ERMI, Inc.

Patent Trials and Appeals Board

Mar 23, 2022

2021005110 (P.T.A.B. Mar. 23, 2022)

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. 15/356,660 11/20/2016 Thomas P. Branch 010251-15003A 2423 58898 7590 03/23/2022 Lempia Summerfield Katz LLC 20 South Clark Suite 600 Chicago, IL 60603 EXAMINER MELHUS, BENJAMIN S ART UNIT PAPER NUMBER 3791 NOTIFICATION DATE DELIVERY MODE 03/23/2022 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-us@lsk-iplaw.com mail@lsk-iplaw.com pair_lsk@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte THOMAS P. BRANCH, SHAUN K. STINTON, EDWARD DITTMAR, NATHANIEL K. DEJARNETTE, and T. CHRISTOPHER MADDEN ____________ Appeal 2021-005110 Application 15/356,660 Technology Center 3700 ____________ Before JENNIFER D. BAHR, MICHAEL J. FITZPATRICK, and GEORGE R. HOSKINS, Administrative Patent Judges. HOSKINS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision rejecting claims 1-12 in this application.2 We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appeal Brief identifies RoboDiagnostics LLC, formerly ERMI LLC and ERMI Inc., as the real party in interest. Appeal Br. 2. 2 Claims 13-23 are canceled. See Appeal Br. 12 (Claims App.). Appeal 2021-005110 Application 15/356,660 2 CLAIMED SUBJECT MATTER Claim 1 is the sole independent claim on appeal, and it recites: 1. A joint manipulation and evaluation apparatus comprising: a positioning structure having an adjustable portion and being movable by a drive system to manipulate a first bone of a joint relative to a second bone of the joint; a joint stabilizer having a frame arranged to engage the joint and hold the second bone in place as the first bone is manipulated; and a sensor coupled to the frame of the joint stabilizer and configured and arranged [i] to float unstressed relative to the frame and contact a surface of the joint via gravity [ii] to detect residual movement of a clamped portion of the joint relative to the joint stabilizer as the first bone is manipulated. Appeal Br. 10 (Claims App.). We have modified claim 1 to include two identifiers 1(i) and 1(ii) for reference in our discussion below. REJECTIONS ON APPEAL Claims 1-8 and 12 are rejected under 35 U.S.C. § 103 as unpatentable over Branch3 (US 2012/0046540 A1, pub. Feb. 23, 2012), Wolfe (US 5,348,025, iss. Sept. 20, 1994), and Roger (US 4,913,163, iss. Apr. 3, 1990). Claim 9 is rejected under 35 U.S.C. § 103 as unpatentable over Branch, Wolfe, Roger, and Beacon (US 5,935,086, iss. Aug. 10, 1999). 3 Branch is Appellant’s own prior art. See Appeal Br. 3; compare Branch, codes (73) & (75), with Application Data Sheet (filed Nov. 20, 2016) (both naming Thomas Branch and Edward Dittmar as inventors, and the same assignee ERMI, Inc.). Appeal 2021-005110 Application 15/356,660 3 Claims 10 and 11 are rejected under 35 U.S.C. § 103 as unpatentable over Branch, Wolfe, Roger, and Petrigliano (US 2015/0032034 A1, pub. Jan. 29, 2015). OPINION A. Obviousness Over Branch, Wolfe, and Roger The Examiner finds Branch discloses an apparatus including the positioning structure and the joint stabilizer of claim 1, as well as a sensor that satisfies some of the requirements of claim 1. See Final Act. 1-2.4 Concerning the sensor, the Examiner cites paragraph 176 of Branch, which describes Figure 14. See id.; Branch ¶ 176. Figure 14 of Branch is reproduced here: 4 The Final Office Action is paginated strangely. The first five pages are numbered 5-9, and the next six pages are numbered 1-6. Our citations refer to the first page (i.e., the page immediately following the Office Action Summary, PTOL-326) as page number 1, with the remaining pages consecutively numbered 2-11. Appeal 2021-005110 Application 15/356,660 4 Figure 14 is an illustrative view of a user’s knee 82 held within stabilizing assembly 60. See Branch ¶ 44. Branch indicates “the shape of pad 72 may be at least in part dictated by the need to stabilize the patella within the femoral trochlea” to “prevent[] undesirable rotation and anteroposterior translation of the femur.” Id. ¶ 176. The shape of pad 72 also “satisf[ies] a need to place an electromagnetic sensor . . . or other motion tracking device on the patella.” Id. In particular, pad 42 is “V-shaped” with an apex that “create[s] a channel or pocket for the motion tracking device to be placed on the patella.” Id. The Examiner finds the foregoing disclosures reflect a sensor that is “configured and arranged to float relative to the frame” as partly recited in limitation 1(i), and also “to detect residual movement of a clamped portion of the joint [i.e., the knee] relative to the joint stabilizer as the first bone [i.e., the tibia] is manipulated” as recited in limitation 1(ii). Final Act. 2. The Examiner then relies on Wolfe and Roger as combining to disclose a sensor that floats unstressed relative to a frame and contact a surface of the joint via gravity as further recited in limitation 1(i). See id. at 2, 7, 8-9. The Examiner does not rely on Wolfe or Roger in connection with limitation 1(ii). See id. Appellant argues the Examiner errs in relying on Branch’s sensor as satisfying limitation 1(ii). See Appeal Br. 3. Appellant asserts Branch “did not recognize that residual movement of a fixed or clamped portion of” the subject’s knee joint might occur as the subject’s tibia is manipulated, and thereby “affect the laxity diagnostic results.” Id. at 3, 5. Appellant therefore concludes Branch’s sensor does not “measure[] and account[] for only residual movement in the otherwise fixed knee joint/femur of a patient,” “to remove ‘noise’ from the collected data created by this residual movement” Appeal 2021-005110 Application 15/356,660 5 as is part of Appellant’s invention. Id. at 3-4 (citing Spec. ¶ 110); see also id. at 7-8 (arguing there is no motivation to modify Branch “to include an additional sensor on a frame for measuring only residual movement in a part of a joint that is being held fast” to “account[] for data noise in the form of residual movement in the joint part being held fast, such as residual movement in the patella and knee soft tissue”); Reply Br. 5. In response, the Examiner maintains “Branch teaches at least a form of a sensor which (inter alia) detects residual movement of a clamped portion of the joint (in the case of Branch, the knee) relative to a stabilizer structure as a first bone (e.g., the tibia in Branch) is manipulated.” Ans. 11, 13-14 (citing Branch, Fig. 14, ¶ 176). In particular, the Examiner finds Branch discloses “a motion tracking device contacting the clamped patella per ¶ 176, [whereby] residual movement of (inter alia) the patella would thereby be detected.” Id. at 11, 14. The Examiner concludes claim 1 does “not recite that only residual movement is measured by the sensor (Appellant uses the term ‘only’ in the [Appeal Brief] argument but no such term is present in the claims),” or that “noise” is removed. Id. at 11-12, 20-21. Upon review of the foregoing, we cannot sustain the rejection of claim 1, because its rests on an overly broad claim construction. We must give claim 1 its broadest reasonable construction that is consistent with Appellant’s Specification. See, e.g., In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Claim 1 recites a sensor that is “configured and arranged . . . to detect residual movement of a clamped portion of the joint relative to the joint stabilizer as the first bone is manipulated.” Appeal Br. 10 (Claims App.) (emphasis added). It is not clear to us, and the Examiner does not Appeal 2021-005110 Application 15/356,660 6 sufficiently explain, how a sensor that is configured and arranged to sense multiple different kinds of movement all at once may be understood to “detect” the residual movement of the clamped portion of the joint relative to the joint stabilizer, as recited in claim 1. See, e.g., Ans. 11-12. Turning to Appellant’s Specification, it emphasizes the importance of detecting residual movement of a clamped knee joint relative to the joint stabilizer, particularly as an improvement upon Branch’s prior art apparatus. This discussion starts in the Background section, which describes Branch as disclosing a robotic knee testing apparatus that “employs sensors to measure degree of relative movement of the structures in the knee joint.” Spec. ¶ 14 (emphasis added). The Specification’s Detailed Description section then provides: “The applicant . . . has discovered that, during testing, a patient’s patella can move rather substantially, even with the knee joint and femur held stationary by the knee stabilizer 74” illustrated in Figure 11 of the Specification. Id. ¶ 110 (emphasis added). This movement results in the “problem . . . that during the anterior / posterior or AP test, further compression of the pads 79 occurs, which allows an anterior / posterior translation of the femur to occur” which “is added to the translation of the tibia.” Id. This “residual translation can hinder the accuracy of the data retrieved.” Id. “The solution to the problem was developed by the applicant in the form of a ‘floating’ sensor system 500” that is also illustrated in Figure 11 of the Specification. Id. ¶ 111. Figure 11 of the Specification, and Figure 14 of Branch, are reproduced here side-by-side for comparison: Appeal 2021-005110 Application 15/356,660 7 Figure 11 of the Specification is a perspective view of knee stabilizing assembly 74, and Figure 14 of Branch is an illustrative view of knee stabilizing assembly 60. See Spec. ¶¶ 52, 65; Branch ¶ 44. As can be seen, when viewed at the generality of the “joint stabilizer” recited in claim 1, the two apparatuses are strikingly similar. The most significant difference is that the Specification’s assembly 74 includes floating sensor system 500, whereas Branch’s assembly 60 does not illustrate any sensors.5 Branch does however disclose that sensors can be used with assembly 60. See Branch ¶ 176. Appellant’s Specification describes how floating sensor system 500 solves the patella movement problem that occurs when assembly 74 is 5 Another difference is that the Specification’s assembly 74 includes optional medial and lateral constraints 520, whereas Branch’s assembly 60 does not. See Spec. ¶¶ 52, 115. However, this is immaterial in the context of claim 1. Appeal 2021-005110 Application 15/356,660 8 used-or, equivalently, when Branch’s assembly 60 is used. See Spec. ¶ 111. In particular, the Specification describes how floating sensor system 500 “sits on top of the patella and floats with the patella through the knee stabilizer 74” in order to “measure and account for the residual translation of the femur in the data, providing ‘true’ test results . . . representing the true anterior / posterior position of the femur during the test.” Id. ¶¶ 111-112 (emphasis added). In this way, the Specification describes how floating sensor system 500 detects residual movement of a clamped knee joint relative to the joint stabilizer 74 as the tibia is manipulated, because the sensor system is configured and arranged to detect only such residual movement. And, according to the Specification, this is an improvement over Branch’s assembly 60, which “employs sensors to measure degree of relative movement of the structures in the knee joint” (Spec. ¶ 14), but lacks a sensor configured and arranged to detect only residual movement of a clamped knee joint relative to the joint stabilizer (id. ¶¶ 110-111, Fig. 11). The Examiner’s construction of claim 1 to include a sensor configured and arranged to detect the recited residual movement, and other movements at the same time, is unreasonably broad because it is inconsistent with Appellant’s Specification. See Am. Acad., 367 F.3d at 1364. The Examiner correctly notes that, “[w]hile claims are read in light of the specification, limitations from the specification are not read into the claims.” Ans. 21. However, at the same time, our claim construction cannot be inconsistent with Appellant’s Specification. See Am. Acad., 367 F.3d at 1364. For example: “An inventor may . . . disavow claim scope ‘by distinguishing the claimed invention over the prior art’” in the