Ex Parte Roose

Board of Patent Appeals and Interferences

Nov 2, 2011

10748316 (B.P.A.I. Nov. 2, 2011)

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.
10/748,316 12/30/2003 Jeffrey Robert Roose 1671-0286 8025
7590 11/02/2011
Maginot, Moore & Beck LLP
Chase Tower
111 Monument Circle, Suite 3250
Indianapolis, IN 46204-5109
EXAMINER
LAURITZEN, AMANDA L
ART UNIT PAPER NUMBER
3737
MAIL DATE DELIVERY MODE
11/02/2011 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 JEFFREY ROBERT ROOSE
____________________

Appeal 2010-002652
Application 10/748,316
Technology Center 3700
____________________

Before: WILLIAM F. PATE, III, EDWARD A. BROWN, and WILLIAM
V. SAINDON, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-002652
Application 10/748,316
2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-15 and 17-21. Br. 2. We have jurisdiction under
35 U.S.C. § 6(b). Claim 1, reproduced below, is illustrative of the claimed
subject matter.
1. A method for designing a surgical guide for a joint
replacement prosthesis comprising:
generating a bone surface image from three dimensional
bone image data of a patient's bone;
generating a surgical guide image from the bone surface
image and an image of a prosthetic implant imposed on the
bone surface image; and
generating control data from the generated surgical guide
image, the control data being used to control operation of a
machine to fabricate a surgical guide.

References
The Examiner relies upon the following prior art references:
Carson
Lang
Dore
US 2002/0147455 A1
US 2003/0216669 A1
US 2003/0236473 A1
Oct. 10, 2002
Nov. 20, 2003
Dec. 25, 2003

Rejections1
I. Claims 15 and 17-21 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement.
II. Claim 18 is rejected under § 112, first paragraph, as based on a
disclosure that is not enabling.

1 The Examiner additionally objects to claim 18 and the drawings. Ans. 3.
We do not have jurisdiction over objections. See In re Mindick, 371 F.2d
892, 894 (CCPA 1967). See Manual of Patent Examining Procedure
(MPEP) §§ 1002 and 1201.
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III. Claims 1-7 and 8-14 are rejected under § 103(a) as unpatentable over
Lang and Dore.
IV. Claims 15 and 17-21 are rejected under § 103(a) as unpatentable over
Carson.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

OPINION
Rejection I – Written Description
Claim 15 requires a step of “determining changes in the surface of the
bone using the received positional data.” The Examiner found that this
feature is not found in the Specification, and to the extent that using
positional data to determine movement of a tip of a reference pointer is
described, this does not encompass “determining changes in the surface of
the bone using the received positional data.” Ans. 3-4 (emphasis added).
Appellant argues that pages 18 and 19 of the Specification provide support
for the claimed feature. Br. 10-11.
“[T]he test for sufficiency [of written description] is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date.” Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336,
1351 (Fed. Cir. 2010). This test “requires an objective inquiry into the four
corners of the specification from the perspective of a person of ordinary skill
in the art.” Id. “Based on that inquiry, the specification must describe an
invention understandable to that skilled artisan and show that the inventor
actually invented the invention claimed.” Id. This inquiry is a question of
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fact. Id. (citing Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570,
1575 (Fed. Cir. 1985)).
The Specification states that registration module 214 “receives
positional data from the reference pointer 208” and “correlates a position
corresponding to the positional data to a point on the surface of the
volumetric image.” Spec. 18:21-23. Next, “[a]s bone is removed, the
registration module 214 determines that the surface points of the volumetric
data are changing.” Spec. 19:11-13. Notably, the Specification does not
specify any particular manner by which the registration module 214
determines that surface points are changing. Appellant does not explain why
one of ordinary skill in the art would nevertheless necessarily understand
that the registration module 214 determines changes in the surface of the
bone using positional data, in particular. While it may be said that if the
position sent from the probe was within an area previously understood to be
bone, then that portion of the bone must have been removed, the
Specification does not provide any evidence that this was considered to be a
part of the invention. See Lockwood v. Am. Airlines, Inc., 107 F.3d 1565,
1572 (Fed. Cir. 1997) (“it is not a question of whether one skilled in the art
might be able to construct the patentee’s device from the teachings of the
disclosure [but] whether the application necessarily discloses that particular
device”) (internal citation and quotation omitted). Accordingly, we find that
the Specification, as originally filed, does not reasonably convey to one of
ordinary skill in the art that the inventors had in possession at the time of
invention a registration module that determines changes in the surface of the
bone using received positional data from a reference pointer.
Claim 21 depends from claim 15 and further requires that the
registration module is “configured to identify the portion of a bone
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remaining to be excised” as in claim 15, i.e., “based upon the received
positional data.” The Examiner found that this feature is not described in the
Specification. Ans. 4. Appellant argues that, like claim 15, the support for
claim 21 is found in pages 18 and 19 of the Specification. Br. 12-14.
As is the case for claim 15, the Specification likewise does not
describe determining what portion of a bone remains to be excised based
upon the received positional data. Instead, the Specification merely states
that the image depicts what remains to be removed (see Spec., 19:13-16), but
the Specification does not link that image with the reference pointer.
Appellant does not point to any other purported errors in Rejection I.
As such, we sustain the Examiner’s 35 U.S.C. § 112, first paragraph,
rejection of claims 15 and 17-21 as lacking written description.

