Ex Parte Sherman et al

Patent Trial and Appeal Board

Sep 21, 2017

13436859 (P.T.A.B. Sep. 21, 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.
13/436,859 03/31/2012 Jason T. Sherman 265280-208915 5279
23643 7590 09/25/2017
Barnes & Thornburg LLP (IN)
11 S. Meridian Street
Indianapolis, IN 46204
EXAMINER
FERNANDES, PATRICK M
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
09/25/2017 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):
INDocket@btlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON T. SHERMAN, ROBERT S. HASTINGS,
JOSE F. GUZMAN, and LUKE J. ARAM
Appeal 2016-000409
Application 13/436,859
Technology Center 3700
Before JEFFREY A. STEPHENS, ERIC C. JESCHKE, and
BRENT M. DOUGAL, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jason T. Sherman et al. (“Appellants”)1 seek review under 35 U.S.C.
§ 134(a) of the Examiner’s decision, as set forth in the Final Office Action
dated November 3, 2014 (“Final Act.”), rejecting claims 1—20. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify DePuy Synthes Products, Inc. as the real party in
interest. Appeal Br. 2.
Appeal 2016-000409
Application 13/436,859
BACKGROUND
The disclosed subject matter “relates generally to orthopaedic surgical
instruments and, more particularly, to systems, devices, and methods for
validating orthopaedic surgical plans intraoperatively.” Spec. 12. Claims 1
and 14 are independent. Claim 1 is reproduced below, with emphasis added:
1. A system for validating an orthopaedic
surgical plan for performing an orthopaedic surgical
procedure on a patient’s joint, the system
comprising:
a sensor module comprising a sensor array
configured to generate sensor signals indicative of a
joint force of a patient’s joint and a sensor control
circuit to generate joint force data based on the
sensor signals and transmit the joint force data;
a data tag associated with a patient-specific
orthopaedic surgical instrument, the data tag
comprising surgical procedure parameters
associated with the orthopaedic surgical plan; and
a hand-held display module comprising (i) a
display control circuit comprising a data reader
configured to read the data tag to obtain the
surgical procedure parameters therefrom and (ii) a
display communicatively coupled to the display
control circuit,
wherein the display control circuit is
configured to receive the joint force data from the
sensor module, display joint force information on
the display as a function of the joint force data, and
display the surgical procedure parameters on the
display in association with the joint force
information.
2
Appeal 2016-000409
Application 13/436,859
EVIDENCE RELIED ON BY THE EXAMINER
Jordan
Amirouche
Finn
Aram
Stevenson
Berger
Rock
Custom Fit Total
Knee Replacement
Surgery
US 5,423,334
US 2004/0019382 A1
US 2006/0219776 A1
US 2009/0088760 A1
US 2010/0194541 A1
US 7,932,825 B2
US 2010/0249789 A1
Custom Fit Total Knee Replacement
Surgery, http: //web. archive. org/web/
20080820181712/http://www.custom
fittotalknee. com/ conventional_knee_
replacement.htm (last visited Sept.
19, 2017)
June 13, 1995
Jan. 29, 2004
Oct. 5, 2006
Apr. 2, 2009
Aug. 5, 2010
Apr. 26, 2011
Sept. 30, 2010
August 2008
REJECTIONS
1. Claims 1, 3, and 13 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Amirouche.
2. Claim 2 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Amirouche and Rock.
3. Claim 4 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Amirouche and Stevenson.
4. Claim 5 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Amirouche and Jordan.
5. Claims 6 and 8—10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Amirouche and Berger.
6. Claims 7 and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Amirouche and Finn.
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Appeal 2016-000409
Application 13/436,859
7. Claim 11 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Amirouche and Custom Fit Total Knee Replacement
Surgery.
8. Claims 14 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Amirouche and Aram.2
9. Claim 15 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Amirouche, Aram, and Jordan.
10. Claim 16 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Amirouche, Aram, and Stevenson.
11. Claim 17 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Amirouche, Aram, and Berger.
12. Claim 18 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Amirouche, Aram, and Finn.
13. Claim 19 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Amirouche, Aram, and Custom Fit Total Knee
Replacement Surgery.
DISCUSSION
Rejection 1 — Claims 1, 3, and 13
Independent claim 1 recites, among other limitations, “a hand-held
display module comprising (i) a display control circuit comprising a data
reader configured to read the data tag to obtain the surgical procedure
parameters therefrom and (ii) a display communicatively coupled to the
2 In the Final Office Action, the Examiner addresses claim 20 under a
header paragraph regarding Rejection 13. See Final Act. 7—8. In the
Answer, the Examiner moves the discussion of claim 20 under a header
paragraph regarding Rejection 8. See Ans. 6—7.
