Ex Parte Schara et alDownload PDFPatent Trial and Appeal BoardAug 28, 201811083277 (P.T.A.B. Aug. 28, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 11/083,277 03/17/2005 Nathan Jon Schara 154825 7590 08/30/2018 KS - Whitmyer IP Group LLC 600 Summer Street 3rd Floor Stamford, CT 06901 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. 02580-P0258B 6849 EXAMINER BOLER, RYNAE E ART UNIT PAPER NUMBER 3779 NOTIFICATION DATE DELIVERY MODE 08/30/2018 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): uspto@whipgroup.com patent@karlstorz.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NATHAN JON SCHARA, ERIC LA WREN CE HALE, and HANS DAVID HOEG Appeal2016-006267 Application 11/083,277 Technology Center 3700 Before DEMETRA J. MILLS, ERIC B. GRIMES, and JEFFREY N. FREDMAN, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal 1,2 under 35 U.S.C. § 134 involving claims to a method for performing 3D endoscopic photography. The Examiner rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. 1 Appellants identify the Real Party in Interest as Karl Storz Imaging, Inc. (see App. Br. 2). 2 We have considered and herein refer to the Specification of Dec. 3, 2008 ("Spec."); Final Office Action of Jul. 28, 2015 ("Final Action"); Appeal Brief of Dec. 28, 2015 ("App. Br."); Examiner's Answer of Apr. 26, 2016 ("Answer"); and Reply Brief of June 3, 2016 ("Reply Br."). An oral hearing was also held on Aug. 21, 2018. Appeal2016-006267 Application 11/083,277 Statement of the Case Background Prior art "multi degree-of-freedom [endoscopic] devices provide the operator with the ability to accurately control the endoscopic viewing direction through electronic switches or voice commands and have become an important part of robotic minimally invasive surgical procedures" (Spec. ,r 3). "The shortcoming of such endoscopic positioning systems is that they can only provide a limited endoscopic viewing range because the mechanical mobility is outside rather than inside the inspection site" (Id.). Other prior art endoscopes "can vary their line of sight at the tip of the instrument, thus transferring the viewing mobility to the tip and relieving the problem of limited viewing range" (Id. ,r 4). The Specification teaches "a system which merges/ combines the advantages of robotic endoscope holders with the advantages of a variable direction of view endoscope and provides additional advantages" (Spec. ,r 6). The Claims Claims 1, 7, and 19-33 are on appeal. 3 Independent claim 1 is representative and reads as follows: 1. A method for performing 3D endoscopic photography using a variable direction of view endoscope having a longitudinal axis, a tip, and a view vector movable relative to the longitudinal axis, the method comprising the steps: a) securing the endoscope on an articulate arm comprising at least three universal joints and an end-effector that passively holds the endoscope while the articulate arm is actuated; 3 Claims 2---6 and 8-18 were cancelled (see App. Br. 20-21 ). 2 Appeal2016-006267 Application 11/083,277 b) establishing an original position of the tip of the endoscope; c) inputting an endoscope moving command provided by a user to move the endoscope in a desired direction relative to an object displayed on a display device; d) computing an incremental movement of the endoscope based on the command provided by the user and on the original position of the endoscope; e) moving the endoscope in the desired direction so that the tip of the endoscope always moves in a direction commanded by the user and so that the endoscope changes its angle about a fulcrum; f) inputting a view vector moving command provided by the user to move the view vector relative to the longitudinal axis in a desired direction relative to an object displayed on the display device; g) moving the view vector relative to the longitudinal axis of the distal end of the endoscope so that the view vector moves in a direction commanded by the user so that the view of the object is changed; h) repeating steps c ), d), e ), f), and g) to obtain a plurality of views of the object; and i) using the plurality of views to obtain at least one stereoscopic image of the object. The Issue The Examiner rejected claims 1, 7, and 19-33 under 35 U.S.C. § 103(a) as obvious over Mizuno,4 Hale, 5 Wang, 6 and Taylor7 (Final Act. 2- 12). 4 Mizuno et al., US 6,120,433, issued Sept. 19, 2000. 3 Appeal2016-006267 Application 11/083,277 The Examiner finds Mizuno teaches an endoscopic method that differs from claim 1 by not disclosing "moving the view vector relative to the longitudinal axis of the distal end of the endoscope" (Final Act. 5) and an "articulate arm [that] comprises at least three universal joints" (Final Act. 6). The Examiner specifically finds that "three-dimensional endoscopes, such as scope 105 of Mizuno, provide stereoscopic images, as evidenced by Hori[ 8]" (Final Act. 4--5). The Examiner relies upon Hale to suggest a "variable direction-of- view endoscope" (Final Act. 6); upon Wang to suggest "an articulate arm comprising at least three segments ... and a plurality of revolute joints" (id.); and Taylor to suggest that "universal joints are a known alternative to revolute joints" (Final Act. 7). The Examiner finds it obvious "to substitute the variable direction-of- view endoscope disclosed by Hale for the physically deflecting endoscope disclosed by Mizuno ... in order to provide an intuitive and versatile movement means that does not require movement of the scope within the cavity" (Final Act. 6). The Examiner finds it obvious "to construct the simple articulate arm disclosed by Mizuno with the more complex articulate arm disclosed by Wang ... in order to increase the versatility of the articulate arm" (Final Act. 7). 