IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Shelton, IV
`Patent of:
`
`8,479,969
`U.S. Pat. No.:
`July 9, 2013
`Issue Date:
`Appl. Serial No.: 13/369,609
`Filing Date:
`Feb. 9, 2012
`Title:
`DRIVE INTERFACE FOR OPERABLY COUPLING A
`MANIPULATABLE SURGICAL TOOL TO A ROBOT
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`
`
`Attorney Docket No.: 11030-0049IP5
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`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`DECLARATION OF DR. BRYAN KNODEL IN SUPPORT OF PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,479,969
`(ANDERSON AS PRIMARY REFERENCE)
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`1
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`IS 1004
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`
`Shelton, IV
`Patent of:
`
`8,479,969
`U.S. Pat. No.:
`July 9, 2013
`Issue Date:
`Appl. Serial No.: 13/369,609
`Filing Date:
`Feb. 9, 2012
`Title:
`DRIVE INTERFACE FOR OPERABLY COUPLING A
`MANIPULATABLE SURGICAL TOOL TO A ROBOT
`
`
`
`Attorney Docket No.: 11030-0049IP5
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`DECLARATION OF DR. BRYAN KNODEL IN SUPPORT OF PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,479,969
`(ANDERSON AS PRIMARY REFERENCE)
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`1
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`IS 1004
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`U.S. Patent No. 8,479,969
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`I.
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`TABLE OF CONTENTS
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`QUALIFICATIONS ........................................................................................ 2
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`II. MY UNDERSTANDING OF CLAIM CONSTRUCTION ........................... 4
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`III. LEGAL STANDARDS ................................................................................... 4
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`IV. LEVEL OF ORDINARY SKILL IN THE ART ............................................. 8
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`V. OVERVIEW OF THE ’969 PATENT ............................................................ 8
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`VI. PROSECUTION HISTORY OF THE ’969 PATENT ................................... 9
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`VII. THE ’969 PATENT’S PRIORITY DATE .................................................... 10
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`VIII. INTERPRETATION OF THE ’969 PATENT CLAIMS AT ISSUE ........... 12
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`IX. OVERVIEW OF THE ASSERTED PRIOR ART ........................................ 12
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` Anderson .........................................................................................................12
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` Cooper.............................................................................................................15
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` Timm...............................................................................................................15
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` Wallace ...........................................................................................................16
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` Knodel.............................................................................................................18
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` Viola ...............................................................................................................20
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`X. APPLICATION OF THE PRIOR ART TO THE ’969 PATENT ................ 21
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`U.S. Patent No. 8,479,969
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` Ground 1: Anderson View of Cooper ............................................................21
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` Ground 2: Anderson in View of Timm ..........................................................41
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` Ground 3: Anderson in View of Timm and Wallace .....................................66
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` Ground 4: Anderson in View of Knodel ........................................................75
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` Ground 5: Anderson in View of Viola ...........................................................85
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`XI. CONCLUSION ............................................................................................. 96
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`U.S. Patent No. 8,479,969
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`I, Bryan Knodel, declare as follows:
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`1.
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`I have been engaged as an expert by Fish & Richardson P.C. on behalf
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`of Intuitive Surgical, Inc. (“Petitioner”) for the above-captioned inter partes review.
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`I understand that this proceeding involves United States Patent No. 8,479,969
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`entitled “Drive Interface for Operably Coupling a Manipulatable Surgical Tool to a
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`Robot” by Frederick E. Shelton IV, filed February 9, 2012, and issued July 9, 2013
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`(the “’969 Patent” or “’969”). I understand that the ’969 Patent is currently
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`assigned to Ethicon LLC.
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`2.
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`I have reviewed and am familiar with the specification of the ’969
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`Patent. I will cite to the specification using the following format (’969 Patent, 1:1-
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`10). This example citation points to the ’969 Patent specification at column 1,
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`lines 1-10.
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`3.
