSIS
A. Obvious Over Miyamoto and Roelle (Claims 7, 8, 11, and 39–43)
1. Claims 7, 8, 11, and 39
For this rejection, Appellant argues claims 7, 8, 11, and 39 separately
from claims 40–43. See Appeal Br. 10–19. We begin with independent
claim 7. The Examiner finds that Miyamoto discloses substantially all the
claim elements except for the “processing unit configured for performing a
tendon pretensioning or retensioning procedure . . . in accordance with
stored torque parameters associated with a representative tortuosity
configuration.” Final Act. 6–8. Pointing to Roelle’s teaching of a shapeable
catheter equipped with such a processing unit (i.e., master computer 400,
instrument drive controller 422, position detection module 424, 434, and
associated hardware/software), the Examiner concludes it would have been
obvious to modify the endoscopy system of Miyamoto with the processing
unit of Roelle because doing so would allow for automatic/computerized
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control of pretensioning or active tensioning of the tendons in order to
position the shapeable instrument along a desired path. See id. at 8–9 (citing
Roelle ¶¶ 149, 162, 179, 186–188, 191, 193, 196–197, Figs. 22, 24, 34).
At the outset, we note that Appellant does not dispute the Examiner’s
findings that the proposed combination of Miyamoto and Roelle teaches a
robotic arm having a plurality of tendons for controlling the robotic arm’s
motion, nor does Appellant dispute that the proposed combination teaches a
processing unit configured to perform pretensioning or retensioning of the
robotic arm’s tendons by means of torque applied by actuators on the robotic
arm. See Appeal Br. 9–10. Rather, Appellant’s sole argument is that the
proposed combination fails to teach that the processing unit performs such
tensioning “in accordance with stored torque parameters associated with a
representative tortuosity configuration corresponding to a tortuosity of an
expected path along which the [robotic arm] is routed,” as required by
claim 7. Id. at 10–11. According to Appellant, the proposed combination
“teaches away” from using stored torque parameters associated with a path’s
expected tortuosity configuration because Roelle, upon which the Examiner
relies for this feature, is directed to “measuring pretension offsets and
correcting the pretension offsets by position deviation.” Appeal Br. 10–11
(citing Roelle ¶¶ 281–287). Appellant also takes issue with the Examiner’s
finding that Roelle’s teaching of using “kinematics” to control tensioning
along the desired path of the catheter equates to using stored torque
parameters. Id. at 12–13.
Appellant does not persuade us of error in the Examiner’s findings
and conclusions. As the Examiner fully explains, Roelle teaches using
stored torque parameters to control tensioning when comparing the actual
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configuration of the catheter to a “desired configuration.” Ans. 16–17
(citing Roelle ¶¶ 235, 286). More specifically, Roelle’s catheter includes a
“shape sensing system” that measures the current configuration or shape of
the catheter (including angle, curvature, profile, and torsion) for feedback
into a controller. Roelle ¶¶ 235, 286. “This measured configuration is then
compared to a desired configuration[,] [w]here the desired configuration is
either modeled data or a known ideal configuration such that a differential
between the real and desired shape can be quantified.” Id. ¶ 235. The
difference between the measured configuration and the desired configuration
(i.e., expected path) of the catheter is used “to produce a configuration error,
error signal, or signal that is then applied to a feed-back controller . . . to
modify the configuration command sent to a feed forward control element
that effects a response in the shapeable instrument or catheter.” Id.
Those passages provide ample support for the Examiner’s finding that
Roelle’s disclosure of controlling tendon tensioning based on a “desired
configuration” consisting of “either modeled data or a known ideal
configuration” meets claim 7’s requirement of tendon tensioning “in
accordance with stored torque parameters associated with a representative
tortuosity configuration corresponding to a tortuosity of an expected path” of
the robotic arm. One skilled in the art would understand the “modeled data”
or “known ideal configuration” is necessarily “stored” data given that the
controller compares the actual configuration of the catheter to the desired
configuration in order to effect a response in the catheter.
In the end, Appellant does not apprise us of error in the Examiner’s
findings and reasoning for why the proposed combination of Miyamoto and
Roelle satisfies the disputed limitation of independent claim 7. Thus, we
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sustain the Examiner’s obviousness rejection of claim 7, as well as that of
dependent claims 8, 11, and 39, which are not argued separately and fall
with claim 7. See 37 C.F.R. § 41.37(c)(1)(iv).
2. Claims 40–43
Independent claim 40 recites essentially the same elements as claim 7,
but instead of reciting that the processing unit performs tensioning of the
tendon “in accordance with stored torque parameters associated with a
representative tortuosity configuration,” claim 40 recites that the processing
unit performs such tensioning by “dynamically determining a no-slack
transition point between a slack condition and a no-slack condition of the
tendon; and applying torque to one or more actuators of the set of actuators
corresponding to the tendon at a torque level defined by the no-slack
transition point determined therefor.” Appeal Br. 22 (Claims App).
The Examiner rejects claim 40 on the same basis as claim 7, finding
that Roelle’s processing unit meets the claim language because it uses
“forward and inverse kinematics” to control tendon tensioning in both a
slack and no-slack conditions. See Final Act. 13–14 (citing Roelle ¶¶ 179,
187–188, 191, 193, 196–197). In contesting the rejection of claim 40,
Appellant argues in conclusory fashion that the proposed combination
“teaches away” from the claimed processing unit because “Roelle teaches a
processing unit which uses forward and inverse kinematics to perform
calculations related to the tip position of the catheter based on the meaning
of forward/inverse kinematics to one skilled in the art, not for dynamically
determining a no-slack transition point between a slack condition and a no-
slack condition of the tendon as called for in Claim 40.” Appeal Br. 15
(citing Roelle ¶ 187).
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Appellant does not persuade us of error in the Examiner’s rejection.
That is because Appellant never meaningfully explains how Roelle’s use of
kinematics to control tendon tensioning fails to satisfy the disputed claim
language. Although Appellant avers that “the meaning of forward/inverse
kinematics to one skilled in the art” is different from the claimed
determination of a no-slack transition point of the tendon, Appellant fails to
inform us as to the extent of that difference. In contrast, the Examiner’s
findings and conclusions find support in Roelle’s express disclosure that
kinematics is used for “managing tension control in various guide instrument
systems,” more specifically, “to reel in bits of slack at certain transition
points in catheter bending.” Roelle ¶¶ 159, 162, 185–186. Indeed,
Appellant seemingly admits that Roelle meets the disputed language of
claim 40 when it acknowledges that “Roelle teaches that pre-tensioning is
the process of finding out how much slack is in each tendon and removing
it.” Appeal Br. 11 (citing Roelle ¶ 282). Thus, for all of the above reasons,
we sustain the Examiner’s rejection of claim 40, as well as that of dependent
claims 41–43, which are not argued separately and fall with claim 40. See
37 C.F.R. § 41.37(c)(1)(iv).
B. Obvious Over Miyamoto and Wallace (Claims 7, 8, 11, and 39)
Alternatively, the Examiner again rejects claims 7, 8, 11, and 39 as
obvious over Miyamoto while replacing the teaching of Roelle with that of
Wallace. Final Act. 15–19. According to the Examiner, Wallace’s teaching
of “offsets for each pullwire to account for manufacturing tolerances”
corresponds to the claimed “stored torque parameters” and that the “initial
shape of the shaft of [Wallace’s] catheter . . . would be the expect[ed]
path/shape.” Id. at 18. We disagree. Although the storage of manufacturing
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tolerances may equate to the claimed “stored torque parameters,” the
Examiner does not adequately explain how manufacturing tolerances used
for initializing or calibrating the shape of the catheter before its first use
relate to “an expected path along which the [catheter] is routed,” as called
for by claim 7. In our view, one skilled in the art would understood that
manufacturing tolerances relate simply to the initial shape of the catheter
before it is routed along a tortuous path through the body. See Appeal Br. 17
(citing Roelle ¶¶ 191–194). Thus, we do not sustain the Examiner’s
rejection based on Miyamoto and Wallace.
CONCLUSION
Claims
Rejected
35
U.S.C. §
Basis Affirmed Reversed
7, 8, 11,
39–43
103 Miyamoto, Roelle 7, 8, 11,
39–43

7, 8, 11,
39
103 Miyamoto, Wallace 7, 8, 11,
39
Overall
Outcome
7, 8, 11,
39–43

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED