Ex Parte Heldreth et al

Patent Trial and Appeal Board

Oct 26, 2012

11182350 (P.T.A.B. Oct. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte MARK A. HELDRETH, IAN REVIE, JUERGEN KISSLING,
DAVID W. MORROW, ROBIN WINTER, ALEX WARNOCK,
and JOSE F. GUZMAN
__________

Appeal 2012-001978
Application 11/182,350
Technology Center 3700
__________

Before JEFFREY N. FREDMAN, ERICA A. FRANKLIN, and SHERIDAN
K. SNEDDEN, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a system
for providing information related to an orthopaedic surgical procedure to a
surgeon. The Examiner has rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

Appeal 2012-001978
Application 11/182,350

2
STATEMENT OF THE CASE
According to Appellants, the invention relates to “a system for
providing information related to an orthopaedic surgical procedure to a
surgeon.” (Specification 2.) The system includes a user-worn computer and
the heads-up display that “cooperate to display orthopaedic surgical
information to the surgeon.” (Id. at 28.) The user-worn computer receives
data from a first and second processing circuit, where the “first processing
circuit determines navigational data based on data signals received from
navigation sensors” and the “second processing circuit determines patient
condition data based on data signals received from patient condition
sensors.” (Id.) This information may be displayed on the heads-up display
“in response to voice commands received from the surgeon via the
microphone.” (Id. at 2.)
Claims 1-47 are on appeal. Claims 1, 27 and 46 are independent and
representative. The dependent claims have not been argued separately and
therefore stand or fall together with the independent claim from which they
depend. 37 C.F.R. § 41.37(c)(1)(vii). Claims 1, 27, and 46 read as follows
(emphasis added):
1. A system for providing information related to an
orthopaedic surgical procedure to a surgeon, the system
comprising:
a heads-up display configured to be worn by the surgeon;
a user-worn computer configured to be worn by the
surgeon and communicatively coupled to the heads-up display,
the user-worn computer being configured to receive data via a
receiver and display the data to the surgeon on the heads-up
display;
Appeal 2012-001978
Application 11/182,350

3
a first processing circuit configured to receive a first data
signal from a navigation sensor, determine navigational data
based on the first data signal, and transmit the navigational data
to the user-worn computer; and
a second processing circuit configured to receive a
second data signal from a patient condition sensor, determine
patient condition data based on the second data signal, and
transmit the patient condition data related to the orthopaedic
surgical procedure to the user-worn computer.

27. A method for providing information related to an
orthopaedic surgical procedure to a surgeon, the method
comprising:
receiving a first signal from a navigation sensor and a
second signal from a patient condition sensor;
determining navigational data based on the first signal
and patient condition data based on the second signal;
transmitting the navigational data and the patient
condition data to a user-worn computer; and
displaying the navigational data and the patient
condition data to the surgeon on a heads-up display coupled
with the user-worn computer.

46. A system for providing information related to an
orthopaedic surgical procedure to a surgeon, the system
comprising:
a heads-up display configured to be worn by the surgeon;
a user-worn computer configured to be worn by the
surgeon and communicatively coupled to the heads-up display,
the user-worn computer configured to receive a first data signal
from a navigation sensor and a second data signal from a
patient condition sensor and transmit the first and second data
signals; and
a processing circuit configured to receive the first and
second data signals from the user-worn computer, determine
navigational data based on the first data signal and patient
condition data based on the second data signal, and transmit the
Appeal 2012-001978
Application 11/182,350

4
navigational and patient condition data to the user-worn
computer.

