Ex Parte Turley et al

Board of Patent Appeals and Interferences

Feb 8, 2011

10138012 (B.P.A.I. Feb. 8, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P Alexandria, 0 Box 1450 Virginia 22313- 1450
www uspto gov
23643 7590 02/10/2011
BARNES & THORNBURG LLP
APPLICATION NO.
EXAMINER
11 SOUTH MERIDIAN MORGAN, ROBERT w
10/138,012 05/03/2002 Troy A. Turley 265280-70574 1236
FILING DATE
INDIANAPOLIS, IN 46204 I ARTUNIT I PAPERNUMBER I
FIRST NAMED INVENTOR
Please find below andlor attached an Office communication concerning this application or proceeding.
ATTORNEY DOCKET NO.
NOTIFICATION DATE
The time period for reply, if any, is set in the attached communication.
CONFIRMATION NO.
DELIVERY MODE
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
0211 01201 1 ELECTRONIC
indocket @btlaw.com
PTOL-90A (Rev. 04107)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte TROY A. TURLEY,
LESA D. HERSHBERGER, and
BARRY A. WADSWORTH
Appeal 2009-014309
Application 1011 38,O 12
Technology Center 3600
Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 5 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. 5 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-014309
Application 101138,012
Troy A. Turley, Lesa D. Hershberger, and Barry A. Wadsworth
(Appellants) seek review under 35 U.S.C. 5 134 (2002) of a final rejection of
claims 1 - 1 1, 13-23, 25-35, 37, and 38, the only claims pending in the
application on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. 5 6(b) (2002).
The Appellants invented an online fracture management system in
assisting a surgeon in the selection of an implantable orthopaedic component
(Specification 1 :9- 1 1).
An understanding of the invention can be derived from a reading of
exemplary claim 25, which is reproduced below [bracketed matter and some
paragraphing added].
25. An article comprising:
[I] a computer-readable signal-bearing medium,
the medium comprising a plurality of instructions which,
when executed by a processing unit, causes the
processing unit to:
[2] determine a user-selected image of an orthopaedic anomaly
and
2 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed October 16, 2008) and the Examiner's Answer ("Ans.," mailed
February 20,2009).
Appeal 2009-014309
Application 1011 38,O 12
generate an image- selected control signal in response
thereto,
[3] determine an orthopaedic component
for treating the orthopaedic anomaly
from a plurality of orthopaedic components
in response to the image-selected control signal, and
[4] display a graphical link
to a surgical technique instruction guide
associated with the orthopaedic component
on a display monitor
in response to the image-selected control signal,
the surgical technique instruction guide providing
a set of manufacturer-specific step-by-step
instructions on the proper implantation of the
orthopaedic component.
The Examiner relies upon the following prior art:
Chiang US 5,442,759 Aug. 15,1995
Wong US 6,260,021 B1 Jul. 10, 2001
Dormond EP 0 303 930 A2 Feb. 22, 1989
Claims 1- 1 1 stand rejected under 35 U.S.C. 5 101 as directed to non-
statutory subject matter.
Claims 1-9, 13-21, and 25-32 stand rejected under 35 U.S.C. 5 103(a) as
unpatentable over Dormond and Chiang.
Claims 10, 11, 22, 23, 33-35, 37, and 38 stand rejected under 35 U.S.C.
5 103(a) as unpatentable over Dormond, Chiang, and Wong.
Appeal 2009-014309
Application 101138,012
DISPOSITION OF THE APPEAL
The Examiner entered a new ground of rejection in the Examiner's
Answer against claims 1- 1 1 under 35 U.S.C. $ 101 as being directed to
nonstatutory subject matter. Answer 4. The Examiner properly gave notice
of the new ground of rejection (Answer 2) and the Technology Center
Director approved it. Answer 16. As the Examiner's Answer indicated
(Answer 15), the Appellants were required to respond to the new grounds
within two months in either of two ways: 1) reopen prosecution (see 37 CFR
41.39(a)(2)(b)(l)); or 2) maintain the appeal by filing a reply brief as set
forth in 37 CFR 41.41 (see 37 CFR 41.39(a)(2)(b)(2) ), "to avoid sua sponte
dismissal of the appeal as to the claims subject to the new ground of
rejection." Answer 15. According to the record before us, neither option
appears to have been exercised.
Accordingly, the appeal as to claims 1- 1 1, subject to the new ground
of rejection under 35 U.S.C. $101 as being directed to nonstatutory subject
matter stands dismissed.
Upon return of the application to the Examiner, the Examiner should
(1) cancel claims 1-1 1 subject to the new ground of rejection and (2) notify
the Appellants that the appeal as to claims 1 - 11, subject to the new ground of
rejection under 35 U.S.C. $101, as being directed to nonstatutory subject
matter, is dismissed and claims 1- 11 are cancelled. See Manual of Patent
Examining Procedure (MPEP) $ 1207.03, 8th ed., Rev. 7, Jul. 2008.
Given that the appeal as to claims 1-1 1 stands dismissed, the
rejections before us for review are reduced to as follows:
Claims 13-21, and 25-32 stand rejected under 35 U.S.C. $ 103(a) as
unpatentable over Dormond and Chiang.
Appeal 2009-014309
Application 101138,012
