Ex Parte BOCCOLERI et al

Patent Trials and Appeals Board

Mar 29, 2019

14854585 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/854,585 09/15/2015
25227 7590 04/02/2019
MORRISON & FOERSTER LLP
1650 TYSONS BOULEVARD
SUITE400
MCLEAN, VA 22102
FIRST NAMED INVENTOR
Gianni Ronald BOCCOLERI
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.
16890-20007.00 9161
EXAMINER
TAVLYKAEV, ROBERT FUATOVICH
ART UNIT PAPER NUMBER
2883
NOTIFICATION DATE DELIVERY MODE
04/02/2019 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):
EOfficeVA@mofo.com
PatentDocket@mofo.com
pair_mofo@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GIANNI RONALD BOCCOLERI, WOJCIECH K. TIMOSZYK,
and DAVID P. CHASE
Appeal2018-004579
Application 14/854,585
Technology Center 2800
Before MARK NAGUMO, MONTE T. SQUIRE, and
DEBRA L. DENNETT, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-36, which are all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 In explaining our Decision, we refer to the Specification filed September
15, 2015 ("Spec."); Final Office Action dated March 17, 2017 ("Final
Act."); Appeal Brief filed June 6, 2017 ("Appeal Br."); Examiner's Answer
dated January 26, 2018 ("Ans."); and Reply Brief filed March 26, 2018
("Reply Brief').
2 According to the Appeal Brief, Stryker Corporation is the real party in
interest. Appeal Br. 1.
Appeal2018-004579
Application 14/854,585
The Claimed Subject Matter
Appellants' disclosure relates to an infinite rotation fiber optic and
slip ring joint that can be used in medical devices. Spec. ,r 2. In particular,
the Specification describes a medical suspension arm assembly including a
plurality of suspension arms, with each adjacent pair of the suspension arms
being connected to each other by a joint and with at least one of the joints
comprising an infinite rotation joint. Id. ,r 4; Abstract. According to
Appellants, the infinite rotation joint allows the suspension arms at the
infinite rotation joint to have unlimited rotation relative to one another.
Spec. ,r 4.
Claim 1 is illustrative of the claimed subject matter on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief ( Appeal
Br. 29) (key disputed claim language italicized and bolded):
1. A medical suspension arm assembly comprising:
a plurality of suspension arms, each adjacent pair of the
suspension arms being connected to each other by a joint, with
at least one of the joints comprising an infinite rotation joint;
the infinite rotation joint allowing the suspension arms at
the infinite rotation joint to have unlimited rotation relative to
one another;
cabling including at least one fiber optic cable extending
through each of the suspension arms and each joint; and a wired
medical unit connected to an end of the plurality of suspension
arms;
wherein high definition video, data and power can be
transferred along each one of the suspension arms through
the cabling and across each joint.
Claim Appendix 1.
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Application 14/854,585
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Rus et al. US 2008/0225534 Al Sept. 18, 2008
("Rus")
Zhang et al. US 2013/0044976 Al Feb.21,2013
("Zhang")
Doric US 2014/0147077 Al May 29, 2014
Gobel WO 2014/075780 Al May 22, 2014
The Rejections
On appeal, the Examiner maintains the following rejections (Ans. 2):
1. Claims 1-5, 10-18, 23-29, and 34--36 are rejected under
35 U.S.C. § 103 as being unpatentable over Rusin view of Doric, and
further in view of Gobel 3 ("Rejection 1 "). Final Act. 7.
2. Claims 6-9, 19-22, and 30-33 are rejected under
35 U.S.C. § 103 as being unpatentable over Rusin view of Doric, in view of
Gobel, and further in view of Zhang ("Rejection 2"). Final Act. 14.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, we affirm the Examiner's
rejections based on the fact-finding and reasoning set forth in the Answer
and Final Office Action, which we adopt as our own. We add the following.
3 For both Rejections 1 and 2, the Examiner refers and cites to the English-
language ESP ACENET translation of the Gobel reference.
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Application 14/854,585
Claims 1-5 and 11-13
Rejection 1
Appellants argue claims 1-5 and 11-13 as a group. Appeal Br. 4, 11.
We select claim 1 as representative and claims 2-5 and 11-13 stand or fall
with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner determines that the combination of Rus, Doric, and
Gobel suggests a medical arm assembly satisfying all of the limitations of
claim 1 and thus, concludes the combination would have rendered claim 1
obvious. Final Act. 7-10 (citing Rus, Figs. 1--4, ,r,r 1-3, 28, 34--54, 57, 67;
Doric, Figs. 1-5, ,r,r 32--40; Gobel, Fig. 3, ,r,r 1-3).
Regarding the "infinite rotation joint" recitations of claim 1, the
Examiner finds that, although Rus teaches joints that provide free rotation of
one arm relative to an adjacent arm with a limited range of rotation (e.g., up
to 270°), the reference does not expressly teach that at least one of the joints
can be implemented as an infinite rotation joint, as required by the claim. Id.
at 8 (citing Rus ,r,r 28, 41, 54). The Examiner, however, relies on Doric for
teaching or suggesting that limitation of the claim. Id. at 8.
In particular, the Examiner finds that Doric discloses a robotic arm
assembly for medical applications that comprises a joint through which at
least one fiber optic cable passes. Final Act. 8 (citing Doric, Figs. 1-5, ,r,r
32--40). Moreover, the Examiner finds that Doric expressly teaches:
"embodiments of the present invention permit continuous and unrestricted
rotation of the rotating component 24 about the rotation axis 26 in either a
clockwise or counterclockwise direction." Id. at 8 ( quoting Doric ,r 37).
The Examiner finds that Doric also expressly teaches that "any medical or
industrial application that may require connecting optical fibers and ...
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Application 14/854,585
conduits to a rotating object could benefit from embodiments of the
invention." Id. at 8-9 (quoting Doric ,r 35).
Based on the above findings, the Examiner concludes:
It would have been obvious to a person of ordinary skill
in the art before the effective filing date of the claimed
invention that at least one joint of the suspension arm
assembly of Rus can be implemented as an
infinite/limitless rotation joint, in accordance with the
teachings of Doric, so that "continuous and unrestricted
rotation" of one arm relative to another can be enabled
and facilitate the use of the suspension arm assembly in
an environment ... [ for,] e.g., in a surgical room
environment considered by Rus for the disclosed arm
assembly.
Id. at 8 (citing Rus ,r,r 1-3 and quoting Doric ,r 37).
Appellants argue that the Examiner's rejection should be reversed
because "it is not obvious to combine the references as set forth in the Office
Action" and "any combination of the references would not result in all of the
features of the claim." Appeal Br. 4. In particular, Appellants contend that
Rus does not disclose any infinite rotation joints or that the cables 76 or 78
shown in Figure 2 of Rus transmit high definition video. Id. at 5.
Appellants also argue that, because Doric' s device passes fluid
through the joint, it is "not capable of passing any power or data." Id. at 6;
see also Reply Br. 2 (arguing "the Doric '077 publication does not disclose
using any fiber optic cable to transmit power"). In particular, relying on the
Declaration of Inventor Gianni Ronald Boccoleri, 4 Appellants argue that
4 A copy of the Declaration of Gianni Ronald Boccoleri under 37 C.F.R.
§ 1.132, dated February 2, 2017 ("Boccoleri Declaration") is provided in the
Evidence Appendix to the Appeal Brief.
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Application 14/854,585
Doric does not disclose a system that could transmit high definition video
signals because the losses in the optical signals, namely, power loss and
signal to noise ratio loss, would be too great. Appeal Br. 9.
Appellants further argue that the Examiner's rejection should be
reversed because Doric is non-analogous art. Appeal Br. 6; Reply Br. 3
( arguing the "Examiner appears to cite to disparate references"). In
particular, Appellants contend that because Doric is drawn to a device for
use in optogenetics, it is not from the same field of endeavor as the claimed
invention. Appeal Br. 6. Appellants also contend that, because Doric is
drawn to "issues related to transmitting fluid across ioints and how the fluid
can accept other items at the joint," the reference is not reasonably pertinent
to the problem faced by the inventors. Id. at 7.
We do not find Appellants' arguments persuasive of reversible error
in the Examiner's rejection. On the record before us, we determine that a
preponderance of the evidence and sound technical reasoning support the
Examiner's analysis and determination (Final Act. 7-10; Ans. 2-8) that the
combination of Rus, Doric, and Gobel suggests all of the limitations of
claim 1, including the "infinite rotation joint" and "wherein high definition
video, data and power can be transferred along each one of the suspension
arms" recitations of the claim; and the Examiner's conclusion that the
combination would have rendered the claim obvious. Rus, Figs. 1--4, ,r,r 1-
3, 28, 34--54, 57, 67; Doric, Figs. 1-5, ,r,r 32--40; Gobel, Fig. 3, ,r,r 1-3.