specification. Techtronic Indus. Co. v. Int’l Trade Comm’n, 944 F.3d 901, 907-09 (Fed. Cir. 2019) (quoting Appeal 2021-005110 Application 15/356,660 9 Ekchian v. Home Depot, Inc., 104 F.3d 1299, 1304 (Fed. Cir. 1997)); see also Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1305 (Fed. Cir. 2011) (construing a claimed “body” to require “a one-piece body” because the specification distinguished prior art syringes comprised of multiple pieces and stated the prior art had failed to recognize a retractable syringe that “can be molded as one piece outer body”). We conclude Appellant’s Specification includes such a disavowal of claim scope, for the reasons provided above. Thus, we construe limitation 1(ii) to require that the sensor is configured and arranged to detect only residual movement of the clamped portion of the joint relative to the joint stabilizer. We do not, however, construe claim 1 to require further that the apparatus “accounts for” this residual movement by removing noise from the data collected by other sensors, as Appellant would have it. See Appeal Br. 3-4, 8; Reply Br. 5. Claim 1 specifies only that the sensor “detect[s]” the residual movement; its dependent claim 11 then adds a processor that accounts for the residual movement. See Appeal Br. 10, 12 (Claims App.). We find that Branch discloses sensors, but it does not disclose a sensor satisfying limitation 1(ii). The Examiner’s rejection focuses on paragraph 176 of Branch in this regard, and does not rely on either Wolfe or Roger. See Final Act. 1-2, 7; Ans. 11-12. Paragraph 176 pertinently indicates only that Branch’s assembly 60 “satisf[ies] a need to place an electromagnetic sensor . . . on the patella.” Branch ¶ 176 (emphasis added). This limited disclosure does not indicate that the sensor is configured and arranged to detect only residual movement of the clamped knee joint relative to assembly 60. Appeal 2021-005110 Application 15/356,660 10 Although not cited by the Examiner, we have reviewed Branch’s additional disclosures titled “Sensing Devices and Methods of Use.” Branch ¶¶ 270-275, Fig. 35. These disclosures reflect the use of sensors to measure “motion of the tibia relative to the femur” and “the relative position and orientation of the patient’s knee” in space. Id. ¶¶ 271, 273, 274. They do not disclose a sensor that is configured and arranged to detect only residual movement of the clamped knee joint relative to a joint stabilizer. Accordingly, we do not sustain the rejection of claim 1 and its dependent claims 2-8 and 12 as having been obvious over Branch, Wolfe, and Roger. B. Obviousness Over Branch, Wolfe, Roger, and Beacon The Examiner’s additional consideration of dependent claim 9 and Beacon does not cure the deficiency of Branch discussed above. See Final Act. 4-5. Accordingly, we do not sustain the rejection of claim 9 as having been obvious over Branch, Wolfe, Roger, and Beacon. C. Obviousness Over Branch, Wolfe, Roger, and Petrigliano In rejecting dependent claims 10 and 11, the Examiner finds Petrigliano teaches processor 76 that receives signals from sensors 12a and 12b “to evaluate a joint and to account for residual movement of the joint.” Final Act. 5-6 (citing Petrigliano, Figs. 4-5, ¶ 39). The Examiner concludes it would have been obvious to modify Branch’s apparatus to incorporate Petrigliano’s processor. Id. at 6 (citing Petrigliano ¶¶ 12-15). We have reviewed the cited disclosures of Petrigliano, and we conclude they do not cure the deficiency of Branch discussed above. Appeal 2021-005110 Application 15/356,660 11 Accordingly, we do not sustain the rejection of claims 10 and 11 as having been obvious over Branch, Wolfe, Roger, and Petrigliano. SUMMARY OF DECISION In summary, we do not sustain the Examiner’s decision rejecting claims 1-12, as set forth in this table: Claims Rejected 35 U.S.C. § Reference(s) / Basis Affirmed Reversed 1-8, 12 103 Branch, Wolfe, Roger 1-8, 12 9 103 Branch, Wolfe, Roger, Beacon 9 10, 11 103 Branch, Wolfe, Roger, Petrigliano 10, 11 Overall Outcome 1-12 REVERSED