Ex Parte SOUTHWORTH et al

Patent Trial and Appeal Board

Sep 19, 2018

13431106 (P.T.A.B. Sep. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/431, 106 03/27/2012
30497 7590 09/21/2018
FLYNN THIEL, P.C.
2026 RAMBLING ROAD
KALAMAZOO, MI 49008-1631
FIRST NAMED INVENTOR
Andrew SOUTHWORTH
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.
3001.P0450US 3530
EXAMINER
LIN,HANG
ART UNIT PAPER NUMBER
2696
NOTIFICATION DATE DELIVERY MODE
09/21/2018 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):
DOCKET@FL YNNTHIEL.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW SOUTHWORTH and JAMES JOUETT
Appeal2017-004397
Application 13/431, 106
Technology Center 2600
Before JOHN A. JEFFERY, DENISE M. POTHIER, and JOYCE CRAIG,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 20-28, 30, 32-3 8, 40, and 41, which are all of the
claims pending in this application. 2 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 According to Appellants, the real party in interest is Stryker Corporation.
Br. 1.
2 Claims 1-19, 29, 31, and 39 have been canceled. See Final Act. 2.
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Application 13/431, 106
INVENTION
Appellants' invention relates to a method and apparatus for
integrating multiple applications on a single touch panel. Abstract. Claim
20 is illustrative and reads as follows:
20. An operating room arrangement for an operating
room, the arrangement comprising:
a central operating room control system including a central
operating room controller, a central media router and a central
touch panel;
a plurality of surgical devices;
a surgical device control device for controlling the
plurality of surgical devices, the surgical device control device
including a surgical device touch panel for receiving manual
inputs for controlling a selected one of the plurality of surgical
devices and a surgical device controller, the surgical device
controller providing surgical device touch panel video signals to
the surgical device touch panel for display, the surgical device
touch panel being configured for outputting surgical device
touch signals to the surgical device controller to control the
selected one of the surgical devices in response to touches by a
user;
the central operating room controller being connected to
the central media router and to the surgical device control device,
and the central media router is connected to the central touch
panel and to a video output of the surgical device control device
for receiving a surgical device touch panel interface from the
surgical device control device;
wherein the central operating room controller controls the
central media router to display icons representing the surgical
devices on the central touch panel for selection and control so
that, in response to a user selecting the selected one of the
surgical devices on the central touch panel, the central touch
panel provides central touch signals to the central operating room
controller to place the central operating room control system into
a surgical device operating mode, and in the surgical device
operating mode, the central media router receives the surgical
device touch panel interface from the surgical device control
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device that is routed to and displayed as part of a video display
image on the central touch panel;
wherein, in the surgical device operating mode, the central
operating room controller receives central touch signals from the
central touch panel and passes the central touch signals without
modification to the surgical device control device so that the
surgical device control device processes the unmodified touch
signals and controls the selected one of the surgical devices
according to the unmodified touch signals.
REJECTIONS
Claims 26, 36, 40, and 41 stand rejected under pre-AIA 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement. Final Act. 2-3.
Claims 20, 22, 23, 30, 32, and 33 stand rejected under pre-AIA
35 U.S.C. § 102(b) as anticipated by Bucholz et al. (US 6,928,490 B 1;
issued Aug. 9, 2005) ("Bucholz"). Final Act. 4--15.
Claims 21, 40, and 41 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over the combination of Bucholz and Leo et al. (US
2010/0325546 Al; published Dec. 23, 2010) ("Leo"). Final Act. 16-20.
Claims 24 and 34 stand rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Bucholz. Final Act. 20-21.
Claims 25 and 35 stand rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over the combination of Bucholz and Hao et al. (US
2012/0130513 Al; published May 24, 2012) ("Hao"). Final Act. 22-23.
Claims 26-28 and 36-38 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over the combination of Bucholz, Hao, and
Yamazaki et al. (US 2011/0219225 Al; published Sept. 8, 2011)
("Yamazaki"). Final Act. 23-29.
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ANALYSIS
We have reviewed the rejections of claims 20-28, 30, 32-38, 40, and
41 in light of Appellants' arguments that the Examiner erred. We have
considered in this decision only those arguments Appellants actually raised
in the Briefs. Any other arguments Appellants could have made, but chose
not to make, in the Briefs are waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
Appellants' arguments are not persuasive of error. We agree with and
adopt as our own the Examiner's findings of facts and conclusions as set
forth in the Answer (Ans. 2-9) and in the Action (Final Act. 2-33) from
which this appeal was taken. We provide the following explanation for
emphasis.
