COUTURE, Pierre et al.

Patent Trials and Appeals Board

Apr 14, 2020

11688951 - (D) (P.T.A.B. Apr. 14, 2020)

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.
11/688,951 03/21/2007 Pierre COUTURE 05015228-71US PTN/df 1976
93758 7590 04/14/2020
NORTON ROSE FULBRIGHT CANADA LLP (Zimmer Cas)
1 Place Ville Marie
Suite 2500
Montreal, QUEBEC H3B 1R1
CANADA
EXAMINER
IP, JASON M
ART UNIT PAPER NUMBER
3793
MAIL DATE DELIVERY MODE
04/14/2020 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PIERRE COUTURE and SEBASTIEN JUTRAS

Appeal 2018-008757
Application 11/688,951
Technology Center 3700
____________

Before JOHN C. KERINS, JILL D. HILL and GEORGE R. HOSKINS,
Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1–7, 9–14, and 16–20.1 Claims 8 and
15 are indicated to contain allowable subject matter. We have jurisdiction
under 35 U.S.C. § 6(b). A telephonic oral hearing was conducted on April 6,
2020, with Pierre T. A-Nguyen appearing on behalf of Appellant.
We REVERSE.

1 The term “Appellant” is used herein to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Orthosoft,
Inc. Appeal Br. 2.
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Application 11/688,951

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THE CLAIMED SUBJECT MATTER
Appellant’s invention relates to a system and method for tracking a
bone-altering tool in computer-assisted surgery. Claim 1 is illustrative, and
is reproduced below:
1. A system for tracking a bone-altering tool in computer-
assisted surgery, comprising:

a first trackable reference adapted to be secured to a first bone,
with a first frame of reference being associated with the first
trackable reference, the first frame of reference including
landmarks and a coordinate system representative of the first
bone;

at least one sensor configured to track movements of the first
trackable reference;

a bone-altering tool without any trackable reference, the bone-
altering tool adapted to be secured to the first bone in a secured
configuration with the first trackable reference being at a first
location on the first bone and the bone-altering tool being at a
second location separate from the first trackable reference, the
bone-altering tool having a bone-altering portion facing away
from the first bone when the bone-altering tool is secured to the
bone in said secured configuration, the bone-altering portion
adapted to alter a second bone;

a calculator to calculate at least an orientation of the first frame
of reference; and

an alteration parameter calculator to determine at least an
orientation of the bone altering tool in said secured configuration
in the coordinate system as a function of the tracking of the first
frame of reference and using a virtual model of the bone-altering
tool, the virtual model of the bone-altering tool being registered
in the coordinate system of the bone and including a virtual
model portion of said bone-altering portion in the coordinate
system, the alteration parameter calculator using a virtual model
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of the second bone to calculate an alteration of the second bone
during alteration by the bone-altering portion of the bone-altering
tool.

THE REJECTION
The Examiner rejects claims 1–7, 9–14, and 16–20 under 35 U.S.C.
§ 103(a) as being unpatentable over Johnson (US 2002/0193797 A1,
published Dec. 19, 2002) in view of Murphy (US 7,885,705 B2, issued Feb.
8, 2011), Carson (US 2002/0133175 A1, published Sept. 19, 2002), Masini
(US 2005/0137599 A1, published June 23, 2005), and Brosseau (US
6,533,737 B1, issued Mar. 18, 2003).

ANALYSIS
The Examiner, for independent claims 1 and 10, cites to Johnson as
disclosing a system having the claimed bone-altering tool lacking a trackable
reference, with the bone-altering tool adapted to be secured to a first bone,
“separately from the first trackable reference,”2 with the bone-altering tool
having a bone-altering portion facing away from the first bone when secured
to the first bone. Final Act. 5. The Examiner also finds that Johnson
discloses, for the arrangement set forth above, that the bone-altering portion
of the bone-altering tool is adapted to alter a second bone. Id.
The Examiner acknowledges that Johnson does not explicitly disclose
a system for tracking the bone-altering tool in computer-assisted surgery

2 The Examiner does not identify, in connection with this finding, a
component in Johnson that corresponds to the claimed “first trackable
reference.” The Examiner subsequently acknowledges that Johnson “do[es]
not explicitly disclose . . . a first trackable reference adapted to be secured to
a first bone.” Final Act. 5.
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which includes a first trackable reference adapted to be secured to a first
bone, with a frame of reference being associated with the first trackable
reference that includes landmarks and a coordinate system representative of
the first bone. Final Act. 5. The Examiner finds that Murphy discloses a
trackable reference adapted to be secured to a first bone that also provides
the limitations identified above as attendant to the first trackable reference.
Id., citing Murphy, Fig. 5; 4:5–12, 4:31–43.
The Examiner concludes that it would have been obvious “to apply
the tracking of Murphy to the system of Johnson, as to provide computer-
aided tracking of surgical tools during operation.” Final Act. 5. In reaching
this conclusion, the Examiner acknowledges that the combined teachings do
not disclose that the first trackable reference on the first bone and the bone-
altering tool are at separate locations. Id. The Examiner opines that “it
would have been obvious . . . to position these tools at different locations, so
as to prevent them from interfering with one another.” Id. at 5–6.
It is not entirely clear to us how the Examiner is proposing to modify
Johnson in view of Murphy. In particular, we are uncertain as to what the
Examiner means when stating that Murphy somehow tracks surgical tools,
and what tools are being referred to when stating that it would have been
obvious to position these tools at different locations. The only additional
explanation provided by the Examiner, in responding to Appellant’s
arguments directed to lack of recognition in Murphy of potential interference
between components, appears at page 9 of the Answer, and states:
the Examiner respectfully submits that while Murphy does
teach a trackable reference 128 attached to rod 410, Murphy
also teaches a trackable reference 126 that is not attached to the
rod 410. This trackable reference 126 is placed at a different
location from the rod 410, which is a clear teaching that a
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reference and an instrument may be placed at different
locations. The Examiner recognizes that the trackable reference
126 is not used to track the rod 410, but this limitation of the
claim is addressed by the citation in the Carson reference which
will be explained below.
Ans. 9. The above is far from enlightening as to what the Examiner regards
as being tools in the statements discussing tracking and positioning of tools
in Murphy, and preventing the tools from interfering with each other. To the
extent that the Examiner regards rod 410 as the “instrument” mentioned in
the quote above, it appears that such instrument is secured to the femur
(corresponding to the claimed “first bone”), and trackable reference 128 is
secured to the first bone via its securement to instrument/rod 410, and
therefore is not placed at a different location, as required by the claims. That
trackable reference 126 is placed at a different location is of no moment, in
that the different location is on the second bone, and not the first bone,
again, as required by the claims.
Reverting to the disclosure in Murphy, we see that trackable
references 126, 128 are secured to pelvis 112 and femur 114, respectively.
Murphy, Fig. 4; 4:31–43. Trackable reference 128 is not directly attached to
the femur, but instead is secured to rod 410, which is secured to the femur.
As far as actual tools are concerned, Murphy discloses using digitizing probe
130 to identify certain pelvic landmarks in a step of establishing a pelvic
coordinate system. Murphy 4:53–5:2. Probe 130 does not appear to be a
bone-altering tool as claimed, but even if it were to be regarded as being
within the scope of that term, Murphy provides probe 130 with trackable
reference (position tracking frame) 132. Id. As such, if this is one of the
plural tools to which the Examiner refers, application of this teaching of
Murphy to Johnson would result in the bone-altering tool of Johnson having
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a trackable reference thereon, which does not correspond to the claimed
“bone-altering tool without any trackable reference.” See claim 1, supra.
Murphy includes scant disclosure as to any details regarding the
portion of the surgery in which a bone-altering tool is used to alter the
second bone, as called for in the claims. After the discussions involving
establishing a pelvic coordinate system, Murphy states that, “[t]he surgeon
then performs the hip procedure, such as performing a trial reduction with
the insertion of a selected prosthetic stem and head into the femur and a
prosthetic acetabular socket into the pelvis.” Murphy 3:10–14; 5:15–21.
Once the trial reduction is complete, the patient’s leg is placed back in its
original orientation, and a determination is made as to any leg length change
brought about by the procedure. Id. at 3:15–26. If such leg length change is
not acceptable, the surgeon performs a further trial reduction involving
modifying the stem and head and/or the acetabular socket. Id. at 3:26–28.
Our understanding of these passages is that Murphy does not track the
position or orientation of the bone-altering tool in the reduction process. As
such, we do not see where Murphy teaches, at the outset, “provid[ing]
computer-aided tracking of surgical tools during operation,” which is the
Examiner’s stated reason to modify Johnson in view of Murphy. Final Act.
5.
Appellant acknowledges that it was known in the art to track tools in
computer-assisted surgery, but maintains that “the convention was to attach
a trackable reference to each item that moves and therefore needs to be
tracked, such as a bone, or a tool.” Appeal Br. 4. Appellant provides
reproductions of drawing figures from several of the references cited in the
rejection, pointing out that, in each, items that might be regarded as being a
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tool, have attached thereto a reference marker or fiducial in order to allow
those items to be tracked. Id. at 4–5. Appellant’s contention is thus
supported by the evidence of record.
Appellant points out that the claimed invention requires a different
approach not disclosed or suggested in the prior art, namely, tracking a
bone-altering tool without attaching a reference marker or fiducial to the
tool. Id. at 5–6. We agree. The Examiner has not sufficiently established
how the combined teachings of Johnson, Murphy, Carson, Masini, and
Brosseau would lead a person of ordinary skill in the art to such a system.
Carson is the only reference cited, as far as we are able to determine,
that discloses or suggests tracking of the position of one element (a trial
component) using a tracking reference or fiducial attached to a different
component (a femur). Carson ¶ 105. As explained in Carson, however, this
may only be accomplished by having a position sensor “see” both the
fiducial attached to the femur and a fiducial attached to an impactor to which
the femur is secured. Id. In other words, the system can only track the
position of the trial component after knowing its position relative to the
femur by having reference to a fiducial that is tracking, up to a “handoff”
point, the position of the trial component. See id. The Examiner has not
adequately explained how this is seen as being applicable to the proposed
modification of Johnson in view of Murphy.
We further wish to note that Masini, relied on by the Examiner as
teaching the use of a virtual model of a tool, the inclusion of which is
asserted to be an obvious modification to Johnson, employs a reference
marker or fiducial on the tool itself for tracking the tool. Masini ¶¶ 16, 17.
As such, its relevance as to modifying Johnson so as to not include a
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reference marker or fiducial on a bone-altering tool therein, is not entirely
clear.
For the above reasons, it is our opinion that the Examiner has not
adequately explained, using rational underpinnings, why it would have been
obvious to combine the teachings of Johnson, Murphy, Carson, Masini, and
Brosseau to arrive at the invention as presently claimed. Nor is it clear that,
even if combined, the combination would yield or suggest the claimed
invention.
The rejection of claims 1–7, 9–14, and 16–20 as being unpatentable
over Johnson, Murphy, Carson, Masini, and Brosseau is not sustained.

DECISION
The rejection of claims 1–7, 9–14, and 16–20 under 35 U.S.C.
§ 103(a) is reversed.
CONCLUSION

In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–7, 9–14,
16–20
103(a) Johnson, Murphy,
Carson, Masini,
Brosseau
1–7, 9–14, 16–
20

REVERSED