Ex Parte BAYM et al

Patent Trials and Appeals BoardApr 26, 2019

13858738 - (D) (P.T.A.B. Apr. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/858,738 04/08/2013 138951 7590 04/30/2019 Advent, LLP/INTELLECTUAL VENTURES The Advent Building 17838 Burke Street Suite 200 Omaha, NE 68118 FIRST NAMED INVENTOR MICHAEL H. BA YM 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. 09 l l-002-002C-OOOOOO 1033 EXAMINER BAHENA, CHRISTIE L. ART UNIT PAPER NUMBER 3774 NOTIFICATION DATE DELIVERY MODE 04/30/2019 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): uspto@adventip.com sloma@adventip.com ISFDocketlnbox@intven.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL H. BA YM, RODERICK A. HYDE, ELIZABETH A. SWEENEY, and LOWELL L. WOOD, Jr. 1 Appeal 2018-001176 Application 13/858,738 Technology Center 3700 Before RICHARD M. LEBOVITZ, JEFFREY N. FREDMAN, and JOHN E. SCHNEIDER, Administrative Patent Judges. SCHNEIDER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal2 under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims to an orthopedic brace which have been rejected failure to comply with the written description requirement and as indefinite. We have jurisdiction under 35 U.S.C. Â§ 6(b ). 1 Appellants identify the Real Party in Interest as Elwha, LLC. Appeal Br. 3. 2 We have considered and herein refer to the Specification of Apr., 8, 2013 ("Spec."); Final Office Action of Mar. 24, 2017 ("Final Act."); Appeal Brief of Aug. 16, 2017 ("Br."); Examiner's Answer of Sept. 21, 2017 ("Ans."); and Reply Brief Nov. 14, 2017 ("Reply Br."). Appeal 2018-001176 Application 13/858,738 We AFFIRM-IN-PART. STATEMENT OF THE CASE The Specification describes apparatuses, methods and system for controlling the movement of an orthopedic prosthesis in a mammalian subject. Spec. ,r 8. 3 Claims 1, 10, 12, 13, 22-26, 29, 34, 41--46, 48, 97, and 143 are on appeal. 4 Claim 1 representative of the rejected claims and reads as follows: 1. An apparatus comprising: an orthopedic brace adapted to be external to a subject, the orthopedic brace including a first member and a second member, wherein the first member is configured to control movement of a first component of an orthopedic joint prosthesis relative to the second member and the second member is configured to control movement of a second component of the orthopedic joint prosthesis; at least one of an imaging device, an inertial sensor, or a proximity sensor configured to detect a change in an orientation of the subject's position in an environment and at least one additional sensor configured to detect one or more alignment orientations of the first component relative to the second component of the orthopedic joint prosthesis-by trans cutaneously detecting at least one portion of the internal orthopedic joint prosthesis; one or more controllers in communication with the at least one of the imaging device, the inertial sensor, or the proximity sensor and the at least one additional sensor, wherein the at least one of the imaging device, the inertial sensor, or the proximity sensor reports the change in the orientation of the 3 USSN published a US 2014/0303540 Al on Oct. 9, 2014. Both Appellants and the Examiner refer to the numbered paragraphs which appear in the printed application. For consistency, we will do the same. 4 Claims 48 and 97 are pending in the application but have been withdrawn from consideration. Final Act. 1. 2 Appeal 2018-001176 Application 13/858,738 subject's position in the environment to the one or more controllers, and the at least one additional sensor reports the one or more alignment orientations to the one or more controllers, and the one or more controllers control movement of the first member relative to the second member of the orthopedic brace, wherein the orthopedic brace is configured to adjust the one or more alignment orientations of the first component relative to the second component of the orthopedic joint prosthesis; and one or more force-applying elements to control the movement of the first member relative to the second member, wherein the one or more force-applying elements in response to the one or more controllers are configured to permit unrestrained motion of the orthopedic joint prosthesis under a first set of the one or more alignment orientations and are configured to permit restrained motion of the orthopedic joint prosthesis under a second set of the one or more alignment orientations. The claims stand rejected as follows: Claims 1, 10, 12, 13, 22-26, 29, 34, 41--46, 48, 97, and 143 have been rejected under 35 U.S.C. Â§ 112, first paragraph for failure to comply with the written description requirement. Claims 1, 10, 12, 13, 22-26, 29, 34, 41--46, 48, 97, and 143 have been rejected under 35 U.S.C. Â§ 112, second paragraph as indefinite. WRITTEN DESCRIPTION Issue The issue with respect to this rejection is whether the claimed apparatus is described in the Specification in such a way that one skilled in 3 Appeal 2018-001176 Application 13/858,738 the art would understand the inventors had the claimed invention in their possession at the time the application was filed. The Examiner finds that while the Specification describes an imaging device, an inertial sensor and a proximity sensor as well as a transcutaneous sensor, the Specification only describes the combination of an inertial sensor with a transcutaneous sensor. Final Act. 3. The Examiner finds that the use of either an imaging device or a proximity sensor with a transcutaneous sensor is not supported by the present disclosure. Id. With respect to claims 22 and 23, the Examiner finds that the Specification does not support the combination of a transcutaneous sensor with a tissue sensor. Id. at 3. With respect to claims 22 and 23, the Examiner finds that the Specification does not describe the use of a transcutaneous sensor and a tissue sensor together. Final Act. 3 Appellants contend that the Specification teaches combining an imaging device or a proximity sensor with a transcutaneous sensor. Appeal Br. 12. Appellants contend that the Specification specifically teaches the use of an inertial sensor with a transcutaneous sensor. Id. Appellants also contend that the Specification teaches that one or more sensors can be used and that the sensors that can be used in practice of the invention include imaging devices and proximity sensors. Id. at 13-15. Appellants argue that one skilled in the art would understand that the invention also encompasses an imaging device or a proximity sensor with the transcutaneous sensor. Id. at 16. Appellants contend that the Examiner has improperly limited the disclosure to the specific embodiments exemplified in the Specification and 4 Appeal 2018-001176 Application 13/858,738 has not presented any evidence as to why the claims are not supported by the Specification. Id at 16-18. Appellants argue that, with respect to claims 22 and 23, the Specification does disclose the use of a transcutaneous sensor and a tissue sensor together. Appeal Br. 20. Findings of Fact FPL Referring to figure 6 (reproduced below) the Specification discloses an embodiment comprising an "apparatus 600 includes one or more sensors 640 configured to contact the orthopedic joint prosthesis 680, 690, wherein the one or more sensors 640 are configured to detect one or more alignment orientations of the first component relative to the second component of the orthopedic joint prosthesis 680, 690." Spec. ,r 43. Figure 6 of the present disclosure showing an embodiment of the invention 5 Appeal 2018-001176 Application 13/858,738 FF2. The Specification goes on to state that in the same embodiment "[t]he one or more sensors 640 may also include one or more environmental sensors 640 configured to detect a change in an orientation of the orthopedic joint prosthesis 680, 690 in the subject relative to the subject's position in an environment 670, or to an item associated with an environment, e.g., table, chair, wall of a room, or floor of a room." Id. ( emphasis added.) FF3. The Specification discloses that sensors configured to detect one or more alignment orientations of the first component relative to the second component of the orthopedic joint prosthesis include ultrasound sensors which act as transcutaneous sensors. Spec. ,r,r 39, 77 and 95. FF4. The Specification discloses that environmental sensors useful in the practice of the invention include imaging devices, gyroscopes (inertial sensors) and proximity sensors. Spec. ,r,r 41 and 62. Principles of Law A description adequate to satisfy 35 U.S.C. Â§ 112, first paragraph, "must 'clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.' In other words, the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date." Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane) (citation omitted, alteration in original). "[T]he test requires an objective inquiry into the four comers of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention 6 Appeal 2018-001176 Application 13/858,738 understandable to that skilled artisan and show that the inventor actually invented the invention claimed." Id. "[W]hile the description requirement does not demand any particular form of disclosure, or that the specification recite the claimed invention in haec verba, a description that merely renders the invention obvious does not satisfy the requirement." Id. at 1352. Analysis Claims 1 and 143 are the sole independent claims of the application and have been argued together by Appellants. Appeal Br. 11-19. Claims 22 and 23, which depend from claim 1 have been argued separately. Appeal Br. 20-21. Appellants have not presented a separate argument for the remaining claims except to say that they are patentable for the reasons advanced for claim 1. Appeal Br. 21-22. Claims 1 and 143 After considering the arguments of Appellants and the Examiner and carefully reviewing the teachings of the Specification, we conclude that the written description requirement has been satisfied. While the Specification does not include specific embodiments of an imaging device paired with a transcutaneous device or a proximity sensor paired with a transcutaneous device, the Specification does describe those configurations in broad terms as an environmental sensor paired with an alignment sensor. FFl and 2. The Specification then defines an environmental sensor as including an imaging device, an inertial sensor or a proximity sensor and defines an alignment sensor as including an ultrasound device, a transcutaneous sensor. FF3 and 4. The teachings would convey to one skilled in the art that the 7 Appeal 2018-001176 Application 13/858,738 inventors had in their possession an apparatus meeting the limitations of claimed 1 and 14 3. The Examiner contends that the written description requirement has not been met in that the Specification does not contain a specific embodiment showing a combination of an imaging device and a transcutaneous sensor or a proximity sensor and a transcutaneous sensor. Ans. 2-3. While we agree with the Examiner that the Specification does not include those specific embodiments, as shown above, the Specification does disclose an embodiment which has both an environmental sensor and an alignment sensor. FFl and 2. The Specification goes on to teach that environmental sensors include imaging devices, inertial sensors and proximity sensors. FF3. The Specification teaches that ultrasound sensors, transcutaneous sensors, can be used as alignment sensors. FF4. We agree with Appellants that one skilled in the art reading the entire Specification would understand that Appellants had the invention recited in claims 1 and 143 in their possession at the time the application was filed. Claims 22 and 23. Claims 22 and 23 depend from claim 1 and read as follows: 22. The apparatus of claim 1, further including at least one second additional sensor configured to measure one or more properties of tissue of a mammalian subject surrounding the orthopedic joint prosthesis. 23. The apparatus of claim 22, wherein the at least one second additional sensor is configured to measure strain on one 8 Appeal 2018-001176 Application 13/858,738 or more of ligament, muscle, or bone of the mammalian subject surrounding the orthopedic joint prosthesis. We have considered the arguments presented by Appellants and the Examiner and conclude that claims 22 and 23 are not supported by the Specification. As the Examiner points out, the individual elements of the claims are disclosed in the Specification, and as explained below we have not been directed by Appellants to persuasive evidence in the Specification that describes the use of the elements together. Appellants point to paragraph 7 5 of the Specification as supporting the use of a transcutaneous sensor and a tissue sensor together. Paragraph 75 reads: An orthopedic brace including one or more sensors may include one or more sensor affixed or attached onto or embedded into an orthopedic joint prosthesis. The one or more sensors may include, for example, proximity sensors, e.g., able to detect the proximity between portions of two or more components of the joint prosthesis, with changes in such proximity indicating movement. The one or more sensors may include, for example, location sensors attached onto or embedded into the joint prosthesis. Sensors may utilize, for example, electric, magnetic, optical, or sound technology, and may include one or more transducer. In an embodiment, an apparatus may include inductive sensors attached to or embedded into an orthopedic joint prosthesis or into the tissue surrounding the orthopedic joint prosthesis. See e.g., U.S. Patent No. 6,245,109, which is incorporated herein by reference. Implanted strain sensors with microbatteries may be used to monitor strain in soft, peri-articular tissues and communicate with a controller. See e.g., U.S. Patent No. 4,813,435, which is incorporated herein by reference. Spec. ,r 75. The language of paragraph 75 describes the use of a transcutaneous sensor and the use of a tissue sensor but it does not describe 9 Appeal 2018-001176 Application 13/858,738 their use together. The language of paragraph 7 5 is in stark contrast to paragraph 43 discussed above, where Specification makes it clear that the apparatus includes an alignment sensor and may also include an environmental sensor. See FF 1 and 2. The issue is whether the Specification, as originally filed, "conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, [that the inventor] was in possession of the invention." Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563---64 (Fed. Cir. 1991). "One shows that one is 'in possession' of the invention by describing the invention, with all its claimed limitations." Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). A description that merely renders the invention obvious does not satisfy the requirement. Id., 107 F.3d at 1571-72 (Fed. Cir. 1997). Conclusion of Law We conclude that the written description requirement has been met for claims 1, 10, 12, 13, 24--26, 29, 34, 41--46, 48, 97, and 143. We conclude that the written description requirement has not been met for claims 22 and 23. INDEFINITENESS Issue The issue with respect to this rejection is whether the Examiner has correctly determined that the claims fail to particularly point out and distinctly claim the subject matter the inventors regard as their invention. The Examiner finds the term "at least one additional sensor is configured to detect one or more alignment orientations of the first 10 Appeal 2018-001176 Application 13/858,738 component relative to the second component but then states that the sensor is configured to transcutaneously detect at least one portion of the internal joint prosthesis" is indefinite in that it does not clearly show how the sensor accomplishes this task. Final Act. 3. Appellants contend that the claims are not indefinite in that one skilled in the art would readily understand the claim encompassed. Appeal Br. 22. In support of this contention Appellants have offered the declaration of one of the inventors, 5 Dr. Hyde, who testifies that one skilled in the art would understand what is meant by the terms and could accomplish the task using a variety of different techniques. Hyde Deel. ,r,r 9-12; Appeal Br. 23- 24. Appellants also contend that the Examiner has improperly equated claim breadth with indefiniteness. Appeal Br. 24. Appellants contend that the Examiner has not put forth any facts to rebut Dr. Hyde's testimony Id. at 25- 27. Analysis A claim does not comply with 35 U.S.C. Â§ 112, second paragraph, "when it contains words or phrases whose meaning is unclear." In re Packard, 751 F.3d at 1310, 1314 (Fed. Cir. 2014) (approving, for pre- issuance claims, the standard from MPEP Â§ 2173.05(e)); see also Ex parte McAward, Appeal 2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (adopting the approach for assessing indefiniteness approved by the Federal Circuit in Packard). 5 Declaration Under 37 C.F.R. Â§ 1.132, filed Feb. 20, 2017 ("Hyde Deel."). 11 Appeal 2018-001176 Application 13/858,738 That is, "claims are required to be cast in clear-as opposed to ambiguous, vague, indefinite-terms." Packard, 751 F.3d at 1313. We reverse the Examiner's indefiniteness rejection of independent claims land 143 alleging the absence of essential steps in the claims. While the Examiner alleges that claims 1 and 143 lacks essential subject matter, Ans. 6, the Examiner identifies no unclear, ambiguous, or vague language in the claims. As Appellant contends, moreover, the Examiner does not advance any evidence suggesting that a skilled artisan would fail to understand what elements are contained in claims 1 and 143. Appeal Br. 26-27. Rather, the Examiner's position, as we understand it, is that the alleged lack of detail as to how the claimed invention operates rendering them overly broad. Ans. 6. It is well settled, however, that that "breadth is not to be equated with indefiniteness." In re Miller, 441 F.2d 689, 693 (CCPA 1971 ). Because the Examiner does not persuade us that a skilled artisan would consider the element of the apparatuses recited in claims 1 and 143 to be unclear, ambiguous, or vague because the scope of the claimed apparatus is uncertain, we reverse the Examiner's rejection of the pending claims for indefiniteness. SUMMARY We reverse the rejection of claims 1, 10, 12, 13, 24--26, 29, 34, 41--46, 48, 97, and 143 under 35 U.S.C. Â§ 112, first paragraph. We affirm the rejection of claims 22 and 23 under 35 U.S.C. Â§ 112, first paragraph. 12 Appeal 2018-001176 Application 13/858,738 We reverse the rejection under 35 U.S.C. Â§ 112, second paragraph. 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. Â§ 1.136(a). AFFIRMED-IN-PART 13