Gearbox, LLC

Patent Trials and Appeals Board

Sep 1, 2020

15226991 - (D) (P.T.A.B. Sep. 1, 2020)

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.
15/226,991 08/03/2016 Bran Ferren 1203-004-001O-C00001 1654
44765 7590 09/01/2020
INTELLECTUAL VENTURES - ISF
ATTN: DOCKETING, ISF
3150 - 139th Ave SE
Bldg. 4
Bellevue, WA 98005
EXAMINER
TOTH, KAREN E
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
09/01/2020 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):
ISFDocketInbox@intven.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRAN FERREN, W. DANIEL HILLIS, RODERICK A. HYDE,
MURIEL Y. ISHIKAWA, EDWARD K.Y. JUNG, ERIC C. LEUTHARDT,
NATHAN P. MYHRVOLD, THOMAS J. NUGENT JR.,
ELIZABETH A. SWEENEY, CLARENCE T. TEGREENE,
LOWELL L. WOOD JR., and VICTORIA Y.H. WOOD

Appeal 2020-001061
Application 15/226,991
Technology Center 3700
____________

Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and
NINA L. MEDLOCK, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 132–134, 137, 140–144, 147, and 152–
154.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
“Gearbox, LLC.” Appeal Br. 4.
2 The rejections of claims 96, 97, 100–106, 112–125, 129–131, and 148–
151 are withdrawn. Ans. 3.
Appeal 2020-001061
Application 15/226,991

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STATEMENT OF THE CASE
Subject Matter on Appeal
The Appellant’s invention relates to “methods for controlling
movement of a lumen traveling device through a body tube tree, as well as
associated systems and devices.” Spec. 8:27–29. Claim 132, the sole
independent claim on appeal, is representative of the claimed subject matter
and recites:
132. A lumen traveling device control system comprising:
one or more non-transitory machine readable data storage
media bearing
one or more instructions for causing a propelling
mechanism to produce movement of the lumen-
traveling device through a man-made lumen within
the body of a subject, wherein the lumen-traveling
device includes a structural element configured to
fit within the man-made lumen, the propelling
mechanism, motion control circuitry and response
control circuitry, and an active portion;
one or more instructions for receiving a signal indicative
of detection of a parameter value of interest;
one or more instructions for generating a response
control signal with the response control circuitry
responsive to receipt of the signal indicative of
detection of the parameter value of interest; and
one or more instructions for performing an action with
the active portion responsive to receipt of the
response control signal.
Appeal Br. 60–61, Claims App.

Appeal 2020-001061
Application 15/226,991

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Rejections
Claims 132, 137, 141–144, 147, 153, and 154 are rejected under
U.S.C. § 102(b) as anticipated by Strommer (US 2006/0058647 A1, pub.
Mar. 16, 2006).
Claim 133 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Strommer and Hardin (US 2008/0183100 A1, pub. July 31, 2008).
Claims 134 and 152 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Strommer and Khait (US 2013/0080119 A1, pub. Mar. 28,
2013).
Claim 140 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Strommer and Riviere (US 2005/0154376 A1, pub. July 14, 2005).
Claim 140 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Strommer and Chiel (US 2003/0065250 A1, pub. Apr. 3, 2003).

ANALYSIS
Independent claim 132 calls for “[a] lumen traveling device control
system” with a “non-transitory machine readable data storage media” having
“one or more instructions for performing an action with the active portion
responsive to receipt of the response control signal.” Appeal Br. 60–61,
Claims App.
The Examiner finds the claimed “active portion” reads on position
sensor (Strommer’s MPS sensor 594) and the claimed “response control
signal” corresponds to the automatic movement of a catheter upon finding a
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Application 15/226,991

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blocked passage or lumen which is narrower than expected.3 See Final
Act. 6–7 (citing Strommer ¶ 182); Ans. 5–6. As for the aforementioned
instruction of claim 132, the Examiner finds:
Strommer’s device includes instructions for causing element
[MPS sensor] 594 to perform its various tasks, including
sending signals indicative of its three-dimensional positioning;
particularly as these signals indicative of positioning are sent
while the device moves (that is, while the “response control”
signal causes the direction of movement to change upon
detection of the parameter value of interest indicating that the
route must change – see, for example, paragraphs [0182] and
[0185]), these instructions for updated location sensing (as
performed by the active portion) are generated after receipt of a
“response controls signal”, and as such are “responsive” to it.
Ans. 5.
The Appellant points out that controller 584 constantly receives
signals from MPS sensor 594. See Reply Br. 6 (“Controller 584 constantly
receives a signal from MPS 588 respective of three-dimensional coordinates
of MPS sensor 594 at any given time (i.e., a feedback), thereby allowing
moving mechanism 586 to apply corrections to possible errors of movement
along path 608.” (quoting Strommer ¶ 185)). The Appellant argues that
“[t]he Examiner has supplied no evidence that MPS sensor 594 sends signals
‘indicative of its three-dimensional positioning’ responsive to a ‘response
control signal.’” Id. (citing Strommer ¶ 185). The Appellant’s argument is
persuasive.

3 “MPS” is an acronym for its “medical positioning system,” i.e., “an
electromagnetic position detection system which detects the position of an
object, according to an output of a three-axis coil which responds to
electromagnetic radiation of an electromagnetic transmitter.” Strommer
¶ 63.
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Application 15/226,991

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The Examiner is correct in finding that MPS sensor 594 sends a signal
to controller 584 after catheter 596 automatically moves away from a
blocked passage or lumen which is narrower than expected. See Ans. 4–6.
However, merely because MPS sensor 594 sends a signal to controller 584
after catheter 596 automatically moves does not mean that the signal sent
from MPS sensor 594 to controller 584 is responsive (i.e., a reaction or
response) to the catheter automatically moving away from a blocked passage
or lumen which is narrower than expected.
As pointed out by the Appellant, controller 584 constantly receives
signals from MPS sensor 594. Reply Br. 6 (citing Strommer ¶ 185). For
controller 584 to constantly receive signals from MPS sensor 594, MPS
sensor 594 must constantly send signals to controller 584. See id.
Accordingly, whether or not the catheter automatically moves away from a
blocked passage or lumen which is narrower than expected, MPS sensor 594
will send signals to controller 584. Therefore, the signals sent by MPS
sensor 594 are not a reaction or response to the automatic movement of the
catheter. Hence, we do not agree with the Examiner’s finding that Strommer
discloses “one or more instructions for performing an action with the active
portion responsive to receipt of the response control signal,” as recited in
claim 132.
Thus, we do not sustain the Examiner’s rejection of independent
claim 132 and dependent claims 137, 141–144, 147, 153, and 154 as
anticipated by Strommer.
Further, the Examiner fails to rely on the teachings of Hardin, Khait,
Riviere or Chiel in any manner that would remedy the deficiency in the
Examiner’s rejection as discussed above. Thus, we do not sustain the
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Application 15/226,991

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rejections of claims 133, 134, 140, and 152 as unpatentable over Strommer
and Hardin, Khait, Riviere or Chiel.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
132, 137,
141–144,
147, 153,
154
102(b) Strommer, 132, 137,
141–144,
147, 153,
154
133 103(a) Strommer, Hardin 133
134, 152 103(a) Strommer, Khait 134, 152
140 103(a) Strommer, Riviere 140
140 103(a) Strommer, Chiel 140
Overall
Outcome
132–134,
137, 140–
144, 147,
152–154

REVERSED