Ex Parte de la Barrera et alDownload PDFPatent Trial and Appeal BoardApr 26, 201811290039 (P.T.A.B. Apr. 26, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111290,039 11130/2005 Jose Luis Moctezuma de la Barrera 27305 7590 04/30/2018 HOW ARD & HOW ARD ATTORNEYS PLLC 450 West Fourth Street Royal Oak, MI 48067 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. 29997-067 7093 EXAMINER IWAMAYE, ANDREW MICHAEL ART UNIT PAPER NUMBER 3774 NOTIFICATION DATE DELIVERY MODE 04/30/2018 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): IPDocket@HowardandHoward.com dtrost@HowardandHoward.com tmorris@Howardandhoward.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSE LUIS MOCTEZUMA DE LA BARRERA, STUART LEE AXELSON JR., and PETER ZIMMERMAN1 Appeal2017-003315 Application 11/290,039 Technology Center 3700 Before JEFFREY N. FREDMAN, RYAN H. FLAX, and TIMOTHY G. MAJORS, Administrative Patent Judges. FLAX, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) involving claims to a method for performing arthroplasty on a knee joint using a surgical navigation system. 2 The Examiner's rejection of claims 1, 5, 8, 10- 12, 15, 17-24, 28-39, 42--48, 50-52, 55, and 60-67 under 35 U.S.C. § 103(a) is appealed. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. 1 Appellants identify the Real Party in Interest as "Stryker European Holdings I, LLC." Appeal Br. 1. 2 We herein refer to the Specification filed on Nov. 30, 2005 ("Spec."); Final Office Action mailed Nov. 27, 2015 ("Final Action"); Appeal Brief filed June 27, 2016 ("Appeal Br."); Examiner's Answer mailed Nov. 3, 2016 ("Answer"); and Reply Brief filed Jan. 2, 2017 ("Reply Br."). Appeal2017-003315 Application 11/290,039 STATEMENT OF THE CASE The Specification states "this invention relates to methods, and software to assist in surgical reconstructive interventions of joints that have kinematic behavior influenced by the soft tissue apparatus surrounding it." Spec. ,-r 4. Independent claim 1, reproduced below, is representative: 1. A method for performing arthroplasty on a joint comprising a knee using a surgical navigation system, the method including the steps of: locating a femur and a tibia of the knee using the surgical navigation system; determining biomechanical properties of the joint; evaluating soft tissue envelope properties for the joint; calculating a solution using the biomechanical properties, the soft tissue envelope properties and a functional goal; choosing an implant for the knee based at least partly on the solution; displaying an interactive view of the joint, the soft tissue envelope properties, the biomechanical properties and the chosen implant; manipulating by a user simultaneously the soft tissue envelope properties, the biomechanical properties and the chosen implant on the interactive view by using buttons on the interactive view; recalculating the solution based on the functional goal and the user's manipulations of the soft tissue envelope properties and the biomechanical properties until a chosen solution is reached; preparing the joint to receive the chosen implant; and installing the chosen implant in the prepared joint to match the chosen solution. Appeal Br. 25 (Claims App'x). 2 Appeal2017-003315 Application 11/290,039 The following rejections are appealed: Rejection I-Claims 1, 5, 8, 10-12, 15, 17-19, 22-24, 28-35, 38, 44-- 48, 50, and 51 stand rejected under 35 U.S.C. §103(a) over Lavallee, 3 Murphy, 4 and Marquart. 5 Final Action 2. Rejection 2----Claims 20 and 21 stand rejected under 35 U.S.C. §103(a) over Lavallee, Murphy, Marquart, and Bonutti. 6 Id. at 10. Rejection 3----Claim 36 stands rejected under 35 U.S.C. §103(a) over Lavallee, Murphy, Marquart, and Tsougarakis. 7 Id. at 11. Rejection 4-----Claims 39, 42, and 43 stand rejected under 35 U.S.C. §103(a) over Lavallee, Murphy, Marquart, andPearl. 8 Id. at 12. Rejection 5----Claims 52 and 55 stand rejected under 35 U.S.C. §103(a) over Lavallee, Murphy, Marquart, and Matsen. 9 Id. at 13. Rejection 6-----Claims 37, 60, and 61 stand rejected under 35 U.S.C. §103(a) over Lavallee, Murphy, Marquart, and Delp. 10 Id. at 14. Rejection 7----Claims 62---64 stand rejected under 35 U.S.C. §103(a) over Lavallee, Murphy, Marquart, and Petrella. 11 Id. at 15. Rejection 8----Claims 62---64 stand rejected under 35 U.S.C. §103(a) over Lavallee, Murphy, Marquart, and Noble. 12 Id. at 16. 3 US 2005/0101966 Al (pub. May 12, 2005) ("Lavallee"). 4 US 2005/0234332 Al (pub. Oct. 20, 2005) ("Murphy"). 5 US 2005/0267353 Al (pub. Dec. 1, 2005) ("Marquart"). 6 US 6,702,821 B2 (issued Mar. 9, 2004) ("Bonutti"). 7 US 2004/0147927 Al (pub. July 29, 2004) ("Tsougarakis"). 8 US 2006/0129070 Al (pub. June 15, 2006) ("Pearl"). 9 US 5,690,635 (issued Nov. 25, 1997) ("Matsen"). 10 US 5,682,886 (issued Nov. 4, 1997) ("Delp"). 