5 Hale et al., US 6,695,774 B2, issued Feb. 24, 2004. 6 Wang et al., US 5,524,180, issued June 4, 1996. 7 Taylor et al., US 6,024,695, issued Feb. 15, 2000. 8 Hori et al., US 6,191,809 Bl, issued Feb. 20, 2001. 4 Appeal2016-006267 Application 11/083,277 The issue with respect to this rejection is: Does the evidence of record support the Examiner's conclusion that the prior art renders the claims obvious? Findings of Fact 1. Mizuno teaches "a surgical manipulator system which is designed to insert a medical device such as an endoscope into a body cavity of a subject for the purpose of examining the interior of the cavity and performing surgery within the cavity" (Mizuno 1:9-12). 2. Figure 2 of Mizuno is reproduced, in part, below: 5, 5b" ii~~~~~~ 3 "Illustrated in FIG. 2 are an operating table 1 and a patient 2 laying on the table 1 ... The instrument arm 5 and scope arm 7 are provided for positioning a medical instrument 4 and a scope 6, respectively, in a body cavity of patient 2" (Mizuno 4:60-67). 3. Mizuno teaches a step b) of establishing an original position where "both slave arms 5 and 7 must be subjected a return-to-origin 5 Appeal2016-006267 Application 11/083,277 operation so that their absolute positions may be determined" (Mizuno 10:38--42). 4. Mizuno teaches a step c) with a display for inputting movement commands where the "surgical manipulator system further comprises a master arm 8 and a head-mount display 9 (hereinafter referred to as 'HMD') ... The master arm 8 is input means for the instrument slave manipulator, and the HMD 9 is input means for the scope slave manipulator" (Mizuno 5:49-54). 5. Mizuno teaches a step d) of incremental movement where "[ o ]nee the distance the instrument arm 5 is to be moved has been calculated by means of the coordinate transforms, the data showing this distance is supplied ... As a result, the instrument slave manipulator is moved" (Mizuno 9: 17-31 ). 6. Mizuno teaches a step e) of ensuring movement is in the desired direction where "the slave manipulator 101 is set into a 'point-locked' state (first control mode) to allow the medical instrument 103, which is partly inserted into the body cavity c, to rotate only around the hole b, as if the hole b were a fulcrum" (Mizuno 19:64--67). 7. Mizuno teaches a step f) of moving the view vector in a desired direction where "the distal portion of the scope 105 may be bent in the same direction and by the same angle as the arm connecting the HMD 112 to the master manipulator 111, and the medical instruments 106 and 107 may be moved in the same way as the master arms 113 and 114" (Mizuno 19:25- 29). 6 Appeal2016-006267 Application 11/083,277 8. Mizuno teaches a step g) of moving the view where [ a ]ttached to the distal end of the insertion section 102 of the device 103 are a three-dimensional scope 105 and a pair of medical instruments 106 [and] 107. The distal portion of the scope 105 can be bent in various directions. The distal portions of the instruments 106 and 107 can be bent in various directions, too. (Mizuno 19:8-13; emphasis added). 9. Mizuno teaches a step h) of seeing multiple views within a cavity where the distal end of the endoscope 162 held by the slave manipulator 161 is thereby moved to the desired position in the body cavity b. Thus, the surgeon can see the image of the interior of the body cavity c while carrying out the surgery, as if he or she were in the body cavity c. (Mizuno 26:11-16). 10. Mizuno teaches a "screen is located in front of the surgeon's eyes who wears the HMD 9. The surgeon can therefore observe the image however his or her head moves" (Mizuno 6:21-23). 11. Hale teaches "a control and indicator apparatus for a variable direction-of-operation endoscopic instrument [that] comprises a handle, a pointer, and a linking system connecting the handle to the endoscopic instrument" (Hale 2:56-60). 12. Hale teaches that: By manipulating the handle-pointer assembly, the working vector can be made to rotate about the third axis, a forth [sic] axis and a fifth axis to parallel the changing direction of the first axis and the changing orientation of the indicator. ... any working direction and orientation can be selected intuitively by pointing the handle towards a target and spinning it as desired 7 Appeal2016-006267 Application 11/083,277 while the direction and orientation of the handle show the configuration of the working vector. (Hale 4: 11-21, reference numbers omitted). 