INTUITIVE SURGICAL OPERATIONS, INC.

Patent Trials and Appeals Board

Feb 24, 2020

14070184 - (D) (P.T.A.B. Feb. 24, 2020)

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.
14/070,184 11/01/2013 Robert E. HOLOP ISRG04180/US 6075
96240 7590 02/24/2020
Jones Robb, PLLC (w/ Intuitive Surgical)
1420 Spring Hill Road
Suite 325
McLean, VA 22102
EXAMINER
OUYANG, BO
ART UNIT PAPER NUMBER
3794
NOTIFICATION DATE DELIVERY MODE
02/24/2020 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):
docketing@jonesrobb.com
patent.group@intusurg.com
susanne.jones@jonesrobb.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT E. HOLOP and THOMAS G. COOPER

Appeal 2019-004788
Application 14/070,184
Technology Center 3700
____________

Before JENNIFER D. BAHR, MICHAEL L. HOELTER, and
JILL D. HILL, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 10–22, 24, and 25, which constitute all
the claims pending in this application. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Intuitive
Surgical Operations, Inc.” Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to surgical instruments for
robotic (teleoperated) surgical systems,” and more particularly, “methods for
controlling energy delivery to surgical instruments.” Spec. ¶ 2. Apparatus
claim 10 and system claim 16 are independent. Claim 10 is illustrative of
the claims on appeal, and is reproduced below.
10. A surgical instrument for a teleoperated surgical system,
the surgical instrument comprising:
a housing that couples the surgical instrument in an
installed position at a patient side cart of a teleoperated surgical
system, the housing comprising a connector feature that
reversibly engages an electrosurgical energy transmission
conduit that transmits electrical energy from an electrosurgical
generator to the surgical instrument; and
a mechanism that is transitionable between a first state, in
which the connector feature and the electrosurgical energy
transmission conduit are disengaged, and a second state, in which
the connector feature and the electrosurgical energy transmission
conduit are engaged;
wherein in the installed position of the surgical instrument
at the patient side cart, a transition between the first state and the
second state of the mechanism is detectable by a sensor.

EVIDENCE
Name Reference Date
Besharim et al.
(“Besharim”)
US 2002/0173799 A1 Nov. 21, 2002
Loh et al. (“Loh”) US 2008/0147089 A1 June 19, 2008
Swarup et al. (“Swarup”) US 2009/0088774 A1 Apr. 2, 2009
Anderson et al.
(“Anderson”)
US 2010/0191088 A1 July 29, 2010
Krapohl et al. (“Krapohl”) US 2013/0053840 A1 Feb. 28, 2013
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McPherson et al.
(“McPherson”)
US 8,657,808 B2 Feb. 25, 2014
REJECTIONS
Claims 10–16 are rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Swarup, Krapohl, and Loh.
Claims 17, 18, 24, and 25 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Swarup, Krapohl, Loh, and McPherson.
Claim 19 is rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Swarup, Krapohl, McPherson, Loh, and Besharim.
Claims 20–22 are rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Swarup, Krapohl, Loh, McPherson, Besharim, and
Anderson.
ANALYSIS
The rejection of claims 10–16
as unpatentable over Swarup, Krapohl, and Loh
Appellant argues independent claims 10 and 16 together. See Appeal
Br. 15–26. Appellant also presents separate arguments for each of
dependent claims 11–13. See Appeal Br. 26–29. Accordingly, we select
claims 10–13 for individual review, with the remaining claims (i.e., claims
14–16), standing or falling with claim 10. See 37 C.F.R. § 41.37(c)(1)(iv).
Claim 10
Claim 10 is directed to a surgical instrument comprising a housing
that includes “a connector feature that reversibly engages” an energy
conduit. More specifically, claim 10 recites that this surgical instrument
comprises: (a) “a mechanism that is transitionable” between a first state
(when the connector feature and the energy conduit are disengaged) and a
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second state (when the connector feature and the energy conduit are
engaged), and (b) the transition “of the mechanism is detectable by a
sensor.”
The Examiner primarily relies on Swarup for disclosing reversible
energy connector 474 at an instrument “to permit connection to an
electrosurgical generator,” and the ability to detect instrument type and
associated control information. Final Act. 3 (referencing Swarup ¶¶ 88, 132,
see also Swarup Figs. 4A–D). The Examiner relies on Krapohl for teaching
“a mechanism that is transitionable” (and which is “in the form of a
magnet”), and also that this transition by Krapohl’s magnet “is detectable by
a sensor (Hall Effect sensors . . .).” Final Act. 3, 4 (referencing Krapohl
¶ 23. The Examiner, however, recognizes that Krapohl’s disclosed magnetic
mechanism, and its related sensing, is associated with Krapohl’s “generator
200” rather than a surgical instrument. Addressing this, the Examiner relies
on Loh for teaching a “Hall effect sensor in the instrument of the device.”2
Final Act. 4 (referencing Loh ¶ 69, Fig. 13); see also Ans. 3 (“Examiner is
using the positioning of Loh”).
The Examiner finds that it would have been obvious “to have the hall
sensor of Krapohl at [Swarup’s] instrument 101 rather than [at] the generator
of Krapohl, as taught by Loh.” 3 Final Act. 4. “[I]t is the Examiner’s

