Ex Parte Guzman et al

Patent Trial and Appeal Board

Nov 26, 2018

14103186 (P.T.A.B. Nov. 26, 2018)

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
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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
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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."
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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
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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
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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).
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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
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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
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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:
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/,
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
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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).
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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
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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
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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.
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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
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