Ehud (Udi) Daon

Patent Trials and Appeals Board

Dec 27, 2019

13745249 - (D) (P.T.A.B. Dec. 27, 2019)

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.
13/745,249 01/18/2013 Ehud (Udi) Daon NaviSurg-3-522-11920 9771
77741 7590 12/27/2019
Brannon Sowers & Cracraft PC
47 South Meridian Street
Suite 400
Indianapolis, IN 46204
EXAMINER
LINDSAY, BERNARD G
ART UNIT PAPER NUMBER
2119
NOTIFICATION DATE DELIVERY MODE
12/27/2019 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):
docket@bscattorneys.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte EHUD (UDI) DAON
____________________

Appeal 2018-002541
Application 13/745,249
Technology Center 2100
____________________

Before DENISE M. POTHIER, JOHN P. PINKERTON, and
JASON J. CHUNG, Administrative Patent Judges.

PINKERTON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s Final
Rejection of claims 1–24, which are all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Navigate
Surgical Technologies, Inc. Appeal Br. 1.
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STATEMENT OF THE CASE
Introduction
Appellant generally describes the disclosed and claimed invention as
follows:
The present invention includes a method, system and
software for dynamically creating an automatic patient tracking
device specific to each patient without the need to take multiple
X-ray or CT scans or to make patient specific casts. The
automatic patient tracking device allows automatic surgical
motion tracking in a regular clinical setting. The method may
be used to reduce the time of admitting patient to a surgery
significantly.
The system uses particularly configured software to
create a mount that may be employed to attach a tracking
marker to patient specific anatomy. For example, in the
example of dental surgery the method, system and software of
the present invention may be used to manufacture a tight fitting
splint or mount to which may be attached a tracking marker that
is tracked by the motion tracking system.

Spec. ¶ ¶ 4–5.2
Independent claim 1, which is reproduced below, is representative of
the subject matter on appeal:
1. A method for making a trackable mount for assisting
with surgery within a surgical site, the mount trackable by a
tracker disposed to obtain image information from the surgical
site, the method, comprising:

2 Our Decision refers to the Final Office Action mailed Dec. 2, 2016 (“Final
Act.”), Appellant’s Appeal Brief filed Aug. 14, 2017 (“Appeal Br.”) and
Reply Brief filed Jan. 2, 2018 (“Reply Br.”), the Examiner’s Answer mailed
Nov. 2, 2017 (“Ans.”), and the original Specification filed Jan. 18, 2013
(“Spec.”).
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creating a software model of the trackable mount based
on scan data of the surgical site, the software model being based
on the three dimensional shape of a single marker that is
tracked by a tracker based on the marker shape; and
making the trackable mount based on the software model.
Claims App. 19.3
Rejections on Appeal
Claim 4 stands rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which the applicant regards as the invention. Final Act. 4–5.
Claims 1–5, 7, 8, and 10–24 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Franklin et al. (US 2005/0085719 A1; published
Apr. 21, 2005) (“Franklin”) in view of Plaskos et al. (US 2007/0239169 A1;
published Oct. 11, 2007) (“Plaskos”). Final Act. 5–20.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Franklin and Plasko, in view of Sonenfeld et al. (US
2008/0171305 A1; published July 17, 2008) (“Sonenfeld”). Final Act. 20–
22.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Franklin and Plaskos, in view of Cinader (US
2008/0026338 A1; published Jan. 31, 2008). Final Act. 22–23.

ANALYSIS
Rejection for Indefiniteness

3 The pages of the Appeal Brief are unnumbered. Accordingly, we consider
the title page to be page number 1, and each of the following pages to be
numbered consecutively thereafter.
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The Examiner rejects claim 4 under 35 U.S.C. § 112, second
paragraph, for indefiniteness. Final Act. 4–5. Claim 4 depends directly
from claim 2, and indirectly from claim 1, and recites, inter alia,
“confirming that the model exterior shape allows the trackable mount to be
mountable at the location in a stable condition.” Claims App. 19–20
(emphasis added). The Examiner finds the term “stable condition” is not
clear because it “is open to very wide interpretation depending on the
context.” Final Act. 4. The Examiner also finds that, for example, “an
object could be stable in a vertical or horizontal sense—or both; or it could
be stable to within some prescribed tolerance,” which may vary depending
on the type of surgery. Id. at 4–5. The Examiner further finds that different
surgeons may determine subjectively what a “stable condition” may be in a
given set of circumstances, “thus failing to definitively allow determination
of the metes and bounds.” Id. at 5. The Examiner further finds, in response
to Appellant’s argument that a computer programmer of ordinary skill would
know the meaning of the term “stable condition,” that “the skills/training of
a computer programmer . . . are not known to include determining the stable
positioning of surgical devices.” Ans. 19.
Appellant argues that a person of ordinary skill in the art would
understand the term “stable condition” because the Specification describes
“the process of identifying the appropriate mount shape for dental, arm, and
knee surgery and the mounting location so that ‘the identified exterior shape
may stably fit on the selected location.’” Appeal Br. 11 (citing Spec.
¶¶ 62–64). Appellant also argues that the Examiner’s focus on various types
of surgery and different surgeons “misses the point” because the term “stable
condition” refers to the trackable mount’s connection to the mounting
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location within the software model and “[t]he person of ordinary skill is not
a surgeon, it is a person creating the software model, e.g., a computer
programmer with experience in the medical imaging and modeling fields.”
Id. at 12; see also Reply Br. 2.4 Appellant further argues:
While it is possible for different surgeons to have different
opinions on what constitutes “stable condition,” the context of
this claim recitation relates to the software model, and within
the software model the mounting of the trackable mount to the
location may be definitively and objectively determined on the
basis of calculated values without the aid of a surgeon, and thus
the metes and bounds of the [c]laim may be fairly ascertained
by one of ordinary skill.
Id.
Under 35 U.S.C. § 112, second paragraph, the test for definiteness is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). Language in a
claim is unclear if, when given its broadest reasonable interpretation, it is
“ambiguous, vague, incoherent, opaque, or otherwise unclear in describing
and defining the claimed invention . . . .” In re Packard, 751 F.3d 1307,
1311 (Fed. Cir. 2014).
We are persuaded by Appellant’s arguments that the Examiner erred.
First, we agree with Appellant that a person of ordinary skill in the art would
understand the term “stable condition” because the Specification describes
determining whether the trackable mount with the identified shape “may
stably fit” or “be stably mounted” on the selected location. Spec. ¶ 63. As

4 The pages of the Reply Brief are also unnumbered. Accordingly, we
consider the title page to be page number 1, and each of the following pages
to be numbered consecutively thereafter.
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stated supra, the Examiner finds that an object could be “stable in a vertical
or horizontal sense” or “within some prescribed tolerance.” Final Act. 19.
Although we agree with the Examiner that claim 4 is broad in this respect,
“[b]readth is not indefiniteness.” In re Gardner, 427 F.2d 786, 788 (CCPA
1970).
Second, considering claim 4 in the context of claims 1 and 2, we agree
with Appellant that the context of claim 4 relates to creating “the software
model” of the trackable mount. See Reply Br. 2. Thus, we also agree with
Appellant that the person of ordinary skill in the field of implementing
medical imaging technology would be a computer programmer who “would
have insight into the meaning of ‘confirming that the model exterior shape
allows the trackable mount to be mountable at the location in a stable
condition’ step of [c]laim 4.” Id. We further agree with the Appellant that
because the context of claim 4 relates to creating the software model, “the
mounting of the trackable mount to the location may be definitively and
objectively determined on the basis of calculated values without the aid of a
surgeon or other information, and thus the metes and bounds of the [c]laim
may be fairly ascertained by one of ordinary skill.” Id.
Thus, we determine that claim 4 is not indefinite because for the
reasons discussed supra, the term “stable condition” is not ambiguous or
unclear, and the scope of the claim would be reasonably ascertainable to a
person of ordinary skill in the art. Accordingly, we do not sustain the
Examiner’s rejection of claim 4 under 35 U.S.C. § 112, second paragraph.