Rejection of Claims 26 and 36 under 35 USC§ 112,first paragraph
Appellants contend the Examiner erred in rejecting claims 26 and 36
for lack of written description because the application when filed clearly
conveyed with reasonable clarity to those skilled in the art that Appellants
were in possession of the limitation "recontinuing passage of the surgical
device touch panel video signals to the surgical device touch panel," as
recited in claim 26. Br. 7. Appellants argue paragraph 31 of the
Specification describes that, when a device is selected by the central
operating room control system 12 and put into the device operating mode,
the device touch panel video signals are sent to the central media router 24
for display on the central touch panel 28, and only central touch signals from
the central touch panel 28 are used to control the device. Id. Appellants
further argue that paragraph 34 of the Specification describes that once the
indicia 88 on the central touch panel 28 is touched, the central operating
room controller 14 exits the device operating mode. Id. at 8. Appellants
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contend one skilled in the art would understand that once the device
operating mode was exited, the device would go back to the state before the
device entered the device operating mode. Id.
For the reasons given by Appellants, we are persuaded that the
Examiner erred. We note that, in addition to the paragraphs cited by
Appellants, paragraph 5 of the Specification describes that "[i]f a user
touches the exit indicia or marking on the video display image, the central
operating room controller cancels the touch panel controlled medical device
operating mode and returns to an initial touch panel interface." Spec. ,r 5
( emphasis added). This disclosure further supports Appellants' contention
that a skilled artisan would understand that when the device operating mode
is exited, the device returns to the state before the device entered the device
operating mode. See Br. 8.
Accordingly, we reverse the Examiner's § 112 rejection of claim 26,
and of claim 3 6, which recites a similar limitation.
Rejection of Claims 40 and 41 under 35 USC§ 112,first paragraph
Appellants contend the Examiner erred in rejecting claims 40 and 41
for lack of written description because the Specification describes surgical
devices 3 6 that one skilled in the art would understand would not include a
local display and user interface. Br. 8-9 ( citing Spec. ,r 17).
We are not persuaded the Examiner erred. The disputed limitation,
"at least one of the surgical devices does not include a local display and user
interface," is a negative claim limitation and, as such, is "adequately
supported when the specification describes a reason to exclude the relevant
limitation. Such written description support need not rise to the level of
disclaimer. In fact, it is possible for the patentee to support both the
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inclusion and exclusion of the same material." Santarus, Inc. v. Par Pharm.,
Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012); see alsoinphi Corp. v. Netlist,
Inc., 805 F.3d 1350 (Fed. Cir. 2015); MPEP § 2173.05(i) ("Any negative
limitation or exclusionary proviso must have basis in the original disclosure .
. . . The mere absence of a positive recitation is not basis for an exclusion.").
Because paragraph 17 of the Specification, cited by Appellants, does
not describe or provide evidence to support a reason to exclude a local
display and user interface from a surgical device, we sustain the Examiner's
§ 112 rejection of claims 40 and 41.
Rejection of Claims 20, 22, 23, 30, 32, and 33 under 35 US.C. § 102(b)
Appellants contend the Examiner erred in rejecting claim 20 as
anticipated because Bucholz does not disclose a controller that receives
signals from a first touch panel (the central touch panel) and passes the
signals without modification to a second device ( the surgical device control
device) so that the second device controls one of a plurality of third devices
(one of the surgical devices), as claim 20 requires. Br. 11-12. Appellants
argue that, in claim 20, the central operating room controller of the central
operating room control system sends a signal to a control device (second
device) so that the control device (second device) controls the selected one
of the surgical devices ( third device) according to the unmodified touch
signals. Id. at 11.
We are not persuaded of error. The Examiner found controller 100
and embedded controller 310 of Bucholz Figure 1 disclose the recited
"controller," and microscope display and user interface 320 of Bucholz
Figure 1 disclose the recited "central touch panel." Ans. 5. The Examiner
also found the central touch panel can control a plurality of third devices
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(bipolar coagulater 400 and endoscope 700 of Bucholz Figures 1 and 4)
through a second device (network interface 430 and embedded controller
410 of Bucholz Figure 1 ). Id. The Examiner further found the bipolar
coagulator is controlled by the central touch panel 320 through the controller
as the communication is performed through a Jini network protocol
embedded in the embedded controller 310, as disclosed in Bucholz col. 7:5-
16, where the central touch panel is used to control the coagulator, and
Bucholz col. 9:27--45, where the connections are through the Jini compliant
controller 310 of Bucholz Figure 1. Id.
Appellants have not presented sufficient objective evidence or
persuasive argument to rebut the Examiner's findings and explanations in
the Answer.
For these reasons, we are not persuaded that the Examiner erred in
finding that Bucholz discloses the disputed limitation of claim 20.
