Ex Parte Bertram

Patent Trial and Appeal Board

Dec 18, 2017

13220143 (P.T.A.B. Dec. 18, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/220,143 08/29/2011 Morton Bertram III MBE-11503/29 1253
131270 7590
BELZER PC
ATTN: John G. Posa
2905 Bull Street
Savannah, GA 31405
EXAMINER
GIBSON, ERIC SHANE
ART UNIT PAPER NUMBER
3776
MAIL DATE DELIVERY MODE
12/18/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte MORTON BERTRAM III
Appeal 2016-000421
Application 13/220,143
Technology Center 3700
Before JILL D. HILL, ERIC C. JESCHKE, and GORDON D. KINDER,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Morton Bertram III (Appellant) appeals under 35 U.S.C. § 134(a)
from the Examiner’s final decision rejecting claims 1-10, 12, and 13.1 We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Claim 11 has been canceled.
Appeal 2016-000421
Application 13/220,143
BACKGROUND
Independent claim 1, reproduced below, represents the claimed
invention.
1. A method of resecting a distal femur in
conjunction with total knee replacement surgery, comprising
the steps of:
obtaining an x-ray image of a patient's femur, the image
including a hip joint with a femoral head and a knee joint with
medial and lateral condyles and an intercondylar notch;
identifying a first line on the image from the center of the
femoral head to the center of the distal femur and the
intercondylar notch;
identifying a second line perpendicular to the first line,
the second line being at a predetermined, arbitrary distance
from the distalmost apex of the medial condyle;
measuring the resulting distance from the second line to
the distalmost apex of the lateral condyle;
providing a fixture including a cutting block, a foot
portion, and an arm interconnecting the cutting block to the foot
portion;
positioning the cutting block to perform a distal resection
of the medial condyle at the predetermined distance and a distal
resection of the lateral condyle at the measured resulting
distance, with the foot portion placed against an anterior cortex
of a patient's femur to establish any desired flexion or extension
associated with the resection; and
before performing an anterior resection, performing a
distal resection or resections of the medial and lateral condyles
using the fixture.
REJECTIONS
I. Claims 1—4 and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Axelson (US 7,618,421 B2, iss. Nov. 17, 2009) and
Woolson (US 4,841,975, iss. June 27, 1989). Final Act. 2.
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II. Claims 5-9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Axelson, Woolson, and Katz (US 6,077,270, iss. June 20,
2000). Final Act. 5.
III. Claim 10 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Axelson, Woolson, and Samuelson (US 5,611,802, iss.
Mar. 18, 1997). Final Act. 6.
IV. Claim 12 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Axelson, Woolson, and Fitz (US 2008/0281329 Al, pub.
Nov. 13,2008). Final Act. 7.
ANALYSIS
Rejection I
Appellant argues claims \^\ and 13 as a group. We select claim 1 as
representative. Claims 2^1 and 13 stand or fall with claim 1.
Regarding independent claim 1, the Examiner finds that, although
Axelson does not disclose the claimed pre-surgical planning steps of (1)
obtaining a femur x-ray, (2) identifying a first line along the femur, (3)
identifying a second line perpendicular to the first line, and (4) measuring
certain distances from the second line to the lateral condyle, Axelson
discloses resecting a distal femur using “a fixture including a cutting block
(14), a foot portion (10) and an arm (12) interconnecting the cutting block to
the foot portion.” Final Act. 2. Axelson also discloses “positioning the
cutting block to perform a distal resection of a medial condyle at a
predetermined distance and a distal resection of a lateral condyle at a
resulting distance,” wherein the foot is “placed against an anterior cortex of
a patient’s femur (1) to establish any desired flexion or extension associated
with the resection.” Id. (citing Axelson 4:28-33, Figs. 5 and 6). The
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Examiner also finds that Axelson discloses, “before performing an anterior
resection, performing a distal resection or resections of the medial and
lateral condyles using the fixture.” Id. at 2-3 (citing Axelson 5:4-5
(“Following distal femoral resection, the femur is sized using” conventional
sizing or software algorithms)).
Regarding the claimed pre-surgical planning steps, the Examiner finds
that Woolson discloses these limitations. Final Act. 3 (citing Woolson 1:1-
6, 3:50-54, 4:13-19 and 32-38). The Examiner concludes that it would
have been obvious to modify Axelson’s method to include Woolson’s pre-
surgical planning steps “to permit preoperative planning of the surgery to
determine the position of a bone-cut defining guide relative to the bone to be
cut.” Id. at 4.
Reasoning
Appellant argues that the Examiner’s proposed rationale for
combining Axelson and Woolson contains error. Appeal Br. 2-3.
According to Appellant, the Examiner’s rationale is “naive at best,” and the
proposed combination is “not needed ‘to permit preoperative planning.’” Id.
Appellant then contends that Axelson discloses its own preoperative
planning via navigation software, and therefore teaches away from
Appellant’s method of using radiography for preoperative planning. Id. at
4-5.
Regarding whether the Examiner’s reasoning is supported by a
rational underpinning, we initially note that Axelson’s disclosure of its own
preoperative planning method does not constitute a teaching away from the
claimed preoperative planning method, because Axelson’s disclosure does
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Application 13/220,143
not “criticize, discredit, or otherwise discourage the solution claimed.” In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Further, it is obvious to substitute one known element or method for
another to obtain predictable results. See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 416 (2007). Appellant has not explained why Axelson’s and
Woolson’s preoperative planning methods are other than known alternatives,
or why the results of combining Axelson with Woolson would be
unpredictable. In addition, Appellant does not contend that the Examiner’s
proffered reasoning of “permit[ting] preoperative planning of the surgery to
determine the position of a bone-cut defining guide relative to the bone to be