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Section 103(a) Rejections
The dispositive issue raised by the arguments in Appellant’s Briefs is
whether the combination of Franklin and Plaskos teaches or suggests
creating the trackable mount “software model being based on the three
dimensional shape of a single marker that is tracked by a tracker based on
the marker,” as recited in method claim 1, and as similarly recited in
independent claims 12 and 20.5
The Examiner rejects claim 1 under 35 U.S.C. § 103(a) for
obviousness over the combination of Franklin and Plaskos. Final Act. 6–7.
In particular, the Examiner finds, and we agree, that Franklin teaches a
method for making a trackable mount for assisting with surgery within a
surgical site because Franklin teaches making a customized surgical fixture,
to which a tracking fixture having tracking markers, such as light-emitting
diodes, is attached, and that the markers are tracked during surgery by a
camera array. Final Act. 6 (citing Franklin, code (57); Figs. 12, 13; ¶¶ 12,
105, 107). The Examiner also finds that Franklin teaches “creating a
software model of the trackable mount based on scan data of the surgical
site, the software model being based on the three dimensional shape of a
single marker.” Id. (citing Franklin, code (57); Figs. 2, 11; ¶¶ 5, 17, 40, 41,
49, 114, 115). However, the Examiner finds that Franklin “fails to clearly
specify a single marker that is tracked by a tracker based on the marker
shape.” Id. at 7. In that regard, the Examiner finds “Plaskos teaches a single
marker that is tracked by a tracker based on the marker shape.” Id. at 7

5 Appellant argues the claims as a group focusing on claim 1. See Appeal
Br. 6–11. Accordingly, we select claim 1 as representative, and the
remaining claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
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(citing Plaskos ¶¶ 8, 21, 39–41, Figs. 4, 5 (finding “single reference marker
100 is tracked based on the marker shape”)).
Appellant argues that although Franklin discloses surgical fixtures
having markers, Franklin lacks any disclosure, teaching, or suggestion of
“creating the solid model based on a marker, much less on the shape of a
marker.” Appeal Br. 13. Although Appellant notes that “the tracking
markers of Franklin inherently ‘have a three-dimensional shape and are
mounted in the surgical fixture [¶¶ 12, 105, 107, Figs. 12, 13],’” Appellant
argues there is no teaching or suggestion in Franklin or any of the cited art
“that the shape of the marker is in any way used to track the marker and thus
develop the software model.” Reply Br. 3–4. Appellant also argues that,
“[c]ontrary to the Examiner’s unsubstantiated allegations, nothing in Plaskos
discloses, teaches or suggests tracking on the three dimensional shape of the
tracking marker.” Appeal Br. 14 (citing Plaskos ¶¶ 8, 21, 39–41).
According to Appellant, the disclosure of Plaskos “unambiguously states
that reference marker 100 is tracked by the location of lines within the
camera image, rather than ascertaining the shape of marker 100.” Id.; see
Plaskos ¶ 40 (“reference marker 100 is a pyramid shaped rigid body with
360 degrees of visibility by means of using bars or struts 120, which are
identified as lines in 2D camera images”); see also Reply Br. 4 (arguing that
Plaskos “has bars or struts that have a shape,” but Plaskos identifies these
items “as lines in 2D camera images”).
We are not persuaded by Appellant’s arguments that the Examiner
erred. First, contrary to Appellant’s arguments, we agree with the
Examiner’s findings that Franklin teaches creating a software model of the
trackable mount based on scan data of the surgical site and based on the
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three dimensional shape of tracking markers. See Final Act. 6 (citing
Franklin, code (57), ¶¶ 5, 12, 40, 41, 49, 105, 107, 114, 115, Figs. 2, 11–13).
In particular, the Examiner finds, and we agree, Franklin teaches “a solid
model is computed based on a scanned image of a patient,” and “a library
(database) of standard fixtures 1120” can optionally be used. Id. (see
Franklin ¶¶ 114–115). Paragraph 49 of Franklin describes that “after
scanning markers 122 are attached to bone anchors 120, the patient is
scanned . . . producing a three-dimensional image,” which is transferred to a
computer where it is stored. Paragraph 12 of Franklin describes “multiple
tracking markers, such as light-emitting diodes, can be attached to a tracking
fixture that is then attached to the surgical fixture” and “tracking locations of
the tracking markers relative to a . . . camera array.” In addition, paragraph
105 of Franklin describes that “[t]racking markers 1215 light-emitting
diodes . . . three-dimensional location can be tracked using . . . a camera
array.” Thus, we agree with the Examiner’s finding that the software model
is based not only on “scan data of the surgical site,” but is also based on the
three dimensional shape of markers, such as “scanning markers 122” and
“light-emitting diodes.”
Second, contrary to Appellant’s arguments, we agree with the
Examiner that Plaskos teaches “a single reference marker 100 that is tracked
based on the marker shape.” Final Act. 7. Specifically, the Examiner finds,
and we agree, that Plaskos teaches “tracking the relative movement of a
reference marker” because paragraph 8 of Plaskos describes “tracking the
relative movement of a reference marker attached to the object” and
paragraph 21 explains that “[d]etecting and determining the position and
orientation of an object is referred to herein as ‘tracking’ the object.” The
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Examiner also finds, and we agree, that Plaskos teaches tracking reference
marker 100 based on its three dimensional shape. Final Act. 7 (citing
Plaskos ¶¶ 39–41; Figs. 4–5). In that regard, Plaskos describes “reference
marker 100 is a pyramid shaped rigid body with 360 degrees of visibility by
means of using bars or struts 120, which are identified as lines in 2D camera
images.” Plaskos ¶ 40. In other words, Plaskos’s marker 100 has the overall
three dimensional shape of a pyramid, and it has 360 degrees of visibility
because it is made of bars or struts 120, which also have a three dimensional
shape. Thus, although any particular bar or strut is depicted as a line in a 2D
camera image, we agree with the Examiner that the marker 100 is tracked
based on its three-dimensional shape because marker 100 and the bars or
struts 120 of which it is composed have a three-dimensional shape.6
On the record before us, we find the preponderance of the evidence
supports the Examiner’s (1) finding that the combined teachings of Franklin
and Plaskos teach or suggest the disputed limitation of claim 1 and (2)
conclusion that the combined teachings and suggestions of Franklin and
Plaskos would have rendered the subject matter of claim 1 obvious under
35 U.S.C. § 103(a). Thus, we sustain the Examiner’s rejection of claim 1.
For the same reasons, we sustain the Examiner’s rejections of independent
claims 12 and 20, and dependent claims 2–11, 13–19, and 21–24, which are

