MAKO Surgical Corp.

Patent Trials and Appeals Board

Aug 13, 2021

2020003835 (P.T.A.B. Aug. 13, 2021)

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.
15/451,105 03/06/2017 Jason Otto 051892-0873 2472
104696 7590 08/13/2021
Foley & Lardner LLP
Suite 600
3000 K Street N.W.
Washington, DC 20007-5109
EXAMINER
GAMI, TEJAL
ART UNIT PAPER NUMBER
2117
NOTIFICATION DATE DELIVERY MODE
08/13/2021 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON OTTO and HYOSIG KANG

Appeal 2020-003835
Application 15/451,105
Technology Center 2100
Before MICHAEL J. STRAUSS, AMBER L. HAGY, and
DAVID J. CUTITTA II, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–30, which are all of the pending
claims. See Final Act. 1; Appeal Br. 2. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

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 MAKO Surgical
Corp. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The disclosure of the present application “relates generally to force
feedback systems associated with computer-assisted surgery (‘CAS’)
systems and, more particularly, to systems and methods for customizing
interactive haptic boundaries associated with CAS systems based on patient-
specific information.” Spec. ¶ 1. By way of background, the Specification
describes the use of CAS systems to, for example, perform surgery on
patients to replace joints, such as knees. Id. ¶¶ 3–4. According to the
Specification, typical pre-surgery planning involves “generating a computer-
based model of the joint of the patient in virtual software space.” Id. ¶ 5.
This allows the surgeon “to evaluate the condition of the anatomic features
of the joint and plan, among other things, the location and amount of bone
that needs to be removed and the position and orientation in which the
prosthetic components should be implanted on the bone to restore normal
joint functionality.” Id.
The Specification notes that although the surgeon may have a great
deal of flexibility in terms of customizing the surgery, the surgeon may be
limited “to selecting from among a finite number of different prosthetic
implant components.” Id. ¶ 6. The surgeon may choose an implant that
“most closely fits – but does not precisely match – the patient’s anatomy.”
Id.
The Specification also notes that the CAS system may include a force
feedback control system that “may constrain the cutting tool to limit the
position or operation of the surgical instrument to within certain predefined
boundaries.” Id. ¶ 7. The boundaries are defined as virtual boundaries as
part of the surgical planning. Id. The Specification describes that “each
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virtual implant may be associated with a corresponding fixed haptic
boundary, which may be based on the size and shape to the geometry
associated with the virtual implant model.” Id. ¶ 9. The Specification
explains, however, that there may be situations wherein the surgeon wants to
customize the haptic boundary based on patient-specific anatomy. Id. ¶ 10.
The Specification then purports to describe and claim a method and a system
for customizing a haptic boundary based on a patient-specific anatomy. Id.
This method includes generating a standard haptic boundary based on a
virtual implant model, and modifying at least one edge of the standard
control boundary to modify the portion of bone to be resected based on a
patient’s anatomy. E.g., id. ¶¶ 57–65.
Claims 1 and 20 are independent. Claim 1, reproduced below,
represents the claimed subject matter:
1. A method for customizing an interactive control
boundary based on a patient-specific anatomy, comprising:
creating a virtual representation of an anatomy of the
patient;
obtaining a standard control boundary defining a portion
of bone to be resected;
defining a location of the standard control boundary on
the virtual representation of the anatomy of the patient;
creating a reference feature associated with the standard
control boundary;
determining an intersection between the reference feature
and an anatomic perimeter of the virtual representation of the
anatomy;
identifying an anatomic feature at the intersection of the
reference feature and the anatomic perimeter of the virtual
representation of the anatomy;
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modifying at least one edge of the standard control
boundary to modify the portion of bone to be resected based on
the anatomic feature to generate a customized control boundary;
displaying the customized control boundary on a display;
and
registering the customized control boundary to the
anatomy of the patient to define areas of the anatomy of the
patient in which a surgical instrument coupled to an articulated
robotic device is permitted to operate.
Appeal Br. 12 (Claims App.).
REJECTION
The Examiner rejects all pending claims (claims 1–30) under 35
U.S.C. § 102(a)(2) as anticipated by Quaid et al., U.S. Application No.
2006/0142657 A1, published June 29, 2006 (“Quaid”). Final Act. 2–22.
OPINION
For essentially the reasons argued by Appellant (Appeal Br. 6–11;
Reply Br. 3–4), we are persuaded of Examiner error at least in the finding
that Quaid discloses “modifying at least one edge of the standard control
boundary to modify the portion of bone to be resected based on the anatomic
feature to generate a customized control boundary,” as recited in claim 1 and
commensurately recited in independent claim 20.2 See Final Act. 3–6.
As support in the Final Office Action for finding that Quaid discloses
the disputed limitation, the Examiner cites to Quaid’s disclosures of resizing
a haptic object in various circumstances, such as changing the shape or size

2 Appellant’s contentions present additional issues. Because the identified
issue is dispositive of Appellant’s arguments on appeal, we do not reach the
additional issues.

