Ex Parte Caylor

Patent Trial and Appeal Board

Jul 25, 2013

11537338 (P.T.A.B. Jul. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte EDWARD J. CAYLOR III
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Appeal 2011-008585
Application 11/537,338
Technology Center 3700
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Before MICHAEL L. HOELTER, RICHARD E. RICE and
MITCHELL G. WEATHERLY, Administrative Patent Judges.

RICE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-008585
Application 11/537,338

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STATEMENT OF THE CASE
Edward J. Caylor III (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 1-3 and 6-10. App. Br. 2.
Claims 4, 5 and 11-29 have been canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
The claimed subject matter “relates generally to systems and methods
for transmitting, receiving, and/or monitoring orthopaedic implant sensor
data.” Spec. para. [0001]. Claim 1, which is reproduced below, is the sole
independent claim on appeal:
1. A medical device comprising:
an implantable orthopaedic prosthesis
having secured thereto a circuit, the circuit
comprising:
(i) a sensor configured to generate implant
sensor data;
(ii) a cellular transceiver configured to
receive and transmit data over a cellular network;
(iii) a memory device having stored therein
a first implant serial number assigned to the
implantable orthopaedic prosthesis; and
(iv) a processor electrically coupled to the
sensor, the cellular transceiver, and the memory
device, the processor being configured to receive
the implant sensor data from the sensor and
transmit the implant sensor data over the cellular
network using the cellular transceiver in response
to the first implant serial number being equal to a
second implant serial number received over the
cellular network.
App. Br., Claims App’x (emphasis added).
Appeal 2011-008585
Application 11/537,338

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REFERENCES RELIED ON BY THE EXAMINER
Singer US 5,252,102 Oct. 12, 1993
Townsend US 2002/0024450 Al Feb. 28, 2002
Kilcoyne US 6,689,056 B1 Feb. 10, 2004
Montegrande US 2006/0178583 Al Aug. 10, 2006

THE REJECTION
Claims 1-3 and 6-10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Townsend, Montegrande, Kilcoyne and Singer.1

ANALYSIS
Claim 1 calls for “an implantable orthopaedic prosthesis having
secured thereto a circuit, the circuit comprising: . . . a cellular transceiver
configured to receive and transmit data over a cellular network.” (Emphasis
added).
The Examiner’s position is that:
The Montegrande reference is relied on for the teaching
of a cellular transceiver configured to receive and transmit data
over a cellular network (pg. 2, par. 0031). The Townsend
reference does not disclose the cellular transceiver but does
disclose an implanted RF receiver 30 and RF transmitter 32 (as
shown in Fig. 1a) which utilize wireless data transmission to a
local network or data center (computer). The Montegrande
reference is used to modify the implanted RF receiver and RF
transmitter of Townsend to a cellular transceiver (as disclosed
on pg. 2; par. 0031 of Montegrande, since the cellular
transceiver is an equivalent alternative to other wireless
transceivers for transmitting data to a data center) where the
cellular transceiver is capable of receiving and transmitting data

1 We consider Appellant’s statement that the grounds of rejection to be
reviewed on appeal are under 35 U.S.C. § 102(b), rather than 35 U.S.C.
§ 103(a), to be a typographical error. App. Br. 4.

Appeal 2011-008585
Application 11/537,338

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over a cellular network. The transmitter or receiver in
Townsend is disclosed as being implanted (Fig. 4), therefore the
combination of Townsend and Montegrande discloses an
“implantable device including a cellular transceiver.”
Ans. 9-10. The Examiner’s alternative position is that the limitation “an
implantable orthopaedic prosthesis having secured thereto a circuit, the
circuit comprising . . . a cellular transceiver” does not require the cellular
transceiver to be implanted. Id. at 10. The Examiner concludes that
“[t]herefore, the ‘external reader 30’ of Montegrande and its included
cellular transmitter/transceiver 54 can be used as a modification for the
transmitter or receiver in Townsend, in addition to the transmitter or receiver
in Townsend disclosed as being implanted already.” Id. The Examiner
additionally concludes:
Therefore, a person having ordinary skill in the art would
consider common knowledge and common sense to modify the
RF transmitter and receiver in Townsend to the cellular
transceiver of Montegrande, since it is a functional substitution
of known parts in the art which improve on the size of the
implanted transmission component and improve the accuracy of
the transmission of implant sensor data by providing additional
benefits such as greater distance of data transmission and use of
less number of parts.
Id. at 12.
Appellant argues that “a person of ordinary skill would understand
that the [claimed] circuit, and every element thereof (i.e., the cellular
transceiver, sensor, processor, and so forth), is attached to the orthopaedic
prosthesis and therefore implantable.” Reply Br. 3. Appellant contends that
none of the applied references discloses an implantable cellular transceiver.
App. Br. 6. Appellant also challenges the Examiner’s conclusion of
obviousness on the ground that it lacks “a clear statement as to why a person
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Application 11/537,338