Rejection II - Enablement
Claim 18 depends from claim 15 and requires that the reference
pointer is “an articulating arm with positional gyros mounted at pivotal
joints of the articulating arm.” The Examiner found that the claim does not
have an enabling disclosure. Ans. 4. In particular, the Examiner found that
“the phraseology is not conventional in the art and the feature is not depicted
in the drawings so it is therefore not enabled by the disclosure.” Id.
Appellant provides evidence to support their position that articulated arms
and positional gyros were known in the art, and thus the claim is supported
by an enabling disclosure. Br. 8-9.
The enablement requirement seeks to assure that a person skilled in
the art can make and use the invention without undue experimentation. In re
Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). While the arm may not be in
the drawings, if arms (as claimed) are well-known, then the arm need not be
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shown in the drawings or described in any other portion of the Specification,
subject to written description requirements. See Hybritech, Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986) (“a
patent need not teach, and preferably omits, what is well known in the art.”)
(citing Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick, 730
F.2d 1452, 1463 (Fed. Cir. 1984)); see also Spec. 18:11-14 (describing “an
articulating arm having positional gyros at each arm joint”). The Examiner
does not make any findings as to whether the articulated arm would require
undue experimentation to be made in the manner required by claim 18. On
the other hand, Appellant has provided evidence suggesting that articulated
arms are known in the art. See, e.g., Br. 8-9. As such, the Examiner has not
shown that articulated arms are not well known in the art.
The Examiner additionally finds the phraseology of claim 18
“unconventional,” but it is unclear as to how this, if true, would require
undue experimentation to make or use the device of claim 18. Instead, the
Examiner’s reasoning appears to be an argument related to the definiteness
requirement of 35 U.S.C. § 112, second paragraph.
The Examiner has not shown how it would require undue
experimentation to make or use the subject matter of claim 18 because the
Examiner has not shown how the subject matter of claim 18 correlates to any
of the Wands factors. As such, we do not sustain Rejection II.

Rejection III – Obviousness in view of Land and Dore
The Examiner rejects independent claims 1 and 8 as obvious in view
of the Lang and Dore systems. Ans. 4-5. Claims 1 and 8 require, in relevant
part, a step of, or system for, “generating a surgical guide image from the
bone surface image and an image of a prosthetic implant.” The Examiner
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found that Lang teaches this element of these claims. Ans. 4-5 (citing to
Lang, paras. [0028], [0030]). Appellant raises the dispositive issue of
whether Lang describes or suggests this element. Br. 21.
The Examiner notes that “surgical guide” is a broad limitation that
reads on various tools or models. Ans. 8-9. However, claims 1 and 8
specifically require that a surgical guide be generated using (1) the bone
surface image and (2) the prosthetic implant image. It is the Examiner’s
burden to provide the factual basis showing how the Lang and Dore
references render obvious the claimed surgical guide. In re Warner, 379
F.2d 1011, 1016-17 (CCPA 1967).
Reviewing the Examiner’s citations, we do not find a teaching in Lang
regarding a surgical guide generated from both bone surface and prosthetic
implant images. Paragraphs 28 and 30 discuss bone surface and prosthetic
implant images, but do not discuss generating a surgical guide image from
those images. The Examiner’s position that the image itself is the surgical
guide (see, e.g., Ans. 8, “the anatomical models themselves being
encompassed by [the] ‘surgical guide’”) is not accurate because the
anatomical model is, at best, an image of the bone surface and prosthetic
implant, not an image generated from those images. See, e.g., Lang, paras.
[0062], [0067], [0085], [0087] (describing images of bones and ways to
acquire the images), [0100]-[0103] (describing the shape of the prosthetic as
determined by the shape of the bone). Lang discusses creating surgical tools
from bone images at paragraph [0173] et seq., but the shape or configuration
of the surgical tool is based on the image of the joint, not the image of the
joint and an image of a prosthetic. The Examiner does not explain if or why
it would have been obvious to modify the Lang surgical tool creation system
(e.g., at paragraph [0173] et seq.) to create an image of the tool using both
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Application 10/748,316
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prosthetic and bone images. Accordingly, we do not sustain Rejection III
because the Examiner has not set forth how the teachings in Lang and Dore
render obvious “generating a surgical guide image from the bone surface
image and an image of a prosthetic implant.”

Rejection IV – Obviousness in view of Carson
Claim 15 requires, in relevant part, a registration module that
determines changes in the surface of the bone using received positional data
from a reference pointer. The Examiner found that Carson teaches a mouse
(reference pointer) and determines changes in the surface of the bone by
determining “bone spike holes” using coordinate data. Ans. 5-6 (citing to
Carson, paras. [0094] and [0126]).
As Appellant points out, however, even assuming the mouse in
Carson were a “reference pointer” in the manner required by claim 15, the
“bone spike data” in Carson is not received from the mouse. Br. 28. Carson
states that a probe 26 can be used to designate features of a bone, such as
bone spike holes, to establish known coordinates. Carson, para. [0126]. As
the probe 26 is placed onto such a known feature, the system saves the
coordinates of the probe. Id. Thus, the bone spike location is not received
from a mouse, but rather probe 26. Consequently, the Examiner has not
made a finding showing that Carson teaches or suggests a registration
module that determines changes in the surface of the bone using received
positional data from a reference pointer in the manner required by claim 15,
and we do not sustain Rejection IV.

Appeal 2010-002652
Application 10/748,316
9
DECISION
We affirm the Examiner’s decision regarding the 35 U.S.C. § 112,
first paragraph, rejection of claims 15 and 17-21 as failing to comply with
the written description requirement (Rejection I).
We reverse the Examiner’s decision regarding the § 112, first
paragraph, rejection of claim 18 as failing to comply with the enablement
requirement (Rejection II).
We reverse the Examiner’s decision regarding the § 103(a) rejections
of claims 1-15 and 17-21 (Rejections III, IV).
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).

AFFIRMED-IN-PART

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