Blue Belt Technologies, Inc.

Patent Trials and Appeals Board

Aug 14, 2020

2019003640 (P.T.A.B. Aug. 14, 2020)

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.
14/073,999 11/07/2013 Constantinos Nikou PT-4867-US-NP/PH10701 4337
103738 7590 08/14/2020
Smith & Nephew, Inc. (Pepper Hamilton)
ATTN: Sabrina Chambers
7135 Goodlett Farms Parkway
Cordova, TN 38016
EXAMINER
WOZNICKI, JACQUELINE
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
08/14/2020 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):
Patents.Dept.US@smith-nephew.com
docketingpgh@pepperlaw.com
smith-nephew_pair@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CONSTANTINOS NIKOU, BRANISLAV JARAMAZ, and
BENJAMIN OLIVER MCCANDLESS

Appeal 2019-003640
Application 14/073,999
Technology Center 3700
____________

Before MICHAEL J. FITZPATRICK, WILLIAM A. CAPP, and
JILL D. HILL, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant, Blue Belt Technologies, Inc.,1 appeals under 35 U.S.C.
§ 134(a) from the Examiner’s final decision rejecting claims 1–10 and 21–
29. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held
July 28, 2020. A transcript (“Tr.”) of the hearing is in the record and was
mailed August 4, 2020.
We affirm.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies itself as the sole real party in interest. Appeal Br. 1.
Appeal 2019-003640
Application 14/073,999

2
STATEMENT OF THE CASE
The Specification
The Specification “relates generally to semi-active surgical robotics,
and more specifically to systems and methods to provide computer-aided
navigation and control of an implant positioning device.” Spec. ¶2.
The Claims
Claims 1–10 and 21–29 are rejected. Final Act. 1. No other claims
are pending. Id. Of the rejected claims, claims 1, 22, and 27 are
independent. Appeal Br. 30–34. Claim 1 is illustrative and reproduced
below.
1. A method comprising:
on a control system including one or more processors
coupled to at least one memory device, and a communication
interface:
accessing, using the one or more processors, an
implant plan, the implant plan including location and
orientation data describing an ideal implant location and
orientation in reference to an implant host;
establishing, using the one or more processors, a
three dimensional (3-D) coordinate system associated
with an implant positioning device and the implant host,
wherein the implant positioning device is configured to
deliver one or more directional impact forces to an
implant;
receiving, over the communication interface,
tracking information identifying a current implant
positioning device position and a current implant host
position within the 3-D coordinate system;
generating, using the one or more processors,
control signals based on the tracking information and the
implant plan;
Appeal 2019-003640
Application 14/073,999

3
sending the control signals over the
communication interface to the implant positioning
device, the control signals directing the implant
positioning device to deliver one or more directional
impact forces to an implant to assist a surgeon with the
installation of the implant according to the implant plan,
the implant removably coupled to an end effector of the
implant positioning device;
tracking the implant positioning device during
installation of the implant;
determining whether the implant has reached the
ideal position based upon the implant plan;
if the implant has reached the ideal position,
altering the control signals sent to the implant positioning
device to stop the one or more directional impact forces;
and
if the implant has not reached the ideal position,
altering the control signals sent to the implant positioning
device to change the operation of the implant positioning
device to alter placement and orientation of the implant.
Appeal 30.
The Examiner’s Rejections
There are two rejections before us, both of which are pursuant to 35
U.S.C. § 103(a):
1. claims 1, 4–10, 21, 22, and 25–27 as unpatentable over Sati2
and Steinberg3 (Final Act. 8); and

2 US 2005/0203384 A1, published Sept. 15, 2005 (“Sati”).
3 US 2002/0107573 A1, published Aug. 8, 2002 (“Steinberg”).
Appeal 2019-003640
Application 14/073,999

