INTUITIVE SURGICAL OPERATIONS, INC.

Patent Trials and Appeals Board

May 3, 2021

2020003312 (P.T.A.B. May. 3, 2021)

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.
15/300,258 09/28/2016 Dorin Panescu P05472-WO2-US 1062
160810 7590 05/03/2021
SCHWEGMAN LUNDBERG & WOESSNER, P.A./ ISRG
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
GHIMIRE, SHANKAR RAJ
ART UNIT PAPER NUMBER
3795
NOTIFICATION DATE DELIVERY MODE
05/03/2021 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):
SLW@blackhillsip.com
patent.group@intusurg.com
uspto@slwip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DORIN PANESCU, DANIEL H JONES, and
CHRISTOPHER ALLENBY
Appeal 2020-003312
Application 15/300,258
Technology Center 3700
Before JUSTIN BUSCH, AMEE A. SHAH, and ROBERT J. SILVERMAN,
Administrative Patent Judges.
BUSCH, 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 13–18, 20, 21, 27–31, and 33. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the term Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Intuitive Surgical
Operations, Inc. Appeal Br. 1.
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Application 15/300,258
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CLAIMED SUBJECT MATTER
Appellant’s invention generally relates “to surgical endoscopy
systems” that determine “three-dimensional coordinates of physical
structures displayed in surgical images.” Spec. 1:14–16. More specifically,
the claimed subject matter relates to systems and methods that obtain images
from a three-dimensional (3D) endoscope, identify instruments and
anatomical structures within the endoscope’s field of view, predict a path of
an instrument based on a previous path the instrument followed to determine
a “contact surface location at a surface of the [quantitative ]3D model of the
anatomical structure,” and display a 3D image of the field of view including
a marker on the anatomical structure corresponding to the determined
contact surface location. Spec. 5:4–12, 47:11–54:24, Figs. 32–36. Claim
13, reproduced below, is illustrative of the claimed subject matter:
13. A system for maneuvering a surgical instrument, comprising:
a display screen;
a quantitative three-dimensional (Q3D) endoscope having
a field of view and disposed to image a scene that includes at
least one instrument and anatomical structure within the field of
view;
at least one processor configured to,
determine a Q3D model of the scene imaged by the Q3D
endoscope;
identify a Q3D model of the least one instrument within
the Q3D model of the imaged scene;
identify a Q3D model of the anatomical structure within
the Q3D model of the imaged scene;
determine a predicted path of the identified Q3D model of
the at least one instrument based at least in part upon at least one
of extrapolation from a previous path followed by the identified
Q3D model of the at least one instrument and a virtual extension
of the Q3D model of the at least one identified instrument;
determine a contact surface location at a surface of the
Q3D model of the anatomical structure at an intersection
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between the predicted path and a surface of the identified Q3D
model of the anatomical structure;
causing display on the display screen of a three-
dimensional image of the identified anatomical structure that
includes a visual marker at a location corresponding to the
determined contact surface location at the surface of the Q3D
model.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Zhao US 2009/0088897 A1 Apr. 2, 2009
Popovic US 2012/0063644 A1 Mar. 15, 2012
Nathaniel US 2013/0211244 A1 Aug. 15, 2013
Pfeffer WO 2013/027201 A2 Feb. 28, 2013

REJECTIONS
Claims 13–15, 18, and 27–29 stand rejected under 35 U.S.C. § 103 in
view of Pfeffer. Final Act. 3–5.
Claims 16 and 30 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Pfeffer and Nathaniel. Final Act. 6–7.
Claims 17, 21, 31, and 33, stand rejected under 35 U.S.C. § 103 as
being unpatentable over Pfeffer and Popovic. Final Act. 7–8.
Claim 20 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Pfeffer and Zhao. Final Act. 8–9.

