ORTHOSOFT INC.

Patent Trials and Appeals Board

Jan 28, 2021

2020003958 (P.T.A.B. Jan. 28, 2021)

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.
15/968,868 05/02/2018 Di LI 05015228-129US-1 8709
93758 7590 01/28/2021
NORTON ROSE FULBRIGHT CANADA LLP (Zimmer Cas)
1 Place Ville Marie
Suite 2500
Montreal, QUEBEC H3B 1R1
CANADA
EXAMINER
LAWSON, MATTHEW JAMES
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
01/28/2021 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):
NRFCUSPTOMAIL@nortonrosefulbright.com
ipcanada@nortonrose.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DI LI, LOUIS-PHILIPPE AMIOT, HERBERT ANDRE JANSEN,
FRANCOIS PARADIS, ISABELLE ROBITAILLE,
BRUNO FALARDEAU, KARINE DUVAL, MYRIAM VALIN,
YVAN LEONE, YONIK BRETON, BENOIT PELLETIER,
MATHIEU CHEVRIER, and JEROME CASAUBON
Appeal 2020-003958
Application 15/968,868
Technology Center 3700

Before JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK,
Administrative Patent Judges.

STEPINA, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1 and 3–10. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART and enter a NEW GROUND OF REJECTION
pursuant to 37 C.F.R. § 41.50(b).

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Orthosoft, ULC.
Appeal Br. 2.
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Application 15/968,868

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CLAIMED SUBJECT MATTER
Appellant’s invention relates to an acetabular cup prosthesis
positioning instrument and system. Claims 1 and 6 are independent. Claim
6, reproduced below, is illustrative of the claimed subject matter:
6. A system comprising:
a cup impactor including a shaft, a cup coupler at a cup
end of the shaft adapted to releasably connect a cup in fixed
relation for subsequent impacting, a handle at an impacting end
of the shaft, a visual guide mounted to at least one of the shaft
and the handle, the visual guide producing visual guidance
toward at least one anatomical landmark of a pelvis; and
an inertial sensor unit configured for producing at least an
orientation output related to an orientation of the cup impactor,
the inertial sensor unit including a processor and a program
executable by the processor and including:
calibration data based on a planned geometric
relation between an initial reference orientation of the cup
impactor assembly and the at least one anatomical
landmark of the pelvis as aligned with the visual guidance
of the visual guide, the calibration data for calibrating the
inertial sensor unit relative to the pelvis for the inertial
sensor unit to produce said orientation output, and
a desired acetabular cup orientation data based on
preoperative planning.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Taylor US 2009/0099665 A1 Apr. 16, 2009
Sherman US 2014/0276871 A1 Sept. 18, 2014

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Application 15/968,868

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REJECTIONS
I. Claims 6 and 7 are rejected under 35 U.S.C. § 102(a)(2) as
being anticipated by Sherman.
II. Claims 1, 3–5, and 8–10 are rejected under 35 U.S.C. § 103 as
unpatentable over Sherman and Taylor.
OPINION
Rejection I; Anticipation Based on Sherman
Appellant argues, inter alia, that Sherman does not use “preoperative
planning” because each of the steps disclosed by Sherman occur after
surgery has begun. Appeal Br. 7. Specifically, Appellant asserts that step
812 of Sherman, upon which the Examiner relies, is performed as part of a
conventional intraoperative approach. Id.
The Examiner responds that, because Sherman’s surgeon selects the
type of surgery to be performed, the selection is performed before the
surgery. Ans. 3. According to the Examiner, because Appellant does not
specifically define “preoperative,” the surgeon determining a type of surgery
after exposure of a surgical site, but prior to actually performing the intended
surgical procedure is preoperative planning. Ans. 3–4.
Appellant replies that defining the steps of placing the patient on the
operating table and making incisions to expose the acetabulum as
preoperative planning “defies plain logic and is simply contrary to general
definitions in the art.” Reply Br. 2.
Appellant has the better position. Appellant’s Specification describes
preoperative planning as including obtaining a model of the patient’s hip
using “any appropriate imaging technique.” Spec. ¶¶ 30–32. After the
model is obtained, intraoperative steps are performed including placing the
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patient in position and then exposing the acetabulum. Spec. ¶¶ 33–35. The
acetabular cup is then oriented based on the preoperative planning. Spec.
¶¶ 35, 38, 40. Accordingly, the broadest reasonable interpretation in light of
the Specification of the term “preoperative planning” requires the planning
to be performed prior to any intraoperative step including exposing the
acetabulum. The Examiner does not provide evidence or persuasive
reasoning to support the position that preoperative planning includes
exposing the surgical site. Indeed, Sherman describes that method 800 in
which surgery is performed on the acetabulum “begins with block 802 in
which an orthopedic surgeon exposes the surgical site.” Sherman ¶ 66; see
also Appeal Br. 7.
Thus, the Examiner’s interpretation of claim 6 is unreasonably broad.
This unreasonably broad claim interpretation led the Examiner to find that
Sherman discloses using orientation data based on preoperative planning.
Under the broadest reasonable interpretation of claim 6, in light of the
Specification, this finding is not supported by a preponderance of the
evidence. Accordingly, Appellant’s argument on this point is persuasive,
and we do not sustain the rejection of claim 6 and associated dependent
claim 7 as being anticipated by Sherman.

