Ex Parte Popovic et al

Patent Trial and Appeal Board

Jan 31, 2019

14361943 (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/361,943 05/30/2014 Aleksandra Popovic
24737 7590 02/04/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
2011P02286WOUS 2909
EXAMINER
IP,JASONM
ART UNIT PAPER NUMBER
3793
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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEKSANDRA POPOVIC, HAYTHRAM ELHAWARY, and
CHRISTOPHER STEPHEN HALL 1
Appeal 2017-011019
Application 14/361,943
Technology Center 3700
Before FRANCISCO C. PRATS, JOHN E. SCHNEIDER, and
DAVID COTTA, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal2 under 35 U.S.C. § 134 of the Examiner's rejection
of claims to a system and method for guiding surgical robots which have
been rejected as directed to non-statutory subject matter, as anticipated, and
as obvious. We have jurisdiction under 35 U.S.C. § 6(b ).
1 Appellants identify KONINKLIJKE PHILLIPS N.V., as the real party in
interest. Appeal Br. 4.
2 We have considered and herein refer to the Specification filed May 30,
2014 ("Spec."); Final Office Action mailed Dec. 1, 2016 ("Final Act.");
Appeal Brief filed Apr 25, 2017 ("Appeal Br."); Examiner's Answer mailed
June 27, 2017 ("Ans."); and Reply Brief, filed Aug. 25, 2017 ("Reply Br.").
Appeal2017-011019
Application 14/361,943
We AFFIRM-IN-PART.
STATEMENT OF THE CASE
Coronary bypass surgery is a procedure in which a
diseased coronary artery is abridged using an artery grafted
elsewhere in the body. In minimally invasive bypass surgery,
access to arteries is limited by the following factors: 1) Arteries
are covered with fatty tissue or may run intramyocardially
which makes them invisible in endoscope images; and 2) Due
to limited motion permitted through ports, it is difficult to
manually reach specific areas of the heart. These factors pose
limitations for use of intraoperative [ ultrasound] in minimally
invasive bypass surgery.
Spec. ,r 1. The Specification describes a system and method for
robotically guiding ultrasound probes for surgical imaging. Id.
Claims 1-25 are on appeal. Claims 1 and 14 are representative and
read as follows:
1. A system for surgical robotic guidance,
compnsmg:
a robotic system having a robot configured to pass to a
target through a port, the robotic system including a visual
component employed in guiding the robot along a path to a
location, the location being defined in accordance with a
position and orientation of the robot; and
an ultrasonic probe guided by the robot to the location to
permit engagement of the probe to collect ultrasonic images at
the location.
14. A method for surgical robotic guidance,
compnsmg:
introducing a robot having a visual guidance component
to pass to a target through a port;
defining a path to a location of the target for the robot;
and
in accordance with a position and orientation of the
robot, guiding an ultrasonic probe along the path to permit
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engagement of the probe to collect ultrasonic images at
positions along the path
The claims stand rejected as follows:
Claims 1, 9, 14, and 22 have been rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
Claims 1, 4, 8, 9, 11-14, 17, 21, 22, 24, and 25 have been rejected
under 35 U.S.C. § I02(b) as anticipated by DiMaio. 3
Claims 2, 3, 15, 16, and 23 have been rejected under 35 U.S.C.
§ I03(a) as unpatentable over DiMaio.
Claims 5-7 and 18-20 have been rejected under 35 U.S.C. § I03(a) as
unpatentable over DiMaio in view of Kuniyasu. 4
NON-STATUTORY SUBJECT MATTER
Issue
The issue with respect to this rejection is whether the Examiner
properly determined that are directed to non-statutory subject matter.
The Examiner finds that, while the claims recite either an apparatus or
a method, the claims rely on
defining a path to place imaging components, introducing
imaging components to the inside of the body, and acquisition
of images, which is considered an abstract idea, or a concept
similar to those found by the courts to be abstract, as it involves
certain methods of organizing human activity, an idea of itself
( organizing information through mathematical corre[]lations )
3 DiMaio et al., US 2009/0036902 Al; published Feb. 5, 2009 ("DiMaio").
4 Kuniyasu et al., US 2009/0247875 Al; published Oct. 1, 2009
("Kuniyasu").
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and mathematical relationship/formulas (prong 1 of the two-
part test).
Ans. 3. The Examiner goes on to find that the structural elements or
steps are specified at a high level of generality, to a method already "well
known in the art" and are not "enough" to supply the "inventive concept"
needed to transform the abstract idea into a patent-eligible invention. Ans.