11 US 2003/0184577 Al (pub. Oct. 2, 2003) ("Petrella"). 12 US 2004/0030245 Al (pub. Feb. 12, 2004) ("Noble"). 3 Appeal2017-003315 Application 11/290,039 Rejection 9-----Claims 65----67 stand rejected under 35 U.S.C. §103(a) over Lavallee, Murphy, Marquart, and Eckhoff. 13 Id. at 17. FINDINGS OF FACT We adopt the Examiner's findings of fact as set forth in the Final Action and Answer. Final Action 2-20; Answer 2-13. We note the following findings of fact (FF) to highlight certain evidence. FF 1. Lavallee discloses "a system for determining the ideal theoretical position of a knee prosthesis." Lavallee Abstract, i-f 83; see also Final Action 2-20 and Answer 2-8, 10-13 (discussing Lavallee). FF2. Lavallee discloses "automatically determining an ideal theoretical position of all the implants to be attached on each bone, taking into account all the essential criteria and then letting the surgeon modify the parameters with respect to the so-called ideal reference, just before performing the surgical acts enabling placing the implants." Lavallee i-f 16; see also Final Action 2-20 and Answer 2- 8, 10-13 (discussing Lavallee). FF3. Lavallee discloses "determining the ideal theoretical position of a knee prosthesis," as a prelude for surgically providing such a prosthesis, including determining the shape, position, and orientation of the tibia, ankle joint, femur, and hip joint, with respect to one another, using "a tridimensional positioning system," including a palpation device, echographic device, and/or radiographic device, as well as "means for adjusting a preestablished model of the leg bones 13 US 5,681,354 (issued Oct. 28, 1997) ("Eckhoff'). 4 Appeal2017-003315 Application 11/290,039 using the collected position information." Lavallee i-fi-f 18--40; see also Final Action 2-20 and Answer 2-8, 10-13 (discussing Lavallee). FF4. Lavallee discloses a knee joint model also includes a modeling of the pos1t10ns of the attachments of the ligaments of the knee joint, this modeling being adapted to the patient at the same time as the model of the bone surface, and said model also includes the values of the maximum elongations of each ligament, experimentally determined by having the still non-operated patient's leg move to locate the displacement limits linked to existing ligaments. Lavallee i141; see also Final Action 2-20 and Answer 2-8, 10-13 (discussing Lavallee). FF5. Lavallee discloses: [T]he system further includes means for: simulating on the image of the femur-tibia assembly the positioning of the prostheses linked together for different flexion positions, and the position of the knee ligaments; deducing therefrom the motion limits that the leg provided with the prosthesis will have with the existing ligaments; and taking this information into account to modify the theoretical ideal position of the knee prosthesis, and/ or to suggest an intervention on the ligaments. Lavallee i-fi-142--45; see also Final Action 2-20 and Answer 2-8, 10- 13 (discussing Lavallee). FF6. Lavallee discloses: According to an embodiment of the present invention, said palpation device has a ball-shaped end and the locating by the palpation device is performed dynamically as said ball is displaced against the portion to be analyzed, the tridimensional positioning system being designed to determine the instantaneous positions of the ball center and a system of surface 5 Appeal2017-003315 Application 11/290,039 reconstitution from a deformable model being designed to perform a correction corresponding to the ball radius. Lavallee i-f 46; see also Final Action 2-20 and Answer 2-8, 10-13 (discussing Lavallee). FF7. Lavallee discloses: According to an embodiment of the present invention, an image of the adjusted model is formed and this image is displayed by assigning its various areas colors or thicknesses characterizing the density of points found in this area by the palpation device, which indicates the degree of accuracy of the model of the corresponding area. Lavallee i-f 47; see also Final Action 2-20 and Answer 2-8, 10-13 (discussing Lavallee). FF8. Lavallee teaches "combin[ing] radiological information and position information to construct 3D surfaces" of joint hard and soft tissues and "displaying on a screen of [a] computer the surfaces reconstructed in 3 dimensions," and that it is known to define and construct models of the ligamentary structures (also including tendons, muscles, cartilages, and others) attached to the surfaces of the modeled bone structures. Such models are relatively faithful approximations of the reality which enable predicting the general behavior of the knee structures, according to the different positions of the prostheses. Lavallee i-fi-1 78-81; see also Final Action 2-20 and Answer 2-8, 10- 13 (discussing Lavallee). FF9. Lavallee teaches "deform[ing] the model on the surface points digitized on the real bone" and "the result of the deformation may be applied to the attachment points of the ligamentary structures on each bone of the model so that they are now known in the 6 Appeal2017-003315 Application 11/290,039 reference system associated with each bone." Lavallee i-f 81; see also Final Action 2-20 and Answer 2-8, 10-13 (discussing Lavallee). FFlO. Lavallee discloses: [P]rior to the intervention, once the position marks are in place in each bone, the surgeon or another operator exerts motions on the tibia in all possible directions and for several knee flexions to reach multiple extreme positions of the tibia with respect to the femur. The operator exerts strong but reasonable forces on the bones, to place the ligaments close to their maximum elongation. Lavallee i-f 81; see also Final Action 2-20 and Answer 2-8, 10-13 (discussing Lavallee). FFl 1. Lavallee discloses "models known in biomechanics may be applied on the extension of the ligaments to assign them a non- linear curve characterizing the elongation," and "these angular areas may be the area of a flexion from 0 to 10°, the area of a flexion from 10 to 30°, and the area of a flexion from 70 to 120°." Lavallee i-fi-1 81, 91, 92; see also Final Action 2-20 and Answer 2-8, 10-13 (discussing Lavallee). FF12. Lavallee discloses modeling various (tibial and femoral) prosthesis implant sizes (with the physical model) and varying its parameters iteratively (repeatedly), searching for the ideal position, size and orientation; "the operator may then move each of the parameters, preferably by means of a tactile screen (or any other mouse equivalent), to align on values of his choice according to each surgical technique recommendation." Lavallee i-fi-188-89; see also Final Action 2-20 and Answer 2-8, 10-13 (discussing Lavallee). 7 Appeal2017-003315 Application 11/290,039 FF13. Lavallee discloses: For any global position, the present invention provides simulating relative motions of the tibia and of the femur by rotations around contact points existing on the condyles to simulate positions in which the ligaments are in maximum elongation when forces approximately equivalent in intensity and direction to the forces applied upon measurement of the maximum elongations of the ligaments are applied. The ligamentary balance can thus be predicted for different flexion angles characterized by the amplitude of the motions and by the dissymmetry of the possible motions around the neutral position. Lavallee i-f 93; see also Final Action 2-20 and Answer 2-8, 10-13 (discussing Lavallee). FF14. Lavallee discloses: The surgeon can then freely determine the essential parameters which most influence the setting of the ligamentary balance, without having made any bone section yet. He can for example choose to keep a perfect alignment of the hip and ankle centers with the prosthesis center in extension, but inclining the line perpendicular to the section planes with respect to the mechanical axis, thus creating oblique interlines between the prostheses. Any type of surgical technique can thus be simulated by using the system according to the present invention. Lavallee i-f 94; see also Final Action 2-20 and Answer 2-8, 10-13 (discussing Lavallee). FF15. Lavallee discloses: 5. The system of claim 4, characterized in that said model also includes a modeling of the positions of the attachments of the ligaments of the knee joint, this modeling being adapted to the patient at the same time as the model of the bone surface, and in that said model also includes the values of the maximum elongations of each ligament, experimentally determined by having the still non-operated patient's leg move to locate the displacement limits linked to existing ligaments. 8 Appeal2017-003315 Application 11/290,039 6. The system of claim 5, further including means for: simulating on the image of the femur-tibia assembly the positioning of the prostheses linked together for different flexion positions, and the position of the knee ligaments; deducing therefrom the motion limits that the leg provided with the prosthesis will have with the existing ligaments; and taking this information into account to modify the theoretical ideal position of the knee prosthesis, and/ or to suggest an intervention on the ligaments. Lavallee 9 (claims 5 and 6); see also Final Action 2-20 and Answer 2-8, 10-13 (discussing Lavallee). FF16. Murphy discloses "[s]ystems, methods and processes for computer-assisted soft tissue balancing, including ligament balancing, determining surgical cuts, and positioning or placement of the components of the prosthetic knee during TKR," with the objective (goal) of "restoration of the knee function and patient recovery." Murphy Abstract; see also Final Action 2, 5-19 and Answer 8-13 (discussing Murphy). FFl 7. Murphy discloses: The invention relates generally to computer-assisted surgical (CAS) systems and methods of their use. More specifically, the invention relates to instrumentation, systems, and processes for proper positioning, and alignment of the prosthetic knee components and proper balancing of soft tissues, including any necessary surgical release or contraction, of the knee ligaments, during computer-assisted total knee replacement (TKR) surgery. Murphy i-f 2; see also Final Action 2, 5-19 and Answer 8-13 (discussing Murphy). 