Ex Parte Sato

Patent Trial and Appeal Board

Jan 29, 2018

14452020 (P.T.A.B. Jan. 29, 2018)

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.
14/452,020 08/05/2014 Takashi Sato 5143/81505-ZA/JPW/PT/SP 8741
23432 7590 01/29/2018
COOPER & DUNHAM, LLP
30 Rockefeller Plaza
20th Floor
NEW YORK, NY 10112
EXAMINER
BOLES, SAMEH RAAFAT
ART UNIT PAPER NUMBER
3775
MAIL DATE DELIVERY MODE
01/29/2018 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 PATENT TRIAL AND APPEAL BOARD
Ex parte TAKASHI SATO
Appeal 2017-000366
Application 14/452,020
Technology Center 3700
Before DONALD E. ADAMS, DEBORAH KATZ, and
ULRIKH W. JENKS, Administrative Patent Judges.
JENKS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 8—10 as anticipated. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
STATEMENT OF THE CASE
The Specification explains that in an “artificial knee joint
replacement, the important consideration is that an artificial joint having the
optimal shape and size for a patient is placed at the optimal angle and the
optimal position.” Spec. 2:4—8. “[T]he accuracy as to the installation
1 Appellant is the Applicant, Lexi Corporation, LTD, which, according to the
Brief, is the real party in interest. Appeal Br. 3.
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Application 14/452,020
position and orientation of the artificial joint has a great effect on the
durability of the artificial joint.” Id. at 3:4—6. The Specification describes a
jig and an apparatus, for example a personal computer, for determining the
position and angle of the distal bone cutting surface using an alignment rod.
See id. at 5:5—9.
Claims 8—10 are on appeal, and can be found in the Claims Appendix
of the Appeal Brief. Claim 8 is representative of the claims on appeal, and
reads as follows:
8. An apparatus for preoperative planning of artificial knee
joint replacement operation, comprising:
an image input unit which inputs two-dimensional
tomographic images of a lower limb including the knee joint;
an image reconstruction unit which reconstructs three-
dimensional images of a femur from the images input by the
image input unit;
a femur side artificial joint determination unit which
determines an artificial joint to be replaced and an installation
position of the artificial joint from a plurality of preliminarily
input three-dimensional images of the artificial joint, based on
the three-dimensional images of the knee joint of the femur
obtained by the image reconstruction unit; and
a parameter determination unit which determines various
parameters to be used in the artificial knee joint replacement to
be performed using an alignment rod in the marrow which is to
be inserted into the femur based on the artificial joint and the
installation position determined by the femur side artificial joint
determination unit, reference points of the knee joint and
preliminarily input three-dimensional images of the alignment
rod.
Appellant requests review of the Examiner’s rejection of claims 8—10
under 35 U.S.C. § 102(b) as being anticipated by Carson.2
2 Carson et al., US 2003/0069591 Al, published Apr. 10, 2003 (“Carson”).
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Appellant contends that “the apparatus proposed in Carson does not
perform the claimed function, [therefore,] Carson cannot anticipate” the
claims. Reply Br. 10.
The Examiner finds that the claim is directed to an apparatus and as
such is analyzed based on the recited structures and not the functions
performed by these structures. See Ans. 4.
The issue is: Does the preponderance of evidence of record support
the Examiner’s finding that Carson’s apparatus meets the claimed
structures?
Findings of Fact
FF1. Carson teaches a system for tracking anatomy and trial implants
for total knee arthroplasties (“TKA”). Carson 12. Carson’s
instrumentation “allow[s] surgeons to navigate and perform
TKA using images that reveal interior portions of the body
combined with computer generated or transmitted images that
show surgical implements, instruments, trials, implants, and/or
other devices located and oriented properly relative to the body
part.” Carson H 2, 142. The benefit of this system is “that the
outcome of implant positioning can be seen before any
resectioning has been done on the bone.” Carson 1154.