4.
Appellants argue that, with respect to claims 1-13, the claims recite a
system with specific structural elements creating physical machine or
device. Appeal Br. 8. Appellants contend that the claims are not directed to
an abstract idea. Id.
Turning to claims 14--25, Appellants argue that the claims are directed
to a method employing specific pieces of hardware and that this is more than
an abstract idea. Appeal Br. 10. Appellants argue that while claims 14 and
22 may involve abstract ideas, the claims recite additional elements which
render the claims patentable. Appeal Br. 10. Appellants also contend that
the Examiner has improperly oversimplified the claims and has failed to
properly account for all of the limitations of the claims. Appeal Br. 11.
Appellant also argue that the method recited in the claims does not preempt
the use of the abstract idea in different structures or indifferent techniques.
Id.
Principles of Law
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
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ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Alice, 573 U.S. at 217-18 ( citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with
that framework, we first determine what concept the claim is "directed to."
See Alice, 573 U.S. at 219 ("On their face, the claims before us are drawn to
the concept of intermediated settlement, i.e., the use of a third party to
mitigate settlement risk."); see also Bilski v. Kappas, 561 U.S. 593, 611
(2010) ("Claims 1 and 4 in petitioners' application explain the basic concept
of hedging, or protecting against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
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mathematical formula." Diehr, 450 U.S. at 176 and 191 ("We view
respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract .... is not accorded the protection
of our patent laws, []and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook), 187 ("It is now commonplace
that an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotations omitted). "A claim
that recites an abstract idea must include 'additional features' to ensure 'that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing]
generic computer implementation[] fail[ s] to transform that abstract idea into
a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
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Subject Matter Eligibility Guidance ("Memorandum"). 5 Under that
guidance, we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human interactions such as a fundamental economic practice, or
mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.0S(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds specific limitations beyond the judicial exception that are not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.0S(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum.
Analysis
We begin our analysis by looking at the claims to determine if they
recite a process, machine, manufacture or a composition of matter. Claims
1-13 recite a system that is a machine or combination of machines. Appeal
Br. 27-29 (Claims Appx.). Claims 14--25 recite a method or process. Id. at
5 While the rejection was issued before the Memorandum was released, the
methodology set forth in the Memorandum applies to this Appeal.
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27-32. We agree with the Examiner that the answer to the first part of the
Alice/Mayo analysis is yes; the claims fall within the specific categories of
patentable subject matter.
Turning to the second step of the analysis, we look to the claims to see
if they are directed to one or more of the Judicial Exceptions - a law of
nature, a natural phenomenon or an abstract idea. Here we disagree with the
Examiner's conclusion that the claims are directed to an abstract idea.
Claims 1-13 recite a system comprised of several specific and
concrete elements including a robotic system having a robot with a visual
component and an ultrasonic probe. Appeal Br. 27. The elements are used
in combination to locate the ultrasonic probe in a desired location. Id. We
agree with Appellants that the claims are directed to a physical embodiment
and not an abstract idea.
The Examiner contends that the claims are directed to "surgical ...
guidance" which is an abstract concept coupled with a generic robot system.
Ans. 9. The Examiner finds that the generic components do not rise to the
level of something significantly more than the abstract idea. Ans. 4.
We are not persuaded by the Examiner's arguments. While the
system in claims 1-13 may employ an abstract idea, we agree with
Appellants that the recitation of specific physical elements compels a finding
that the claims are not directed to an abstract idea per se but to a physical,
practical embodiment of the idea. Appeal Br. 8.
The Examiner's analysis represents the precise type of analysis the
Supreme Court counsels against in Alice. As the Court explained '' [ a ]t
some level, all inventions embody, use, reflect, rest upon, or apply laws of
nature, natural phenomena, or abstract ideas." Alice Corp., 573 U.S. at 217.
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The Court went on and cautioned ''[to] tread carefully in construing this
exclusionary principle lest it swallow all of patent law.'' Id. Here the
Examiner has construed the exclusion based on an abstract idea too broadly.
A similar analysis applies to method claims 14--25. The Examiner
contends that the claims are directed to an abstract idea in that the method
recited certain steps that the Examiner contends are mental processes. Ans.
3. In support of the contention, the Examiner argues that the following acts
consist of mental steps:
Id.
a surgeon mentally performs the act of defining the path
to the location that they want to image, consciously introduces
the imaging components, and guides them to the location would
at least obtain and compare intangible data [e.g., position,
orientation], compare new and stored information and using
rules to identify options [ e.g., path guide], use categories to
organize, store and transmit information [ e.g., images], and use
algorithm for calculating parameters indicating an abnormal
condition [ e.g., deviation from path].