Rejection II; Obviousness Based on Sherman and Taylor
Claims 1 and 3–5
Like claim 6, claim 1 recites, inter alia, orientation data based on
preoperative planning. See Appeal Br. 11 (Claims App.). However, unlike
claim 6, which recites “the inertial sensor unit including a processor and a
program executable by the processor and including” the claimed orientation
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data, claim 1 merely requires that the inertial sensor unit has a “patient-
specific file comprising” the data. Id.
In the rejection of claim 1, the Examiner makes the same findings
regarding the teachings of Sherman. See Final Act. 4. In particular, the
Examiner finds that Sherman discloses a shaft 140, a cup coupler 132, a
handle 138, and an inertial sensor unit 104 having a patient-specific file
comprising the claimed data. Id. The Examiner relies on Taylor to disclose
a light projector. Id. at 5.
Appellant argues that “[t]he argument for claim 6 is applied mutatis
mutandis to the rejection of claim 1. Sherman does not describe the claimed
limitations of ‘preoperative planning’, ‘planned geometric relation’, and
‘calibration data’ of claim 6.” Appeal Br. 9. According to Appellant,
“Taylor does not make up the deficiencies of Sherman.” Id.
In our review of Sherman and Taylor, we find the references teach
everything recited in claim 1 except the limitations “calibration data based
on a planned geometric relation” and “orientation data based on preoperative
planning,” as argued by Appellant. Appellant does not argue that Sherman
fails to teach that the inertial sensor unit has a patient-specific file. Rather,
Appellant argues that although the claimed “preoperative planning data is
data obtained preoperatively such as by a surgeon . . . Sherman focuses on
an intraoperative method.” Reply Br. 2. We understand that, in Sherman,
the orientation sensor data (Sherman ¶ 71) generated by the inserter sensor
module 104 (non-functional descriptive material) is data, but not the specific
type of data recited, namely, “preoperative planning data.” Similarly,
Sherman’s alignment sensor data (Sherman ¶¶ 74–75) is data, but is not
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“based on a planned geometric relation.” Therefore, Sherman does not
explicitly teach the data is planned or obtained during preoperative planning.
Our reviewing court has held that non-functional descriptive material
cannot lend patentability to an invention that would have otherwise been
anticipated by the prior art. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (noting that
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). King Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267,
1279 (Fed. Cir. 2010) (“[T]he relevant question is whether ‘there exists any
new and unobvious functional relationship between the printed matter and
the substrate.”’) (citations omitted). See also In re Xiao, 462 Fed. Appx.
947, 950–52 (Fed. Cir. 2011) (Non-precedential) (Non-functional
descriptive material, being useful and intelligible only to the human mind, is
given no patentable weight).
Appellant argues that the claimed preoperative planning data recited
in claim 1 patentably distinguishes over the prior art data obtained
intraoperatively. We disagree because in claim 1, the data obtained is not
functionally related to its substrate inasmuch as it is not executed by a
processor and does not otherwise affect the function of the cup impactor
assembly. Rather, the data recited in claim 1 is merely stored in a “patient-
specific file.”
Therefore, we determine that the disputed claim limitation constitutes
non-functional descriptive material (“NFDM”) and is not entitled to
patentable weight. This is analogous to Curry, where the type of data was
found to be non-functional descriptive material when it “does not
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functionally change either the data storage system or communication system
used in the method of claim 81.” Ex parte Curry, 84 USPQ2d 1272, 1274
