Ex Parte Lee et al

Board of Patent Appeals and Interferences

Jan 9, 2012

10454786 (B.P.A.I. Jan. 9, 2012)

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.
10/454,786 06/04/2003 David M. Lee 5074I-000010/US/CPB 3126
27572 7590 01/09/2012
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
KISH, JAMES M
ART UNIT PAPER NUMBER
3737
MAIL DATE DELIVERY MODE
01/09/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID M. LEE, MATTHEW S. SOLAR, and
RUDY A. MAZZOCCHI
____________

Appeal 2010-007232
Application 10/454,786
Technology Center 3700
____________

Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and ERICA A.
FRANKLIN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL

This appeal under 35 U.S.C. § 134 involves claims 1, 5, 27-29, 31-35,
37, 38, 40, 41, and 44-51, the only claims pending in this application (App.
Br. 3; Reply Br. 3). We have jurisdiction under 35 U.S.C. § 6(b).
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STATEMENT OF THE CASE1
The claims are directed to an apparatus (claims 1, 27-29, 31-33, 41,
44-47, and 51) and a method (claims 5, 34, 35, 37, 38, 40, 48-50). Claims 1,
5, 28, 29, 41, 45, and 50 are representative and are reproduced in the
“CLAIMS APPENDIX” of Appellants’ Brief (App. Br. 45-54).
Claims 1, 5, 27-29, 31-35, 37, 38, 40, 41, and 44-51 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over the combination of Franck,2
Barnett,3 and Goble.4
We affirm.

ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. As illustrated in Franck’s FIG. 21, reproduced below, Franck
suggests the use of a scanning marker 1444, registration divot 1450, and

1 Appellants present the Examiner’s objection of claims 1, 27-29, 31-33, 44-
47, and 51 for our review (App. Br. 14; Reply Br. 4). However, as the
Examiner correctly points out, the objection relates to petitionable, not
appealable, subject matter (Ans. 7). Accordingly, we have not considered
Appellants’ contentions regarding the Examiner’s objection in our
deliberations.
2 Franck et al., US 6,298,262 B1, issued October 2, 2001.
3 Barnett, US 6,011,987, issued January 4, 2000.
4 Goble et al., US 5,417,692, issued May 23, 1995.
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tracking marker 1448, on a post 1442, 1451, and 1446 respectively, attached
to an anchor 1440 in a subject’s skull (Franck, col. 18, ll. 35-41; Ans. 3):

“FIG. 21 is a scanning marker and a tracking marker attached to a threaded
insert” (Franck, col. 7, ll. 7-8).
FF 2. Franck fails to suggest an anchor that comprises a self-tapping thread
(see generally Ans. 3).
FF 3. Goble suggests a bone fixation and fusion system that utilizes an
anchor that comprises a self-tapping thread as illustrated in Goble’s FIG. 7
reproduced below:

“FIG. 7 is a profile perspective view of a section of a patient’s jaw bone
showing a male connection member turned into the jaw bone” (Goble, col. 5,
ll. 13-15; see also Ans. 7).
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FF 4. The exterior wall of an end of Goble’s anchor has an externally
faceted surface 22 (Ans. 4).
FF 5. Franck fails to suggest a positioning instrument (Ans. 4).
FF 6. As illustrated in Barnett’s Figs. 5 and 9, reproduced below, Barnett
suggests a positioning cup 86 that comprises a “hemispherical (or slightly
less than a half sphere) well 92”, a central bore 94, and a base 96 attached to
the surface of a patient’s skin 88 into which a fudicial 84 is attached
(Barnett, col. 4, ll. 30-36):

“FIG. 5 illustrates a fiducial positioning cup on the surface of a patients [sic]
skin” (Barnett, col. 2, ll. 66-67). “FIG. 9 illustrates the fiducial inserted into
the fiducial positioning cup” (Barnett, col. 3, ll. 7-8, see also Barnett, col. 6,
claim 3; Ans. 4-6).
FF 7. Barnett’s FIG. 14, reproduced below, illustrates a wand 36 that “has
a concave partial spherical in its tip 42 which contacts the spherical surface
of the fiducial 84. In this embodiment, the virtual tip 116’ of the wand is
calculated to be the geometric center of the partial spherical surface which
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Application 10/454,786

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falls at the centroid of the fiducial when the tip is against the fiducial”
(Barnett, col. 5, ll. 27-33; Ans. 5-6).

“FIG. 14 illustrates a concave hemispherical wand tip placed on a spherical
fiducial held in the fiducial cup” (Barnett, col. 3, ll. 17-18).
FF 8. Barnett suggests that the “virtual tip of the wand is offset from the
physical tip ” (Barnett, col. 5, l. 34).