In particular, regarding the recitation "wherein high definition video,
data and power can be transferred along each one of the suspension arms
through the cabling and across each joint," as the Examiner finds (Final Act.
9), Rus teaches that the wired medical unit (video display/monitors 14A,
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14B, 14C) receives (as input signals) video signals, data and power
transferred along each one of the suspension arms through the cabling (76,
78) and across each joint. Rus ,r 39 ("Monitor cable 78 may include a
plurality of individual lines, including but not limited to, control lines,
communication lines, data lines, power lines and video lines and may be
comprised of electrical wire or fiber optic wires."); ,r 3 ("Monitor connection
cables and lines extend from the monitor to a remotely located control unit
that provides the information or images to be displayed on the monitor.").
As the Examiner further finds (Final Act. 9), Gobel discloses a
suspension arm assembly for medical applications comprising a plurality of
arms (32, 34) connected by rotation joints (42) and cabling (10), which
extends through the arms and rotation joints and provides input signals to a
medical wired unit, such as a video display/monitor. Gobel, Abstract, Figs.
1, 3, ,r,r 1-3. As the Examiner also finds (Final Act. 9), Gobel teaches that
the cabling can, indeed, transmit high definition video signals to the video
display. Gobel ,r 3 (disclosing the transmission of "high-frequency and/or
high-speed data signals from one device to another" including, for example,
"a display unit, such as a monitor").
Appellants' arguments do not reveal reversible error in the
Examiner's factual findings and analysis in this regard.
Contrary to what Appellants argue, the Examiner does provide a
reasoned basis, which is supported by a preponderance of the evidence in
this appeal record, to evince why one of ordinary skill would have combined
the teachings of Rus, Doric, and Gobel to arrive at Appellants' claimed
invention. Final Act. 8 ( explaining that one of ordinary skill in the art would
have had reason to modify Rus's medical suspension arm assembly to
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Application 14/854,585
include the rotation joint of Doric to enable continuous and unrestricted
rotation of one arm relative to another and facilitate use of the suspension
arm assembly in a surgical room environment); id. at 9 (explaining that one
of ordinary skill in the art would have utilized high definition video signals
for modified-Rus' s video monitor so that high resolution images can be
provided for applications such as live transmission of surgeries). See also
KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,420 (2007) (explaining that any
need or problem known in the art can provide a reason for combining the
elements in the manner claimed).
Appellants fail to direct us to persuasive evidence or provide an
adequate technical explanation to establish why the Examiner's articulated
reasoning for why one of ordinary skill would have arrived at the claimed
invention lacks a rational underpinning or is otherwise based on some other
reversible error.
Appellants' arguments that Rus does not disclose any infinite rotation
joints that transmit high definition video (Appeal Br. 5) and Dorie's device
is "not capable of passing any power or data" (id. at 6) are not persuasive of
reversible error because Appellants attack the references individually rather
than the combined teachings of the prior art as a whole. One cannot show
non-obviousness by attacking references individually where the rejection is
based on a combination of references. In re Keller, 642 F.2d 413, 425
(CCP A 1981 ). Appellants' assertions in this regard appear to be premised
on what Appellants contend the Rus and Doric references each teaches
individually, and not the combined teachings of the cited references as a
whole and what the combined teachings would have suggested to one of
ordinary skill in the art.
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As the Examiner explains (Ans. 4--5) and previously discussed above,
the Examiner relies on Doric for teaching or suggesting the "infinite rotation
joint" recitation of the claim and as a replacement for the limited-range
rotation joint of Rus, and relies on the combined teachings of Rus and Gobel
for suggesting the recitation "wherein high definition video, data and power
can be transferred along each one of the suspension arms through the cabling
and across eachjoint."
Moreover, the fact that Doric may describe an embodiment that
includes a device for a specific application that passes fluid through a joint,
without more, does not take away from the reference's broad disclosure
regarding the use of a robotic arm assembly for medical applications that
includes a joint that permits continuous and unrestricted rotation of the
rotating component (Doric ,r 3 7) and all that it teaches, including the
reasonable inferences that would be drawn by the skilled artisan. See In re
Preda, 401 F.2d 825, 826 (CCPA 1968).