ANALYSIS
The Examiner finds Pfeffer teaches or suggests every limitation
recited in independent claims 13 and 27 as well as every limitation recited in
dependent claims 14, 15, 18, 28, and 29. Of particular relevance to this
Appeal, the Examiner finds Pfeffer teaches or suggests “determin[ing] a
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contact surface location at a surface of the Q3D model of the anatomical
structure at an intersection between the predicted path and a surface of the
identified Q3D model of the anatomical structure,” as recited in independent
claims 13 and 27 because Pfeffer discloses that “[t]he system is capable of
determining the distance between the surgical tool and anatomical
[structure].” Final Act. 4 (citing Pfeffer 54). The Examiner finds it is,
therefore, “expected that in determining the distance, an intersection point is
used to determine the distance” and “that the intersection point would have a
surface in its vicinity.”
The Examiner further finds that although “Pfeffer does not
specifically disclose that a visual marker is included at a location
corresponding to the determined contact surface location at the surface of the
Q3D model,” it follows from Pfeffer’s teachings “that one of ordinary skill
in the art would also be able to mark at a contact point to further specify the
distance between the organ and instrument, and the location.” Final Act. 4;
see also Ans. 13–14 (“It would have been obvious to one of ordinary skill in
the art to mark a location on an edge of an organ (Edge being formed using
volume of 3D spatial locations; Page 89) to specify the distance/location in
the organ where a collision or intersection is likely to occur.”). The
Examiner also finds Pfeffer’s calculated distance between the tool and organ
is the shortest distance between the tool and organ and that the distance is
“in alignment with the movement of the tool.” Ans. 11 (emphasis omitted);
see also Ans. 11–12 (“distance (330) between the tool and the organ is
determined along the path shown by 330 in FIGS. 3a-4d where the tool
would collide/intersect with the organ,” emphasis omitted).
Among other arguments, Appellant asserts that Pfeffer fails to teach
or suggest determining “a contact surface location at a surface of the Q3D
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model of the anatomical structure at an intersection between the predicted
path and a surface of the identified Q3D model of the anatomical structure.”
Appeal Br. 15–20. In particular, Appellant argues the Examiner’s findings
that, because of Pfeffer’s capability to determine the distance between a
surgical tool and an anatomical structure, it is expected that “an intersection
point is used to determine the distance,” the intersection point having a
surface “in its vicinity” are unsupported by Pfeffer’s disclosures. Appeal
Br. 16–17 (quoting Final Act. 4). In particular, Appellant argues the
Examiner finds only that it is possible that Pfeffer may determine a contact
surface location where the predicted path intersects the anatomical structure.
Appeal Br. 17. Appellant contends the rejection is based on an implicit and
unsupported finding that Pfeffer inherently teaches the determining a contact
surface location step that Pfeffer does not otherwise explicitly disclose or
teach. Appeal Br. 17. Appellant argues Pfeffer does not necessarily
determine a contact surface location because Pfeffer merely needs to predict
a potential collision with the anatomical structure and, therefore, Pfeffer
does not need to determine a particular contact surface location. Appeal
Br. 17–18.
In particular, Appellant argues that Pfeffer’s various disclosures
merely teach determining the direction a tool is moving and, when the tool is
within a threshold distance of the anatomical structure and moving in a
direction towards the anatomical structure, directing the tool away from the
anatomical structure. Appeal Br. 17–20. Appellant argues these teachings,
however, do not require actually determining a contact surface location
because Pfeffer’s determines the distance between the tool and the
anatomical structure and the tool’s movement path independently of each
other. Appeal Br. 18–20. More specifically, Appellant argues that Pfeffer’s
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distance between the tool and anatomical structure is not determined along
the tool’s determined path and Pfeffer’s decision to redirect the tool is based
on whether Pfeffer’s tool is moving generally towards the anatomical
structure, but not necessarily in a path along which the distance between the
tool and anatomical structure is measured. Appeal Br. 17–19. Thus,
Appellant argues Pfeffer’s disclosures do not teach or suggest determining a
particular point on the surface of the anatomical structure at which the tool’s
path would intersect. Appeal Br. 17–19.
We begin by evaluating the proper construction of the claim limitation
at issue—specifically, “determine a contact surface location at a surface of
the Q3D model of the anatomical structure at an intersection between the
predicted path and a surface of the identified Q3D model of the anatomical
structure.” See Appeal Br. 24. Claim construction is an important step in a
patentability determination. A legal conclusion that a claim is obvious
involves a two-step inquiry wherein first, the claims are properly construed,
and second, the properly construed claims are compared to the prior art. See
Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003); see also
In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004).
When construing claim terminology during prosecution before the
Office, claims are to be given their broadest reasonable interpretation
consistent with the Specification, reading claim language in light of the
Specification as it would be interpreted by one of ordinary skill in the art. In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). We
presume that claim terms have their ordinary and customary meaning. See
In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The
ordinary and customary meaning is the meaning that the term would have to
a person of ordinary skill in the art in question.”) (internal quotation marks
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omitted). Additionally, we are mindful that limitations are not to be read
into the claims from the Specification. In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993).
However, the broadest reasonable interpretation differs from the
broadest possible interpretation. In re Smith Int’l, Inc., 871 F.3d 1375, 1383
(Fed. Cir. 2017). The correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the specification is “an interpretation
that corresponds with what and how the inventor describes his invention in
the specification, i.e., an interpretation that is ‘consistent with the
specification.”’ Smith, 871 F.3d at 1382–83 (quoting In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997)).
Independent claims 13 and 27 explicitly recite that the determined
“contact surface location” is “at a surface of the . . . anatomical structure.”
Appeal Br. 24, 26 (emphasis added). The claim further recites that this
location is “at an intersection between the predicted path [of the instrument]
and a surface of the . . . anatomical structure.” Appeal Br. 24. Thus, the
claims require determining the particular “contact surface location” at which
the determined predicted path of the tool intersects with a surface of an
anatomical structure, such as an organ.
Appellant’s Specification provides additional context regarding this
limitation and its purpose. See generally Spec. 46:16–54:24, Figs. 32–36.
In particular, pages 46 through 54 of the Specification describes methods for
determining a surgical instrument’s “Projected Runway” and the uses and
benefits of such a predicted path or “trajectory runway.” Appeal
Br. 46:16–26; see generally Appeal Br. 46:16–54:24, Figs. 32–36. For
example, we reproduce below Figure 32, which depicts surgical instrument
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3206 at three different observed positions2 along an observed path or
trajectory 3216, predicted path or “runway” 3218 for surgical instrument
3206 extending from observed path 3216, anatomical object 3207, and
predicted contact location 3220 that is marked with an “X”:

