Brad Penenberg

Patent Trials and Appeals Board

Feb 25, 2021

2020004566 (P.T.A.B. Feb. 25, 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.
13/448,318 04/16/2012 Brad L. Penenberg MicroPort-38 CHT 9908
157935 7590 02/25/2021
Walk Cook Lakey PLC
431 S. Main St.
Memphis, TN 38103
EXAMINER
NELSON, CHRISTINE L
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
02/25/2021 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):
lstclair@walkcook.com
ssentilles@walkcook.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRAD L. PENENBERG

Appeal 2020-004566
Application 13/448,318
Technology Center 3700
____________

Before MICHAEL L. HOELTER, MICHAEL J. FITZPATRICK, and
JILL D. HILL, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 15 and 18–31, which constitute all the
claims pending in this application. See Final Act. 1 (Office Action
Summary). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM the Examiner’s rejection of these claims.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
“MicroPort Othopedics Holdings Inc.” Appeal Br. 1.
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Application 13/448,318

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CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to the field of minimally
invasive surgical techniques for a joint replacement, and more particularly,
methods for accurately positioning components for hip or knee joint
replacement procedures.” Spec. ¶ 2. Method claim 15 is the sole
independent claim on appeal, is illustrative of the claims on appeal, and is
reproduced below.
15. A method for preparing a femur for a total hip
arthroplasty, comprising:
aligning a femoral broach tool along the femur with a
directional device emitting a guide to identify a line of attack
directed towards a chosen target, the femoral broach tool
comprising
a femoral broach mounted to a broach handle, the
broach handle connected to a strike plate, and
a mount connected to the broach handle to support
the directional device, the mount adjustably connected to the
broach handle so as to allow the mount to rotate about the
broach handle as well as slide along the broach handle,
wherein the femoral broach tool defines a central
axis and the line of attack is parallel to the central axis; and
displacing bone material from the femur with the femoral
broach tool by tapping the femoral broach tool into the femur
while maintaining the line of attack according to the guide.
EVIDENCE
Name Reference Date
Stone et al. (“Stone”) US 2005/0021044 A1 Jan. 27, 2005
Borja US 2010/0076505 A1 Mar. 25, 2010
van der Walt et al. (“van der
Walt”)
US 8,911,447 B2 Dec. 16, 2014
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REJECTION
Claims 15 and 18–31 are rejected under pre-AIA 35 U.S.C. 103(a) as
unpatentable over Stone, van der Walt, and Borja.
ANALYSIS
Appellant argues all the claims (i.e., claims 15 and 18–31) together.2
See Appeal Br. 3–8. We select claim 15 for review, with the remaining
dependent claims (i.e., claims 18–31), standing or falling with claim 15. See
37 C.F.R. § 41.37(c)(1)(iv).
The Examiner primarily relies on the teachings of Stone and states
that “it appears that” Stone would be adjustable as recited (i.e., rotatable and
slidable). Final Act. 3. However, “for further clarification the [E]xaminer
points to van der Walt as teaching” such movement or adjustment. Final
Act. 3; see also Ans. 6. The Examiner thereafter provides a reason for their
combination (i.e., “to ensure adjustability in rotation and sliding”). Final
Act. 3. The Examiner also acknowledges that the combination of Stone and
van der Walt “does not disclose a directional device which emits a guiding
light” and relies on Borja for such teachings. Final Act. 4. The Examiner
reasons that it would have been obvious to use Borja’s “orientation device
along with the directional device of Stone” “in order to provide an improved
method of guiding, marking, and viewing the target surgical area.” Final
Act. 4; see also Ans. 6.

2 Regarding dependent claims 23, 26, 27, and 29–31, Appellant contends
that the “rejection is unclear” and that “for the reasons discussed above,” a
skilled person would not have been motivated to combine the references
together. Appeal Br. 7, 8.
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Appellant contends that “a question remains as to whether” these three
references “are sufficient to render the claims obvious” or whether
“hindsight reconstruction is being used.” Appeal Br. 3. As support,
Appellant contends that Borja “provides little explanation about how the
light is used.” Appeal Br. 3 (referencing, among others, Borja ¶¶ 92, 118).
Paragraph 92 of Borja states, “the visible alignment indicators 1106 can
comprise one or more lasers” while paragraph 118 of Borja states, “[t]he
laser can be used as an aid to align.” We thus disagree with Appellant’s
contention that Borja “provides little explanation about how the light is
used” since Borja clearly instructs that the light is used for alignment
purposes. Such teachings in Borja are consistent with the Examiner’s stated
reason for combining Borja with Stone and van der Walt, i.e., “to provide an
improved method of guiding, marking, and viewing the target surgical
area.”3 Final Act. 4; see also Ans. 6. As such, Appellant is not persuasive
of Examiner error on this point.
Appellant further contends that Borja’s paragraph 118 “makes no
reference to procedures similar to [A]pplicant’s claims” and that “Borja does
not tie the concept to a procedure similar to [A]pplicant’s.” Appeal Br. 3.
However, the Examiner relies on Stone for “disclos[ing] a method for
preparing a femur for a total hip arthroplasty,” not Borja. Final Act. 3. As
such, Appellant’s contention is not commensurate with the Examiner’s
rejection because Borja was relied upon to improve Stone’s method, not for
teaching the procedure itself.

