Ex Parte Stein

Patent Trial and Appeal Board

Oct 13, 2016

12825724 (P.T.A.B. Oct. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/825,724
88191 7590
Orthosensor, Inc,
1855 Griffin Road
Suite A-310
FILING DATE
06/29/2010
10/17/2016
Dania Beach, FL 33004
FIRST NAMED INVENTOR
Marc Stein
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
ORTH0-0007-US 2210
EXAMINER
CERIONI, DANIEL LEE
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
10/17/2016 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):
ghoshizaki@orthosensor.com
j.daniels@orthosensor.com
j onathan. trousdale@orthosensor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte MARC STEIN
Appeal2015-001333
Application 12/825,724
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
PER CURIAM
DECISION ON APPEAL 1
This Appeal under 35 U.S.C. § 134(a) involves claims 12-16 and 21-
35 (Br. 5). Examiner entered rejections under 35 U.S.C. § 112, second
paragraph, and 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
STATEMENT OF THE CASE
Appellant's "invention pertains generally to measurement of physical
parameters, and particularly to, but not exclusively to, communication of
1 Appellant identifies the Real Party in Interest as Orthosensor Inc. (Br. 4).
Appeal2015-001333
Application 12/825,724
sensor data and measurements in real-time" (Spec. if 2). More particularly,
Appellant's invention relates to a device for "measuring a force, pressure, or
load applied by the muscular-skeletal system" (id. at if 25). Independent
claim 12 is representative and reproduced in the Claims Appendix of
Appellant's Brief.
Claims 27-35 stand rejected under 35 U.S.C. § 112, second
paragraph.
Claims 12, 13, 15, 16, 22-27, 29, and 31-35 stand rejected under 35
U.S.C. § 103(a) as unpatentable over the combination of Amirouche2 and
Janna. 3
Claims 14, 21, 28, and 30 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Amirouche, Janna, and Ryan. 4
Definiteness:
ISSUE
Should the rejection under 35 U.S.C. § 112, second paragraph be
summarily affirmed?
ANALYSIS
Appellant "requests that the amended claims, submitted in response to
the final office action, be considered herein for Appeal" (Br. 5). Examiner
explains that "the claim amendments filed 03/04/14 were not entered" (Ans.
11).
2 Amirouche et al., US 2007/0234819 Al, published Oct. 11, 2007.
3 Janna et al., US 2011/0004076 Al, published Jan. 6, 2011.
4 Ryan, US 6,115,636, issued Sept. 5, 2000.
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Application 12/825,724
To the extent that Appellant is contending that the Amendment filed
March 4, 2014 should have been entered as a matter of right, Examiner's
refusal to enter the amendment at issue is a petitionable matter under 37
C.F .R. § 1.181 and not within the jurisdiction of the Board. 3 7 C.F .R.
§ 1.127; In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (citing In re
Hengehold, 440 F.2d 1395, 1403-1404 (CCPA 1971)).5
Therefore, we deny Appellant's request to consider their March 4,
2014 amended claims. (Br. 20). Appellant does not otherwise contest the
merits of the rejections under 35 U.S.C. § 112, second paragraph.
Therefore, we summarily affirm this rejection.
Obviousness:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
We adopt Examiner's findings concerning the scope and content of
the prior art (Ans. 2-17), and repeat the following findings for emphasis.
5 We also note Appellant's indication that "[c]laims 15, 27, and 34 stand
objected to for informalities" (Br. 9). These are petitionable matters not
before this Panel on Appeal.
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Application 12/825,724
FF 1. Amirouche suggests
A system monitors dynamic forces between bearing
surfaces. Based on sensed data, the system may model the forces
on the bearing surfaces, analyze these forces, store data relating
to these forces, and/ or transmit data to an external data gathering
device. The system includes a first body piece and a second body
piece which mate together. The first and second body pieces
comprise bearing surfaces that contact a material that may exert
a force. A protrusion, such as a pole, post, or beam, extends from
first body piece's bearing surface. At least one sensor is disposed
on a pole. The at least one sensor detects a mechanical motion
of the pole resulting from a force imposed on the body pieces,
and generates data indicative of this force. A computer
communicates with the at least one sensor and processes the
sensed and/ or modeled data.
(Amirouche Abstract; see also Ans. 3--4.)
