Ex Parte Fischer et alDownload PDFPatent Trial and Appeal BoardNov 1, 201713472785 (P.T.A.B. Nov. 1, 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. 13/472,785 05/16/2012 Michael G. Fischer 4394.546US2 8472 104326 7590 11/03/2017 Schwegman Lundberg & Woessner / Zimmer P.O. Box 2938 Minneapolis, MN 55402 EXAMINER NGUYEN, HUONG Q ART UNIT PAPER NUMBER 3736 NOTIFICATION DATE DELIVERY MODE 11/03/2017 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): SLW @ blackhillsip.com USPTO@slwip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL G. FISCHER, ANDREW SIZELOVE, KEITH R. BEREND, and DAVID MURRAY Appeal 2015-0003251 Application 13/472,7852 Technology Center 3700 Before KEVIN W. CHERRY, CYNTHIA L. MURPHY, and KENNETH G. SCHOPFER, Administrative Patent Judges. CHERRY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Michael G. Fischer et al. (Appellants) seek review under 35 U.S.C. § 134(a) of a Final Rejection of claims 1—21, 23—32, and 34^42, 1 Our decision references the Appellants’ Appeal Brief (“Appeal Br.”), filed June 4, 2014, Appellants’ Reply Brief (“Reply Br.”), filed September 30, 2014, the Final Action (“Final Act.”), mailed December 13, 2013, and the Examiner’s Answer (“Ans.”), mailed July 31, 2014. 2 Appellants’ Appeal Brief identifies “Synvasive Technology, Inc., which is a subsidiary of Zimmer, Inc.” as the real party in interest for this appeal (Appeal Br. 2). Appeal 2015-000325 Application 13/472,785 the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We REVERSE. Appellants’ claimed invention “relates to devices, systems and methods for enhancing knee surgery including measuring forces in flexion and/or extension gap(s) during knee arthroplasty” (Spec. 12). Claims 1 and 29 are independent claims. Claim 1 is illustrative of the subject matter on appeal and is reproduced below (paragraphing added). 1. A system for measuring a force or a pressure in a space within one side of an anatomical joint at a time, the system comprising: a hand-held unicompartmental sensor configured to measure a force or a pressure generated between one of opposing medial condyles or opposing lateral condyles within the anatomical joint, the unicompartmental sensor configured to measure the force or pressure generated between one set of opposing condyles at a time, the unicompartmental sensor comprising an elongate housing and a sensor element, the elongate housing comprising a thin distal portion, including the sensor element, and a proximal handle portion. (Appeal Br. 16, Claims App.). Rejections Claims 1—4, 6—11, 23, 29-32, 34—38, and 42 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Trainor et al. (US 5,656,785, iss. Aug. 12, 1997). 2 Appeal 2015-000325 Application 13/472,785 Claims 5, 12—21, and 39-41 stand rejected under 35 U.S.C. § 103(a) as being unpatentable as obvious over Trainor and DiSilvestro (US 2006/0241569 Al, pub. Oct. 26, 2006). Claims 24—28 stand rejected under 35 U.S.C. § 103(a) as being unpatentable as obvious over Trainor and Couture et al. (US 2007/0232959 Al, pub. Oct. 4, 2007). ANALYSIS Claim 1 recites “a hand-held unicompartmental sensor configured to measure a force or a pressure generated between one of opposing medial condyles or opposing lateral condyles within the anatomical joint” that is “configured to measure the force or pressure generated between one set of opposing condyles at a time” (Appeal Br. 18, Claims App.). Claim 29 has similar limitations (see id. at 22, Claims App.). We consider claim 1 representative, and our discussion applies equally to claim 29. We are persuaded by Appellants’ argument that the Examiner erred by determining that Trainor disclosed the “configured to measure a force ...” limitations discussed above (Appeal Br. 10-13; Reply Br. 1—2). Trainor discloses a sensor that measures the force on both sets of condyles at the same time (see Trainor, 4:14—51, Fig. 8). The Examiner found that Trainor’s sensor disclosed the disputed limitations because Trainor’s sensor was “capable of’ measuring the force on one set of condyles at a time (Final Act. 2—3; Ans. 2). However, as the Federal Circuit has explained, “configured to” has a narrower meaning than merely “capable of.” See In re Giannelli, 739 F.3d 1375, 1379-80 (Fed. Cir. 2014). Instead, as Appellants contend, and we agree, “configured to” has been understood as meaning “made to” or “designed to,” rather than “capable of’ or “suitable for.” In re 3 Appeal 2015-000325 Application 13/472,785 Giannelli, 739 F.3d at 1379; see also In re Man Machine Interface Techs., LLC, 822 F.3d 1282, 1286 (Fed. Cir. 2016) (holding that narrower “configured to” meaning of “adapted to” requires the device be “made or designed to” perform the claimed function); Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012) (holding that “adapted to” in the claim at issue had the narrower “configured to” meaning, which required elements to be “designed or configured to accomplish the specified objective, not simply that they can be made to serve that purpose”). While Trainor’s sensor may indeed have the capability of measuring the force on only one set of condyles at a time, Trainor does not disclose that its system is “configured to” do so. Rather, as explained by Appellants, the sensor of Trainor is designed for measuring the force on both sets of condyles at the same time (Appeal Br. 11—12 (citing Trainor, 4:43—51)). As such, we find that Trainor’s sensor is not “made to” or “designed for” measuring the force on only one set of condyles at a time, as recited in claim l.3 The Examiner further contends that “it is noted that the claim only requires that force or pressure is generated between one of said opposing medial or lateral condyles, but not that said force or pressure must come from ‘only one’” and that the use of Trainor’s sensor on both the medial and lateral opposing condyles as disclosed meets the claim limitations as recited (Ans. 2). However, claim 1 also recites that that the sensor is “configured to measure the force or pressure generated between one set of opposing condyles at a time.” Thus, even if the ordinary use of Trainor could meet the 3 Thus, we disagree with the Examiner’s contention (see Ans. 2—3) that it has been established that Trainer reads on the broadest reasonable interpretation of the claims. 4 Appeal 2015-000325 Application 13/472,785 limitation of claim 1 that the sensor is “configured to measure a force or a pressure generated between one of opposing medial condyles or opposing lateral condyles within the anatomical joint,” the Examiner fails to explain how the described use of Trainor on both condyles at once would also disclose a sensor “configured to measure the force or pressure generated between one set of opposing condyles at a time.” For this reason, we cannot sustain the rejection of claims 1 and 29, or their dependent 2-4, 6—11, 23, 30-32, 34—38, and 42, as anticipated by Trainor. This same deficiency in the interpretation of “configured for” is the basis for the rejections of the remaining claims under 35 U.S.C. § 103(a). As such, we likewise cannot sustain the rejections under 35 U.S.C. § 103(a) of claims 5, 12—21, and 39-41 as unpatentable over Trainor and DiSilvestro, of claims 24—28 as unpatentable over Trainor and Couture. DECISION The Examiner’s decision to reject claims 1—21, 23—32, and 34-42 is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation