Ex Parte Park et al

Patent Trial and Appeal Board

Feb 28, 2017

11642385 (P.T.A.B. Feb. 28, 2017)

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.
11/642,385 12/19/2006 Ilwhan Park 065618-424002 1670
24030 7590 03/02/2017
POT STNFT T T PC
EXAMINER
900 West 48th Place SEVILLA, CHRISTIAN ANTHONY
Suite 900
KANSAS CITY, MO 64112-1895 ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
uspt@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ILWHAN PARK and CHARLIE W. CHI
Appeal 2015-002978
Application 11/642,3851
Technology Center 3700
Before MURRIEL E. CRAWFORD, BRUCE T. WIEDER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 21—26, 61—70, and 73—76. Claims 27—55, 71, and
72 are canceled; claims 56—60 are withdrawn. Appeal Br. (Claims App.).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 The Appellants identify Ostimed Corporation as the real party in interest.
Appeal Br. 3.
Appeal 2015-002978
Application 11/642,385
ILLUSTRATIVE CLAIM
61. A customized arthroplasty jig for facilitating an
arthroplasty procedure on a bone of a patient, the bone having a
joint region and a shaft extending away from the joint region,
the joint region having an associated surface of at least one of
cartilage or bone, the jig comprising:
a curvilinear jig surface configured to at least one of
align with or position on the associated surface in a customized
fashion, the curvilinear jig surface manufactured in a
customized configuration particular to the associated surface of
the patient; and
a positioning component being of a fixed unitary
construction with the curvilinear jig surface and configured to
contact the shaft when the curvilinear jig surface at least one of
aligns with or positions on the associated surface in the
customized fashion.
CITED REFERENCES
The Examiner relies upon the following references:
Halcomb, III et al.
(hereinafter “Halcomb”)
US 4,517,969 May 21, 1985
Dorsey US 6,132,447 Oct. 17, 2000
Lionberger et al. US 2004/0260301 Al
(hereinafter “Lionberger”)
Dec. 23, 2004
Roose US 2005/0148843 Al July 7, 2005
Burdulis, Jr. et al.
(hereinafter “Burdulis”)
US 2005/0234461 Al Oct. 20, 2005
Bertrand et al. EP 1 669 033 Al June 14, 2006
(hereinafter “Bertrand”)
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Application 11/642,385
REJECTIONS
I. Claims 21—26 and 69 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Burdulis and Dorsey.
II. Claims 61—64, 67, and 68 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Burdulis and Bertrand.
III. Claims 65 and 66 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Burdulis, Bertrand, and Roose.
IV. Claim 70 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Burdulis, Dorsey, and Halcomb.
V. Claims 73 and 74 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Burdulis, Dorsey, and Lionberger.
VI. Claims 75 and 76 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Burdulis, Lionberger, and Bertrand.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
The Appellants present no argument with regard to claims 21—26, 69,
73, and 74. We summarily sustain the rejection of these claims under 35
U.S.C. § 103(a).
The Appellants’ arguments are addressed, in turn, below.
The Appellants’ argument regarding the “positioning component
being of a fixed unitary construction with the curvilinear jig surface” is
persuasive of error, such that we do not sustain the rejection of independent
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Application 11/642,385
claims 61, 62, and claims 63—68 depending therefrom, under 35 U.S.C.
§ 103(a).
The Appellants’ other arguments are not persuasive of error.
Therefore, the rejection of claims 70, 75, and 76 under 35 U.S.C. § 103(a) is
sustained.
“positioning component
being of a fixed unitary construction
with the curvilinear jig surface ”
Independent claim 61 recites, among other features, “a positioning
component being of a fixed unitary construction with the curvilinear jig
surface.” Appeal Br. (Claims App.)
According to the Examiner, this limitation is met by combining
Burdulis’ surgical mold with the extending arm of Bertrand. See Final
Action 3^4; see also Answer 7.
The Appellants contend that the combination fails to achieve the
claimed subject matter, because the portion of Burdulis corresponding to the
“curvilinear jig surface” is made of deformable materials in a “block-like
shape” that are molded, during a surgical procedure. Appeal Br. 8 (citing
Burdulis H 51, 65). Therefore, rather than “being of fixed unitary
construction,” the identified combination would be moveable and variable.
Id. at 8—9.
The Answer clarifies that Bertrand’s extending arm is in “fixed
unitary construction” with Burdulis’ mold, “before . . . deforming the
mold/surface.” Answer 7.
Yet, as the Appellants argue, the Examiner’s analysis leads to a
conundrum. Before subjecting Burdulis’ device to the molding process, it
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Application 11/642,385
has a “block-like shape” and is not “curvilinear” as required by the claim
language. Reply Br. 2
Therefore, the Appellants’ argument is persuasive of error in the
rejection of independent claim 61 and, for the same or similar reasons,
independent claim 62. As to claims 63—68, depending from claim 61 or 62,
the Final Office Action identifies no reason for overcoming the deficiency of
the Burdulis-Bertrand combination discussed above. Accordingly, we also
do not sustain the rejection of dependent claims 63—68. See Appeal Br. 11—
12.
Propriety of Combining
the Burdulis and Bertrand References
