Ex Parte Cuellar et al

Board of Patent Appeals and Interferences

Aug 2, 2012

11251044 (B.P.A.I. Aug. 2, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/251,044 10/14/2005 Alberto D. Cuellar 29997/076 8052
29471 7590 08/02/2012
MCCRACKEN & FRANK LLC
311 S. WACKER DRIVE
SUITE 4950
CHICAGO, IL 60606
EXAMINER
MERENE, JAN CHRISTOP L
ART UNIT PAPER NUMBER
3733
MAIL DATE DELIVERY MODE
08/02/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ALBERTO D. CUELLAR,
AMIR SARVESTANI,
and YASHDEEP KUMAR
__________

Appeal 2011-007263
Application 11/251,044
Technology Center 3700
__________

Before ERIC GRIMES, JEFFREY N. FREDMAN, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a system
for osteotomy of a bone for joint arthroplasty. The Examiner rejected the
claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

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Statement of the Case
Background
“One current technique for precisely locating the osteotomy utilizes a
surgical navigation system that enables the surgeon to guide the surgeon’s
instruments and tools to the precise location necessary to make the
appropriate cuts” (Spec. 1 ¶ 0005). The Specification teaches a “system to
assist in the performance [of] an osteotomy of a bone for a joint
arthroplasty” (Spec. 3 ¶ 0010).
The Claims
Claims 34-37, 41, and 50-64 are on appeal. Claim 34 is representative
and reads as follows:
34. A system to assist in the performance of an
osteotomy of a bone for a joint arthroplasty comprising:
a surgical navigation system having a display;
a fixation plate that can be attached to the bone at a
location that will be removed during the osteotomy, the
fixation plate having a connection device;
a bone tracking device directly attached to the
fixation plate by a first docking structure, the bone
tracking device having a bone reference frame;
a cutting jig for the bone attached to the fixation
plate by the connection device and an angle adjustment
means for modifying an angle between the fixation plate
and the cutting jig, the cutting jig having a jig tracking
device directly attached to the cutting jig by a second
docking structure, the jig tracking device having a jig
reference frame; and
a fixation device to fix the cutting jig in place;
wherein the cutting jig can be adjusted into
position using the display and a previously determined
anatomical profile of the bone.

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The issues

A. The Examiner rejected claims 34, 35, 37, 41, 50-52, 54-58, and 60-63
under 35 U.S.C. § 103(a) as obvious over Ferrante,1 Carson,2 and Jascob3
(Ans. 3-6, 7-12, 13-15).
B. The Examiner rejected claim 36 under 35 U.S.C. § 103(a) as obvious
over Ferrante, Carson, Jascob, and Picard4 (Ans. 6).
C. The Examiner rejected claims 53, 59, and 64 under 35 U.S.C. § 103(a)
as obvious over Ferrante, Carson, Jascob, and Couture5 (Ans. 6-7, 12, 15-
16).
A. 35 U.S.C. § 103 over Ferrante, Carson, and Jascob
The Examiner finds that Ferrante teaches
a fixation plate that can be attached to the bone at a location
that will be removed during the osteotomy, the fixation plate
having a connection device . . . a cutting jig for the bone
attached to the fixation plate by the connection device and
an angle adjustment means for modifying an angle between
the fixation plate and the cutting jig . . . and a fixation device
to fix the cutting jig in place

(Ans. 3-4). The Examiner finds that “Ferrante also discloses the angle
adjusting means includes an[ ] adjustment screw . . . a length adjustment
means includes an adjustment screw that modifies the distance between the
plate and cutting jig” (Ans. 4).

1 Ferrante et al., US 5,275,603, issued Jan. 4, 1994.
2 Carson, C., US 2002/0198451 A1, published Dec. 26, 2002.
3 Jascob et al., US 2005/0085720 A1, published Apr. 21, 2005.
4 Picard et al., US 6,514,259 B2, issued Feb. 4, 2003.
5 Couture et al., US 2004/0039396 A1, published Feb. 26, 2004.
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The Examiner finds that Carson teaches a “surgical navigation system
with a display (#24) with a cutting jig . . . with a jig tracking device (#14)
directly attached to the jig via a second docketing structure where the
tracking device has a jig reference frame (see para 54-55, 66, where the
system uses a position sensor #16) wherein the surgical navigation system
can also determine the profile of a knee” (Ans. 5).
The Examiner finds it obvious to “modify the system of Ferrante to
include a surgical navigation system with a jig reference frame in view of
Carson . . . because the surgical navigation system generates a profile of the
knee and allows the surgeon to navigate and position instrumentation in
predicted positions or actual positions to effectively and efficiently repair a
knee joint” (Ans. 5).
Appellants contend that “there is no suggestion of any problem in the
prior art with the Ferrante cutting guide that would have suggested a need or
benefit to modifying the Ferrante cutting guide to also generate a profile of
the knee, as posited by the examiner” (App. Br. 9).
Appellants contend that “adding all of the extra surgical navigation
system and tracking technology would increase the cost of the system in
Ferrante, which would have made these changes unattractive to the person of
ordinary skill in the art and therefore teach away from the proposed
combination” (App. Br. 10).
Appellants contend that the “combination would still provide the same
mechanical cutting guide restraints based on the mechanical interaction of
the tibia and the cutting guide, but now it would be shown on a television
screen in addition to being able to see it directly” (App. Br. 11). Appellants
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contend that “in order to obtain any substantial benefit in view of the
substantial added costs, the Ferrante cutting guide would require a
substantial re-design and added complexity to fully realize the benefits of
such additions” (App. Br. 11).
Appellants contend that “[e]liminating the need to make a separate
attachment point reduces the number of incursions into the bone, which
reduces the number of structural incursions to the bone, stress points, and
possible infection points. This benefit of the claimed invention(s) provides a
significant improvement over the prior art that is both novel and not
obvious” (App. Br. 12).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Ferrante, Carson and Jascob render
the claims obvious?
Findings of Fact
1. Ferrante teaches “instrumentation for resecting a portion of the
proximal tibial surface during knee surgery” (Ferrante, col. 1, ll. 58-60).
2. Ferrante teaches a fixation element which includes a “ball
plunger assembly 38 extending from anterior surface 16 of guide block 14
mating with indents 48 formed in flange 49 of the guide means” (Ferrante,
col. 3, ll. 45-47).
3. Ferrante teaches that when “ball plunger assembly 38 engages
indents 48, the guide means is releasably locked in one of the five angular
positions” (Ferrante, col. 3, ll. 47-49).
4. Ferrante teaches an angle adjustment means where “angles are
selected to correspond to the predetermined angle of a tibial tray component;
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however, it will be understood that the angles could be arranged to
correspond to the angle of the particular tibial tray component being
implanted” (Ferrante, col. 3, ll. 57-61).
5. Figure 2 of Ferrante is reproduced below:

“FIG. 2 is an exploded perspective view of the tibial cutting guide”
(Ferrante, col. 2, ll. 30-31).

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6. Figure 11 of Carson is reproduced below:

“FIG. 11 shows a probe according to one embodiment of the present
invention being used to register a surgically related component for tracking
according to one embodiment of the present invention” (Carson 3 ¶ 0042).
7. Carson teaches that the
present invention is applicable not only for knee repair,
reconstruction or replacement surgery, but also repair,
reconstruction or replacement surgery in connection with
any other joint of the body as well as any other surgical or
other operation where it is useful to track position and
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orientation of body parts, non-body components and/or
virtual references such as rotational axes, and to display and
output data regarding positioning and orientation of them
relative to each other for use in navigation and performance
of the operation.

