Ex Parte Cunningham et al

Patent Trial and Appeal BoardApr 6, 2015

12405052 (P.T.A.B. Apr. 6, 2015)

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. 12/405,052 03/16/2009 Richard L. Cunningham IMMR-IMD0194C1 434701-796 2872 34300 7590 04/06/2015 PATENT DEPARTMENT (51851) KILPATRICK TOWNSEND & STOCKTON LLP 1001 WEST FOURTH STREET WINSTON-SALEM, NC 27101 EXAMINER SIM, YONG H ART UNIT PAPER NUMBER 2621 MAIL DATE DELIVERY MODE 04/06/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RICHARD L. CUNNINGHAM and ROBERT COHEN ____________ Appeal 2013-000315 Application 12/405,052 Technology Center 2600 ____________ Before THOMAS L. GIANNETTI, CATHERINE SHIANG, and JESSICA C. KAISER, Administrative Patent Judges. KAISER, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2013-000315 Application 12/405,052 2 EXEMPLARY CLAIM Exemplary claim 1 under appeal reads as follows: 1. A device, comprising: an interface member including a compressible material of selectively variable density; a manipulandum movable in a degree of freedom, the manipulandum configured to penetrate the material; a sensor configured to output a position signal based on the position of the manipulandum; and an actuator configured to apply a compressive force to the material to change the density of the material within at least a portion of the interface member in response to the position signal, wherein the change in density of the material imparts a haptic effect to the manipulandum. REJECTIONS AT ISSUE Claims 1–6, 8–16, and 18–20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Madsen1 and Anderson.2 (Ans. 4.) Claim 7 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Madsen, Anderson, and Oostrom.3 (Ans. 12.) Claim 17 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Madsen, Anderson, and Delp.4 (Ans. 13.) 1 Madsen et al., US 6,318,146 B1; issued Nov. 20, 2001. 2 Anderson et al., US 2004/0009459 A1; published Jan. 15, 2004. 3 van Oostrom et al., US 6,921,267 B2; issued July 26, 2005. 4 Delp et al., US 5,682,886; issued Nov. 4, 1997. Appeal 2013-000315 Application 12/405,052 3 ISSUES The issues raised by Appellants’ contentions are: Did the Examiner err in finding that the combination of Madsen and Anderson teaches or suggests (a) “the manipulandum configured to penetrate the material;” or (b) “an actuator configured to apply a compressive force to the material to change the density of the material within at least a portion of the interface member in response to the position signal, wherein the change in density of the material imparts a haptic effect to the manipulandum,” as recited in claim 1? Did the Examiner err in combining Madsen and Anderson because the proposed combination would not work or would be unsuitable for its intended purpose? ANALYSIS The Examiner rejected claim 1 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Madsen and Anderson. (Ans. 4.) Appellants contend neither Madsen nor Anderson teaches “the manipulandum configured to penetrate the material.” (App. Br. 6.) The Examiner finds Madsen teaches the recited “material” (i.e., “medical phantom body part material comprising compressible beads suitable for various parts of human body”). (Ans. 4 (citing Madsen, col. 5, ll. 1–16).) The Examiner further finds Anderson teaches a manipulandum (i.e., a needle) configured to penetrate a manikin. (Id. at 4–5 (citing Anderson, Fig. 13).) The Examiner finds the combination of these teaches the argued limitation. (Id. at 5) Specifically, the Examiner combines Madsen’s teaching of a phantom body part including compressible beads with Appeal 2013-000315 Application 12/405,052 4 Anderson’s teaching of penetrating a manikin (i.e., simulated body part(s)) with a needle to arrive at the argued limitation. (See id.) Appellants argue Madsen does not teach the argued limitation because Madsen relates to non-invasive procedures, and Anderson does not teach the argued limitation because Anderson “contemplates the use of virtual internal organs simulated by computer models and by computer-generated force feedback.” (App. Br. 6.) Appellants further argue claim 1 requires the “material” be penetrated, rather than only a manikin. (Reply Br. 3; App. Br. 6.) We agree with Appellants that claim 1 requires the manipulandum be configured to penetrate the material (i.e., “a compressible material of selectively variable density”) and not only a manikin. Nevertheless, we find Appellants’ above arguments unpersuasive because they address each reference individually, rather than the combination found by the Examiner (i.e., Madsen’s teaching of a simulated body part material in combination with Anderson’s teaching of a needle penetrating a manikin). In re Keller, 642 F.2d 413, 426 (CCPA 1981) (citation omitted) (“[O]ne cannot show non-obviousness by attacking references individually where . . . the rejections are based on combinations of references.”). Next, Appellants argue the combination of Madsen and Anderson does not teach the recited “actuator.” (App. Br. 6–7.) Specifically, Appellants argue the actuator in Anderson “provides frictional resistance applied by one or more rollers in contact with the simulated medical device,” but does not “change the density of the material,” as recited in claim 1. (Id. at 7.) Appellants’ argument is premised on the Examiner’s purported failure to explain how the actuator in Anderson would compress the material in Appeal 2013-000315 Application 12/405,052 5 Madsen. (App. Br. 7 (“This actuator [in Anderson] does not operate by compressing some compressible material that has been penetrated, and the Examiner makes no effort to tie the frictional forces of the Anderson actuator to compression (or penetration) of the compressible material of Madsen.”); Reply Br. 2–3 (“The Examiner appears to contemplate that the phantom body parts would be incorporated into the Andersen device and that the Andersen actuator would somehow apply a compressive force to these phantom body parts, which would change their density. There is no explanation for