Appellants' arguments regarding the Boccoleri Declaration (Appeal
Br. 9) are not persuasive of reversible error in the Examiner's analysis and
findings because they are conclusory and unsupported by citation to
persuasive evidence in the record. In re De Blauwe, 736 F.2d 699, 705 (Fed.
Cir. 1984). The portions of the declaration upon which Appellants rely (see
Boccoleri Deel. ,r,r 4--6) lack adequate factual support and rest on Mr.
Boccoleri's uncorroborated opinion testimony and conclusory statements.
See, e.g., Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d
281,294 (Fed. Cir. 1985) ("Lack of factual support for expert opinion going
to factual determinations ... may render the testimony of little probative
value in a validity determination."); In re Am. Acad. of Sci. Tech. Ctr., 367
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F.3d 1359, 1368 (Fed. Cir. 2004) ("[T]he Board is entitled to weigh the
declarations and conclude that the lack of factual corroboration warrants
discounting the opinions expressed in the declarations.") ( citations omitted);
cf also SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320
(Fed. Cir. 2006) ("[M]ere statements of disagreement ... as to the existence
of factual disputes do not amount to a developed argument.").
We do not find Appellants' argument that Doric is non-analogous art
(Appeal Br. 6-7; Reply Br. 3) persuasive based on the fact-finding and for
the well-stated reasons provided by the Examiner at pages 3---6 of the
Answer. Appellants' contentions in this regard are not well-taken because
they too narrowly construe the scope of Dorie's disclosure, particularly with
respect to the applicable field of endeavor and relevance to the problem in
which the claimed invention is involved. See In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004). As the Examiner finds (Ans. 3), Doric and Rus, and
Appellants' claimed invention are, indeed, analogous because they all relate,
at least generally, to arm assemblies/systems for medical applications,
including rotational joints. Moreover, we find that a preponderance of the
evidence supports the Examiner's finding (Ans. 3--4) that Doric provides a
solution, i.e., an infinite/limitless rotation joint, that resolves the drawback of
Rus's limited-range rotation joint, which is directly pertinent to the "infinite
rotation joint" recitations of and problem addressed by claim 1.
Accordingly, we sustain the Examiner's rejection of claims 1-5 and
11-13 as obvious over the combination of Rus, Doric, and Gobel.
Claims 14-16 and 24
Although Appellants argue claims 14--16 and 24 as a group under a
separate heading in the Appeal Brief (Appeal Br. 12), Appellants repeat and
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Application 14/854,585
rely on principally the same arguments previously presented above in
response to the Examiner's rejection of claim 1. See Appeal Br. 12-13
(arguing "[a]s set forth above in regard to Claim 1, it is not obvious to
combine the references as set forth in the final Office Action" and "it is not
possible to transmit high definition video across the joint of the Doric '077
publication").
Thus, we do not find these arguments persuasive of reversible error in
the Examiner's rejection of claims 14--16 and 24 for principally the same
reasons discussed above for sustaining the Examiner's rejection of claim 1.
Claims 17 and 18
Although Appellants argue claims 17 and 18, respectively, under
separate headings in the Appeal Brief (Appeal Br. 13), Appellants repeat and
rely on principally the same arguments previously presented above in
response to the Examiner's rejection of claim 1. See Appeal Br. 13, 14
( arguing "any combination thereof would not include any of the claimed
wiring elements extending through any infinite rotation joint").
Thus, we do not find these arguments persuasive of reversible error in
the Examiner's rejection of claims 17 and 18, respectively, for principally
the same reasons discussed above for sustaining the Examiner's rejection of
claim 1.
Claims 25-29, 35, and 36
Although Appellants argue claims 25-29, 35, and 36 as a group under
a separate heading in the Appeal Brief (Appeal Br. 14), Appellants repeat
and rely on the same arguments previously presented above in response to
the Examiner's rejection of claim 1. See Appeal Br. 14--15 (arguing "[a]s set
forth above in regard to Claim 1, it is not obvious to combine the references
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as set forth in the final Office Action" and "would not include 'high
definition video, data and power' that 'can be transferred ... across the at
least one infinite rotation joint to the wired medical unit support"').
Again, these arguments are not persuasive of reversible error in the
Examiner's rejection of claims 25-29, 35, and 36 for principally the same
reasons discussed above for sustaining the Examiner's rejection of claim 1.
