Ex Parte Tuma et al

Board of Patent Appeals and Interferences

Aug 27, 2012

11122758 (B.P.A.I. Aug. 27, 2012)

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.
11/122,758 05/05/2005 Gregor Tuma SCHWP0205USA 4694
46140 7590 08/27/2012
DON W. BULSON (BRAI)
RENNER, OTTO, BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE - 19TH FLOOR
CLEVELAND, OH 44115
EXAMINER
HARVEY, JULIANNA NANCY
ART UNIT PAPER NUMBER
3733
MAIL DATE DELIVERY MODE
08/27/2012 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 GREGOR TUMA and
CHRISTIAN WENDE
__________

Appeal 2011-001732
Application 11/122,758
Technology Center 3700
__________

Before TONI R. SCHEINER, ERIC GRIMES, and JACQUELINE
WRIGHT BONILLA, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a tracking
system for an intramedullary pin. The Examiner has rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.
STATEMENT OF THE CASE
The Specification discloses that intramedullary pins are used to treat
“fractures in long bones. Intramedullary pins include fixing holes or bores at
the proximal and distal ends” to receive screws that attach the pin to the
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bone (Spec. 1: 16-20). The Specification states that “[o]ne problem with
conventional intramedullary pins is that the … pin is deformed by the shape
of the long bone” and thus the position of the distal fixing bore is unknown
(id. at 1: 21-26). The Specification discloses “a deformation detection
device that extends along the intramedullary pin” and communicates with a
navigation system (id. at 3: 6-13).
Claims 1-6, 8-10, 24, and 25 are on appeal. Claim 1 is representative
and reads as follows:
1. A tracking system for an intramedullary pin whose spatial position
is determined and/or tracked in image-guided surgery, said intramedullary
pin having a proximal end and a distal end, comprising:
a reference device configured for attachment to the proximal end of
said intramedullary pin;
a medical navigation system configured to locate said reference
device and to determine an orientation of said intramedullary pin from the
proximal end based on the location of the reference device; and
a deformation detection device configured to detect deformations of
said intramedullary pin and communicate the deformations to said
navigation system, wherein said deformation detection device is a fiber optic
structure that detects deformations on the basis of differences in light
transmit times.

The claims stand rejected under 35 U.S.C. § 103(a) as follows:
• Claims 1-4, 24, and 25 in view of Smothers,1 Fuimaono,2 and
Todoroki;3
• Claim 5 in view of Smothers, Fuimaono, Todoroki and Elstrom;4

1 Smothers et al., Patent Application Publication US 2003/0181918 A1,
Sept. 25, 2003
2 Fuimaono et al., Patent Application Publication US 2003/0114846 A1,
June 19, 2003
3 Todoroki, JP 2001-330415A, Nov. 30, 2001
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3
• Claims 8 and 9 in view of Smothers, Fuimaono, Todoroki, and
Barrick; 5
• Claim 10 in view of Smothers, Fuimaono, Todoroki, and
Fradenburgh;6 and
• Claim 6 in view of Smothers and Kroll.7
I.
Issue
The Examiner has rejected claims 1-4, 24, and 25 as obvious in view
of Smothers, Fuimaono, and Todoroki, and has rejected claim 5 as obvious
in view of Smothers, Fuimaono, Todoroki and Elstrom. The same issue is
dispositive for both rejections.
The Examiner finds that Smothers discloses “a tracking system for an
intramedullary pin (50) … comprising: a reference device (12) configured
for attachment to the proximal end of the intramedullary pin; a medical
navigation system configured to … determine an orientation of the
intramedullary pin … based on the location of the reference device; and a
deformation detection device … configured to detect deformations of the
intramedullary pin” (Answer 4). The Examiner finds that Smothers also
discloses that “the deformation detection device can be … infrared, visual,
… or any other desired technique” (id. at 5), but fails “to disclose that the
deformation detection device is a fiber optic structure” (id.).

