Ex Parte Jeong

Patent Trial and Appeal Board

Mar 21, 2017

13001565 (P.T.A.B. Mar. 21, 2017)

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.
13/001,565 12/27/2010 Chang Wook Jeong 170174-14456927 2406
26565 7590
Mayer Brown LLP
PO Box 2828
Chicago, IL 60690
EXAMINER
BACHMAN, LINDSEY MICHELE
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
03/23/2017 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):
ipdocket@mayerbrown.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHANG WOOK JEONG
Appeal 2015-007143
Application 13/001,565
Technology Center 3700
Before JILL D. HILL, ERIC C. JESCHKE, and GORDON D. KINDER,
Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Chang Wook Jeong (“Appellant”) seeks review under 35 U.S.C.
§ 134(a) of the Examiner’s decision, as set forth in the Final Office Action
dated March 26, 2014 (“Final Act.”), and as further explained in the
Advisory Action dated October 9, 2014 (“Adv. Act.”), rejecting claims 13,
15—18, and 21. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM, designating the affirmance of the rejection of
independent claims 13 and 21 as a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
Appeal 2015-007143
Application 13/001,565
BACKGROUND
The disclosed subject matter “relates to an easy-to-control tool for
minimally invasive surgery.” Spec. 11.1 Claims 13 and 21 are independent.
Claim 13 is reproduced below:
13. Tool for minimally invasive surgery
comprising,
an elongated shaft having a predetermined
length,
an adjustment handle manually controllable
by a user,
a first pitch axis part and a first yaw axis part
positioned around one end of the elongated shaft for
transferring motions in pitch and yaw directions
following the operation of the adjustment handle,
a second pitch axis part and a second yaw
axis part positioned around the other end of the
elongated shaft for operating corresponding to the
operations from the first pitch axis part and the first
yaw axis part, respectively,
an end effector controllable by the second
pitch axis part and the second yaw axis part, and
a pair of connection pulleys,
wherein the first pitch axis part and the first
yaw axis part drive the second pitch axis part and
the second yaw axis part by at least one actuating
cable, respectively, and
wherein the pair of connection pulleys
transfers an operation of the first pitch axis part in
the yaw direction to the second pitch axis part.
1 Citations to the Specification refer to the 38-page version filed on
December 27, 2010.
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Application 13/001,565
REJECTIONS
1. Claims 13, 15, 16, and 21 stand rejected under 35 U.S.C.
§ 102(e) as anticipated by Nishizawa (US 2007/0208375 Al, published Sept.
6, 2007).
2. Claims 17 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Nishizawa and Madhani (US 6,991,627 B2, issued Jan.
31,2006).
DISCUSSION
Rejection 1 — The rejection of claims 13,
15, 16, and 21 under 35 U.S.C. § 102(e)
Appellant argues the patentability of independent claim 13 and does
not separately argue claims 15 and 16, which depend from claim 13. Br. 8—
13,15. To argue the patentability of claim 21, Appellant relies on the
arguments set forth for claim 13. See id. at 14.
Claim 13 recites “wherein the first pitch axis part. . . drive[s] the
second pitch axis part... by at least one actuating cable.” Br. 19 (Claims
App.).2 To address this limitation in the rejection, the Examiner identified
elements 113, 120 as the “first pitch axis part” and element 2b as the
“second pitch axis part” and stated “[t]he first pitch axis part drives the
second pitch axis part by a pitch axis actuating cable and the first yaw axis
part drives the second yaw axis part by a yaw axis actuating cable (3a, 3 c,
3d; 5a, 5b; paragraph [0015]).” Final Act. 3; see also, e.g., Nishizawa, Fig.
9 (showing elements 2b, 113, 120).
2 Claim 21 recites “wherein the first pitch axis part and the first yaw
axis part drive the second pitch axis part and the second yaw axis part by at
least one first cable and at least one second cable.” Br. 22 (Claims App.).
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Application 13/001,565
Appellant contends that, “[a]s described in Nishizawa, the elements
113 and 120 do[] not drive the element 2b in Nishizawa, but the elements
113 and 120 have different functions and are to be used for different
purposes.” Br. 11. In support, Appellant quotes or paraphrases statements
from certain paragraphs of Nishizawa. Compare id. at 10—11, with
Nishizawa Tflf 66, 77, 97.
We are not apprised of error based on this argument. As noted by the
Examiner, “paragraphs [0078], [0079] show that elements 113, 120 are
driven by elements 106 and 107 and paragraph [0070] clearly states
elements 106, 107 drive the opening and closing of end effector la, lb.”
