Ex Parte Yarin et al

Patent Trial and Appeal Board

May 30, 2013

11724012 (P.T.A.B. May. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PAUL YARIN, HARRITH M. HASSON, and
AMIR SHARRETT HASSON
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Appeal 2011-000882
Application 11/724,012
Technology Center 3700
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Before MURRIEL E. CRAWFORD, MEREDITH C. PETRAVICK, and
JAMES A. TARTAL, Administrative Patent Judges.

TARTAL, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE1
Paul Yarin, et al. (Appellants) seek our review under 35 U.S.C. § 134
of the Examiner’s final decision rejecting claims 1-28. We have jurisdiction
over the appeal pursuant to 35 U.S.C. § 6(b).
Appellants’ claimed invention relates to a training apparatus that can
be used to practice medical procedures and provide feedback. Spec. 1, ll. 6-
7.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A self contained, portable medical training
apparatus comprising:
a portable enclosure defining a working
space bounded by a wall structure and having an
access port to allow introduction of a medical
instrument to the working space from externally of
the working space;
a module with a first model and a first object
in the working space upon which a defined task
can be performed with a medical instrument to
allow movements typical of surgical procedures to
be carried out by repositioning the first object in a
predetermined manner and thereby changing a
state of the first model using a medical instrument;
a sensor operatively associated with the
module for sensing progress of the defined task;
and
a control unit in the enclosure and coupled
to the sensor for monitoring progress of the
defined task and providing a quantified indication
of status of the defined task.

1 Our decision will make reference to Appellants’ Appeal Brief (“App. Br.,”
filed Nov. 23, 2009) and Reply Brief (“Reply Br.,” filed Sep. 7, 2010), and
the Examiner’s Answer (“Ans.,” mailed Aug. 4. 2010).
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The Examiner relies upon the following evidence:
Hasson US 5,873,732 Feb. 23, 1999
Dorfman US 6,029,214 Feb. 22, 2000
Levy US 6,517,354 B1 Feb. 11, 2003
Day GB 2 338 582 A Dec. 22, 1999

Claims 1 and 21-28 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Hasson.
Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hasson.
Claims 2, 3, 6-9, 13, and 16-19 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Hasson and Day.
Claims 4, 5, 14, and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hasson and Dorfman.
Claims 10, 12, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hasson and Levy.

FINDINGS OF FACT
We find that the findings of fact which appear in the Analysis below
are supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).