4 Elstrom et al., US 5,540,691 A July 30, 1996
5 Barrick, Patent Application Publication US 2003/0055435 A1, Mar. 20,
2003
6 Fradenburgh et al., US 5,015,842 A, May 14, 1991
7 Kroll et al., US 6,005,955, Dec. 21, 1999
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4
The Examiner finds that Fuimaono discloses “a deformation detection
device comprising a fiber optic structure” (id.) and that Todoroki discloses
“a fiber optic structure capable of detecting deformations on the basis of
differences in light transmit times and that an advantage of such a structure
is that is inexpensive and effective” (id.). The Examiner concludes that it
would have been obvious to modify Smothers’ navigation system to have a
fiber optic deformation detection device (id. at 5-6) because such a
modification “is a simple substitution of one type of deformation detection
device for another and a fiber optic structure that is capable of detecting
deformations … is inexpensive and effective” (id. at 6).
Appellants contend that Fuimaono and Todoroki are non-analogous
art (Appeal Br. 8-14) and that the combination of Smothers and Fuimaono
renders the device of Smothers unsatisfactory for its intended purpose (id. at
15-17).
The issue with respect to this rejection is: Has the Examiner provided
an adequate basis for concluding that the tracking system of claim 1 would
have been obvious to a person of ordinary skill in the art based on the cited
references?
Findings of Fact
1. Smothers discloses that “[i]ntramedullary nailing is well known in
the art and essentially entails aligning two or more segments of bone …
about a rod or nail that fits down the medullary canal of the fractured bone”
(Smothers 1, ¶ 0003).
2. Smothers discloses an instrument “for aligning fractured segments
of a bone. The instrument may include at least an elongated body and a
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Application 11/122,758

5
reference coupled to the elongated body for enabling the instrument to be
located by the image-guided surgical navigation system.” (Id. at 2, ¶ 0018.)
3. Smothers discloses that the instrument can be “a flexible reducer
… having one or more location elements … to assist determining the
physical relationship of at least certain parts of the flexible portion with
respect to a reference” (id. at 3, ¶ 0020).
4. Smothers discloses that the term reducer refers to “to any
instrument used to assist with the alignment of bones” (id. at 5, ¶ 0059).
5. Smothers discloses that “a surgeon may desire to use a flexible
reducer if the bone fracture to be aligned or reduced is so misaligned that a
rigid reducer is not workable or would be particularly difficult to use” (id. at
6, ¶ 0065).
6. Smothers discloses that a flexible reducer “presents a challenge to
the use of the image-guided systems … because the flexible elongated
portion 52 will not necessarily remain in a fixed position with respect to the
reference 12 … in order to provide … accurate cues about its physical
position” (id. at 6, ¶0069).
7. Smothers’ Figure 21 shows reference 12 attached to the proximal
end of flexible reducer 50 (id. at Fig. 21).
8. Smothers discloses that “[f]lexible reducer 50 is consequently
provided with one or more location elements 75 … [that] assist the
determination … of the physical relationship of the flexible elongated
portion 52 with respect to reference 12” (id. at 6, ¶ 0070).
9. Smothers discloses that a “location element 75 may be provided at
or near the tip 54 of flexible elongated portion 52, at or near the middle of
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Application 11/122,758

7
16. Fuimaono discloses that the “catheter further includes two
location sensors 32 and 34 for providing location information about each of
the ring electrodes on the electrode assembly 18” (id. at 2, ¶ 0025).
17. Fuimaono discloses that “one of the location sensors 32 and 34
can comprise a bend sensor, which generates signals responsive to a bend
radius of the spines 20” (id. at 3, ¶ 0028).
18. Fuimaono discloses that a “bend sensor can comprise … a
fiber[ ]optic sensor, wherein the bend radius is determined by measuring the
loss and/or back-reflection of light in an optical fiber, as is also known in the
art” (id.).
19. Fuimaono discloses that the “coordinates of the distal sensor 32,
relative to those of the proximal sensor 34, are determined and taken
together with other known information pertaining to the curvature of the
spines 20.… This information is used to find the positions of the ring
electrodes 28 mounted on the spines 20.” (Id. at 3, ¶ 0029.)
Analysis
Claim 1 is directed to tracking system for an intramedullary pin whose
spatial position is determined or tracked in image-guided surgery. The
system comprises, among other things, a reference device configured for
attachment to the proximal end of the intramedullary pin, a medical
navigation system configured to locate the reference device, and a fiber optic
deformation detection device configured to detect deformations of the
intramedullary pin, based on differences in light transmit times, and
communicate the deformations to the navigation system.
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Application 11/122,758

