11213456 (P.T.A.B. Aug. 29, 2013)

Ex Parte Block et al

Patent Trial and Appeal BoardAug 29, 2013

11213456 (P.T.A.B. Aug. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte D. STEVEN BLOCK, THORSTEN M. BURGER, FRANCOIS URVOY, MAGNUS E. FLETT, MICHAL SLOMCZYKOWSKI, MARCELLINO MAHESON, ROGER OAKESHOTT, and ALEC BIRKBECK ____________________ Appeal 2011-007776 Application 11/213,456 Technology Center 3700 ____________________ Before: PHILLIP J. KAUFFMAN, BRETT C. MARTIN, and PATRICK R. SCANLON, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-007776 Application 11/213,456 2 STATEMENT OF THE CASE D. Steven Block et al. (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1-4 and 7-12. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION Appellants’ invention “relates generally to a computer-assisted surgical instrument for use in the performance of an orthopaedic procedure.” Spec. 1, ll. 10-11. Claim 1, the only independent claim and reproduced below, is illustrative of the claimed subject matter: 1. A method of performing computer-assisted hip surgery, the method comprising the steps of: screwing a sensor support instrument to the posterior surface of a patient’s proximal femur, and securing a sensor to the sensor support instrument. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Stark Cossette McGinley US 5,456,267 US 6,856,828 B2 US 7,458,977 B2 Oct. 10, 1995 Feb. 15, 2005 Dec. 2, 2008 Appeal 2011-007776 Application 11/213,456 3 THE REJECTIONS ON APPEAL The Examiner made the following rejections:1 1. Claims 1-4 and 7-9 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Cossette and McGinley. Ans. 3. 2. Claims 10-12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Cossette, McGinley, and Stark. Ans. 4. ANALYSIS Obviousness over Cossette and McGinley The Examiner finds that Cossette teaches all of the elements of claims 1-4 and 7-9, but “[t]he use of the device on the proximal posterior femur was not specified.” Ans. 4. The Examiner then finds that McGinley teaches “a method of utilizing a computer assisted navigation system for preparation of a femur, where the navigation device is attached to the posterior, proximal portion of the patient’s femur.” Id. (citing Figure 2 of McGinley). The Examiner goes on to conclude that it would have been obvious “to insert the Cossette et al. device at the location of use of McGinley et al. due to the fact 1 The Examiner also originally rejected claims 1-4 and 7-9 as anticipated by Cossette, but the Examiner withdrew that rejection. Ans. 2-3. The Examiner additionally rejected claims 10-12 (dependent from claim 1) as unpatentable over the combination of Cossette and Stark. See Final Rej. 3. The Examiner did not restate the rejection relying on Cossette and Stark in the Answer, but also did not expressly withdraw this rejection. Given that the combination of Stark and Cossette as applied to claims 10-12 relies upon the rationale that claim 1 is anticipated by Cossette and the fact that the anticipation rejection was withdrawn, we assume that the rejection of claims 10-12 as unpatentable over Cossette and Stark was also intended to be withdrawn. If it is not withdrawn, then we summarily reverse the obviousness rejection as being based upon a withdrawn anticipation rejection. Appeal 2011-007776 Application 11/213,456 4 that doing so would have predictably achieved the result of providing a practitioner with a method of utilizing a computer assisted surgical method to insert a prosthetic hip joint.” Id. Claims 1, 4, and 7-9 Appellants rely on the arguments presented for the patentability of claim 1 alone in rebutting the various rejections of dependent claims 4 and 7-9. App. Br. 9. Accordingly, the disposition of the rejections of claims 4 and 7-9 turns on our analysis of the rejection of claim 1. Appellants present additional arguments only for dependent claims 2, 3, and 10-12. Appellants initially argue that “neither Cossette nor McGinley discloses ‘screwing a sensor support instrument to the posterior surface of a patient’s proximal femur,’” as recited in claim 1. App. Br. 10. This argument, however, does not address the Examiner’s actual rejection, which is utilizing the sensor support of Cossette at the location disclosed by McGinley. The Examiner makes this point very clear in responding to Appellants’ arguments by stating, “a clearer way of stating what the rejection was setting forth would be ‘utilizing Cossette’s device in McGinley’s method’s location.’” Ans. 7. It is the nature of an obviousness rejection that neither reference teaches each and every limitation, but that it is the combined teachings of the references that results in unpatentability. Here, Cossette teaches a screw- mounted sensor used