Ans. 4; see also Nishizawa 193 (disclosing that blades la, lb are fixed to
blade pulleys 2a, 2b, respectively). Paragraphs 91 to 94 and Figure 9 of
Nishizawa also support the Examiner’s position that at least element 113
drives element 2b by at least one actuating cable.
Claim 13 also recites “a pair of connection pulleys” “wherein the pair
of connection pulleys transfers an operation of the first pitch axis part in the
yaw direction to the second pitch axis part.” Br. 19 (Claims App.).3 In the
rejection, the Examiner identified elements 6a, 6b, 6e, 6f as the “pair of
connection pulleys” and stated:
The pair of connection pulleys transfers an operation of the first
pitch axis part (113, 120) in the yaw direction to the second pitch
axis part (2b) (because, as shown in Figure 9[)], the cable 3a, for
example, moves “outward” from the central axis in the direction
of the yaw axis as it moves from first pitch axis part 113, 120, to
the connection pulleys 6a, 6b and then “inward” in the direction
3 Claim 21 recites “transfer” rather than “transfers” in the second
limitation. Br. 22 (Claims App.).
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Application 13/001,565
of the yaw axis as the cable moves to the second pitch axis part
2b).
Final Act. 3; see also, e.g., Nishizawa, Fig. 9 (showing elements 6a, 6b, 6e,
6f).
Appellant contends that “Nishizawa fails to teach or suggest that its
guiding pulleys 6a, 6b, 6e, and 6f transfer an operation of the operating
pulleys 113 and 120 in the yaw direction to the blade pulley 2b.” Br. 10.
According to Appellant, “wire guiding pulleys 6a, 6b, 6e, and 6f merely
transfer a pitch direction movement of the finger rests 106 and 107 to the
blades la and lb in order to allow the blades la and lb to be opening or
closing position.” Id.
To address this argument, we first determine the broadest reasonable
interpretation of the requirement that “the pair of connection pulleys
transfers an operation of the first pitch axis part in the yaw direction to the
second pitch axis part” as recited in claim 13. We construe this limitation to
require that the pair of connection pulleys transfers motion of the first pitch
axis part in the yaw direction (i.e., about a yaw axis) to motion of the second
pitch axis part in the yaw direction (i.e., about a yaw axis). This
construction is supported by, for example, paragraph 73 of the Specification,
which, in describing Figure 16 (as compared to Figure 15), provides:
Fig. 16 shows a status where the adjustment handle 110 and the
end effector 600 rotated to a certain degree in the yaw direction.
... In this case, the first and the second connection pulleys 560A
and 560B are responsible for the transfer of the operation of the
first pitch axis cable pulley 220 and of the second opening and
closing cable pulley 440 in the yaw direction to the second pitch
axis cable pulley 240 and the third opening and closing cable
pulley 460.
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Application 13/001,565
Spec. 173. As shown by comparing Figure 16 with Figure 15, motion by
first pitch axis cable pulley 220 about the axis of rotation of the first
connection pulley 560A (which is a yaw axis) is transferred to motion by
second pitch axis cable pulley 240 about the axis of rotation of the second
connection pulley 560B (which is also a yaw axis).
The Examiner considers the limitation at issue satisfied if the “pair of
connection pulleys” (1) rotates in the yaw direction and (2) is involved in the
transfer of “forces” from the identified “first pitch axis part” (elements 113,
120 in Nishizawa) to the identified “second pitch axis part” (element 2b).
See, e.g., Ans. 4 (stating that “transfer of forces from elements 106, 107 to
elements la, lb requires transferring operation between elements 113, 120 to
elements 6a, 6b, 6e, 6f to element 2b, because they are all interconnected
with actuating cables as shown in Figure 9 and discussed in paragraphs
[0070], [0078], [0079]”); Adv. Act. 2 (“Connection pulleys 6a, 6b, 6e, 6f
rotate in the yaw direction (see Figure 9). Actuating cables (3a, 3c, 3d, 5a,
5b) move along connection pulleys to connect first pitch axis part (113, 120)
to second pitch axis part (2b) (shown in Figure 9).”). This position,
however, ignores the requirement that the pair of connection pulleys
transfers motion of the first pitch axis part in the yaw direction to motion of
the second pitch axis part in the yaw direction.