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of a representation of a surgical tool (Quaid ¶ 180), and adjusting a virtual
object in response to detected movement (Quaid ¶ 186). Final Act. 5–6.
However, as Appellant points out, and we agree, these cited disclosures of
Quaid do not describe modifying an edge of a standard control boundary to
customize based on an anatomic feature. Appeal Br. 10–11. In particular,
Appellant contends that the Examiner does not particularly map the claimed
“standard control boundary” to any disclosure in Quaid. See id. at 8–10.
In the Answer, with regard to the disputed limitation, the Examiner
finds Quaid discloses
for a bone preparation process, the surgical system 10 may
facilitate the step of preparing the bone to receive an implant by
creating a representation 612 of a portion of material to be
removed from the bone, superimposing the representation 612
of the portion of material to be removed on the representation
of the bone, and updating the representation 612 of the portion
of material to be removed with a representation 614 of a portion
of material actually removed by the tool 50 as the user
manipulates the haptic device 30.
Ans. 8 (citing Quaid ¶ 188). Based on this passage, the Examiner finds
Quaid discloses the claimed “modifying at least one edge of the standard
control boundary to modify the portion of bone to be resected based on the
anatomic feature.” Id.
We are persuaded of Examiner error in the rejection. The Examiner
does not explain, and we do not discern from the available record, what
disclosure in Quaid the Examiner maps to and, therefore, why Quaid
discloses the claimed “standard control boundary.” See Appeal Br. 8 (noting
that the “Examiner does not indicate which element(s) of Quaid are thought
to correspond to the . . . ‘standard control boundary’ as claimed). In the
passage of Quaid cited in the Examiner’s Answer, the representation being
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modified (updated) is a representation of material to be removed from a
patient’s bone—wherein the representation is updated as material is actually
removed. See Quaid ¶ 188. The Examiner does not explain how a
representation of either a patient’s bone, or the portion of the patient’s bone
to be removed, is a “standard control boundary.”
Appellant’s Specification does not define a “standard control
boundary,” but the Specification appears to use the term “standard haptic
boundary” synonymously with the claimed “standard control boundary.”
See, e.g., Spec. ¶ 10. The Specification describes a standard haptic boundary
as one generated by surgical planning software based on a “virtual prosthetic
implant model.” Spec. ¶ 57. The Specification describes ways in which this
standard haptic boundary may be modified (customized) based on a
particular patient’s anatomy (see id. ¶¶ 57–65)—that is, “[t]he standard
haptic boundary . . . may be stretched or shrunk to more closely match the
anatomic perimeter” (id. ¶ 65).
The Specification thus draws a distinction between a “standard control
boundary” and anatomical features of a patient. The Specification, in
particular, describes a “standard control boundary” as based on a model of
implant. See id. ¶ 57. Affording the term “standard control boundary” a
broad but reasonable construction in light of the Specification, we do not
find that it encompasses a boundary based on a portion of a patient’s
anatomy, such as a patient’s bone or a portion of the bone to be removed.
The Examiner’s finding regarding the “modifying” limitation is thus
deficient in that it fails to map the claimed “standard control boundary” to
any disclosure in Quaid that falls within the broad but reasonable scope of
that limitation. We are, therefore, persuaded of Examiner error in the
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finding that Quaid discloses “modifying at least one edge of the standard
control boundary to modify the portion of bone to be resected based on the
anatomic feature to generate a customized control boundary.”
Thus, for the foregoing reasons, we are persuaded of Examiner error
in the 35 U.S.C. § 102(a)(2) rejection of independent claims 1 and 20, and
we, therefore, do not sustain that rejection. The dependent claims stand with
their respective independent claims.
CONCLUSION
The Examiner’s 35 U.S.C. § 102(a)(2) rejection of claims 1–30 is
reversed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–30 102(a)(2) Quaid 1–30
REVERSED