Ex Parte Otto et al

Patent Trials and Appeals Board

Apr 11, 2019

13725348 - (D) (P.T.A.B. Apr. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/725,348 12/21/2012
104696 7590 04/15/2019
Foley & Lardner LLP
Suite 600
3000 K Street N.W.
Washington, DC 20007-5109
FIRST NAMED INVENTOR
Jason Otto
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
051892-0621 9892
EXAMINER
HANNA, SAMUEL SALEEB
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
04/15/2019 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON OTTO, RADU LORGULESCU, CHRIS LIGHTCAP,
BRIAN SCHMITZ, JASON WOJCIK, and CARINNE CECILE GRANCHI
Appeal2018-001679
Application 13/725,348
Technology Center 3700
Before MICHELLE R. OSINSKI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-7, 9, 13, and 14. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 MAKO Surgical Corp. is the Applicant and is identified as the real party in
interest. Appeal Br. 2.
Appeal2018-001679
Application 13/725,348
THE CLAIMED SUBJECT MATTER
Appellant's invention relates to "haptic control of a surgical tool."
Spec. ,r 1. Claim 1, reproduced below, is representative of the claimed
subject matter.
1. A surgical system, comprising:
a surgical tool associated with a virtual haptic interaction
point, wherein movement of the virtual haptic interaction point
corresponds to movement of the surgical tool;
a processing circuit comprising a computer-readable
storage medium having instructions stored thereon, that when
executed by the processing circuit cause the processing circuit
to:
establish a haptic object comprising a haptic boundary
configured to constrain the surgical tool from moving outside of
the haptic object;
operate the surgical system in a free manipulation mode,
wherein in the free manipulation mode, the haptic object is
inactive and the surgical tool is able to be manipulated without
being confined to the haptic object;
establish a virtual entry boundary, wherein the virtual
entry boundary is configured such that when the haptic
interaction point crosses the virtual entry boundary, the surgical
system switches from the free manipulation mode to a haptic
control mode; and
activate the haptic object when the haptic interaction
point crosses the virtual entry boundary, to begin the haptic
control mode, wherein the activated haptic object is configured
to confine the surgical tool to the haptic object.
2
Appeal2018-001679
Application 13/725,348
REJECTIONS
1) Claims 1-7, 13, and 14 are rejected under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description
requirement.
2) Claims 1-7, 13, and 14 are rejected under 35 U.S.C. § 112, second
paragraph as indefinite.
3) Claims 1---6 and 9 are rejected under 35 U.S.C. § I02(b) as
anticipated by Quaid (US 2004/0106916 Al, published June 3,
2004).
4) Claims 1, 2, 7, 13, and 14 are rejected under 35 U.S.C. § I02(b) as
anticipated by Kang (US 2007/0270685 Al, published Nov. 22,
2007).
DISCUSSION
Rejection 1
In order to comply with the written description requirement, the
Specification "must describe the invention sufficiently to convey to a person
of skill in the art that the patentee had possession of the claimed invention at
the time of the application, i.e., that the patentee invented what is claimed."
LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1345
(Fed. Cir. 2005). The Federal Circuit has explained that:
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the artisan
that the inventor had possession at that time of the later claimed
subject matter, rather than the presence or absence of literal
support in the specification for the claim language. . . . The
3
Appeal2018-001679
Application 13/725,348
content of the drawings may also be considered in determining
compliance with the written description requirement.
In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983) (citations omitted).
The Examiner first finds that "the recitation of 'establishing a haptic
object comprising a haptic boundary' does not have support in the originally
filed disclosure." Final Act. 8.
Appellant contends that paragraphs 6, 38, and 72 of Appellant's
Specification along with Figures 6B and 9B show "that the concept of haptic
boundaries associated with the haptic object were known to the inventor at
the time the application was filed." Appeal Br. 7-8. According to
Appellant, paragraph 6 "describes 'activating a haptic object, wherein the
activated haptic object is configured to constrain the haptic interaction point
[HIP]"' (id. at 7 (citing Spec. ,r 6)), paragraph 38 discloses "'a linear haptic
object corresponds to a linear working boundary in physical space, a planar
haptic object corresponds to a planar working boundary in physical space'"
(id. ( citing Spec. ,r 38)), and paragraph 72 discloses "determining 'whether
all HIPs are within the haptic boundaries."' Id. at 8 ( citing Spec. ,r 72).
The Examiner responds "that none of Appellant['s] recitations refer to
two different boundaries for the haptic object that perform the same
function which is constraining the haptic interaction point or the surgical
too 1 when detected intruding or crossing over the boundary." Ans. 10-11.
