Ex Parte Guzman et alDownload PDFPatent Trial and Appeal BoardNov 26, 201814103186 (P.T.A.B. Nov. 26, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/103,186 12/11/2013 Jose F. Guzman 23643 7590 11/28/2018 Barnes & Thornburg LLP (IN) 11 S. Meridian Street Indianapolis, IN 46204 UNITED ST A TES OF AMERICA 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. 265280-227810 3565 EXAMINER COLEY, ZADE JAMES ART UNIT PAPER NUMBER 3775 NOTIFICATION DATE DELIVERY MODE 11/28/2018 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): INDocket@btlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSEF. GUZMAN and GORDON DODDS Appeal2017-010727 1 Application 14/103, 186 Technology Center 3700 Before RICHARD M. LEBOVITZ, RYAN H. FLAX, and RACHEL H. TOWNSEND, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON APPEAL This appeal involves claims directed to methods for cutting a bone of a patient using a bone saw tool. The Examiner rejected the claims under 35 U.S.C. § 103 as obvious. Appellants appeal the Examiner's determination that the claims are unpatentable. We have jurisdiction under 35 U.S.C. § 6(b ). The Examiner's decision is affirmed-in-part. 1 The Appeal Brief ("Appeal Br.") identifies DePuy Synthes Products, LLC, as the real-party-in-interest. Appeal Br. 2. Appeal2017-010727 Application 14/103,186 STATEMENT OF THE CASE Claims 1-3, 7-10, 14, 17, and 18 stand rejected by the Examiner as follows: Claims 1-3 and 7-10 under pre-AIA 35 U.S.C. § I03(a) as obvious in view of U.S. Patent Publication No. 2003/0208296 Al, published Nov. 6, 2003 ("Brisson") and U.S. Patent Publication No. 2004/0215197 Al, published Oct. 28, 2004 ("Smith"). Final Act. 2. Claims 14, 17, and 18 under pre-AIA 35 U.S.C. § I03(a) as obvious in view of Brisson and U.S. Patent No. 2,455,655, issued Dec. 7, 1948 ("Carroll"). Final Act. 4. Claims 14, 17, and 18 under pre-AIA 35 U.S.C. § I03(a) as obvious in view of Brisson, Carroll, and U.S. Pat. No. 5,733,289, issued Mar. 31, 1988 ("Seedhom"). Final Act. 6. Claims 1 and 14 are the only independent claims on appeal. OBVIOUSNESS BASED ON BRISSON AND SMITH Independent claim 1 is reproduced below ( emphasis added): 1. A method for cutting a bone of a patient using a bone saw tool having a bone saw blade with a plurality of cutting teeth, the method comprising: determining a cutting region within a coordinate system defined by a computer assisted orthopaedic surgery system, the cutting region corresponding to a region of the bone to be cut; determining the position of the bone saw tool in the coordinate system; determining whether the bone saw tool has exited the cutting region defined in the coordinate system; and activating a bone saw blade guard of the bone saw tool based on a determination that the bone saw tool has exited the 2 Appeal2017-010727 Application 14/103,186 cutting region, the bone saw blade guard being devoid of any cutting teeth, wherein activating the bone saw blade guard comprises extending a plurality of slats of the bone saw blade guard with respect to the bone saw blade to cover a portion of the bone saw blade, each slat being positioned in a slot defined in the bone saw blade between each cutting tooth of the plurality of cutting teeth of the bone saw blade. Rejection The Examiner found that Brisson teaches a method of cutting a bone of a patient using a bone cutting tool, comprising determining a bone cutting region within a coordinate system defined by a computer assisted orthopedic surgery system that meets all the steps of claim 1, but not using a cutting tool that comprises "a bone saw blade guard" that can be activated as required by the claim. Final Act. 2-3. However, the Examiner found that this feature is described by Smith. Id. at 2. The Examiner determined it would have been obvious to one of ordinary skill in the art to have utilized Smith's bone saw in Brisson's surgical system because Brisson discloses that its method can be utilized with other types of cutting tools. Id. at 4. Discussion Claim 1 is directed to a method for cutting a bone of a patient using a bone saw tool having a bone saw blade with a plurality of cutting teeth. The bone saw tool has a "bone saw blade guard." The claim requires the toothless guard to have a plurality of slats, which must be situated between the saw's teeth, respectively. The claim comprises a step in which "a plurality of slats of the bone saw blade guard with respect to the bone saw 3 Appeal2017-010727 Application 14/103,186 blade" are extended "to cover a portion of the bone saw blade, each slat being positioned in a slot defined in the bone saw blade between each cutting tooth of the plurality of cutting teeth of the bone saw blade." (Emphasis added.) The Examiner found that Smith describes a bone saw tool with a bone saw blade guard in which each slat of the guard is "positioned in a slot (Fig. 3; the space in between members 26) defined in a bone saw blade between each cutting tooth of the plurality of cutting teeth of the bone saw blade." Final Act. 3. The Examiner provided an annotated drawing of Smith's Fig. 3, reproduced below, to show how the limitations in the claim are met by Smith. Ans. 4. Annotated Fig. 3 shows the structure identified by the Examiner as the bone saw blade guard and its slats "that go into slot between cutting teeth." 