Ex Parte DESAI et al

Patent Trial and Appeal Board

Jan 17, 2019

13763284 (P.T.A.B. Jan. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/763,284 02/08/2013
4586 7590 01/22/2019
ROSENBERG, KLEIN & LEE
3458 ELLICOTT CENTER DRIVE-SUITE 101
ELLICOTT CITY, MD 21043
FIRST NAMED INVENTOR
JA YDEV P. DESAI
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.
MR2833-109 6507
EXAMINER
NEWTON, ALEXANDRA L
ART UNIT PAPER NUMBER
3795
NOTIFICATION DATE DELIVERY MODE
01/22/2019 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):
ptoactions@rklpatlaw.com
ptoactions@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JA YDEV P. DESAI, MINGYEN HO, J. MARC SIMARD, and
RAO GULLAPALLI 1
Appeal 2017-011048
Application 13/763,284
Technology Center 3700
Before RICHARD M. LEBOVITZ, JOHN E. SCHNEIDER, and
RYAN H. FLAX, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal2 under 35 U.S.C. § 134 of the Examiner's rejection
of claims to minimally invasive neurosurgical intracranial robot system as
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the Real Parties in Interest as University of Maryland
and the National Institutes of Health. Br. 1.
2 We have considered and herein refer to the Specification of Aug. 5, 2013
("Spec."); Non-Final Office Action of Sept. 26, 2016 ("Non-Final Act.");
Appeal Brief of Feb. 23, 2017 ("Br."); and Examiner's Answer of June 15,
2017 ("Ans.").
Appeal 2017-011048
Application 13/763,284
STATEMENT OF THE CASE
The Specification states that "[b ]rain tumors are among the
most deadly adult tumors which accounts for about 2% of all cancer
deaths in the United States." Spec. 4. "Surgical resection of the
tumor is considered the optimal treatment for most brain tumors." Id.
Minimally invasive surgery is often used to reduce tissue disruption
during tumor removal. Id. "However, due to the lack of satisfactory
continuous imaging modality, it is extremely challenging to remove
brain tumors precisely and completely without damaging the
surrounding brain tissue using traditional surgical tools." Id. To
address this problem, the Specification describes "a robotic system for
minimally invasive surgical procedures which can be teleoperatively
controlled by a neurosurgeon in a highly efficient and precise
manner." Id. at 1 0.
Claims 1-24 are on appeal. 3 Claim 1 is the sole independent claim; it
is representative and reads as follows:
1. Minimally Invasive Neurosurgical Intracranial Robot
(MINIR) system, comprising:
a robot sub-system compatible with an imaging system
and introduced in an intracranial area containing a target of
interest;
a tracking sub-system operatively coupled to said robot
sub-system and generating tracking information corresponding
to said robot sub-system position;
an interface operatively coupled to said imaging system
and said tracking sub-system to display, substantially in real-
3 Claims 25-39 are also pending in the application, but have been withdrawn
from consideration. Non-Final Act. 2.
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Application 13/763,284
time, images of the intracranial area generated by said imaging
system aligned with said tracking information, wherein said
interface is further operatively interconnected between a user
and said robot sub-system, and wherein the user applies
commands to said interface to manipulate said robot sub-system
based on said substantially in real-time images and said
tracking information to reach said target of interest for an
intended interaction therewith;
wherein said robot sub-system includes:
a robot body composed of a plurality of links and N
revolute joints interconnecting respective of said plurality of
links each to the other, wherein each of said N revolute joints is
formed between respective adjacent links for rotational motion
of each link with respect to the other about a corresponding
rotational axis extending through said each revolute joint in
substantially orthogonal relationship to a rotational axis of an
adjacent revolute joint, and wherein each of said plurality of
links is configured with cylindrically shaped walls extending
substantially along the periphery of said each link and defining
a central channel surrounded by said walls, wherein said each
link has opposite edges spaced apart along a length of said each
link, and wherein a plurality of wall channels extend internally
within and between said opposite edges of said cylindrically
shaped walls;
a tendon sub-system integrated with said robot body, said
tendon sub-system containing N independent tendons, each
independent tendon being routed internally within said
cylindrically shaped walls through said wall channels extending
internally through said cylindrically shaped walls of said each
link in a non-interfering relationship with said central channel
of said each link, wherein each of said N independent tendons
is operatively coupled to a respective one of said N revolute
joints;
an actuator sub-system operatively coupled to said
tendon sub-system, said actuator sub-system containing N
independently operated temperature sensitive actuating
mechanisms, wherein each actuating mechanism is operatively
coupled to a respective one of said N revolute joints through a
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Application 13/763,284
respective one of said N tendons to independently control said
respective revolute joint through controlling the motion of said
respective tendon of said tendon sub-system;
a control sub-system operatively coupled between said
interface and said actuator sub-system; and
a feedback control sub-system including at least a
temperature based feedback sub-system coupled between said
temperature sensitive actuating mechanisms and said control
sub-system, wherein said temperature based feedback sub-
system is configured to acquire data on a temperature regime
applied to said temperature sensitive actuating mechanisms;
wherein said control sub-system is configured to generate
control signals responsive to the user's commands input via
said interface and responsive to at least said temperature regime
data received from said at least temperature based feedback
subsystem of said feedback control sub-system, and transmits
said control signals to said actuator sub-system; and
wherein said actuator sub-system is configured,
responsive to said control signals received thereat, to control,
through controlling the motion of at least one said respective
tendon, the rotational motion of adjacent links of at least one
said revolute joint, thereby steering said robot sub-system
relative to said target of interest.
