Ex Parte Stein et al

Patent Trial and Appeal Board

Aug 9, 2016

13631427 (P.T.A.B. Aug. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/631,427
88191 7590
Orthosensor, Inc.
1855 Griffin Road
Suite A-310
FILING DATE
09/28/2012
08/11/2016
Dania Beach, FL 33004
FIRST NAMED INVENTOR
Marc Stein
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.
ORTH0-0065-US 8202
EXAMINER
KU, SI MING
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
08/11/2016 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):
ghoshizaki@orthosensor.com
j.daniels@orthosensor.com
j onathan. trousdale@orthosensor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARC STEIN, GABRIEL CARRASCO, and MARTIN ROCHE
Appeal2014-008504
Application 13/631,427 1
Technology Center 3700
Before ANTON W. PETTING, MICHAEL C. ASTORINO, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-20. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is the assignee,
Orthosensor Inc. Br. 4.
Appeal2014-008504
Application 13/631,427
Claimed Subject Matter
The Appeal Brief fails to correctly copy claims 1, 2, 11, and 17 in the
Appendix of Claims of the Appeal Brief. We note that the Examiner mailed
a Final Office Action on August 12, 2013 rejecting the pending claims filed
in the Response filed May 14, 2013 (hereinafter "Response"). After the
Final Office Action, the Appellants filed a communication on January 13,
2014, which included amendments to claims 1, 2, 11, and 17. In response,
the Examiner mailed an Advisory Action on February 4, 2014, explaining
that "[f]or purposes of appeal, the proposed amendments ... will not be
entered." Adv. Act. 1. As such, the claims on appeal are those listed in the
Response. See Response 2-5.
Claims 1, 11, and 1 7 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A distractor system for measuring a force, pressure, or load
applied by the muscular-skeletal system comprising:
a lift mechanism having first and second support structures
configured to adjustably separate a region of the muscular-
skeletal system; and
a measurement device coupled to the first support
structure where the measurement device includes a sensor array
configured to measure the force, pressure, or load and where the
sensor array comprises a plurality of elastically compressible
capacitors.
Response 2 (emphasis omitted).
Rejections
Claims 1 and 2 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Gustilo (US 5,733,292, iss. Mar. 31, 1998) and Heldreth
(US 2004/0064073 Al, pub. Apr. 1, 2004).
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Claims 3, 4, and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gustilo, Heldreth, and Lessar (US 2011/0004124 Al,
pub. Jan. 6, 2011 ).
Claims 5-10 and 18-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gustilo, Heldreth, Lessar, and Cordes
(US 2005/0267485 Al, pub. Dec. 1, 2005).
Claims 11, 12, and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gustilo, Heldreth, Lessar, and Arms
(US 2009/0007687 Al, pub. Jan. 8, 2009).
Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Gustilo, Heldreth, Lessar, Arms, and Kovacevic (US 2003/0069644 Al,
pub. Apr. 10, 2003).
Claims 15 and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gustilo, Heldreth, Lessar, Arms, and Cordes.
ANALYSIS
Independent claim 1 and dependent claims 2-10
The Appellants assert that independent claim 1 recites "where the
plurality of elastically compressible capacitors are configured to measure the
location of the force, pressure, or load." Br. 24 (emphasis omitted). This
recitation is directed to an amendment of claim 1 that has not been entered
by the Examiner (supra) and is not included in claim 1 as presently
appealed. Accordingly, the Appellants' argument that the combined
teachings of Gustilo and Heldreth fail to teach the language associated with
asserted recitation of claim 1 (see Br. 25) is not persuasive because the
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argument is not commensurate in scope with the claim as presently
appealed.
The Appellants also argue that the combined teachings of Gustilo and
Heldreth fail to teach "a distractor system" and "a first and second support
structure configured to adjustably separate a region." Br. 26. The
Appellants base these arguments on an assertion that a "distractor system"
includes the ability to be easily removed from the body and that "[b ]oth
upper and lower structures [(i.e., first and second support structures)] move
in a distractor system." See Br. 5, 24--25; see also Br. 11-14. Additionally,
the Appellants also base these arguments on embodiments of Gustilo' s
invention that the Examiner does not rely on. More particularly, the
Appellants' argument relies on an assumption that the Gustilo' s lower
platform 420 is similar to lower platform 102, which is inserted into a hole
of the tibia by use of a post 108. See Br. 12, 24--25. The Appellants'
arguments are not persuasive for the following reasons.
At the outset, even if we were to agree that the term "distractor
system" in the preamble of claim 1 limits the claimed invention, which we
do not (infra), the Appellants' arguments do not explain why Gustilo's
adjustable trial insert as depicted in Figure 26 and described in column 13,
lines 4--8, does not correspond to a "distractor system." See Final Act. 2-3.
Notably, Gustilo describes Figure 26 as "a front view of an adjustable trial
without a lower post using a mechanical jack for a distance adjustment
mechanism." Gustilo, col. 6, 11. 40-42 (emphasis added). As such, the
Appellants' arguments are incorrectly premised on an assertion that the
Examiner relies on embodiments disclosed in Gustilo that include a post,
e.g., post 108 as depicted in Figure 5, and as such are unpersuasive.
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Additionally, we determine the term "distractor system," in the
preamble of claim 1, does not limit the invention of claim 1. In general, a
preamble limits the claimed invention "if it recites essential structure or
steps, or if it is 'necessary to give life, meaning, and vitality' to the claim."
Catalina Mktg. Int'!, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed.
Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d
1298, 1305 (Fed. Cir. 1999)). The preamble limits claim scope when it is
essential to understand limitations or terms in the claim body. Catalina
Mktg. Int 'lat 289 F.3d 808. Conversely, a preamble is not limiting where a
structurally complete invention is defined in the claim body and the
preamble only states a purpose or intended use for the invention. Id.
The preamble of claim 1 recites, "[a] distractor system for measuring
a force, pressure, or load applied by the muscular-skeletal system
comprising." We determine that the term "distractor system" in the
preamble of the claim does not explain the meaning of any claim terms in
the body of the claim. Rather, the body of the claim sets forth a structurally
complete invention that is readily understood without resorting to the
preamble of claim 1. In other words, the body of the claim, which includes
"a lift mechanism having first and second support structures configured to
adjustably separate a region of the muscular-skeletal system," sets forth the
structure of the "dis tractor system."
Further, we note that the Appellants do not argue that "a lift
mechanism having first and second support structures configured to
adjustably separate a region of the muscular-skeletal system," as recited in
claim 1, fails to read on Gustilo' s adjustable trial without a lower post using
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a mechanical jack for a distance adjustment mechanism, as depicted in
Figure 26 and described in column 13, lines 4--8.
Additionally, for the purposes of this appeal only, even if we were to
determine that the term "distractor system" in the preamble of claim 1 limits
the claimed invention, we disagree with the Appellants that the term
"distractor system," requires the ability for the distractor to be removed from
the body and that both upper and lower structures (i.e., first and second
support structures) move in a distractor system.
We note that the Appellants' Specification lacks an explicit definition
of the term "distractor" or "distractor system," but does include the
following statement: "[i]n general, a distractor can dynamically change
spacing between two regions of the muscular-skeletal system." Spec.,
para. 255. We acknowledge that the Appellants assert that a common
understanding of a distractor system traditionally is "used to separate a
muscular skeletal system which allows insertion of a separate tibial insert.
Thus inherently a distractor is removable. For Example Fig. 3 of Colquhoun
et al. U.S. Pat. Pub. No. 2009/0270869 is illustrative of a distractor
instrument .... " Br. 5. However, even if a common understanding of a
term that is based on what is "traditional," that understanding may not
comport with the broadest reasonable interpretation of the term in light of
the Specification as understood by one of ordinary skill in the art. As for the
substance of the Appellants' assertion, only a single reference - Colquhoun
et al. - is included to support the Appellants' assertion. And, this single
prior art reference is insufficient to establish a common understanding of the
term "dis tractor" or "distractor system." Further, the Appellants' assertion
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that both upper and lower structures are required to move in a distractor
system similarly lacks sufficient evidence to be adequately supported.