4
2. claims 2, 3, 23, 24, 28, and 29 as unpatentable over Sati,
Steinberg, and Spiegelberg4 (id. at 17).5
DISCUSSION
Rejection 1
Independent Claims 1, 22, and 27
Appellant argues the rejection of all independent claims together.
Appeal Br. 24–27. We choose claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Sati “relates to a system which aids a surgeon in accurately
positioning surgical instruments for performing surgical procedures, and also
relates to reducing user interaction with the system for minimal invasive
surgery.” Sati ¶3. The Examiner found that Sati teaches much of the subject
matter of claim 1. Final Act. 8–10 (citing Sati ¶¶27, 29, 30, 36, 40, 55, 62,
and 64). The Examiner found that the main difference between Sati and
claim 1 is that, in Sati, a physician directs the implant positioning device,
whereas claim 1 employs processor-generated control signals to do so. See,
e.g., id. at 10 (Sati “is silent with regards to the control signals controlling
operation of the implant positioning device.”); see also id. (“Sati is silent
with regards to . . . where the implant is removably coupled to an end
effector of the implant positioning device, and the control signals directing
the implant positioning device to deliver a directional impact force to an

4 US 2002/0183851 A1, published Dec. 5, 2002 (“Spiegelberg”).
5 A third rejection, claims 1–10 and 21–29 as ineligible under the judicial
exception to 35 U.S.C. § 101, was ultimately withdrawn. See Final Act. 5;
Ans. 13.
Appeal 2019-003640
Application 14/073,999

5
implant, stopping or altering the control signals depending on that
position.”).
Steinberg discloses a “method and apparatus for computerized
surgery.” Steinberg, at [54] (capitalization removed). The Examiner found
that, relevant to claim 1, “Steinberg discloses a method related to robotic
surgical control wherein control signals control operation of an implant
positioning device.” Final Act. 10 (citing Steinberg, Abstract). In addition,
the Examiner cited Steinberg’s disclosure of:
[0358] . . . a computer-controlled surgical implant system
comprising:
[0359] at least one steerable endosurgical implanting
assembly operative to install an implant at a desired
location in a patient; and
[0360] a computerized controller operating the at least one
steerable endosurgical implanting assembly.
Steinberg ¶¶358–60 (cited at Final Act. 10–11).
The Examiner determined:
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to modify the method of Stati
[sic] by including a robotic implant positioning device wherein
the control signals control the implant positioning device as is
taught by Steinberg in order to allow surgery to be performed
with particular and proper alignment with greater accuracy than
can be determined by a surgeon themselves.
Final Act. 11.
Appellant argues that the Examiner’s rejection fails to satisfy the
following four limitations of claim 1:
(1) “generating, using the one or more processors, control signals
based on the tracking information and the implant plan”;
(2) “the control signals directing the implant positioning device
to deliver one or more directional impact forces to an implant”;
Appeal 2019-003640
Application 14/073,999

6
(3) “altering the control signals sent to the implant positioning
device to stop the one or more directional impact forces”; and
(4) “altering the control signals sent to the implant positioning
device to change the operation of the implant positioning device
to alter placement and orientation of the implant.”
Appeal Br. 24–25 (quoting claim 1; paragraphing added).
For the first disputed limitation, Appellant acknowledges “the system
of Sati receives the surgeon’s decisions for navigating and controlling the
tools she wants to use to position an implant during surgery” and correlates
them to specific hand gestures that the surgeon may use during “the desired
operation.” Id. at 25 (citing Sati ¶43). Appellant further acknowledges that
Sati’s “system simply saves the surgeon’s hand gestures directing operation
of a tool and the surgeon’s plans for the particular steps and the order of
those steps she will use during the procedure.” Id. (citing Sati ¶¶42–45, 55).
Appellant argues, however, that “the system merely alerts the surgeon if she
deviates from her plan, and the surgeon may decide to skip steps or
otherwise modify her plan.” Id. (citing Sati ¶¶55, 82–86).
As we best understand Appellant’s argument, in Sati, the implant
positioning device and other surgical tools are controlled mechanically and
exclusively by the physician’s hands alone and not via any control signals.
We are not persuaded. We agree with the Examiner that Sati teaches
controls signals generally because it teaches computer control of surgical
tools. For example, Sati states that “Gestures of the surgeon may be used in
the planning stage to call the image of the instruments and in the procedure
to increment the planned tasks.” Abstract (emphasis added). Also, Sati
Figure 5 supports the Examiner’s finding that Sati discloses control signals.
That figure illustrates “a flow chart showing the sequential steps of using the
Appeal 2019-003640
Application 14/073,999