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`I have reviewed and am familiar with the file history of the ’969 Patent
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`(“FH”). I understand that the file history is being provided as an exhibit in a
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`single PDF document. I will cite to the PDF pages when I cite to the file history.
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`4.
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`I have also reviewed the Petition for Inter Partes Review of the ’969
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`Patent and am familiar with the following prior art used in the Petition:
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`IS1007
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`U.S. Patent No. 6,817,974 to Cooper et al. (“Cooper”)
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`IS1008
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`U.S. Patent No. 6,699,235 to Wallace et al. (“Wallace”)
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`IS1009
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`U.S. Patent No. 6,331,181 to Tierney et al. (“Tierney”)
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`U.S. Patent No. 8,479,969
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`IS1010
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`U.S. Patent No. 6,783,524 to Anderson et al.
`(“Anderson”)
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`IS1011
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`U.S. Patent No. 7,510,107 to Timm et al. (“Timm”)
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`IS1012
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`U.S. Patent No. 5,465,895 to Knodel et al. (“Knodel”)
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`IS1013
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`U.S. Patent No. 5,954,259 to Viola et al. (“Viola”)
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`I also considered U.S. Published Application No. 2008/0167672
`(IS1014), which is the grandparent application to the ’969 Patent
`(filed as U.S. Application No. 11/651,807 (“’807 Application”)).
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`I have been asked to provide my technical review, analysis, insights and
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`opinions regarding the ’969 Patent and the above-noted references.
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`QUALIFICATIONS
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`5. My resume is being provided with this Declaration. As indicated there,
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`I have eight publications and I am a named inventor on over 130 patents for
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`medical devices. I have extensive experience with surgical instruments, and
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`surgical staplers in particular, which is the subject matter of the ’969 Patent.
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`6.
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`Specifically, I have been involved in the research and development,
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`design, and manufacture of medical devices including surgical cutting and stapling
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`devices since 1992, and am qualified to present the analysis provided in this declaration.
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`7.
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`I was employed in the Research and Development department as an
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`engineer of Ethicon Endo-Surgery. I was the lead design engineer for endoscopic
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`linear staplers/cutters. In this lead design engineer role, it was my responsibility to
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`understand every aspect of these devices.
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`8.
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`One early patent of mine is U.S. Patent No. 5,465,895, entitled
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`“Surgical Stapler Instruments,” and granted on November 14, 1995. This patent is
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`referenced in the Background section of the ’969 Patent’s specification as
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`“disclos[ing] an endocutter with distinct closing and firing actions,” but was not
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`cited by the Examiner during prosecution. ’969 Patent, 2:13-16. The ’895 Patent
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`states: “The present invention relates in general to surgical stapler instruments
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`which are capable of applying lines of staples to tissue while cutting the tissue
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`between those staple lines and, more particularly, to improvements relating to
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`stapler instruments and improvements in processes for forming various
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`components of such stapler instruments.” My ’895 Patent specifically discloses
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`jaws that open and close and a gear-driven knife to cut stapled tissue. I am thus
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`generally familiar with such mechanisms for surgical instruments.
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`9.
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`Beginning in 1998, I have been a consultant for medical device
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`companies and law firms. I have consulted in the areas of conceptual design,
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`prototyping, and turnkey product design.
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`10.
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`In addition, I have worked on a variety of surgical products for use in
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`a wide range of surgical procedures including female reproductive system, female
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`incontinence, female pelvic floor dysfunction, lung volume reduction, colon,
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`GERD, bariatrics, CABG, heart valve repair, hernia, general surgical procedures,
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`and surgical stapling, which is the general subject matter of the patent-at-issue.
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`11. As part of my consulting practice, I have also acted as a non-testifying
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`expert in a patent litigation case in the area of medical devices.
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`12.
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`I have not testified as an expert witness at trial or by deposition during
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`the previous four years.
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`13.
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`I am being compensated at my usual and customary rate of $200/hour
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`for my work on this case, plus reimbursement for actual expenses. My
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`compensation is not contingent upon the conclusions I reach, the outcome of this
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`inter partes review, or any litigation involving the ’969 Patent.
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` MY UNDERSTANDING OF CLAIM CONSTRUCTION
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`14.
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`I understand that claim terms are read in light of the patent’s
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`specification and file history as understood by a person of ordinary skill in the art
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`at the time of the purported invention. I further understand that in an inter partes
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`review proceeding of an unexpired patent, such as the ’969 Patent, the claim terms
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`are to be given their broadest reasonable interpretation (“BRI”) consistent with the
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`specification. I understand that constructions under the BRI standard should be at
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`least as broad as constructions under the plain and ordinary meaning standard used
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`in district court litigation.
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` LEGAL STANDARDS
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`15.
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`I am not a lawyer and do not provide any legal opinions. Although I
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`am not a lawyer, I have been advised that certain legal standards are to be applied by
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`technical experts in forming opinions regarding meaning and validity of patent
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`claims.
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`16. As part of this inquiry, I have been asked to consider the level of
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`ordinary skill in the field that someone would have had at the time the claimed
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`invention was made. In deciding the level of ordinary skill, I considered the
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`following:
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`the levels of education and experience of persons working in the field;
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`the types of problems encountered in the field; and
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`the sophistication of the technology.
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`17.
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`I understand that a claim is invalid if a single prior art reference
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`(including information that the single prior art reference specifically incorporates by
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`reference) discloses a claimed invention (the invention thus lacks novelty) or if the
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`claim would have been obvious to one of ordinary skill in the art at the time of the
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`purported invention based on the teachings of one or more prior art references.
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`18.
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`I understand that the time of the purported invention is the earliest
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`possible effective filing date of the application that discloses the claimed subject
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`matter. For the ’969 Patent, the filing date is February 9, 2012. The ’969 Patent
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`claims priority as a continuation of application No. 13/118,259 (the “’259
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`application”), filed on May 27, 2011, which is a continuation-in-part of application
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`No. 11/651,807 (the “’807 application”), filed on Jan. 10, 2007 and issued as U.S.
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`U.S. Patent No. 8,479,969
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`Patent No. 8,459,520 (“the ’520 patent”). I reviewed the ’807 application and saw
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`no disclosure of a robotic instrument interface to a tool drive assembly having
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`rotatable body portions, as required by the claims, and therefore I understand that
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`the ’969 Patent cannot use the ’807 application’s filing date for an effective filing
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`date. My understanding, therefore, is that the ’969 Patent has a priority date no
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`earlier than May 27, 2011.
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`19.
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`I am informed that a claim can be invalid based on anticipation if each
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`limitation of the claim is found in the four corners of a single prior art reference
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`(including any incorporated material), either explicitly or inherently.
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`20.
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`I am informed that a claim can be invalid based on obviousness in light
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`of a single prior art reference alone (based on general knowledge in the art), or
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`based upon a combination of prior art references, where there is some reason one
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`of ordinary skill in the art would make the combination.
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`21.
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`I am informed that when evaluating whether an invention would have
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`been obvious, the question is whether the differences between the subject matter
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`sought to be patented and the prior art are such that the subject matter as a whole
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`would have been obvious to a person of ordinary skill in the art at the time the
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`purported invention was made. In other words, the question is not whether a single
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`element “would have been obvious” but whether the claim as a whole would have
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`been obvious given what was known in the prior art.
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`22.
