Carl Deirmengian et al.

Patent Trials and Appeals Board

Aug 19, 2019

14750716 - (D) (P.T.A.B. Aug. 19, 2019)

APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/750,716 06/25/2015 Carl DEIRMENGIAN
76960 7590 08/19/2019
Fay Kaplun & Marcin, LLP
150 Broadway, suite 702
New York, NY 10038
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONERFORPATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
ATTORNEY DOCKET NO.
10139/20012
CONFIRMATION NO.
6991
EXAMINER
HENSON, DEVIN B
ART UNIT PAPER NUMBER
3791
MAIL DATE DELNERYMODE
08/19/2019 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 CARL DEIRMENGIAN et al.
Appeal 2018-006180
Application 14/750,716
Technology Center 3700
ERRATUM
The Decision on Appeal for the above-identified application mailed
August 19, 2019 contains an error. The disposition on the last page,
"AFFIRMED," is removed and replaced with "REVERSED."
All other portions the Decision on Appeal remain unchanged. Any
confusion caused regarding this matter is regretted. If there any questions
pertaining to this Erratum, please contact the Patent Trial and Appeal Board
at 571-272-9797.
BAR
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CARL DEIRMENGIAN, GEORGE MIKHAIL,
and GLEN PIERSON 1
Appeal2018-006180
Application 14/750,716
Technology Center 3700
Before JENNIFER D. BAHR, JOHN C. KERINS, and
FREDERICK C. LANEY, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 21--40. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 DePuy Synthes Products, Inc. (Appellant) the applicant as provided in 37
C.F .R. § 1.46 and is identified as the real party in interest. Appeal Br. 2.
Appeal 2018-006180
Application 14/7 50,716
THE CLAIMED SUBJECT MATTER
Appellant's invention relates to a system and method for treating a
bone. Claims 21, 30, and 36, reproduced below, are illustrative:
21. A system for treating a bone, comprising:
an implant sized and shaped to be attached to a bone
and including a first sensor and a second sensor, the first
sensor positioned on a first portion of the implant which
extends over a weakened portion of bone in an operative
position, the first sensor being configured to measure a first
strain on the first portion, the second sensor being positioned
on a second portion of the implant which extends over an
unweakened portion of bone in the operative position, the
second sensor being configured to measure a second strain
on the second portion; and
a processing device calculating a ratio of the first
strain to the second strain to normalize an effect of loads on
the bone and track the healing of the bone.
30. A system for treating a bone, comprising:
an implant configured for attachment to a bone, the
implant including a first sensor on a first portion of the
implant which, in an operative position, is configured to
extend over a weakened portion of bone to measure a first
strain on the first portion;
a second sensor positioned over an unweakened
portion of bone to measure a second strain on the second
portion; and
a processing device calculating a ratio of the first
strain to the second strain to normalize an effect of loads on
the bone.
36. A method for treating a bone, comprising:
positioning an implant in an operative position over a
selected portion of a bone so that a first portion of the
implant extends over a weakened portion of the bone and a
second portion of the implant extends over an unweakened
portion of the bone;
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measuring a first strain via a first sensor on the first
portion of the implant;
positioning a second sensor over the unweakened
portion of the bone;
measuring a second strain via the second sensor; and
calculating a ratio of the first strain to the second strain
to normalize an effect of loads on the bone and track healing
of the bone.
THE REJECTIONS
The Examiner rejects:
(i) claims 21--40 under 35 U.S.C. § 101;
(ii) claims 21, 23, and 26--40 under 35 U.S.C. § I03(a) as
unpatentable over Morgan '782 (US 2006/0052782 Al, published Mar. 9,
2006); and
(iii) claims 22, 24, and 25 stand under 35 U.S.C. § I03(a) as
unpatentable over Morgan '782 and Morgan '597 (US 2008/0300597 Al,
published Dec. 4, 2008).
ANALYSIS
Claims 21-40--35 US.C. § 101
Introduction
The Examiner takes the position that the claims are "directed to an
abstract idea." Final Act. 2. The Examiner specifically determines, with
reference to independent claim 21, that the limitation of "calculating a ratio
of the first strain to the second strain to normalize an effect of loads on the
bone and track healing of the bone" is an abstract idea. Id. at 2-3. In
particular, the Examiner determines that "the first and second strains/loads
on weakened and unweakened portions of a bone represent natural
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physiological phenomena, and the calculated ratio is a basic mathematical
principle that is simply implemented on a physical machine (i.e., the
processing device)." Ans. 15.
The Examiner acknowledges that claim 21 contains "additional
elements," but finds that those elements are insufficient to make the claim as
a whole significantly more than the recited abstract idea, because the
additional limitations are "well-understood, routine, and conventional in the
art." Final Act. 3; see also Adv. Act. 2 (identifying "'an implant[,]' 'a first
sensor[,]' 'a second sensor' and 'a processing device' as additional elements
in independent claim 21," and finding that "[t]he implant and sensors are
well-understood in the art and simply represent components which would
routinely be used in applying the abstract idea"); and Ans. 14 (finding that
"implants having sensors are well-established in the field of orthopedics").
The Examiner makes similar determinations with respect to
independent claims 30 and 36. See Final Act. 8-10; see also Adv. Act. 2;
Ans. 14--19.
Appellant argues that inclusion of data analysis within the claims
does not mean the claims are directed to an abstract idea. Appeal Br. 4; see
also id. at 4--10; see also Reply Br. 2---6. Appellant submits that, to the
contrary, "[t]aken as a whole, the additional elements ... are clearly directed
to a structurally defined implant," and that the recited physical elements and
steps clearly would be patent eligible subject matter in the absence of the
claim language regarding the ratio of strain readings. Appeal Br. 7; see also
id. at 4--1 O; see also Reply Br. 2---6. Appellant maintains that the Examiner
"has failed to explain reasons why 'the additional elements taken
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individually, and also taken as a combination, do not result in the claim as a
whole amounting to more than the judicial exception." Appeal Br. 7.
Principles of Law
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
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(1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 187, 191 ("We view
respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws,[] and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook), 187 ("It is now commonplace
that an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77).
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"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (hereinafter "Guidance"). Under the Guidance, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
activity such as a fundamental economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim: ( 1) recites a judicial exception; and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception.
See Guidance.
Analysis
Independent claims 21 and 3 0 recite a system, and independent claim
36 recites a process, which places the claims in statutory categories of
patent-eligible subject matter, subject to a potential judicial exception to
eligibility.
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The dispute is over whether claims 21, 30, and 36 are directed to an
abstract idea, and, if so, whether the claim recites additional elements that
amount to significantly more than the judicial exception. With the recently-
issued Guidance, the first inquiries in these determinations are evaluating
whether the claim recites a judicial exception, and if it does, whether
additional elements are present that integrate the judicial exception into a
practical application.
As noted above, in the present appeal, the Examiner characterizes the
claims as being directed to a judicial exception in the form of an abstract
idea, in regarding the claimed step of determining a ratio of first and second
strains measured by first and second sensors, respectively, or a processor for
doing so, as a "basic mathematical principle" or "a mental process that can
be performed in the human mind or by a human using conventional
equipment." Ans. 15. Appellant does not dispute that the recited step of
determining the claimed ratio could be performed by a human as a mental
step. Accordingly, there is agreement as to claim construction at least
insofar as the claims recite an abstract idea in the form of a mental step.
We thus tum our attention to whether additional elements are present
in the claims that integrate the judicial exception into a practical application.
For the reasons discussed below, we find that such additional elements are
present in the claim.