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FF2. A diagram of Carson’s system is reproduced below:
Figure 1, reproduced above, shows Carson’s tracking system
containing a processor 18, monitor 24, positon sensor 16, and
fiducials 14, in addition the figure also shows patient anatomy namely
the tibia 10 and femur 12. See Carson || 106—109; see also Final
Act. 2 (“an apparatus (18, Fig. 1). . . , comprising: an image input unit
(I/O, Fig. 1)”).
FF3. Carson teaches locating patient anatomy in three-dimensional space.
[T]he mechanical axis and other axes or constructs of
body parts 10 and 12 can also be “registered” for tracking
by the system. . . . These points are registered in three
dimensional space by the system and are tracked relative
to the fiducials on the patient anatomy which are
preferably placed intraoperatively. . . . [T]he surgeon
using probe 26 to designate or register landmarks on the
condylar portion of femur 12 using probe 26 in order to
feed to the computer 18 the position of one point needed
to determine, store, and display the epicondylar axis.
Carson 1119.
FF4. Carson teaches the production of fluoroscopic/computer generated
images. “These constructs are generated by the computer 18 and
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Application 14/452,020
presented on monitor 24 in combination with the fluoroscopic images
of the femur 12, correctly positioned and oriented relative thereto as
tracked by the system.” Carson 1121. Carson teaches using three-
dimensional images. See 1153 (these figures are “computer
generated 3-dimensional image of the trial components as tracked by
the system during trialing”).
FF5. Fig. 53 of Carson, reproduced below, shows a three-dimensional
image of a knee.
Fig. 53, reproduced above, show “onscreen images generated during
this bone modification process for purposes of navigation and
positioning cutting blocks 34 and other instrumentation for proper
resection and other modification of femur and tibia in order to prepare
for trial components.” Carson 1142; see also Final Act. 3 (“image
reconstruction unit which reconstructs three-dimensional images of a
femur from the images input by the image input unit (Fig. 53)”).
FF6. Carson teaches that “the surgeon can ‘navigate’ the cutting block 34
for optimum positioning using the system. . . . The touchscreen 24 can
then also display the instrument, such as the cutting block 34 and/or
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Application 14/452,020
the implant and/or the variable alignment module 54 relative to the
instruments and the rod 36 during this process in order, among other
things, properly to select size of implant and perhaps implant type.”
Carson 1126.
Once the extramedullary rod 36, intramedullary
rod, other type of rod or any other type of structural
member has been placed, instrumentation can be
positioned as tracked in position and orientation by
sensor 16 and displayed on screen face 24. . . . Because
the cutting block 34 corresponds to a particular implant
product and can be adjusted and designated on screen to
correspond to a particular implant size of that product,
the computer 18 can generate and display a graphic of the
cutting block 34 and the femoral component overlain on
the fluoroscopic image . . . FIGS. 34-37 [(not shown)].
The surgeon can thus navigate and position the cutting
block 34 on screen using not only images of the cutting
block 34 on the bone, but also images of the
corresponding femoral component which will be
ultimately installed.
Carson 1132; see also Final Act. 3 (“parameter determination unit. . .
(Figs. 34—37)”).
Principle of Law
“[Apparatus claims cover what a device is, not what a device does.
An invention need not operate differently than the prior art to be patentable,
but need only be different.” Hewlett-Packard Co. v. Bausch & Lomb Inc.,
909 F.2d 1464, 1469 (Fed. Cir. 1990).
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Analysis
The Examiner has rejected claims 8—10 under 35 U.S.C. § 102(b) as
being unpatentable over Carson. Because the claims are not separately
argued, we focus our discussion on representative claim 8.
Appellant contends that “the apparatus proposed in Carson does not
perform the claimed function, [therefore,] Carson cannot anticipate” the
claims. Reply Br. 10. Appellant contends that Carson installs fiducials onto
the femur, tibia and rod and other instruments. See Appeal Br. 11, see Reply
Br. 9. “[T]he position of the rod [in Carson] is adjusted while the
fluoroscope repeatedly takes images of the lower limb of the patient. In
order to perform these manipulations, the rod must actually be inserted into
the femur of the patient.” Appeal Br. 11, see Reply Br. 9.
We are not persuaded by Appellant’s contention because the
functional limitation relied on by Appellant is found in the preamble of the
claim.3 The preamble of claim 8 recites “[a]n apparatus for preoperative
planning of artificial knee joint replacement operation.” See Appeal Br.
(Claims Appendix). “If the preamble adds no limitations to those in the
body of the claim, the preamble is not itself a claim limitation and is
irrelevant to proper construction of the claim.” IMS Technology, Inc. v.
Haas Automation, Inc., 206 F.3d 1422, 1434 (Fed. Cir. 2000). “[W]here a
patentee defines a structurally complete invention in the claim body and uses
the preamble only to state a purpose or intended use for the invention, the
3 We note that the “Examiner agrees that the prior art of Carson does not
teach or is not being used to perform the same functions of the present
application,” and in rejecting the claims, the Examiner is only considering
the structural elements found in the claim body. See Ans. 4.
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preamble is not a claim limitation.” Rowe v. Dror, 112 F.3d 473, 478 (Fed.
Cir. 1997).
This is the case here. The claim preamble recites an intended use, that
the apparatus is used for planning purposes prior to operating on the patient,
i.e., it is used in the “preoperative” stage. The claim body, however, does
not rely on such an interpretation because there is nothing in the claim body
to indicate that the information gathering and any processing by the system
must be completed prior to performing any part of the operation. We,
therefore, agree with the Examiner that it is reasonable to “only give[]
weight to the structure limitations and . . . not give much weight to the
function languages/ limitations” of the claim because the functional
limitations are not required by the body of the claim. Ans. 4.
Even if the “preoperative” limitation were read into the claim, the
Specification does not provide any definition of the term “preoperative.”
The Patent Office applies the broadest reasonable claim interpretation
standard in proceedings. Cuozzo Speed Tech., LLC v. Lee, 136 S. Ct. 2131,
2145 (2016). Under the broadest reasonable interpretation, “preoperative” is
reasonably interpreted to include any time period prior to cutting the bone to
fit the prosthetic for the TKA. This limitation is taught by Carson.
Specifically, Carson’s methods teach tracking anatomy and trial implants for
the purpose of showing “outcome of implant positioning [that] can be seen
before any resectioning has been done on the bone.” FF1. Because
Carson’s method is implemented before the bone is cut, the method
reasonably meets the limitation of being “preoperative.” Therefore, we are
not persuaded by Appellant’s contention that the Carson does not perform
the claimed function.
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The claim body recites the following components: an image input
unit, an image reconstruction unit, a femur-side artificial joint determining
unit, and a parameter determination unit. The Examiner has identified which
structures in Carson meet each of these limitations. See FF1, FF5, and FF6.
Having found no error with the Examiner’s findings, we address Appellant’s
contentions below:
Appellant contends that “the manipulations [of Carson] are . . . NOT
on any three-dimensional images constructed from tomographic images.”
Appeal Br. 12.
We are not persuaded. Carson teaches locating patient anatomy such
as femur and tibia in three-dimensional space, and positioning instruments in
relation to these structures. See FF2 and FF3. Carson uses fiducials and
registration of anatomical landmarks in order to display an axis on the
monitor. “[T]he surgeon using probe 26 to designate or register landmarks
on the condylar portion of femur 12 using probe 26 in order to feed to the
computer 18 the position of one point needed to determine, store, and
display the epicondylar axis.” FF3. Carson teaches that the image
“constructs are generated by the computer 18 and presented on monitor 24 in
combination with the fluoroscopic images of the femur 12, correctly
positioned and oriented relative thereto as tracked by the system.” FF4.
Carson’s images allow for positioning of the cutting blocks 34 to determine
proper resection. FF5. The “implant positioning can be seen before any
resectioning has been done on the bone.” FF1. The Specification provides
that tomographic images include X-ray, CT, and MRI images. See Spec.