13. Figure 1 of Wang is reproduced below: 7 - FIG. I I t 46 ~-14 Figure 1 depicts, in part, a surgical device with a "first linkage arm 28 attached to a first rotary actuator 30 ... first rotary actuator 30 is connected to a second rotary actuator 34 by a second linkage arm 36 ... second rotary actuator 34 is connected to a third rotary actuator 38 by a third linkage arm 40" (Wang 3:27-36). 14. Taylor teaches "an alternative embodiment such as a ball-and- socket joint is substituted for revolute joint" (Taylor 10:65-66). 15. Hori teaches: A three-dimensional ("3D") vision endoscope or microscope, hereinafter referred to as a "stereo" endoscope or microscope, comprises a stereoscopic optical system for forming a 3D image of an object. The stereoscopic optical system comprises objective lens means arranged to pick up two slightly different images of a object that approximate the two views (left and 8 Appeal2016-006267 Application 11/083,277 right) provided by human binocular vision. The difference between the two views is known as parallax. By properly aligning and presenting the two optical target images to human binocular vision, a three-dimensional sense of the target is presented to the viewer. (Hori 1: 11-22). 16. Hori teaches "a stereo video camera [that] essentially comprises two video camera[] heads" (Hori 1:47--48). 17. Hori teaches "a housing 2 having a tubular insertion portion or barrel 4 containing two objective lenses SR and SL and two sets of relay lenses lOR, lOL" (Hori 3:63---65). Principles of Law The Examiner has the initial burden of establishing a prima facie case obviousness under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). A prima facie case for obviousness "requires a suggestion of all limitations in a claim," CFMT, Inc. v. Yieldup Int'! Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) and "a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Analysis Claims 1 and 23 Appellants contend that "[a]lthough Mizuno's distal end 'can be bent in various directions,' there is simply no disclosure in Mizuno regarding '3D endoscopic photography,' as claimed" (App. Br. 8). Appellants contend Mizuno's head-mount display "is simply a screen that shows the image 9 Appeal2016-006267 Application 11/083,277 captured by the scope. Mizuno 6: 19-29. This is not the same thing as '3D endoscopic photography' and there is no indication that Mizuno's HMD shows anything other than a 2-dimensional image" (id. 8-9). Appellants further contend Hori is directed to aligning stereo images. . . . Hori relies on two (left and right) images. Hori Abst. According to Hori, "by properly aligning and presenting the two optical target images to human binocular vision, a three-dimensional sense of the target is presented to the viewer." Hori 1: 19-21. This is not the same thing as Applicant's invention. (App. Br. 10). The Examiner "asserts that Mizuno discloses a three-dimensional endoscope, and not 'a robotic arm with movement' as Appellant contends" (Ans. 9). The Examiner finds "Hori informs that it is known that three- dimensional endoscopes comprise a stereoscopic optical system for forming a 3D image of an object. Hori also discloses that its single three- dimensional endoscope captures two views/images and aligns and presents a stereoscopic image to the viewer" (Ans. 10). We agree with Appellants for several reasons. First, the Examiner does not expressly rely upon Hori in the statement of the rejection. If the citation of a prior art reference is necessary to support a rejection, the reference must be included in the statement of rejection. In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970) ("Where a reference is relied on to support a rejection whether or not in a 'minor capacity,' there would appear to be no excuse for not positively including the reference in the statement of the rejection.") Second, we agree with Appellants that Mizuno' s teaching of a "three- dimensional scope 105" refers to the fact that the "distal portion of the scope 10 Appeal2016-006267 Application 11/083,277 105 can be bent in various directions" (FF 8). Therefore, the reasonable understanding of "three dimensional" in Mizuno is that the range of motion of the scope is "three dimensional", not that the image obtained by the scope is shown in three dimensions. We also agree that the Examiner never provides evidence that Mizuno's head-mount display is anything other than a two dimensional screen. A two dimensional screen is more consistent with Mizuno's teaching that a "screen is located in front of the surgeon's eyes who wears the HMD 9. The surgeon can therefore observe the image however his or her head moves" (FF 10). Third, even if we consider Hori, we agree with Appellants that Hori does not suggest the use of a single endoscope that obtains "a plurality of views" by "moving the view vector" "to obtain at least one stereoscopic image" as required by claims 1 and 23. While the two images in Hori are reasonably consistent with the recitation of a three dimensional image (FF 15), Hori uses endoscopes with two lenses or two camera heads (FF 16-17) that would not require movement of the endoscope to obtain the multiple views and the stereoscopic image. Instead, Hori' s endoscope can obtain a stereoscopic image without movement. Therefore, while