While the method claims recite the step of defining a path, which may
involve a mental step, the claims also call for introducing a robot through a
port and guiding an ultrasonic probe along a path. See, e.g., Claim 14 above.
These steps call for physical action - moving the robot and the probe - on
the part of the person performing the process. They do not recite mental
steps as suggested by the Examiner. Under step (1) of the guidance, we
conclude that the claims are not directed to an abstract idea.
Even if we were to conclude that the claims are directed to an abstract
idea, under the guidance, we must next ask if the claims recite additional
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elements that integrate the judicial exception into a practical application.
We conclude that they do.
As discussed above, the method claims include steps calling for
physically moving the robot arm and the ultrasonic probe along the path
developed in the determining step. This is a practical application of the
determining step. Under the guidance, the claims are deemed to be patent
eligible.
Having concluded that the claims are directed to patent eligible
subject matter we need not address the issue of whether the recited elements
are well-understood, routine, conventional.
Conclusion
We conclude that the Examiner erred in finding that the claims are
directed to non-statutory subject matter.
ANTICIPATION
Issue
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner's conclusion that the claims are
anticipated by DiMaio.
The Examiner finds DiMaio discloses a surgical robot guidance
system comprising a robot system having a robot configured to pass through
a port. Ans. 5. The Examiner finds that the robot system comprises a visual
component employed in guiding the robot along a path to a location, where
the location is defined in accordance with the location and position of the
robot. Id. The Examiner also finds that the system of DiMaio comprises an
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ultrasonic probe which is guided by the robot to the location to permit the
probe to collect ultrasonic images at the location. Id.
Appellants argue that DiMaio does not use the endoscope to guide the
robot along a path to a location. Appeal Br. 16. Appellant also argue that
DiMaio does not disclose using the robot to guide the ultrasonic probe to a
location which is defined in accordance with a position and orientation of
the robot. Id. at 17. Appellants contend that DiMaio calls for the user and
not the robotic system to control the movement of the robotic arms. Id. at
18. Appellants also argue that DiMaio does not disclose moving the
ultrasonic probe to the same position where the visual system was located.
Id.
Principles of Law
[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie
case of unpatentability. If that burden is met, the burden of
coming forward with evidence or argument shifts to the
applicant.
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
"Anticipation requires that all of the claim elements and their
limitations are shown in a single prior art reference." In re Skvorecz, 580
F.3d 1262, 1266 (Fed. Cir. 2009).
"[N]ot unlike a determination of infringement, a determination of
anticipation, as well as obviousness, involves two steps. First is construing
the claim, []followed by, in the case of anticipation or obviousness, a
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comparison of the construed claim to the prior art." Key Pharms. v. Hereon
Labs. Corp., 161 F.3d 709, 714, 48 USPQ2d 1911, 1915 (Fed. Cir. 1998).
"[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the [S]pecification." In re Hyatt,
211 F.3d 1367, 1372 (Fed. Cir. 2000).
Analysis
We adopt the Examiner's findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Final Action and
Answer regarding this rejection. We find the Examiner has established that
the claims are anticipated by DiMaio. Appellants have not produced
evidence showing, or persuasively argued, that the Examiner's
determinations on anticipation are incorrect. Only those arguments made by
Appellants in the Briefs have been considered in this Decision. Arguments
not presented in the Briefs are waived. See 37 C.F.R. § 4I.37(c)(l)(iv)
(2015). We address Appellants' arguments below.
Appellants argue that the endoscope disclosed in DiMaio is not used
to guide the robot arm along a path to a location such as a surgical site.
Appeal Br. 16. Appellants point to DiMaio where is says that preferably, the
endoscope is inserted through a tool guide such as a cannula. Id.; DiMaio
We have considered Appellants' argument and are unpersuaded. We
interpret DiMaio as teaching that the endoscope plays a role in guiding the
robot. As taught by the instant Specification and recited in claim 1, the
robot is configured to pass through a port, or entry point in the patient.
Spec. 8 (see claim 1 above). The port disclosed in the Specification is akin
to the guide tool recited in DiMaio in that it provides a passage through
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which the endoscope and probe pass into the body. Spec. 8; DiMaio ,r 46.
As taught by DiMaio, when the endoscope exits the guide tool, it transmits
images of the region at the end of the tool to the surgeon. See DiMaio ,r 48.