System claims 21 and 30, as well as method claim 36, implicate and
require the presence of certain structure and particular positioning of the
sensors and the bone implant in order to perform the claimed strain-
measuring steps. As for structure, the claims require an implant that is
attached over a selected portion of a bone, and first and second strain-
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measuring sensors. App. Br. 17-30, Claims Appendix. The first sensor is
required to measure strain on a first portion of the implant, with the sensor
being mechanically coupled to a weakened area of the bone. Id.
The Examiner advances several assertions in support of the position
that the claims do not recite additional elements that amount to significantly
more than the judicial exception. The Examiner views the recited implants
and sensors as being claimed at a "high level of generality" and are thus
convention and well-understood, and "do not narrowly limit the claim to a
particular technological process or apparatus." Final Act. 14. The particular
arrangement of the sensors on the implant and the positioning of the implant
on the bone are, according to the Examiner, "merely contextual, intended-
use type limitations that do not structurally limit the claimed invention in
such a way as to amount to significantly more than the abstract idea." Id. at
15. The Examiner opines that "the details regarding attachment/positioning
relative to the bone only generally link the use of the judicial exception to
the technological environment." Id.; see also Ans. 14. The Examiner
additionally characterizes the recited arrangement of the sensors on the
implant and the positioning of the implant on the bone as being "well within
the understanding of one skilled in the art, so the combination of these
elements does not result in a non-conventional and non-generic
arrangement." Ans. 15-16.
The Examiner does not cite to evidence in support of the contentions
as to what allegedly would be understood by the person of ordinary skill in
the art. Furthermore, the recently issued Guidance does not have us reach
this inquiry until after a determination is made as to whether the claim
integrates the judicial exception, in this case, an abstract idea in the form of
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a mental step, into a practical application. Here, it is apparent that the
particular placement of the implant and the positioning of the sensors to be
coupled to a weakened portion (first sensor) and to a non-weakened portion
of the bone spaced from the fracture (second sensor), allows for a
determination of a ratio of strains measured at the two sensors, in order to
normalize the effect of loads on the bone. 2 This results in a practical
application, that of obtaining information as to the load-bearing capability of
a weakened (fractured and healing) portion of a bone, relative to the load-
bearing capability of a non-weakened (intact) area of bone.
Although not couched in terms of integrating a judicial exception into
a practical application, the court in Thales Visionix Inc. v. United States
reached the same conclusion in assessing the patent eligibility of a claim
fairly similar to claim 21 here on appeal. 3 Claim 22 in that decision
involved a method claim for determining an orientation of an object relative
to a moving reference frame based on signals received from two inertial
sensors mounted in particular locations, one on the object, and the other on
the moving reference frame. Thales Visionix Inc., 850 F.3d at 1345--46.
The orientation-determining step involved the use of at least one
mathematical equation, but the court held, "[ t ]hat a mathematical equation is
required to complete the claimed method and system does not doom the
claims to abstraction." Id. at 1349.
2 This normalization is described in the Specification as providing data as to
the stiffness of the bone at the fracture site, which is discussed as being
useful in assessing the healing of the fracture. Spec. 9.
3 Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017).
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The court in Thales Visionix ultimately found that "[t]he claims
specify a particular configuration of inertial sensors and a particular method
of using the raw data from the sensors in order to more accurately calculate
the position and orientation of an object on a moving platform." Id.
Appealed claim 21 before us, too, uses a particular configuration of sensors
relative to an implant and fractured bone, and using data from the sensors in
order to generate a ratio of strains measured in a fractured bone region and
in a non-weakened region, to provide a normalized value or effect of loads
on the bone at those locations. To the extent that the claim 15 method might
be viewed as less mathematically complex than that in Thales Visionix, we
regard this as not being germane to the patent eligibility determination.
We appreciate the Examiner's concern that the claims do not
"positively recite doing anything with the determined ratio - there is no
tangible result/transformation/output of a particular result or improvement."
Ans. 14--15. Although the Examiner is correct that such considerations have
been taken into account in prior court decisions involving the patent
eligibility of certain methods, with the claims as currently presented, the
absence of some further step or limitation does not undermine the eligibility
of the claim because, even without such a step, the claims integrate the
judicial exception (mental process as abstract idea) into a practical
application, i.e., the use of a particular configuration of sensors relative to an
implant and fractured bone, and using the data from the sensors in order to
generate a ratio of strains measured in a weakened bone region and in a non-
weakened region, to provide a normalized value or effect of loads on the
bone at those locations.
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The rejection of independent claims 21, 30, and 36, and of claims 22-
29, 31-35, and 37--40 depending therefrom, under 35 U.S.C. § 101, is not
sustained.
Claims 21, 23, and 26-40--Unpatentability over Morgan '782
The Examiner finds that Morgan '782 discloses a device and method
as set forth in independent claims 21, 30, and 36, with the exception that
Morgan '782 "does not explicitly teach calculating a ratio of the first strain
to the second strain to normalize an effect of loads on the bone." Final Act.
6, 8, and 11. The Examiner finds relevant to the obviousness inquiry that
Morgan '782 discloses comparing strain measurements over time from
multiple sensors at each of the sensor locations, to identify satisfactory or
unsatisfactory loading conditions as well as to determine how much load is
carried by the bone relative to the implant. Id. at 6.
The Examiner continues, averring that the claimed ratio calculation
"could easily be performed by a general purpose processing device/computer
in conjunction with conventional strain gauges," and concluded that it would
have been obvious to modify the processing device of Morgan '782 to
calculate such a ratio. Id. The asserted motivation for doing so would have
been "to ensure that the implant is sufficiently engaged with the bone at both
the weakened and unweakened portions and to track the transfer of loading
at each portion to determine whether the bone is healing at an appropriate
rate." Id.
The flaw in the Examiner's above reasoning is that Morgan '782
already does ensure that the implant is sufficiently engaged with the bone
wherever the sensors are placed, and tracks the transfer of loading at each
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sensor position, on a sensor-by-sensor basis. As pointed out by Appellant,
"the Examiner is simply restating the utility of the Morgan ['782] sensors,"
and that, to the extent that the Morgan '782 sensors do monitor strain at
various locations on the implant to assess fracture healing rate, "[ they do] so
in a completely different, and more simplified, way than the present
application," thus providing no motivation to modify the system to align
with the presently-claimed system. Appeal Br. 13.
The Examiner, in the Answer, provides cites to various paragraphs in
the Morgan '782 reference, noting that these support the position that "there
was a recognized need in the art to use various strain sensors positioned on
bone implants to track healing and monitor bone strength/fracture. Ans. 20.
The use of a plurality of sensors and the obtention and display of strain
measurements from each of the sensors, according to the Examiner,
Id.
provides a quantitative and qualitative comparison of the
different strains experienced in various portions of the
implant, and one skilled in the art would readily and
intuitively understand that calculating a ratio between
these strains measured by the different sensors would only
augment the teachings of Morgan '782.
However, we agree with Appellant that "nothing in the prior art shows
or suggests ... the usefulness of such a ratio of strain readings at two
different portions of the bone - much less a ratio of a strain reading from a
weakened portion of the bone to a non-weakened portion of the bone as
claimed." Reply Br. 8. In other words, as Appellant contends, the utility of
obtaining a ratio of the first and second strain readings is not disclosed or
suggested by the prior art.
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Accordingly, we do not sustain the rejection of claims 21, 23, and 26-
40 as being unpatentable over Morgan '782.
Claims 22, 24, and 25--Unpatentability Over Morgan '782 and Morgan '597
The Examiner does not rely on Morgan '597 in any manner that
remedies the basic deficiency in the teachings of Morgan '782, discussed
above. The rejection of claims 22, 24, and 25 over Morgan '782 and
Morgan '597 is not sustained.
DECISION
The Examiner's rejection of claims 21--40 under 35 U.S.C. § 101 is
reversed.
The Examiner's rejections of claims 21--40 under 35 U.S.C. § 103(a)
are reversed.
AFFIRMED
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