Spec. Fig. 32 (depicting “a Q3D endoscope having an endoscope field of
view (FOVe) and a portion of a surgical instrument, observed at multiple

2 The Specification describes these three positions as 3206-p1, 3206-p2, and
3206-p3, but Figure 32 omits the position labels “-p1,” “-p2,” and “-p3.”
See Spec., Fig. 32 (three elements labeled with reference numeral 3206 even
though the three elements are also labeled collectively with reference
numeral 3206). Nevertheless, the accompanying written description and
subsequent figures clearly demonstrate the intended significance of
depicting the surgical tool in three different positions. See Spec. 47:21:48:1,
54:26–57:18, Figs. 37–39.
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different positions on an observed trajectory, and an anatomical structure,”
Spec. 8:27–30); see Spec. 47:21–49:4.
The Specification describes scenarios in which a surgeon may want to
guide a surgical instrument along a path but have difficulty aligning the
“instrument with an anatomical structure that is to be contacted using the
instrument.” Spec. 47:31–48:3. To aid a surgeon who may have difficulty
envisioning where the instrument will travel and contact the anatomical
structure, the system may present a display of the predicted path up to and
including the point at which the surgical instrument traveling along that
predicted path would make contact with the anatomical structure.
Spec. 48:8–49:2. In particular, “the geometrical intersection between the
predicted path 3218 and the surface of the Q3D model representing the
target anatomical structure 3207 defines the predicted contact location
3220.” Spec. 49:2–4.
Thus, consistent with the plan language of the claims, and in light of
the Specification, we construe the disputed limitation—“determine a contact
surface location at a surface of the Q3D model of the anatomical structure at
an intersection between the predicted path and a surface of the identified
Q3D model of the anatomical structure”—to require determining a particular
point on the surface of the model of the anatomical structure surface at
which the determined predicted path intersects with the anatomical structure.
In other words, Pfeffer’s system that uses a distance threshold and a tool
movement direction to determine that a collision is likely, without more, is
insufficient to teach or suggest the disputed limitation because the mere
likelihood of a collision does not teach or suggest determining a “contact
surface location at a surface of the Q3D model of the anatomical structure.”
See Pfeffer 83–85.
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Pfeffer teaches a “surgical controlling system” that aids a surgeon in
laparoscopic surgery. Pfeffer, Abstract. One of Pfeffer’s subsystems is a
“[t]racking system with collision avoidance” that can be used to prevent
collisions between two tools (e.g., surgical instruments) or a tool and an
organ (i.e., an anatomical structure). Pfeffer 83–85. To enable collision
avoidance, Pfeffer uses an endoscope to provide a real-time image of the
surgical environment, including the location of any surgical tools and
organs, and to track the movement of surgical tools. Pfeffer 48–51. The
system uses many rules to aid the surgeon, including “a collision prevention
rule.” Pfeffer 53–54. “[T]he collision prevention rule defines a minimum
distance below which two or more tools should not be brought together”
and, “[i]f the movement of one tool will cause it to come dangerously close
to another tool . . . the controller either alerts the user that the movement is a
RESTRICTED movement or does not permit the movement.” Pfeffer 54.
Similarly, the collision prevention may be applied to avoid a collision
between a tool and an anatomical structure, such as an organ. Pfeffer 57.
To implement these features, Pfeffer teaches various functions that
analyze the surgical environment, including, of particular relevance to
collision avoidance: a tool detection function, a movement detection
function, an organ detection function, a collision detection function, a
prediction function, and an operator input function. Pfeffer 64. “The output
given from the collision detection function . . . is that a surgical tool is
dangerously close to an organ in the surgical environment.” Pfeffer 65.
Pfeffer uses the current location of a tool and one or more prior locations to
calculate a tool movement vector. Pfeffer 84. When the tool location, organ
location, and tool movement vector are known, Pfeffer calculates the
probability of collision from the distance between the organ and the tool
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“(the smaller the distance, the closer the proximity and the higher the
probability of collision)” and from the tool movement vector. Pfeffer 84.
When the distance between the organ and the tool is small enough that
Pfeffer determines a collision is possible, Pfeffer uses the tool movement
vector to determine whether the distance will increase or decrease in the next
time step. Pfeffer 85. Figures 3c and 3d, reproduced below, depict how
Pfeffer uses the tool movement vector:

Pfeffer, Figs. 3c (depicting a tool within a threshold distance of an organ in a
situation where the tool is moving away from the organ), 3d (depicting a tool
within a threshold distance of an organ in a situation where the tool is
moving towards the organ); see Pfeffer 85 (“Fig. 3c illustrates the effect of a
movement 350 that would increase the distance between tool 310 and liver
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320. Since the movement 350 is away from liver 320, no collision is
possible.”); Pfeffer 85 (“In Fig. 3d, tool 310 is the same distance from liver
320 as in Fig. 3c. However, in Fig. 3d, the movement 350 of the tool 310 is
toward the liver 320, making a collision between tool 310 and liver 320
possible.”).
Thus, with respect to tool movement and a tool path, Pfeffer merely
determines whether the tool is moving towards or away from the organ.
Pfeffer is not concerned with determining a particular location on the surface
of an organ at which the tool will make contact if continuing along the
current path. Rather, Pfeffer merely teaches redirecting the tool away from
the organ or warning the surgeon that the tool may collide with the organ so
that the surgeon can avoid the potential collision. Accordingly, given
Pfeffer’s disclosures and the context in which Pfeffer applies those
disclosures, we do not find Pfeffer teaches or suggests determining a contact
surface location at which the tool’s predicted path would intersect the
surface of the organ.
For these reasons, on this record, we do not sustain the rejection of
independent claims 13 and 27 as obvious over Pfeffer. For the same
reasons, we also do not sustain the rejection of dependent claims 14, 15, 18,
28, and 29 as obvious over Pfeffer because each of these claims depend
from, and incorporate the limitations of, one of independent claims 13 and
27. Dependent claims 16, 17, 20, 21, 30, 31, and 33 also depend from, and
incorporate the limitations of, one of independent claims 13 and 27.
Because the Examiner does not find any of the additionally cited references
(i.e., Nathaniel, Popovic, and Zhao) teaches this limitation, we also do not
sustain the rejections of these claims.
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
13–15, 18,
27–29
103 Pfeffer 13–15, 18,
27–29
16, 30 103 Pfeffer, Nathaniel 16, 30
17, 21, 31, 33 103 Pfeffer, Popovic 17, 21, 31, 33
20 103 Pfeffer, Zhao 20
Overall
Outcome
13–18, 20, 21,
27–31, 33

REVERSED