(Carson 1 ¶ 0010).
8. Carson teaches that “[c]omputing functionality 18 can process,
store and output on monitor 24 and otherwise various forms of data which
correspond in whole or part to body parts 10 and 12 and other components
for item 22” (Carson 5 ¶ 0059).
9. Carson teaches that the
[P]rocessing functionality correlates this position and
orientation information for each object with stored
information regarding the items, such as a computerized
fluoroscopic imaged file of a femur or tibia, a wire frame
data file for rendering a representation of an instrumentation
component, trial prosthesis or actual prosthesis, or a
computer generated file relating to a rotational axis or other
virtual construct or reference. The processing functionality
then displays position and orientation of these objects on a
screen or monitor, or otherwise.

(Carson 2 ¶ 0011).
10. Carson teaches that “[p]osition sensor 16, as mentioned above,
may be any sort of sensor functionality for sensing position and orientation
of fiducials 14 and therefore items with which they are associated, according
to whatever desired electrical, magnetic, electromagnetic, sound, physical,
radio frequency, or other active or passive technique” (Carson 4 ¶ 0057).
11. Carson teaches to “[r]egister tools, instrumentation and other
items to be used in surgery, each of which corresponds to a fiducial whose
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position and orientation can be tracked by the position/orientation sensors”
(Carson 2 ¶ 0016).
12. Carson teaches “[f]ixing cutting jigs to the body part at the
desired angle as calculated by the system” (Carson 2 ¶ 0022).
13. Carson teaches that three dimensional monitoring “systems and
processes allow, among other things, more accurate and effective resection
of bone, placement and assessment of trial implants and joint performance,
and placement and assessment of performance of actual implants and joint
performance” (Carson 1 ¶ 0002).
14. Jascob teaches a “surgical navigation system for navigating a
region of a patient [that] includes a non-invasive dynamic reference frame
and/or fiducial marker, sensor tipped instruments, and isolator circuits”
(Jascob 1 ¶ 0009).
15. Jascob teaches that
the bone plate 830 may include a tracking sensor 834 such
that a position of the bone plate 830 may be tracked.
Therefore, as with the IM [intramedullary] rod 808, the
screw 810 may be tracked relative to the bone plate 830 such
that the screw will pass through the bore 832 to allow for
fixation of the bone plate 830 relative to the bone 800 with
the screw 810.

(Jascob 31 ¶ 0330).
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).

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Analysis
Ferrante teaches a knee surgery system comprising a fixation plate
(FF 1, 2, 5), a cutting jib comprising an angle adjustment means and a
fixation device to fix the cutting jig in place (FF 3-4). Carson teaches a knee
surgical navigation system with a display (FF 7-8) and teaches incorporation
of position sensors and fiducials as bone tracking devices and jig tracking
devices (FF 11-12). Jascob also teaches tracking sensors for the bone plates
which are attached during surgery (FF 14-15).
Applying the KSR standard of obviousness to the findings of fact, we
conclude that an ordinary artisan would have reasonably found it obvious to
incorporate the position tracking devices and computer analysis of Carson
and Jascob into the knee surgery system of Ferrante since Carson teaches
that three dimensional monitoring “systems and processes allow, among
other things, more accurate and effective resection of bone, placement and
assessment of trial implants and joint performance, and placement and
assessment of performance of actual implants and joint performance”
(Carson 1 ¶ 0002; FF 13). Such a combination is merely a “predictable use
of prior art elements according to their established functions.” KSR, 550 U.S.
at 417.
Appellants contend that “there is no suggestion of any problem in the
prior art with the Ferrante cutting guide that would have suggested a need or
benefit to modifying the Ferrante cutting guide to also generate a profile of
the knee, as posited by the examiner” (App. Br. 9).
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We are not persuaded. The obviousness question is not whether
Ferrante specifically suggested a need to improve the surgical method since
in KSR, the Supreme Court rejected the rigid application of the teaching,
suggestion, and motivation test by the Federal Circuit, stating that
The principles underlying [earlier] cases are instructive
when the question is whether a patent claiming the
combination of elements of prior art is obvious. When a
work is available in one field of endeavor, design incentives
and other market forces can prompt variations of it, either in
the same field or a different one. If a person of ordinary skill
can implement a predictable variation, § 103 likely bars its
patentability.

550 U.S. at 417. The Examiner reasonably relies upon the “predictable
variation” rationale described by the Supreme Court, as quoted above, to
support the obviousness case. The Examiner demonstrates that the prior art
would have predictably employed the computerized surgical tracking
elements of Carson and Jascob with the device of Ferrante since Carson
provides a reason to combine, specifically teaching that the computerized
tracking elements allow “more accurate and effective resection of bone,
placement and assessment of trial implants and joint performance, and
placement and assessment of performance of actual implants and joint
performance” (Carson 1 ¶ 0002; FF 13).
Appellants contend that “adding all of the extra surgical navigation
system and tracking technology would increase the cost of the system in
Ferrante, which would have made these changes unattractive to the person of
ordinary skill in the art and therefore teach away from the proposed
combination” (App. Br. 10).
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We are not persuaded. A teaching away requires a reference to
actually criticize, discredit, or otherwise discourage the claimed solution.
See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s
mere disclosure of more than one alternative does not constitute a teaching
away from any of these alternatives because such disclosure does not
criticize, discredit, or otherwise discourage the solution claimed”).
Appellants do not identify, and we do not find, any teaching in the cited
references which teach away from the combination. Further, if there are
tradeoffs involved regarding features, costs, manufacturability, or the like,
such things do not necessarily prevent, or teach away from, the proposed
combination. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed.
Cir. 2006) (“a given course of action often has simultaneous advantages and
disadvantages, and this does not necessarily obviate motivation to
combine”).
Appellants contend that the “combination would still provide the same
mechanical cutting guide restraints based on the mechanical interaction of
the tibia and the cutting guide, but now it would be shown on a television
screen in addition to being able to see it directly” (App. Br. 11). Appellants
contend that “in order to obtain any substantial benefit in view of the
substantial added costs, the Ferrante cutting guide would require a
substantial re-design and added complexity to fully realize the benefits of
such additions” (App. Br. 11).
We are not persuaded. While Appellants contend that a substantial
redesign would be required, the evidence of record demonstrates that the
only required changes to the Ferrante device are the incorporation of
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fiducials and sensors for detection, along with computer monitoring, as
taught by Carson and Jascob (FF 6-14). This combination results in no
change in the basic principles of operation of any of the cited references, but
instead represents the “the predictable use of prior art elements according to
their established functions.” KSR, 550 U.S. at 417.
Appellants contend that “[e]liminating the need to make a separate
attachment point reduces the number of incursions into the bone, which
reduces the number of structural incursions to the bone, stress points, and
possible infection points. This benefit of the claimed invention(s) provides a
significant improvement over the prior art that is both novel and not
obvious” (App. Br. 12).
If Appellants are suggesting that there is an unexpected result,
Appellants have provided no evidence that the results are unexpected
relative to the closest prior art of Ferrante, Carson, and Jascob. No
comparison with the prior art is presented. See In re Baxter Travenol Labs.,
952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected results are used as
evidence of nonobviousness, the results must be shown to be unexpected
compared with the closest prior art.”).
Appellants contend that “[w]hen the claim is properly construed as a
whole, it is clear that the ‘attachment’ limitation is directly tied to the
structure of the claimed invention” (Reply Br. 5).
We are not persuaded. An intended use that merely states the purpose
of the claimed subject matter, without adding additional structure to it, is
generally not treating as limiting the scope of the claim. See Boehringer
Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345
