Ex Parte Omori et al

Patent Trial and Appeal Board

Nov 9, 2018

11923159 (P.T.A.B. Nov. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/923,159 10/24/2007 Shigeru Omori
154825 7590 11/14/2018
KS - Whitmyer IP Group LLC
600 Summer Street
3rd Floor
Stamford, CT 06901
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.
02581-Pl713A 9118
EXAMINER
HOLLM, JONATHAN A
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
11/14/2018 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):
uspto@whipgroup.com
patent@karlstorz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHIGERU OMORI, SHUICHI UENOHARA, MAKOTO JINNO,
and TAKAMITSU SUNAOSHI
Appeal2017-001997
Application 11/923, 159 1
Technology Center 3700
Before STEFAN STAICOVICI, EDWARD A. BROWN, and
ARTHUR M. PESLAK, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Shigeru Omori et al. ("Appellants") seek review under 35 U.S.C.
§ 134(a) of the Examiner's decision rejecting claims 1, 3, 4, 9--15, and 17-
21.2 We heard oral argument on October 31, 2018. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Karl Storz GmbH & Co. KG, is identified as the real party in interest.
Appeal Br. 2.
2 Claims 2 and 16 have been cancelled. Appeal Br. (Claims App.). Claims
5-8, 21, and 22 are objected to and indicated to contain allowable subject
matter. Final Act. 12-13.
Appeal2017-001997
Application 11/923, 159
CLAIMED SUBJECT MATTER
Claim 1 is the sole independent claim, and reads:
1. A manipulator for medical use, comprising:
a hollow shaft;
a power transmitting member having a first wire, the
power transmitting member being disposed in said shaft;
a working unit control mechanism disposed at a first end
of the shaft; and
a working unit disposed at a second end of said shaft and
being driven by said first wire, said working unit having a tip tool
including a rolling mechanism rotating about a rolling axis
directed to a distal end thereof;
wherein the tip tool includes an end effector configured to
grip a needle,
wherein the first wire is fastened to a first tubular member
of the rolling mechanism,
wherein the first tubular member is rotated by the first wire
to drive the rolling mechanism,
wherein a proximal end member and a distal end member
of the tip tool are relatively rotated by said rolling mechanism,
and a rotation identifier is provided on at least one member of the
proximal end member and the distal end member, said rotation
identifier indicating a degree of rotation of the other member of
the proximal end member and the distal end member, thereby
indicating a degree of rotation of the tip tool with respect to the
shaft,
wherein said other member includes a first alignment
indicator to indicate an initial position of said one member,
wherein the tip tool is arranged to rotate along with the end
effector in a yawing direction about a yawing axis perpendicular
to the rolling axis, the tip tool being rotatable about the rolling
axis at a position closer to the distal end than the yawing axis,
wherein the first alignment indicator is provided on a side
surface of the proximal end member, the side surface
continuously connecting walls that oppose each other in a
direction along which the yawing axis extends, and
wherein said rotation identifier is provided on the tip tool
such that, during an operation on a patient with the manipulator,
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Application 11/923, 159
the rotation identifier is positioned within a field of operation to
be displayed on a monitor showing the tip tool within the patient.
Appeal Br. 17-18 (Claims App.).
REJECTIONS
1. Claim 21 is rejected under 35 U.S.C. § 112, fourth paragraph. 3
2. Claims 1, 9-15, and 17-20 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Jinno (US 2006/0219065 Al, published Oct.
5, 2006), Meade (US 5,478,351, issued Dec. 26, 1995), and Smith (US
2008/0149685 Al, published June 26, 2008).
3. Claims 3 and 4 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Jinno, Meade, Smith, and Millman (US 2007/001617 4
Al, published Jan. 18, 2007).
ANALYSIS
Rejection 1
Appellants do not request review of the rejection of claim 21 under 35
U.S.C. § 112, fourth paragraph. See Appeal Br. 4 ("Grounds Of Rejection
To Be Reviewed On Appeal"). Accordingly, we summarily sustain this
rejection.
Rejection 2
The Examiner finds that Jinno discloses a manipulator comprising all
limitations recited in claim 1 except for (a) a rotation identifier on at least
one member of the proximal end member ( connecting portion 40) and the
3 We note the Examiner states that claim 21 is rejected under 35 U.S.C.
§ 112, second paragraph. Final Act. 12 (dated March 31, 2016). However,
this statement appears to be a typographical error, as there is no rejection
under this ground in the Final Office Action.
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Application 11/923, 159
distal end member (member including cover 327) of the tip tool, where the
rotation identifier indicates a degree of rotation of the other member of the
proximal end member and distal end member, thereby indicating a degree of
rotation of the tip tool with respect to the shaft (main body member 41 ); and
(b) that the other member includes a first alignment indicator to indicate an
initial position of the one member. Final Act. 4--5 (citing Jinno, Figs. 40,
41 ). The Examiner relies on Meade for teaching a mechanism comprising a
proximal end member (handle 14) with a first alignment indicator on a side
surface, a distal end member (rotator knob 42) with a rotation identifier
arranged to indicate a degree of rotation of a member, and a first alignment
indicator capable of indicating an initial position of rotation of the member
and a degree of rotation between a tool and the shaft of the handle. Id. at 5
(citing Meade, col. 4, 11. 25-32); see also id. at 7 (Examiner's annotated Fig.
1 a of Meade). The Examiner relies on Smith for teaching the benefit of
having a visual indicator at a distal end effector to provide a user with visual
feedback for positioning the end effector during use. Id. at 5---6 (citing Smith
,r,r 246-248).
The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art to modify Jinno, in view of Meade and Smith, to
include a rotation identifier and a first alignment indicator meeting all of the
