INTUITIVE SURGICAL OPERATIONS, INC.

Patent Trials and Appeals Board

Jun 30, 2020

14833921 - (D) (P.T.A.B. Jun. 30, 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.
14/833,921 08/24/2015 Amir BELSON NEOG704-315C4/US 7283
96240 7590 06/30/2020
Jones Robb, PLLC (w/ Intuitive Surgical)
1420 Spring Hill Road
Suite 325
McLean, VA 22102
EXAMINER
KASZTEJNA, MATTHEW JOHN
ART UNIT PAPER NUMBER
3799
NOTIFICATION DATE DELIVERY MODE
06/30/2020 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):
docketing@jonesrobb.com
patent.group@intusurg.com
susanne.jones@jonesrobb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMIR BELSON
Appeal 2020-000060
Application 14/833,921
Technology Center 3700
Before MICHAEL J. FITZPATRICK, JEREMY M. PLENZLER, and
LEE L. STEPINA, Administrative Patent Judges.
Opinion for the Board by STEPINA, Administrative Patent Judge.
Opinion Concurring by PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 2–16 and 18–21.2 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. Appellant identifies the real party in interest as Intuitive Surgical
Operations, Inc. Appeal Br. 2.
2 Claim 1 has been cancelled, and claim 17 is withdrawn. Appeal Br. 29, 32
(Claims App.).
Appeal 2020-000060
Application 14/833,921

2
CLAIMED SUBJECT MATTER
The claims are directed to a system for facilitating insertion of a
flexible endoscope along a tortuous path, such as for colonoscopic
examination and treatment. Spec. ¶ 2.
Claims 2 and 18 are the sole pending independent claims and are
reproduced below with emphasis added.3
2. A system for advancing an instrument along an arbitrary
path, comprising:
a flexible and steerable instrument, the instrument
including a distal portion configured to be selectively steered to
assume a selected three-dimensional curve during advancement
along an arbitrary path; and
an electronic motion controller operably coupled to the
instrument to receive signals from the instrument representing a
three-dimensional model of the three-dimensional curve, the
electronic motion controller comprising electronic memory
configured to store the three-dimensional model based on the
signals received from the instrument as the instrument traverses
along the path and assumes the selected three-dimensional curve.

18. A system for controlling movement of a steerable
instrument along a path, comprising:
a flexible and steerable instrument having a proximal
portion comprising a plurality of interconnected segments, each
segment being coupled with a respective actuator of a plurality
of actuators; and an electronic motion controller logically
coupled to an electronic memory, wherein the electronic motion
controller is configured to:
selectively steer a distal portion of the instrument in one
or both of two steering directions orthogonal to one another and
to an advancement direction of the instrument to assume a

3 Appellant indicates that disclosure of the italicized limitations in claim 2
may be found in the Specification in paragraphs 35, 36, and 45. Appeal Br.
5. However we find written description of these limitations only in
originally filed claim 1 of the present Application.
Appeal 2020-000060
Application 14/833,921

3
selected three-dimensional curve during advancement of the
instrument along an arbitrary path,
generate a three-dimensional model of the selected three-
dimensional curve in the electronic memory based on
information related to positions of segments of the instrument
along a length of the instrument received during advancement of
the instrument along the arbitrary path,
control at least the proximal portion of the instrument by
controlling the actuators to linearly assume the selected curve of
the distal portion in an infinitely variable motion while the
instrument is advanced distally along the arbitrary path, and
propagate a measured length of at least one side of the
distal portion from the selected three-dimensional curve to at
least one side of the proximal portion while advancing the
instrument distally along the arbitrary path.
Appeal Br. 29 (Claims App.).
REFERENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Ueda US 5,681,260 Oct. 28, 1997

REJECTION
Claims 2–16 and 18–21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ueda.
OPINION
The Examiner finds that the embodiment of Ueda’s invention depicted
in Figures 28–31 (hereinafter “Ueda’s twelfth embodiment”) discloses many
of the elements recited in claims 2 and 18. Final Act. 2–3 (citing Ueda,
19:18–21:17, Figs. 28–31). However, with respect to claim 2, the Examiner
Appeal 2020-000060
Application 14/833,921

4
finds Ueda’s twelfth embodiment “is silent with respect to the electronic
motion controller operably being coupled to receive signals from the
instrument representing a three-dimensional model of the three-dimensional
curve.” Id. at 3. With respect to claim 18, the Examiner finds Ueda’s
twelfth embodiment fails to disclose “the electronic memory configured to
store a three-dimensional model based on signals received from the
instrument as the instrument traverses along the path and assumes the
selected curve.” Id.
To address these deficiencies, the Examiner finds that the embodiment
of Ueda’s invention disclosed in Figures 17–19 (hereinafter “Ueda’s sixth
embodiment”) includes “a memorizing part 126 is operably coupled with the
electronic motion controller to record movements and positions of the
endoscope during insertion into the body.” Id. (citing Ueda, 13:30–14:67,
Figs. 17–19). The Examiner concludes that it would have been obvious “to
include the memorizing part 126 to the three-dimensionally controlled
embodiment of Ueda et al. to enable a three-dimensional curve to be
efficiently and precisely propagated along the endoscope during insertion
and also allow for recordation of the insertion path for use in future
procedures on the same patient.” Id. (citing Ueda, 14:10–67). The
Examiner finds that Ueda’s twelfth embodiment guides its insertable
instrument via the use of a magnetic field and coreless coils through which
current is passed. Id. at 8 (citing Ueda, 21:10–17, Fig. 31). The Examiner
explains the proposed modification to meet all the requirements of claims 2
and 18 as follows.
[I]n view of the teachings of Ueda and the embodiment shown in
Figs 17-19, one of ordinary skill in the art would have been
motivated to modify the embodiment as seen in Figs 28-31 to
Appeal 2020-000060
Application 14/833,921