The claims stand rejected as follows:
Claims 1, 2, 5-8, 11, 14, 15, and 17 have been rejected under
35 U.S.C. § I03(a) as unpatentable over Ishiguro4 and Donhowe5, Rogers 6,
Browne 7, and Sizer. 8
4 Ishiguro et al., US 2010/0022837 Al, published Jan. 28, 2010 ("Ishiguro").
5 Donhowe et al., US 2011/096199 Al, published Aug. 11, 2011
("Donhowe").
6 Rogers et al., US 2008/0287963 Al, published Nov. 20, 2008 ("Rogers").
7 Browne et al., US 2007/0243810 Al, published Oct. 18, 2007 ("Browne").
8 Sizer et al. US 7,637,105 B2, issued Dec. 29, 2009 ("Sizer").
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Claims 9, 10, and 16 have been rejected under 35 U.S.C. § I03(a) as
unpatentable over Ishiguro, Donhowe, Rogers, Browne, Sizer, and
Birkenbach. 9
Claims 12 and 13 have been rejected under 35 U.S.C. § I03(a) as
unpatentable over Ishiguro, Donhowe, Rogers, Browne, Sizer, and
Okihisa. 10
Claim 18 has been rejected under 35 U.S.C. § I03(a) as unpatentable
over Ishiguro' Donhowe, Rogers, Browne, Sizer, and Moll. 11
Claims 19 and 20 have been rejected under 35 U.S.C. § I03(a) as
unpatentable over Ishiguro, Donhowe, Rogers, Browne, Sizer, and Kudoh. 12
Claim 21 has been rejected under 35 U.S.C. § I03(a) as unpatentable
over Ishiguro, Donhowe, Rogers, Browne, Sizer, Kudoh, and Omori. 13
Claims 22 and 23 have been rejected under 35 U.S.C. § I03(a) as
unpatentable over Ishiguro, Donhowe, Rogers, Browne, Sizer, Kudoh,
Omori, and Choi. 14
Claim 24 has been rejected under 35 U.S.C. § I03(a) as unpatentable
over Ishiguro, Donhowe, Rogers, Browne, Sizer, and Webster. 15
9 Birkenbach et al., US 2014/0235999 Al, published Aug. 21, 2014
("Birkenbach").
10 Okihisa et al., US 2009/0182282 Al, published July 16, 2009 ("Okihisa").
11 Moll et al., US 2007/0197896 Al, published Aug. 23, 2007 ("Moll").
12 Kudoh et al., US 2011/0065994 Al, published Mar. 17, 2011 ("Kudoh").
13 Omori, US 2009/03690 Al, published Feb. 5, 2009 ("Omori").
14 Choi et al., US 2012/0004648 Al, published Jan. 5, 2012 ("Choi").
15 Webster et al., US 2009/0171271 Al, published July 2, 2009 ("Webster").
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DISCUSSION
Rejection of Claims 1, 2, 5---8, 11, 14, 15, and 17
Issue
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner's determination that the subject matter
of claims 1, 2, 5-8, 11, 14, 15, and 17 would have been obvious over
Ishiguro combined with Donhowe, Rogers, Browne, and Sizer.
The Examiner finds that Ishiguro teaches an MINIR comprising a
robot sub-system and an interface. Non-Final Act. 3. The Examiner finds
that the robot subsystem comprises a robot body, a tendon subsystem, an
actuator subsystem, a control subsystem. Non-Final Act. 3--4. The
Examiner finds that Ishiguro does not teach a tracking system nor does it
teach temperature sensitive actuating mechanisms or a temperature base
feedback subsystem.
The Examiner finds that Donhowe teaches an MINIR comprising a
robot subsystem, a tracking subsystem, an interface, and an actuator
subsystem. Non-Final Act. 5. The Examiner finds that Donhowe teaches
that the actuator subsystem contains independently operated temperature
sensitive actuating mechanisms. Id.
The Examiner finds that Rogers teaches a minimally invasive surgical
apparatus having a plurality of links, wherein each link has opposite edges,
spaced apart along a length of each link, with a plurality of wall channels
extending internally within cylindrically shaped walls. Id. The Examiner
also finds that Rogers teaches a tendon subsystem integrated with the robot
body such that the tendons are routed internal to the walls. Id.
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Application 13/763,284
The Examiner finds that Browne teaches the use of a temperature
sensitive actuating mechanism with a control subgroup and a feedback
control subsystem. Non-Final Act. 6.
The Examiner finds that Sizer teaches a feedback control subsystem
comprising a temperature based feedback subsystem coupled between a
temperature sensitive actuating mechanism and a control subsystem. Id.
Further to these findings, the Examiner concludes:
it would have been prima facie obvious to one of ordinary skill
in the art at the time of invention to utilize the tracking sub-
system of Donhowe et al. in order to allow a user to
automatically maintain a desired roll orientation at a distal tip
while moving the tip towards a target site (paragraph [0009] of
Donhowe et al.).
It would have been prima facie obvious to one of
ordinary skill in the art at the time of invention to modify the
links of Ishiguro to utilize in-wall channels as taught by Rogers
in order to reduce the cross-sectional area of the device while
increasing the size of the lumen provided within (para [0032] of
Rogers).
