Ex Parte Haddad

Patent Trial and Appeal Board

May 17, 2018

13609693 (P.T.A.B. May. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/609,693 09/11/2012 Said Haddad
23643 7590 05/21/2018
Barnes & Thornburg LLP (IN)
11 S. Meridian Street
Indianapolis, IN 46204
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
265280-222765 8440
EXAMINER
GILLIGAN, CHRISTOPHER L
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
05/21/2018 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 SAID HADDAD
Appeal2017-000106
Application 13/609,693 1
Technology Center 3600
Before TERRENCE W. McMILLIN, KARA L. SZPONDOWSKI, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-19, which constitute all of the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellant identifies itself, DePuy Synthes Products, Inc., as the real party
in interest. App. Br. 2.
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THE INVENTION
The disclosed and claimed invention is directed to "creat[ing] a
surgical plan for a patient of a healthcare facility that is external to the
vendor." Spec. ,-r 4. 2
Claims 1 and 10, reproduced below, are illustrative of the claimed
subject matter:
1. A method of a vendor to create a surgical plan for a patient
of a healthcare facility that is external to the vendor, comprising:
receiving, with a surgical plan system, a surgical plan
request transmitted from the healthcare facility, the surgical plan
request including (i) data relevant to the patient, (ii) data relevant
to a surgical procedure to be performed upon the patient, and (iii)
preference data that identifies surgical preferences related to the
surgical procedure of an orthopaedic surgeon,
generating, with the surgical plan system and based on the
surgical plan request, an order of customized surgical procedure
instructional images that define surgical steps of the surgical
procedure, the surgical steps including at least one intermediate
surgical step,
creating, in response to receiving the surgical plan request,
a surgical plan on the surgical plan system, the surgical plan
having been customized for the patient per data of the surgical
plan request and including (i) the order of customized surgical
procedure instructional images defining the surgical steps of the
surgical procedure and (ii) a plurality of instructions that
configure a computer assisted surgery system to intraoperatively
assist in the surgical procedure upon the patient,
2 We refer to the Specification filed Sept. 11, 2012 ("Spec."); Final Office
Action mailed Sept. 4, 2015 ("Final Act."); Appeal Brief filed Mar. 3, 2016
("App. Br."); Examiner's Answer mailed July 27, 2016 ("Ans."); and the
Reply Brief filed Sept. 27, 2016 ("Reply Br.").
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sending, from the surgical plan system, the surgical plan
to the healthcare facility for execution during the surgical
procedure, and
executing the surgical plan on the computer assisted
surgery system to configure a display and a number of other
devices of the computer assisted surgery system during the
surgical procedure upon a patient, the number of other devices
including a computing device and a plurality of sensors operable
to provide data to the computing device during the surgical
procedure.
10. A method of a vendor to create a surgical plan for a patient
of a healthcare facility that is external to the vendor, comprising:
generating an order of customized surgical procedure
instructional images that define surgical steps of a surgical
procedure based on (i) data relevant to a patient, (ii) data relevant
to a surgical procedure to be performed upon the patient, and (iii)
preference data that identifies surgical preferences related to the
surgical procedure of an orthopaedic surgeon, wherein the
surgical steps include at least one intermediate surgical step,
creating a customized surgical plan including (i) the order
of customized surgical procedure instructional images and (ii) a
plurality of instructions that configure a computer assisted
surgery system including a display and a number of other devices
to intraoperatively assist in the surgical procedure upon the
patient, the number of other devices including a computing
device and a plurality of sensors operable to provide data to the
computing device during the surgical procedure,
sending the surgical plan via a network to the healthcare
facility for execution during the surgical procedure, and
executing the surgical plan on the computer assisted
surgery system during the surgical procedure upon a patient to
configure the computer assisted surgery system to assist during
the surgical procedure.
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REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Marquart et al. US 2005/0281465 Al Dec. 22, 2005
(hereinafter
"Marquart")
Metzger et al. US 2007 /0288030 Al Dec. 13, 2007
(hereinafter
"Metzger")
Penney et al. US 2009/0089034 Al Apr. 2, 2009
(hereinafter "Penney")
REJECTIONS
Claims 1-19 stand rejected under 35 U.S.C. § 101 because the claims
are directed to patent-ineligible subject matter. Final Act. 2.
Claims 10-12, 16, 17, and 19 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Penney and Metzger. Final Act. 4.
Claims 15 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Penney, Metzger, and Marquart. Final Act. 8-9.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellant. We
are not persuaded by Appellant's arguments.
Section 101 Rejection
The Alice/Mayo Framework Governing Patent-Eligible Subject Matter
Patent-eligible subject matter is defined in § 101 of the Patent Act,
which recites: "Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and useful
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improvement thereof, may obtain a patent therefor, subject to the conditions
and requirements of this title."
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in § 101: laws of nature, natural
phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134
S. Ct. 2347, 2354 (2014); Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70-71 (2012). Although an abstract idea itself is patent-
ineligible, an application of the abstract idea may be patent-eligible. Alice,
134 S. Ct. at 2355. Thus, we must consider "the elements of each claim both
individually and 'as an ordered combination' to determine whether the
additional elements 'transform the nature of the claim' into a patent-eligible
application." Id. (citing Mayo, 566 U.S. at 79). The claim must contain
elements or a combination of elements that are "sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[abstract idea] itself." Id. (citing Mayo, 566 U.S. at 79).
The Supreme Court set forth a two-part "framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts." Id. at
2355.
First, we determine whether the claims at issue are
directed to one of those patent-ineligible concepts. [Mayo,] 132
S. Ct., at 1296-1297. If so, we then ask, "[w]hat else is there in
the claims before us?" Id., at--, 132 S. Ct., at 1297. To
answer that question, we consider the elements of each claim
both individually and "as an ordered combination" to determine
whether the additional elements "transform the nature of the
claim" into a patent-eligible application. Id., at--, 132 S.
Ct., at 1298, 1297. We have described step two of this analysis
as a search for an "'inventive concept"'-i.e., an element or
combination of elements that is "sufficient to ensure that the
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Id.
patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself." Id., at--, 132 S. Ct., at
1294.
"The 'abstract idea' step of the inquiry calls upon us to look at the
'focus of the claimed advance over the prior art' to determine if the claim's
'character as a whole' is directed to excluded subject matter." Affinity Labs
of Tex. v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016)); see also Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed.
Cir. 2016). There is no definitive rule to determine what constitutes an
"abstract idea." Rather, the Federal Circuit has explained that "both [it] and
the Supreme Court have found it sufficient to compare claims at issue to
those claims already found to be directed to an abstract idea in previous
cases." Enfzsh, 822 F.3d at 1334; see also Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (explaining that, in
determining whether claims are patent eligible under § 101, "the decisional
mechanism courts now apply is to examine earlier cases in which a similar
or parallel descriptive nature can be seen-what prior cases were about, and
which way they were decided").
Under the second step of the Alice/Mayo framework, we examine the
claim limitations "more microscopically," Elec. Power, 830 F.3d at 1354, to
determine whether they contain "additional features" sufficient to
"'transform the nature of the claim' into a patent-eligible application."
Alice, 134 S. Ct. at 2355, 2357 (quoting Mayo, 566 U.S. at 78). "Mere
recitation of concrete, tangible components is insufficient to confer patent
eligibility to an otherwise abstract idea. Rather, the components must
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involve more than performance of well-understood, routine, conventional
activit[ies] previously known to the industry." In re TL! Commc 'ns LLC
Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016) (citing Alice, 134 S. Ct. at
2359) (internal quotation marks omitted).
Abstract Idea
The Examiner concludes the claims are directed to the abstract idea of
"using categories to organize, store, and transmit information because the
claims are directed to receiving and sending information and using surgical
plan categories to organize images and instructions." Final Act. 2-3. The
Examiner further determines the claims are similar to those found to be
abstract in Cybeifone System, LLC v. CNN Interactive Group., Inc., 558 F.
App'x 988 (Fed. Cir. 2014). Ans. 3.