According to the Examiner the recited "haptic boundary" and "virtual entry
boundary" perform the same function of "introducing additional boundary
to the haptic object for constraining the surgical tool [which] is believed to
be a new matter not supported by the original disclosure." Id. at 12.
In the Reply Brief, Appellant argues that "[ n Jone of the recitations
refer to two different boundaries for the haptic object that perform the same
4
Appeal2018-001679
Application 13/725,348
function." Reply Br. 3. According to Appellant, the recited haptic boundary
functions "'to constrain the surgical tool from moving outside of the haptic
object,' whereas the virtual entry boundary is 'configured such that when the
haptic interaction point crosses the virtual entry boundary, the surgical
system switches from the free manipulation mode to a haptic control
mode."' Id. For the following reasons, we do not sustain this rejection.
Appellant's Specification describes that a haptic object comprises
"[o]ne or more ... boundaries." Spec. ,r 37. The Specification also
describes "a virtual entry boundary and a virtual exit boundary ... [that]
may facilitate switching haptic device 30 between free mode and haptic
control mode." Id. ,r 42. Appellant's Figure 5A illustrates virtual boundary
50 in the form of a circle and haptic object 52 in the form of a plane from
which one of ordinary skill in the art would infer that the haptic boundary is
coplanar with haptic object 52. In addition, as Appellant correctly notes,
claim 1 recites different functions for the haptic boundary and the virtual
entry boundary. See Appeal Br. 21 (Claims App.). Based on the foregoing,
we determine that one of ordinary skill in the art would understand that
Appellant had possession of the surgical system recited in claim 1 including
the recited "haptic boundary" and "virtual entry boundary."
The Examiner next finds that "the recitation of 'cause the processing
circuit to ... operate the surgical system in a free manipulation mode,
wherein in the free manipulation mode, the haptic object is inactive and the
surgical tool is able to be manipulated without being confined to the haptic
object"' lacks support in Appellant's disclosure. Final Act. 9. According to
the Examiner, there is no indication in Appellant's disclosure that the
5
Appeal2018-001679
Application 13/725,348
processing circuit operates the surgical "system in the free mode; and in the
free mode, there is no indication the haptic object is inactive." Id.
Appellant contends that the Specification discloses "two modes of
operation: a free mode and a haptic control mode" and that "[t]he modes of
operation are controlled by the processing circuit of the surgical system."
Appeal Br. 9 (citing Spec. ,r,r 31, 34). According to Appellant, paragraph 34
of the Specification describes "that 'in free mode, the surgeon can
substantially freely manipulate the pose of the surgical tool. In haptic
control mode ... one or more haptic objects are activated." Id. at 10 (citing
Spec. ,r 34). Appellant further contends that:
Paragraph [0054] explicitly describes that the present invention
provides advantages of the previous systems because it does not
require an action by the surgeon to switch from a free mode to a
haptic mode, rather the processes and functions which are
completed and facilitated by the memory device/processing
circuit allow the system to make the switch automatically.
Id. at 9. Based on this, Appellant argues that it is "the processing circuit of
the system that causes operation of the system in either the free mode or the
haptic control mode, and not the surgeon." Id.
The Examiner responds that one of ordinary skill in the art would
understand that claim 1 "refers to the processing circuit as operating the
surgical system in the free manipulation mode and not calling for the
processing circuit as switching the modes of the surgical system as argued
by the Appellant." Ans. 14--15.
First, we do not agree with the Examiner that there is not sufficient
written description support for a "free manipulation mode, wherein ... the
haptic object is inactive and the surgical tool is able to be manipulated
without being confined to the haptic object." The Specification describes a
6
Appeal2018-001679
Application 13/725,348
free mode wherein the surgeon can "freely manipulate the pose of the
surgical tool" and a haptic control mode wherein "one or more haptic objects
52 are activated ... [and] can constrain the surgical tool." Spec. ,r 34. The
Specification further describes that haptic objects "assist the surgeon during
implementation of the surgical plan by enabling constraint of the surgical
tool 36 during the surgical procedure." Id. ,r 37. One of ordinary skill in the
art would understand from these paragraphs that in the free manipulation
mode the haptic object is not activated because the surgeon can freely
manipulate the surgical tool rather than being constrained by the haptic
object.
Second, we do not agree with the Examiner that there is not sufficient
written description support for the recited processing circuit operating the
surgical system in the free manipulation mode. The portions of the
Specification to which Appellant directs us describe a processing circuit that
operates the surgical system by automatically switching between free
manipulation mode and haptic control mode. See Spec. ,r 54. As a result of
switching from free manipulation mode to haptic control mode, constraints
are placed on the surgeon's ability to freely manipulate the surgical tool. In
either mode, the surgeon is manipulating the surgical tool. See id. ,r 4 ("In
haptic control mode, components of the surgical system ... are activated to
guide or limit movements of the surgical tool."). The Examiner does not
direct us to any portion of the Specification where the processing circuit
manipulates the surgical tool. Based on the Specification and claim
language, the Examiner's interpretation of the limitation "cause the
processing circuit to: ... operate the surgical system" to encompass the
processing circuit manipulating the surgical tool in the free manipulation
7
Appeal2018-001679
Application 13/725,348
mode is unreasonably broad. Rather, the broadest reasonable interpretation
of this claim limitation is that when the surgical system is operated by the
processing circuit in free manipulation mode, the surgical tool can be freely
manipulated by the surgeon. Based on the foregoing, we determine that one
of ordinary skill in the art, after reviewing the Specification, would
understand that Appellant had possession of the surgical system recited in
claim 1 including "a processing circuit ... [that] operate[ s] the surgical
system in a free manipulation mode" as we have construed this claim
limitation.
For the foregoing reasons, we do not sustain the rejection of claim 1
for failure to comply with the written description requirement of 35 U.S.C.
§ 112, first paragraph. The Examiner does not provide additional reasoning
for the rejection of claims 2-7, 13, and 14 which depend from claim 1
beyond those reasons discussed above in connection with claim 1. Thus, we
also do not sustain the rejection of claims 2-7, 13, and 14.
Rejection 2
The Examiner determines that the recitation in claim 1 of
"'establishing a virtual entry boundary'" makes the claim unclear "for not
specifying the established virtual boundary is an entry for what." Final Act.
10. The Examiner further asserts that "since now the claim refers to the
haptic object comprises a haptic boundary, is it for the haptic object or a
different component, and if it is an entry boundary for the haptic object then
what is its correlation with the haptic boundary." Id.
Appellant contends that claim 1 is not unclear because the "entry
boundary is not in conflict with the existence of a haptic boundary. One
boundary is a boundary for the haptic object as a whole, the other is defined
8
Appeal2018-001679
Application 13/725,348
as an 'entry boundary.'" Appeal Br. 12. Appellant further contends that in
view of the claim language, "the virtual entry boundary is necessarily a
boundary associated with the haptic object. When an HIP (associated with
the surgical tool) crosses the virtual entry boundary, the HIP becomes
confined to the haptic object." Id.
The Examiner responds that the original Specification does not
provide a definition of virtual entry boundary as an entry boundary. Ans.
19-20. According to the Examiner, "a person of ordinary skill in the art will
not understand that such definitions and interpretations being what the
Applicant regards as the invention unless presented in the claim." Id. at 20.
For the following reasons, we do not sustain this rejection.
"[W]e apply the approach for assessing indefiniteness approved by the
Federal Circuit in Packard, i.e., '[a] claim is indefinite when it contains
words or phrases whose meaning is unclear."' Ex parte McAward, No.
2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017)
(precedential) (quoting In re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir.
2014)). The breadth of a claim, however, is not to be equated with
indefiniteness. See, e.g., In re Miller, 441 F.2d 689,693 (CCPA 1971).
As explained above, Appellant's Figure 5A illustrates the distinct
nature of the virtual entry boundary and the haptic boundary wherein if the
surgeon manipulates the surgical tool into virtual boundary 50 the haptic
object is activated and the surgical tool is constrained to the planar haptic
object 52. See Fig. 5A. Further, Appellant's Specification describes that
entry and exit boundaries are virtual boundaries created during
surgical planning and interactions between an HIP and the entry
and exit boundaries may facilitate switching haptic device 30
between free mode and haptic control mode during a surgical
9
Appeal2018-001679
Application 13/725,348
procedure. . .. [I]nteractions between the HIP and entry and
exit boundaries facilitate entry into and exit from haptic control.
Spec. ,r 42. Based on the foregoing, we determine that claim 1 may be broad
but, one of ordinary skill in the art would not find the recitation in claim 1
concerning the virtual entry boundary unclear because the virtual entry
boundaries are described in paragraph 42 of the Specification and illustrated
in Figure 5A. Therefore, we do not sustain the rejection of claims 1-7, 13,
and 14 under 35 U.S.C. § 112, second paragraph.
Rejection 3
Appellant contends that Quaid does not anticipate claim 1 because it
does not disclose both the recited free manipulation mode and haptic control
mode wherein "[t]he switch from free manipulation mode to haptic control
mode is caused by the haptic interaction point crossing an entry boundary."
Appeal Br. 13-14. According to Appellant, each portion of Quaid relied on
by the Examiner, "relates only to the haptic control mode, wherein the
surgical tool is confined to the haptic boundary." Id. at 14.
