Ex Parte Schaible et al

Patent Trial and Appeal Board

Dec 21, 2016

13660328 (P.T.A.B. Dec. 21, 2016)

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.
13/660,328 10/25/2012 Uwe SCHAIBLE P3100US01 6184
54640 7590 12/23/2016
PERRY + CURRIER INC.
1300 YONGE STREET
SUITE 500
TORONTO, ON M4T-1X3
CANADA
EXAMINER
ELAHMADI, ZAKARIA
ART UNIT PAPER NUMBER
3658
NOTIFICATION DATE DELIVERY MODE
12/23/2016 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):
docketing @pckip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DRAZENA BROCILO, UWE SCHAIBLE, and JOHN HARMEN
Appeal 2015-001552
Application 13/660,328
Technology Center 3600
Before CHARLES N. GREENHUT, LISA M. GUIJT, and
PAUL J. KORNICZKY, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134 of the Examiner’s
decision2 rejecting claims 1—5 and 7-11. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 Appellants identify the real party of interest as Titan Medical Inc. Appeal Br. 3.
2 Appeal is taken from the Final Office Action dated November 7, 2013 (“Final
Act.”).
Appeal 2015-001552
Application 13/660,328
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is the sole independent claim on appeal and is
representative of the claimed subject matter on appeal.
1. A hand controller configured to enable a user to perform an
activity, the hand controller comprising:
a bar with a grip, the bar configured to be held and operated by
the user to control a plurality of mechanical arms;
a clutch button configured to allow a movement of the hand
controller without a corresponding movement of any one of the
plurality of mechanical arms for re-centering the hand controller; and
a plurality of motors, the plurality of motors configured to
provide a force feedback to the user in response to the movement of the
plurality of mechanical arms in one or more of the at least eight degrees
of freedom.
REJECTIONS
I. Claims 1—5 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Lipow (US 2004/0116906 Al; pub. June 17, 2004) and Colston (US
4,216,467; iss. Aug. 5, 1980).
II. Claims 7—11 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Lipow, Colston, and Bouzit (US 7,138,976 Bl; iss. Nov. 21, 2006).
ANALYSIS
Rejection I
Regarding independent claim 1, the Examiner finds, inter alia, that Lipow
discloses the claimed hand controller except for a clutch button, and the Examiner
relies on Colston’s transducer means 41, 42 for disclosing the clutch button as
claimed. Id. at 2—3 (citing Colston, Figure 1).
Appeal 2015-001552
Application 13/660,328
Appellants argue that the Examiner has failed to explain how Colston’s
transducer means 41, 42 “can form the basis of teaching ‘a clutch button
configured to allow a movement of the hand controller without a corresponding
movement of any one of the plurality of mechanical arms for re-centering the hand
controller,’” as required by claim 1. App. Br. 9. Moreover, Appellants argue that
“the Examiner has provided no articulated reasoning directed to showing that a
skilled person would be able to modify Lipow by adding generic transducer means
taught by Colston to arrive at the subject matter of Claim 1,” and that the Examiner
is improperly relying on hindsight. Appeal Br. 9.
The Examiner responds that “there is no specific structure recited in the
current application that differentiate[s] ‘clutch button’ from any other regular
button,” and therefore, “any button is considered [a] clutch button.” Ans. 7. The
Examiner concludes that because Colston “shows a button on the handle bar,”
Colston’s button meets the limitation of a clutch button in claim 1. Id. Further, the
Examiner determines that the claim language “configured to” does not require the
clutch button to have the recited functionality as long as the clutch button can be
modified to perform the recited function, and concludes that Colston’s button can
be so modified. Id. Appellants disagree, contending that “[t]he word ‘configured’
does require the ‘clutch button’ to have the recited functionality.” Reply Br. 2.
The Specification discloses that “robotic hand controller 100 can further
include a clutch mechanism in the form of a clutch button 103 . . . , to allow the
surgeon to re-center the robotic hand controller 100 into an ergonomic position
without moving the plurality of robotic arms.” Spec. 9:3—4; Fig. 1. An ordinary
meaning of the term “clutch,” in view of the Specification, is “a coupling used to
connect and disconnect a driving and a driven part of a mechanism.” Webster’s
Third New Int’l Dictionary 431 (1993). Thus, we determine that the claimed
Appeal 2015-001552
Application 13/660,328
clutch button, by definition, must be a button that connects and disconnects a
driving part and a driven part, such as a hand controller and robotic arms. Colston
discloses that “additional finger or thumb operated transducer means 41 and 42 can
be added to the handle 10 for accommodation of additional control functions,”
wherein reference numerals 41, 42 are depicted as buttons on handle 10. Colston
4:23—25, Fig. 1. Colston discloses that the function of a transducer is to “produc[e]
a signal indicative of the . . . force exerted between its opposite ends.” Id. at 2:39-
41. Colston does not disclose that any of the buttons on the handle of Colston’s
hand controller is a clutch button (i.e., connects and disconnects a driving part and
a driven part). Thus, Colston does not disclose a clutch button.
Moreover, claim 1 specifies that the clutch button is “configured to allow a
movement of the hand controller without a corresponding movement of any one of
the plurality of mechanical arms for re-centering the hand controller.” Appeal Br.
11 (Claims App.). There is nothing intrinsically wrong with defining something by
what it does rather than what it is while drafting a patent claim. See In re
Swinehart, 439 F.2d 210, 212—213 (CCPA 1971). When applicants use functional
language to differentiate the claimed subject matter from the prior art, it is
incumbent upon the Examiner to show that the prior art is capable of performing
the claimed function. See id. Here, the Examiner has failed to support the finding
that Colston’s buttons 41, 42, which are described as having the function of a
transducer to sense force, are also capable of performing the claimed clutch
function. Additionally, the Examiner has not provided any rationale for modifying
buttons 41, 42 of Colston to perform the claimed clutch function. Thus, we agree
with Appellants that the Examiner erred in finding that Colston discloses a button
that is configured as required by claim 1.
Appeal 2015-001552
Application 13/660,328
Accordingly, we do not sustain the Examiner’s rejection of independent
claim 1 and claims 2—5 depending therefrom.
Rejection II
The Examiner’s reliance on Bouzit does not cure the deficiency in the
Examiner’s finding with respect to Colston, and therefore, we also do not sustain
the Examiner’s rejection of claims 7—11.
DECISION
The Examiner’s decisions to reject claims 1—5 and 7—11 under 35 U.S.C. §
103(a) are reversed.
REVERSED