As the Examiner points out, those images are capable of being used by the
surgeon to position the endoscope, thereby being employed to guide the
robot. Ans. 11.
Appellants next argue that DiMaio does not teach guiding the
ultrasonic probe to the same location as the robot. Appeal Br. 17. Appellant
contend that the term "the location" as used in the claims refers to the
precise location defined by the position and orientation of the robot that the
robot as initially guided to. Id.
Again we are not persuaded by Appellants' arguments. To begin, we
note that the claim states "the location being defined in accordance with a
position and orientation of the robot." Appeal Br. 27 (Claims Appx.). Thus
the claim does not call for the location to be a particular location of the
robot. Rather, it is defined by any position and orientation of the robot.
Moreover, we do not interpret the term "the location" to mean the actual
location of the robot. "The location" is simply any position determined using
the position and orientation of the robot. Thus, we agree with the Examiner
that the term can refer to any location in the patient ( so long as it is
determined using the position and orientation of the robot). See Ans. 12.
Under this interpretation, we agree with the Examiner that DiMaio discloses
a probe that is guided along a path to a location defined in accordance with a
position and orientation of the robot. Id.
Appellants contend that in the system of DiMaio, the robot arms are
controlled by the user and not the robot subsystem. Appeal Br. 18.
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Appellants contend that this is not the same as having the robot configured
to guide the ultrasonic probe to a specified location. Id.
Appellants' argument is unpersuasive. As drafted the claims call for
the robot to guide the ultrasonic probe. Appeal Br. 27 (Claims Appx.). This
does not preclude the robot from receiving instructions from an operator or
from another source. As the Examiner points out, the claim uses the term
"robot" which can include a manned robot. Ans. 13.
Claims 9, and 11-13
Claim 9 includes the limitation that the device includes "a passive arm
coupled to a visual component and employed in separately guiding the visual
component to the location, the location being defined in accordance with a
position and orientation of the robot." Appeal Br. 19. Appellants contend
that DiMaio does not disclose this limitation. Appeal Br. 20. Appellants
argue that the arms of DiMaio comprise active joints are therefore not
passive. Id.
We are not persuaded by Appellants' argument. We have reviewed
the Specification and do not find any evidence that Appellants intended the
term "passive arm" to have a meaning other than its plain and ordinary
meaning. The plain and ordinary meaning of "passive," as reflected in the
definition provided at dictionary.com is "not participating readily or
actively; inactive." See, https://www.dictionary.com/browse/passive?s=t
(accessed January 23, 2019). Using this definition, we interpret the claims
to call for the arm to be inactive. The system of DiMaio meets this
limitation. DiMaio teaches that there are times when one or more arms are
not being used and are inactive. DiMaio ,r 4 7. Thus while the arms may
have active joints, there are times when the arms are passive.
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Claims 14, 17, 21, 22, 14, and 15
Appellants have argued these claims separately, but the arguments
merely refer to the arguments discussed above. Appeal Br. 20-22. For the
reasons stated above, we find the arguments unpersuasive.
Conclusion of Law
We conclude that a preponderance of the evidence supports the
Examiner's conclusion that the subject matter of claims 1, 9, 11-13, 14, 17,
21, 22, 24, and 25 are anticipated by Goldfarb.
Claims 4, 8, and 14 have not been argued separately and therefore fall
with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
OBVIOUSNESS
Rejection Based on DiMaio Alone
The issue with this rejection is whether a preponderance of the
evidence supports the Examiner's conclusion that the subject matter of
claims 2-3, 10, 15, 16, and 23 would have been obvious over DiMaio.
The claims at issue in this rejection add the limitation that "the visual
component includes an endoscope and the robot deploys the endoscope first
and then deploys the ultrasonic probe such that visual images and ultrasonic
images are taken at different times but at the same location." Appeal Br. 27
(Claims Appx.).
The Examiner finds that while DiMaio teaches that the visual
component and the ultrasonic probe can be deployed simultaneously,
DiMaio also teaches that the tools can be exchanged if there are space
constraints. Ans. 7. The Examiner concludes
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Id.
It would be obvious to a person of ordinary skill in the art to
deploy the endoscope and ultrasound probes one after another.
One would be motivated to do so as the camera is intended to
gather general information on the surface about the
environment, and the ultrasound probe is used to gather more
specific information about the tissue.
