Ex Parte Moll

Patent Trial and Appeal Board

Oct 28, 2016

13486934 (P.T.A.B. Oct. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/486,934 06/01/2012 Frederic H. Moll
25763 7590 11/01/2016
DORSEY & WHITNEY LLP - MINNEAPOLIS
ATTENTION: PATENT PROSECUTION DOCKETING DEPARTMENT
INTELLECTUAL PROPERTY PRACTICE GROUP - PT/16TH FL
50 SOUTH SIXTH STREET, SUITE 1500
MINNEAPOLIS, MN 55402-1498
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.
P247743.US.02(497733-182) 1246
EXAMINER
SHAY,DAVIDM
ART UNIT PAPER NUMBER
3769
NOTIFICATION DATE DELIVERY MODE
11/01/2016 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):
ip.docket@dorsey.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FREDERIC H. MOLL
Appeal2015-000806
Application 13/486,934
Technology Center 3700
Before LYNNE H. BROWNE, JILL D. HILL, and PAUL J. KORNICZKY,
Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Frederic H. Moll (Appellant) appeals under 35 U.S.C. § 134 from the
rejection of claims 30-33 under 35 U.S.C. § 103(a) as unpatentable over
Humayun (US 6,800,076 B2, iss. Oct. 5, 2004), Hobart (US 6,743,221 Bl,
iss. June 1, 2004), and Wallace (US 2005/0222554 Al, pub. Oct. 6, 2005). 1
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 We do not consider Appellant's arguments pertaining to the drawing
objections as these arguments pertain to petitionable, not appealable, matters
and are not within the jurisdiction of the Board. See MPEP § § 1002, 1201.
Appeal2015-000806
Application 13/486,934
CLAIMED SUBJECT MATTER
Claim 30, reproduced below, is illustrative of the claimed subject
matter:
30. A method for repairing a detached retina in a patient's eye,
compnsmg:
providing a robotic medical instrument system comprising
a master input device, an instrument driver, a flexible sheath, and
a guide instrument coaxially coupled within a working lumen of
the flexible sheath;
the instrument driver configured to independently control
movement of the guide instrument relative to the flexible sheath;
robotically extending the guide instrument out of a distal
tip of the flexible sheath and into the vitreous body of the eye,
the guide instrument comprising an elongate flexible body
having a proximal end, a distal end, an image capture device, and
an end effector coupled to the distal end;
robotically maneuvering, steering and/or rotating the
guide instrument relative to the flexible sheath while the distal
end of the guide instrument is in the vitreous of the eye;
pushing the detached retina toward the wall of the eye
using the guide instrument under robotic control;
robotically positioning the end effector at the area of the
detached retina; and
engaging the instrument driver to maneuver the end
effector and repair the detached retina.
DISCUSSION
Appellant argues claims 30-33 together. See Appeal Br. 8-14. We
select independent claim 30 as the representative claim, and claims 31-33
stand or fall with claim 30.
The Examiner finds that "Humayun teaches a method of treating
retinal detachment including inserting a device; using the inserted device to
push the retina back into place; and reattaching the retinal flap with a laser
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Application 13/486,934
fiber (see colunm 2, lines 5-10 and 19-21)." Final Act. 6. In addition, the
Examiner finds that "Wallace et al teach a surgical method for internal
surgery including a robotic manipulator, a steerable guide instrument and a
catheter which are controlled by a master device (see Abstract), wherein the
sheath and the guide instrument can be independently controlled" and
"Hobart et al teach a surgical method which includes repairing a detached
retina (see column8 [sic], lines 11-54) employing a flexible hosing including
an optical fiber (see e.g. Figure 4, elements 433 and 419, respectively and
column 10, lines 8-24)." Id. Based on these findings, the Examiner
determines that it would have been obvious
to employ a method as taught by Hobart et al in the method of
Humayun, since Humayun gives no details of the laser applicator
that is suggested to be inserted his device, and since the flexible
device of Hobart et al is more useful, due to its flexibility, or
alternatively, to employ the method as taught by Humayun in the
method of Hobart et al, since Hobart et al prefers that the eye be
flushed with fluid (see column 7, lines 33-39), and employing the
method of Humayun would require one less incision in the eye,
which is desirable and in either case, to include the method of
Wallace et al, since automating the method would reduce
surgeon fatigue and increase patient safety, thus producing a
method such as claimed.
Id. at 7.
Appellant argues that
[t]here is no teaching in Humayun that the body portion 2 is
flexible, yet it is the body portion 2 that is inserted into the eye.
Only the soft distal tip 8 is described in Humayun as being
formed of a soft, flexible and resilient material (col. 5, 11. 18-
26).