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`I understand that an obviousness analysis should (1) identify the
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`particular references that, singly or in combination, make the patent obvious; (2)
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`specifically identify which elements of the patent claim appear in each of the
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`asserted references; and (3) explain a motivation, teaching, need or market pressure
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`that would have inspired a person of ordinary skill in the art to combine prior art
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`references to solve a problem. I understand that certain objective indicia should be
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`considered, if available, regarding whether a patent claim would have been obvious
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`or nonobvious. Such indicia include: commercial success of products covered by
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`the patent claims; a long-felt need for the invention; failed attempts by others to
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`make the invention; copying of the invention by others in the field; unexpected
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`results achieved by the invention as compared to the closest prior art; praise of the
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`invention by the infringer or others in the field; the taking of licenses under the
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`patent by others; expressions of surprise by experts and those skilled in the art at the
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`making of the invention; and the patentee proceeded contrary to the accepted
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`wisdom of the prior art. I am not aware of any such indicia that would be pertinent
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`to the challenged claims.
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`23. Furthermore, I understand that the United Sates Supreme Court in its
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`KSR vs. Teleflex decision ruled that “if a technique has been used to improve one
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`device, and a person of ordinary skill in the art would have recognized that it
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`would improve similar devices in the same way, using the technique is obvious
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`unless its actual application is beyond that person’s skill.”
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` LEVEL OF ORDINARY SKILL IN THE ART
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`24. A person of ordinary skill in the art at the time of the alleged invention
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`(“POSITA”) would have had the equivalent of a Bachelor’s degree or higher in
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`mechanical engineering with at least 3 years working experience in the design of
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`comparable surgical devices. Additional education in a relevant field, such as
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`mechanical engineering or robotics (to the extent pertinent), or industry experience
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`may compensate for a deficit in one of the other aspects of the requirements stated
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`above.
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`25.
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`I am a person of at least ordinary skill in the art, and was such a person as
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`of the priority date of the ’969 Patent, which I am informed by counsel that, for purposes
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`of this petition, is May 27, 2011. I was also a person of at least ordinary skill in the
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`art as of January 10, 2007, the filing date of the grandparent ’807 application.
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` OVERVIEW OF THE ’969 PATENT
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`26. The ’969 Patent’s specification generally has two parts. It first
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`discusses a hand-held embodiment at length (at roughly columns 11-22), and this
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`material generally comes from the grandparent ’807 application filed in 2007. In
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`2011, the applicant filed a “continuation-in-part” application that added new
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`material related to a robotic embodiment, essentially adapting the handheld
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`8
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`11
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`U.S. Patent No. 8,479,969
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`surgical instrument to work with then-existing surgical robot systems, such as
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`those made by Intuitive Surgical. Each of the claims of the ’969 Patent concern
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`the robotic embodiments as each requires a “tool mounting portion” to interface to
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`“rotatable body portions” on a robotic “tool drive assembly.” ’969 Patent at 11:12-
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`42; 23:50-24:39; accord ’969 Patent, Title. The robotic surgical systems disclosed
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`and claimed by the ’969 Patent include components that were both typical and
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`expected of systems in the art at the time of the priority date of the ’969 Patent.
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`These components include a “master controller” and “robotic arm cart” and a tool
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`drive assembly with multiple rotary drive members controlling surgical end
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`effectors. ’969 Patent, 23:50-62; 24:62-25:29; FIGs. 26-27. Each of these
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`components may be found in the prior art, and in particular the prior art of
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`Petitioner Intuitive Surgical. Compare ’969 Patent, FIGs. 27 and 29 (“tool drive
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`assembly”) with Tierney FIGs. 7J and 7E (Driven disks, receiving rotary drive
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`motions from rotary drive elements on tool drive assembly of robotic surgical
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`system).
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` PROSECUTION HISTORY OF THE ’969 PATENT
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`27. While the application that led to the ’969 Patent was pending, the
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`Patent Office issued one and only one rejection, over Tierney, directed to two
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`independent claims. FH at 280-284. The Patent Office also indicated that a
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`number of dependent claims were allowable, FH at 284, and Applicant amended
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`U.S. Patent No. 8,479,969
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`the independent claims to include the subject matter identified as allowable. FH at
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`295-310. However, as discussed below, the subject matter identified as allowable
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`was well-known to those of skill in the art, as shown in Anderson, Cooper and the
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`other references cited here. The Examiner then issued a notice of allowance, FH at
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`328-330, and Patent Owner filed a request for continued examination containing
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`over 2,000 new references on February 22, 2013. FH at 357-438, 471. A new
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`Notice of Allowance followed two weeks later on March 7, 2013. FH at 547-552.