Appellant argues the Examiner has not related the abstract idea to the
limitations of claim 1. App. Br. 7. Specifically, Appellant argues the claims
are "directed to more than merely using categories to organize, store, and
transmit data," because the claims also "require[] generating new,
customized content (e.g., customized images) and executing certain parts of
the new, customized content (e.g., customized surgical plans) on a specific
type of system" and "do not risk preempting the stated abstract idea." Id.
Appellant further argues the claims are "not directed toward an
abstract idea because the claims recite a technological solution to a
technological problem," specifically "a technological solution to get patient-
specific information and vendor-specific information into the operating and
configuring a computer assisted surgery system based on that information."
App. Br. 8 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
(Fed. Cir. 2014)). Appellant contends the claims are directed "to a tangible
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outcome of getting patient-specific information and vendor-specific
information into the operating room, configuring a computer assisted
surgery system based on that information, and then performing the surgery
using that system." Reply Br. 3.
We are not persuaded by Appellant's arguments that the Examiner
erred. The Examiner applies the "two-part framework from Alice Corp. and
Mayo," and identifies the abstract idea using categories to organize and
transmit information, citing to Cybeifone. See Ans. 3--4. As identified by
the Examiner, claim 1 's steps can be identified as using categories to
transmit information (receiving a surgical plan request including categories
of information such as patient data, and sending the categorized surgical
plan) and using categories to organize information (using the received
categories of information such as patient data to create a categorized surgical
plan with ordered instructional images and instructions, and executing the
categorized surgical plan by displaying the ordered images). See Ans. 3--4.
A method of "using categories to organize, store, and transmit information is
well-established ... the idea of collecting information in classified form,
then separating and transmitting that information according to its
classification, is an abstract idea that is not patent-eligible." Cyberfone, 558
F. App'x at 992.
With regard to Appellant's preemption argument, although the extent
of preemption is a consideration, the absence of complete preemption is not
dispositive. See, e.g., Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015) ("While preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility."); Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1346
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(Fed. Cir. 2013) ("[T]he Supreme Court has stated that, even if a claim does
not wholly pre-empt an abstract idea, it still will not be limited meaningfully
if it contains only insignificant or token pre- or post-solution activity- such
as identifying a relevant audience, a category of use, field of use, or
technological environment.") (citations omitted), vacated and remanded,
WildTangent, Inc. v. Ultramercial, LLC, 134 S. Ct. 2870 (2014) (remanding
for consideration in light of Alice, 134 S. Ct. 2347). Accordingly, even if the
claims does not preempt the abstract idea, that alone is not enough to render
the claims patent-eligible.
Moreover, we disagree with Appellant that the claims in this case are
directed to a computer-centric problem similar to that in DDR. In DDR, the
Court found that the claims "do not merely recite the performance of some
business practice known from the pre-Internet world along with the
requirement to perform it on the Internet. Instead, the claimed solution is
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks." DDR, 773 F.3d at
1257. Unlike the claims in DDR, we agree with and adopt the Examiner's
determination that the claims in this case are merely adopting a pre-existing
business practice for use with computer technology, and that "[ w ]hile the
claims are directed to a process that is performed on a computer, they are not
directed to a business challenge that is particular to the Internet." Ans. 4--5.
Accordingly, we agree with the Examiner that the claims are directed
to an abstract idea.
Significantly More
The Examiner determines that the claims do not include additional
elements that are sufficient to amount to significantly more than the judicial
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exception because the additional elements "amount to no more than generic
computer components that serve to merely link the abstract idea to a
particular technological environment (i.e., surgical plan system, computer
device, sensors)." Final Act. 3. The Examiner further determines the
additional elements function to "perform[] routine and conventional
activities that are well-understood in the healthcare industry (i.e., storing
information, associating information, obtaining information, transmitting
information, matching information, and making available information)." Id.
The Examiner also determines the claims "fail to provide a technical
solution to any network or Internet-centric challenges" and "the ordered
combination of limitations do not amount to significantly more than the
abstract idea." Ans. 5.
Appellant argues the claims "include significantly more than an
abstract idea because the claims recite generating new images," which are
tangible products of the process recited in claim 1. App. Br. 9--10.