in computer-assisted hip surgery (see, e.g., col. 2, ll. 1- 18), but simply does not specifically disclose the exact location claimed. McGinley, however, teaches a different type of sensor mount, also used in computer-assisted surgery, and discloses that the sensor may be mounted as Appeal 2011-007776 Application 11/213,456 5 claimed. Accordingly, mainly because it does not address the Examiner’s rejection, we do not find Appellants’ argument that the rejection fails to address the limitation of “screwing a sensor support instrument to the posterior surface of a patient’s proximal femur” persuasive. Appellants next argue that the rejection is improper because “McGinley’s device is not ‘attached to the posterior, proximal portion of the patient’s femur.’” App. Br. 11; see also Reply Br. 3-5. Even if this argument were correct, it is of little consequence because the Examiner does not rely upon the device of McGinley in the rejection. As noted above, the Examiner makes it clear that the only thing relied upon in McGinley is the location of the placement of the sensor. We further note that, contrary to Appellants’ arguments, McGinley discloses that “[t]he use of multiple projections 50 provides a relatively firm engagement between alignment head 44 and femur 60,” which “limits the possibility that the position of alignment head 44 will shift relative to femur 60.” Col. 4, l. 64-col. 5, l. 1. We find it difficult to see how this disclosure in McGinley cannot be considered to disclose an affixed sensor. Appellants go on to argue that the fact that McGinley’s device is intended to be moved should cause the rejection to fail, but such an argument is not commensurate with the scope of the claims. See App. Br. 11, Reply Br. 6-7. Nothing in claim 1 requires that the sensor be permanently affixed or that it never be moved or removed throughout the procedure. The claim merely requires “screwing a sensor support instrument” to the bone and “securing a sensor to the sensor support instrument” and does not specify how long the sensor must remain secured. Appeal 2011-007776 Application 11/213,456 6 Appellants also argue that “merely because the McGinley and Cossette devices are instruments used in navigation-based surgical systems does not mean that a person of ordinary skill would automatically substitute one instrument for the other.” App. Br. 13. Again, such an argument does not address the rejection actually at hand, which is the use of Cossette’s device in the location disclosed in McGinley. The Examiner does not propose substituting McGinley’s device, but merely utilizes the teaching in McGinley that it is known, in a computer-assisted hip surgery, to place a sensor in the claimed location. Accordingly, in general, we do not find Appellants’ arguments persuasive because they do not address the actual rejection at hand. As such, we sustain the Examiner’s rejection of claim 1, and dependent claims 4 and 7-9, as unpatentable over Cossette and McGinley. Claim 2 Regarding claim 2, Appellant argues that “the rejection does not explain or discuss the additional elements recited in claim 2 or explain how McGinley and Cossette disclose attaching an instrument in the claimed location.” App. Br. 15. As the Examiner points out, however, “[a]ny of the lines 58a-j shown in fig. 3 are considered to be between the trochanters” such that it would meet the location language recited in claim 2. Ans. 8. Appellants’ response is merely to “maintain [that] the proposed combination fails to disclose fixing a surgical instrument to that specific location.” Reply Br. 8. Given the Examiner’s explicit finding that the locations shown in McGinley’s Figure 3 meet the claim language, we are not apprised of error based upon this argument. As such we sustain the rejection of claim 2. Appeal 2011-007776 Application 11/213,456 7 Claim 3 As with claim 2, the Examiner finds that “[t]he region defined in claim 3 is equally encompassed by the teaching of McGinley” via the disclosure shown in Figure 2. Ans. 8. As with claim 2, Appellants do not explain how this specific disclosure does not teach the location claimed in claim 3. Accordingly, we sustain the rejection of claim 3. Claims 10-12 Appellants rely on the arguments with respect to claim 1 in rebutting the rejection of claims 10-12 and provide no specific arguments as to why Stark does not teach the recitations at issue or why Stark is not properly combined with Cossette and McGinley. See App. Br. 19; Reply Br. 10. Accordingly, we are not persuaded of error in this rejection. DECISION For the above reasons, we AFFIRM the Examiner’s decision to reject claims 1-4 and 7-12. 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). AFFIRMED2 mls 2 See n.1 supra.