Intuitive Surgical Operations, Inc.

Patent Trials and Appeals Board

Nov 30, 2020

2020001474 (P.T.A.B. Nov. 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.
14/818,063 08/04/2015 Samuel T. Crews P00591-US-02 1063
96240 7590 11/30/2020
Jones Robb, PLLC (w/ Intuitive Surgical)
1420 Spring Hill Road
Suite 325
McLean, VA 22102
EXAMINER
LALONDE, ALEXANDRA ELIZABETH
ART UNIT PAPER NUMBER
3783
NOTIFICATION DATE DELIVERY MODE
11/30/2020 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 SAMUEL T. CREWS

Appeal 2020-001474
Application 14/818,063
Technology Center 3700
____________

Before DANIEL S. SONG, CHARLES N. GREENHUT, and
MICHAEL. J. FITZPATRICK, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant, Intuitive Surgical Operations, Inc.,1 appeals under 35
U.S.C. § 134(a) from the Examiner’s non-final decision rejecting claims 1–
15 and 17–25. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies itself as the sole real party in interest. Appeal Br. 2.
Appeal 2020-001474
Application 14/818,063

2
STATEMENT OF THE CASE
The Specification
The Specification “relate[s] to surgical cannulas and methods of
manufacturing such cannulas.” Spec. ¶2.
The Claims
Claims 1–15 and 17–25 are rejected. Non-Final Act. 1. Claim 16 was
cancelled, and claims 26–32 are withdrawn. Appeal Br. 33–35; Non-Final
Act. 2. No other claims are pending. Appeal Br. 31–35. Claim 1 is
illustrative and reproduced below.
1. A surgical instrument cannula, comprising:
a bowl portion comprising a distal section having at least
one depression in an outer surface of the distal section;
wherein the distal section of the bowl portion has a
reduced wall thickness at a location of the at least one depression;
a tube portion received by and extending from the distal
section, the tube portion being dimensioned to receive a
teleoperated surgical instrument; and
a plurality of welds located at the at least one depression
and joining the bowl portion to the tube portion;
wherein the plurality of welds are discrete welds spaced
from one another along a circumferential direction of the
cannula.
Appeal Br. 31.
Appeal 2020-001474
Application 14/818,063

3
The Examiner’s Rejections
The following rejections, both pursuant to 35 U.S.C. § 103, are before
us:
1. claims 1–6, 8–10, 12–15, 17–21, 23, and 24 as unpatentable
over Swenson,2 Yokota,3 Harms4 (Final Act. 3); and
2. claims 7, 11, 22, and 25 as unpatentable over Swenson, Yokota,
Harms, and Perot5 (id. at 20).
DISCUSSION
Rejection 1
The Examiner found that Swenson teaches all of the subject matter of
claim 1 save the “welds” limitations. Non-Final Act. 4–5 (citing Swenson
5:54–60, Figs. 1–3). Figure 1 of Swenson is reproduced below, rotated
ninety degrees clockwise:

Figure 1 of Swenson, reproduced above, shows “needle assembly 20 [that]
includes an elongate cannula 21, a hub 22 and bonding material such as a
quantity of adhesive 24.” Swenson 4:36–38. “The adhesive is provided for
holding the cannula in a fixed relationship with the hub and for preventing

2 US 4,581,024, issued Apr. 8, 1986 (“Swenson”).
3 US 2012/0179114 A1, published July 12, 2012 (“Yokota”).
4 US 2012/0165738 A1, published June 28, 2012 (“Harms”).
5 US 2006/0161114 A1, published July 20, 2006 (“Perot”).
Appeal 2020-001474
Application 14/818,063