Further, it would have been prima facie obvious to one of
ordinary skill in the art at the time of invention to utilize the
SMA actuator of Browne et al. in order to reduce actuator size,
weight, volume, cost, noise, and an increase simplicity,
robustness, and/or reliability of the overall system in
comparison with traditional electromechanical and hydraulic
means of actuation (para [0048] of Browne). Finally, it would
have been prima facie obvious to one of ordinary skill in the art
at the time of invention to utilize the temperature based
feedback of Sizer et al. with the system of Ishiguro in view of
Donhowe and Browne in order to minimize the stress and strain
on the SMA spring and thereby increase its working life
(column 1, lines 37-48 of Sizer et al.).
Non-Final Act. 6-7.
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Application 13/763,284
Findings of Fact
We adopt the Examiner's findings as our own, including with regard
to the scope and content of, and motivation to modify or combine, the prior
art. Non-Final Act. 4--7. The following findings highlight certain evidence.
FF 1. Ishiguro teaches "a surgical instrument having a surgical unit
which operates on an operating portion in a body cavity." Ishiguro
Abstract.FF2. As shown in Figure 10, reproduced below, Ishiguro's
instrument comprises a robotic arm having a plurality of links (51, 52, and
53) and joints (61, 62, and 63) connecting the links.
,.39
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FI G.10
8
37
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Surgica: instrument controller
Appeal 2017-011048
Application 13/763,284
Figure 10 of Ishiguro shows a perspective view of a surgical instrument
having a bending manipulation unit in an endoscope apparatus system. See
also Ishiguro ,r,r 129--134.
FF3. In Figure 1, Ishiguro discloses that its robotic arm 40 is
connected to an imaging system 5. Figure 1 is reproduced below:
FIG. 1
Figure 1 of Ishiguro shows an endoscope system. See also Ishiguro ,r,r 51
and 67.
FF4. Ishiguro teaches:
As shown in FIG. 10, the manipulation unit 41 is
provided with a bending portion manipulation mechanism and
an end effector manipulation mechanism. The bending portion
manipulation mechanism is provided with drive motors 95, 96,
97 for pushing and pulling the manipulation wires 56, 57, 58,
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Appeal 2017-011048
Application 13/763,284
respectively. Further, the end effector manipulation mechanism
is provided with a drive motor 98 for pushing and pulling the
manipulation wire 92. The manipulation wires 56, 57, 58
correspond to the bending pieces (targets to be rotated) 51, 52,
53 and execute rotating manipulations.
Ishiguro ,r 180; see also supra FF2.
FF5. Ishiguro teaches that the manipulation wires run internally in the
robotic arm. Ishiguro ,r,r 143, 160, Figures 12A and 12B.
FF6. The MINIR of Ishiguro includes a control subsystem
operatively coupled between the interface and the actuator subsystem.
Ishiguro Fig. 10.
FF7. Ishiguro teaches:
Although the bending portion manipulation mechanism
and the end effector manipulation mechanism use transmission
mechanisms making use of the pulleys 99, they may use, for
example, a gear mechanism and the like making use of a pinion
gear and a rack. Further, the bending portion manipulation
mechanism and the end effector manipulation mechanism may
use other types of drive actuators in place of the drive motors
95, 96, 97, 98.
Ishiguro ,r 184 ( emphasis added).
FF8. Ishiguro teaches:
The surgical instrument controller 37 transmits a control
signal for driving the drive motors 95, 96, 97 in response to the
manipulation of the joystick 203 executed by the operator to the
motor driver 122 and rotates the drive motors 95, 96, 97.
Encoders (not shown) are mounted on the drive motors 95, 96,
97 to measure the numbers of revolutions thereof. The
encoders feedback-control the drive motors 95, 96, 97 by
generating signals according to the number of revolutions and
transmitting the signals to the motor driver 122.
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Application 13/763,284
Ishiguro ,r 190.
FF9. Donhowe relates to "robotic endoscopes and in particular, to a
method and system for automatically maintaining an operator selected roll
orientation at a distal tip of a robotic endoscope while controlling operator
commanded movement of the robotic endoscope tip." Donhowe ,r 2.
FFlO. In one embodiment, the system of Donhowe comprises "a
robotic endoscope, a plurality of fiber optic cables inserted in the endoscope,
a control processor with memory, an actuating system, an image processor, a
display screen, and input control devices." Donhowe ,r 25 (reference
number omitted).
FF 11. Donhowe teaches a tracking system for an endoscope.
Donhowe ,r 28.
FF12. Donhowe incorporates the teachings ofBelson16 by reference.
Donhowe ,r 28.
FF 13. Belson teaches a steerable endoscope. Belson Abstract.
FF14. Belson teaches the use of temperature sensitive actuators to
control the movement of the endoscope. Belson col. 5, 11. 41---67.
FF 15. Rogers relates to an apparatus for performing a surgical
procedure comprising an entry guide tube and a steering device. Rogers
Abstract.
FF16. Figure 3C of Rogers, reproduced below, is a perspective view
of the flexible shaft of the device showing that the control cables 380 and
3 82, lie within the walls of the device.
16 Belson, US 6,869,396 B2, issued Mar. 22, 2005 ("Belson").
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Appeal 2017-011048
Application 13/763,284
"58 /
-'~/
/
/
/
/
/
FIG. JC
/
/
Figure 3C of Rogers which is a perspective view of a portion of the flexible
shaft of a robotic surgical tool.
FF 17. Browne teaches the use of a temperature sensitive actuating
mechanism with a control subsystem and a feedback control subsystem.