The Appellants also argue that the Gustilo and Heldreth are not
combinable. Br. 25, 26. To the extent the Appellants support this argument
with evidence and technical reasoning, we determine that the argument and
the support for the argument is not persuasive.
Thus, the rejection of independent claim 1 as unpatentable over
Gustilo and Heldreth is sustained. For the same reasons, we also sustain the
Examiner's rejection of dependent claim 2, which is not argued separately.
Claims 3-10 depend indirectly from independent claim 1. For the rejections
of claims 3-10 the Appellants rely on the arguments presented for the
rejection of claim 1 and assert that Lessar and Cordes, individually and in
combination, fail to cure the deficiencies of the rejection of independent
claim 1. See Br. 26-29. However, rejection of independent claim 1 does not
suffer from the alleged deficiencies. Thus, for the same reasons we have
sustained the rejection of claim 1, we likewise sustain the rejections of
claims 3 and 4 as unpatentable over Gustilo, Heldreth, and Lessar and claims
5-10 as unpatentable over Gustilo, Heldreth, Lessar, and Cordes.
Independent claim 11 and dependent claims 12-16
For the rejection of independent claim 11, the Appellants rely on
substantially similar arguments presented for the rejection of claim 1. See
Br. 30-31. Therefore, for reasons substantially similar to those provided for
the rejection of claim 1, we sustain the rejection of claim 11 under 35 U.S.C.
§ 103(a) as unpatentable over Gustilo, Heldreth, Lessar and Arms. We
likewise sustain the Examiner's rejection of dependent claims 12 and 14,
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which are not argued separately. Claims 13, 15, and 16 depend either
directly or indirectly from independent claim 11. For the rejections of
claims 13, 15, and 16, the Appellants rely on the arguments presented for the
rejection of claim 11 and assert that Kovacevic and Cordes fail to cure the
deficiencies of the rejection of independent claim 11. See Br. 31-33.
However, the rejection of independent claim 11 does not suffer from any of
the alleged deficiencies. As such, for the same reasons we have sustained
the rejection of claim 11, we likewise sustain the rejections of claim 13 as
unpatentable over Gustilo, Heldreth, Lessar, Arms, and Kovacevic, and
claims 15 and 16 as unpatentable over Gustilo, Heldreth, Lessar, Arms, and
Cordes.
Independent claim 17 and dependent claims 18-20
For the rejection of independent claim 17, the Appellants rely on
substantially similar arguments presented for the Examiner's rejection of
claim 1. See Br. 26-28. For reasons substantially similar to those provided
for the rejection of claim 1, we determine that the Appellants' arguments are
not persuasive. Additionally, the Appellants assert that independent claim
17 recites "at least one capacitor is connected to a signal generator." Br. 27
(emphasis omitted). This recitation is directed to an amendment of claim 17
that has not been entered by the Examiner (supra) and is not included in
claim 17 as presently appealed. Accordingly, the Appellants' argument that
the combined teachings of Gustilo, Heldreth, and Lessar fail to teach the
language associated with asserted recitation of claim 17 (see Br. 27-28) is
not persuasive because the argument is not commensurate in scope with the
appealed claim.
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Thus, for the foregoing reasons we sustain the rejection of claim 17
under 35 U.S.C. § 103(a) as unpatentable over Gustilo, Heldreth, and Lessar.
Claims 18-20 depend either directly or indirectly from independent claim
17. For the rejection of claims 18-20, the Appellants rely on the arguments
presented for the Examiner's rejection of claim 17 and assert that Lessar and
Cordes, individually and in combination, fail to cure the deficiencies of the
Examiner's rejection of independent claim 17. See Br. 28-29. However, the
Examiner's rejection of independent claim 1 7 does not suffer from any of
the alleged deficiencies. As such, for the same reasons we have sustained
the rejection of claim 17, we likewise sustain the rejection of claims 18-20
as unpatentable over Gustilo, Heldreth, Lessar, and Cordes.
DECISION
We AFFIRM the Examiner's decision rejecting claims 1-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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