The claims stand rejected as follows:

I. Claims 1-6, 8, 10-27, and 46-47 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Lemelson et al. (US
6,847,336 B1, issued Jan. 25, 2005), Dumoulin et al. (US
5,526,812, issued Jun. 18, 1996) and Peterson, III (US
2002/0084990 A1, published Jul. 4, 2002).
1

II. Claim 7 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Lemelson, Dumoulin, Peterson and Vilsmeier (US
2002/0095081, published Jul. 18, 2002).
III. Claims 7 and 9 under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Lemelson, Dumoulin, Peterson and
Ishikawa et al. (US 6,447,448, issued Sep. 10, 2002).
IV. Claims 27, 34, 36, 38, 39, 41, 42 and 43 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Lemelson,
Dumoulin, Peterson and Cosman (USPGPub 2002/0188194 A1,
published Dec. 12, 2002).
V. Claims 27, 35, 37 and 40 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Lemelson, Dumoulin,
Peterson and Ishikawa.

1
Claims 48-50 have been canceled. (App. Br. 5, footnote 1.)
Appeal 2012-001978
Application 11/182,350

5
VI. Claims 28, 29-33, 44 and 45 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Lemelson, Dumoulin,
Peterson, Cosman and Sahay et al.(US 5,824,085, issued Oct. 20,
1998).

I.
Issue
The Examiner has rejected all claims on appeal in a series of
rejections under 35 U.S.C. § 103(a) that rely on the combination of
Lemelson, Dumoulin and Peterson. Appellants contend that both Lemelson
and Dumoulin teach away from the combination of references. (See e.g.,
App. Br. 6-11.)
The issue with respect to this rejection is: Whether Appellants have
successfully rebutted a prima facie case of obviousness by showing that the
prior art teaches away from the claimed invention?
Findings of Fact
FF1. Lemelson discloses a “head-mounted display that allows the
user to view both the subject and selected data” (Lemelson, col. 5, ll. 4-6),
such as patient vital signs (See e.g., Lemelson, col. 16, ll. 13-17), where a
“heads-up display is generally defined as an electronically generated display
containing information or data that is superimposed on an observer‟s normal
field of view” (Lemelson, col. 1, 15-17).
FF2. Dumoulin discloses an interactive display system that
“superimposes images of internal structures on a semi-transparent screen
Appeal 2012-001978
Application 11/182,350

6
through which a surgeon views a patient during a medical procedure.”
(Dumoulin, Abstract.) “An invasive device is also tracked and displayed on
the semi-transparent screen.” (id.)
FF3. Peterson discloses “a wearable computer having computer
components movably located in a collar that the user wears around his or her
neck” where the components can be a display or monitor, or a microphone.
(Peterson, Abstract.)
FF4. The Examiner finds that “Lemelson discloses a system
comprising a heads-up display and sensors for determining the condition of a
patient… but fails to disclose peripheral ports and processing circuitry which
receives data signals such as signals from multiple navigation sensors.”
(Ans. 5; citations omitted.)
FF5. The Examiner finds that “[i]t would have been obvious to one
having ordinary skill in the art to modify Lemelson‟s system by providing it
with a wearable computer, as taught by Peterson, in order to improve the
ease of use of the system and by providing processing circuitry which
receives data signals, including signals from multiple navigation sensors, as
taught by Dumoulin, in order to increase the versatility of the device.” (Ans.
6.)
FF6. Appellants cite to the following excerpt from Lemelson as a
teaching away from combining navigational data with patient condition data
on a head mounted display (see e.g., App. Br. 6-8):
Efforts have also been made to use head-mounted
displays in augmented reality simulations for medical
applications wherein a desired image or three-dimensional
model is superimposed on the real scene of a patient. For
example, it was reported that a research effort in the
Appeal 2012-001978
Application 11/182,350

7
Department of Computer Science at the University of North
Carolina has attempted to develop a see-through head-mounted
display that superimposed a computer-generated three-
dimensional image of the internal features of a subject over the
real-life view of the subject. ... Other research efforts at the
University of North Carolina attempted to use a video see-
through head-mounted display and a high-performance
computer graphics engine to superimpose ultrasound images
over the real view of the subject, thereby allowing a user to “see
within” the subject. A set of trackers captured the motion of the
body part with respect to the field of view of the user, and a
computer updated the position of the body part in real time. The
computer attempted to correlate the “tracked” position of the
body with the three-dimensional model and to display the
model on the heads-up display in a manner that gave the
appearance of “x-ray vision.”

In the above-described University of North Carolina
research efforts, the focus was primarily to help teach students
by superimposing a single computer-generated image over a
moving, real-life, image of a subject. However, as explained in
the associated literature, the “tracking” requirements made the
research effort quite complicated, and the results appeared less
than satisfactory. Moreover, such a teaching system is not
applicable to the real-world environment of a surgeon, where
the patient is not moved (and “tracking” is unnecessary), and
where the surgeon needs or desires other information to be
made readily available for viewing.

(Lemelson, col. 2, ll. 17-62; emphasis added.)
FF7. Appellants cite to the following excerpt from Dumoulin as
teaching away from displaying navigational data on a heads-up display worn
by a surgeon (see e.g., App. Br. 9-10):
Another object of the present invention is to provide a
surgeon a “heads up” display of radiological images
Appeal 2012-001978
Application 11/182,350

8
superimposed upon external structures of a patient within his
field of view without the use of cumbersome headgear.
(Dumoulin, col. 2, ll. 44-47.)
FF8. Figure 2 of Dumoulin is reproduced below:

With reference to Figure 2, Dumoulin discloses as follows:
In the present embodiments of the invention, semi-
transparent screen 250 is interposed between operator 350 and
patient 1. Screen 250 can be constructed with a liquid crystal
display or it can be comprised of a partially silvered mirror
reflecting an image from a video monitor. Semi-transparent
display 250 can be constructed as a relatively large device
having dimensions approximately equal to that of the region of
interest of patient 1, or alternatively it can be of small
dimension and placed relatively close to the operator’s eyes,
perhaps incorporated into headgear or eyewear.
(Dumoulin, col. 6, ll. 51-60.)
FF9. The Specification provides as follows:
Appeal 2012-001978
Application 11/182,350

9
The heads-up display 14 may be any type of heads-up
display configured to be worn on the head or near the head of
the surgeon 12.
(Specification, ¶ [0014]; emphasis added.)
Principles of Law
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability. 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).
“[A] patent composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007).
However, a prima facie conclusion of obviousness may be supported by a
showing that a combination of familiar elements according to known
methods yields no more than predictable results. See KSR, 550 U.S. at 401;
citing United States v. Adams, 383 U.S. 39, 40 (1966).
One “may rebut a prima facie case of obviousness by showing that the
prior art teaches away from the claimed invention in any material respect.”
In re Peterson, 315 F.3d 1325, 1331 (Fed. Cir. 2003); citing In re Geisler,
116 F.3d 1465, 1469 (Fed. Cir. 1997). However, for a reference to teach
away, it must state more than a general preference for an alternative
invention. It must “„criticize, discredit, or otherwise discourage‟
investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009), quoting In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).

Appeal 2012-001978
Application 11/182,350

10
Analysis
Claims 1 and 27
Lemelson discusses a line of research at the University of North
Carolina related to a system using a “set of trackers” to monitor body
position with head-mounted display. (FF6.) Lemelson describes the system
pursued in the North Carolina research as “not applicable to the real-world
environment of a surgeon” because “„tracking‟ is unnecessary” and because
the “surgeon needs or desires other information to be made readily available
for viewing.” (FF5.)
Dumoulin discloses an interactive display system that allows an
invasive device to be tracked and displayed on the semi-transparent screen.
(FF2.) Appellants, however, argue that the above noted teaching of
Lemelson expressly rejects displaying the type of navigational data disclosed
in Dumoulin in combination with patient condition data. (App. Br. 7.)
Specifically, Appellants argue that “a person of ordinary skill would have
learned from Lemelson that displaying patient tracking data, along with
other information, in a heads-up display is both „unnecessary‟ and should
[be] avoided so that the other information may be made available for
viewing.” (Reply Br. 5.)
We are persuaded by Appellants‟ arguments that this language of
Lemelson rises to the level of criticism or otherwise discredits the need for
combining navigational data and patient condition data on a single heads-up
display (HUD) used by a surgeon and is sufficient to rebut the Examiner‟s
prima facie case of obviousness for claims reciting these elements. With
regard to claims 1 and 27, we note that both of these claims require the HUD
Appeal 2012-001978
Application 11/182,350