4 Appeal2017-010727 Application 14/103,186 Appellants contend that Smith does not "disclose or teach" a guard slat positioned as recited in the claim, namely, in a slot of the blade, which slots are defined by the claim to be between each cutting tooth of the plurality of cutting teeth. Appeal Br. 8. We agree with Appellants that the Examiner did not provide adequate evidence that the disputed limitation is met by Smith. As shown in annotated Figure 3, the structure found by the Examiner to be a slat of the bone saw blade guard, when positioned to guard the cutting teeth, is between a row of a plurality of cutting teeth of the blade. The space occupied by the guard is not a slot as required by the claim because a slot is defined by the claim as being between "each cutting tooth of the plurality of cutting teeth," and there are clearly cutting teeth without slots between them. For the foregoing reason, the rejection of claim 1, and claims 2, 3, and 7-10, which depend from it, as obvious in view of Brisson and Smith is reversed. OBVIOUSNESS BASED ON BRISSON AND CARROLL Independent claim 14 is reproduced below: 14. A method for cutting a bone of a patient using a bone saw tool having a bone saw blade with a plurality of cutting teeth, the method comprising: determining a cutting region within a coordinate system defined by a computer assisted orthopaedic surgery system, the cutting region corresponding to a region of the bone to be cut; determining the position of the bone saw tool in the coordinate system; determining whether the bone saw tool has exited the cutting region defined in the coordinate system; and reducing the cutting effectiveness of the cutting teeth of the bone saw blade of the bone saw tool based on a 5 Appeal2017-010727 Application 14/103,186 determination that the bone saw tool has exited the cutting reg10n, wherein reducing the cutting effectiveness of the cutting teeth comprises activating a bone saw blade guard, the bone saw blade guard being devoid of any cutting teeth, and wherein activating the bone saw blade guard comprises extending a plurality of slats of the bone saw blade guard positioned coplanar with the bone saw blade such that the plurality of slats extend beyond the cutting teeth of the bone saw blade. Rejection The Examiner found that Brisson teaches a method for cutting a bone of a patient using a bone cutting tool, comprising determining a bone cutting region within a coordinate system defined by a computer assisted orthopedic surgery system that meets all the steps of claim 14, but not using a cutting tool that comprises "a bone saw blade guard" that can be activated to reduce its cutting effectiveness as required by the claim. Final Act. 4--5. However, the Examiner found that this feature is described by Carroll. Id. at 5. The Examiner determined it would have been obvious to one of ordinary skill in the art to have utilized Carroll's bone saw in Brisson's surgical system because Brisson discloses that its method can be utilized with other types of cutting tools. Id. at 5---6. Reducing the cutting effectiveness of the cutting teeth Appellants contend that Brisson does not describe "reducing the cutting effectiveness of the cutting teeth of the bone saw blade of the bone saw tool based on a determination that the bone saw tool has exited the cutting region" as recited in claim 14 (emphasis added). Appeal Br. 15. Appellants contend that "the controller of Brisson requires a collision or 6 Appeal2017-010727 Application 14/103,186 intersection detection between the cutting tool and the target shape of the workpiece in order to control the cutting elements." Id. This argument does not persuade us that the Examiner erred. It is correct that Brisson teaches that control is provided to the cutting tool "based on collision detection and/or intersection detection between at least part of the cutting tool and voxels associated with the target shape." Brisson ,r 14. As explained by Brisson, the collision or interference detection is utilized to "prevent[ ] or otherwise reduce the probability of invasion of the cutting element to the target shape" of the workpiece. Id. ,r 81. However as explained in more detail below, Brisson describes "determining whether the bone saw tool has exited the cutting region" as recited in claim 14. To begin, Brisson describes "reducing the cutting effectiveness of the cutting teeth of the bone saw blade of the bone saw tool." Specifically, Brisson discloses stopping, retracting, or reducing the speed of the cutting tool blade. Id. ,r,r 7, 18, 31, 63. For example, Brisson discloses: Also disclosed is a system that includes a cutting tool, a workpiece that includes a target shape, a tracker to provide tracking data associated with the cutting tool and the workpiece, and a controller to control the cutting tool based on the tracking data associated with the cutting tool and the tracking data associated with the workpiece. . . . The controller can control the cutting tool by providing a control to at least partially retract the cutting element(s), and/or at least partially reduce a rotation rate and/or change a cutting rate of the cutting element(s). The controller can transmit a control signal to the cutting tool, where the control signal includes an analog signal, a digital signal, and no signal. Brisson ,r 18 ( emphasis added). 7 Appeal2017-010727 Application 14/103,186 Brisson also discloses: The cutting element can include at least one of a blade, a rotatable blade, a retractable blade, . . . The controller can control the cutting element by at least one of stopping the cutting element, retracting the cutting element, progressively retracting the cutting element, switching off the cutting element, and interrupting power to the cutting element. Id. ,I 31. Thus, Brisson teaches "reducing the cutting effectiveness of the cutting teeth of the bone saw blade," as recited by claim 14, by stopping it, retracting it, or reducing its rotation or cutting rate. This is accomplished by transmitting "a control signal to the cutting tool." Brisson ,r 18 The claim requires that reduction in cutting effectiveness is based on a determination that the bone saw tool has exited the cutting region." With respect to this limitation, Brisson teaches: In an embodiment, the adjacency of empty voxels, empty subvoxels, or other empty voxel subdivisions to near-target or target voxels, sub-voxels, or other voxel subdivisions can cause a "stop" command to be sent to the shaping or cutting tool to prevent invasion of target or near-target voxels. Brisson ,r 77. The target area of the workpiece is the region that forms the desired shape or object which is formed from the workpiece. Id. ,r,r 3, 7. The cutting tool thus must be turned off when it enters this region to prevent it from being cut. To accomplish this, Brisson teaches that "a 'stop' command" is sent to the tool when it is determined that it has entered a region which is not to be cut ("the adjacency of empty voxels, empty subvoxels, or other empty voxel subdivisions to near-target or target voxels, sub-voxels, or other voxel subdivisions"). Id. ,r 77 (reproduced above). In 8 Appeal2017-010727 Application 14/103,186 other words, when the cutting tool "has exited the cutting region" ( claim 14) and enters a region not designated for cutting (the "target"), the blade is stopped, "reducing the cutting effectiveness of the cutting teeth of the bone saw blade" ( claim 14 ). The claim limitation is also described in paragraph 80 of Brisson: Accordingly, when the cutting tool and/or element is about to or does impinge or otherwise invade a voxel categorized as target [the region of the workpiece that is not to be cut because it forms the desired target shape], a control signal may be transmitted to the cutting element controller to cause the cutting element to retract and/or be inactivated. Similarly, as the cutting element is moved to areas that can be associated with a voxel categorized as waste, a control signal can be transmitted to the cutting element controller to allow operation of the cutting element. Brisson ,r 80. Thus, when the controller determines that the cutting tool enters ("impinge") a target region that is not designated for cutting and exits the region to be cut, the blade is stopped. Because the controller in Brisson determines when the bone cutting tool is outside the designated cutting region, it determines "that the bone saw tool has exited the cutting region," as required by claim 14. Brisson's controller can thus determine when the cutting blade is in a designated cutting area ("waste") or outside a cutting area (id. ,r 80), and regulate the blade accordingly. Appellants did not persuasively explain how their claimed "exit" is distinguished from the exit described