FF 2. Amirouche's Figure 3 is reproduced below:
Figure 3
Figure 3 shows that "[a]pplication of a force to first and/or second body
pieces 304 and 306 may cause the second body piece 306 to push against the
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Appeal2015-001333
Application 12/825,724
poles 308 thereby causing the poles 308 to undergo a detectible mechanical
motion" (Amirouche i-f 59; see also Ans. 3--4), and that"[ o ]ne or more
sensors 310 may comprise a plurality of strain ga[u]ges adapted to generate
a voltage in response to dynamic contact forces transferred from the bearing
surfaces to poles 308" (Amirouche i-f 61; see also Ans. 3--4).
FF 3. Janna suggests
A system and method for communicating with a medical implant
is disclosed. The system ... includes ... on-board electronics, a
signal generator ... , an amplifier ... , a coil ... , a receiver ... ,
and a processor . . . . The signal generator . . . generates a first
signal, ... the coil ... transmits the amplified signal, the power
harvester receives the first signal and transmits a data packet ...
containing data, the receiver ... receives the data packet ... , and
the processor ... either processes the data or sends the data to a
data storage device.
(Janna Abstract; see also Ans. 5.)
FF 4. Janna's Figure 3 is reproduced below:
l?[f~ f) _ .. U.d
40
,)
Figure 3 shows that an "orthopaedic implant ... may include an onboard
microchip" and that the "microchip 40 [is] for signal conversion and signal
transmission. The microchip 40 also may be termed a microcontroller. The
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Appeal2015-001333
Application 12/825,724
microchip 40 includes a converter 42, a processor 44, a transmitter 46, and
an antenna 48" (Janna i-f 59; see also Ans. 5).
FF 5. Janna's Figure 4 is reproduced below:
(18
/'
/52 5~ 516 ,,.. ,-·58 ~59
rm·~ff"''T"'s~E"'"T"ij(~mmm--Tmmmmmm·oirimmmmmmm.Tm~RE·m--I
PIG.4
Figure 4 shows that
[ t ]he transmitter 44 transmits data in the form of a packet. At a
minimum, the packet includes control information and the actual
data. . . . The data packet structure 18 includes ... data 58, and
error checking data 59. . . . The telemetry data 58 may be any
physical measurement, such as implant forces, implant micro-
motion, implant position, alkalinity, temperature, pressure, etc.
The error checking data 59 is used to verify the accuracy of the
data packet. For example, the error checking data 59 may
contain a value to calculate a checksum or cyclic redundancy
check.
(Janna i-f 60; see also Ans. 5.)
ANALYSIS
The combination of Amirouche and Janna:
Appellant's independent claim 12 requires, inter alia, (a) "a sensor
coupled to the bearing surface, where the sensor includes a pressure plate,
where the pressure plate is configured to transmit loads applied to the
bearing surface to the sensor," and (b) "the sensor comprising: a data
packetizer coupled to the electronic circuitry; a cyclic redundancy check
circuit coupled to the data packetizer; and a transmitter coupled to the cyclic
redundancy check circuit" (see Appellant's claim 12).
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Appeal2015-001333
Application 12/825,724
Based on the combination of Amirouche and Janna, Examiner
concludes that, at the time of Appellant's invention was made, it would have
been prima facie obvious
to modify Amirouche' s communication circuitry to comprise a
data packetizer coupled to the electronic circuitry, a cyclic
redundancy check circuit coupled to the data packetizer, and a
transmitter coupled to the cyclic redundancy check circuit, as
taught by Janna, for the obvious advantage of making the data
transmission of the network more efficient and ensuring that no
data is loss in transmission over the network.
(Ans. 5.)
We adopt Examiner's findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 2-17; FF 1-5) and agree that the
claims would have been obvious over Amirouche and Janna. We address
Appellant's arguments below.
Appellant contends that "308 in Amirouche is a pole, not a contacting
surface of a sensor" (Br. 12). Appellant argues that
There is no rigid load plate or bearing surface. Second
body 306 fits onto first body 304, therefore there is no free
floating load plate pressing on the poles, the force exerted on
second body 306 is also distributed on the second body's 306
contact with the first body 304. A load plate enhances the
accuracy of load location detection.
(Id. at 13.)
Referring to Amirouche's Figure 3, Appellant contends that "even if
306 contains a bearing surface, and 310 is a sensor, clearly 304 (stated by
the Examiner to allegedly represent the pressure plate) is not configured to
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Appeal2015-001333
Application 12/825,724
transmit loads applied to 306 to 310" (Id. at 21). Appellant also contends
that
Amirouche discloses strain gauge 310, measuring variations of
pole 308, not a sensor coupled to a bearing surface, where the
sensor includes a pressure plate, where the pressure plate is
configured to transmit loads applied to the bearing surface to the
sensor. Amirouche at best shows indirect measurement of strains
applied to pole 308.
(Id. at 22.)