Browne ,r,r 34--35 and Figure 1.
FFl 8. Sizer discloses "a method for improving performance and life
of a material adapted to contract when heated to a critical temperature such
as shape memory alloy wire (SMA)." Sizer Abstract.
FF 19. The system of Sizer is shown in Figure 2 below:
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Appeal 2017-011048
Application 13/763,284
.., .. 55
:·· ,..,62
70 ,..··· Lx.-/ .. -
--- ! i
SA1TERY1-. -- 1 :
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Figure 2 of Sizer shows a schematic illustration of the components of a
controller.
FF20. Sizer teaches:
When the method of the invention is used in connection
with a mechanism, which includes a microprocessor, the
microprocessor may control energy delivery to the SMA wire,
preferably by a temperature-dependent algorithm. The
microprocessor can also sense the state of the mechanism and
whether it is engaged or not. The microprocessor may report
this, along with secondary sensed information, to a network of
which the mechanism forms a part. The mechanism may be,
for example, a fastener.
Sizer col. 3, 11. 23-31.
FF21. Sizer also teaches:
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Application 13/763,284
If necessary, power and energy delivery may be adjusted
at the start of each cycle in order to achieve the desired target
for subsequent cycles. In this way, operation may adaptively
track any changes in the SMA element or mechanism
characteristics, in order to maintain consistent operation over
time. Each time drive parameters are modified, they may be
stored in, for example, a non-volatile FLASH memory so as to
be preserved through power cycles.
Sizer col. 3, 11. 54--61.
Principles of Law
[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie
case ofunpatentability. If that burden is met, the burden of
coming forward with evidence or argument shifts to the
applicant.
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). "Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references ....
[The reference] must be read, not in isolation, but for what it fairly teaches
in combination with the prior art as a whole." In re Merck & Co., 800 F .2d
1091, 1097 (Fed. Cir. 1986).
Analysis
We conclude the Examiner has established that claims would have
been obvious to one of ordinary skill in the art at the time the invention was
made over the combination of Ishiguro, Donhowe, Rogers, Browne, and
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Application 13/763,284
Sizer. Appellants have not produced evidence showing, or persuasively
argued, that the Examiner's determinations on obviousness are incorrect.
The arguments made by Appellants in the Brief have been considered in this
Decision; arguments not presented in the Brief are waived. See 37 C.F.R.
§ 4I.37(c)(l)(iv) (2015). We address Appellants' arguments below.
Appellants contend that each of the individual references fails to teach
one or more of the elements of the claims. Br. 24--33. Appellants also
contend that Browne and Sizer are not related subject matter and are not
relevant to MINIRs. Br. 31. As discussed below, Appellants do not
adequately address the combined teachings of the references and the
motivation to combine the references. Appellants' attack on the individual
references fails to overcome the Examiner's prima facie case of obviousness
base on the combination of prior art.
Appellants contend that Ishiguro does not teach or suggest that the
walls of the bending portions of its device have internal channels for the
manipulating wires to pass. Br. 24--25. Appellants argue that the wires in
Ishiguro pass on the outside of the bending portions of its device. Id.
Appellants also argue that the Ishiguro wires occupy part of the internal
space of the device. Id.
We have considered Appellants' arguments and are not persuaded.
While Appellants' analysis of Ishiguro may be correct, the rejection is not
based on Ishiguro alone, but on the combination of Ishiguro with other
references, including Rogers. As shown above, Rogers teaches passing the
manipulating wires or tendons through channels in the walls of the device.
FF16.
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Appellants argue that Ishiguro does not teach or suggest the use of a
temperature based actuating system nor a temperature based feedback
subsystem. Br. 26. Appellants contend that adding such a system to
Ishiguro makes no sense and would be redundant. Id.
Appellants' argument is unpersuasive. Ishiguro teaches that alterative
actuating systems can be used in place of the system disclosed in Ishiguro.
FF7. Belson, which is a part of Donhowe by its incorporation by reference,
teaches the use of temperature sensitive actuators in a surgical instrument.
FF14. Browne and Sizer teach temperature based actuators and feedback
systems. FF 17-21. Thus, the combination of references teach the claimed
system.
Appellants argue that Ishiguro does not teach or suggest a tracking
system integrated into the robot sub-system. Br. 27. Appellants argue that
Donhowe does not remedy this deficiency as Donhowe "fails to provide the
claimed temperature sensitive actuating mechanism, and thus, the use of the
claimed feedback mechanism is not seen as applicable to the Donhowe' s
actuator sub-system." Br. 28. Appellants also contend that Donhowe does
not teach a "robot body having links configured with cylindrically shaped
walls formed with a plurality of wall channels extending internally within
cylindrically shaped walls for routing the tendons internally within the walls
of the robot body." Id.
Appellants' arguments are unpersuasive. Donhowe teaches the use of
a tracking system. FF 11. In addition, as noted above, Donhowe
incorporates by reference the teachings of Belson, which teaches the use of a
temperature sensitive actuator system. FF12-14. Moreover, temperature
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Application 13/763,284
sensitive actuators and feedback systems are taught by Browne and Sizer.
FF 17-21. Incorporating the tendons into the walls of the robot subsystem is
taught by Rogers. It is the combination of the references which renders
Appellants' invention obvious.
Appellants contend that the vertebrae of Rogers are solid and do not
have a central opening. Br. 28-29. This argument is unpersuasive.