how the Anderson actuator could accomplish this.”).) We agree with the Examiner’s findings that the combination teaches the argued limitation. The Examiner finds Anderson teaches the actuator applies a compressive force to create frictional resistance. (Ans. 14.) The Examiner further finds that it would have been obvious to apply such a compressive force as taught by Anderson’s actuator to the phantom body part material taught in Madsen to “give[] the user [a] more realistic and accurate experience for a surgery simulation.” (Id.; see also Ans. 5.) Contrary to Appellants’ argument, the Examiner’s findings are not limited to Andersen’s actuator applying compressive force to Madsen’s compressible material without the exercise of any judgment or creativity by the skilled artisan. Instead, the Examiner finds that it would have been obvious “to incorporate the idea of having . . . an actuator which can selectively be controlled to simulate the density variance by applying a compressive force as taught by Anderson into the phantom/simulated body part material comprising compressive beads of Madsen to obtain . . . an actuator configured to selectively change/vary the density of a material comprising beads in response to the position signal . . .” (Ans. 5.) In other Appeal 2013-000315 Application 12/405,052 6 words, the Examiner finds that Anderson teaches an actuator that uses compressive force to simulate density variation, and finds that it would have been obvious to use an actuator supplying compressive force when using a compressible material (such as that in Madsen) to simulate changes in density. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.” Keller, 642 F.2d at 425. Rather, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Because the Examiner did not rely on a bodily incorporation, but relied instead on what the references would have taught or suggested to a person of ordinary skill in the art, we reject Appellants’ argument that Anderson’s actuator could not be bodily incorporated to supply compressive force to Madsen’s material. Appellants argue “the Examiner’s proposed combination of Madsen in view of Anderson would either not work or would render each unsuitable for its intended purpose.” (App. Br. 7.) Appellants argue penetration of Madsen’s material would result in the aqueous contents leaking out through the penetration, particularly when compressive force is applied by the actuator. (Id. at 7–8.) The Examiner finds, and we agree, that even without the aqueous contents, Madsen’s material (i.e., phantom body part) would still meet the argued limitation because it would still comprise “glasses and beads,” and the compressive force of the actuator could be applied to the solid beads and Appeal 2013-000315 Application 12/405,052 7 impart a haptic effect to the manipulandum (e.g., the needle). (Ans. 15.) As a result, we agree with the Examiner’s finding that some or all of the aqueous contents being emptied from a phantom body part would not have rendered the combination unworkable or unsuitable for its intended purpose (i.e., a compressible material of selectively variable density, that when the density is changed, imparts a haptic effect to the manipulandum). Appellants argue that the beads in Madsen are of a small size and thus might also leak out when the phantom body part is penetrated. (Reply Br. 4 (citing Madsen, col. 5, ll. 34–41).) Appellants have not provided support for this statement, instead, stating only whether the beads would leak out “is not clear.” (Id.) Appellants have not argued, let alone shown, that it would be beyond the skill of an ordinary artisan to include compressible beads in a configuration that would not be expelled when penetrated by a manipulandum. Accordingly, Appellants fail to persuade us of error in the Examiner’s finding that, in the combination, the beads would be retained even if the aqueous contents were expelled. Finally, Appellants argue for the first time in the Reply Brief “there is no disclosure within Madsen that the glass beads are compressible in a way that could be used to impart a haptic effect.” (Reply Br. 4.) We find that this argument is not based on any new arguments or grounds of rejection in the Examiner’s Answer. (Final Act. 4 (“Madsen teaches medical phantom body part material comprising compressible beads . . . ”); App. Br. 6 (citing Final Act. 4); App. Br. 7 (referring to “the compressible material of Madsen”).) As a result, Appellants have waived such untimely argument because Appellants have not shown any good cause for the belated presentation. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) Appeal 2013-000315 Application 12/405,052 8 (informative) (Unless good cause is shown, the Board is not required to address arguments in the Reply Brief that could have been presented in the Appeal Brief.). Were we to consider such newly raised arguments, “[r]ather than reviewing a record for error, the Board would be considering, in the first instance, findings of fact proposed by the Appellant, but not weighed by the Examiner [in the Examiner’s Answer] against the other evidence of record.” Id. at 1475.5 Accordingly, we sustain the Examiner’s § 103 rejection of claim 1. Our reasoning applies equally to independent claim 9, which recites similar limitations, and Appellants do not argue separate patentability for claims 2–8 and 10–20 (App. Br. 8), which depend from claim 1 or 9. Accordingly, we sustain the Examiner’s § 103 rejections of claims 2–20 for the same reasons as claim 1. DECISION The Examiner’s rejection of claims 1–20 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED kme 5 Even if we were to consider this argument, we observe that claim 2, which is dependent on claim 1, recites “the material includes a plurality of compressible beads.” Appellants appear to acknowledge that Madsen’s material includes compressible beads (App. Br. 6, 7), and have not explained why changing the density of such a material would not impart a haptic effect to a manipulandum.