Hori may suggest that three dimensional views are desirable, Hori' s device operates entirely differently than the device of Mizuno. Finally, even if we agreed with the Examiner that the ordinary artisan would have had reason to modify the endoscope of Mizuno with the stereoscopic view of Hori, the combination would result in an endoscope capable of moving in variety of dimensions with two video heads (FF 16) or two objective lenses (FF 17) that would provide the stereoscopic view. The combination would still differ from claim 1 that obtains the stereoscopic 11 Appeal2016-006267 Application 11/083,277 image not by using two video heads or two lenses, but rather by using a single video head or lens that is moved "to obtain a plurality of views of the object" that are then reconstructed to form the three dimensional image. Therefore, the combination of Mizuno, Hale, Wang, Taylor, and Hori does not render claims 1 and 23 obvious. Claim 7 We recognize the preamble of claim 7 recites "performing 3D endoscopic photography" but no specific process of three dimensional photography is required in the body of the claim. Therefore, the preamble read in light of the entire claim simply requires some form of three dimensional analysis occur. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). While claim 7 recites the steps of "moving the view vector" in order "to scan the surface of the object", claim 7 lacks the recitation in claims 1 and 23 that requires "using the plurality of views to obtain at least one stereoscopic image of the object." Therefore, the broadest reasonable interpretation of claim 7 does not exclude a photographic method in which endoscopic photographs are taken from multiple locations in three dimensions, rather than forming a three dimensional image. Additionally, claim 7 does not exclude Hori' s disclosure of stereoscopic imaging using either two lenses or cameras (FF 15-17). This reasoning is supported both on claim differentiation grounds relative to claims 1 and 23 and based on the lack of any express recitation requiring a stereoscopic image be formed. Appellants do not separately address the limitations of claim 7, while the Examiner specifically addresses claim 7 (see Final Act. 8-9). 12 Appeal2016-006267 Application 11/083,277 Appellants do argue with respect to all claims that "Mizuno does not disclose Applicant's claimed articulated arm" (App. Br. 13). We find this argument unpersuasive and agree with the Examiner that Mizuno discloses that it has a free joint section (6c) that incorporates a servo motor ( 6c) and rotary mechanism for rotating the scope (6) in the direction of arrow c (col. 5, 11. 33- 39). Thus, Mizuno discloses that the end-effector (19) can passively hold the scope ( 6) and can also rotate the scope ( 6). (Ans. 12). Claim 7 does not impose any requirement on the end effector that requires it never move, only that at some point, it must function so that it "passively holds the endoscope." Appellants provide no rebuttal evidence that the end effector of Mizuno lacks this capacity. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument in a brief cannot take the place of evidence."). Appellants also argue, with respect to all claims, that the rejection is based on hindsight because "the Office Action has failed to identify deficiencies in the prior art teachings such that motivation to combine these references would preferable or even possible" (App. Br. 14). We are not persuaded. While we are fully aware that hindsight bias may plague determinations of obviousness, Graham v. John Deere Co., 383 U.S. 1, 36 (1966), we are also mindful that the Supreme Court has clearly stated that the "combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR, 550 U.S. at 416. In the present case, the Examiner provides a specific reason to use the "variable direction-of-view endoscope" of Hale "in order to provide an intuitive and versatile movement means that does not require movement of the scope within the cavity" (Ans. 6). The Examiner 13 Appeal2016-006267 Application 11/083,277 provides a reason to include three articulating segments as taught by Wang "in order to increase the versatility of the articulate arm" (Ans. 7). The Examiner provides a reason to substitute Taylor's universal joints for the revolute joints in the other prior art "in order to increase the degrees of freedom of each joint" (Ans. 8). These are specific reasons, not hindsight, to make the obvious modifications suggested by the prior art and the Examiner. Conclusion of Law The evidence of record does not support the Examiner's conclusion that the prior art renders claims 1 and 23 obvious. The evidence of record supports the Examiner's conclusion that the prior art renders claim 7 obvious. SUMMARY In summary, we reverse the rejection of claims 1, 19, 20, 23-30, 32, and 33 under 35 U.S.C. § 103(a) as obvious over Mizuno, Hale, Wang, and Taylor. We affirm the rejection of claim 7 under 35 U.S.C. § 103(a) as obvious over Mizuno, Hale, Wang, and Taylor. Claims 21, 22, 30, and 31 fall with claim 7. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART 14 Copy with citationCopy as parenthetical citation