As shown in Figure 3C of Rogers, there is a central channel in the
vertebrae. FF 16. In addition, Rogers incorporates by reference the
teachings of Cooper to show the detail of the vertebrae. Rogers ,r 60. As
shown in Figure 12, reproduced below, Cooper discloses cylindrical bodies
with a central lumen.
FffJ. 12
Figure 12 of Cooper showing a perspective view of a section of the
vertebrae.
Appellants argue that Rogers does not teach or suggest a temperature
sensitive actuator mechanism. Br. 29. We are not persuaded by this
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Application 13/763,284
argument. As discussed above, temperature sensitive actuators are taught by
Belson, Browne, and Sizer. See supra FF 14 and FF 1 7-FF21.
Appellants contend that Browne and Sizer are not related to the field
of the invention - MINIRs - and do not teach or suggest most of the
elements of the claims. Br. 29-32. These arguments are unpersuasive.
While we agree with Appellants that Browne and Sizer are not
specifically directed to MINIRS, as the Examiner explained, they do relate
to improving the function of temperature sensitive actuators. Ans. 7. Thus,
they are reasonably related to a problem faced by the inventor. Id. In
addition, Belson teaches the use of temperature sensitive actuators in devices
that are like those of the instant invention. FF14.
Conclusion of Law
We conclude that a preponderance of the evidence supports the Examiner's
determination that the subject matter of claim 1 would have been obvious
over the combination of Ishiguro, Donhowe, Rogers, Browne, and Sizer.
While Appellants have presented a separate argument for claims 2, 5-
8, 11, 14, 15, and 17, the argument merely refers to the arguments made with
respect to claim 1. Br. 33. Having found those arguments unpersuasive, we
affirm the rejection of claims 2, 5-8, 11, 14, 15, and 17.
Rejection of Claims 9, 10, and 16
Claim 9 is representative of the group of claims. Claim 9 depends
indirectly from claim 1 and adds the limitation calling for a sensor
positioned at the distal end of the cannula. Appeal Br. 52
Claims 9, 10, and 16 have been rejected as obvious over the
combination of Ishiguro, Donhowe, Rogers, Browne, Sizer, and Birkenbach.
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In addition to the findings and rationale discussed above, the Examiner
determined that Donhowe teaches a tracking system that includes
electromagnetic sensors. Non-Final Act. 9. The Examiner finds that
Birkenbach teaches locating a sensor at the distal most end of the
articulating body. Id.
Appellants argue that Birkenbach does not teach or suggest a robot
body comprising a series of links, each having cylindrically shaped walls
along the periphery of the linked and formed with the wall for passing
tendons. Br. 34, Appellants also argue that Birkenback does not teach
revolute joints and does not determine the angels of the joints based on the
temperature readings. Id. Appellants also contend that claims 9, 10, and 16
are patentable for the same reason claim 1 is patentable. Id.
Appellants' arguments are not persuasive. While Birkenbach may not
teach the robot body recited in the claims, as the Examiner points out, that
teaching is found in Ishiguro and Rogers, with which Birkenbach is
combined. Ans. 9; FF2 and FF16. Ishiguro and Rogers also teach revolute
joints. FF2 and FF16. It is the combination of the references that renders
the subject matter of the claims obvious; therefore, Appellants argument
over a single reference's alleged failings, in isolation, is not persuasive.
With respect to determining the angle of the joints, the Examiner
correctly determines that such a step is not a limitation of claims 9, 10, and
16.
While the elements of the claims identified by Appellants may not be
present in Birkenbach, it is the combination of references that renders the
subject matter of claims 9, 10, and 16 obvious. Attacking the individual
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references does not overcome the Examiner's prima facie case of
obviousness.
Appellants contend that claims 9, 10, and 16 are patentable for the
same reasons that claim 1 is patentable. Br. 34. For the reasons discussed
above, this argument is unpersuasive.
Rejection of Claims 12 and 13
Claims 12 and 13 indirectly depend from claim 1 and add the
limitation that the device includes a latching mechanism which includes a
plurality of latches arranged circumferentially at the inner wall of the
cannula. Appeal Br. 52.
In addition to the findings and rationale discussed above, the
Examiner finds that Okihisa teaches a latching mechanism comprising a
plurality of latches arranged circumferentially at an internal wall. Non-Final
Act. 10.
Appellants argue that Okihisa does not teach or suggest a robot body
comprising a series of links, each having cylindrically shaped walls along
the periphery of the linked and formed with the wall for passing tendons.
Br. 35. Appellants also argue that Okihisa does not teach or suggest a
temperature based feedback system to control the shape and advancement of
the cannula.
Appellants' arguments are unpersuasive. As discussed above,
Ishiguro and Rogers teach the robot subsystems recited in the claims. FF12
and FF 16. With respect to the temperature based feedback system, as the
Examiner determined, the claims do not call for the feedback system to
control the shape and advancement of the cannula. Ans. 11. While the
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elements of the claims identified by Appellants may not be present in
Okihisa, it is the combination of references that renders the subject matter of
claims 12 and 13 obvious. Attacking the individual references in isolation
does not overcome the Examiner's prima facie case of obviousness.
Appellants contend that claims 12 and 13 are patentable for the same
reasons that claim 1 is patentable. Br. 35. For the reasons discussed above,
this argument is unpersuasive.
Rejection of Claim 18
Claim 18 indirectly depends from claim 1 and adds the limitation that
said temperature based feedback sub-system is coupled between
said SMA springs and said control sub-system, said temperature
based feedback sub-system being configured to acquire data on
the temperature regime applied to a respective SMA spring of
said antagonistically coupled SMA springs, and wherein said
control sub-system computes a corresponding rotational angle
of a respective revolute joint affected by said respective SMA
spnng.
Appeal Br. 53-54.
In addition to the findings and rationale discussed above, the
Examiner finds that "Sizer et al. teaches said temperature based feedback
system is coupled between SMA wires and a control system, the temperature
based feedback system being figured to acquire data on the temperature
regime applied to a respective SMA spring and a corresponding rotational
angle of a revolute joint affected by said respective SMA wire." Non-Final
Act. 11. The Examiner also finds that Moll teaches computing a
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corresponding rotational angle of a joint affected by an actuator. Non-Final
Act. 11.
Findings of Fact.
FF22. Moll discloses "A method for performing an interventional
procedure using a robotically controlled guide instrument coupled to an
instrument drive assembly." Moll Abstract.
FF23. Moll teaches computing the rotation angles of the joints of a
jointed catheter operated by an actuator. Moll ,r,r 240-241, Figure 125.
FF24. Moll teaches
Referring to FIG. 125, [reproduced below] the "forward
kinematics" expresses the catheter's end-point position as a
function of the actuated inputs while the "inverse kinematics"
expresses the actuated inputs as a function of the desired end-
point position. Accurate mathematical models of the forward
and inverse kinematics are essential for the control of a
robotically controlled catheter system. For clarity, the
kinematics equations are further refined to separate out
common elements, as shown in FIG. 125. The basic kinematics
describes the relationship between the task coordinates and the
joint coordinates. In such case, the task coordinates refer to the
position of the catheter end-point while the joint coordinates
refer to the bending (pitch and yaw, for example) and length of
the active catheter. The actuator kinematics describes the
relationship between the actuation coordinates and the joint
coordinates. The task, joint, and bending actuation coordinates
for the robotic catheter are illustrated in FIG. 126. By
describing the kinematics in this way we can separate out the
kinematics associated with the catheter structure, namely the
basic kinematics, from those associated with the actuation
methodology.
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Moll if 237.
Forward Kinematics:
Actuated Inputs
- Pitch control wire motio11
• Yaw control wire motion
- Insert motion
:
i For\111aro
. J_---~~~~emafics ,
-- -------l..~~
"
End-Point Position
X-Y-Z Cartesian 1
Coordinates
,. ., (<••------·············· .. -····, >,
I l
l Actuator Sa sic :
Forward --- Fo,ward i
Kinematics Kinematics l
I l
L ____ - -·····-··- _____ ...... ____ ...... ........ 3
Inverse Kinematics:
End-Point PosiUon
X-Y-Z Cartesian i Inverse
Coordinates ------ Kinematics
~
/"
Actuated Inputs
- Pitd1 contml wire"-----. m-o-t-~n.....,!
i----.-i_ Yaw control wire motion !
- Insert motion -------- ~
~~ ~
r ~~- Jf:!fJ-1
! ---- j
l - - ·- - - - - - '
Fig 125
Figure 125 of Moll shows the kinematics of an embodiment of the system of
Moll.
Analysis
We agree with the Examiner's conclusion that the subject matter of
claim 18 would have been obvious to one of ordinary skill in the art over the
combination oflshiguro, Donhowe, Rogers, Browne, Sizer, and Moll. We
address Appellants' arguments below.
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Appellants argue that Moll does not teach computing the rotational
angle of a resolute joint as Moll does not employ resolute joints. Br. 36. We
are not persuaded.
Moll specifically discloses determining the joint coordinates which
includes bending of the catheter. FF24. While Moll may not expressly
teach measuring the angle of a resolute joint, such joints are taught by
Ishiguro and Rogers. FF2 and FF 16. We conclude, in agreement with the
Examiner, that it would have been obvious to use the joint coordinate
determination process of Moll to determine the angle of the revolute joints
of Ishiguro and Rogers.
Appellants also argue that Moll does not teach or suggest tension
wires routed through the wall of the catheter. Br. 36. Again we are not
persuaded. As discussed above, Rogers teaches placing the tension wires
within the walls of the device. FF16.
Appellants argue that Moll does not teach or suggest revolute joints,
but bends based on the stress relief pattern of the catheter. Br. 36. This
argument is not persuasive. Ishiguro and Rogers teach the use of revolute
joints. FF2 and FF16.
Appellants argue that Moll used a motor based actuator assembly and
not a temperature based actuating mechanism. Br. 3 7. This argument is
unpersuasive. As discussed above Ishiguro teaches that alternate actuating
systems can be used in place of mechanical systems. FF7. Belson, Browne,
and Sizer teach the use of temperature based actuators. FF14 and FFl 7-
FF21.
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Appellants argue that a temperature based feedback subsystem is
extraneous to Moll. Br. 37. This argument is unpersuasive. As discussed
above, a temperature based feedback system is taught by Browne and Sizer.
FFl 7-FF2I.
While the elements of the claims identified by Appellants may not be
expressly disclosed in Moll, it is the combination of references that renders
the subject matter of claim 18 obvious. Attacking the individual references
in isolation does not overcome the Examiner's prima facie case of
obviousness based on this combination.
Appellants also contend that claim 18 is patentable for the same
reasons that claim 1 is patentable. Br. 37. For the reasons discussed above,
this argument is unpersuasive.