2 Appellant’s Specification correlates a hall sensor to “a proximity-based
sensing device” that may be placed in proximity to a magnet. Spec. ¶ 72.
3 The Examiner also reasons that a skilled person “would appreciate that
cables are capable of being connected and disconnected from both
generators and devices” (i.e., a “surgical instrument”). Final Act. 4. “This
would be accomplished via the cable 106 of Swarup being connected or
disconnected to instrument 101 via the connector 474.” Final Act. 4.
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position that moving [the] sensor would still allow for transfer of
information from device to device.” Ans. 4.
Appellant disagrees with the Examiner’s assessment and identifies
where Swarup teaches an ability to provide tool “compatibility as well as
control information” and also where Krapohl teaches providing “operating
parameters of particular instruments allowing the generator 200 to preset
energy delivery settings.” Appeal Br. 20–21 (referencing Swarup ¶ 87,
Krapohl ¶ 23). Appellant contends, “the data provided to Swarup’s
computer 151 regarding compatibility and tool-type appears similar to the
functionality disclosed by Krapohl.” Appeal Br. 21. Accordingly,
Appellant argues that a skilled person “would not have been led to modify
Swarup to include the detection devices and identifying information
disclosed in paragraph 0023 of Krapohl because Swarup already discloses a
system for verifying the type of surgical tool that is connected to the surgical
system.” Appeal Br. 21.
However compelling Appellant’s argument may be, it is not
persuasive. This is because paragraph 87 of Swarup discloses one method
by which data may be conveyed, i.e., “integrated circuits 426 may signal to
the computer . . . [instrument] data regarding . . . compatibility as well as
control information.” Alternatively, Krapohl employs a plug-type interface
for such information exchange explaining that “information encoded on the
plugs . . . may be encoded in bar codes, electrical components (e.g., resistors,
capacitors, etc.) RFID chips, magnets, non-transitory storage” and the like,
while “[c]orresponding detection devices may include . . . Hall Effect
sensors.” Krapohl ¶ 23. Thus, Krapohl discloses a different manner and
options by which instrument data can be conveyed (such as via a magnetic
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plug and Hall Effect sensors). In view of this, we are reminded of
instructions from the Supreme Court that “when a patent claims a structure
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007). Appellant does not explain how the employment of another
technique by which data may be conveyed, such as via Krapohl’s “plugs
[which] have a mechanism in the form of a magnet” (Final Act. 3), rather
than Swarup’s “integrated circuits,” is beyond the ability of one skilled in
the art. To be clear, the Examiner finds that it would have been obvious “to
modify Swarup with the mechanism of Krapohl, in order to be able to ensure
a connector is attached to the” instrument. Final Act. 4. Accordingly,
Appellant’s contention above that a skilled person would not be motivated to
combine Swarup and Krapohl “because Swarup already discloses a [similar]
system” (Appeal Br. 21) is not persuasive.
Appellant also contends there is “[n]o motivation to further modify
Swarup and Krapohl with Loh.” Appeal Br. 22; see also Reply Br. 2. To be
clear, the Examiner’s stated motivation “to have the hall sensor of Krapohl
at the instrument [] rather than the generator” is that a skilled person “would
appreciate that the surgical instrument (101a) may be installed at the patient
side cart while either being connected or disconnected from the generator.”
Final Act. 4. Appellant contends that Loh’s identified sensor (i.e., 416b,
Figure 13) “does not sense any position of any connector,” nor does Loh’s
sensor “engage[] an electrosurgical energy conduit.” Appeal Br. 22. The
Examiner, however, did not rely on Loh for sensing the position of a
connector, or for engaging an energy conduit, because the Examiner relied
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on other references for these teachings. See Final Act. 3, 4. Instead, the
Examiner relied on Loh for the disclosure of a “sensor in the instrument of
the device” (Final Act. 4), i.e., for the location of the sensor, not what the
sensor might sense. See Ans. 3 (“Examiner is using the positioning of
Loh.”).
Appellant continues stating that such placement “would not have
provided any motivation” for any relocation of Krapohl’s sensors “to
Swarup’s surgical instrument because Loh’s configuration is intended to
facilitate transmission of data across a sterile barrier,” which differs from
that of either Krapohl or Swarup. Appeal Br. 22–23; see also Reply Br. 2, 3.
This difference in purpose (“across a sterile barrier”), however, does
not diminish Loh’s disclosure of a sensor positioned at the instrument. See,
e.g., Loh ¶ 69, Fig. 13. This is because we have been instructed that “[t]he
use of patents as references is not limited to what the patentees [here, Loh]
describe as their own inventions or to the problems with which they are
concerned. They are part of the literature of the art, relevant for all they
contain.” In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (quoting In re
Lemelson, 397 F.2d 1006, 1009 (CCPA 1968)). In a similar vein, we have
been instructed that it is not necessary for the prior art (Loh) to serve the
same purpose as that disclosed in Appellant’s Specification in order to
support the conclusion that the claimed subject matter would have been
obvious. See In re Linter, 458 F.2d 1013, 1016 (CCPA 1972); see also KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (“In determining whether
the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls” in an
obviousness analysis.). See also In re Kahn, 441 F.3d 977, 990 (Fed. Cir.
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2006) (Although a prior art reference, here Loh, may indicate that a
particular combination is undesirable for its own purposes, the reference can
nevertheless teach that combination if it remains suitable for the claimed
invention.).
Hence, in view of the above, the fact that Loh may be directed to
“facilitate transmission of data across a sterile barrier” as expressed by
Appellant (Appeal Br. 23; see also Reply Br. 3), such purpose is not fatal to
Loh’s other teachings regarding the placement of a sensor at the instrument.
Appellant’s contention is not persuasive of Examiner error.
Appellant additionally argues that relocation of Krapohl’s sensors
“would impermissibly destroy the principle of operation of Krapohl and
render it unsuitable for its intended purpose.”4 Appeal Br. 23; see also
Reply Br. 4. Appellant states, “the Office has not substantiated the claim
that such ‘connections’ would be able to detect a connection and transfer
information regarding a connection.” Reply Br. 4. Appellant’s contention is
not persuasive because Krapohl discloses the conveyance of instrument data
to a generator. See Krapohl ¶ 23; see also Swarup ¶¶ 87, 88 for another
means of conveying instrument data. Appellant does not explain how
Krapohl’s conveyance via a plug at a generator interface is not equally
possible via a plug at an instrument interface, the only difference being the
imparted data now passing through the conduit between the instrument and
the generator. The Examiner seems to have foreseen such an objection
stating, “a signal can still be delivered to result in detection of a transition

4 Appellant further contends, “the purpose of Krapohl’s detection devices is
negated.” Appeal Br. 24.
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between a first and second state of connection.” Final Act. 4; see also Ans.
4. In view of the foregoing, we are not persuaded of Examiner error.
Appellant also addresses an Examiner’s response in an earlier Office
Action dated February 26, 2018. See Appeal Br. 23. As per Appellant, “the
Office states ‘the location of the sensors of Krapohl would allow for
detection and transmission of data along the cable to either the instrument or
generator,” which is similar to the Examiner’s comments above. Appeal
Br. 23; see also Final Act. 4, Ans. 4. Addressing this earlier response,
Appellant reiterates comments also made above, stating, “the Office has not
provided any reason that a person of ordinary skill in the art at the time of
the invention would have been motivated to provide such information to the
instrument, rather than the generator.’” Appeal Br. 23. This contention has
been addressed above and we do not repeat ourselves here on this topic.
Suffice it to say, Appellant’s contention is not persuasive of Examiner error.
Addressing this matter from a different perspective, Appellant
contends, “there is no apparent way that such signals could be transmitted to
Krapohl’s generator without providing some additional method or structure
for transmitting such information between the surgical instrument and
generator 200” of Krapohl. Appeal Br. 24. However, the Examiner has
explained that a skilled person “would appreciate that cables are capable of
being connected and disconnected from both generators and devices.”5
Final Act. 4. Thus, Appellant’s contention that “there is no apparent way
that such signals could be transmitted to Krapohl’s generator,” or that “the