4
the cannula from being pulled out of the hub during normal use.” Id. at
5:57–60.
As relates to the “welds” limitations admittedly not taught by
Swenson, the Examiner first turned to Yokota, which discloses “an injection
needle assembly.” Yokota ¶1. The Examiner found that Yokota teaches –
with respect to needle assembly 2 shown in Figure 3 – a first member being
fixed to an insertion portion of a second member “via a fixing piece 34 by
adhesive, ultrasonic welding, laser welding, screw fixation and the like.”
Non-Final Act. 5 (citing Yokota ¶63, Fig. 3). The Examiner further found
and concluded:
Therefore Yok[o]ta teaches that adhesive, ultrasonic welding,
laser welding, screw fixation and the like could all be used to
achieve the same result of securing two portions together and
thus adhesive and welds were art-recognized equivalents at the
time the invention was made; therefore, it would have been
obvious to one of ordinary skill in the art to substitute welds in
place of adhesive since it has been held that substituting parts of
an invention involves only routine skill in the art.
Id.
The Examiner lastly turned to Harms, which “relates to a method for
manufacturing a composite work piece for a drug delivery device and to a
composite work piece for a drug delivery device.” Harms ¶1. The
Examiner found that Harms teaches (1) “a plurality of welds . . . located at
the at least one depression and joining” two portions (Non-Final Act. 6
(citing Harms ¶80, Figs. 2a–2d)); and (2) “wherein the plurality of welds are
discrete welds spaced from one another along a circumferential direction . . .
for the purpose of forming a permanent connection” between the two
portions (id. (citing Harms ¶49, Fig. 2c)). The Examiner concluded:
Appeal 2020-001474
Application 14/818,063

5
Therefore, it would have been obvious to one of ordinary skill in
the art at the time the invention was filed to replace the adhesive
connection taught by Swenson with a plurality of welds located
at the at least one depression; wherein the plurality of welds are
discrete welds spaced from one another along a circumferential
direction, as taught by Harms, for the purpose of forming a
permanent connection between the first and second portion
(Harms, paragraph [0049]). Since Harms teaches using discrete,
circumferentially spaced welds to join two portions, when
applied to the device of Swenson, these welds would join the
bowl portion to the tube portion (as the adhesive does in
Swenson) and would be spaced along the circumferential
direction of the cannula similar to how they are spaced in Harms.
Id.
Appellant makes several arguments against the rejection of claim 1.
First, Appellant argues that the preamble, which recites “[a] surgical
instrument cannula,” is limiting and, “in combination with the recitation of
‘the tube portion being dimensioned to receive a teleoperated surgical
instrument,’ defines the structure of the claimed cannula and differentiates
the claimed cannula from the prior art,” i.e., Swenson’s needle. Appeal
Br. 18–19. Appellant quotes the MPEP as stating “[a]ny terminology in the
preamble that limits the structure of the claimed invention must be treated as
a claim limitation,” and “statements in the preamble reciting the purpose or
intended use of the claimed invention must be evaluated to determine
whether the recited purpose or intended use results in a structural difference
(or, in the case of process claims, manipulative difference) between the
claimed invention and the prior art. If so, the recitation serves to limit the
claim.” Id. at 18 (citing MPEP § 211.02(I)–(II)). But Appellant wholly fails
to explain how the quoted MPEP provisions apply, if they do at all, to the
preamble language before us. Id. at 18–19.
Appeal 2020-001474
Application 14/818,063

6
Appellant certainly distinguishes between the purpose or intended use
of a surgical instrument cannula and that of a hypodermic needle. See
Appeal Br. 19 (“The as-filed specification discloses cannulas for use with
surgical instruments, such as instruments used for minimally invasive
surgery. . . . In contrast, Swenson’s cannula is a hypodermic needle
configured to deliver medication to, or collect fluids intravenously from, a
patient.”). However, and critically, Appellant does not show, let alone
assert, any particular structure that the preamble, if limiting, would impart
upon the claim. In sum, Appellant does not adequately support that the
preamble is limiting.
In any event, we determine that the preamble is not limiting. “When
limitations in the body of the claim rely upon and derive antecedent basis
from the preamble, then the preamble may act as a necessary component of
the claimed invention. On the other hand, [i]f the body of the claim sets out
the complete invention, then the language of the preamble may be
superfluous.” Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339
(Fed. Cir. 2003) (quotation marks and citations omitted). Here, the body of
the claim sets out the complete invention, including “a tube portion received
by and extending from the distal section, the tube portion being dimensioned
to receive a teleoperated surgical instrument.” Appeal Br. 31 (claim 1).
And the preamble fails to provide antecedent basis for any limitation in the
body, as the only potential candidate, “teleoperated surgical instrument,” is
introduced in the body of the claim with the article “a.” Cf. Warner–
Lambert Co. v. Apotex Corp., 316 F.3d 1348, 1356 (Fed. Cir. 2003) (“It is
also significant that Congress used the word ‘a’ before ‘drug’ and the word
Appeal 2020-001474
Application 14/818,063

