Edward J. Caylor

Patent Trials and Appeals Board

Aug 16, 2019

14189712 - (D) (P.T.A.B. Aug. 16, 2019)

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.
14/189,712 02/25/2014 Edward J. Caylor III 265280-228821 3983
23643 7590 08/16/2019
Barnes & Thornburg LLP (IN)
11 S. Meridian Street
Indianapolis, IN 46204
EXAMINER
BAHENA, CHRISTIE L.
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
08/16/2019 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):
INDocket@btlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte Edward J. Caylor III1
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Appeal 2019-001176
Application 14/189,712
Technology Center 3700
__________

Before MICHAEL L. HOELTER, MITCHELL G. WEATHERLY, and
NATHAN A. ENGELS, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE2
This is an Appeal under 35 U.S.C. § 134(a) from the Examiner’s non-
final rejection of claims 1–10 and 20–29. App. Br. 1. We have jurisdiction
under 35 U.S.C. § 6(b). For the reasons explained below, we affirm the

1 “The real party in interest is DePuy Synthes Products, Inc, a Johnson &
Johnson Company.” App. Br. 2. We refer to the appealing party as
“Appellant.”
2 “Appellant is aware of the following appeal, . . . U.S. Patent Application
No. 11/537,338, now U.S. Patent No. 8,685,091, in which the Board’s
decision has been issue[d] on July 29, 2013 . . . (Appeal No. 2011-008585).”
App. Br. 2.
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Examiner’s rejections of claims 1–10 and 20–29 as being obvious under
35 U.S.C. § 103(a).
CLAIMED SUBJECT MATTER
The disclosed subject matter “relates generally to systems and
methods for transmitting, receiving, and/or monitoring orthopaedic implant
sensor data.” Spec. ¶ 2. Claims 1 and 24 are independent. Claim 1 is
illustrative of the claims on appeal and is reproduced below.
1. A system for monitoring implant sensor data over a
cellular network, the system comprising:
a controller; and
an implantable orthopaedic prosthesis having a cellular
transceiver configured to communicate with the controller over
the cellular network.
REFERENCES
Abreu US 2001/0056359 A1 Dec. 27, 2001
Townsend et al. US 2002/0024450 A1 Feb. 28, 2002
Fox et al. US 2003/0195015 A1 Oct. 16, 2003
Van Creveld et al. US 2004/0171935 A1 Sept. 02, 2004
THE REJECTIONS ON APPEAL
Claims 1, 2, 10, and 20 are rejected under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Townsend.
Claims 3–5 and 22 are rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Townsend and Fox.
Claims 21 and 23–29 are rejected under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Townsend and Van Creveld.
Claims 6–9 are rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Townsend, Fox, and Abreu.
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ANALYSIS
The rejection of claims 1, 2, 10, and 20
as unpatentable over Townsend
Appellant argues claims 1, 2, 10, and 20 together. See App. Br. 4–9.
We select independent claim 1 for review, with dependent claims 2, 10,
and 20 standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
As indicated above, a decision was rendered in Appeal No. 2011-
008585, on July 29, 2013, pertaining to U.S. Patent Application
No. 11/537,338, now U.S. Patent No. 8,685,091. We will refer to this earlier
decision as “’585 Decision.” The present application (i.e., U.S. Patent
Application No. 14/189,712), which is the subject of the present appeal (i.e.,
Appeal No. 2019-001176), is a division of this earlier filing. See Spec. ¶ 1.
As stated in the ’585 Decision, the Examiner relied on the
combination of Townsend and Montegrande for the disclosure of an
implantable cellular transceiver. See ’585 Decision 4. We concluded,
however, that “[o]n the record before us, there is no indication by the
Examiner that Montegrande’s external reader 30 (or its included
transmitter/receiver 48) is suitable for implantation.” ’585 Decision 6. As
such, we reversed the Examiner’s rejection of those claims on appeal. See
’585 Decision 7.
In the present appeal, however, the Examiner is not relying on any
combination with Montegrande for the disclosure of an implantable cellular
transceiver. Instead, in the matter before us, the Examiner is relying solely
on the teachings of Townsend, and particularly paragraph 30 thereof, for
such teachings. See Non-Final Act. 2. The pertinent portion of
paragraph 30 of Townsend is reproduced below:
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Memory 28 can be non-volatile memory, such as flash memory,
disk drive, or tape drive. Receiver 30 can use radio
communications of the amplitude shift keyed, frequency shift
keyed, or spread spectrum variety. For example, the RF
Monolithics TR1000 transceiver provides RF communications in
both directions in a very small package and consumes very little
power. Transmitter 32 is included in this transceiver or it can be
a separate component. Transmitter 32 can be a transformer
coupled transmitter for short range data transfer, a radio
transmitter, such as a narrow band transmitter or a cellular phone
for long range transmission, or a hard wired transmitter, such as
an RS232 twisted pair wires or a wired phone line, or ethernet
connection for internet access.
Townsend ¶ 30.
Appellant presently contends that the Examiner’s current reliance on
Townsend for such teachings “contradicts the Board’s decision.” App.
Br. 4. This is “because the Board has already found that Townsend fails to
teach or suggest an implantable orthopaedic prosthesis that has a cellular
transceiver as required by claims 1–2, 10, and 20.” App. Br. 4. This is not a
correct characterization or interpretation of our action in the earlier matter.
See above. The Examiner, on the other hand, has correctly characterized
and/or interpreted our action in that matter stating “[t]he decision was based
on the conclusion that the transceiver of Montegrande could not have been
applied to an internal orthopedic joint since it is used with an external
prosthetic and is therefore not implantable. (see page 6).” Ans. 3; see also
Non-Final Act. 10–11. “Furthermore, in the board decision regarding the
parent application, the rejection was overturned based on the secondary
reference Montegrande which is not included in this rejection.” Ans. 3.
Appellant further contends, “the Board fully considered both
Montegrande and Townsend and did not dispute the Appellant’s position
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that ‘a cellular transceiver is not included in any of the references.’
(emphasis added).” App. Br. 5; see also Reply Br. 7. This statement, too, is
incorrect because the Board’s earlier decision was clearly premised on a lack
of “indication by the Examiner that Montegrande’s external reader . . . is
suitable for implantation.” ’585 Decision 6; see also Ans. 3.
Additionally, Appellant contends, “[c]ontrary to the Examiner’s
assertions, the RF receiver 30 or the RF transmitter 32 of Townsend is not a
cellular transceiver that is attached to the implantable orthopaedic
prosthesis.” App. Br. 7. To clarify, Appellant “does not dispute that
Townsend discloses an embodiment that includes an implantable device.”
Reply Br. 3; see also Townsend ¶¶ 35, 36, 38. Instead, Appellant contends
“that the embodiment that includes an implantable device does not include a
cellular transceiver.” Reply Br. 3–4.
Townsend’s teachings would lead one skilled in the art to a different
conclusion. Townsend clearly states that “[d]ata collection system 20 is
particularly suitable as an implantable device with the body of a human.”
Townsend ¶ 35. Figure 1 of Townsend illustrates data collection system 20
as including communication devices 30, 32, and, more particularly,
paragraph 30 of Townsend expressly states that these communication
devices 30, 32 may be a radio-frequency “transceiver provid[ing] RF
communications in both directions in a very small package.” See also
Ans. 4. This same paragraph 30 further specifically discusses item 32 as
being “a cellular phone.” Thus, Appellant’s attempt to characterize
Townsend’s implant as being devoid of a cellular transceiver (see App.
Br. 7–8; Reply Br. 3–5) is not persuasive in view of these disclosures.
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Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in the rejection of claims 1, 2, 10, and 20. We sustain
the Examiner’s rejection of these claims.
The rejection of (a) claims 3–5 and 22 as unpatentable over Townsend and
Fox; (b) claims 21 and 23–29 as unpatentable over Townsend and Van
Creveld; and, (c) claims 6–9 as unpatentable over Townsend, Fox, and
Abreu
Appellant either repeats arguments addressed above (i.e., “contradicts
the Board’s decision”) or contends that the additionally cited art “fails to
remedy the deficiencies of Townsend.” App. Br. 9–12; see also Reply
Br. 6–7. For the same reasons discussed above, Appellant’s arguments are
not persuasive. We sustain the Examiner’s rejections of claims 3–9 and 21–
29.
DECISION
The Examiner’s rejections of claims 1–10 and 20–29 are affirmed.
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED