Ex Parte HANNING

Patent Trial and Appeal Board

Jan 31, 2019

14853289 (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/853,289 09/14/2015
30497 7590 02/04/2019
FLYNN THIEL, P.C.
2026 RAMBLING ROAD
KALAMAZOO, MI 49008-1631
FIRST NAMED INVENTOR
Steven Michael HANNING
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.
3002.P0521US 3934
EXAMINER
DYER, ANDREW R
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
02/04/2019 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):
DOCKET@FL YNNTHIEL.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN MICHAEL HANNING
Appeal2018-003193 1
Application 14/853,289
Technology Center 2100
Before ERIC B. CHEN, MICHAEL J. STRAUSS, and
MICHAEL M. BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-16, which are all the pending claims. App. Br. l; Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 "Stryker Corporation ... is the real party in interest." App. Br. 1.
Appeal 2018-003193
Application 14/853,289
Introduction
"The present invention relates to a surgical process, and in particular
to a method of creating a surgical operative note during a specific surgical
procedure on a patient." Spec. ,r 2.
Independent claim 1 is illustrative of the claims:
1. A method of creating a surgical operative note
during a specific surgical procedure on a patient, the method
compnsmg:
creating surgical checklists for a plurality of surgical
procedures before initiation of the surgical procedure;
creating an index of image specific annotations for the
specific surgical procedure before initiation of the surgical
procedure;
obtaining an electronic template;
inserting one of the surgical checklists into the electronic
template associated with the specific surgical procedure on the
patient;
obtaining an image of the patient;
inserting the image of the patient into the electronic
template; and
using a voice command to associate at least one of the
image specific annotations with the image of the patient in the
electronic template and to insert the at least one of the image
specific annotations into the electronic template adjacent the
image.
App. Br., Claims App'x 1.
Re} ections & References
Claims 2, 6-12, 15, and 16 stand rejected under 35 U.S.C. § 112(b) as
indefinite. Final Act. 5.
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Application 14/853,289
Claims 1, 2, 7, 9, 13, and 15 stand rejected under 35 U.S.C. § 103 as
unpatentable over Robbins (US 2014/0006943 Al; Jan. 2, 2014) and
Mahesh (US 2009/0130641 Al; May 21, 2009). Final Act. 6-12.
Claims 3-6, 8, and 10-12 stand rejected under 35 U.S.C. § 103 as
unpatentable over Robbins, Mahesh, and Green (US 8,050,938 Bl; Nov. 1,
2011). Final Act. 12-16.
Claims 14 and 16 stand rejected under 35 U.S.C. § 103 as
unpatentable over Robbins, Mahesh, and Qian (US 2005/0197567 Al; Sept.
8, 2005). Final Act. 16-17.
ANALYSIS
Appellant waives unmade arguments. 37 C.F.R. § 4I.37(c)(l)(iv)
("The arguments shall explain why the examiner erred as to each ground of
rejection contested by appellant. . . . [ A ]ny arguments or authorities not
included in the appeal brief will be refused consideration by the Board for
purposes of the present appeal."); Cf In re Baxter Travenol Labs., 952 F.2d
388,391 (Fed. Cir. 1991) ("It is not the function of this court to examine the
claims in greater detail than argued by an appellant .... ").
The 35 USC§ 112(b) Rejection
The Examiner determines claims 2 and 7 are indefinite under 3 5
U.S.C. § 112(b) because "each of these claims includes a limitation 'directly
inserting' free text 'at a location in the electronic template spaced from the
at least one of the image specific locations'." Final Act. 5 (also rejecting
claims 6, 8-12, 15, and 16 based on dependency from claim 2 or 7). The
Examiner determines "'directly' is a relative term which renders the claim
indefinite" because it "is not defined by the claim, the specification does not
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Application 14/853,289
provide a standard for ascertaining the requisite degree, and one of ordinary
skill in the art would not be reasonably apprised of the scope of the
invention." Id. The Examiner determines "spaced" is indefinite because it
"does not appear to be a known term of art and is not defined in the present
specification of the claims." Id.
Appellant contends the Examiner errs because under the correct
standard - "If the language of the claim is such that a person of ordinary
skill could not interpret the metes and bounds of the claim so as to
understand how to avoid infringement, a rejection of the claim under 35
U.S.C. § 112(b) ... would be appropriate" -the disputed claim limitations
are definite. See App. Br. 4--5 (quoting MPEP § 2173.02).
We disagree with the Examiner that "spaced" as recited in claim 2 is
ambiguous because "spaced from the at least one of the image specific
annotations" can mean "spaced in either (1) time or (2) distance." Ans. 6.
The methods of claims 2 and 7 recite inserting text "at a location ... spaced
from," which definitely uses the term "spaced" with reference to distance,
not time.
We agree with the Examiner, however, that the meaning of "directly"
in "directly inserting the free text into the electronic template," is indefinite
because it is susceptible to multiple plausible interpretations. See Ans. 4--5
(identifying multiple plausible meanings for directly such as "in close
relational proximity," "without any intervening agency or instrumentality,"
or "at once" (citing Webster's Third New Int'! Dictionary 641 (1967); Ex
parte Miyazaki, 89 USPQ2d 1207, 1211 (BP AI 2008) (precedential))). We
disagree with Appellant that claim 2 's limitation of "wherein directly
inserting the free text into the electronic template occurs during the specific
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Application 14/853,289
surgical procedure" defines the term "directly." App. Br. 5 ("Directly
therefore means not at a later time, but during the specific surgical
procedure."). As the Examiner responds, and we agree, the wherein clause
limits when "directly inserting" occurs, without defining "directly." Ans. 5.
Accordingly, we sustain the Examiner's 35 U.S.C. § 112(b) rejection
of claims 2, 6-12, 15, and 16.
The 35 US.C. § 103 Rejections
Independent Claim 1
Appellant argues the Examiner errs in finding Robbins teaches or
suggests "obtaining an image of the patient" (App. Br. 7-9), "using a voice
command" (App. Br. 9-10), and inserting image annotations "adjacent the
image" (App. Br. 10-11), as recited. These arguments are unpersuasive.
Robbins discloses creating a checklist template for a surgical
procedure that includes "image data" (Robbins ,r 53), and thus teaches or
suggests "obtaining an image of the patient," as recited. See Ans. 7-9; Final
Act. 6-7. Robbins discloses using speech recognition to accept voice inputs
"which may be a command" (Robbins ,r 102), and thus teaches or suggests
"using a voice command," as recited. See Ans. 9-10; Final Act. 7. Artisans
of ordinary skill also would have understood Robbins teaches or suggests
inserting annotations "adjacent the image," as recited, because Robbins
discloses (a) displaying annotations adjacent non-image checklist data and
(b) that checklist data may be an image. See Ans. 10-12 (citing Robbins
,r,r 33, 141, Fig. 6C); Final Act. 7.
Accordingly, we sustain the 35 U.S.C. § 103 rejection of claim 1.
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Application 14/853,289
Dependent Claims 2 and 13
Claim 2 depends from claim 1 and recites, inter alia, "dictating
information related to the specific surgical procedure during the specific
surgical procedure," and "transferring the dictated information into free
text." App. Br., Claims App'x 1-2. Appellant argues the Examiner errs in
finding Robbins discloses "transferring the dictated information into free
text." App. Br. 12-13. This argument is unpersuasive. We agree with the
Examiner that Robbins teaches or suggests this limitation by disclosing use
of voice recognition to capture "speech input, which may be a command, a
response to a question or query, or may itself be a question or query," that is
"converted to text." See Ans. 13-14 (quoting Robbins ,r 102); see also
Robbins ,r 108 (disclosing use within an operating room (e.g., during a
procedure such as a surgery)).
Accordingly, we sustain the 35 U.S.C. § 103 rejection of claim 2.
Appellant also separately argues claim 13, which depends from
claim 1 and recites "obtaining the image of the patient comprises capturing a
live image of the patient during the specific surgical procedure." App. Br.,
Claims App'x 4. This argument is unpersuasive. We agree with the
Examiner that Mahesh' s disclosure that practitioners of its invention "may
view and study the recorded images as they are recorded" (Mahesh ,r 28), in
combination with the disclosure of Robbins, renders obvious the subject
matter of claim 13. See Final Act. 12.
Accordingly, we sustain the 35 U.S.C. § 103 rejection of claim 13.
Remaining Claims
With respect to the 35 U.S.C. § 103 rejections of claims 3-12 and 14--
16, Appellant offers no arguments substantively separate from those for
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Application 14/853,289
claims 1, 2, and 13 (see App. Br. 13-14, 15-18), and, accordingly, we also
sustain the 35 U.S.C. § 103 rejections of claims 3-12 and 14--16.
DECISION
We affirm the rejection of claims 2, 6-12, 15, and 16 under 35 U.S.C.
§ 112(b).
We affirm the rejection of claims 1-16 under 35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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