1:25—28, 11:8—10. Fluoroscopy is a type of X-ray, therefore, the
fluoroscopic images meet the tomographic image limitation of the claim. It
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is the combination of the fluoroscopic image and the registration marks that
allow for the three-dimensional image to be constructed on the monitor.
Carson’s figures are “computer generated 3-dimensional image[s] of the trial
components as tracked by the system during trialing.” FF4. “Because the
cutting block 34 corresponds to a particular implant product and can be
adjusted and designated on screen to correspond to a particular implant size
of that product, the computer 18 can generate and display a graphic of the
cutting block 34 and the femoral component overlain on the fluoroscopic
image.” FF6. Accordingly, we are not persuaded by Appellant’s contention
that Carson’s system does not generate a three-dimensional image.
Appellant contends that “the surgeon does not interact with the
computer screen in the approach proposed in Carson.” Appeal Br. 13.
We are not persuaded. First, we note that there is no requirement in
the claim that the surgeon interact with the computer. See In re Self, 671
F.2d 1344, 1348 (CCPA 1982) (“[Ajppellant’s arguments fail from the
outset because . . . they are not based on limitations appearing in the
claims.”).
Second, we note that the touchscreen of Carson not only displays the
instrument but also “the cutting block 34 and/or the implant and/or the
variable alignment module 54 relative to the instruments and the rod 36
during this process.” FF6. If the system of Carson would not encompass
input by the surgeon then there would be no reason to incorporate a
touchscreen into this system. Furthermore, Carson teaches that the surgeon
can “navigate and position the cutting block 34 on screen using not only
images of the cutting block 34 on the bone, but also images of the
corresponding femoral component which will be ultimately installed” as
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well. FF6. Carson teaches that the trial components, i.e., those components
that are to be positioned onto the bone are presented as three-dimensional
images. FF4. There is no use in using these trial components as a three-
dimensional image if the underlying image to which the trial component is
fitted is not also a three-dimensional image. “[T]he surgeon can ‘navigate’
the cutting block 34 for optimum positioning using the system” and for
selecting the proper size and implant type. FF6. Accordingly, we are not
persuaded by the Appellant’s contention that Carson’s method does not have
the surgeon interact with the computer screen.
We conclude that the evidence cited by the Examiner supports a prima
facie case of anticipation with respect to claim 8. As Appellants do not
argue the claims separately, claims 9 and 10 fall with claim 8. 37 C.F.R.
§41.37 (c)(l)(iv).
Appellant does present a new argument in the Reply Brief,
specifically, that the claims are directed to a means-plus-function claim
interpretation and analysis, and assert that when establishing anticipation of
a means-plus-fimction claim, this requires a comparison of the claimed
function to the reference. See Reply Br. 10. We note that absent a showing
of good cause, the Board is not required to address arguments in the Reply
Brief that could have been presented in the principal Brief. See Ex parte
Borden, 93 USPQ2d 1473, 1474 (BPAI2010) (“informative”). A claim
must be analyzed to determine whether the claim language actually invokes
the provisions of 35 U.S.C. § 112, sixth paragraph. See Envirco Corp. v.
Clestra Cleanroom, Inc., 209 F.3d 1360, 1365 (Fed. Cir. 2000) (“If a claim
element contains the word ‘means’ and recites a function, th[e] court
presumes that element is a means-plus-fimction element under § 112,
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| 6. . . . That presumption falls, however, if the claim itself recites sufficient
structure to perform the claimed function.”). On this record, we find nothing
in the prosecution history to establish that the claims have been interpreted
to invoke a means-plus-function limitation, and Appellant’s have not
directed us to any information that would necessitate this interpretation at
the Reply Brief stage. What we can say is that none of claims 8—10 recite
“means” or ‘means for” that would trigger such a presumption. Because we
find no evidence in the record that necessitates a means-plus-fimction
interpretation of the claims we find that this argument is not timely.
SUMMARY
We affirm the rejection of claim 8 as anticipated by Carson. Claims 9
and 10 are not separately argued and fall with claim 8.
TIME PERIOD FOR RESPONSE
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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