ANALYSIS
Anticipation based on Hasson
Claims 1, 21, and 23-28
We are not persuaded by Appellants’ contention that Hasson fails to
disclose a sensor and control unit, as required by claim 1. We agree with the
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Examiner that a digital video camera satisfies the dictionary definition of
“sensor” proposed by Appellants. As explained by the Examiner, “[d]igital
cameras are known to rely on charge-coupled devices (CCD) to capture
visual images and convert them to electronic form (a fundamental step in
digital photography); these CCDs are sensors in the strictest definition.” See
Ans. 12. Thus, Hasson discloses a video camera that senses and responds to
light waves transmitted by a model by transmitting signals to display an
image of the task performed, that is, it is “a sensor operatively associated
with the module for sensing progress of the defined task,” as claimed.
We also agree with the Examiner that a recorder, monitor, and timer,
as disclosed by Hasson, comprise a “control unit” as claimed. We agree
with the Examiner’s determination that the recorder and monitor disclosed
by Hasson provide a control unit “coupled to the sensor for monitoring
progress of the defined task.” See Ans. 12-13. Contrary to Appellants’
assertion, claim 1 does not require a control unit “that monitors the progress
of a defined task,” but rather, only a control unit “for monitoring the
progress of a defined task.” [emphasis added]. Thus, the recorder and
monitor associated with a video camera disclosed by Hasson allows the
operator to study procedures and assess performance and, therefore,
constitutes a control unit “for monitoring the progress of a defined task,” as
claimed.
We further agree with the Examiner that the timer disclosed by
Hasson provides a control unit “for providing a quantified indication of
status of the defined task,” as claimed. Contrary to Appellants’ assertion,
reliance on the timer disclosed by Hasson as part of the control unit does not
require the user to perform a claimed function of the control unit. See App.
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Br. 15, reply Br. 3. As explained by the Examiner, a timer “controls the
tracking and resetting of time during the completion of a task,” and a timer
“quantifies this time and indicated elapsed time as a performance measure of
the user.” Ans. 13. Thus, a “quantified indication of status of the defined
task” is how much time has elapsed since the task was initiated, as indicated
by a timer. Accordingly, we conclude that Appellants have not overcome
the Examiner’s determination that Hasson anticipates claim 1.
Appellants also argue that claims 23-28 are patentable for the same
reasons Appellants raise with respect to claim 1. We are not persuaded by
Appellants’ arguments for the same reasons discussed above with respect to
claim 1.
Claim 21
We agree with the Examiner that, as part of a control unit, Hasson’s
timer provides “an indication of time to completion of the defined task,” as
claimed. Appellants’ assertion that the timer disclosed by Hasson is “not
associated with any sensor” is not persuasive because, as noted above, we
find that Hasson discloses a video camera that constitutes a sensor, and a
timer is associated to the video camera by virtue of providing a measure of
time elapsed that corresponds to the images captured by the camera.
Claim 22
With respect to claim 22, Appellants further assert that Hasson does
not disclose a control unit which “provides an indication of errors on the part
of an operator in attempting to perform the defined task,” as claimed. The
claim does not require identification of errors by the control unit. We
therefore agree with the Examiner that a control unit which includes a
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recorder is sufficient to provide “an indication” of errors by virtue of its
ability to retain images of the performance of the defined task. See Ans. 15.
Obviousness based on Hasson
Claim 11
Claim 11 requires a carousel rotationally mounted in the working
space and a plurality of modules mounted upon the carousel. We find not
persuasive Appellants’ argument that there is no disclosure that the Hasson
turntable might be used to support multiple modules. See App. Br. 17. We
agree with the Examiner that it would have been obvious to one of ordinary
skill in the art, at the time the invention was made, “to have located the
plurality of modules taught by Hasson around the perimeter of the carousel
of Hasson, in the surgical simulator of Hasson, in order to facilitate the
reorientation uniformly and equidistantly from the laparoscopic instrument
access point.” Ans. 16; see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (when considering obviousness “a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ”).
We further do not agree that the Examiner’s rejection is an improper
hindsight reconstruction as it does not include knowledge gleaned only from
the Appellants’ disclosure, but rather takes into account the teachings of
Hasson; i.e., knowledge which was within the level of ordinary skill at the
time the claimed invention was made. See In re McLaughlin 443 F.2d 1392,
1395 (CCPA 1971) (“Any judgment on obviousness is in a sense necessarily
a reconstruction based on hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary skill in the
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art at the time the claimed invention was made and does not include
knowledge gleaned only from applicant’s disclosure, such a reconstruction is
proper.”).
Appellants also argue that claim 11 is patentable for the same reasons
Appellants raise with respect to claims 1, 27, and 28. We are not persuaded
by Appellants’ arguments for the same reasons discussed above with respect
to claims 1, 27, and 28.
Obviousness based on Hasson and Day
Claims 2, 3, 6-9, 13, and 16-19
Appellants argue that claims 2, 3, 6-9, 13, and 16-19 are patentable for
the same reasons Appellants raise with respect to claims 1 and 11. We are
not persuaded by Appellants’ arguments for the same reasons discussed
above with respect to claims 1 and 11.
Obviousness based on Hasson and Dorfman
Claims 4, 5, 14, and 15
We find not persuasive Appellants’ conclusory assertion that “it is not
obvious to fold a hingedly connected video display strategically associated
with other claimed components, particularly the portable enclosure or case
as shown in Appellant's Figs. 22-23E, to arrive at a practically transportable,
portable device.” App. Br. 19. We adopt as our own the findings and
reasoning of the Examiner as found under the heading “Ground No. 4,
Dependent Claims 4, 5, 14 & 15” on page 17 of the Answer.

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Obviousness based on Hasson and Levy
Claims 10, 12, and 20
We find not persuasive Appellants’ conclusory assertion that the
“cited art does not make obvious an apparatus with the structure and
capabilities set forth in dependent claims 1 and 11, with the ability to be
easily transported, and in the case of claims 10 and 20, through a carrying
handle.” See App. Br. 20. Nonobviousness cannot be established by
attacking the references individually when the rejection is predicated upon a
combination of prior art disclosures. See In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986). Appellants cannot overcome the Examiner’s
obviousness determination by merely asserting that the medical simulation
apparatus disclosed by Levy “does not relate to one defining a cavity in
which simulated procedures can be performed,” when the Examiner does not
rely on Levy for disclosing that feature. Appellants have not addressed the
combination of prior art references as a whole but simply improperly argue
the merits of each reference individually. See In re Keller, 642 F.2d 413,
425 (CCPA 1981) (citation omitted) (“The test for obviousness is not . . .
that the claimed invention must be expressly suggested in any one or all of
the references. Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.”).
CONCLUSIONS OF LAW
We conclude that Appellants have not overcome the Examiner’s
rejection of claims 1 and 21-28 under 35 U.S.C. § 102(b) as being
anticipated by Hasson.
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We further conclude that Appellants have not overcome the
Examiner’s rejection of claim 11 under 35 U.S.C. § 103(a) as being
unpatentable over Hasson.
We further conclude that Appellants have not overcome the
Examiner’s rejection of claims 2, 3, 6-9, 13, and 16-19 under
35 U.S.C. § 103(a) as being unpatentable over Hasson and Day.
We further conclude that Appellants have not overcome the
Examiner’s rejection of claims 4, 5, 14, and 15 under 35 U.S.C. § 103(a) as
being unpatentable over Hasson and Dorfman.
We further conclude that Appellants have not overcome the
Examiner’s rejection of claims 10, 12, and 20 under 35 U.S.C. § 103(a) as
being unpatentable over Hasson and Levy.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1-28.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).
AFFIRMED

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