ANALYSIS
Based on the combination of Franck, Barnett, and Goble the Examiner
concludes that, at the time of Appellants’ claimed invention, it would have
been prima facie obvious to a person of ordinary skill in this art to replace
Franck’s anchor with the bone anchor suggested by Goble (Ans. 4). In
addition, the Examiner reasons that a person of ordinary skill in this art
would have found it prima facie obvious to “use a registration wand, as
taught by Barnett, in the system and methods of Franck to remove the need
to replace the different scanning, registration and tracking markers, thereby
providing a more efficient system and method” (Ans. 5).
Appellants provide separate arguments for the following groups of
claims: (I) 1, 27, 31-33, 44, and 46; (II) 5, 34, 35, 37, 38, 40, 48, and 49;
(III) 28; (IV) 29 and 47; (V) 41; (VI) 45; and (VII) 50. Claims 1, 5, 28, 29,
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41, 45, and 50 are representative. 37 C.F.R. § 41.37(c)(1)(vii). We take
each in turn.

Claim 1:
Appellants contend that “[n]either Franck, nor Barnett disclose an
imageable spherical portion and shaft, as recited in Claim 1, where a cap is
sized and shaped to mate with the imageable spherical portion” (App. Br.
23). We are not persuaded. The combination of Franck and Barnett suggest
a spherical fiducial (FF 7), on a post, or shaft, (FF 1, 6, and 7) that is
attached to an anchor in a subject’s skull (FF 1). The combination of Franck
and Barnett also suggests a cap sized and shaped to mate with the imageable
spherical portion (FF 7).
While Appellants recognize that Goble “discloses a bone anchor”;
Appellants contend that Franck specifically teaches away from rigidly
connecting the fudicial marker to the base (App. Br. 25). We are not
persuaded. Instead, we find no error in the Examiner’s reasoning that a
person of ordinary skill in this art would have found it prima facie obvious
to “use a registration wand, as taught by Barnett, in the system and methods
of Franck to remove the need to replace the different scanning, registration
and tracking markers, thereby providing a more efficient system and
method” (Ans. 5).

Claim 5:
Appellants contend that Barnett “is contrary to [i]ndependent Claim 5
where determining a location of the imageable spherical portions includes at
least determining a location of a reference point defined at least in part by
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the cap that aligns with a center of the imageable spherical portion” (App.
Br. 32). In this regard,
Appellants . . . note that Barnett specifically discloses a wand
with a virtual tip 116 or 116’ that is offset from a physical tip of
the wand. This is contrary to [i]ndependent Claim 5 where
determining a location of the imageable spherical portions
includes at least determining a location of a reference point
defined at least in part by the cap that aligns with a center of the
imageable spherical portion.

(Id.) Appellants explain that in their invention, “[w]hen a cap . . . is placed
on a sphere . . ., it permits a computation of the location of the center of the
sphere” (App. Br. 33). We are not persuaded. Barnett suggests a wand
having a concave partial spherical tip, that when contacted to the spherical
surface of the fiducial allows the geometric center of the spherical fiducial to
be calculated (FF 7). Appellants provide no persuasive evidence or
argument to suggest that Barrnett fails to suggest a “cap that aligns with a
center of the imageable spherical portions by touching the imageable
spherical portions with the cap” of the wand (see Claim 5; App. Br. 32-33;
Cf. FF 7).

Claim 28:
Appellants’ contend that because Barnett’s virtual tip “is beyond the
physical tip of the wand . . ., the wand can not [sic] contact at least one half
of an imageable fiducial portion at a plurality of angles” (App. Br. 26; see
also Reply Br. 13). In support of the contention, Appellants direct attention
to Barnett’s Fig. 14 (id.). We are not persuaded.
Appellants provide no persuasive evidence or argument to support a
conclusion that the virtual tip of Barnett’s wand necessarily extends beyond
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the physical tip of the wand (App. Br. 26). To the contrary, Barnett suggests
a wand that comprises a “concave partial spherical” tip (FF 7). Appellants
provide no persuasive evidence or argument to support a conclusion that
Barnett’s concave partial spherical tip fails to cover the same amount of the
spherical fiducial as Appellants’ wand. In this regard, while Barnett’s Fig.
14 is illustrative, Appellants’ fail to establish through persuasive evidence or
argument that Barnett’s Fig. 14 limits the scope of Barnett’s disclosure to a
wand comprising a concave spherical cup that encompasses less than half of
a spherical fiducial or that a person of ordinary skill in this art would not
have found it prima facie obvious to have a wand as suggested by Barnett
that comprises a concave spherical cup that encompasses at least half of a
spherical fiducial. Accordingly, we are not persuaded by Appellants’
contentions to the contrary (App. Br. 26-27).
Because the combination of references suggests the use of Barnett’s
spherical fudicial, we are not persuaded by Appellants’ contentions
regarding Franck markers (App. Br. 28-29).

