T 2102/12 – Unorthodox

This is an examination appeal.

Claim 1 of the main request on file before Board 3.2.02 read:

1. A method for determining and displaying information of an operator indicated distance using a medical robotic system (100), the claimed method being performed contemporaneously with an unclaimed surgical procedure in which a tool (600, 800, 1200) is being robotically manipulated by a slave manipulator (200) in response to operator manipulation of an input device (108, 109), the claimed method comprising:

capturing images indicating movement of the tool (600, 800, 1200);

sensing joint positions of the slave manipulator (200);

determining a distance moved by the tool (600, 800, 1200) using the sensed joint positions and forward kinematics of the slave manipulator (200); and

displaying the captured images and information of the distance on a monitor (104) of the medical robotic system (100) so as to indicate movement of the tool (600, 800, 1200) and visually associate the information of the distance with the movement of the tool (600, 800, 1200). (my emphasis)

The Board found this request not to be allowable under A 84:

[2.1] The application relates to medical robotic systems (such as the da Vinci® Surgical System from the applicant) which allow to robotically move a tool on an articulated arm in response to the surgeon’s manipulation of an input device […]. As indicated in […] the description, the expression “tools” used in the application denotes surgical instruments. More specifically, the invention is essentially directed to the determination of the distance moved by the surgical tool using sensed data from the robotic manipulation or movement of the tool by the surgeon and to display information of the moved distance on a monitor of the medical robotic system […].

[2.2] Claim 1 of the main and first to third auxiliary requests defines a method for determining and displaying information of an operator indicated distance moved by a tool using a medical robotic system. However, rather than defining in the claims (i.e. claiming) the matter for which protection is sought as stipulated by A 84, the method of claim 1 of the main and first to third auxiliary requests is claimed in terms of “claimed” method steps and “unclaimed” method steps.

[2.3] The appellant explained that it was seeking to protect, in an admittedly “unorthodox” way, a method performed by a device for determining and displaying distance information, the claimed method being performed contemporaneously and in parallel with a non-claimed, or “unclaimed”, surgical process. This was expressed in claim 1 of the main and first to third auxiliary requests by specifying “the claimed method being performed contemporaneously with an unclaimed surgical procedure in which a tool is being robotically manipulated by a slave manipulator in response to operator manipulation of an input device” (emphasis added).

[2.4] In the present case, the so-called “claimed” method includes the steps of determining the distance moved by the surgical tool using sensed data from the robotic manipulation or movement of the tool, while the so-called “unclaimed” surgical procedure includes precisely that same robotic manipulation (performed by the surgeon). Hence, these two “types” of method steps are inextricably interrelated, whereby their separation into “claimed” and “unclaimed” claim features is artificial and ambiguous.

This inextricable relationship becomes particularly apparent in the example of Figure 10 […]. According to this example, a surgical tool is moved by the surgeon to a first position allowing a force sensor on the tool to make contact with an anatomic structure which starts the measurement of the coordinates of that first position, the tool being then moved to a second position at which, after renewed contact of the anatomic structure by the force sensor, the coordinates of the second position are measured, the system’s processor then determining the distance moved by the tool from the measured coordinates of the two positions. This example makes it clear that the movement of the tool by the surgeon on the one hand, and the determination of the distance moved by the tool using the sensed joint positions on the other, are intertwined and inextricably related.

Thus, contrary to the appellant’s view, claiming the measurement of the movement of the tool while “unclaiming” the movement itself renders the subject-matter for which protection is sought unclear. Consequently, the appellant’s intention to eliminate from the presently claimed method the contemporaneously performed surgical process fails for lack of compliance with the requirements of A 84. As mentioned in G 1/07 [4.3.1], the question of whether or not a surgical step can be omitted has to be assessed under A 84 and depends on whether the claimed invention is fully and completely defined by the features of the claim without that step, which is not the case here as explained above. The presently claimed method of intertwined non-surgical (“claimed”) and surgical (“unclaimed”) steps is not comparable to that underlying T 836/08.

[2.5] For the above reasons, claim 1 of the main and first to third auxiliary requests is not allowable under A 84.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.