by Brisson, e.g., in paragraphs 77 and 80 of the reference. As described in the Specification, the claimed step of "determining whether the bone saw tool has exited the cutting region defined in the coordinate system" appears to be carried out similarly to the process of the 9 Appeal2017-010727 Application 14/103,186 cited prior art. In the passages cited by Appellants as support for the limitation (Appeal Br. 3), the Specification describes: if the computer 12 determines that the bone saw tool 100 is outside the cutting region as determined in process step 902, the computer 12 activates the bone saw guard 120 (or the cutting depth guard 800) of the bone saw tool 100 in process step 916. To do so, the computer 12 may transmit a signal to the bone saw tool 100 via the communication link 112. Spec ,r 121. Thus, for the reasons described above and contrary to Appellants' arguments, we find that the step of "determining whether the bone saw tool has exited the cutting region defined in the coordinate system" is described by Brisson. Carroll Appellants contend that "Carroll fails to disclose or teach 'extending a plurality of slats positioned coplanar with the bone saw blade such that the plurality of slats extend beyond the cutting teeth of the bone saw blade' to activate the bone saw blade guard." Appeal Br. 16. Appellants argue that the saw guard 35 of Carroll includes a pair of longitudinally spaced heads 36, and not a plurality of slats as recited in the claim. Id. Appellants state "each spaced head 36 of Carroll is positioned on each side of the head of the saw 32; thus, not positioned coplanar with the head of the saw 32." Id. Figure 2 of Carroll is reproduced below: 10 Appeal2017-010727 Application 14/103,186 /, 2l' i Zf! . . '*'),. 4 Figure 2 of Carrol, reproduced above, shows spaced head 36 which the Examiner identified as a saw guard. As explained by Carroll, there are two spaced heads 36 which form the complete saw guard. Carroll teaches: This saw guard comprises a pair of longitudinally spaced heads 36 each provided with spaced longitudinally extending arms 37 the inner edges of which are generally arcuate configuration, and serrated as at 38 effectively to grip the object being operated upon. Carroll 2:43--48. The saw head 32 moves in a clearance space 39 formed by pins holding the arms 37 of 36 together. Id. at 2:48-52. Slat The claim recites that the saw blade guard comprises "a plurality of slats of the bone saw blade guard." The meaning of the term "slat" is at issue. During patent examination proceedings, claim terms are given "the broadest reasonable meaning ... in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant's specification." In re 11 Appeal2017-010727 Application 14/103,186 Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). The term "slat" is not defined in the Specification. Accordingly, we adopt its definition as set forth in a general purpose dictionary to mean "a thin narrow flat strip especially of wood or metal. "2 The ends of the "extending arms 3 7" of Carroll's saw guard are depicted in Figure 2 as narrow and flat strips. Appellants dispute they are "slats," but do not provide a definition or a logical reason as to why the extended flat narrow arms do not meet the claimed limitation of a slat as that term would be understood by one of ordinary skill in the art. Coplanar Appellants contend that the spaced heads 3 6 of the saw guard of Carroll are "positioned on each side of the head of the saw 32" and thus are not coplanar with it." Appeal Br. 16. As shown in Figure 2 of Carroll, and explained in the accompanying description, the spaced heads 3 6 and extending arms 3 7 are positioned on each side of the saw head 32 as stated by Appellants. Thus, the spaced heads 36/arms 37 do not appear to be coplanar with saw head 32 when observed in a cross section view from the front. However, when viewed from the side, as illustrated in Carrol's Figure 2, in a plane perpendicular to the cutting teeth, the head/arms are shown to be coplanar as required by the claim. Thus, there is a plane in Carroll that contains the bone saw blade 2 Slat Definition, Meriam-Webster.com, https://www.merriam- webster.com/dictionary/slat (last visited 1 November 2018). 