The Appellants argue that there is no teaching, suggestion, or
motivation to combine Burdulis’ surgical mold with Bertrand’s extending
arm — a combination employed in rejecting independent claims 61, 62, 75,
and 76. Appeal Br. 10-11. Specifically, the Appellants assert that Burdulis
does not describe the surgical mold as being coupled with any other
component during intra-operative molding and that adding a component
(such as Bertrand’s extending arm) “appears to go against the teachings in
Burdulis.” Appeal Br. 11.
The Examiner’s position is that Bertrand provides a motivation for
coupling an extending arm to the Burdulis device — namely that of reducing
the number of degrees of freedom for changing position. Final Action 3^4;
Adv. Act. 2; Answer 7. Further, the Examiner finds that Burdulis, rather
than teaching away from being coupled with another component, actually
contemplates such modifications as the use of a metal insert in conjunction
with the mold. Answer 7—8 (citing Burdulis 145).
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Application 11/642,385
The Appellants’ argument is not persuasive of error in the rejection.
A reason for combining/modifying a reference may be provided by another
reference. Here, Bertrand’s use of the extending arm to form a contact
surface with the bone, thereby “reduc[ing] the number of degrees of freedom
for changing the position of the cutting guide 30 with respect to the three-
dimensional model of the bone 14” (Bertrand 142), may provide a reason
for the identified combination. Further, Burdulis contemplates the
connection of the mold to other components (see Burdulis 145) and,
therefore, does not criticize or discourage doing so, as teaching away
requires. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Adequacy of the Teachings
of the Dorsey and Halcomb References
21. A customized arthroplasty jig for use by a medical
professional in performing an arthroplasty procedure on a bone
of a patient, the bone including a non-resected condyle surface,
the jig comprising:
a jig body including a customized curvilinear surface
particular to the bone of the patient, the curvilinear surface
defining a space to receive at least a portion of the non-resected
condyle surface of the bone to allow the jig body to be
positioned proximate the non-resected condyle surface of the
bone,
wherein the arthroplasty jig is marked with identifying
information associated with at least one of the patient or
medical professional.
Claim 70 depends from independent claim 21, further describing
claim 21 ’s “arthroplasty jig” that is “marked with identifying information
associated with at least one of the patient or medical professional,” by
reciting:
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Application 11/642,385
wherein the identifying information is applied to the jig prior to
the jig being used by the medical professional in performing the
arthroplasty procedure on the patient.
Claim 70 stands rejected over the combination of Burdulis, Dorsey,
and Halcomb.
The Appellants contend that Dorsey, which discloses scissors labeled
with birth-related indicia, teaches patient-specific information, whereas
Halcomb, which discloses a gauge for measuring a limb to be fitted with a
prosthetic device, does not teach patient-specific information. Appeal Br. 7.
Further, the Appellants argue
Assuming in arguendo that the combination of Burdulis and
Dorsey describe the elements of claim 21, Halcomb does not
describe the remaining elements of claim 70 because a person
having ordinary skill in the art would not identify Halcomb as
teaching, suggesting, or motivating the application of such
patient-specific information, of Dorsey, to the jig, of Burdulis,
prior to the jig being used in performing the arthroplasty
procedure. Rather, a person having ordinary skill in the art
would identify Halcomb as merely teaching a prosthetic gauge
with size information marked along the ridge.
Id.
The Examiner’s position is that the size information of Halcomb may
be regarded as patient-specific, noting that the Specification says that
identifying information marked on a jig may include size information.
Answer 6 (citing Spec. 113); see also Adv. Act. 2. In addition, the Answer
states that the Appeal Brief misapprehends the rejection, which does not
modify Dorsey (as set forth on page 7 of the Appeal Brief); rather, Burdulis
is modified. Answer 6; see also Final Acton 4—5. Per the rejection,
Halcomb teaches identification information marked on a medical device for
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correlating appropriately sized prosthetics, thus teaching the claimed
marking. Final Action 4—5.
The Appellants’ argument is not persuasive of error in the rejection.
Regardless of whether Halcomb teaches the feature of base claim 21’s being
“marked with identifying information associated with at least one of the
patient or medical professional,” the Appellants do not dispute that Dorsey
does. Thus, the Appellants’ assertion that Halcomb is not patient-specific
(see Appeal Br. 7) does not point to any error. Further, as explained in the
Final Action, Halcomb teaches providing such marking in advance of a
procedure, e.g., fitting a prosthetic device. See Final Action 4—5.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 21—26, 69, 70,
and 73—76 under 35 U.S.C. § 103(a).
We REVERSE the Examiner’s decision rejecting claims 61—68 under
35 U.S.C. § 103(a).
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-IN-PART
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