Ex Parte Huber et al

Patent Trial and Appeal Board

Jun 24, 2016

12016610 (P.T.A.B. Jun. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/016,610
108549 7590
Tucker Ellis LLP
Brainlab AG
950 Main A venue
Suite 1100
FILING DATE
01/18/2008
06/28/2016
Cleveland, OH 44113-7213
FIRST NAMED INVENTOR
Herm Hansjoerg Huber
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.
013658/000487 4631
EXAMINER
TOWA,RENET
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
06/28/2016 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):
patents@tuckerellis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HERM HANSJOERG HUBER and BLAINE W ARKENTINE
Appeal2014-006461
Application 12/016,610
Technology Center 3700
Before JENNIFER D. BAHR, LINDA E. HORNER, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Henn Hansjoerg Huber and Blaine Warkentine ("Appellants") 1 appeal
under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims
1-18. See Appeal Br. 1, 2. Claims 19-25 have been withdrawn. Id. at 2.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
According to Appellants, the real party in interest is Brainlab AG.
Appeal Br. 2.
Appeal2014-006461
Application 12/016,610
CLAIMED SUBJECT MATTER
Appellants' disclosed invention relates to "a method and device for
registering a knee or knee joint for image-guided surgery and for testing the
stability or mobility of the knee or knee joint." Spec., p. 1, 11. 10-12.
Claim 1, reproduced below with emphasis added, is the sole independent
claim and is representative of the subject matter on appeal.
1. A method for determining stability and mobility of a
knee or knee joint of a patient said knee or knee joint including
a tibia, femur, and patella comprising:
securing or attaching a first tracking device to the tibia of
the patient and a second tracking device to the femur of the
patient;
recording a position of a first reference point on the tibia
using a pointing device and a position of a second reference
point on the tibia or the patella using the pointing device, said
pointing device including a third tracking device secured or
attached thereto;
using a navigation system and the third tracking device to
detect and determine the position and/or orientation of the
pointing device during the recording process of the positions of
the first and second reference points;
offsetting the position of the first reference point by a
first predetermined amount into a position of a first axial point,
and offsetting the position of the second reference point by a
second predetermined amount into a position of a second axial
point;
placing the tibia and the femur in a plurality of positions
relative to each other;
performing a mobility test on the knee joint in the
plurality of different positions of the tibia relative to the femur,
wherein the navigation system determines the positions of the
first and second axial points relative to each other during the
test by determining the positions and/or orientations of the first
and second tracking devices; and
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Application 12/016,610
ascertaining the stability and mobility of the knee or knee
joint from the determined positions of the first and second axial
points.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Leitner US 2004/0106861 Al June 3, 2004
Lefevre US 2005/0049524 Al Mar. 3, 2005
Colomb et US 2006/0161052 Al July 20, 2006
Wack US 2008/0161820 Al July 3, 2008
REJECTIONS
The following rejections are before us for review:
I. Claims 1, 2, 4, 8-13, and 18 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Colombet and Wack.
II. Claims 3, 5, and 14-17 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Colombet, Wack, and Leitner.
III. Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Colombet, Wack, and Lefevre.
ANALYSIS
Independent claim 1 recites, in relevant part, a method for determining
stability and mobility of a knee or knee joint, including the step of
"offsetting the position of the first reference point by a first predetermined
amount into a position of a first axial point, and offsetting the position of the
second reference point by a second predetermined amount into a position of
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Application 12/016,610
a second axial point." Appeal Br., Claims App. Appellants argue that the
claimed subject matter would not have been obvious because there is no
reason to modify the method of Colombet based on the teachings of Wack to
include an offsetting step as claimed. See id. at 9-18. In particular,
Appellants assert that "[t]here simply is no nexus between the digitized
landmarks used to generate the surface model in the system of Colombet and
the offset pin of Wack that would reasonably lead one having ordinary skill
in the art to attempt to offset one of the digitized points (i.e., the alleged first
and second reference points)" of Colombet. Id. at 17 (italics omitted). We
agree that a sustainable case of obviousness has not been established.
In rejecting independent claim 1, the Examiner found that Colombet
discloses a method for determining stability and mobility of a knee,
substantially as claimed, including recording the positions of first and
second reference points using a pointing device. See Final Act. 2-3 (citing
Colombet ,-i,-i 71-72, 80-83, 85). The Examiner acknowledged that
Colombet fails to disclose offsetting the positions of the first and second
reference points by predetermined amounts into respective first and second
axial points, and relied on Wack for disclosing such an offsetting step. See
id. at 4-5 (citing Wack ,-i,-i 22-26). The Examiner determined that, given the
teachings of the prior art, it would have been obvious to one of ordinary skill
in the art at the time the invention was made to have modified the method of
Colombet to include a step of offsetting the positions of the reference points
by predetermined amounts into axial points "in order to iteratively identify
the location and position of the desired entry portals or starting points for the
attachment pins of the first and second tracking devices to their respective
proper locations as taught by Wack." Id. at 5.
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Here, the Examiner erred by not articulating sutlicient reasoning
supported by rational underpinnings why a person having ordinary skill in
the art would have been led to modify the method of Colombet to include
offsetting the first and second reference points by predetermined amounts
