Ex Parte Wahrburg

Board of Patent Appeals and Interferences

Mar 20, 2009

10337621 (B.P.A.I. Mar. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JURGEN WAHRBURG
__________

Appeal 2009-2310
Application 10/337,621
Technology Center 3700
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Decided:1 March 20, 2009
__________

Before DEMETRA J. MILLS, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-10. We have jurisdiction under 35
U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-2310
Application 10/337,621

STATEMENT OF THE CASE
The claims are directed to an apparatus for positioning a surgical
instrument during a surgical orthopaedic procedure. Claim 1 is
representative of the claims on appeal, and reads as follows:
1. Apparatus for positioning a surgical instrument during a surgical
orthopaedic procedure relative to the coordinate system of the apparatus,
which comprises:
a. a surgical instrument;
b. a robotic control system for moving the surgical instrument
within the apparatus coordinate system according to program instructions;
c. an instrument sensor which is fixed relative to the surgical
instrument to indicate the true position of the surgical instrument within the
apparatus coordinate system;
d. a reference sensor which can be fixed to a patient’s bone to
indicate the position of the patient’s bone within the apparatus coordinate
system;
e. a detector for monitoring the positions of the instrument sensor
and the reference sensor; and
f. a signal processor which receives position signals from the
detector, and which generates a desired position signal to the robotic control
system to position the surgical instrument at a desired location relative to the
reference sensor by a process which involves minimising [sic] the difference
between the true position of the instrument and the desired location.

The Examiner relies on the following evidence:
Allen US 5,142,930 Sep. 1, 1992
Taylor US 5,695,500 Dec. 9, 1997

We affirm.

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Application 10/337,621

ISSUE
The Examiner finds that claims 1-6 and 8-10 are anticipated by
Taylor, and that claim 7 is rendered obvious by the combination of Taylor
and Allen.
Appellant contends that the apparatus of Taylor does not include a
reference sensor and a signal processor that receives position signals from
the detector, and which generates a desired position signal to the robotic
control system to position the surgical instrument at a desired location
relative to the reference sensor by a process that involves minimizing the
difference between the true position of the instrument and the desired
location.
Thus, the issue on appeal is: Has Appellant demonstrated that the
Examiner erred in finding that the apparatus of Taylor anticipates the
apparatus of claim 1, which requires a reference sensor and a signal
processor that receives position signals from the detector, and which
generates a desired position signal to the robotic control system to position
the surgical instrument at a desired location relative to the reference sensor
by a process that involves minimizing the difference between the true
position of the instrument and the desired location?

FINDINGS OF FACT
FF1 The Examiner rejects claims 1-6 and 8-10 under 35 U.S.C. § 102(b) as
being anticipated by Taylor (Ans. 32). As Appellant does not argue the

2 The pages of the Examiner’s Answer (Ans.) are not numbered, thus we
designate the title page of the Answer as page 1.
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Application 10/337,621

claims separately, we focus our analysis on claim 1, and claims 2-6 and 8-10
stand or fall with that claim. 37 C.F.R. § 41.37(c)(1)(vii).
FF2 The Examiner finds that the beacons of Taylor read on the sensors of
the instant claims (id. at 3-4 (citing Spec. 3; Taylor, col. 17, ll. 13-31)), and
that the sensing system of Taylor is equivalent to the claimed detectors (Ans.
4 (citing Taylor, col. 17, ll. 35-64)).
FF3 The Examiner finds further that Taylor teaches a processor, “wherein
the computer is disclosed as controlling the movement of the bone clamps
by applying breaking forces thereto, based on the relative positions of the
beacons and a selected anatomical location.” (Ans. 4 (citing Taylor, col. 17,
l. 2-col. 18, l. 25).) According to the Examiner, the “fact that the surgeon is
involved does not negate the fact that the computer, with a signal processor
as claimed, is also acting on the instruments.” (Ans. 4.)
FF4 The Examiner also finds that if the computer signals the surgeon when
the bone fragment is in place, (i) there must be a comparison between the
actual and desired positions by the signal processor, (ii) the fact that there is
a computer controlled brake requires a signal to be sent that allows the
computer controlled brake to function, (iii) which “must be done by
minimizing the difference between the desired and the actual position of the
surgical device, in this case the bone clamp, else the instrument would not
approach the desired position, by definition.” (Id.)
FF5 The Examiner finds also that minimizing the difference between the
actual position and the desired position would require an iterative process
(id. at 5).
FF6 Taylor teaches a
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Application 10/337,621

[S]ystem and method [that] includes a manipulator for
manipulating a surgical instrument relative to a patient’s body
and, a position sensor for sensing the position of the surgical
instrument relative to the patient’s body. The manipulator can
be manually or computer actuated and can have brakes to limit
movement.

(Taylor, Abstract.)
FF7 Taylor specifically exemplifies an embodiment involving
reconstructive plastic surgery of a patient’s skull (id at col. 17, l. 42-col. 18,
l. 25).
FF8 Beacons are attached to the skull (see Taylor, Figure 6), and the
position of the beacons relative to the patient’s anatomy is determined (id. at
col. 17, ll. 42-64). According to Taylor, “[o]nce the positions of the beacons
. . . are determined relative to the patient’s anatomy, the computer can
calculate or determine the relative position of the surgical instrument
connected to the apparatus . . . relative to the patient’s body.” (Id. at col. 17,
ll. 59-64.)
FF9 Taylor then teaches:
In addition to sensing the relative positions of a surgical
instrument relative to a position of a patient's anatomy, the
present invention can be used for positioning a first portion of a
patient’s body relative to a second portion of a patient’s body. .
. . [I]f the bone fragment or piece I was intended to be
repositioned relative to the remainder if the skull S, the sensing
system of the present invention could sense the positions of the
beacons . . . relative to each other. In a preferred embodiment,
the computer would already have a surgical plan and optimum
position of the bone fragment I. Once the beacon connected to
the bone fragment I reaches a predetermined position, the
computer would signal the surgeon of the accomplishment. . . .
Obviously, computer sensing and determining of relative
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positioning is highly more accurate than merely a surgeon's
visual sighting. In a preferred embodiment of the system, the
apparatus . . . has a bone clamp adapted to clamp onto the bone
fragment I and move the fragment I with computer controlled
brakes at each joint of the apparatus . . . to assist the surgeon in
fast and accurate relative positioning of the fragment I.