6 Although we agree with the Examiner’s § 103 findings in the Final Action,
as discussed supra and from which this appeal is taken, we disagree with the
Examiner’s statement in the Answer to the extent the Examiner finds a
single bar or strut encompasses the claimed “marker shape.” Ans. 20.
Nonetheless, the overall disposition of this Decision is still an affirmance
because we agree with the Examiner’s § 103 analysis in the Final Action.
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not argued separately and fall together with claim 1. 37 C.F.R.
§ 41.37(c)(1)(iv).

CONCLUSION
We reverse the Examiner’s rejection of claim 4 under 35 U.S.C.
§ 112, second paragraph, for indefiniteness.
We affirm the Examiner’s rejection of claims 1–5, 7, 8, and 10–24
under 35 U.S.C. § 103(a) as being unpatentable over Franklin and Plaskos.
We affirm the Examiner’s rejection of claim 6 under 35 U.S.C.
§ 103(a) as being unpatentable over Franklin, Plaskos, and Sonenfeld.
We affirm the Examiner’s rejection of claim 9 under 35 U.S.C.
§ 103(a) as being unpatentable over Franklin, Plaskos, and Cinader.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R.
§ 41.50(a)(1).
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
4 112, 2nd
paragraph
Indefiniteness 4
1–5, 7, 8,
10–24
103(a) Franklin, Plaskos 1–5, 7, 8,
10–24

6 103(a) Franklin, Plaskos,
Sonenfeld
6
9 103(a) Franklin, Plaskos,
Cinader
9
Overall
Outcome
1–24

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TIME PERIOD FOR RESPONSE
No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R.
§ 41.50(f).
AFFIRMED