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Smothers discloses a tracking system for a flexible reducer such as an
intramedullary pin or nail (FFs 2-4) that comprises a reference device for
attachment to the proximal end of the reducer (FF 7), a medical navigation
system configured to locate the reference device (FF 2), and a deformation
detection device (location element 75; FFs 9-11) configured to detect
deformations of the reduction device.
Fuimaono discloses a basket shaped electrode assembly with spines
that can be moved into a flexed position. Fuimaono discloses that electrodes
are located on the spines and that the bend radius of the spines can be
determined with the use of a fiber optic sensor that measures the loss and/or
back-reflection of light in an optical fiber. Fuimaono discloses that the
position of the electrodes in a patient’s body can be determined using bend
sensors and the coordinates of sensors located at the distal and proximal
ends of the basket. In view of these disclosures, it would have been obvious
to one of ordinary skill in the art to modify Smothers’ flexible
intramedullary reducer to comprise a fiber optic deformation or bend sensor,
as disclosed in Fuimaono, because Smothers discloses the need to determine
the deformation of its reducer and Fuimaono discloses that fiber optic bend
sensors can be used to determine the deformation of an medical device
within the body.
Appellants argue that Fuimaono cannot be properly combined with
Smothers because the references are non-analogous art (Appeal Br. 9).
Appellants argue that Fuimaono is concerned with mapping electrical
activity in the heart, and therefore is not in the same field of endeavor as
Smothers (id.). Appellants also argue that Fuimaono is not pertinent to the
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Application 11/122,758