9 Appeal2017-003315 Application 11/290,039 FF18. Murphy discloses: Computer-assisted surgical systems use various imaging and tracking devices and combine the image information with computer algorithms to track the position of the patient's anatomy, surgical instruments, prosthetic components, virtual surgical constructs such as body and limb axes, and other surgical structures and components. Murphy i-f 3; see also Final Action 2, 5-19 and Answer 8-13 (discussing Murphy). FF19. Murphy discloses "[d]etermining femoral component rotation based on the surrounding soft tissue envelope [and computer- assisted soft-tissue balancing] is attractive." Murphy i-fi-1 17, 20; see also Final Action 2, 5-19 and Answer 8-13 (discussing Murphy). FF20. Murphy discloses "[p ]lacing the knee under distraction in flexion and extension in at least one of varus/valgus, AP drawer, or rotation tests, and establishing, inflexion and extension, in a computer memory femoral resection planes perpendicular to the long axis of the tibia." Murphy i-f 57; see also Final Action 2, 5-19 and Answer 8-13 (discussing Murphy). FF21. Murphy discloses: The system according to this embodiment of the present invention also comprises a computer comprising a processing functionality generally adapted to receive and store information from the tracking functionality on the position and orientation of the femoral fiducial (112) and the tibial fiducial (114). In the embodiment shown in FIG.1, the computer may include a processing functionality, a memory functionality, an input/output functionality, on a standalone or distributed basis, via any desired standard, architecture, interface and/ or network topology. In this embodiment, computer functionality is connected to a monitor, on which graphics and data may be 10 Appeal2017-003315 Application 11/290,039 presented to the surgeon during surgery. The screen may comprise a tactile interface so that the surgeon may point and click on screen. The system may also comprise a keyboard interface, a mouse interface, a voice recognition functionality, a foot pedal, or any other functionality for imputing information, wired or wireless, or any combination or modification of the functionalities. Such functionalities allow the system's user, such as, but not limited to, a nurse or a surgeon, to control or direct the functionality, among other things, to capture po si ti on/orientation information. Items such as body parts, virtual surgical constructs, prosthetic components, including trial components, implements, and/or surgical instrumentation may be tracked in position and orientation relative to body parts using fiducials. Computer functionality can process, store, and output various forms of data relating to position, configuration, size, orientation, and other properties of the items. When they are introduced into the field of tracking functionality, computer functionality can generate and display separately or in combination with the images of the body parts computer-generated images of body parts, virtual surgical constructs, trial components, implements, and/or surgical instrumentation, or other items for navigation, positioning, assessment or other uses. Murphy i-fi-188-89; see also Final Action 2, 5-19 and Answer 8-13 (discussing Murphy). FF22. Murphy discloses: The iterative cycle of the kinematic testing, comparison to the logic matrix and ligament balancing by the surgeon continues until reasonable convergence of the results of the kinematic testing with the desirables kinematic properties stored in the computer memory. This process preferably results in the improved balance of the knee joint. Murphy i-f 105; see also Final Action 2, 5-19 and Answer 8-13 (discussing Murphy). 11 Appeal2017-003315 Application 11/290,039 FF23. Murphy discloses "[a ]ccording to some aspects and embodiments of the method, prosthetic component size, positioning, and surgical cuts can be planned before any irreversible bone cuts are made " and ' the method is performed with the computer assistance and in the context of computer-assisted surgical systems and methods as described elsewhere herein. Consideration of the anatomy, kinematics, coordinate systems, and of real and/ or virtual surgical constructs, such as axes and planes generally involves storage of data in computer memory and calculations optimally performed with the aid of a computer. Murphy i-f 111; see also Final Action 2, 5-19 and Answer 8-13 (discussing Murphy). FF24. Marquart discloses "[a] computer-assisted knee replacement apparatus and method comprises a total knee replacement application for assisting, guiding, and planning a total knee replacement procedure" and "real-time monitoring of the tibial and femoral surface preparation procedures." Marquart Abstract; see also Final Action 2, 5---6, 8-19 and Answer 3, 7-8, 10-13 (discussing Marquart). FF25. Marquart discloses: [An] example of such an input method is the use of tracking system 22 in combination with one or more trackable data input devices 30. Defined with respect to the trackable input device 30 are one or more defined input areas, which can be two- dimensional or three-dimensional. These defined input areas are visually indicated on the trackable input device 30 so that a surgeon can see them. For example, the input areas may be visually defined on an object by representations of buttons, 12 Appeal2017-003315 Application 11/290,039 numbers, letters, words, slides and/ or other conventional input devices. Marquart i-f 21; see also Final Action 2, 5---6, 8-19 and Answer 3, 7-8, 10-13 (discussing Marquart). FF26. Marquart discloses "FIGS. 3-17 are representative screen images of graphical user interface pages generated and displayed by the application program of FIG. 2." Marquart i-f 13. Marquart Figure 8, annotated, is reproduced below: FIO. 8 Marquart Figure 8 illustrates a screen displaying image data of a knee joint and virtual buttons (input areas annotated in red outline and arrow) on the screen, which are provided "such that a user may manipulate the knee center indicator 318 relative to the knee image data 26 of the knee joint to identify and locate the knee center." 13 Appeal2017-003315 Application 11/290,039 Marquart i-f 30, Fig. 8; see also Final Action 2, 5---6, 8-19 and Answer 3, 7-8, 10-13 (discussing Marquart). FF27. Marquart discloses: [P]reoperative diagnostic images may be used in some circumstances including two-dimensional and/ or three- dimensional image data sets 26. The image data sets 36 may also comprise a time component or dimension such that changes in the physical structure of the subject may be displayed over time. . . . The displayed virtual representation of the subject's knee may then be used to perform knee implant sizing and locating, as well as planning and guiding required femoral and/or tibial preparation procedures for the implants. Marquart i-f 25; see also Final Action 2, 5---6, 8-19 and Answer 3, 7-8, 10-13 (discussing Marquart). FF28. Bonutti discloses "[a]n improved method of performing surgery on a joint in a patient's body, such as a knee." Bonutti Abstract; see also Final Action 10-11 and Answer 10-11 (discussing Bonutti). 14 Appeal2017-003315 Application 11/290,039 FF29. Bonutti discloses a configuration of transducers (force sensors) used during the method identified in the preceding finding of fact, for example Bonutti Fig. 28 is reproduced (annotated with boxes around relevant identifier numbers) below: Fig.58 Fig. 58 shows "transducers 596 and 598 are utilized in combination with the patellar transducers 930 and 932 (FIG. 58). This enables the surgeon to determine the manner in which tension varies in the collateral ligaments 590 and 592 (FIGS. 41and42) with variations in force transmitted between the patella 120 (FIG. 58) and the femur 126." Bonutti 72:63-73:3, Fig. 58; see also Final Action 10-11 and Answer 10-11 (discussing Bonutti). FF30. Further to the preceding finding of fact, Bonutti discloses: Although the patellar transducers 930 and 932 are utilized to measure force transmitted between lateral and medial portions 15 Appeal2017-003315 Application 11/290,039 of the patella 120 and the femur 126, the patellar transducers can be utilized to stretch or move body tissue in the same manner as the expandable devices 720, 722 and 730 (FIGS. 51 and 52). By increasing the fluid pressure conducted to the patellar transducer 930 (FIG. 58), the patellar transducer expands to stretch fibrous connective body tissue connected with the lateral side of the patella 120. Bonutti 73: 13-21; see also Final Action 10-11 and Answer 10-11 (discussing Bonutti). DISCUSSION "[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting aprimafacie case ofunpatentability. If that burden is met, the burden of coming forward with evidence or argument shifts to the applicant." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "[T]he analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418. "In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under§ 103." Id. at 419. The Examiner determined the claims would have been obvious over the combination of Lavallee, Murphy, and Marquart, and, in some instances, also adding Bonutti, Tsougarakis, Pearl, Matsen, Delp, Petrella, Noble, or 16 Appeal2017-003315 Application 11/290,039 Eckert, per Rejections 1-9, identified supra. The Lavallee, Murphy, Marquart, and Bonutti disclosures and the related determinations by the Examiner are contested by Appellants. We discern no error in the Examiner's determinations as to what the disclosure of the prior art combination teaches and suggests, the motivation to make the combination(s), or the reasonable likelihood of successfully making the combination(s). See, e.g., FF1-FF30. We address Appellants' arguments below. Appellants argue the Examiner has misinterpreted Lavallee in determining the reference teaches or suggests the [claim] limitations of: (i) calculating a solution using determined biomechanical properties, evaluated soft tissue envelope properties and a functional goal; (ii) manipulating by a user simultaneously the soft tissue envelope properties, the biomechanical properties and a chosen implant on an interactive view; and (iii) recalculating the solution based on the functional goal and the user's manipulations of the soft tissue envelope properties and the biomechanical properties until a chosen solution is reached. Appeal Br. 11. Appellants contend Lavallee does not disclose a user working cooperatively with a surgical navigation system in an iterative manner to find an arthroplasty solution because Lavallee's computer does this automatically. Id. (citing Lavallee i-f 88). Appellants contend that a user (surgeon) reviewing the computer system's simulated implant positioning and then making overriding changes to the parameters the computer used to produce that simulation forecloses "further recalculation ... based on the user's changes and the functional goal" and "[t]here is no indication of further recalculations based on the functional goal and further user 17 Appeal2017-003315 Application 11/290,039 manipulations," even while Lavallee produces new simulations based on new parameters input by a user. Id. at 11-12. These arguments are not persuasive. Appellants concede Lavallee produces a simulation of an arthroplasty implant procedure (it is based on a navigation system's data on physiological reference points and also associated soft tissue data), that upon display of this simulation to a user, that user can adjust the parameters to thereby change the simulation, which would also be displayed to the user. There is no limit to such manipulations by the user (which take place on a touch screen) and renewed simulations by the computer, with the goal being achieving an ideal implant placement before beginning surgery. See, e.g., FF1-FF15. Per our review of Lavallee in view of the Examiner's determinations, we conclude Lavallee teaches and reasonably suggests the disputed limitations. Id. Furthermore, the rejection is made over a combination of prior art, so arguing a single reference fails to teach all the claim limitations is not persuasive. "Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. . . . [The reference] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Moreover, Murphy, which is a part of the prior art combination, discloses that a surgeon can perform a knee implant surgery virtually and change aspects of the process to suit the ultimate goal and discloses that manipulation of the soft tissue envelope in this process is an iterative process 18 Appeal2017-003315 Application 11/290,039 to achieve the ideal conditions. See, e.g., FF 16-FF23 (specifically FF21- FF22). Appellants argue the Examiner has misinterpreted the Marquart reference in making the determination that its disclosure rendered obvious that "the biomechanical properties and the chosen implant is carried out by using buttons on the interactive view," as claimed. Appeal Br. 14. Appellants contend that, even though Marquart teaches input devices including input areas that are "visually defined on an object by representations of buttons ... or other conventional input devices," these "buttons are not displayed on an interactive view but [are] on an input device associated with the tracking system." Id. at 15. Further, Appellants contend Marquart does not teach that the biological properties of a joint are manipulated by user input (using the buttons). Id. (citing Marquart i-f 21). Appellants argue there would have been no motivation to modify Lavallee in view of Marquart. Id at 16. These arguments are not persuasive. Again, arguing references in isolation is not persuasive when they are part of a combination cited in an obviousness rejection. In re Merck, 800 F.2d at 1097. Further, the virtual buttons shown in the figures of Marquart are not merely on an input device, as