Claims 10. 15. 16. and 24
Appellants present additional argument for the patentability of claims
10, 15, 16, and 24 as a group. Appeal Br. 11. We select claim 10 as
representative and claims 15, 16, and 24 stand or fall with claim 10.
37 C.F.R. § 4I.37(c)(l)(iv).
Claim 10 depends from claim 1 and further recites "at least one
multiplexer for multiplexing the high definition video traveling through the
cabling." Claims Appendix 3.
Appellants argue that the Examiner's rejection of claim 10 should be
reversed because the Examiner has not made a prima facie case. Appeal Br.
12. In particular, Appellants contend that the Examiner has failed to
"provide prior art outlining that a multiplexer is in common use in surgical
support arms and why it would have been obvious to use such multiplexer in
the combination of the references as set forth in the Office Action." Id. at 12
(internal quotations omitted).
We do not find Appellants' argument persuasive of reversible error in
the Examiner's rejection based on the fact-finding and reasoning provided
by the Examiner at page 8 of the Answer and pages 7-10 and 13 of the Final
Office Action.
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Contrary to what Appellants argue, we find that a preponderance of
the evidence does support the Examiner's finding (Ans. 8) that a multiplexer
was a well-known element in the art used in communication systems,
including, for example, the communication portion of Rus' s system, and that
the element was known for providing the benefit of multiplexing/combining
multiple data communication links along a same communication path; and
the Examiner's determination that it would have been obvious to include
such a multiplexer for multiplexing the high definition video, as recited in
the claim.
In particular, as the Examiner finds (Ans. 8; Final Act. 13) and
Appellants do not contest, such common use of a multiplexer is described,
for example, in Figure 5 of the admitted prior art publication entitled,
Tutorial: Wavelength Division Multiplexing and Directional Multiplexing, 5
which is of record in this appeal and cited by Appellants in the IDS dated
September 15, 2015. See also KSR, 550 U.S. at 416 ("The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.").
Moreover, Appellants' assertion that "the Examiner has not made a
prima facie rejection of Claim 1 O" is conclusory and, without more,
insufficient to rebut or otherwise establish reversible error in the Examiner's
factual findings and analysis in this regard. De Blauwe, 736 F.2d at 705.
Accordingly, we sustain the Examiner's rejection of claims 10, 15, 16,
and 24 as obvious over the combination of Rus, Doric, and Gobel.
5 Princetel, Tutorial: Wavelength Division Multiplexing and Directional
Multiplexing, http://www. princetel. com/tutorial_ wdm_circulator. asp (last
visited Sept. 30, 2013).
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Claims 23 and 34
Although Appellants argue claims 23 and 34, respectively, under
separate headings in the Appeal Brief (Appeal Br. 14, 15), Appellants rely
on the same arguments previously presented above in response to the
Examiner's rejection of claim 10. See Appeal Br. 14 ("Like Claim 10
above, ... the Examiner has not made a prima facie rejection of Claim 23"),
15 ("Like Claim 10 above, ... the Examiner has not made a prima facie
rejection of Claim 34").
We, therefore, do not find Appellants' arguments persuasive of
reversible error in the Examiner's rejection of claims 23 and 34,
respectively, for the same reasons discussed above for sustaining the
Examiner's rejection of claim 10.
Accordingly, we affirm the Examiner's rejection of claims 1-5, 10-
18, 23-29, and 34--36 under 35 U.S.C. § 103 as obvious over the
combination of Rus, Doric, and Gobel.
Rejection 2
In response to the Examiner's rejection of claims 6-9, 19-22, and 30-
33 under 35 U.S.C. § 103 as being unpatentable over Rusin view of Doric,
in view of Gobel, and further in view of Zhang, which we refer to above as
Rejection 2, Appellants do not present any new or additional substantive
arguments and apparently intend to rely on the same arguments previously
presented and discussed above in response to the Examiner's Rejection 1.
See Appeal Br. 15-16.
Accordingly, based on the findings and technical reasoning provided
by the Examiner and for principally the same reasons discussed above for
affirming the Examiner's Rejection 1, we affirm the Examiner's rejection of
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claims 6-9, 19-22, and 30-33 under 35 U.S.C. § 103 as obvious over the
combination of Rus, Doric, Gobel, and Zhang.
DECISION
The Examiner's rejections of claims 1-36 are affirmed.
It is ordered that the Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a).
AFFIRMED
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