(BPAI 2005) (informative), aff’d, No. 2006-1003 (Fed. Cir. June 12, 2006)
(Rule 36) (“Nonfunctional descriptive material cannot render nonobvious an
invention that would have otherwise been obvious.”).
As a result, in claim 1, Appellant’s claimed preoperative planning data
does not distinguish his invention from the prior art. This is in contrast to
claim 6, which recites structure, i.e., a processor programmed to perform an
algorithm for carrying out the recited function of producing an orientation
output. See Appeal Br. 12 (Claims App.); Spec. ¶ 38.
To find otherwise would mean that each novel set of data that is
merely stored on a device is sufficient to warrant a separate patent for a
device, even if the remainder of the invention is unchanged. This would
result not only in Appellant’s preoperative data distinguishing over the prior
art, but equally the same assembly recited in claim 1 having a file containing
a patient’s phone number, age, or other information distinguishing over the
prior art. To give effect to such an interpretation, we would need to ignore
our reviewing court’s concerns with repeated patenting.
The rationale behind this prior art rejection is preventing the repeated
patenting of essentially a known product by the mere inclusion of novel non-
functional descriptive material. King Pharms., 616 F.3d at 1279 (“The
rationale behind this line of cases is preventing the indefinite patenting of
known products by the simple inclusion of novel, yet functionally unrelated
limitations.”) Cf. In re Ngai, 367 F.3d at 1339 (“If we were to adopt Ngai’s
position, anyone could continue patenting a product indefinitely provided
that they add a new instruction sheet to the product.”).
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We agree with the Examiner that the subject matter of claim 1 would
have been obvious based on the combined teachings of Sherman and Taylor
because the Examiner’s proposed combination of the disclosures of these
references teaches each and every limitation of the claim. Any argued
difference between the prior art and the claimed invention is simply a
substitution of one piece of NFDM (preoperative data) for another piece of
NFDM (intraoperative data), which does not change the functioning of the
claimed cup impactor assembly. Therefore, we sustain the Examiner’s
rejection of claim 1, and claims 3–5 depending therefrom, as unpatentable
over Sherman and Taylor. However, due to the extent to which our
interpretation of claim 1 differs from the Examiner’s (see Final Act. 4; see
also Ans. 3), we designate our affirmance a NEW GROUND OF
REJECTION to afford Appellant a full and fair opportunity to react to the
thrust of the rejection. See In re Kronig, 539 F.2d 1300, 1302 (CCPA 1976)
(“the ultimate criterion of whether a rejection is considered ‘new’ in a
decision by the board is whether appellants have had [a] fair opportunity to
react to the thrust of the rejection.”).
Claims 8–10
Claims 8–10 depend from claim 6. Appeal Br. 12–13 (Claims App.).
The Examiner’s use of Taylor does not remedy the deficiency discussed
above regarding claim 6. See Final Act. 4–5. Accordingly, for the same
reasons, we do not sustain the rejection of claims 8–10.
CONCLUSION
The Examiner’s rejections are affirmed in part.
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Application 15/968,868

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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed New
Ground
6, 7 102(a)(2) Sherman 6, 7
1, 3–5,
8–10
103 Sherman, Taylor 1, 3–5 8–10 1, 3–5
Overall
Outcome
1, 3–5 6–10 1, 3–5
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under §41.52 by the Board upon the same Record. . . .
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01 (9th Ed., Rev.
10.2019, June 2020).

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Application 15/968,868

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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)(1)(iv) (2019).
AFFIRMED IN PART; 37 C.F.R. § 41.50(b)