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Appeal 2016-000409
Application 13/436,859
display control circuit.” Appeal Br. 24 (Claims App.). Addressing this
claim language, the Examiner found that Amirouche teaches “[a] hand-held
display (500) [that] has a display control circuit (20) that has a data reader
(14) which gathers information from the data tag (26)” and teaches that
“[t]he display circuit (20) collects data from the memory/processor which
contains the sensors data and sends the data to the display (24 or 500) to
display visual indications of the data generated during operation.” Final Act.
2—3 (discussing aspects shown in Figs. 1, 2, and 17 of Amirouche).
Appellants argue that “Amirouche does not teach that the hand-held
display 500 includes ‘a display control circuit comprising a data reader
configured to read the data tag to obtain the surgical procedure parameters’
as required by claim 1” and that, “[i]n fact, Amirouche does not contain any
teachings about what is included in the hand-held display 500.” Appeal Br.
5. According to Appellants, “the word ‘comprising’ used after the element
‘a hand-held display module’ requires the hand-held display module to
include both the display control circuit that includes the data reader and the
display.” Id. at 6. Appellants further contend that, “under the Examiner’s
proposed construction, the term ‘comprising’ is rendered superfluous and
fails to impose any practical limitation on the claim.” Id.
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Application 13/436,859
In response, the Examiner quotes a sentence from paragraph 6 of the
Specification3 and a sentence from paragraph 354 and states, “[i]n light of
the specification[,] all that is required is for the data reader and the display
control circuit being communicatively coupled to the hand-held display
module[,] as is taught by Amirouche.” Ans. 9.
For the reasons below, we agree with Appellants that the Examiner
has applied an unreasonably broad construction of the claim language at
issue. We construe both instances of “comprising” in the claim language at
issue as including, but not limited to. See, e.g., Versa Corp. v. Ag-Bag Int’l
Ltd., 392 F.3d 1325, 1329 (Fed. Cir. 2004) (addressing “comprising” in the
body of a claim). Further, we construe “a hand-held display module
comprising” certain elements to require that the recited elements be included
within the structure(s) of the “hand-held display module.”5 Thus, the claim
language at issue requires, inter alia, that (1) the recited “display control
circuit” and the recited “display” be included within the structure(s) of the
3 The sentence from paragraph 6 provides: “The hand-held display
module may include a display control circuit comprising a data reader
configured to read the data tag to obtain the surgical procedure parameters
therefrom and a display communicatively coupled to the display control
circuit.”
4 The sentence from paragraph 35 provides: “The data tag 104 is read
by a data reader 664 of the hand-held display module 110 (see FIG. 5) or a
data reader 112 separate from the hand-held display module 110 but
communicatively coupled thereto.”
5 Neither the Examiner nor Appellants take the position that the
recited “hand-held display module” does not require structure or should be
construed under pre-AIA 35 U.S.C. § 112, | 6. Cf. Williamson v. Citrix
Online, LLC, 792 F.3d 1339, 1347-54 (Fed. Cir. 2015) (enbanc).
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Appeal 2016-000409
Application 13/436,859
“hand-held display module” and (2) the recited “data reader” be included
within the recited “display control circuit.”
As noted by Appellants, the Examiner’s proposed construction does
not address all aspects of the pending claim language. See Reply Br. 2.
Instead, that construction would apply to a different (and hypothetical)
claim, in which the limitation “a display control circuit comprising a data
reader configured to read the data tag to obtain the surgical procedure
parameters” is (1) moved from its current location and placed as an element
of the overall “system” recited in the preamble and (2) revised such that the
“display control circuit” and “data reader” are merely communicatively
coupled to (i.e., used in conjunction with) the “hand-held display module.”
See Ans. 9; see also Final Act. 8 (stating that “the examiner contends that
the display control circuit and data reader must merely be comprised within
the use of the hand held display, which they are, as they used transmit and
display data on the hand held display” (emphasis added)).
Further, we agree with Appellants (Reply Br. 3) that the construction
of “comprising” adopted above aligns with paragraph 35 of the Specification
relied on by the Examiner (Ans. 9). As noted by Appellants, the relevant
passage describes two different embodiments: one with a “data reader 664 of
the hand-held display module 110 (see FIG. 5)” and another with “a data
reader 112 separate from the hand-held display module 110 but
communicatively coupled thereto.” Spec. 135. As noted by Appellants, in
the first disclosed embodiment, (1) the “data reader” is included within the
“display control circuit” (see Fig. 6) and (2) the “display” and “display
control circuit” are included within the “hand-held display module.” See
Reply Br. 3; see also Spec. Fig. 6 (showing data reader 664 within display
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Appeal 2016-000409
Application 13/436,859
control circuit 620), Fig. 5 (showing display 502 within hand-held display
module 110), 135 (discussing “data reader 664 of the hand-held display
module 110” (emphasis added)). And, we agree that, in claim 1, Appellants
are “claiming the . . . embodiment of the hand-held display module 110 in
which the data reader 664 is included in the hand-held display module, not
the embodiment (FIG. 1) in which the data reader 112 is separate from the
hand-held display module.” Reply Br. 4.