Accordingly, we sustain the Examiner's§ 102(b) rejection of
independent claim 20, as well as the Examiner's § 102(b) rejection of
independent claim 30, which Appellants argue are patentable for similar
reasons. App. Br. 12. We also sustain the Examiner's rejection of
dependent claims 22, 23, 32, and 33, not argued separately. Id.
Rejection of Claim 21 under 35 USC§ 103(a)
Appellants contend dependent claim 21 is patentable for the reasons
discussed above with regard to independent claim 20, from which claim 21
depends. Br. 12. Because we sustain the Examiner's§ 102(b) rejection of
claim 20, and Appellants present no separate arguments for the patentability
of claim 21, we sustain the Examiner's§ 103(a) rejection of claim 21.
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Rejection of Claims 40 and 41 under 35 USC§ 103(a)
Claims 40 and 41 depend from claims 20 and 30, respectively, and
further recite "at least one of the surgical devices does not include a local
display and user interface." The Examiner relied on the combination of
Bucholz and Leo as teaching or suggesting the recited limitation.
We agree with Appellants that the Examiner erred. We find the
Examiner has not fully developed the record to show how Leo's disclosure
in paragraph 19 teaches or suggests at least one surgical device that does not
include a local display and user interface, as claims 40 and 41 require. See
Ans. 7; Final Act. 17-18. Nor does the Examiner explain sufficiently how it
would have been obvious to one skilled in the art that Leo paragraph 19
teaches such a surgical device. See id.
For these reasons, we are persuaded the Examiner erred in finding the
combination of Bucholz and Leo teaches or suggests the disputed limitations
of claims 40 and 41. Accordingly, we reverse the Examiner's§ 103(a)
rejection of claims 40 and 41.
Rejection of Claims 24 and 34 under 35 USC§ 103(a)
Appellants contend the Examiner erred in finding Bucholz teaches or
suggests the limitation "to enter the surgical device operating mode, the
surgical device control device requires a manual input to discontinue the
surgical device touch panel video signals to the surgical device touch panel
and to provide the surgical device touch panel interface to the central media
router," recited in claim 24. Br. 14. In particular, Appellants argue the
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Examiner engaged in impermissible hindsight in finding Bucholz teaches or
suggests the disputed limitation. Id.
We are not persuaded the Examiner erred. The test for obviousness is
not whether the claimed invention is expressly suggested in any one or all of
the references, but whether the claimed subject matter would have been
obvious to those of ordinary skill in the art in light of the combined
teachings of those references. See In re Keller, 642 F.2d 413,425 (CCPA
1981 ). The Examiner concluded it would have been obvious to an artisan of
ordinary skill that the touch panel-controlled medical device in Bucholz
requires a manual input to discontinue the device touch panel video signals
to the device touch panel and to provide the medical device touch panel
interface to the central media router. Final Act. 21; Ans. 8-9. Appellants
have not persuasively rebutted the Examiner's explanation in the Answer
that, in light of the teachings of Bucholz (column 6, line 52, through column
7, line 17), the disputed limitation would have been obvious to an artisan of
ordinary skill when accounting for the inferences and creative steps that an
artisan would have employed. See Ans. 8-9; KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398,418 (2007). Moreover, Appellants have not identified any
knowledge relied upon by the Examiner that was gleaned only from
Appellants' disclosure and that was not otherwise within the level of
ordinary skill in the art at the time of invention. See In re McLaughlin, 443
F.2d 1392, 1395 (CCPA 1971).
Accordingly, on the record before us, we sustain the Examiner's
§ 103(a) rejection of claim 24, as well as claim 34, not argued separately.
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Rejections of Claims 25-28 and 35-38 under 35 USC §103(a)
Appellants contend claims 25-28 and 35-38 are patentable because
they depend from independent claims 20 and 30, respectively. Br. 14--15.
Because we sustain the Examiner's rejection of claims 20 and 30, and
Appellants make no substantive arguments for the patentability of dependent
claims 25-28 and 35-38, we sustain the Examiner's§ 103(a) rejections of
those claims.
DECISION
We reverse the Examiner's decision rejecting claims 26 and 36 under
35 U.S.C. § 112, first paragraph.
We affirm the Examiner's decision rejecting claims 40 and 41 under
35 U.S.C. § 112, first paragraph.
We affirm the Examiner's decision rejecting claims 20, 22, 23, 30, 32,
and 33 under 35 U.S.C. § 102(b).
We affirm the Examiner's decision rejecting claims 21, 24--28, and
34--38 under 35 U.S.C. § 103(a).
We reverse the Examiner's decision rejecting claims 40 and 41 under
35 U.S.C. § 103(a).
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner's decision rejecting claims 20-28, 30,
32-38, 40, and 41 is affirmed. See 37 C.F.R. § 4I.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See
37 C.F.R. § 4I.50(f).
AFFIRMED
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