Appellant further argues the claims recite "executing the surgical plan on the
computer assisted surgery system," which "amounts to more than a
recitation of a generic computer structure." App. Br. 10-11; see Reply Br.
5. Specifically, Appellant argues the claimed computer assisted surgery
system "is a specialized system that includes specific components, such as
certain sensors, that are not part of generic computer structure." App. Br.
11.
We are not persuaded by Appellant's argument that the Examiner
erred. According to Appellant's Specification, the claimed "sensors or
reference arrays 104 ... may be coupled to relevant bones of a patient 106
and/or with orthopaedic surgical tools 108," and they may help to determine
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the identity or the position of the tibia. Spec. i-f 41. This non-limiting
example of "sensors" in the Specification describes generic sensors as they
are used in medicine and related to patients rather than any specialized
sensor.
As discussed above, we disagree with Appellant that the claims in this
case are directed to a computer-centric problem. Unlike the claims in DDR,
we agree with and adopt the Examiner's determination that the claims in this
case are merely adopting a pre-existing business practice for use with
computer technology. Ans. 4--5; see DDR, 773 F.3d at 1257.
Instead of DDR, this case is similar to Electric Power, in which our
reviewing court found the claims patent-ineligible because "[t]he claims at
issue do not require any nonconventional computer, network, or display
components, or even a 'non-conventional and non-generic arrangement of
known, conventional pieces,' but merely call for performance of the claimed
information collection, analysis, and display functions 'on a set of generic
computer components' and display devices." Elec. Power Group, LLC v.
Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (citing BASCOM Global
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349-52 (Fed.
Cir. 2016) ). Similarly, the claims in this case merely recite the use of
generic computer components to organize and transmit data in a surgical
system (computing device) and supply data (sensors). See Ans. 6 (the
claimed "'sensors' only supply data" which fail "to provide any meaningful
limitations to transform the claims into patent eligible subject matter.").
Appellant also argues the claims "recite generating new images."
App. Br. 9; see Reply Br. 4. According to Appellant, the claim, as supported
by Appellant's Specification, requires customized images that are "new and
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unique to each individual patient" be generated as "tangible products of the
process recited in claim 1," and the "generation of such images links the
claimed solution to the production of a concrete, tangible object, i.e., the
creation of customized digital images for use by a surgeon." App. Br. 10
(citing Digitech Image Techs. LLC v. Elecs.for Imaging, Inc., 758 F.3d
1344, 1351 (Fed. Cir. 2014)).
We are not persuaded by Appellant's argument that the Examiner
erred. We agree with the Examiner's determination that the claims "are not
drawn to an image generating process." Ans. 6. We agree with the
Examiner that the claim reciting "generating ... an order of customized
surgical procedure instructional images" requires that "only the order of
images" is generated, which "encompasses a step of taking a series of
preexisting images and placing them in an order." Ans. 5.
Appellant further argues, with respect to claim 14, that the claimed
"determining an identity of a surgical instrument with the computing device"
amounts to significantly more than the abstract idea of "using categories to
organize, store, and transmit information," because "identifying specific
surgical instruments in an operating room lies far outside the scope of
merely organizing, storing, and transmitting data." App. Br. 12.
We are not persuaded by Appellant's argument. We agree with the
Examiner's determination that the claimed "identifying surgical instruments
in an operating room" is a "function that is routinely performed by surgeons
during surgical procedures." Ans. 7. This claim limitation merely invokes
computer functionality to do what a human might do mentally, similarly to
the claims found to be abstract in SmartGene Inc. v. Advanced Biological
Laboratories SA, 555 F. App'x 950 (Fed. Cir. 2014) (holding "section 101
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did not embrace a process defined simply as using a computer to perform a
series of mental steps that people, aware of each step, can and regularly do
perform in their heads").
Accordingly, we sustain the Examiner's rejection of claims 1 and 14
as being unpatentable by being directed to patent-ineligible subject matter,
as well as the remaining claims 2-13 and 15-19, not separately argued. See
App. Br. 13-17; see also Reply Br. 5---6.