Appellants argue that DiMaio only teaches simultaneous deployment
of the endoscope and the ultrasonic probe. Appeal Br. 24. Appellants
contend that there is no teaching or suggestion in DiMaio which would lead
one skilled in the art to sequentially deploy the endoscope and ultrasonic
probe. Id.
We have considered the parties' arguments and find that Appellants
have the better position. While DiMaio teaches that various tools can be
inserted at different times, the Examiner has not pointed to any teaching in
DiMaio which would lead one skilled in the art to first insert the endoscope
into the patient and then insert the ultrasonic probe. The portion of DiMaio
cited by the Examiner merely teaches that the number of tools deployed at
any given time will depend on the nature of the procedure and space
constraints. DiMaio ,r 4 7. We find nothing in this passage or the other
portions of DiMaio cited by the Examiner that would lead one skilled in the
art to first deploy an endoscope followed by an ultrasonic probe.
We conclude that a preponderance of the evidence does not support
the Examiner's conclusion that the subject matter of claims 2-3, 10, 15, 16,
and 23 would have been obvious over DiMaio
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Rejection based on DiMaio Combined with Kuniyasu
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner's conclusion that the subject matter of
claims 5-7 and 18-20 would have been obvious over DiMaio combined with
Kuniyasu.
Claim 5 is representative of the claims at issue in this rejection. Claim
5, which indirectly depends from claim 1, recites the additional limitation
that the system includes a camera mounted on the ultrasonic probe such that
visual and ultrasonic images are acquired concurrently. Appeal Br. 27-28.
In addition to the findings discussed above, the Examiner finds that
Kuniyasu teaches a camera mounted on an ultrasonic probe such that visual
images and ultrasonic images are acquired simultaneously. Ans. 8. The
Examiner concludes
it would have been obvious to a person having ordinary skill at
the art at the time the invention was made to apply the
mounting of Kuniyasu to the system of DeMaio, as to provide a
combination of the camera and ultrasound probe. The
motivation for doing so is that the "combination of the
ultrasonic image inside the biological tissue by the ultrasonic
probe and an optical image of the biological tissue by the CCD
camera enables accurate diagnosis as to existence of a disease
and progress of the disease[.]"
Ans. 8 ( citing Kuniyasu ,r 2).
Appellants contend that Kuniyasu does not teach the use of a robot to
guide the ultrasonic probe. Appeal Br. 25. Additionally Appellants argue
that Kuniyasu does not remedy the deficiencies of DiMaio. Id.
We adopt the Examiner's findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Final Action and
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Answer regarding this rejection. We find the Examiner has established that
the subject matter of the claims would have been obvious to one of ordinary
skill in the art at the time the invention was made over DiMaio combined
with Kuniyasu. Appellants have not produced evidence showing, or
persuasively argued, that the Examiner's determinations on obviousness are
incorrect. Only those arguments made by Appellants in the Briefs have been
considered in this Decision. Arguments not presented in the Briefs are
waived. See 37 C.F.R. § 4I.37(c)(l)(iv) (2015). We address Appellants'
arguments below.
Appellants argue that Kuniyasu does not teach or suggest the use of a
robot to guide the ultrasonic probe. Appeal Br. 25. This argument is
unpersuasive.
The rejection is based on the combined teachings of DiMaio and
Kuniyasu. Ans. 8. While Kuniyasu may be silent about using a robot to
guide an ultrasonic probe, as discussed above, DiMaio teaches the use of a
robot to guide the probe. "Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references. [The reference] must be read, not
in isolation, but for what it fairly teaches in combination with the prior art as
a whole." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellants also argue that Kuniyasu does not cure the deficiencies of
DiMaio. Appeal Br. 25. As discussed above, we do not find the teachings
of DiMaio to be deficient. Therefore, we find this argument unpersuasive.
We conclude that a preponderance of the evidence supports the
Examiner's conclusion that the subject matter of claims 5-7 and 18-20
would have been obvious over DiMaio combined with Kuniyasu.
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SUMMARY
We reverse the rejection of claims 1, 9, 14, and 22 under 35 U.S.C.
§ 101.
We affirm the rejection of claims 1, 4, 8, 9, 11-14, 17, 21, 22, 24, and
25 under 35 U.S.C. § 120(b) as anticipated by DiMaio.
We reverse the rejection of claims 2, 3, 15, 16, and 23 under 35
U.S.C. § 103(a) as unpatentable over DiMaio.
We affirm the rejection of claims 5-7 and 18-20 under 35 U.S.C.
§ 103(a) as unpatentable over DiMaio combined with Kuniyasu.
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-IN-PART
19