Claim 29:
For the reasons set forth above, we are not persuaded by Appellants’
contentions regarding Barnett’s alleged failure to suggest, to a person of
ordinary skill in this art, a wand that comprises a cap that contacts at least
one half of an imageable spherical portion (App. Br. 29-32; see also Reply
Br. 13)

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Claim 41:
Appellants contend that since the physical tip of Barnett’s wand is
offset from the virtual tip, “Barnett specifically does not disclose and
actually teaches away from a reference point defined by physical end
location portion of a means, as recited in [i]ndependent Claim 41” (App. Br.
35; see also Reply Br. 8-9 and 13-14). We are not persuaded.
Appellants are correct in that the virtual tip of Barnett’s wand is offset
from the physical tip (FF 8). However, while the physical tip of the wand
encompasses the outer circumference of the spherical fiducial, the virtual tip
is offset from the physical tip in that it is at some point within the space
encompassed by the physical tip that represents the center of the spherical
fiducial (see FF 7). Therefore, a physical portion of Barnett’s physical tip
provides a means to align a reference point with a center of Barnett’s
imageable sphere as required by claim 41. Appellants fail to provide
persuasive evidence or reasoning to support a contrary conclusion.

Claim 45:
Appellants contend that since the “virtual tip is offset from a physical
tip of Barnett’s wand”, “Barnett teaches away from the structure recited in
[i]ndependent Claim 45”, “wherein a reference point is defined as at least
one point on a line extending between two points on the rim [of the cap] and
the reference point is operable to be aligned with a center of the imageable
spherical portion” (App. Br. 36; see also Reply Br. 13-14). We are not
persuaded.
At the time of Appellants’ claimed invention, a person of ordinary
skill in this art would realize that a line drawn from a first point on the distal
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edge of a wall of Barnett’s cap passing through Barnett’s virtual tip and
extending to a second point on the distal edge of the wall of Barnett’s cap
will define at least one point (e.g., a point defined by Barnett’s virtual tip) on
a line extending between two points on the firm of Barnett’s cap that is
operable to be aligned with a center of the imageable spherical portion (see
FF 7). Appellants fail to provide persuasive evidence or reasoning to
support a contrary conclusion.

Claim 50:
Claim 50, as reproduced in Appellants’ “CLAIMS APPENDIX” contains
a typographical error (see App. Br. 54: Claim 50 (“wherein the is defined
as”)). Accordingly, we considered Claim 50 as presented in Appellants’
December 8, 2008 Response, reproduced below (original formatting
removed; emphasis added to highlight the missing text missing from the
claim reproduced in Appellants’ “CLAIMS APPENDIX” ):
50. The method of Claim 37, wherein the line is defined as a
diameter of the cap extending from a first point on a distal edge
of a wall of the cap to a second point on the distal edge of the
wall of the cap.

Appellants contend that since the “physical tip of Barnett’s wand is
offset from the virtual tip”, “Barnett’s wand cannot have a line defined as a
diameter extending from a reference point to intersect with a center of an
imageable spherical portion” (App. Br. 34). For the reasons set forth above,
we are not persuaded. At the time of Appellants’ claimed invention, a
person of ordinary skill in this art would realize that a line drawn from a first
point on the distal edge of a wall of Barnett’s cap passing through Barnett’s
virtual tip and extending to a second point on the distal edge of the wall of
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Barnett’s cap will define a diameter of Barnett’s cap (see FF 7). Appellants
fail to provide persuasive evidence or reasoning to support a contrary
conclusion.

For the reasons set forth above, we are not persuaded by Appellants’
contentions regarding hindsight reconstruction (App. Br. 38-43; Reply Br.
11-12). Instead, we find no error in the Examiner’s conclusion that, at the
time of Appellants’ claimed invention, the combination of Franck, Barnett,
and Goble would have suggested the subject matter set forth in
representative claims 1, 5, 28, 29, 41, 45, and 50 to a person of ordinary skill
in this art. It is proper to “take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.” KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 418, (2007). See also id. at 421 (“A person of
ordinary skill is also a person of ordinary creativity, not an automaton.”).

CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claims 1, 5, 28, 29, 41, 45, and 50 under 35
U.S.C. § 103(a) as unpatentable over the combination of Franck, Barnett,
and Goble is affirmed. Because they are not separately argued claims 27,
31-33, 44 and 46 fall together with claim 1; claims 34, 35, 37, 38, 40, 48,
and 49 fall together with claim 5; and claim 47 falls together with claim 29.

Appeal 2010-007232
Application 10/454,786

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

AFFIRMED

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