Ex Parte Hickey et al

Patent Trial and Appeal Board

Sep 17, 2012

11338270 (P.T.A.B. Sep. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte KATHERINE M. HICKEY, AMISH PARASHAR,
BRIAN D. SITES, and BRIAN CONLEY SPENCE
__________

Appeal 2011-011913
Application 11/338,270
Technology Center 3700
__________

Before FRANCISCO C. PRATS, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a system
for supporting medical instruments. The Examiner rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

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Statement of the Case
Background
“This invention overcomes the disadvantages of the prior art by
providing a support device that allows the adjustable, yet rigid placement of
a probe or other medical instrument against a region of interest/treatment on
a patient” (Spec. 7, ll. 13-15). According to the Specification, the “system
and method of rigid fixation, positioning, and adjustment . . . is useful for a
broad array of medical procedures including, but not limited to, ultrasound-
guided anesthetic delivery” (Spec. 7, ll. 15-18).
The Claims
Claims 9-15 are on appeal. Claim 9 is representative and reads as
follows:
9. A system for supporting medical instruments with respect to a
region of interest on a patient comprising:
a base that interconnects to a substantially stationary structure,
the base interconnected with a proximal end of a flexible armature
section, the flexible armature section comprising a plurality of discrete
polymer segments each defining an inner lumen and including a
hemispherical nose section adapted to interengage a tail section that
defines a hemispherical socket that receives the hemispherical nose
section with sufficient holding force therebetween to maintain a
desired position of the flexible armature section and, when direct
force is applied, thereby afford a predetermined degree of bending and
rotation therebetween;
an instrument holder interconnected with a distal end of the
flexible armature and removably attaching an instrument thereto; and
wherein the base includes a pivoting joint assembly that allows
the armature section and the instrument holder to float with respect to
the region of interest and apply a predetermined weight-generated
pressure upon the region of interest;
wherein the base includes a locking assembly that fixes rotation
of the pivoting joint assembly in a predetermined orientation with
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respect to the region of interest, such that the pivoting joint assembly
remains free to float within a predetermined range of at least one of
angular and pivotal motion, so as to generate the predetermined
weight-generated pressure upon the region of interest, along a general
direction of gravity.

The issues

A. The Examiner rejected claims 9-14 under 35 U.S.C. § 103(a) as
obvious over Madocks,
1
Strauss,
2
and Chersky
3
(Ans. 4-6).
B. The Examiner rejected claim 15 under 35 U.S.C. § 103(a) as obvious
over Madocks, Strauss, Chersky, and Schwarz
4
(Ans. 7).
The Examiner finds that:
Madocks („927) teaches a system for supporting medical
instruments with respect to a region of interest on a patient
comprising: a base that interconnects to a substantially
stationary structure . . . the base interconnected with a
proximal end of a flexible armature section, the flexible
armature section comprising a plurality of discrete segments
. . . each defining an inner lumen and including a
hemispherical nose section adapted to interengage a tail
section and thereby afford a predetermined degree of
bending and rotation therebetween . . . an instrument holder
interconnected with a distal end of the flexible armature and
removably attaching an instrument thereto

(Ans. 4). The Examiner finds that “Strauss ('698) teaches a rotating joint
that allows the instrument to float where needed with an adjustable amount
of pressure, set by an adjusting screw that determines the amount of

1
Madocks et al., US 4,949,927, issued Aug. 21, 1990.
2
Strauss et al., US 2003/0230698 A1, issued Dec. 18, 2003.
3
Chersky et al., US 2005/0226682 A1, issued Oct. 13, 2005.
4
Schwarz et al., US 2004/0222343 A1, issued Nov. 11, 2004.
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rotation” (Ans. 4). The Examiner “interprets „prevention of rotation‟ to
describe „fixing rotation‟ or „locking rotation‟” (id.). The Examiner finds
that “Chersky(„682) teach discrete segments having hemispherical nose and
tail socket sections . . . and a method for applying a direct force to afford a
predetermined degree of bending and rotation” (id. at 5).
The Examiner finds it obvious:
to modify the articulating column described by
Madocks(„927) and the rotating joint described by
Strauss(„698) with the discrete segments having
hemispherical nose and tail socket sections as disclosed by
Chersky(„682) in order to adjust the orientation of a medical
instrument along an axis with respect to the patient's position
and further to allow an instrument to be locked into a
particular configuration using frictional forces directed to
the discrete segments.

(Id.)
Appellants contend that the
segments of Madocks do not teach or contemplate, or are
they capable of exhibiting sufficient frictional force to
maintain the position and placement of the armature.
Conversely, the Madocks ball and socket elements have
little if any overlapping structure required to impart the
frictional force as now claimed by applicant

(App. Br. 9).
Appellants contend that there
is no contemplation in either the Madocks or Strauss
reference, when taken alone or in combination, for the
locking assembly as now claimed and described by
applicant. In fact, neither reference contains the term “lock”.
Neither reference provides for fixing rotation of a pivoting
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joint assembly in a predetermined orientation to float within
a predetermined range of angular or pivotal motion.

(App. Br. 9-10.)
Appellants contend that “Chersky does not contemplate a lock system
featuring fixed rotation of a pivoting joint assembly” (Reply Br. 9).
Appellants contend that “[i]nstead of addressing a pivoting motion,
paragraph 0061 teaches a structure that will increase stiffness of a flexible
arm linkage assembly. Furthermore, Chersky does not contemplate utilizing
direct force to limit rotation in the text referenced by the [E]xaminer” (id.).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner‟s conclusion that Madocks, Strauss, and Chersky
render claim 9 obvious?
Findings of Fact
1. Madocks teaches that at “the column base, base tube 66 houses
a cable tensioning assembly of which knob 68 is used to increase or decrease
cable tension. Clamp 70 is secured to the base socket 64 and serves to fix the
column base to a stationary surface” (Madocks, col. 5, ll. 56-60).
2. Madocks teaches that:
Socket 14 supports ball 12 upon which socket 16, ball 12
and socket 18 are respectively disposed. Tensioning cable 13
passes through a center aperture in the assembly. The
shoulder 91 of socket 16 and the shoulder 92 of socket 18
are made to butt against each other to limit the maximum
bend angle of the joint. The shoulders of all socket members
in the column are designed in this fashion. The angle of
bevel 95 of each socket is different and depends upon the
position of each socket in the column. At the base joints,
small angles are used creating a large wedging force
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between socket 64, ball 12 and socket 12 thus creating a stiff
joint

(Madocks, col. 6, ll. 25-38).
3. Madocks teaches that it “can be noted here that in long columns
the joint bevel angles near the free end are not critical as long as they
support the free end load and allow for easy column articulation” (Madocks,
col. 6, ll. 39-42).
4. Figure 5 of Madocks is reproduced below:

“FIG. 5 is a sectional view of one section of ball and socket members in the
articulable column” (Madocks, col. 2, ll. 57-58).
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5. Madocks teaches that the “free end socket 62 has provisions for
securing cable 13 and tool attachments to top socket 62” (Madocks, col. 6, ll.
18-19).
6. Strauss teaches “a support system for a medical apparatus
which can be easily cleaned and can be used for minor surgical procedures”
(Strauss 1 ¶ 0006).
7. Strauss teaches that:
The rotation joint 17 makes possible a rotational
movement of the surgical microscope 11 about an axis 22
which is at an angle to a rotational axis of the rotation joint
18. This rotation axis is identified by reference numeral 23.
The joint unit 20 makes possible a rotational movement of
the surgical microscope 11 about an axis 24.

