12031642 (P.T.A.B. Oct. 8, 2014)

Ex Parte Nelson et al

Patent Trial and Appeal BoardOct 8, 2014

12031642 (P.T.A.B. Oct. 8, 2014)

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. 12/031,642 02/14/2008 Donald Douglas Nelson IMD294 2935 34300 7590 10/09/2014 PATENT DEPARTMENT (51851) KILPATRICK TOWNSEND & STOCKTON LLP 1001 WEST FOURTH STREET WINSTON-SALEM, NC 27101 EXAMINER GISHNOCK, NIKOLAI A ART UNIT PAPER NUMBER 3715 MAIL DATE DELIVERY MODE 10/09/2014 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 DONALD DOUGLAS NELSON, MILAN IKITS, CHIH-HAO HO, and KEVIN KUNKLER ____________ Appeal 2012-0098021 Application 12/031,6422 Technology Center 3700 ____________ Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and JAMES A. WORTH, Administrative Patent Judges. WORTH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–15. We have jurisdiction under 35 U.S.C. §§ 134 and 6(b). We REVERSE. 1 Our decision refers to the Appellants’ Appeal Brief (“App. Br.,” filed Feb. 17, 2012) and Reply Brief (“Reply Br.,” filed May 29, 2012) and the Examiner’s Answer (“Ans.,” mailed Mar. 28, 2012). 2 According to Appellants, the real party in interest is Immersion Medical, Inc., a subsidiary of Immersion Corporation (App. Br. 3). Appeal 2012-009802 Application 12/031,642 2 Introduction Appellants’ disclosure relates to a method, system, and non-transitory computer-readable medium for knot detection (Spec. ¶¶ 1, 4). The Specification discloses algorithms and steps for determining a winding direction, a half-hitch, and a knot (id. at ¶¶ 32–33, 35, 39; Fig. 2). Claims 1, 8, and 12 are the independent claims on appeal. Claim 1, reproduced below, with bracketing added, is representative of the subject matter on appeal. 1. A method, comprising: [a] receiving, by a processor, a first wrapping signal indicating a first wrapping of a simulated thread around a second tool to create a first loop; [b] determining, by a processor, a first winding direction based at least in part on the first wrapping signal; [c] receiving, by a processor, a first tightening signal indicating a pulling of a first end of the simulated thread through the first loop; [d] determining, by a processor, a first half-hitch based at least in part on the first winding direction and the first tightening signal; and [e] outputting, by a processor, the first half-hitch. Appeal Br. 19, Claims App. Rejections on Appeal Claims 1–15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kurenov (US 2010/0291520 A1, pub. Nov. 18, 2010) and Mizuno (US 5,876,325, iss. Mar. 2, 1999). OPINION Appellants group claims 1–15 together, and argue for patentability of the group based on claim 1 (App. Br. 12–15). Appellants argue that the Appeal 2012-009802 Application 12/031,642 3 Examiner failed to make a prima facie case with respect to limitations [b], [d], and [e]. Appellants argue these limitations together (App. Br. 12–18; Reply Br. 2). Specifically, Appellants argue that depicting or displaying the knot on the computer screen, as in both Mizuno and Kurenov, is not the same as “determining” the winding direction or “determining” the half-hitch based on the winding direction, as recited by claim 1 (App. Br. 14, 17; Reply Br. 2). The Examiner responds that “[i]t would have been apparent to one of ordinary skill from the figures in the prior art that a half-hitch is being output to the screen by the processor” (Ans. 13). The Examiner essentially finds that the surgeon is determining the knot based on the computer display (Ans. 8, 13), whereas claim 1 requires “determining, by the processor.” As to whether the act of displaying the image of the knot by the computer is within the broadest reasonable interpretation of “determining” the knot, we note that “to determine” is most commonly used in the sense of “to ascertain” or “to decide” (see, e.g., THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE, retrieved from http://search.credoreference.com/content/entry/hmdictenglang/determine/0). We conclude that to display the knot does not fit within this sense of “to determine” the knot. Appellants further point out that the prior art devices do not “determine” the knot in the mathematical sense of fixing or setting the bounds of the knot because the surgeons “determine” the knot (in this sense) before it is detected by the sensors (App. Br. 17 (citing Mizuno, col. 18, ll. 39–41)). We agree. We, therefore, conclude that displaying is not within the broadest reasonable interpretation of “determining,” as recited by claim 1. Appeal 2012-009802 Application 12/031,642 4 Accordingly, we do not sustain the rejection of claim 1 under 35 U.S.C. § 103(a) as being unpatentable over Kurenov and Mizuno. We do not sustain the rejection of claims 2–7, which depend from claim 1, for the same reasons. Independent claims 8 and 12 contain substantially identical language to claim 1. We, therefore, reverse the rejections of independent claims 8 and 12 for similar reasons, as above. The rejections of claims 9–11 and 13–15, which depend from claims 8 and 12, respectively, fall for similar reasons. DECISION The decision of the Examiner to reject claims 1–15 is reversed.3 REVERSED Klh 3 Should there be further prosecution of this application (including any review for allowance), the Examiner may wish to review the claims for compliance under 35 U.S.C. § 101 in light of the recently issued preliminary examination instructions on patent eligible subject matter. See “Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.,” Memorandum to the Examining Corps, June 25, 2014.