5
include a memorizing part 126, to memorize the amount of
current passed to each coreless coil from the controlling
apparatus 231 during insertion of the endoscope enabling
accurate propagation of the curve as well as recordation of the
inserting process, so that in the case of the next insertion, the
recorded inserting process may be made a guide.
Final Act. 8 (emphasis added). Thus, the Examiner’s proposed modification
relies on the use of the amount of electrical current passed to each coreless
coil 241, 242 (or coreless coil 261–264)4 of Ueda to provide the information
needed to meet the implicit requirement in claims 2 and 18 for a
configuration that generates a three-dimensional model of the curve assumed
by the instrument.
Appellant asserts that the memorizing part of Ueda’s sixth
embodiment records the X, Y locations of magnetic force generating parts
89a–89i, which are located outside of the body. Appeal Br. 19–20.
Appellant argues that memorizing part 126 of Ueda’s sixth embodiment
does not measure electric current flow. Id. at 20. According to Appellant,
because the Ueda’s sixth embodiment has these differences from the Ueda’s
twelfth embodiment, “Ueda [does not] contain any suggestion that would
have motivated a person of ordinary skill in the art at the time of invention to
try modifying any of Ueda’s embodiments to include a memorizing part
configured to memorize [electric] current flow.” Appeal Br. 20.
Appellant also argues even assuming that Ueda’s memorizing part
could be modified to memorize the amount of electric current supplied to
each coreless coil in Ueda’s twelfth embodiment, doing so “would not yield

4 In Figure 28, Ueda depicts two coreless coils represented by reference
numbers 241 and 242. In Figure 31, Ueda depicts a variation of the
invention including four coreless coils 261–264.
Appeal 2020-000060
Application 14/833,921

6
position information, let alone three-dimensional position information, of
Ueda’s insertable part 8.” Id. at 21. Specifically, Appellant asserts that
Ueda uses coils 261–264 merely to control advancement and retraction of
insertable part 8, and information relating to the amount of current flowing
through these coils would not provide the kind of information necessary to
create a three-dimensional model. See id. at 21–23.
In response, the Examiner finds that magnetic field generating
apparatus 211 of Ueda moves in X, Y, and Z directions. Ans. 7. The
Examiner determines that, because magnetic field generating apparatus 211
controls the movement of coils 241, 242, by recording the movements of
magnetic field generating apparatus 211 as well as the current passing
through coreless coils 241, 242, “one would undoubtedly be able to record
the entire inserting process in three dimensions as required by the current
claim language.” Id.
Appellant reiterates that Ueda’s memorizing part 126 records the
positions of the magnetic force generating parts 89a–89i and does not
disclose any architecture that would receive and record electrical current
flow values. Reply Br. 2. Appellant also asserts that the Examiner’s
proposed configuration to record the X, Y position of magnetic field
generating apparatus 211 and the current passing through coreless coils 241,
242 in Ueda would, at most, provide a path followed by Ueda’s magnet field
generating apparatus 211 during insertion, not the three-dimensional shape
of Ueda’s insertion part 8 at any given time. Id. at 4.
We do not sustain the Examiner’s rejection of claims 2 and 18
because the Examiner falls short of establishing that the amount of electrical
current passing through coreless coils 241, 242 is capable of providing an
Appeal 2020-000060
Application 14/833,921

7
indication as to the position of these coils (or of the insertable part 8 upon
which they are located) within the patient’s body in Ueda’s twelfth
embodiment. Rather, Ueda explains that, in its twelfth embodiment,
coreless coils 241 and 242 are switched on or off to create an attractive or
repulsive force. Ueda, 20:20–29. Although these forces interact with the
magnetic force created by magnetic force generating apparatus 211 to allow
guidance of coreless coils 241, 242, the position of the insertable part is
ascertained via the use of the endoscope image, not the amount of electrical
current passing through coreless coils 241, 242. “While the endoscope
image displayed in the TV monitor 7 is being observed, the magnetic field
generating part 251 of the magnetic force generating apparatus 211 will be
moved and the insertable part 8 will be guided within the inspected object by
using said magnetic force.”5 Id. at 20:29–34. Thus, it is unclear how
memorizing “the amount of current passed to each coreless coil from the
controlling apparatus 231 during insertion of the endoscope” would enable
“accurate propagation of the curve as well as recordation of the inserting
process, so that in the case of the next insertion, the recorded inserting
process may be made a guide” as stated by the Examiner. Final Act. 8.
Accordingly, the Examiner’s reasoning for modifying Ueda’s twelfth
embodiment based on Ueda’s sixth embodiment relies on an unsupported
finding of fact, and we do not sustain the Examiner’s rejection of claims 2–
16 and 18–21 as unpatentable over Ueda.

5 Ueda’s states that its twelfth embodiment is similar to its first embodiment,
which also uses the image from the endoscope to determine how the
endoscope should be moved and then uses a magnetic field to achieve the
intended movement. See Ueda, 9:14–29, 49–60, 19:33–36.
Appeal 2020-000060
Application 14/833,921

8
CONCLUSION
The Examiner’s rejections are reversed.

DECISION SUMMARY

Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
2–16, 18–21 103(a) Ueda 2–16, 18–
21
REVERSED

Appeal 2020-000060
Application 14/833,921

9
PLENZLER, Administrative Patent Judge, Concurring.
I agree with the majority’s decision to reverse the Examiner’s
rejection of claims 2–16 and 18–21, but write separately because I would
construe the “instrument” recited in the claim 2 as a means-plus-function
limitation, subject to 35 U.S.C. § 112 ¶ 6, which the Examiner’s rejection
does not address.
Based on the language of claim 2, we know that the “instrument”
provides “signals . . . representing a three-dimensional model of the three-
dimensional curve” along which it is advanced.6 We know nothing,
however, regarding what structure is associated with the “instrument,” other
than it is “flexible and steerable” and has a “distal portion.” Neither
Appellant, nor the Examiner, proposes an express construction of that term,
and we have no reason to believe that “instrument” is understood by persons
of ordinary skill in the art as the name for any particular structure.
Therefore, I would determine that “instrument” is a means-plus-function
term, subject to 35 U.S.C. § 112 ¶ 6.
The standard for determining whether a limitation is a means-plus-
function term is not based merely on the presence or absence of the word
“means,” but, rather, is based on “whether the words of the claim are
understood by persons of ordinary skill in the art to have a sufficiently

6 Independent claim 18 is different in scope. Claim 18 includes additional
structure for the “instrument” and does not require that the “instrument,”
itself, provides “signals . . . representing a three-dimensional model of the
three-dimensional curve” as in claim 2. Rather, claim 18 requires that the
controller “generate[s] a three-dimensional model of the selected three-
dimensional curve in the electronic memory based on information related to
positions of segments of the instrument along a length of the instrument
received during advancement of the instrument along the arbitrary path.”
Appeal 2020-000060
Application 14/833,921

10
definite meaning as the name for structure.” Williamson v. Citrix Online,
LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (internal citation omitted). As
Appellant does not propose any particular construction, it does not contend
that “instrument” is understood as the name for any particular structure.
Although there is a presumption that a limitation lacking the word “means”
is not subject to § 112 ¶ 6, that presumption is overcome when it is
“demonstrate[d] that the claim term fails to ‘recite sufficiently definite
structure’ or else recites ‘function without reciting sufficient structure for
performing that function.’” Id. As noted above, claim 2 recites function
“without reciting sufficient structure for performing that function.” Id. In
fact, claim 2 simply recites “instrument,” without any additional meaningful
structure, for providing “signals . . . representing a three-dimensional model
of the three-dimensional curve.” See Williamson, 792 F.3d at 1350
(“Generic terms such as ‘mechanism,’ ‘element,’ ‘device,’ and other nonce
words that reflect nothing more than verbal constructs may be used in a
claim in a manner that is tantamount to using the word ‘means’ because they
‘typically do not connote sufficiently definite structure’ and therefore may
invoke § 112, para. 6.”).
A means-plus-function limitation “shall be construed to cover the
corresponding structure, material, or acts described in the specification and
equivalents thereof.” 35 U.S.C. § 112 ¶ 6. Appellant explains that “the as-
filed specification discloses an endoscope 100” as the “instrument.” Appeal
Br. 4 (citing Spec. ¶¶ 25–28, Fig. 2). Appellant contends that “the three-
dimensional model [is] based on the signals received from the instrument as
the instrument traverses along the path and assumes the selected three-
dimensional curve.” Appeal Br. 5. According to Appellant, “each time the
Appeal 2020-000060
Application 14/833,921

11
endoscope body 102 advances one unit, each section in the automatically
controlled proximal portion 106 is signaled to assume the shape of the
section that previously occupied the space that it now sits in” to create “a
three-dimensional mathematical model of the patient’s colon.” Id.7

7 Appellant does not explain how the endoscope, itself (the “instrument”),
generates “a three-dimensional model of the three-dimensional curve,” such
that it could send “signals . . . representing a three-dimensional model of the
three-dimensional curve.” This concurrence should not be interpreted as
taking any position as to whether Appellant’s disclosure of the structure
corresponding to the recited “instrument” complies with 35 U.S.C. § 112
¶ 2.