(Strauss 2 ¶ 0042.)
8. Strauss teaches that the “joint unit 18 further includes an
adjusting screw 117 by means of which the friction force can be adjusted
which acts on the shaft element 114. By actuating the adjusting screw 117, a
rotation of the joint unit 18 can be prevented” (Strauss 3 ¶ 0058).
9. Chersky teaches “a reusable articulating arm or flexible arm
linkage assembly. The arm can serve as the platform for a wide variety of
instrument attachments” (Chersky 2 ¶ 0024).
10. Chersky teaches that “FIGS. 5A and 5B illustrate two links of
FIG. 3B coupling with each other through a spherical convex surface
contacting a spherical concave surface” (Chersky 4 ¶ 0079).
11. Chersky teaches that in the prior art “[e]ach socket member has
a conical opening with internal teeth engagable with a ball made of an
elastomeric polymer” (Chersky 1 ¶ 0008).
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12. Figures 5A and 5B of Chersky are reproduced below:

“FIGS. 5A and 5B illustrate two links of FIG. 3B coupling with each other
through a spherical convex surface contacting a spherical concave surface”
(Chersky 3 ¶ 0045).
13. Chersky teaches that the “rigidity of the articulating column can
be attributed to increased friction resulting from a combination of geometric
and materials factors” (Chersky 6 ¶ 0109).

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Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
“If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability.” Id. at 417. As noted by the Court in KSR,
“[a] person of ordinary skill is also a person of ordinary creativity, not an
automaton.” 550 U.S. at 421.
Analysis
Appellants correctly point out that Madocks uses an internal cabling
system to maintain the armature position (FF 2), but claim 9, which uses the
open transitional phrase “comprising” does not exclude the use of such an
internal cabling system. See Georgia-Pacific Corp. v. U.S. Gypsum Co., 195
F.3d 1322, 1327 (Fed. Cir. 1999) (The transitional term “comprising” is
“inclusive or open-ended and does not exclude additional, unrecited
elements or method steps.”) In addition, the Examiner does not rely solely
upon Madocks, but also points to the teaching of Chersky, who teaches “a
reusable articulating arm or flexible arm linkage assembly. The arm can
serve as the platform for a wide variety of instrument attachments” (Chersky
2 ¶ 0024; FF 9).
We agree with the Examiner that the evidence supports the finding
that Madocks and Chersky teach flexible armatures comprising polymer
segments with an inner lumen and a hemispherical nose section adapted to
interengage a tail section with sufficient holding force to maintain a desired
position (FF 1-3, 9-13). In particular, Chersky supports this finding by
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teaching that the “rigidity of the articulating column can be attributed to
increased friction resulting from a combination of geometric and materials
factors” (Chersky 6 ¶ 0109; FF 13).
We also agree with the Examiner that Strauss teaches an assembly
which “locks” or fixes the rotation of the pivoting joint assembly in a
predetermined orientation. Specifically, Strauss teaches that:
The rotation joint 17 makes possible a rotational
movement of the surgical microscope 11 about an axis 22
which is at an angle to a rotational axis of the rotation joint
18. This rotation axis is identified by reference numeral 23.
The joint unit 20 makes possible a rotational movement of
the surgical microscope 11 about an axis 24.

(Strauss 2 ¶ 0042; FF 7.) Thus, Strauss teaches a pivoting joint assembly.
Further, Strauss teaches that the “joint unit 18 further includes an adjusting
screw 117 by means of which the friction force can be adjusted which acts
on the shaft element 114. By actuating the adjusting screw 117, a rotation of
the joint unit 18 can be prevented” (Strauss 3 ¶ 0058; FF 8). We agree with
the Examiner that the adjusting screw 117, which prevents rotation of joint
unit 18, locks the pivoting joint assembly in a predetermined orientation, but
since rotation joint 17 is not also locked, the remaining pivoting joint
assembly remains free to float within a predetermined range of motion (FF
7).
We appreciate Appellants‟ point that “lock” is not used in Strauss (see
Reply Br. 9), but we find that when Strauss teaches prevention of rotation
(FF 8), this teaching is equivalent in meaning to “lock” in the context of the
joint assembly.

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Conclusion of Law
The evidence of record supports the Examiner‟s conclusion that
Madocks, Strauss, and Chersky render claim 9 obvious.
SUMMARY
In summary, we affirm the rejection of claim 9 under 35 U.S.C. §
103(a) as obvious over Madocks, Strauss, and Chersky. Pursuant to 37
C.F.R. § 41.37(c)(1), we also affirm the rejection of claims 10-15 as these
claims were not argued separately.

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

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