13170690 (P.T.A.B. Mar. 27, 2017)

Ex Parte Neff

Patent Trial and Appeal BoardMar 27, 2017

13170690 (P.T.A.B. Mar. 27, 2017)

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. 13/170,690 06/28/2011 Thomas Neff FUBO-ll 4289 26875 7590 03/29/2017 WOOD, HERRON & EVANS, LLP 2700 CAREW TOWER 441 VINE STREET CINCINNATI, OH 45202 EXAMINER CAVERN, JONATHAN ART UNIT PAPER NUMBER 3737 NOTIFICATION DATE DELIVERY MODE 03/29/2017 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): usptodock@whe-law.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS NEFF Appeal 2014-009142 Application 13/170,690 Technology Center 3700 Before MICHAEL L. HOELTER, JILL D. HILL, and ERIC C. JESCHKE, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Thomas Neff (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s final decision rejecting claims 10—23. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2014-009142 Application 13/170,690 BACKGROUND Independent claims 10 and 20 are pending. Independent claim 10, reproduced below, illustrates the claimed invention, with the key disputed phrase italicized. 1. A method for operating a medical robot that includes a robot arm comprising a plurality of links and drives configured for moving the links, a control device for activating the drives, and a sound generating device coupled to the robot arm and configured to apply high-intensity focused ultrasound to a living organism, the method comprising: moving the robot arm so as to position the sound generating device on a surface of the living organism; moving the robot arm so that the sound generating device moves along a specified path while simultaneously applying high-intensity focused ultrasound to treat tissue with the high- intensity focused ultrasound; and simultaneously with moving the robot arm along the specified path, operating the drives of the robot arm utilizing force control such that the sound generating device is pressed against the living organism with a specified force while the sound generating device is moving along the specified path. REJECTIONS I. Claims 10, 12—17, 20, and 21 stand rejected under 35 U.S.C. § 102(b) as anticipated by Quistgaard (US 2005/0154431 Al, pub. July 14, 2005). Final Act. 2. II. Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Quistgaard. Id. at 3. III. Claims 18, 19, 22, and 23 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Quistgaard and Sumanaweera (US 2008/0021317 Al, pub. Jan. 24, 2008). Id. at 4. 2 Appeal 2014-009142 Application 13/170,690 OPINION Rejection I Although the recitations of independent method claim 10 and independent apparatus claim 20 are discussed separately in Appellant’s arguments, Appellant argues claims 10, 12—17, 20, and 21 as a group. Appeal Br. 6—9. We select claim 10 as representative. See 37 C.F.R. § 41.37(c)(l)(iv). Claims 12—17, 20, and 21 stand or fall with claim 10. The Examiner finds that Quistgaard discloses the limitations of claim 10 including, while moving a robot arm along a specified path, moving the robot arm such that a scan head thereon is pressed against patient tissue with a specified force. Final Act. 2 (citing Quistgaard Tflf 70-71). Appellant argues that Quistgaard does not explicitly disclose its scan head being pressed against patient tissue with a specified force, and that therefore the Examiner must be making an inherency finding, which requires evidence making 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. 6, 8. The Examiner responds that the issue is not whether the specified force is inherent in Quistgaard; rather “the issue is in regards to the definition of the term ‘specified force.’” Ans. 2. The Examiner explains that Quistgaard includes a manual embodiment (where contact force is maintained manually) and an automated embodiment (where contact force is maintained by a controller). Id. at 3. The Examiner’s findings are based on Quistgaard’s automated embodiment, and the knowledge of those skilled in the art that a scan head must be maintained in contact with a patient’s skin to function properly, but must not be pressed so hard that the scan head causes 3 Appeal 2014-009142 Application 13/170,690 damage. Id. (citing Quistgaard H 71—72). According to the Examiner, this disclosure of Quistgaard “refers to a ‘specified force’ which must be maintained, that is a force which is strong enough to be in contact with the patient, but not too strong so as to cause damage.” Id. Appellant argues that “[n]ot exceeding a maximum force is not the same as maintaining a specified force.” Appeal Br. 9. While Quistgaard’s applied force can be “anywhere in the range of values below the maximum value,” maintaining a specified force requires keeping the applied force at the desired or “specified” value. Id. Appellant thus argues that maintaining an applied force within a specified range—defined by contact existing but not exceeding a maximum value—is different than maintaining a specified force. Id. In other words, a working range is not the same as a single specified value. The Examiner responds that the claim term “specified force” need not be a single value or constant. Ans. 3. To support this position, the Examiner notes that claim 11 recites that the specified force is within the range of “between 10N and 50 N.” Id. The Examiner further notes that Appellant’s own Specification supports the Examiner’s position that the claimed “specified value” need not be a single constant value, in promoting pressing the scan head to the patient with a force such that the scan head “is in contact with the patient’s skin but not too strong so as to cause damage is described.” Id. at 4 (citing Spec. 112). We must first construe the meaning of “a specified force.” During patent examination, the pending claims must be “given their broadest reasonable interpretation consistent with the specification.” In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984). Appellant’s Specification 4 Appeal 2014-009142 Application 13/170,690 provides little guidance regarding the metes and bounds of the term “a specified force,” other than its value being “preferably between 10N and 50N.” Spec. 3. Nowhere in Appellant’s Specification is the term “specified force” limited to a constant force or a predetermined force. Quistgaard’s scan/therapy head is “placed against the patient skin” and exerts a pressure thereon. Quistgaard^ 70. The robot arm, to which the scan/therapy head is attached, can include “a safety limitation” thereon to prevent patient injury. Id. To accomplish this safety limitation, Quistgaard’s robotic arm’s force generating mechanism includes a “load sensing device” that both (1) keeps the scan/therapy head in contact with the patient skin, and (2) prevents patient injury that may be caused by pressure against the skin. Id. Tflf 70-71. Alternatively, and for the same purpose, Quistgaard’s robotic arm can include a “counter balance device” that counters a portion of the scan/therapy head weight “while allowing sufficient weight to transfer through the therapy head to keep the therapy head engaged with the skin surface.” Id. 171. We discern no reasonable construction of the term “a specified force” that causes the term to exclude the force applied by Quistgaard’s scan/therapy head to the patient. Further, because the reasonable construction of the term “a specified force” does not include the force being constant or predetermined, we do not agree with Appellant’s contention that the Examiner’s findings rely on inherency. We sustain the rejection of claims 10, 12—17, 20, and 21 as anticipated by Quistgaard. 5 Appeal 2014-009142 Application 13/170,690 Rejections II and II Appellant makes no argument that claims 11, 18, 19, 20, and 23 would be patentable if independent claims 10 and 20 are anticipated by Quistgaard. Appeal Br. 10-11. DECISION We AFFIRM the rejection of claims 10, 12—17, 20, and 21 under 35 U.S.C. § 102(b) as anticipated by Quistgaard. We AFFIRM the rejection of claim 11 under 35 U.S.C. § 103(a) as unpatentable over Quistgaard. We AFFIRM the rejection of claims 18, 19, 22, and 23 under 35 U.S.C. § 103(a) as unpatentable over Quistgaard and Sumanaweera. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 6