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` THE ’969 PATENT’S PRIORITY DATE
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`28. As discussed above, the ’969 Patent claims priority as a continuation
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`of application No. 13/118,259, filed on May 27, 2011, which is a continuation-in-
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`part of application No. 11/651,807, filed on Jan. 10, 2007 and issued as the ’520
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`Patent. I have not been asked to consider, and so have not considered, whether the
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`parent ’259 Application provides written description support for the ’969 Patent.1 I
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`have, however, considered whether the grandparent ’807 Application that led to the
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`’520 Patent provides written description support for the challenged claims (nos.
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`1 I understand that Intuitive has not conceded that any previously-filed application
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`provides written description support for any claim of the ’969 Patent, but merely
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`does not challenge the priority claim to the parent ’259 Application for purposes of
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`this Petition.
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`10
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`19-26) of the ’969 Patent, and I have concluded that it does not. In particular, each
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`challenged claim of the ’969 Patent claims a “tool mounting portion” “being
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`configured to operably interface with the tool drive assembly” and further recites
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`that the “tool drive assembly” is part of a robotic system. ’969 Patent, 88:13-
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`96:60. The claims also recite that the recited instrument has components that
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`interface with “rotatable body portions” on the robotic tool drive assembly.
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`29. The grandparent ’807 Application does not disclose, and one of
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`ordinary skill at the time of the priority date of the ’969 Patent would not have
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`understood the ’807 Application to disclose, these limitations. Rather, it discusses
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`– and thus one of ordinary skill in the art would have understood it to disclose –
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`only a “handheld endoscopic surgical instrument” with a mention that the
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`instrument may be used in “robotic-assisted surgery.” ’807 Application, ¶¶15, 89,
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`FIGs. 1-2. There is no disclosure in the ’807 Application of the details of any
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`surgical robot and no mention of the tool drive assembly, the tool mounting
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`portion, or the rotatable body portions on the tool drive assembly. A person of
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`skill in the art would not understand the inventors to have possession of the alleged
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`invention of the challenged claims prior to the filing of the 2011 application.
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`30. Because the ’807 Application does not disclose the robotic limitations
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`of the claims, I understand that the ’969 Patent is not entitled to the filing date of
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`the ’807 Application, and thus the earliest possible filing date the ’969 Patent
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`11
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`14
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`U.S. Patent No. 8,479,969
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`would be the date of the ’259 Application, which is May 27, 2011. Again, I offer
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`no opinion as to whether the parent ’259 Application provides written description
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`support for any claim of the ’969 Patent, and understand that the burden to show
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`such a disclosure in an alleged priority document falls on the patentee.
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` INTERPRETATION OF THE ’969 PATENT CLAIMS AT ISSUE
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`31. As a preliminary matter, I observe that the ’969 Patent uses the terms
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`“instrument” and “tool” interchangeably. E.g., ’969 Patent, Title, Abstract, 1:54-
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`65, 2:21-24, 2:50-3:2, 3:6-22, 3:66-4:3, 4:10-20, 10:64-11:42, 24:11-43. The
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`specification does not describe any difference between these terms, and one of
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`ordinary skill in the art would have understood them to be synonymous at least as
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`used within the disclosure of the ’969 Patent.
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`32. Beyond the clarification above, I see no reason that one of ordinary
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`skill in the art would have understood the broadest reasonable interpretation of the
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`terms of the challenged claims of the ’969 Patent to require clarification beyond
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`the plain meaning of those terms.