claimed limitations, "to provide a user with visual feedback concerning the
degree of rotation of the end effector to assist in determining when the end
effector is in a desired position to ensure proper relative rotation of the tip
tool during a surgical procedure as the device is viewed by a surgeon on a
viewer/monitor." Id. at 6-7.
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Application 11/923, 159
Appellants contend that Meade does not teach a "rotation identifier []
provided on at least one member of the proximal end member [ of the tip
tool] and the distal end member [of the tip tool]," as claimed. Appeal Br. 8
(alterations in original). In contrast, Appellants contend, Meade's shaft
rotation markings 42 are disposed at handle 14 of the tool. Id. (citing
Meade, Fig. la). Appellants assert that Meade also does not disclose "a first
alignment indicator," as claimed, as the "alignment indicator" of Meade
identified by the Examiner is also disposed on handle 14. Id. Appellants
contend that Meade's shaft rotation markings 42 are disposed on shaft 12,
which is rotationally coupled to tool 40, and, consequently, "a rotation in
shaft 12 would cause a corresponding and equal rotation in tool 40 and shaft
rotation markings 42." Id. at 9. Accordingly, Appellants contend, shaft
rotation markings 42 do not "indicate a degree of rotation of the tip tool
relative to the shaft," but, instead, measure the rotation of shaft 12 and tip
tool 40 relative to handle 14. Id. (citing Meade, col. 4, 11. 25-33, Figs. la,
1 b ). Appellants contend there is no teaching in Meade that would have
motivated one of ordinary skill in the art to instead place shaft rotation
markings 42 on the distal end to be visible on a monitor during endoscopic
surgery. Id.
Appellants contend that Smith teaches use of a locking marker 214,
215 to show when jaws 226, 228 are in a position in which fastener 10 can
be locked. Appeal Br. 10 (citing Smith ,r 247, Fig. 53). Appellants contend
that this teaching provides no motivation to place Meade's shaft rotation
markings on "a distal end member" of a "tip tool" or use those shaft rotation
markings to "indicate a degree of rotation of the tip tool with respect to the
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shaft," or place an "alignment indicator" on a "side surface of a proximal
end member" of the tip tool. Id. at 14.
The Examiner acknowledges that "the rotation identifier and
alignment indicators taught by [Meade] are located at a handle of an
instrument." Ans. 4 (citing Meade, Figs. la, lb). However, the Examiner
submits that the combined teachings would have suggested to a skilled
artisan to modify Jinno 's device to provide its relatively rotating proximal
end member and distal end member with a first alignment indicator and a
rotational identifier, respectively, similar to in Meade, "to beneficially
provide a visual indicator for a user concerning the positioning and
orientation of the end effector." Id. at 4--5.
Appellants' contentions are persuasive. As shown in Figure 40 of
Jinno, the portion of manipulator 300 including treating members 325, 326
and cover 327 is rotatable about main axis 46 relative to the adjacent portion
of manipulator 300 that defines rotor axis 29. See also Jinno ,r 274. In
Meade's surgical tool 10, outer sleeve 22 is provided over inner extension
20, rotator knob 42 is attached to outer sleeve 22, and surgical scissors 40
are mounted to inner extension 20. See Meade, col. 3, 11. 62---63, col. 4, 11.
12-13, 25-26, Figs. la, lb. Turning rotator knob 42 causes outer sleeve 22
to rotate, thereby causing scissors 40 also to rotate because of the
mechanical coupling between outer sleeve 22 and scissors 40. Id. at col. 4,
11. 26-31. The graduations on rotator knob 42 indicate the rotational
orientation of scissors 40 with respect to a marking provided on handle 14
adjacent rotator knob 42. See Meade, Fig. la. Meade does not disclose that
the graduations on rotator knob 42 and/or the marking on handle 14 are, or
alternatively could be, provided on a "tip tool." Nor do the graduations
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Application 11/923, 159
and/or marking indicate a degree of rotation of scissors 40 with respect to a
member of a tip tool. Instead, Meade is concerned only with knowing the
rotational orientation of scissors 40 with respect to a marking on handle 14.
Also, handle 14 and rotator knob 42 in Meade's surgical tool would
not be positioned within a field of operation to be displayed on a monitor
showing scissors 40 within a patient. Although Smith teaches the use of a
visual indicator on an end effector to provide visual feedback when using the
end effector within a patient, we are persuaded by Appellants' contention
that Smith does not provide an adequate reason to place Meade's shaft
rotation markings on "a distal end member" of a "tip tool," place an
"alignment indicator" on a "side surface of a proximal end member" of the
tip tool, or to use Meade's shaft rotation markings to "indicate a degree of
rotation of the tip tool with respect to the shaft." Appeal Br. 14. We agree
with Appellants that the Examiner has not articulated an adequate reason
with a rational underpinning why one of ordinary skill in the art would have
modified Jinno to include the rotation identifier and first alignment indicator,
as called for by claim 1.
Thus, we do not sustain the rejection of claim 1, or of dependent
claims 9--15 and 17-20, as unpatentable over Jinno, Meade, and Smith.
Rejection 3
The Examiner's use of Millman to reject dependent claims 3 and 4
fails to cure the deficiencies in the rejection of parent claim 1, as discussed
above. See Final Act. 11-12. Thus, we do not sustain the rejection of
claims 3 and 4 as unpatentable over Jinno, Meade, Smith, and Millman.
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Application 11/923, 159
DECISION
We affirm the rejection of claim 21 under 35 U.S.C. § 112, fourth
paragraph.
We reverse the rejection of claims 1, 9--15, and 17-20 under
35 U.S.C. § 103(a) as unpatentable over Jinno, Meade, and Smith.
We reverse the rejection of claims 3 and 4 under 35 U.S.C. § 103(a)
as unpatentable over Jinno, Meade, Smith, and Millman.
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-IN-PART
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