Rejection of Claims 19 and 20
Claims 19 and 20 depend from claim 1 and adds the limitation that the
gears in claim 1 include a pulley carrying around a respective of the tendons
of the tendon subsystem. Appeal Br. 54.
In addition to the findings and rationale discussed above, the
Examiner finds that Kudoh teaches a force transfer system comprising a
pulley with a respective gear with the pullet and the gear being spaced apart
from but coupled to the motor via a wire member. Non-Final Act. 12.
The Examiner finds that
[ c ]ombining the force transferring mechanism of Kudoh
et al. with the system of Ishiguro et al. in view of Donhowe et
al. would allow for the N gears and pulleys to be moved to and
secured in the base link, since it has been held that rearranging
parts of an invention involves only routine skill in the art.
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Id.
With respect to claim 20, the Examiner finds that
Kudoh et al. teaches a second gear (65A) operatively coupled to
said gear in said first set thereof (FIG. 4), and an intermediate
tendon sub-system (61A), wherein the actuating mechanism
(29) is operatively coupled to a corresponding one of said N
tendons of said tendon sub-system through the intermediate
tendon (67 A) of the intermediate tendon sub-system and said
gears in said first and second set thereof (FIG. 4).
Non-Final Act. 12.
Appellants argue that Kudoh does not teach or suggest a robot body
"composed of a plurality of links having cylindrically shaped walls along
periphery of the link and formed with wan channels for passing tendons
through." Br. 38. Appellants also argue that Kudoh fails to teach or suggest
an actuating mechanism behaving in correspondence to a temperature
regime. Id. Again Appellants' argument are unpersuasive.
As the Examiner determined, Kudoh teaches the use of a force
transfer mechanism. Ans. 15. Ishiguro and Rogers teach a robot body
comprising a plurality of links each having cylindrically shaped walls along
a periphery of the link and formed with wall channels for passing tendons
through. FF2 and FF16. Ishiguro, Belson, Browne, and Sizer teach using an
actuating mechanism behaving in response to a temperature regime. FF7,
FF14, and FFl 7-FF2I. While the elements of the claims identified by
Appellants may not be present in Kudoh, it is the combination of references
that renders the subject matter of claims 19 and 20 obvious. Attacking the
individual references in isolation does not overcome the Examiner's prima
facie case of obviousness based on this combination.
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Appellants also contend that claims 19 and 20 are patentable for the
same reasons that claim 1 is patentable. Br. 37. For the reasons discussed
above, this argument is unpersuasive.
Rejection of Claim 21
Claim 21 depends from claim 20 and adds the limitation that the gears
are positioned at a shaft attached to a based member wherein the based
member is removably secured to the base link. Appeal Br. 54.
In addition to the findings discussed above, the Examiner finds that
Omori teaches a motion mechanism comprising a second set of gears, which
are positioned at a single shaft attached to a base member, and where the
base member is irremovably secured to a base link. Non-Final Act. 13. The
Examiner concludes "it would have been prima facie obvious to one of
ordinary skill in the art at the time of invention to utilize removable base
member []since it has been held that constructing a formerly integral
structure in various elements involves only routine skill in the art." Id.
Appellants argue that Omori does not teach or suggest internal
channels in the walls of the device where the wires pass through the
channels. Br. 39. Appellants contend that the wires of Omori pass outside
the wall of the device. Id. Appellants also argue that Omori does not teach
or suggest an actuating system based on temperature sensitive actuating
elements nor does Omori teach or suggest a temperature based feedback
subsystem. Id.
Appellants' arguments are unpersuasive. As discussed above, Rogers
teaches the set of internal channels through with the tendons or manipulating
wires pass. FF16. Ishiguro, Belson, Browne, and Sizer teach temperature
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sensitive actuators and a temperature based feedback system. FF7, FF 14,
and FF 17-FF21. While the elements of the claims identified by Appellants
may not be present in Omori, it is the combination of references that renders
the subject matter of claim 21 obvious. Attacking the individual references
in isolation does not overcome the Examiner's prima facie case of
obviousness over the combination.
Appellants also contend that claim 21 is patentable for the same
reasons that claim 1 is patentable. Br. 39. For the reasons discussed above,
this argument is unpersuasive.
Rejection of Claims 22 and 23.
Claims 22 and 23 depend from claim 21 and adds the limitation call
for a quick connect mechanism. Appeal Br. 55.
In addition to the findings and rationale discussed above, the
Examiner finds that Choi discloses a quick connect member. Non-Final Act.
13. The Examiner determined:
Combining this quick connect member with the invention
of Ishiguro in view of Donhowe, Kudoh, and Omori would
provide for said base member (right side of FIG. 6 of Omori)
with said second set of gears (65 of Kudoh) positioned at one
thereof and a third set of gears ( 63 of Kudoh) at another end of
said quick-connect mechanism ( 40 of Choi), and wherein the
intermediate tendons (67 ofKudoh) of said intermediate tendon
sub-system extends between said second set of gears and said
third set of gears in operative coupling to said actuating
mechanism.
Id. at 14.
With respect to claim 23, the Examiner finds that Choi teaches
"routing pulleys (on either side of 78, FIG. 8) coupled between an actuating
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mechanism (50) and a proximal gear in the quick connect member (80),
wherein said intermediate quick-connect mechanism is irremovably attached
by said another end thereof to said routing pulleys via said proximal gear
(FIG. 8)." Id. The Examiner further determined that:
Id.