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` OVERVIEW OF THE ASSERTED PRIOR ART
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` Anderson
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`33. Anderson (U.S. Patent No. 6,783,524 assigned to petitioner, Intuitive
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`Surgical, Inc.) describes a surgical robot, and is assigned to Intuitive Surgical, the
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`Petitioner here. The surgical robot in Anderson is specifically designed to
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`interface with a variety of surgical instruments, such as surgical staplers, tissue
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`12
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`15
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`U.S. Patent No. 8,479,969
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`graspers, and tissue cutters. Anderson, 7:6-25; 11:32-65; 16:25-36; FIGs. 2-3;
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`12A-D. Anderson describes a surgical robot of the same type as that disclosed in
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`the Tierney reference considered by the Examiner and referenced in the ’969
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`Patent, and further contains additional disclosure pertinent to the ’969 Patent
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`claims. Anderson discloses that its system is for use with surgical tools similar to
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`those described in the ’969 Patent and depicts surgical tools which have end
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`effectors that can be rotated by either a cable drum or gear configuration.
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`Specifically, Anderson’s surgical tool comprises an end effector connected via an
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`elongate shaft to a base which mounts the tool to a robotic surgical system.
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`Anderson FIG. 2, 11:32-65. Anderson’s shaft rotates about the longitudinal axis
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`shown in FIG. 2. Anderson’s end effector may include, for example, a pivotable
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`gripper for gripping tissue. Anderson 15:30-60. Anderson’s base has a plurality of
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`“transmission members” that transmit rotational motion from a robotic arm to the
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`end effector. Anderson 11:66-12:22; 16:7-23. Anderson teaches an end effector
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`that may be rotated using a cable-driven system, and also discloses “a gear train”
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`that may be used, and, in particular, “a right-angled helical gear pair.” Anderson
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`16:37-46; 23:25-36.
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`34. Also of note is that the figures of the ’969 Patent have a striking
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`resemblance to those of the prior-art Anderson reference:
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`13
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`16
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`U.S. Patent No. 8,479,969
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`Robotic Controller
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`’969 Patent
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`Anderson
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`Robotic Manipulator
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`’969 Patent
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`Anderson
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`14
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`17
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`U.S. Patent No. 8,479,969
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`Surgical Tool With Proximal Tool Holder
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`’969 Patent
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`Anderson
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` Cooper
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`35. Cooper (U.S. Patent No. 6,817,974 also assigned to petitioner,
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`Intuitive Surgical, Inc.) discloses a surgical tool, such as a stapler, for surgical
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`robots similar to that of Anderson, with a focus on various articulating wrists.
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`Cooper at FIG. 36; 17:26-50. In addition, Cooper has a figure depicting a gear-
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`driven embodiment in which a helical gear pair, including a tube gear, is used to
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`rotate the shaft and end effector. Cooper at FIG. 64; 24:1-23.
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` Timm
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`36. Timm discloses a surgical stapler with an articulation joint. Timm,
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`2:25-55; 1:42-53; Abstract, FIG 1. In particular, the surgical stapler of Timm
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`discloses an elongate shaft with articulation ball joint 2760, a proximal spine
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`segment 2720 on one side of the ball joint, and a distal spine segment 2740 on the
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`18
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`U.S. Patent No. 8,479,969
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`other, where the spine and end effector may be “removably associated with” a
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`“robotic or computer” actuator. Timm, FIG. 52; 28:50-29:3; see also FIGs. 62-66;
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`8:3-7; 12:1-3; 28:45-49; 31:62-32:31; 30:58-31:35. Timm also discloses a gear-
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`driven knife that is selectively movable with respect to the lower jaw of the stapler.
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`E.g., Timm, Abstract
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` Wallace
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`37. The Wallace reference (U.S. Patent No. 6,699,235 also assigned to
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`petitioner, Intuitive Surgical, Inc.) teaches a “robotic surgical tool for use in a
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`robotic surgical system” that, similar to the instruments of Anderson, includes a
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`shaft supporting a surgical end effector with a “tool base 62 [that] includes an
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`interface 64 which mechanically and electrically couples the tool 50 to a
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`manipulator on the robotic arm cart.” Wallace, FIGs. 1, 2A; Abstract; 7:33-56:
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`16
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`19
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`U.S. Patent No. 8,479,969
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`38. Wallace also teaches a “wrist joint or mechanism” operated by
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`moving articulation rods using gears, as shown in Figure 30. Wallace, 7:57-65;
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`13:6-14:15, FIG. 30 (including “sector gears 312” and “gears 400”).
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`17
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`20
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`U.S. Patent No. 8,479,969
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` Knodel
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`39. Knodel teaches “[a] surgical stapler instrument … for applying lateral
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`lines of staples to tissue while cutting the tissue between those staple lines.”
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`Knodel, Abstract. The surgical instrument of Knodel also has a shaft that supports
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`an end effector, as may be seen in FIG. 1:
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`18
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`21
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`U.S. Patent No. 8,479,969
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`Knodel, FIG. 1; 5:52-6:10. Knodel also teaches a shaft supporting a drive bar that
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`it refers to as “drive member 164” and which moves distally within the shaft
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`thereby imparting driving force on wedge work member 162 and knife 161 as
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`shown in FIG. 2:
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`19
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`22
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`U.S. Patent No. 8,479,969
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`Knodel, FIG. 2; 9:10-17; 10:65-11:12; 10:10-18; see also FIG. 6; 10:65-11:12;
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`9:10-35.
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` Viola
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`40. Viola discloses a surgical stapling tool with an end effector stapler
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`that uses a drive screw. The end effector of Viola may be attached via “J-shaped
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`engagement slot 156 formed in body portion 14”:
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`20
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`23
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`U.S. Patent No. 8,479,969
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`Viola, 7:44-45, Fig. 2a.
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`41. Viola also discloses an end effector that can be rotatably attached to
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`the elongated shaft using “engagement pins 158a and 158b”:
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`Viola, 7:46, Fig. 10.
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` APPLICATION OF THE PRIOR ART TO THE ’969 PATENT
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` Ground 1: Anderson View of Cooper
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`42. Claim 23 of the ’969 Patent would have been obvious to one of
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`ordinary skill in the art over Anderson taken in view of Cooper. For example,
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`21
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`24
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`U.S. Patent No. 8,479,969
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`Anderson discloses all limitations of claim 23 except for an explicit disclosure of a
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`“tube gear” for rotating the end effector. Cooper discloses the tube gear.
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`43.
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`I note that although Anderson was before the Examiner during
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`prosecution, it was not used in any rejection and there is no evidence in the
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`prosecution record that the Examiner considered Anderson in connection with the
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`Cooper reference. I examine each limitation of the relevant claims of the ’969
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`Patent and I discuss the motivation to combine Anderson with Cooper. One of
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`skill in the art would have readily understood that supplementing Anderson’s
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`disclosure with details from Cooper concerning Cooper’s helical drive and tube
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`gears is merely the application of a known technique (generate shaft rotation by
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`using tube gears) to a known system (e.g., the surgical instrument of Anderson
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`which has a gear option) ready for improvement to yield predictable results.
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`44. One of skill in the art would find many reasons to modify Anderson to
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`include the gear arrangement of Cooper. First, one of skill in the art would have
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`understood that the gear structure of Cooper and Anderson’s disclosure of a “right-
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`angled helical gear pair” are extremely similar. Anderson, 22:59-23:30. Indeed,
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`one of skill in the art would have been motivated to replace Anderson’s spool 94
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`and roll drum 96 with Cooper’s helical drive gear 840 and follower gear 842
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`because Anderson specifically discloses that the pictured roll drum/spool pair
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`shown in FIG. 13 may be replaced by a “right-angled helical gear pair.” Anderson,
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`22
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`25
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`U.S. Patent No. 8,479,969
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`22:59-23:30.