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of ordinary skill would set aside what is taught in those references and
modify Townsend to arrive at the claimed invention.” Id. at 9.
We have been instructed by the predecessor to our reviewing court
that:
The Patent Office has the initial duty of supplying the factual
basis for its rejection. It may not, because it may doubt that the
invention is patentable, resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies
in its factual basis. To the extent the Patent Office rulings are
so supported, there is no basis for resolving doubts against their
correctness. Likewise, we may not resolve doubts in favor of
the Patent Office determination when there are deficiencies in
the record as to the necessary factual bases supporting its legal
conclusion of obviousness.

In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
Here, we are not persuaded that the Examiner has provided the
necessary factual basis for finding that the applied references disclose or
suggest a cellular transceiver “secured” to an implantable orthopaedic
prosthesis, as claim 1 requires. The Examiner’s reasoning that “[t]he
transmitter or receiver in Townsend is disclosed as being implanted (Fig. 4),
therefore the combination of Townsend and Montegrande discloses an
‘implantable device including a cellular transceiver’” (see Ans. 9-10)
appears to assume or speculate that Montegrande’s cellular
transmitter/receiver can be implanted in a patient’s body in the same manner
as Townsend’s RF transmitter/receiver. However, the cellular
transmitter/receiver 48 disclosed by Montegrande (see paras. [0030] and
[0031]) is part of an external reader 30 that is specifically adapted to be
positioned “outside the body of the patient, and inductively coupled to the
implantable sensor 20 to periodically read the blood pressure of the patient.”
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Application 11/537,338

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Para. [0025] (emphasis added), figs. 1 and 2. Montegrande discloses that the
external reader 30 can take the form of a wristwatch, or a shape to be worn
around some part of the body other than the wrist, or a hand-held scanner
that is periodically positioned adjacent the patient to take blood pressure
readings. Para. [0026]. On the record before us, there is no indication by
the Examiner that Montegrande’s external reader 30 (or its included
transmitter/receiver 48) is suitable for implantation.
Further, while the Examiner determines that “‘an implantable
orthopaedic prosthesis having secured thereto a circuit, the circuit
comprising . . . a cellular transceiver . . .’ does not require the cellular
transceiver to be implanted” (see Ans. 10), this recitation does require a
cellular transceiver “secured” to an implantable orthopaedic prosthesis. The
ordinary and customary meaning of “secured,” consistent with Appellant’s
Specification, is “made fast.”2 The Examiner has not persuaded us that
Montegrande discloses or suggests a transceiver that is made fast to an
implantable device.3 Nor has the Examiner indicated how Montegrande’s
external, inductively coupled transceiver could be made fast to an
implantable device.

2 See WEBSTER’S THIRD NEW INT’L DICTIONARY, UNABRIDGED, accessed at
http://lionreference.chadwyck.com (last visited Jul. 22, 2013); see also
Comaper Corp. v. Antec., Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (If the
specification does not assign or suggest a specific definition to a claim term,
it is appropriate to consult a general dictionary definition of the term for
guidance in determining its ordinary and customary meaning to one having
ordinary skill in the art.).
3 It is our understanding that Montegrande’s external reader 30 is not made
fast, or even physically attached, to the implantable sensor 20, but rather is
positioned outside the body of the patient and “inductively coupled” to the
sensor See Montegrande, para. [0025].
Appeal 2011-008585
Application 11/537,338

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As the Examiner does not rely on Kilcoyne or Singer to cure the
deficiency in Townsend and Montegrande (see Ans. 5-6 and 10-12), we do
not sustain the rejection of claim 1, or claims 2, 3 and 6-10 dependent
therefrom, under 35 U.S.C. § 103(a) as being unpatentable over Townsend,
Montegrande, Kilcoyne and Singer.

DECISION
We reverse the rejections of claims 1-3 and 6-10.

REVERSED

mls