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(Fed. Cir. 2003). In claim 34, the limitation of a fixation plate “that can be
attached to the bone at a location that will be removed during the osteotomy”
imposes no specific structural requirements on the structure of the fixation
plate. Instead, this limitation represents a method limitation in a product
claim. See, e.g., Catalina Marketing International, Inc. v. Coolsavings.com,
Inc., 289 F.3d 801, 810 (Fed. Cir. 2002) (“[D]isputed preamble language
does not limit Claim 1—an apparatus claim. To hold otherwise would
effectively impose a method limitation on an apparatus claim without
justification”).
Appellants contend that the applied reference do not suggest a bone
tracking device attached directly to a fixation plate and a jig tracking device
attached directly to the cutting jig (Reply Br. 6). This argument is not
persuasive because Carson (Fig. 11, FF 6) discloses separate fiducials
(tracking devices; elements 14) attached to the bone (element 10) and to a
surgical instrument (element 22), which would reasonably suggest the
disputed limitation to a person of ordinary skill in the art.
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that
Ferrante, Carson and Jascob render the claims obvious.
B. 35 U.S.C. § 103 over Ferrante, Carson, Jascob, and Picard
The Examiner relies upon Ferrante, Carson, and Jascob as discussed
above, and finds that “Picard discloses a similar device with a cutting jig . . .
with a plane probe . . . with a plane probe tracking apparatus . . . where the
plane probe is used to verify planar bone cuts” (Ans. 6). The Examiner finds
it obvious to “modify the combination of Ferrante, Carson and Jascob to
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include the plane probe with the tracking device in order to verify planar
bone cuts made” (Ans. 6).
The Examiner provides sound fact-based reasoning for combining
Picard with Ferrante, Carson, and Jascob. We adopt the fact finding and
analysis of the Examiner as our own. Appellants argue the underlying
obviousness rejection over Ferrante, Carson, and Jascob, but Appellants do
not identify any material defect in the Examiner’s reasoning for combining
Picard with Ferrante, Carson, and Jascob. Since Appellants only argue the
underlying rejection of Ferrante, Carson, and Jascob, which we affirmed
above, we affirm this rejection for the reasons stated by the Examiner.
C. 35 U.S.C. § 103 over Ferrante, Carson, Jascob, and Couture
The Examiner relies upon Ferrante, Carson, and Jascob as discussed
above, and finds that “Couture discloses the use of a tracking device (#16)
with a stem (#19) connected to a docking station, wherein the tracking
device can be selectively removed and attached to ensure the best visual
contact between the detectable elements and the cameras of the surgical
navigation system” (Ans. 7). The Examiner finds it obvious to “modify the
combination of Ferrante, Carson and Jascob to have the tracking devices to
be selectively removed in view of Couture because it allows one to move the
tracking devices to ensure the best visual contact between the detectable
elements and the cameras of the surgical navigation system” (Ans. 7).
The Examiner provides sound fact-based reasoning for combining
Couture with Ferrante, Carson, and Jascob. We adopt the fact finding and
analysis of the Examiner as our own. Appellants argue the underlying
obviousness rejection over Ferrante, Carson, and Jascob, but Appellants do
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not identify any material defect in the Examiner’s reasoning for combining
Couture with Ferrante, Carson, and Jascob. Since Appellants only argue the
underlying rejection of Ferrante, Carson, and Jascob, which we affirmed
above, we affirm this rejection for the reasons stated by the Examiner.
SUMMARY
In summary, we affirm the rejection of claim 34 under 35 U.S.C.
§ 103(a) as obvious over Ferrante, Carson, and Jascob. Pursuant to 37
C.F.R. § 41.37(c)(1), we also affirm the rejection of claims 35, 37, 41, 50-
52, 54-58, and 60-63 as these claims were not argued separately.
We affirm the rejection of claim 36 under 35 U.S.C. § 103(a) as
obvious over Ferrante, Carson, Jascob, and Picard.
We affirm the rejection of claims 53, 59, and 64 under 35 U.S.C.
§ 103(a) as obvious over Ferrante, Carson, Jascob, and Couture.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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