9
invention of Smothers because Smothers does not identify any specific need
or problem with its deformation detection system and thus “there is no
reason for the person having ordinary skill in the art to look to non-
analogous art (i.e., Fuimaono …) for a solution to a non-existent need or
problem” (id. at 10).
We are not persuaded by Appellants’ argument that Fuimaono is non-
analogous art. Even when prior art is not in the same field of endeavor as
the claimed invention, it is still analogous prior art if it is “reasonably
pertinent to the particular problem with which the inventor is involved.” In
re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). “A reference is reasonably
pertinent if, even though it may be in a different field from that of the
inventor’s endeavor, it is one which, because of the matter with which it
deals, logically would have commended itself to an inventor’s attention in
considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
Thus, the question is not whether Smothers identified a problem with
its deformation detection system, but whether Fuimaono would have
commended itself to an inventor trying to solve the same problem addressed
by Smothers; specifically, detecting deformation of an intramedullary pin.
Since Fuimaono’s disclosure relates to the use of a fiber optic detection
system to determine the degree of curvature of a medical device component
within the body so that the coordinates of the device can be determined, we
find that Fuimaono is analogous prior art because it would have logically
commended itself to those skilled in the art considering the problem
addressed by Smothers.
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Appellants also argue that the cited references cannot be properly
combined because the combination would render Smothers’ device
unsatisfactory for its intended purpose (Appeal Br. 15). Appellants argue
that the bend sensor of Fuimaono only detects bends near the sensor, and
thus Fuimaono “does not indicate how such sensor can detect bends away
from the sensor itself” (id. at 16).
This argument is not persuasive. Smothers discloses that the flexible
reducer can have location elements or sensors at various points along its
length (FF 9). Thus, the combined disclosures of Smothers and Fuimaono
would have suggested to one of ordinary skill in the art fiber optic bend
sensors placed at multiple locations along the flexible reducer, in order to
detect deformation along its length.
Appellants also argue that Todoroki is non-analogous art (Appeal Br.
9). However, since we conclude that the invention of claim 1 would have
been obvious in view of Smothers and Fuimaono, as discussed above, we
need not reach the question of whether Todoroki is non-analogous art.
Conclusion of Law
The Examiner has provided an adequate basis for concluding that the
tracking system of claim 1 would have been obvious to a person of ordinary
skill in the art based on the cited references. Claims 2-4, 24, and 25 fall with
claim 1 because they were not argued separately. 37 C.F.R. § 41.37(c)(1)(vii).
With regard to the rejection of claim 5 based Smothers, Fuimaono,
Todoroki and Elstrom (Answer 6-7), Appellants have waived the
opportunity to present additional arguments based on Elstrom. See Appeal
Br. 17. Thus, we also affirm the rejection of claim 5.
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II.
The Examiner has rejected claims 8 and 9 under 35 U.S.C. § 103(a) as
obvious in view of Smothers, Fuimaono, Todoroki and Barrick. Claims 8
and 9 depend from claim 1 and further require that the fiber optic structure
“comprises a structure with sequentially arranged fiber optic loops” (claim
8) or “comprises at least two loop structures orientated at an angle with
respect to each other” (claim 9).
The Examiner relies on Smothers, Fuimaono, and Todoroki as
discussed above (Answer 7), and finds that Barrick discloses “a deformation
detection device comprising fiber optic loops arranged in pairs of loops …
[which] are sequential and oriented at an angle with respect to each other”
(id.). The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to modify the device suggested by Smothers,
Fuimaono, and Todoroki such that “the fiber optic structure comprises
sequentially arranged fiber optic loops (claim 8) or at least two loops
oriented at an angle with respect to each other (claim 9), as suggested by
Barrick, as such a structure allows for deformation detection over the length
of the device” (id. at 7-8).
Appellants do not provide arguments disputing the rejection of claim
9 as obvious in view of Smothers, Fuimaono, Todoroki and Barrick (see
Appeal Br. 18-20). Therefore, we summarily affirm the rejection of claim 9.
With regard to claim 8, Appellants argue that “[o]ther than stating the
sensor consists of paired loops, Barrick does not describe the sensor in any
further detail … [and] does not illustrate the sensor in sufficient detail to
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enable a determination of whether or not the device includes sequential
loops” (Appeal Br. 20).
We agree with Appellants that the Examiner has not adequately
shown that Barrick discloses or suggests “sequentially arranged fiber optic
loops.” Barrick discloses a system for shaping orthopedic implants that
comprises “a flexible fiber optic curvature sensor device … [which] is a tape
used to determine the required three-dimensional shape of an orthopaedic
implant” (Barrick 1, ¶ 0007). Barrick discloses that the “sensor relies on
linear, bipolar modulation of light throughput in specially treated fiber optic
loops sealed in laminations. The sensor consists of paired loops of optical
fibers that have been treated on one side to lose light proportional to
bending.” (Id.). Barrick does not disclose that the paired fiber optic loops
are sequentially arranged, and the Examiner has not adequately explained
why it would have suggested this limitation. Thus, we reverse the
obviousness rejection of claim 8.
III.
The Examiner has rejected claim 10 under 35 U.S.C. § 103(a) as
obvious in view of Smothers, Fuimaono, Todoroki, and Fradenburgh. Claim
10 depends from claim 1 and further requires that the “fiber optic structure
comprises at least two loop structures orientated substantially perpendicular
to each other.”
The Examiner relies on Smothers, Fuimaono, and Todoroki as
discussed above (Answer 8), and finds that Fradenburgh discloses “a fiber
optic structure comprising at least two loop structures oriented substantially
perpendicular to each other … to allow one to accurately determine a
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specific location” (id.). The Examiner concludes that it would have been
obvious to modify Smothers’ device “such that the fiber optic structure
comprises at least two loop structures oriented substantially perpendicular to
each other, as suggested by Fradenburgh et al., as such a structure allows for
accurate determination of a specific location” (id.).
Appellants argue that Fradenburgh is nonanalogous art because it “is
concerned with a damage detection system that incorporates optical fibers
embedded in or on composite structures, such as composite structures that
may be used in a space station” (Appeal Br. 21).
We agree with Appellants that the Examiner has not shown that a
person of ordinary skill in the art would have considered Fradenburgh to be
analogous art with respect to Smothers and Fuimaono. Fradenburgh
discloses that “space structures … will require a highly reliable structural
monitoring system because of the potential vulnerability to micrometeor
damage” (Fradenburgh, col. 1, ll. 24-30). Fradenburgh discloses a “fiber
optic damage detection system [that] includes a plurality of optical fibers
placed on or embedded in a composite matrix” (id. at col. 2, ll. 18-20) …
such that an impact strike in one of the areas will upset two particular fibers
and therefore pinpoint the location of damage within a defined area” (id. at
col. 2, ll. 23-29).
We agree with Appellants that the problem of detecting structural
damage on a structure such as a space station is sufficiently different from
the problem of detecting a bend in an intramedullary reducer that one of skill
in the art would not look to Fradenburgh to solve the problem for detecting
bends in a reducer. Thus, it is not the case that Fradenburgh “is reasonably
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pertinent to the particular problem with which the inventor is involved,” i.e.,
detecting deformation, i.e., bending, of a intramedullary pin, as compared to
damage to a composite structure. In re Klein, 647 F3d 1343, 1348 (Fed. Cir.
2011) (quoting In re Bigio, 381 F.3d at 1325). We therefore agree with
Appellants that Fradenburgh is non-analogous art.
IV.
The Examiner has rejected claim 6 under 35 U.S.C. § 103(a) as
obvious in view of Smothers and Kroll. Claim 6 reads:
6. A tracking system for an intramedullary pin whose spatial position
is determined and/or tracked in image-guided surgery, said intramedullary
pin having a proximal end and a distal end, comprising:
a reference device configured for attachment to the proximal end of
said intramedullary pin;
a medical navigation system configured to locate said reference
device and to determine an orientation of said intramedullary pin from the
proximal end based on the location of the reference device; and
a deformation detection device configured to detect deformations of
said intramedullary pin and communicate the deformations to said
navigation system, wherein said intramedullary pin includes an interior
cavity, and said deformation detection device extends in the interior cavity
of said intramedullary pin.

The Examiner relies on Smothers as discussed above (Answer 8-9).
The Examiner finds that Smothers fails “to disclose that the intramedullary
pin includes an interior cavity and the deformation detection device extends
in the interior cavity of the intramedullary pin” (id. at 9). The Examiner
finds that Kroll discloses “a transducer enclosed within a carrier … wherein
the carrier may be hermetically sealed to protect the transducer from bodily
fluids” (id.). The Examiner concludes that it “would have been obvious to
one of ordinary skill in the art … for the [Smothers] deformation detection
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device, which may be a transducer …, to be located within a hermetically
sealed interior cavity, as suggested by Kroll et al., as doing so can protect the
deformation detection device from bodily fluids” (id. at 9).
Appellants argue that Kroll “is simply disclosing that the sensor
elements … are placed inside a sealed enclosure so as to protect them from
fluids and/or contaminants” (Appeal Br. 25). Appellants argue that if
Kroll’s teaching was applied to Smothers’ location sensor, “the skilled
person simply would place the location sensor 75 within a carrier to protect
them from bodily fluids. Such carrier would still reside on the elongated
portion 52 of the intramedullary nail, as Kroll says nothing with regard to
creating an interior cavity in a device.” (Id. at 26.) Appellants argue that
“[p]resumably the transducer elements of Smothers’ location element 75 are
already suitable for insertion into the body (e.g., they already are protected
from bodily fluids)” (id. at 25).
We agree with Appellants that the Examiner has not shown that the
cited references would have made obvious a deformation detection device in
the interior cavity of an intramedullary pin, as required by claim 6. Kroll
discloses an “electromechanical transducer for an implantable hearing aid”
(Kroll, abstract). Kroll discloses that a carrier may be used to attach the
transducers to the ear (id. at col. 8, ll. 14-30). Kroll discloses that the carrier
can be “hermetically sealed to protect any enclosed transducer elements and
inertial mass from humidity and bodily fluids” (id. at col. 8, l. 67 to col. 9,
l. 2). As recognized by Appellants, although Kroll suggests protecting a
transducer from bodily fluids, the Examiner has pointed to nothing in Kroll
to suggest any reason to place a deformation detection device within the
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interior cavity of an intramedullary pin. Thus, we reverse the rejection of
claim 6 as being obvious in view of Smothers and Kroll.
SUMMARY
We affirm the rejection of claims 1-5, 9, 24, and 25 under 35 U.S.C.
§ 103(a). However, we reverse the rejection of claims 6, 8 and 10.
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-IN-PART

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