We turn now to applying this construction. As noted by Appellants
(Appeal Br. 5), to anticipate a claimed invention, a prior art reference “must
not only disclose all elements of the claim within the four comers of the
document, but must also disclose those elements arranged as in the claim.'1'’
Net Moneyln, Inc. v. Verisign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008)
(emphasis added). Paragraph 31 of Amirouche provides that “[t]he display
24 may be a cathode ray tube (CRT), a liquid crystal display (LCD), or any
other type of display, such as a hand-held display 500 as shown in FIG. 17.”
Further, as shown in Figures 1 and 2, Amirouche depicts the identified
“display control circuit” (element 20) and the identified “data reader”
(element 14) as within main unit 12 rather than within display 24 (which
could be hand-held display 500, the identified “hand-held display module”).
See Appeal Br. 8 (arguing that Amirouche “expressly teaches that the
display device 24, and by extension the hand-held display 500, is separate
from the interface circuits 20 and the processor 14”). Because the evidence
of record does not support that the identified “display control circuit” and
the identified “data reader” are “included within” the identified “hand-held
display module” as required by the constmction above, we do not sustain the
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Application 13/436,859
rejection of claim 1, or the rejection of claims 3 and 13, which depend from
claim 1.
Rejections 2 through 7 — Claims 2 and 4—12
Claims 2 and 4—12 depend from claim 1. Appeal Br. 24—25 (Claims
App.). The Examiner’s added reliance on Rock, Stevenson, Jordan, Berger,
Finn, and Custom Fit Total Knee Replacement Surgery does not remedy the
deficiencies in Amirouche discussed above (see supra Rejection 1).
Moreover, the Examiner does not propose any modification of Amirouche to
remedy the deficiencies discussed above. Thus, for the same reasons
discussed above, we do not sustain the rejection of claims 2 and 4—12.
Rejection 8—The rejection of claims 14 and 20
Independent claim 14 recites “a hand-held display module comprising
(i) a display control circuit communicatively coupled to the data reader to
receive the identification data and the surgical procedure parameters
therefrom and (ii) a display” and also recites “a data reader configured to
read the data tag to obtain the identification data and the surgical procedure
parameters.” Appeal Br. 27 (Claims App.). The Examiner relies on the
same elements of Amirouche regarding, for example, the “hand-held display
module,” the “display control circuit,” and the “data reader.” Compare Final
Act. 5—6 (claim 14), with id. at 2—3 (claim 1). Moreover, the Examiner does
not propose modifying the relevant aspects of Amirouche and does not rely
on Amar regarding the claim language at issue. See id. at 5—6.
Appellants rely on the arguments discussed above. See Appeal Br.
19—20. In the Answer, the Examiner repeats the response provided
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Application 13/436,859
regarding claim 1. Compare Ans. 11 (addressing “Argument VIII (iii)”),
with id. at 9 (addressing “Argument I. A. (i)”).
For the same reasons discussed above with respect to claim 1, we
construe the claim language at issue in claim 14 to require that the recited
“display control circuit” and the “display” are included within the
structure(s) of the “hand-held display module.” As to the recited “data
reader,” in contrast to claim 1, claim 14 does not recite “a display control
circuit comprising a data reader” (or a similar requirement). Thus, the “data
reader” need not be included within the “display control circuit” (or,
consequently, included within the “hand-held display module”).6
We turn now to applying this construction. For the same reasons
discussed above with respect to claim 1, because the evidence of record does
not support that the identified “display control circuit” in Amirouche is
“included within” the identified “hand-held display module,” we do not
sustain the rejection of claim 14, or the rejection of claim 20, which depends
from claim 14.
Rejections 9 through 13 — Claims 15—19
Claims 15—19 depend from claim 14. Appeal Br. 27—28 (Claims
App.). The Examiner’s added reliance on Jordan, Stevenson, Berger, Finn,
and Custom Fit Total Knee Replacement Surgery does not remedy the
deficiencies in the combined teachings of Amirouche and Aram discussed
6 Thus, we do not agree with Appellants’ argument seeking to
distinguish claim 14 on the basis that “Amirouche does not disclose a hand­
held display module that includes both a display control circuit that
includes a data reader and a display as required by claim 14.” Appeal Br.
20 (italicization added); see also Reply Br. 12 (“Claim 14 clearly specifies
that the hand-held display module includes a data reader.”).
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Application 13/436,859
above (see supra Rejection 8). Thus, for the same reasons discussed above,
we do not sustain the rejection of claims 15—19.
DECISION
We reverse the decision to reject claims 1—20.
REVERSED
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