5 The Examiner continues stating, “[t]his would be accomplished via the
cable 106 of Swarup being connected or disconnected to instrument 101 via
the connector 474.” Final Act. 4.
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components of the references would require extensive reconstruction and
redesign to function” (Appeal Br. 24), are not persuasive of Examiner error.
Appellant also contends that even if Swarup, Krapohl, and Loh were
combined, “such a combination still would not include the features recited
in the independent claims.” Appeal Br. 25. More specifically, Appellant
contends, “Krapohl is silent regarding any information or indication
regarding the actual connected or disconnected state of the” instrument.
Appeal Br. 25; see also Reply Br. 5 (“[T]he presence or absence of
identifying information” does not “necessarily indicate[] the presence or
absence of an instrument connected to Krapohl’s generator.”). Appellant’s
contentions are not persuasive because Appellant does not make clear how
instrument data is conveyed in Krapohl but for the plug being connected (or,
conversely, how instrument data manages to still be conveyed when the plug
is disconnected). See Krapohl ¶ 23. Thus, one skilled in the art would
understand Krapohl in an opposite manner, i.e., as not being silent
“regarding the actual connected or disconnected state” of the plug, and the
resultant conveyance (or non-conveyance) of data thereby.
Accordingly, and based on the record presented, we sustain the
Examiner’s rejection of claims 10 and 14–16.
Claim 11
Claim 11 depends from claim 10 and further recites “the mechanism
is positioned to be detectable in both” states (i.e., instrument energy
disengaged and engaged states). The Examiner relies on Krapohl for such
teaching. See Final Act. 5; Ans. 4. Appellant contends that when Krapohl’s
instruments are disconnected, they “are not ‘detectable’ by Krapohl’s
generator” in both states. Appeal Br. 26; see also Reply Br. 5.
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There is merit to Appellant’s argument. Although it may be possible
that when Krapohl’s plug is disconnected, it may still be sensed, this
depends on the proximity between the two. In other words, a disconnected
plug may still be sensed depending on the strength of Krapohl’s magnet
and/or the sensitivity of Krapohl’s sensors. Krapohl itself, however, is silent
as to a disconnected plug being sensed “in both” states. Krapohl is also
silent as to the plug “positioned to be detectable” in both states.
As is well-known, the Patent Office “may not, because it may doubt
that the invention is patentable, resort to speculation, unfounded assumptions
or hindsight reconstruction to supply deficiencies in its factual basis” and
further, “we may not resolve doubts in favor of the Patent Office
determination when there are deficiencies in the record as to the necessary
factual bases supporting its legal conclusion of obviousness.” In re Warner,
379 F.2d 1011, 1017 (CCPA 1967). Krapohl’s silence as to the plug (i.e.,
“mechanism”) being “positioned to be detectable in both” the engaged and
disengaged states renders the above instructions from our reviewing court
applicable in the matter before us. Claim 11. Thus, lacking factual basis for
this limitation, we do not sustain the Examiner’s rejection of dependent
claim 11 (from which no additional claims depend).
Claim 12
Claim 12 also depends from claim 10 and further recites, “the
mechanism comprises a magnet” configured for transition between states.
The Examiner relies on Krapohl for teaching this additional limitation. See
Final Act. 5. Appellant, however, contends that the references “would not
include a surgical instrument that comprises a mechanism with ‘a magnet’”
as claimed. Appeal Br. 27. To be clear, Appellant contends, “Krapohl’s
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plug would not be a part of the surgical instrument itself” and that instead,
“it would be a plug configured to be plugged into a receptacle on the
surgical instrument.”6 Appeal Br. 27–28. The Examiner explains, however,
that a skilled person “would appreciate that a cable plug could be defined as
part of an instrument.” Ans. 4. Swarup buttresses the Examiner’s
understanding by illustrating and describing a removable plug (474)
connected at one end to instrument 400 (see Figs. 4A–D) and an associated
cord (“conduit”) that is configured “to permit connection to an
electrosurgical generator” (Paragraph 132). Appellant does not explain how
an instrument’s plug, even if removable, is not to be considered part of the
instrument assembly.
The Examiner has the better argument because Appellant fails to
provide persuasive evidence that an instrument’s power cord, even if
separable, is not a component normally understood to be a part of the
instrument itself. Thus, Appellant’s contention that the references fail to
disclose “a surgical instrument that comprises a mechanism with ‘a
magnet’” (here a plug) is not persuasive. We sustain the Examiner’s
rejection of claim 12 as being obvious in view of Swarup, Krapohl, and Loh.
Claim 13
Claim 13 depends from claim 12 and further recites, “the magnet is
disposed on an arm.” The Examiner finds that “Krapohl teaches the magnet