11
to be worn or used by a surgeon and require the HUD to display both
navigational data and patient condition data. Accordingly, we find that
Lemelson teaches away from the claimed invention of claims 1, 27 and
dependent claims thereto.

Claim 46
We adopt the fact finding and analysis of the Examiner with regard to
claims 46 and 47 as our own. (Ans. 5-8.) With regard to claim 46, we note
that this claim does not require the HUD to display both navigational data
and patient condition data. Rather, claim 46 requires the navigational data
and patient condition data to be transmitted to a user-worn computer.
Appellants do not argue that Lemelson teaches away from transmitting
navigational data and patient condition data to user-worn computer and we
do not find this to be the case.
Appellants argue that Dumoulin teaches away from displaying
navigational data on a heads-up display worn by a surgeon (FF7; see e.g.,
App. Br. 9-10). Appellants reason that “the term „cumbersome headgear‟
may be fairly used to describe Peterson‟s user-worn device, [and] a person
of ordinary skill would not have been motivated to modify Lemelson to use
the Peterson III device.” (Reply Br. 6.) Rather, according to Appellants,
“given the teachings of Lemelson and Dumoulin, common sense would
seem to dictate that a person of ordinary skill would use the Lemelson
device rather than modifying it to include a user-worn computer or to
display both patient tracking data and other information.” (id.)
Appeal 2012-001978
Application 11/182,350

12
This argument is unpersuasive. Dumoulin “does not „criticize,
discredit, or otherwise discourage‟ investigation” into the use of a heads-up-
display or headgear. See Depuy Spine, 567 F.3d at 1327. The most that
might be reasonably said about Dumoulin is that it expresses a preference
for headgear that is of “small dimension and placed relatively close to the
operator‟s eyes.” (FF8.)
Further, we note that claim 46 is not limited to the use of headgear,
but rather only requires “a heads-up display configured to be worn by the
surgeon.” The Specification does not define a heads-up display as limited to
headgear. (FF9.)
We conclude that the teachings of Dumoulin related to the use of
headgear fail to teach away from the invention of claim 46 and dependent
claims thereto. Accordingly, Appellants have not persuasively rebutted the
Examiner‟s prima facie case of obviousness with regard to these claims.

SUMMARY
We reverse the rejection of claims 1-6, 8, and 10-27 under 35 U.S.C. §
103(a) as being unpatentable over the combination of Lemelson, Dumoulin
and Peterson. We affirm the rejection of claims 46-47 under 35 U.S.C. §
103(a) as being unpatentable over the combination of Lemelson, Dumoulin
and Peterson.
We reverse the rejection of claim 7 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Lemelson, Dumoulin, Peterson and
Vilsmeier.
Appeal 2012-001978
Application 11/182,350

13
We reverse the rejection of claims 7 and 9 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Lemelson, Dumoulin,
Peterson and Ishikawa.
We reverse the rejection of claims 27, 34, 36, 38, 39, 41, 42 and 43
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Lemelson, Dumoulin, Peterson and Cosman.
We reverse the rejection of claims 27, 35, 37 and 40 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Lemelson,
Dumoulin, Peterson and Ishikawa.
We reverse the rejection of claims 28, 29-33, 44 and 45 under 35
U.S.C. § 103(a) as being unpatentable over the combination of Lemelson,
Dumoulin, Peterson, Cosman and Sahay.

AFFIRMED-IN-PART

alw