cut” lacks a rational basis. We therefore are not persuaded by this argument.
Distal before Anterior
Appellant also argues that “Woolson never performs the distal cut(s)
before the anterior resection and, in fact, teaches away from making an
initial distal cut.” Appeal Br. 3. Appellant, however, does not challenge the
Examiner’s finding that Axelson discloses this limitation; rather, Appellant
makes a general statement that “the Examiner’s other interpretations of
Axelson are incorrect.” Id.
Appellant’s argument does not persuade us that the Examiner erred in
finding that Axelson discloses performing a distal resection or resections of
the medial and lateral condyles using its fixture before performing an
anterior resection.
“Predetermined” and “Resulting” Distances
Appellant next argues that the Examiner erred in finding that Axelson
positions its cutting block based on “predetermined” and “resulting”
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distances, because Axelson does not disclose determining such distances.
Appeal Br. 3. Appellant then argues that, while Woolson employs radiant
energy scan imaging for preoperative planning, Woolson always performs
an anterior resection first. Id. at 5.
Appellant’s arguments do not address the Examiner’s proposed
combination of Axelson and Woolson, and instead point out missing
disclosure from the individual references. These arguments are not
persuasive, because one cannot establish non-obviousness by attacking
references individually where the rejections are based on combinations of
references. In re Keller, 642 F.2d 413, 426 (CCPA 1981).
Rejection II
Appellant argues claims 5-9 as a group. We select claim 5 as
representative. Claims 6-9 stand or fall with claim 5.
The Examiner finds that Katz discloses a device for condylar resection
comprising two separate slots 95 to guide a cutting blade for cutting medial
and lateral condyles, a depth gauge 91 for measuring a distance that the
cutting slots are from an apex of a distal end surface of the medial and lateral
condyles, and a linkage 96. Final Act. 5 (citing Katz 12:33^18, Figs. 11 and
12). The Examiner concludes that it would have been obvious to modify
Axelson’s cutting block to have “separate cutting slots for performing the
distal resections of the medial and lateral condyles,” a “depth gauge for
measuring the distance between the distalmost apex of the medial and lateral
condyles,” and “a linkage for ensuring that the two slots are at all times
coplanar” to facilitate measuring a distance from the cutting slots to the high
point of the distal end surface of the medial and lateral condyles. Id. at 5-6.
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Appellant argues that Axelson (1) “has no need for depth gauges”
because Axelson “relies on navigation software to indicate all proper
alignments,” (2) “does not need separate slots” because it does not perform
independent medial and lateral resections, and (3) has no need to measure
the distance from the cutting slots to the high point of the distal end surfaces
of the condyles. Appeal Br. 5-6.
These arguments do not persuade us that the Examiner’s proposed
combination with Katz contains error. Appellant has not explained why the
Examiner’s proffered reasoning lacks a rational basis. As stated above, it is
obvious to substitute one known element or method for another to obtain
predictable results. See KSR, 550 U.S. at 416. Appellant has apprised us of
no unpredictable results that would occur from the substitution of Katz’s
device (or certain structure therefrom) and corresponding resection method.
Appellant likewise does not contend that the device and method of Axelson
and Katz are other than known alternatives. We therefore are not persuaded
by this argument.
Rejection III
Claim 10 recites the cutting block being “initially rotatable to first
adjust for the predetermined distance.” The Examiner finds this disclosed in
Samuelson, and concludes that it would have been obvious to make
Axelson’s cutting block “initially rotatable to first adjust for the
predetermined distance ... to permit proper measurement of the amount of
bone to be cut from the femur.” Final Act. 6-7.
Appellant argues that Axelson’s cutting block is initially rotatable, but
that such rotation is not used to adjust for a predetermined distance, because
Axelson uses navigation software rather than deriving a predetermined
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distance. Appeal Br. 6. Appellant’s argument does not persuade us that the
Examiner’s finding regarding Samuelson is in error. Regarding the
Examiner’s conclusion of obviousness, Axelson’s available rotation, and the
reason therefore, does not persuade us that the Examiner’s reasoning lacks a
rational basis.
Rejection IV
Claim 12 recites “obtaining a digital, standing x-ray image of a
patient’s femur.” The Examiner finds this disclosure in Fitz, and concludes
that it would have been obvious to modify the combined teachings of
Axelson and Woolson to x-ray the patient’s femur to obtain a standing,
weight-bearing image of a knee, to determine a biomechanical axis of the
femur, and to cross reference the determined biomechanical axis with, e.g., a
CT scan. Final Act. 7.
Appellant argues that it would not have been obvious to x-ray the
patient’s femur, because Axelson teaches away from using radiography, and
Woolson performs an initial anterior cut. Appeal Br. 6. Appellant
additionally argues that Fitz’s x-ray is used to determine differences in leg
length, which differs from Appellant’s purposes.
As explained above, Axelson’s disclosure of its own preoperative
planning method does not constitute a teaching away from, or otherwise
render unreasonable, the claimed preoperative planning method, because
Axelson’s disclosure does not “criticize, discredit, or otherwise discourage
the solution claimed” Fulton, 391 F.3d at 1201. Similarly, Fitz’s differing
reason for x-ray determination of a biomechanical axis does not persuade us
that the Examiner’s reasoning lacks a rational basis, because it is not
necessary that the prior art suggest the modification for the same purpose as
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Appellant. See, e.g., In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006), In re
Lintner, 458 F.2d 1013, 1016 (CCPA 1972).
DECISION
We AFFIRM the pending rejections.
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.
§ 41.50(f).
AFFIRMED
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