(Id. at col. 17, l. 65-col. 18, l. 24.)
FF10 The Examiner also rejects claim 7 under 35 U.S.C. § 103(a) as being
obvious over the combination of Taylor and Allen.

PRINCIPLES OF LAW
“It is well settled that a claim is anticipated if each and every
limitation is found either expressly or inherently in a single prior art
reference.” Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354,
1361 (Fed. Cir. 1998).

ANALYSIS
Appellant argues that claim 1 requires “that the apparatus includes a
reference sensor and a signal processor which receives position signals from
the detector, and which generates a desired position signal to the robotic
control system to position the surgical instrument at a desired location
relative to the reference sensor by a process which involves minimising [sic]
the difference between the true position of the instrument and the desired
location.” (App. Br. 4.)
Appellant asserts that Taylor does not teach or suggest such a detector
signal processor, but instead discloses a system that provides for coarse and
fine manipulations of an instrument (id.). According to Appellant, while
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Application 10/337,621

Taylor “describes that sensors may be used to sense the position of a surgical
instrument and the position of a beacon attached to a part of the patient’s
anatomy,” Taylor does not disclose “that these sensed positions are (i)
received by the signal processor, which then (ii) generates a position signal
to the robotic control system to position the surgical instrument at a desired
position relative to the reference sensor,” or “(iii) that the process by which
the signal processor determines the position signal is by minimising [sic] the
difference between the true position and the desired position.” (Id. at 4-5.)
Appellant argues that the Examiner’s reliance on the discussion in
Taylor of a braking system to stop a surgeon’s movement of an instrument is
misguided, as claim 1 requires that the control system position the
instrument, and not the surgeon (id. at 5). In addition, Appellant asserts, the
claims require “an iterative feedback system in which the differences
between the true position of the instrument and the desired location are
minimised [sic].” (Id.) According to Appellant:
The present invention takes a fundamentally different
approach to positioning a surgical instrument from that which is
discussed in the ’500 document. By virtue of a feedback loop
involving monitoring the relative positions of the instrument
and the patient’s bone, and a generator for position signals, the
apparatus of the present invention eliminates the need for
manual manipulation of a surgical instrument by a surgeon.
This is entirely contrary to the teachings of Taylor.

(Id.)
Appellant’s arguments have been carefully considered, but are not
deemed to be convincing. As noted by the Examiner, Taylor teaches a
processor wherein a computer is disclosed as controlling the movement of
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the bone clamps by applying breaking forces thereto, based on relative
positions of the beacons and selected anatomical location (FF3; see also,
FF9). As also noted by the Examiner (see FF3), claim 1 is drawn to an
apparatus, and does not exclude the possibility that both the apparatus and
the surgeon exert control over the position of the surgical instrument.
Given the operation disclosed by Taylor for positioning a bone
fragment (see FF9), we agree with the Examiner that such an operation must
inherently require a comparison between the actual and desired positions by
the signal processor; the fact that there is a computer controlled brake
requires a signal to be sent that allows the computer controlled brake to
function; which braking must be done by minimizing the difference between
the desired and the actual position of the surgical device, in this case the
bone clamp, else the instrument would not, by definition, approach the
desired position (FF4).
Moreover, we also agree that the process need be, to some extent,
iterative, as the process of minimizing the difference between the actual
position of the bone clamp, and thus the bone fragment, and its desired
position, would need be continually monitored during the placement
procedure (see FF5). That finding is supported by Taylor’s statement that
“the apparatus . . . has a bone clamp adapted to clamp onto the bone
fragment I and move the fragment I with computer controlled brakes at each
joint of the apparatus . . . to assist the surgeon in fast and accurate relative
positioning of the fragment I” (FF9), as at a minimum, the position is
determined over again at each joint of the apparatus.
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As to the rejection of claim 7 over the combination of Taylor and
Allen, as Appellant does not separately argue the merits of that rejection, we
affirm it for the reasons set forth above.

CONCLUSION(S) OF LAW
We find that Appellant has not demonstrated that the Examiner erred
in finding that the apparatus of Taylor anticipates the apparatus of claim 1,
which requires a reference sensor and a signal processor that receives
position signals from the detector, and which generates a desired position
signal to the robotic control system to position the surgical instrument at a
desired location relative to the reference sensor by a process that involves
minimizing the difference between the true position of the instrument and
the desired location.
We thus affirm the rejection of claim 1 under 35 U.S.C. § 102(b) as
being anticipated by Taylor, and as the claims stand or fall together, we also
affirm the rejection as to claims 2-6 and 8-10. As the rejection was not
separately argues, we also affirm the rejection of claim 7 under 35 U.S.C. §
103(a) as being obvious over the combination of Taylor and Allen.

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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Application 10/337,621

cdc
ROBERTS MLOTKOWSKI SAFRAN & COLE, P.C.
Intellectual Property Department
P.O. Box 10064
MCLEAN VA 22102-8064

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