Section 103 Rejections
Claims 10-12, 15, and 17-19
Appellant contends Penney does not teach the claimed "generating an
order of customized surgical procedure instructional images" and "creating a
customized surgical plan including (i) the order of customized surgical
procedure instructional images." App. Br. 18-20. Specifically, Appellant
argues claim 10 requires "both generating customized images and putting
those customized images in a particular order," and particularly "that
customized surgical procedure instructional images are generated before
they are put in an order." App. Br. 18. According to Appellant, Penney
only teaches a computing system that displays various images, but not "that
the customized images be generated and placed in a customized order."
App. Br. 19; Reply Br. 8. Appellant further argues that, since Penney and
Metzger "do not teach or suggest anything about customized surgical
procedure instructional images, it follows that the references cannot teach
creating a surgical plan that includes such customized images." App. Br. 20.
During examination of a patent application, a claim is given its
broadest reasonable construction "in light of the specification as it would be
interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech
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Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (internal citations and quotations
omitted). There is a presumption that a claim term carries its ordinary and
customary meaning. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
Cir. 2007). An applicant may rebut this presumption, however, by acting as
his own lexicographer, providing a definition of the term in the specification
with "reasonable clarity, deliberateness, and precision." See In re Paulsen,
30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition,
limitations are not to be read from the specification into the claims. In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). "[A]lthough the
specification often describes very specific embodiments of the invention, we
have repeatedly warned against confining the claims to those
embodiments .... [C]laims may embrace 'different subject matter than is
illustrated in the specific embodiments in the specification."' Phillips v.
AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en bane) (citations
omitted).
Claim 10 does not recite first generating the customized surgical
procedure instructional images and then putting those images in order.
Rather, the claim recites "generating an order of customized surgical
procedure instructional images that define surgical steps" and "creating a
customized surgical plan including (i) the order of customized surgical
procedure instructional images" (emphasis added), which requires only
generating an order of images and creating a surgical plan including the
generated order of images. Accordingly, applying the broadest reasonable
construction, we agree with the Examiner's interpretation that the claimed
generating an order of images "encompasses creating an order of images that
have already been created." Ans. 7. Because Appellant's arguments are not
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commensurate with the scope of the claims, they are unpersuasive. See In re
Self, 671F.2d1344, 1348 (CCPA 1982).
We agree with the Examiner's findings that Penney "clearly teaches
executing a surgical plan on a computer assisted surgery system during a
surgical procedure to display a series of instructional images in a particular
order." Ans. 7 (citing Penney i-f 79). We also agree with the Examiner's
findings that Penney "teaches generating 'surgical planning information
which is customized to reflect the patient's actual anatomy." Ans. 8 (citing
Penney i-f 82). As cited by the Examiner (Final Act. 4--5; Ans. 7-8), Penney
teaches:
Computing system 322 includes various software applications
which can be used by a surgeon to carry out a computer aided or
assisted surgical procedure, such as an image guided surgical
procedure, and can display various images of the patient and the
various surgical implants, tools and instruments used by the
surgeon together with visual indications of the current positions
of those items and their planned positions.
Penney i-f 79. In other words, Penney teaches a computer assisted surgery
system that creates a surgical plan including generating an order of images
and includes that generated order of images in a customized surgical plan
(display of images of the patient and visual indications of the current and
planned positions of items). Appellant has not persuasively argued why
Penney's display of images and visual indications, for an image guided
computer assisted surgical procedure, including positions of various surgical
implants, tools, and instruments, does not teach the claimed creating a
customized surgical plan including a generated order of customized surgical
procedure instructional images.
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Appellant further contends Metzger teaches transmitting a surgical
plan for review by a surgeon and "not for execution during the surgical
procedure." App. Br. 21; see Reply Br. 9. Specifically, Appellant argues
Metzger' s teaching that the sterilized alignment guides be shipped to the
surgeon or medical facility for use during a surgical procedure also does not
teach the claimed "sending the surgical plan via a network to the healthcare
facility for executing during the surgical procedure." App. Br. 21 (citing
Metzger i-f 40).
Appellant's argument against Metzger, separate from Penney, does
not persuasively rebut the combination made by the Examiner. One cannot
show non-obviousness by attacking references individually, where the
rejections are based on combinations of references. In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425
(CCPA 1981).
Specifically, we agree with the Examiner's finding that Metzger
teaches sending the surgical plan via a network to a healthcare facility for
execution, and Penney teaches executing the surgical plan on the computer
assisted surgery system during the surgical procedure. Final Act. 6 (citing
Metzger i-f 38); Final Act. 5 (citing Penney i-fi-178-79).
For example, Metzger discloses an "initial surgical plan, in a
computer file form associated with interactive software, can be sent to the
surgeon, or other medical practitioner, for review" and the "surgeon can
send the final, approved plan to the manufacturer." Metzger i-f 38. In other
words, Metzger teaches transmitting and receiving surgical plan data over a
network. Penney teaches executing the surgical plan during the surgical
procedure. See Penney i-f 79 ("various software applications which can be
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used by a surgeon to carry out ... an image guided surgical procedure, and
can display ... visual indications of the current positions of those items and
their planned positions").
Appellant does not provide persuasive evidence or argument that
Metzger does not teach "sending the surgical plan via a network to the
healthcare facility" and that Penney does not teach the surgical plan is "for
execution during the surgical procedure." Thus, we agree with the
Examiner's finding that Metzger's sending of the surgical plan in a file form
teaches sending a surgical plan via a network and Penney's carrying out of
an image guided surgical procedure using visual indications of current and
planned positions of surgical items, as required by claim 10.
With regard to claim 17, Appellant also argues Penney's tracking
system does not teach the claimed "executing the surgical plan on the
computer assisted surgery system to configure a number of other devices of
the computer assisted surgery system during the surgical procedure." App.
Br. 27. We are not persuaded by Appellant's argument that the Examiner
erred.
We agree with the Examiner's finding that Penney teaches executing
the surgical plan including customization. As cited by the Examiner (Final
Act. 7), Penney teaches executing a surgical plan during a surgical procedure
including current and planned positions for surgical items. See Penney i-f 79
("various software applications which can be used by a surgeon to carry out
... an image guided surgical procedure, and can display ... visual
indications of the current positions of those items and their planned
positions"). Appellant has not persuasively argued why Penney's current
and planned positions for surgical items does not teach or otherwise suggest
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the configuring and customizing of surgical devices when executing a
surgical plan, as required by claim 1 7.
Accordingly, we sustain the Examiner's rejection of independent
claims 10 and 17, along with dependent claims 11, 12, 15, 18, and 19, which
are not argued separately. See App. Br. 22, 27-29.
Claim 16
Appellant contends that Penney only teaches "tracking items using a
tracking subsystem," but does not teach the claimed "determining an identity
of a surgical instrument with the computing device." App. Br. 23; Reply Br.
9.
We are not persuaded by Appellant's argument that the Examiner
erred. We agree with the Examiner's findings that Penney teaches the
system is configured, and specifically that Penney's "displaying surgical
instruments by a computing device" teaches the claimed determining
because "one way of determining an identity of a surgical instrument is by
displaying an image of it." Ans. 10 (citing Penney i-f 79); Final Act. 7 (citing
Penney i-fi-178-79).
As cited by the Examiner (Final Act. 7; Ans. 10), Penney teaches
displaying images and visual indications of the various surgical implants,
tools, and instruments. See Penney i-f 79 ("display various images of the
patient and the various surgical implants, tools and instruments used by the
surgeon together with visual indications of the current positions of those
items and their planned positions").
Appellant has not persuasively argued why Penney's display of the
positions of the tools and tracking of the tools does not teach the claimed
determining the identity of the displayed and tracked tools.
18
Appeal2017-000106
Application 13/609,693
Accordingly, we sustain the Examiner's rejection of dependent claim
16.
DECISION
The Examiner's rejection of claims 1-19 under 35 U.S.C. § 101 is
affirmed.
The Examiner's rejections of claims 10-12 and 15-19 under 35
U.S.C. § 103 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)(l )(iv). See 37
C.F.R. § 41.50(±).
AFFIRMED
19