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`45. One of skill in the art would recognize that Cooper discloses that its
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`teachings would result in “improved efficiency and cost-effectiveness” over
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`conventional way of conveying motion, Cooper, 24:21-23, and one of skill in the
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`art would apply the gear arrangement of Cooper into the system taught by
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`Anderson to achieve these benefits. In addition, the gear arrangement of Cooper
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`can provide greater torque than the arrangement of Anderson, which would have
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`served to reduce the size and possibly expense of the motor required. In addition,
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`Cooper’s gear structure is significantly less complex than the cable embodiment
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`and related components. Anderson, 22:59-23:30.
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`46. Finally, one of skill in the art would have modified the teachings of
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`Anderson to include the teachings of Cooper because both teach surgical
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`instruments that may be releasably attached to a robotic surgical system that may
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`provide rotational driving motion, and thus modifying Anderson as I describe here
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`would have led to predictable results without significantly altering or hindering the
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`functions performed by Anderson’s system. Indeed, Anderson teaches that
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`“various alternatives, modifications and equivalents may be used” and Cooper
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`suggests such an improvement. Anderson at 25:10-11.
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`23
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`26
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`U.S. Patent No. 8,479,969
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`1.
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`[23.P] A surgical tool for use with a robotic system that has a
`tool drive assembly that is operatively coupled to a control
`unit of the robotic system that is operable by inputs from an
`operator and is configured to provide at least one rotary
`output motion to at least one rotatable body portion supported
`on the tool drive assembly, said surgical tool comprising:
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`47. One of ordinary skill in the art would have understood Anderson to
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`disclose this limitation.
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`48. Regarding the phrase “[a] surgical tool for use with a robotic system,”
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`Anderson teaches “a robotic surgical instrument for use with a robotic surgical
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`system,” and that “surgical instrument 28” is “configured to releasably engage a
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`robotic surgical system”, which may be viewed in Figure 2:
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`Anderson, FIG. 2; 16:7-23; 11:32-42; 10:65-11:31; 4:7-11; Abstract.
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`49. Regarding the phrase “has a tool drive assembly that is operatively
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`coupled to a control unit,” Anderson teaches “control station 12” that controls
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`“surgical workstation” 20 which has the surgical tool drive assembly and attendant
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`24
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`27
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`U.S. Patent No. 8,479,969
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`surgical tools, and one of skill in the art would have understood that the control
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`station corresponds to the “control unit” claimed by the ’969 Patent. Anderson,
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`FIG. 1; 10:21-64. This may be seen below:
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`50. Regarding the phrase “operable by inputs from an operator,” control
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`station 12 may be operated by “operator control input” from “a surgeon or other
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`user.” Anderson, 10:40-64; 11:59-65; 5:61-6:8.
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`51. Regarding the phrase “configured to provide at least one rotary output
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`motion to at least one rotatable body portion supported on the tool drive
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`assembly,” one of ordinary skill in the art would have understood that the
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`Anderson manipulator has motors that drive rotating “engaging members” which
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`drive shafts 70.1, 72.1, 74.1, and 76.1 on the attached instrument, as disclosed by
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`25
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`28
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`Anderson:
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`U.S. Patent No. 8,479,969
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`
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`Anderson, FIG. 3 (in red). Anderson teaches that the above base 34 attaches to a
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`robotic arm assembly 26, including its motors and engaging members that attach to
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`and apply rotary motion to the above shafts. Anderson, FIG. 3; 11:66-12:22;
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`Abstract. Anderson teaches that the engaging members have rotary motion applied
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`by “actuators,” which may include “electric motors or the like, to cause selective
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`angular displacement of each engaging member” to the interface of the rotatable
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`shafts within base 34. Anderson, FIG. 3; 11:66-12:22; Abstract. For these
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`reasons, one of ordinary skill in the art would have readily understood that
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`Anderson teaches “rotatable body portions supported on the tool drive assembly.”
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`2.
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`[23.1] a surgical end effector comprising at least one
`component portion that is selectively movable between first
`and second positions re
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