Combining Choi et al. with Ishiguro in view of
Donhowe, Kudoh, and Omori would provide for the routing
pulley on 78 of Choi to be coupled between the actuating
mechanism 50 of Choi and the third gear 63 of Kudoh. The
intermediate tendons 67 of Kudoh would then be removably
attached by said another end thereof to said routing pulley on
78 of Choi via said third gear 63 of Kudoh and by said one end
thereof to said base link (FIG. 6 of Omori). To put it another
way, the gears 65 of Kudoh would be separable from the gear
59 ofKudoh in the manner as shown by FIG. 6 of Omori. The
gears 63 of Kudoh would be separable from 57 and 29 of
Kudoh in the manner as shown by FIG. 8 of Choi.
Therefore, it would have been prima facie obvious to one
of ordinary skill in the art at the time of invention to utilize the
quick-connect mechanism of Choi et al. with the system of
Ishiguro in view of in view ofDonhowe et al., Browne et al.,
Sizer et al., Kudoh, and Omori in order to allow for disposal of
the quick-connect mechanism should it become contaminated
(FIG. 8 of Choi et al.).
Appellants argue that Choi uses a motor based actuating system and
does not teach or suggest the temperature sensitive actuating system recited
in the claims. Br. 40. Appellants also argue that Choi does not teach or
suggest a "robot body composed of a plurality of links having cylindrically
shaped walls along periphery of the link and formed with wall channels for
passing tendons through." Id.
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Appellants' arguments are unpersuasive. As discussed above,
Ishiguro, Belson, Browne, and Sizer teach using a temperature sensitive
actuating mechanism. FF7, FF14, and FFl 7-FF2I. Ishiguro and Rogers
teach a robot body composed of a plurality of links having cylindrically
shaped walls along periphery of the link and formed with wall channels for
passing tendons through. FF2 and FF 16. While the elements of the claims
identified by Appellants may not be present in Choi, it is the combination of
references that renders the subject matter of claims 22 and 23 obvious.
Attacking the individual references in isolation does not overcome the
Examiner's prima facie case of obviousness based on the combination.
Appellants also contend that claims 22 and 23 are patentable for the
same reasons that claim 1 is patentable. Br. 40. For the reasons discussed
above, this argument is unpersuasive.
Rejection of Claim 24
Claim 24 depends from claim 1 and adds the limitation calling for
a data transfonnation having an input for :receiving coordinates
of a tracking point on said robot body and the user's commands
corresponding to a desired position for said tracking point,
wherein said data transformation unit is configured to compute
corresponding control signals based on the position and
configuration of the robot body, said control signals including
coordinates of at least one center of rotation at said robot body
and a path for said tracking point corresponding to a
displacement of said tracking point from said cordinates thereof
to said desired position of said tracking point, said control
signals being operatively applied to said actuator sub-system to
control motion of at least one corresponding tendon in said
tendon sub-system to result in said displacement of said
tracking point toward said desired position thereof.
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Appeal Br. 55-56.
In addition to the findings and rationale discussed above, the
Examiner finds
Webster teaches an analogous robot system with a control
system (FIG. 1) includes a data transformation unit having an
input for receiving coordinates of a robot body (para [0078])
and the user's commands corresponding to a desired position
for said tracking point (para [0065]-[0066]), wherein said data
transformation unit is configured to compute corresponding
control signals based on the position and configuration of the
robot body (para [0073], [0077]), said control signals including
coordinates of at least one center of rotation at said robot body
(para [0078]) and a path for said tracking point corresponding
to a displacement of said tracking point from said coordinates
thereof to said desired position of said tracking point (para
[0072]), said control signals being operatively applied to said
actuator subsystem to control motion of the robot to result in
said displacement of said tracking point toward said desired
position thereof (para [0077]).
Therefore, it would have been prima facie obvious to one
of ordinary skill in the art at the time of invention to utilize the
path planning as taught by Webster et al. in order to allow safer
guiding of surgical instruments in the presence of sensitive
tissue (para [0018] of Webster et al.).
Non-Final Act. 15-16.
Appellants argue that Webster does not teach or suggest a "robot body
formed with a plurality of links and revolute joints interconnecting the links
and controlled rotational motion of each link respective to the adjacent link,
[or] the cylindrically shaped walls extending along periphery of each link
and formed with internal channels for passing tendons through." Br. 41.
Appellants also argue that Webster does not teach or suggest a "tendon sub-
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system integrated with the robot body with each tendon routed internally
within the walls of the links." Id.
Appellants' arguments are unpersuasive. Ishiguro and Rogers teach
robot bodies formed with a plurality of links and revolute joints
interconnecting the links and controlled rotational motion of each link
respective to the adjacent link. FF2 and FF 16. Rogers teaches cylindrically
shaped walls extending along periphery of each link and formed with
internal channels for passing tendons through. FF16. Rogers also teaches a
tendon subsystem integrated with the robot body with each tendon routed
internally within the walls of the links. Id. While the elements of the claims
identified by Appellants may not be present in Webster, it is the combination
of references that renders the subject matter of claim 24 obvious. Attacking
the individual references in isolation does not overcome the Examiner's
prima facie case of obviousness over the combination.
Appellants also contend that claim 24 is patentable for the same
reasons that claim 1 is patentable. Br. 40. For the reasons discussed above,
this argument is unpersuasive.
SUMMARY
We affirm the rejections under 35 U.S.C. § 103(a).
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
32