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Appeal2015-000806
Application 13/486,934
Appeal Br. 8. Appellant's argument is not convincing because it is not
responsive to the rejection as articulated by the Examiner, which relies upon
Hobart to teach flexibility as discussed supra. See Final Act. 6-7.
Appellant further argues that "neither Hobart et al. nor Humayun
teach or suggest a robotic medical instrument system comprising a master
input device, an instrument driver, 'an independently controllable robotic
sheath instrument,' and a guide instrument coaxially within a working lumen
of the flexible sheath." Appeal Br. 9. Again, Appellant's argument is not
responsive to the rejection as articulated by the Examiner which relies upon
Wallace to teach these limitations. See Final Act. 6-7.
Next, Appellant argues that
there is no motivation for a person having ordinary skill in the art
to employ the flexible housing 433 in Hobart et al. to the rigid
body portion 2 of Humayun because a flexible tube or housing
would give the physician less control of the distal tip 8 of
Humayun.
Appeal Br. 9. However, this argument is foreclosed by KSR Int'! Co. v.
Teleflex Inc., 550 U.S. 398 (2007), in which the Court rejected the rigid
requirement of a teaching or suggestion or motivation to combine known
elements in order to show obviousness. KSR, 550 U.S. at 415. The Court
noted that an obviousness analysis "need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." Id. at 418.
Furthermore, a given course of action often has simultaneous
advantages and disadvantages, and this does not necessarily obviate any or
all reasons to combine teachings. See Winner Int 'l Royalty Corp. v. Wang,
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Application 13/486,934
202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) ("The fact that the motivating
benefit comes at the expense of another benefit, however, should not nullify
its use as a basis to modify the disclosure of one reference with the teachings
of another. Instead, the benefits, both lost and gained, should be weighed
against one another."). Here the Examiner determines that the advantage of
increased flexibility outweighs the loss in physical control. See Ans. 4--5.
Appellant does not provide evidence or persuasive argument that one skilled
in the art would be unable to determine the proper degree of flexibility while
maintaining the needed physical control. Thus, Appellant's argument is
unconvmcmg.
In addition, Appellant argues that "Hobart et al. does not teach or
suggest repairing a detached retina." Appeal Br. 9. This argument is also
not responsive to the rejection as articulated by the Examiner, which relies
upon Humayun to teach this limitation. See Final Act. 6-7.
Then, Appellant argues that "[t]here is simply no motivation for a
person having ordinary skill in the art to incorporate the robotic medical
instrument system of Wallace et al. with the crude instruments disclosed in
Hobart et al. and Humayun to repair a detached retina." Appeal Br. 10.
However, as discussed supra, this argument is foreclosed by KSR. To the
extent that Appellant is arguing that the Examiner fails to articulate reasons
for the proposed rejection, we note the reasoning quoted supra. Appellant
does not explain why Examiner's reasoning lacks rational underpinning.
Thus, Appellant does not apprise us of error.
Finally, Appellant contends that "the prior art's teachings undermine
the reasons being proffered (by the Examiner) as to why a person of ordinary
skill would combine the known elements" and discuss each of the references
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Application 13/486,934
separately. Appeal Br. 12-13. However, "[n]onobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures." See In re Merck &
Co. 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellant then describes the bodily incorporation of various
components of Humayun, Hobart, and Wallace. See Appeal Br. 13-14. "[I]t
is not necessary that the inventions of the references be physically
combinable to render obvious the invention under review." In re Sneed, 710
F.2d 1544, 1550 (Fed. Cir. 1983). The relevant inquiry is whether the
claimed subject matter would have been obvious to those of ordinary skill in
the art in light of the combined teachings of those references. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981). "Combining the teachings of
references does not involve an ability to combine their specific structures."
In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). Appellant does not explain
why the teachings of Humayun, Hobart, and Wallace cannot be combined,
and thus, do not apprise us of error.
For these reasons, we sustain the Examiner's decision rejecting claim
30, and claims 31-33, which depend therefrom.
DECISION
The Examiner's rejection of claims 30-33 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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