into respective first and second axial points. See KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007) (stating that "rejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness" (citing In re Kahn, 441 F .3d
977, 988 (Fed. Cir. 2006))).
Colombet discloses that reference body 100, a type of tracking device,
is attached to femur 2 and reference body 110 is attached to tibia 4. See
Colombet iJ 79; see also id. iJ 63 (explaining that "[t]o provide precision
tracking of objects, markers 50 can be rigidly connected together to form
reference bodies, (e.g., 100, 110), and these reference bodies can be attached
to bones, tools and other objects to be tracked" (boldface omitted)).
Colombet explains that "[ s ]ince the reference bodies 100, 110 are fixed to
the bones 2, 4, the pointer tip 124 can be used to point at any given point on
bone 2, 4, the position of which is precisely taken by its tip 124." Id. iJ 79
(boldface omitted; emphasis added). Hence, Colombet' s position
measurement system 20 tracks the position of pointer 120 fitted with
markers 122 to digitize a number of reference points located anywhere on
the bones. See id. iii! 78, 80.
Wack discloses a method for placing a surgical pin into the
intramedullary canal of a femur, where the method includes placing a first
pin and obtaining fluoroscopic images of the first pin placement relative to a
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desired placement location in the intramedullary canal. See Wack iii! 21-22.
These images are used to determine an offset amount between the position
of the first pin and the desired placement location; a second pin is then
placed according to the determined offset amount. See id. iii! 23-24.
Consequently, although Wack discloses an offsetting step, we agree
with Appellants that "there is no apparent reason ... to offset the location of
the tracking devices [of Colombet] once they have been initially fixed to the
patient." Appeal Br. 19. Namely, the Examiner has not provided any
factual evidence or persuasive technical reasoning to explain why a person
having ordinary skill in the art would have been led to modify the method of
Colombet to include offsetting the positions of the tracking devices by
predetermined amounts into axial points, and a reason for such modification
is not otherwise evident from the record.
Moreover, the positions of Colombet's tracking devices are not based
on reference points, but rather are first fixed to the femur and tibia and,
subsequently, a pointer is used to record reference points on various surfaces
of the bones. See Colombet iii! 67, 79-80. As such, the Examiner's
reasoning articulated in the rejection in support of the proposed modification
of Colombet (i.e., "in order to iteratively identify the location and position of
the desired entry portals or starting points for the attachment pins of the first
and second tracking devices to their respective proper locations") lacks
rational underpinnings.
We note that the Examiner offers an alternative position in the
Answer by explaining that Colombet' s "plurality of possible landmark
points, which includes, inter alia, the tibial plateau glenoids, and the tibial
malleoli (see at least par 0072 & 0085), as well as the insertion/fixation
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points[,] ... [are construed as] the claimed 'reference points,' which are all
detected using said pointing device 120." Ans. 14; see id. at 16. The
Examiner asserts that Colombet discloses "record[ing] a first reference point
on the tibia (i.e. the external tibial malleolus) using the pointer 120, then
offsetting the position of the first reference point by essentially determining a
first axial point (i.e. internal malleolus)." Id. at 14 (citing Colombet iii! 80,
85) (emphasis added). It appears that the Examiner interprets this portion of
Colombet as disclosing that the external malleolus (i.e., a first reference
point) is offset by a predetermined amount into an internal malleolus,
representing a first axial point.
We disagree with the Examiner's characterization of this portion of
Colombet. Specifically, Colombet discloses that "pointer tip 124 is used to
digitize the external malleolus by placing the pointer tip 124 at this bone
location which is determined and stored by position measurement system 20
... [and] the internal malleolus is digitized by placing the pointer tip 124 at
this location." Colombet iJ 80 (boldface omitted); see also id. iJ 28
(disclosing that "pointer ... has a tip for contacting a surface of at least one
of the first and second bones to capture one or more reference points"
(emphasis added)). Thus, we understand Colombet as disclosing that the
pointer digitizes various bone surface locations by touching the pointer tip to
each location.
As such, we agree with Appellants that, even though the position of
the internal malleolus may be offset from the external malleolus, any such
offsetting would not be by a predetermined amount, as recited in the claims.
See Reply Br. 7 (asserting that "due to dimensional differences between
patients[,] the offset from the internal malleolus (i.e., the alleged offset from
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the first point) to the external malleolus (i.e., the alleged first point) is
unknown"). Moreover, even if Colombet had disclosed that the internal
malleolus position were offset by a predetermined amount, the Examiner has
not sufficiently established that any such offsetting of Colombet's reference
points includes offsetting the reference points into axial points as claimed.
The Examiner relied on Leitner and Lefevre for teaching additional
features of dependent claims, but not in any way that would cure the
deficiency discussed supra with respect to the proposed combination of
Colombet and Wack as applied in the rejection of independent claim 1. See
Final Act. 7-8.
Accordingly, based on the record before us, the Examiner has not
provided persuasive evidence or reasoning to support a determination of
obviousness of the claimed subject matter. On this basis, we do not sustain
the rejection of independent claim 1 as being unpatentable over Colombet
and Wack. Because each of claims 2-18 depends directly or indirectly from
independent claim 1, we likewise do not sustain the rejections of the
dependent claims.
DECISION
We REVERSE the Examiner's rejections of claims 1-18.
REVERSED
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