INTUITIVE SURGICAL OPERATIONS, INC.Download PDFPatent Trials and Appeals BoardMay 3, 20212020003312 (P.T.A.B. May. 3, 2021) Copy Citation 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. Appeal 2020-003312 Application 15/300,258 2 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 Appeal 2020-003312 Application 15/300,258 3 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 Appeal 2020-003312 Application 15/300,258 4 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 Appeal 2020-003312 Application 15/300,258 5 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 Appeal 2020-003312 Application 15/300,258 6 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 Appeal 2020-003312 Application 15/300,258 7 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 Appeal 2020-003312 Application 15/300,258 8 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. Appeal 2020-003312 Application 15/300,258 9 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. Appeal 2020-003312 Application 15/300,258 10 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 Appeal 2020-003312 Application 15/300,258 11 “(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 Appeal 2020-003312 Application 15/300,258 12 320. 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. Appeal 2020-003312 Application 15/300,258 13 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 Copy with citationCopy as parenthetical citation