7
system of Fig. 1[, i.e., ‘computer assisted surgery system’].” Sati ¶¶15, 19.
In step 116, the system detects a desired action from the surgeon’s hand
gestures, and, in step 118, the system then “[p]erform[s] desired action in
accordance with pre-set path.” Id. Fig. 5; see also id. ¶55 (discussing
step 118).
For the other disputed limitations, Appellant argues that “like Sati, the
computer-controlled surgical implant system of Steinberg does not generate
or alter the control signals directing the implant positioning device to operate
using one or more processors.” Appeal Br. 26. Appellant explains,
“[r]ather, the system of Steinberg receives instructions from the surgeon
directing operation of the tools used to position an implant during surgery.”
Id. This argument does not apprises us of error. That the system of
Steinberg may receive such input from the surgeon does not preclude the
system from outputting control signals that direct an implant positioning
device to deliver one or more directional impact forces to an implant. In
fact, it is precisely because the computer-controlled surgical implant system
of Steinberg controls the implant position device that the surgeon must
provide instructions to the system lest they not be carried out.
Further, Appellant’s own control signals are affected by surgeon
input. As recited in claim 1, “control signals [are] based on the tracking
information and the implant plan,” and counsel for Appellant conceded that
“there’s some surgical input into the implant plan.” Tr. 12:19–20; see also
id. (“[T]he recited method recites that the computing system merely accesses
[the implant plan], so there’s certainly no requirement that that couldn’t
include some kind of surgeon interaction[.]”).
Appeal 2019-003640
Application 14/073,999

8
Lastly, Appellant appears to question whether a person of ordinary
skill in the art would have modified Sati in view of Steinberg as proposed by
the Examiner. See Appeal Br. 27 (“Sati and Steinberg alone or in
combination do not provide any suggestion or motivation for generating or
altering, using the one or more processors, the control signals directing the
operation of the recited implant positioning device.”). But Appellant does
not address, let alone apprise us of error in, the specific reason provided by
the Examiner.6 Id. In any event, we find adequate the Examiner’s reason,
namely: “in order to allow surgery to be performed with particular and
proper alignment with greater accuracy than can be determined by a surgeon
themselves.” Final Act. 11. See also Ans. 19 (There is a “general trend in
medical arts that increasingly have computers or machines perform tasks
that might have been formerly performed by a human. This is understood by
the Examiner to be applying a known technique (i.e. computer assisted
surgery (CAS)) to improve a known method (i.e. surgery) for yielding a
predictable result.” (citing MPEP § 2143(I)(D)).

6 During the oral hearing, counsel for Appellant raised, for the first time, an
objection to the Examiner’s characterization of Sati being related to a
robotic method of surgical control. Tr. 10:15–11:15; see also Final Act. 11
(“Stati [sic] and Steinberg are involved in the same field of endeavor,
namely robotic methods of surgical control.”). Appellant did not raise this
issue in its Appeal Brief. See 37 C.F.R. § 41.37(c)(1)(iv) (“Except as
provided for in §§ 41.41, 41.47 and 41.52, any arguments or authorities not
included in the appeal brief will be refused consideration by the Board for
purposes of the present appeal.”). In any event, the fact that Sati involves
surgeon (and not “robot”) control of the implant positing device does not
undermine the Examiner’s reason for modifying it in view of Steinberg. As
recognized by the Examiner, the greater accuracy that comes from robotic
control as taught by Steinberg provides the skilled artisan the reason to
incorporate such control into Sati. Final Act. 11.
Appeal 2019-003640
Application 14/073,999