As discussed above, Nishizawa discloses that motion by elements
113, 120 in the pitch direction (i.e., rotation about the longitudinal axis of
113, 120 by motion of, for example, finger rests 106, 107) is transferred—
via drive wires 3a, 3b, 3c, 3d—to motion by elements 2a and 2b in the pitch
direction. See, e.g., Nishizawa ^fl[ 70, 78, 79, 91—94, Fig. 9. The Examiner
has not shown, however, that the identified “pair of connection pulleys”—
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Application 13/001,565
elements 6a, 6b, 6e, 6f—transfers motion by elements 113, 120 in Nishizawa
in the yaw direction (i.e., rotation about an axis parallel to the axis of
rotation of elements 6a, 6b, 6e, 6f) to motion by element 2b in the yaw
direction.
Nishizawa does, however, disclose structure that satisfies the
requirements of the recited “pair of connection pulleys.” We identify “disc­
shaped convex portion 20” (Nishizawa 148) and disc-shaped convex portion
134 (see id. 1 86) as the “pair of connection pulleys.” These structures
satisfy the final limitation of claim 13 (and the final limitation of claim 21)
because, as disclosed by Nishizawa, elements 20 and 134 transfer motion by
elements 113, 120 in the yaw direction—via, inter alia, drive wires 5a, 5b
and intermediate plates 10, 133—to motion of element 2b in the yaw
direction. See, e.g., Nishizawa ]fl[ 86—88 (discussing Figures 2, 6, 7, 8).4
The result of these motions is shown in the upper drawing of Figure 8 (as
compared to, for example, Figure 5), which depicts operating portion
103/handle portion 104 (and thereby elements 113, 120) rotated in the yaw
direction and also depicts leading end joint portion 100 (and thereby element
2b) rotated in the yaw direction. See, e.g., id. 1 83 (“In the example of an
upper drawing in FIG. 8, when moving the handle portion 104 and the
operating portion 103 upward and downward, the grip portion of the leading
end joint portion 100 moves upward and downward.”).
4 In the Brief, Appellant acknowledges certain aspects now cited to
address these limitations. See Br. 10 (“In Nishizawa, the intermediate plates
10 and 133 transfer an operation of the near side joint portion 102 in the yaw
direction to the intermediate portion 16. (See Nishizawa, paragraphs [0087]
and [0088]).”).
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Application 13/001,565
For the reasons above, we sustain the rejection of claims 13 and 21.
Because certain findings of fact differ from those of the Examiner, we
designate our affirmance as a new ground of rejection under 37 C.F.R.
§ 41.50(b) to provide Appellant with a full and fair opportunity to respond to
the rejection, as modified. Because Appellant does not separately argue
claims 15 and 16, which depend from claim 13, we also sustain the rejection
of those claims.
Rejection 2 — The rejection of claims 17
and 18 under 35 U.S.C. § 103(a)
The Examiner rejected claims 17 and 18 under 35 U.S.C. § 103(a) as
unpatentable over Nishizawa and Madhani. Final Act. 4—6. First, Appellant
argues that, because claims 17 and 18 depend from claim 13, claims 17 and
18 are allowable for the reasons argued with respect to claim 13. Br. 17.
Because we are not apprised of error in the rejection of claim 13 (see
Rejection 1), we are also not apprised of error in the rejection of claims 17
and 18 based on their dependence from claim 13.
Second, Appellant states, “[i]n addition, each of claims 17 and 18
recites additional features that are not disclosed in Nishizawa and Madhani,
including ‘the pitch axis connection part and the yaw axis connection part
are coupled in orthogonally.’” Br. 17.5 We are not apprised of error by the
Examiner (Final Act. 4—6; Ans. 5) as to the rejection of claims 17 and 18
because Appellant merely recites certain language of the claims and states
that the prior art does not disclose those limitations, but does not explain
5 Appellant recites a limitation from claim 17. Br. 20 (Claims App.).
Claim 18 recites “wherein the pitch axis connection part and the yaw axis
connection part are coupled orthogonally.'1'’ Id. at 21 (emphasis added).
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Application 13/001,565
why. See 37 C.F.R. § 41.37(c)(l)(iv) (2014) (“A statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim.”); see also In re Lovin, 652 F.3d 1349,
1356—57 (Fed. Cir. 2011) (holding that “the Board reasonably interpreted
Rule 41.37 to require more substantive arguments in an appeal brief than a
mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art”). Accordingly, we
sustain the Examiner’s decision to reject claims 17 and 18.
DECISION
We AFFIRM the decision to reject claims 13, 15, 16, and 21 under
35 U.S.C. § 102(e), designating the affirmance of independent claims 13 and
21 as a NEW GROUND OF REJECTION pursuant to our authority under
37 C.F.R. § 41.50(b). We AFFIRM the decision to reject claims 17 and 18
under 35 U.S.C. § 103(a).
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
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Application 13/001,565
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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; 37 C.F.R, $ 41.50(b)
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