Claims 22, 23, 33-35, 37, and 38 stand rejected under 35 U.S.C. 5 103(a)
as unpatentable over Dormond, Chiang, and Wong.
ISSUES
The issue of obviousness turns on whether it was predictable for
Dormond's links to point to a surgical technique instruction guide providing
a set of manufacturer-specific step-by-step instructions, and whether Chiang
is evidence of such.
FACTS PERTINENT TO THE ISSUES
Facts Related to the Prior Art
Dorrnond
01. Dormond is directed to an expert system which provides one or
more suggested treatments for a patient with physical trauma, and
in particular, orthopedic trauma. Dormond Abstract and 2:5-6.
02. Dormond uses software to present images of anatomical
structure such as bones, each such bone image having a link that
when the image is selected, the link is activate to present further
information. Dormond 3: 19-29; 4:33-45,457-5:s; 6:48-49.
Chiang
03. Chiang is directed to a computer implemented tutorial system
that supports direct user interaction with a software product
concurrently executing with the tutorial. The tutorial system
controls the resources of a data processing device to present
Appeal 2009-014309
Application 101138,012
tutorial lesson information, monitor user input and provide input
assistance upon request. Chiang 3 : 18-24.
04. Chiang's tutorial system details each step required by the
operator and assists the operator in performance. Chiang. 3:37-57.
ANALYSIS
Claims 13-21, and 25-32 rejected under 35 U.S.C. § 103(a) as unpatentable
over Dormond and Chiang.
The Examiner found that Dormond is directed to an expert system which
provides suggested treatments for a patient with orthopedic trauma using
software to present images of anatomical structure such as bones, each such
bone image having a link that when the image is selected, the link is activate
to present further information. Ans. 5. See FF 01 and 02. Thus Dormond
describes the first 3 limitations of claim 22, and this is uncontested.
The Appellants argue that Dormond links to textbook information which
is not "the surgical technique instruction guide providing a set of
manufacturer-specific step-by-step instructions on the proper implantation of
the orthopaedic component" as claimed. Appeal Br. 6-8. The Appellants
submitted an affidavit to support that contention. Appeal Brief Evidence
Appendix. This argument and its attendant affidavit are not pertinent as the
Examiner applied Chiang for such step by step instructions.
The Examiner found that Chiang described tutorial system details each
step required by the operator and assists the operator in performance. Ans.
5-6. See FF 04. The Appellants argue that Chiang fails to show an
orthopaedic system using its step by step instructions. Appeal Br. 8-9.
Appeal 2009-014309
Application 101138,012
The Appellants' contention does not persuade us of error on the part of
the Examiner because the Appellants respond to the rejection by attacking
the references separately, even though the rejection is based on the
combined teachings of the references. Nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co. Inc., 800 F.2d 1091, 1097, 231 USPQ 375, 380 (Fed. Cir. 1986).
Chiang is applied only to show that it was predictable to use step by step
instructions, such as in surgical technique instruction guide, with product
help. Thus it was predictable to use such a surgical technique instruction
guide as the target of Dormond's links. Of course, even absent such
evidence, such information is simply non-functional descriptive material.
Nonfunctional descriptive material cannot render nonobvious an invention
that would have otherwise been obvious. In re Ngai, 367 F.3d 1336, 1339
(Fed. Cir. 2004). C$ In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983)
(when descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms of patentability).
Claims 22, 23, 33-35, 37, and 38 rejected under 35 U.S.C. § 103(a) as
unpatentable over Dormond, Chiang, and Wong.
The Appellants rely on the arguments in support of the independent
claims.
CONCLUSIONS OF LAW
Rejecting claims 13-21, and 25-32 under 35 U.S.C. 5 103(a) as
unpatentable over Dormond and Chiang is proper.
Appeal 2009-014309
Application 101138,012
Rejecting claims 22, 23, 33-35, 37, and 38 under 35 U.S.C. $ 103(a) as
unpatentable over Dormond, Chiang, and Wong is proper.
DECISION
To summarize, our decision is as follows.
Therejectionof claims 13-21, and25-32under 35 U.S.C. $ 103(a) as
unpatentable over Dormond and Chiang is sustained.
The rejection of claims 22, 23, 33-35, 37, and 38 under 35 U.S.C.
$ 103(a) as unpatentable over Dormond, Chiang, and Wong is
sustained.
Upon return of the application to the Examiner, the Examiner should
(1) cancel claims 1-1 1 subject to the new ground of rejection and (2) notify
the Appellants that the appeal as to claims 1 - 11, subject to the new ground of
rejection under 35 U.S.C. $101, as being directed to nonstatutory subject
matter, is dismissed and claims 1- 11 are cancelled.
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) (2007).
AFFIRMED
mev
Appeal 2009-014309
Application 10/138,012
1 Address
2 BARNES & THORNBURG LLP
3 11 SOUTH MERIDIAN
4 INDIANAPOLIS IN 46204