9
In the Reply Brief, Appellant raises for the first time an argument that
the prior art does not employ “impact forces” within the meaning of claim 1.
Reply Br. 2 (“[T]he system of Sati does not use an implant positioning
device that delivers impact forces.”), 3 (“[T]he system of Steinberg, like that
in Sati, fails to teach an implant positioning device that delivers impact
forces.”). Although this late argument may be refused consideration under
37 C.F.R. § 41.37(c)(1)(iv), we exercise our discretion to consider it. And
we find it not persuasive. First, Appellant has not proposed, let alone
supported, a construction for the term “impact forces.” Appellant merely
argues that it is a force that occurs over a limited yet unspecified amount of
time. See, e.g., Tr. 5:17–21 (“So there is some disclosure in the specification
regarding determining the duration of the impact and there is no specific
limitation on that duration, but it is certainly limited to some amount of time
whereas the art that’s cited does not disclose the control of any particular
impact device.” (emphasis added)). Second, and regardless, Sati does
disclose use of an impact device. Sati ¶66 (“cup impactor”), ¶78 (same); see
also Tr. 14:18–20 (“JUDGE FITZPATRICK: If there is a discussion of the
doctor using an impactor, that would disclose the idea of using an impact
force, correct? [Counsel]: Certainly, yes.”).
None of Appellant’s arguments apprise us of error in the Examiner’s
rejection of claim 1. Accordingly, we affirm the rejection of claim 1, as well
as that of claims 22 and 27, which fall therewith. 37 C.F.R.
§ 41.37(c)(1)(iv).
Dependent Claim 21
Claim 21 recites: “The method of claim 1, further comprising sending
release parameters and timing information to the implant positioning device
Appeal 2019-003640
Application 14/073,999

10
when the implant has reached the ideal position, the release parameters and
timing information comprising instructions for the implant positioning
device to release the implant.” Appeal Br. 31–32.
Appellant argues against the rejection of claim 21 under a separate
heading but does not present any substantive argument beyond those already
considered above with respect to claim 1. Appeal Br. 28. More specifically,
Appellant argues:
As discussed above in reference to independent Claims 1,
22, and 27, however, neither Sati nor Steinberg teaches the
computer-controlled method of surgery as claimed in the present
application because both Sati and Steinberg receive a surgeon’s
decisions for navigating and controlling an implant positioning
device. In contrast, the present application requires, for example,
that the recited one or more processors determine the release
parameters and timing information. See Specification at [0043],
[0069], [0074]. Contrary to the Examiner’s assertions, therefore,
Sati and Steinberg, alone or in combination, do not teach or
suggest “sending release parameters and timing information to
the implant positioning device when the implant has reached the
ideal position, the release parameters and timing information
comprising instructions for the implant positioning device to
release the implant.”
Id. Thus, Appellant likewise does not apprise us of error in the rejection of
claim 21.
The rejection of claim 21 is affirmed.
Dependent Claims 4–10, 25, and 26
Appellant argues against the rejection of these claims (and others)
under a separate heading but does not present any substantive argument
beyond those already considered above with respect to claim 1. Appeal
Br. 27. Thus, Appellant likewise does not apprise us of error in the rejection
of claims 4–10, 25, and 26.
Appeal 2019-003640
Application 14/073,999

11
The rejection of claims 4–10, 25, and 26 is affirmed.
Rejection 2
Appellant argues against the rejection of these claims (and others)
under a separate heading but does not present any substantive argument
beyond those already considered above with respect to claim 1. Appeal
Br. 27. Thus, Appellant likewise does not apprise us of error in the rejection
of claims 2, 3, 23, 24, 28, and 29.
The rejection of claims 2, 3, 23, 24, 28, and 29 is affirmed.

SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4–10,
21, 22, 25–
27
103(a) Sati, Steinberg 1, 4–10, 21,
22, 25–27

2, 3, 23,
24, 28, 29
103(a) Sati, Steinberg,
Spiegelberg
2, 3, 23, 24,
28, 29

Overall
Outcome
1–10, 21–
29

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).
AFFIRMED