We are not persuaded. As Examiner explains,
Given that the examiner is using the broadest reasonable
interpretation to construe the claims, many of Appellant's
arguments [are] not commensurate in scope with the claimed
invention (i.e., take a narrower scope than the metes and bounds
of the invention as it is currently claimed). That is, the examiner
submits that the arguments presented by [Appellant] import
claim limitations from the specification ...
(Ans. 14.) "[L]imitations are not to be read into the claims from the
specification." In re Van Geuns. 988 F.2d 1181, 1184 (Fed. Cir. 1993). See
also In re Self, 671 F.2d 1344, 1348 (CCPA 1982) ("[A]ppellant's
arguments fail from the outset because ... they are not based on limitations
appearing in the claims.").
Examiner further explains that
Amirouche' s one or more sensors (310) reads on the claimed
"sensor", that Amirouche's first body piece (304) reads on the
claimed "pressure plate" and that the top surface or bottom
surface of the Amirouche's enclosure (302) reads on the claimed
"bearing surface." Appellant has not appeared to argue against
any of these elements reading on the claimed limitations, but
instead argues that Amirouche' s first body piece (3 04) is not
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Application 12/825,724
configured to transmit loads applied to Amirouche's second body
piece (306) to Amirouche's one or more sensors (310).
(Ans. 15.)
More particularly, Examiner explains that "Amirouche expressly
recognizes that either of '[t]he first and second body pieces comprise bearing
surfaces ... " (paragraph [0013] of Amirouche). Therefore, it is either of
304 or 306 that may read on the claimed 'bearing surface' of claim 12" (Id.
at 15-16; see also FF 1). Examiner explains that
Amirouche expressly recognizes that "[ o ]ne or more sensors 310
may comprise a plurality of strain gages adapted to generate a
voltage in response to dynamic contact forces transferred from
the bearing surfaces to poles 308" (paragraph [0061] of
Amirouche ). That is, a force is applied to the bottom of the first
body piece (304) (see paragraph [0058], which discusses the
transfer of forces between the femur and tibia bones) and then
transferred to Amirouche's poles 308 (see paragraphs [0058] and
[0059]), which undergo a mechanical deformation (paragraph
[0059]), and then generate a voltage by Amirouche's one or more
sensors from these dynamic forces (see paragraphs [0060] and
[0061]).
(Ans. 16; see also FF 2.)
Appellant contends that "Janna is directed to a system and method for
communication with a medical implant and fails to show any details of
sensor with a pressure plate" (Br. 22).
This argument is unpersuasive because it fails to account for
Amirouche's contribution to the combination of Amirouche and Janna.
"Non-obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references []. [The reference] must be read, not in isolation, but for what it
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Application 12/825,724
fairly teaches in combination with the prior art as a whole." Jn re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellant also contends that "Janna additionally states in the
background section: . . . Although data transmission ranges in excess of
30 m have been observed previously, energy coupling ranges are typically
reduced to a couple of inches using Wireless magnetic induction making
these implants unsuitable for commercial application. . .. " (Br. 15).
Appellant contends that "Janna [therefore] teaches away from using wireless
magnetic induction" (Id.).
As Appellant indicates, the problems with excess transmission ranges
were observed in Janna's discussion of the prior art in the background
section. Moreover, Janna teaches "the coil ... transmits the amplified
signal, the power harvester receives the first signal and transmits a data
packet ... containing data" (FF 3; see also FF 4--5). Appellant's claims do
not limit any particular range of transmission. Like our appellate reviewing
court, "[w]e will not read into a reference a teaching away from a process
where no such language exists." DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006).
The combination of Amirouche, Janna, and Ryan:
Appellant contends that "Ryan fails to discuss the details of a sensor
that shows, suggests or teaches the elements missing in Amirouche and
Janna" (Br. 24). Appellant also contends that "Ryan does not show, suggest,
or teach a matching network in a prosthetic component" (Id. at 16).
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Application 12/825,724
We are not persuaded. Appellant's contentions fail to account for
Amirouche's and Janna's contributions to the combination of Amirouche,
Janna, and Ryan. See In re Merck & Co., 800 F.2d at 1097.
CONCLUSION OF LAW
The preponderance of the evidence relied upon by Examiner supports
a conclusion of indefiniteness and obviousness.
The rejection of claims 27-35 under 35 U.S.C. § 112, second
paragraph is affirmed.
The rejection of claim 12 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Amirouche and Janna is affirmed. Claims 13, 15,
16, 22-27, 29, and 31-35 fall with claim 12.
The rejection of claims 14, 21, 28, and 30 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Amirouche, Janna, and Ryan is
affirmed.
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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