argued by Appellants, but are images provided on a GUI screen for manipulation of parameters by a user. See FF24-FF27. Such a disclosure makes using virtual buttons on a touch screen to adjust a virtual image or related parameters obvious. Moreover, Lavallee teaches its 3D knee-implant simulations are displayed on an interactive touch screen that can also employ any mouse-equivalent inputs. FF12. Thus, even considering Lavallee alone, 19 Appeal2017-003315 Application 11/290,039 providing virtual buttons on such a tactile display to manipulate simulation parameters, as claimed, would have been obvious. The Examiner's citation to Marquart illustrates examples of such buttons on a display similar to Lavallee' s; it would have been obvious to employ such virtual inputs. Regarding claim 17, Appellants argue it requires "using an in-situ distracting device and flexing the joint throughout its range of motion," which, contrary to the Examiner's determinations, is not taught or suggested by Murphy i-f 75, which teaches the physical spacer is locked, not flexed. Appeal Br. 1 7. Claim 1 7 recites "[ t ]he method of claim 1, wherein evaluation of the soft tissue envelope properties is performed using an in-situ distracting device and flexing the joint throughout a range of motion of the joint." Appeal Br. 26-27. The Examiner determined Murphy i-fi-157 and 75 teach or suggest this. Murphy i-f 57 discloses, within the context of its greater disclosure, "[p ]lacing the knee under distraction in flexion and extension ... and establishing, inflexion and extension, in a computer memory femoral resection planes perpendicular to the long axis of the tibia." FF20. Murphy i-f 7 5 does disclose distracting the knee "in the course of kinematic testing" using a physical spacer or tensor, where "[t]he physical spacer is typically adapted to be locked or stabilized in any desired position." We conclude the Examiner's determination is correct; Murphy teaches and suggests evaluating soft tissue envelope properties using an in-situ distracting device and flexing the joint throughout a range of motion of the joint, whether simultaneously or not. FF 16-FF23. Similarly, Lavallee discloses: 20 Appeal2017-003315 Application 11/290,039 modeling of the positions of the attachments of the ligaments of the knee joint, this modeling being adapted to the patient at the same time as the model of the bone surface, and said model also includes the values of the maximum elongations of each ligament, experimentally determined by having the still non- operated patient's leg move to locate the displacement limits linked to existing ligaments. FF4. Lavallee discloses, in the context of its disclosed simulated prosthesis implantation procedure and performing the actual procedure, defining an ideal prosthetic positioning from flexion to extension (of tibia relative to femur) from 0° to 120°. FFl 1, FF13, FF15. In view of the above, Appellants' arguments are not persuasive. Regarding claim 21, Appellants argue Bonutti and Murphy fail to teach that load distribution is assessed with sensing elements embedded in the distracting device because Murphy relies on a physical tensor and Bonutti relies on leg weight. Appeal Br. 18. Claim 21 recites "the load distribution is assessed with sensing elements embedded in the distracting device." The Examiner determined that Bonutti's Figure 58 and the related disclosure (cols. 72-73) taught that patellar transducers are utilized in knee surgery both as force sensors and as soft tissue expanders. We find Bonutti discloses transducers/sensors that are also distraction devices. FF28-FF30. Bonutti discloses measuring force transmitted between bones of the knee joint while using these distraction tools. Id. Therefore, we conclude, as determined by the Examiner, Bonutti teaches and suggests the disputed claim limitation. Regarding independent claims 60 and 62, Appellants identify their similarities to claim 1 and renew their arguments thereover in view of Lavallee, Murphy, and Marquart. See Discussion supra. Appeal Br. 19. 21 Appeal2017-003315 Application 11/290,039 Further, Appellants contend neither Delp nor Petrella nor Noble "fill in the deficiencies of Lavallee, Murphy, and Marquart." Id. at 20-24. Because Appellants do not contest the Examiner's determinations as to Delp, Petrella, and Noble, for the reasons discussed above regarding the rejection of claim 1, we are also not persuaded here. Because we find the preponderance of the evidence supports the Examiner's case for the obviousness of the claims, and we are not persuaded by Appellants' arguments, we affirm the rejections for the reasons set forth above. SUMMARY The obviousness rejections are each affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 22 Copy with citationCopy as parenthetical citation