6 Appellant also contends, “removal of the plug to achieve the Office’s
alleged ‘second’ position would, by the Office’s own definition, result in the
plug no longer being a part of the instrument.” Appeal Br. 29.
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disposed on an arm.” Final Act. 6. Appellant disputes that Krapohl’s plug
can “be equated with the ‘arm’ recited in claim 13.” Appeal Br. 29.
Appellant has the better position. The Examiner provides no
indication where this “arm” might be disclosed in the teachings of Krapohl,
and it is not otherwise self-evident from the record. Thus, in view of
instructions from Warner above, we do not sustain the Examiner’s rejection
of claim 13 (from which no claims depend).
In summation, and based on the record presented, we sustain the
Examiner’s rejection of claims 10, 12, and 14–16 in view of Swarup,
Krapohl, and Loh, and we do not sustain the rejection of claims 11 and 13 in
view of these same references.

The rejection of claims 17, 18, 24, and 25
as unpatentable over Swarup, Krapohl, Loh, and McPherson
Appellant only presents arguments with respect to claim 17 when
responding to this rejection. See Appeal Br. 30–31. We, thus, select claim
17 for review, with the remaining claims standing or falling therewith.
Claim 17 depends from independent claim 16 and further recites a
magnet that is configured to move between a first and a second “position”
associated, respectively, with energy “disconnection” and “connection”
states. The Examiner additionally relies on McPherson for teaching “switch
22” that moves between disconnected and connected states. Final Act. 9;
see also Ans. 4. Appellant does not dispute McPherson’s
connectable/disconnectable switch, but contends that the Examiner
“provides no reasoning to explain why or how McPherson’s magnet 26 and
sensing element 24 would be combined” with the other references. Appeal
Br. 30; see also Reply Br. 7. The Examiner, however, states that it would
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have been obvious to modify the references “with the magnet of McPherson,
in order to be able to detect the magnet to deliver energy.” Final Act. 9; see
also Ans. 4. Appellant contends, however, that a skilled person “at best
would have been led to include McPherson’s magnet 26 and sensing element
24 to control operation of the instrument, as disclosed by McPherson.”
Appeal Br. 31; see also Reply Br. 7.
Appellant’s understanding of McPherson’s disclosure of instrument
control is consistent with the Examiner’s findings regarding the combination
with McPherson, which addresses energy delivery, i.e., a means of control.
Appellant, thereafter addresses the “disconnection state” and “connection
state” recited in claim 17 stating “the Office has failed to establish a prima
facie case of obviousness.” Appeal Br. 30; see also Reply Br. 7.
McPherson is directed to a handpiece that “includes a sensing
element, and a member [containing a magnet] adapted to move relative to
the sensing element to control the operation of a motor in the handpiece.”
McPherson Abstract. Thus, Appellant’s contention regarding a failure by
the Examiner to establish a prima facie case and/or the disclosure of a
“disconnection state” and a “connection state” is not persuasive in view of
such teachings. We sustain the Examiner’s rejection of claims 17, 18, 24,
and 25.

The rejection of (a) claim 19 as unpatentable over Swarup, Krapohl,
McPherson, Loh, and Besharim, and (b) claims 20–22 as unpatentable over
Swarup, Krapohl, Loh, McPherson, Besharim, and Anderson
Appellant’s contentions regarding these rejections is that “[n]one of
McPherson, Besharim, and Anderson . . . provide the missing disclosure of
Swarup, Krapohl, and Loh.” Appeal Br. 31–32. Appellant further contends
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that “[c]laims 19–22 are patentably distinguishable . . . at least by virtue of
their depending from independent claim 16.” Appeal Br. 32.
Neither of these contentions are persuasive of Examiner error. We
sustain the Examiner’s rejection of claims 19–22 in view of the references
cited.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference Affirmed Reversed
10–16 103(a) Swarup, Krapohl,
Loh
10, 12, 14–
16
11, 13
17, 18, 24,
25
103(a) Swarup, Krapohl,
Loh, McPherson
17, 18, 24,
25

19 103(a) Swarup, Krapohl,
Loh, McPherson,
Besharim
19
20–22 103(a) Swarup, Krapohl,
Loh, McPherson,
Besharim, Anderson
20–22
Overall
Outcome
10, 12, 14–
22, 24, 25
11, 13
No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED IN PART