7
‘the’ before ‘use.’ The words ‘the use’ require antecedent basis; thus, ‘the
use’ refers to a specific ‘use’ rather than a previously undefined ‘use.’”).
Having determined the preamble is not limiting, we now turn to “the
tube portion being dimensioned to receive a teleoperated surgical
instrument,” as recited in the body of claim 1. With respect to that
limitation, Appellant first argues: “Swenson does not disclose any
teleoperated surgical instruments and does not disclose or suggest the
cannula 21 being dimensioned to receive any such instruments.” Appeal
Br. 19. We agree with Appellant’s characterization of Swenson in this
regard, but that, without more, does not apprise us of Examiner error. Claim
1 does not recite “a teleoperated surgical instrument” as part of the claimed
invention. This is Appellant’s choice. In other words, the claim does not
require that the tube portion actually contains a teleoperated surgical
instrument; it merely requires the tube portion to being dimensioned such
that one could be accommodated therein.
In rejecting the claim, the Examiner found that Swenson’s “needle 21
could receive a sensor which could be computer operated in order to monitor
the flow within the needle.” Non-Final Act. 5 (emphasis added). If the
Examiner’s finding were supported by some evidence in the record, and if
such sensor were a “teleoperated surgical instrument” within the meaning of
the claim, that would be enough to demonstrate that Swenson’s needle 21
meets the limitation “the tube portion being dimensioned to receive a
teleoperated surgical instrument.” But the Examiner does support its
finding. Id.; see also id. at 24 (“[T]he cannula 21 of Swenson is
dimensioned to receive a sensor for example which would also operate at
least in part with computer assistance.”) (no evidence cited); Ans. 4
Appeal 2020-001474
Application 14/818,063

8
(“Furthermore the tube portion (item 21 of Swenson) could receive a sensor
that would operate at least in part with computer assistance.”) (no evidence
cited). The Examiner has not cited to any prior art disclosing the existence
of such a sensor or the suitability of placing one within a needle. The
Examiner’s finding may very well be supportable, but it is not, in fact,
supported in the record here. In addition, the Examiner’s lack of evidence
regarding the purported sensor precludes us from considering whether it
could be considered a “teleoperated surgical instrument” within the meaning
of the claim.
Accordingly, we cannot sustain the rejection of claim 1, and,
therefore, reverse it. For the same reasons, we reverse the rejection of
independent claim 12, which also recites “the tube portion being
dimensioned to receive a teleoperated surgical instrument.” Appeal Br. 32
(claim 12). Lastly, we reverse the rejection of claims 2–6, 8–10, 13–15, 17–
21, 23, and 24, all of which ultimately depend from claim 1 or claim 12. See
In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) (“Dependent claims are
nonobvious under section 103 if the independent claims from which they
depend are nonobvious.”).
Rejection 2
The Examiner rejected dependent claims 7, 11, 22, and 25 over the
same references discussed above and additionally in view of Perot. The
Examiner does not rely on Perot in a manner that could cure the deficiency
in the rejection of claims 1 and 12. Thus, for essentially the same reasons,
we reverse the rejection of claims 7, 11, 22, and 25.
Appeal 2020-001474
Application 14/818,063

9
SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 8–10,
12–15, 17–
21, 23, 24
103 Swenson, Yokota,
Harms
1–6, 8–10,
12–15, 17–
21, 23, 24
7, 11, 22,
25
103 Swenson, Yokota,
Harms, Perot
7, 11, 22,
25
Overall
Outcome
1–15, 16–
20

REVERSED