12 Appeal2017-010727 Application 14/103,186 guard positioned coplanar with the bone saw blade as required by claim 14. To illustrate this, we provide the following graphic: INTERSECTING PLANE The graphic above depicts an intersecting plane (large shaded rectangle with arrows showing X and Y dimensions) extending through the head 36/arms 37 on either side of the saw head 32 (grey blocks) of Carrol, as understood by the Board in agreement with the Examiner, showing a "saw blade guard positioned coplanar with the bone saw blade" as required by the claim. This view from the side perspective of Carrol Figure 2 shows the saw head and head/arms (bone saw guard) of the reference being in the same plane. Thus, we agree with the Examiner that the claim limitation is met. Appellants further argues, based on Figure 26 of the Specification, that "coplanar requires the entirety of each slat to be positioned in the same plane with the entirety of the bone saw blade." Reply Br. 8. The word "entirety" does not appear in the claim. Appellants' interpretation 13 Appeal2017-010727 Application 14/103,186 improperly attempts to import a limitation into the claim. "[A] particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment." SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Appellants also argue that being intersected by a plane is not the same being coplanar and lying in the same plane. Appeal Br. 17. Appellants did not provide persuasive evidence to support their argument. A so-called intersecting plane is described by the Examiner as a plane which the saw head 32 and heads 36/arms 37 occupy and this corresponds to a "coplanar" plane in which the plurality of slats lie in the same plane with the bone saw blade. In any event, as noted above, Carroll illustrates a coplanar arrangement of claim elements. Summary For the foregoing reasons, the rejection of claim 14 is affirmed. Claim 17 Claim 17 depends from claim 14, and further recites "wherein reducing the cutting effectiveness of the cutting teeth further comprises altering the thickness of a bone saw blade assembly of the bone saw tool." The Examiner found that the depth of the blade in Carroll corresponds to the saw blade thickness. Ans. 8. We are not persuaded by the Examiner's argument that the claim limitation is taught by Carroll. The claim requires "altering the thickness of a bone saw blade assembly." Changing how much of the saw blade 14 Appeal2017-010727 Application 14/103,186 assembly is exposed when moved in and out of the saw guard does not alter its "thickness" as required by the claim, but merely changes how much of it is visible beyond the saw guard ( cutting depth is not synonymous with blade thickness). This interpretation is consistent with the Specification which describes changing the blade thickness using a wedge. Spec. ,r 108. For the foregoing reason, the rejection of claim 17 is reversed. Claim 18 Claim 18 depends from claim 14, and further recites "wherein reducing the cutting effectiveness of the cutting teeth further comprises reducing a depth to which the bone saw blade is able to penetrate the bone of the patient." Appellants contend: The proposed slats of Carroll grip the bone while the device is in operation. As the cutting blade is operated, the proposed slats retract to allow the cutting blade to cut deeper into the bone. The depth at which the cutting blade cuts the bone is determined by a force provided by the user. That is, as the user moves the cutting blade closer, the depth of the cut increasing. During this movement, the proposed slats do nothing other than grip the bone to maintain a position of the device on the bone. Appeal Br. 18. We are not persuaded by Appellants' argument. As stated by the Examiner, as the blade 32 is pressed into the open area 43, the saw teeth will cut deeper into the bone because the blades can reach further into it. Ans. 9. However, when the blade is only pressed to where the teeth 33 barely poke out near the bottom of the "U" shaped guard 36 of Carroll, the blade will not be able to cut as deeply into the bone. Id. Thus, reducing the depth to which the blade reaches through the opening of the guard reduces the cutting effectiveness in the manner required by the claim. 15 Appeal2017-010727 Application 14/103,186 The rejection of claim 18 is affirmed. OBVIOUSNESS BASED ON BRISSON, CARROLL, AND SEEDHOM The Examiner further cited Seedhom as disclosing a "gripping mechanism" that utilizes spikes to grip the bone. Final Act. 6. The Examiner did not identify the language in claims 14, 18, or 17 that requires a "gripping mechanism." Because the Examiner did not make a prima facie case, the rejection is reversed. SUMMARY The obviousness rejection claims 1-3 and 7-10 based on Brisson and Smith is reversed. The obviousness rejection of claims 14 and 18 based on Brisson and Carroll is affirmed. The obviousness rejection of claim 17 based on Brisson and Carroll is reversed. The obviousness rejection of claims 14, 17, and 18 based on Brisson, Carroll, and Seedhom is reversed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv). AFFIRMED-IN-PART 16 Copy with citationCopy as parenthetical citation