Ex Parte BertramDownload PDFPatent Trial and Appeal BoardDec 18, 201713220143 (P.T.A.B. Dec. 18, 2017) Copy Citation 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. 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. 2 Appeal 2016-000421 Application 13/220,143 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 3 Appeal 2016-000421 Application 13/220,143 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 4 Appeal 2016-000421 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” 5 Appeal 2016-000421 Application 13/220,143 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. 6 Appeal 2016-000421 Application 13/220,143 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 7 Appeal 2016-000421 Application 13/220,143 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 8 Appeal 2016-000421 Application 13/220,143 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 9 Copy with citationCopy as parenthetical citation