Based on paragraphs 4 and 5 of Appellant's Specification, the
Examiner construes "free manipulation mode" as "when no haptic feedback
forces are generated to slow and/or stop the surgical tool and the surgeon is
substantially able to freely manipulate the surgical tool." Ans. 23. The
Examiner construes "haptic control mode" as "when haptic feedback forces
are generated to slow and/or stop the surgical tool." Id. at 24. The
Examiner asserts, based on paragraph 3 8 of Quaid, that one of ordinary skill
in the art
will understand that the "haptic feedback forces" are only
generated when the surgical tool being detected intruding or
crossing over a predefined boundary of the haptic object, and
that the feedback forces won't be generated ... when being
10
Appeal2018-001679
Application 13/725,348
manipulated away from the predefined haptic boundary, either
within the haptic object or outside the haptic object, which can
be properly referred to as "free mode."
Id. In the Reply Brief, Appellant notes that "none of the cited portions of
Quaid on which the Examiner relies for support teach an operation of the
system where the haptic object is inactive" as required by claim 1. Reply
Br. 10. For the following reasons, we do not sustain the rejection of claim 1.
Claim 1 requires that "in the free manipulation mode, the haptic object
is inactive and the surgical tool is able to be manipulated without being
confined to the haptic object." Appeal Br. 21 (Claims App.). In the Final
Action, the Examiner does not cite to any portion of Quaid in support of the
finding that Quaid discloses a free manipulation mode wherein the haptic
object is inactive. Final Act. 11. In the Answer, the Examiner directs us to a
portion of paragraph 38 of Quaid (Ans. 24) that provides that "Haptic
feedback forces are used to slow and/or stop the surgical tool's movement if
it is detected that a portion of surgical tool 112 will intrude or cross over
predefined boundaries of the haptic object." Quaid ,r 38. However,
paragraph 38 of Quaid also provides that "haptic object 110 is used to aid
the surgeon to target and approach the intended anatomical site of the
patient" and "haptic feedback forces can also be used to attract ( or repulse)
surgical tool 112 toward (or away from) haptic object 110." Id. The entirety
of paragraph 38 of Quaid, thus, discloses that haptic object 110 is active
regardless of whether force is exerted only when the surgical tool is crossing
over a boundary. Consequently, the Examiner's finding that Quaid discloses
a free manipulation mode wherein the haptic object is inactive is not
supported by the disclosure of Quaid. We, thus, do not sustain the rejection
11
Appeal2018-001679
Application 13/725,348
of claim 1 and claims 2---6, and 9 which depend from claim 1 as anticipated
by Quaid.
Rejection 4
The Examiner relies on paragraphs 91 and 92 of Kang to establish the
claim limitation "establish a virtual entry boundary ... configured such that
when the haptic interaction point crosses the virtual entry boundary, the
surgical system switches from the free manipulation mode to a haptic control
mode" and paragraph 91 to establish "the haptic object is inactive" in the
free manipulation mode. Final Act. 14. Appellant contends that Kang does
not disclose an "approach mode ( or any mode, for that matter) which
describes that the automatic switch in mode occurs when the haptic
interaction point of a tool crosses an entry boundary." Appeal Br. 19.
Appellant further contends that Kang does not disclose "an entry boundary"
at all. Id. For the following reasons we do not sustain this rejection.
Paragraph 91 of Kang describes embodiments where a haptic device
"guide[s] the tool ... to a target object," or "constrains the tool" indicating
that the haptic object is active. Kang ,r 91. Paragraph 92 of Kang describes
another embodiment where "haptic object 310 ... is a virtual guide wire ...
defining a pathway from a first position ... to a second position" also
indicating that the haptic object is active. Id. at 92. Each of these excerpts
from Kang indicate that the haptic object is active and that Kang's surgical
system is not in a free manipulation mode as required by claim 1. In the
Final Action, the Examiner does not explain adequately how these portions
of Kang disclose a free manipulation mode wherein the haptic object is
inactive or the recited virtual entry boundary. See Final Act. 14.
Consequently, we determine that the Examiner has not established by the
12
Appeal2018-001679
Application 13/725,348
requisite preponderance of the evidence that Kang's paragraph 91 discloses
the recited free manipulation mode where the haptic object is inactive nor
has the Examiner established that paragraphs 91 and 92 of Kang disclose a
virtual entry boundary configured to switch from the free manipulation
mode to the haptic control mode when the haptic interaction point crosses
the virtual boundary. Therefore, we do not sustain the rejection of claim 1
and claims 2, 7, 13, and 14 which depend from claim 1 as anticipated by
Kang.
DECISION
The Examiner's decision rejecting claims 1-7, 9, 13, and 14 is
reversed.
REVERSED
13