3 Appellant further states that “Applicant does not dispute that Borja teaches
the use of a laser light to project onto patient anatomy for the purpose of
orientation.” Appeal Br. 5.
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Appellant also disputes whether a skilled person, aware of the
teachings of the references, “would have arrived at the claimed invention.”
Appeal Br. 5. This is because, as per Appellant, “Stone’s rasp or broach 408
is [already] provided with” orientation/directional devices and “there is no
motivation to add an additional target in the form of light or other
emissions.” Appeal Br. 5.
When addressing Stone, Appellant acknowledges that Stone’s
orientation device 10 “appears to be somewhat complex in nature.” Appeal
Br. 5. We agree with Appellant on this point because Stone provides a
numerical display of roll, pitch, and yaw axes in order to provide “angular
orientation of the device in three dimensions.” Stone ¶ 35; see also id. Fig.
1. In other words, a user must convert these roll, pitch, and yaw values into
a representative vector in space. Such a readout requires the user to first
ascertain the reference roll, pitch, and yaw axes in a surgical environment
(e.g., the reference axes being those when the values are zero), and thereafter
understand the degree of variation from each such reference axis based on
the numerical readout provided for that axis. See Stone ¶ 40. Borja, on the
other hand (and as mentioned above), provides a “visible alignment
indicator”– a laser– “used as an aid to align an axis of the measuring device .
. . with an axis of the leg.” Borja ¶¶ 92, 118. Borja’s laser light (aligned
with the tool) is manually oriented so as to visibly align with the axis of the
bone in question, without concern of its numerical relationship vis-a-vis a
roll, pitch, or yaw. See Borja ¶¶ 92, 118. The Examiner reasons that Borja’s
visible laser device “provide[s] an improved method” over a procedure that
requires, instead, alignment via roll, pitch, and yaw values. Final Act. 4;
Ans. 6. Appellant does not rebut the Examiner on this point.
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Appellant further indicates that Stone already employs alignment arms
434, 436 and questions why it would have been obvious to employ “an
additional visual indicator in the form of an emitted light.” Appeal Br. 5.
Appellant is correct that Stone employs alignment arms 434, 436, but these
arms project outward from the tool’s longitudinal axis, i.e., orthogonal or
radial. See Stone Figs. 20, 21A, 21B. While such arms may be useful in
providing visual alignment guidance in two directions, Borja’s laser
provides visual alignment guidance in a third direction, i.e., axially along the
length of the tool (“with an axis of the leg” (Borja ¶ 118)), cumulative with
the above two directions. As such, Appellant does not explain how the
Examiner erred in combining the two systems (i.e., “along with”) so as to
“provide an improved method” as stated. Final Act. 4; see also Ans. 6.
Appellant also raises the specter of Stone “not disclos[ing] the
directional guide being adjustable” (i.e., rotatable and slidable). Appeal Br.
6. Further, Appellant contends that van der Walt, likewise, “does not appear
to teach adjustable mounting, rotable mounting, or sliding.” Appeal Br. 6.
Instead, Appellant contends that its own Specification “is being used to
engage in hindsight reconstruction of the claimed invention.” Appeal Br. 7.
The Examiner disagrees by noting Stone’s mounting ring 432 can be secured
along the length of Stone’s tool, and also rotated, via adjustable locking
screw 442. See Final Act. 3; Stone ¶¶ 86, 88, Figs. 20, 21A. The Examiner
also identifies van der Walt’s coupling device 14 as teaching this capability.
See Final Act. 3, Ans. 6. Figure 17 of van der Walt depicts coupling device
14 including a cam, i.e., “the arm 60 can swing into a position such that an
end 62 of the arm 60 is frictionally engaged with or clamps onto a portion of
the surgical instrument.” Van der Walt 22:1–7. Appellant does not explain
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how either such clamp (Stone’s or van der Walt’s) is unable to rotate or slide
with respect to its mount.
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in combining Stone, van der Walt, and Borja in rejecting
claims 15 and 18–31. We sustain their rejection.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
References/Basis Affirmed Reversed
15, 18–31 103(a) Stone, van der Walt,
Borja
15, 18–31
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED