Ex Parte Roche

Patent Trial and Appeal Board

Dec 27, 2016

12748126 (P.T.A.B. Dec. 27, 2016)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/748,126 03/26/2010 Martin Roche ROCHE-1023C-US 4539
88191 7590 12/29/2016 EXAMINER
( irthosensor Tnr
1855 Griffin Road KU, SI MING
Suite A-310
Dania Beach, EL 33004 ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
12/29/2016 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):
ghoshizaki @ orthosensor.com
j .daniels @ orthosensor, com
jonathan.trousdale@orthosensor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN ROCHE
Appeal 2014-009209
Application 12/748,126
Technology Center 3700
Before MICHAEL L. HOELTER, JEFFREY A. STEPHENS, and
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Martin Roche (“Appellant”) seeks review under 35 U.S.C. § 134(a) of
the Examiner’s decision, as set forth in the Final Office Action dated
November 22, 2013 (“Final Act.”), rejecting claims 1 and 3—11.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies Orthosensor Inc. as the real party in interest. Br. 4.
Appeal 2014-009209
Application 12/748,126
BACKGROUND
The disclosed subject matter “relates in general to orthopedics, and
particularly though not exclusively, is related to a device and method to
facilitate orthopedic surgery.” Spec. 12.2 Claim 1, the sole independent
claim, is reproduced below:
1. An orthopedic alignment system
comprising:
a device coupled to a muscular-skeletal
system, where the device includes:
a spacer having a superior surface and an
inferior surface to distract two surfaces of the
muscular-skeletal system, the spacer including a
sensor configured to be coupled with at least one
of the two surfaces of the muscular-skeletal system
or a surface of a prosthetic component, where the
device is configured to maintain the sensor
between the two surfaces of the muscular-skeletal
system if the gap between the two surfaces is
adjusted;
a handle coupled to the spacer where the
handle includes a surface or feature; and
an alignment aid non-pivotally connected to
the handle, where the surface or feature has a
relational position to at least one of surface of the
muscular-skeletal system where the surface or
feature is used to determine alignment with a
mechanical axis of the muscular-skeletal system.
2 Citations to the Specification refer to the version filed on April 27, 2010.
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Application 12/748,126
REJECTIONS
1. Claims 1 and 3—11 stand rejected under 35U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
2. Claims 1, 3—6, 10, and 11 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Colquhoun (US 2009/0270869 Al, published
Oct. 29, 2009) and Gustilo (US 5,733,292, issued Mar. 31, 1998).
3. Claim 7 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Colquhoun, Gustilo, and Amiot (US 2009/0248044 Al,
published Oct. 1, 2009).
4. Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Colquhoun, Gustilo, and Petersen (US 5,569,260, issued
Oct. 29, 1996).
DISCUSSION
Rejection 1 — The rejection of claims 1 and 3—11
under 35 U.S.C. § 112, first paragraph
The Examiner rejected claim 1 as failing to comply with the written
description requirement, finding that “the phrase ‘an alignment aid non-
pivotally connected to the handle’ introduces new matter because the
originally filed disclosure fails to provide support on [sic] the feature of the
alignment aid being non-pivotal when connected to the handle.” Final Act.
3. Claims 3—11 were rejected due to their dependence from claim 1. Id.
In response, “Appellant directs attention to Appendix XVI, where a
reference error has been corrected to ‘threaded rod (242-216)7 which is
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Application 12/748,126
shown in Figure 2, and described initially in paragraph [0051].” Br. 19.3
Appellant concludes, “[t]hus[,] no drawing amendment is necessary.
Accordingly, Appellant respectfully requests reconsideration and withdrawal
of the outstanding rejection under 35 U.S.C. §112, 1st paragraph.” Id.
We are not apprised of error in the written description rejection based
on Appellant’s argument. To overcome a rejection based on lack of written
description support, “an applicant must show that the invention as claimed is
adequately described to one skilled in the art.” In re Alton, 76 F.3d 1168,
1175 (Fed. Cir. 1996). Here, Appellant does not contend that the Examiner
failed to set forth a prima facie case and, with the argument above, has not
shown adequate written description support for the limitation at issue. See
Br. 19. With the argument, Appellant has not identified any aspect of the
Specification that provides support for the limitation at issue. As noted by
the Examiner, the argument relates to a drawing objection regarding Figure
6. See Ans. 3; see also Final Act. 2—3 (setting forth drawing objection).
Further, to the extent argued, Appellant has not shown that the
drawing objection either (1) “relate[s], at least indirectly, to matters
involving the rejection” at issue {In re Hengehold, 440 F.2d 1395, 1404
(CCPA 1971)) or (2) is “determinative of the rejection” and “requires the
exercise of technical skill and legal judgment” to evaluate whether the facts
meet the relevant legal requirements {In re Searles, 422 F.2d 431, 435
(CCPA 1970)). Thus, Appellant has not shown that the drawing objection
and the written description rejection are sufficiently related such that
3 In section XIV of the Appeal Brief, Appellant proposes amendments to
paragraphs 51, 52, 53, and 64 of the Specification. See Br. Bl—B2.
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Appeal 2014-009209
Application 12/748,126
argument regarding the drawing objection (Br. 19) could apprise us of error
in the written description rejection.4 See Ans. 3 (stating that Appellant’s
argument “is not related to the issue of 35 U.S.C. 112[,] 1 [st] paragraph”).
For these reasons, we sustain the rejection of claim 1, and claims 3—
11, as failing to comply with the written description requirement.
Rejection 2 — The rejection of claims 1, 3—6,
10, and 11 under 35 U.S.C. § 103(a)
Claim 1 recites “an alignment aid non-pivotally connected to the
handle, where the surface or feature has a relational position to at least one
of surface of the muscular-skeletal system where the surface or feature is
used to determine alignment with a mechanical axis of the muscular-skeletal
system.” Br. A1 (Claims App.) (emphasis added). The Examiner identified
ancillary instrument 70 in Colquhoun as the “alignment aid” and, to address
the limitation shown with emphasis, stated “where the surface or feature (26)
is used to determine alignment with a mechanical axis (x,y,z axis) of the
muscular skeletal system (femur and tibia).” Final Act. 4; see also
Colquhoun | 51 and Fig. 4 (discussing and showing slot 26 and ancillary
instrument 70).
Appellant argues that “Colquhoun fails to show, suggest or teach
where the surface (or feature) included in as part of a handle, is used to
determine alignment with a mechanical axis.” Br. 23. According to
4 For the same reason, we do not address Appellant’s separate argument
regarding the drawing objection (Br. 5) and also do not address the proposed
amendments to the Specification (id. at Bl—B2). Review of the drawing
objection is accomplished via petition to the Director under 37 C.F.R.
§ 1.181, not by appeal to the Board. See Ex parte Frye, 94 USPQ2d 1072,
1077-78 (BPAI 2010) (precedential).
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Application 12/748,126
Appellant, “Colquhoun is silent with respect to alignment with a mechanical
axis” but rather “discusses an instrument 90 which includes an indicator
block 102, enabling positioning of a distal cutting block along a mechanical
axis of a femur, where the mechanical axis of the femur is determined by a
different instrument.” Id.
The Examiner responds:
Colquhoun teaches a surface or feature (26) included in as part
of a handle (4 and 6). Thus, the surface or feature is capable of
being used to determine alignment (i.e. the alignment of the
femur and tibia bones with the use of the distractor instrument)
with a mechanical axis (i.e. x,y,z axis).
Ans. 5.
Here, the Examiner has applied an unreasonably broad construction of
“mechanical axis”—as any axis in three-dimensional space—when
considering that claim language in light of the Specification. See In re Bond,
910 F.2d 831, 833 (Fed. Cir. 1990). The record indicates that “mechanical
axis” is a term of art that a person of skill in the art would not equate with
any axis in three-dimensional space. See In re Cortright, 165 F.3d 1353,
1358 (Fed. Cir. 1999) (“Although the PTO must give claims their broadest
reasonable interpretation, this interpretation must be consistent with the one
that those skilled in the art would reach.”). For example, as noted by
Appellant (Br. 23), Colquhoun discusses “the mechanical axis of the femur”
in relation to instrument 90 shown in Figure 5:
The instrument [90] enables the position of the distal cutting
block to be determined along the mechanical axis of the femur.
The mechanical axis is determined in a separate procedure as is
known conventionally in knee surgery (for example, as with the
instrument set sold by DePuy International Fimited . . . ), and
defined using a pair of pins 104.
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Application 12/748,126
Colquhoun | 57 (emphasis added).5 The Specification also supports the
view that “mechanical axis” (at least with regard to the human leg) is a term
of art. As noted by Appellant, paragraph 59 refers to “the leg mechanical
axis.” See Br. 23. In addition, the Specification provides: “The mechanical
axis of the leg is approximately a straight line from the center of the femoral
head through the knee joint and extending to the middle of the ankle joint.”
Spec. 1 68 (discussing Fig. 9).
To address the limitation at issue, the Examiner does not rely on the
discussion in Colquhoun regarding “the mechanical axis” and has not shown
that the relied-upon findings sufficiently address the term “mechanical axis”
in the limitation at issue, when considering that term in its proper context.
See Final Act. 4—5; Ans. 5; see also Colquhoun || 57—58 (discussing “the
mechanical axis of the femur”).
For these reasons, we do not sustain the rejection of claim 1, or the
rejection of claims 3—6, 10, and 11, which depend from claim 1.
5 Discussions in other references of record also support the view that
“mechanical axis” is a term of art (at least with regard to the human leg).
See, e.g., Gustilo, col. 4,11. 60—63 (“When the portion of the musculo­
skeletal system is a knee joint, the line of light is aligned with the
mechanical axis, as defined by a point over the femoral head and a point
through the center of the ankle.”); Amiot 144 (“For the femur, the axis is,
for instance, the mechanical axis passing through a center of the femoral
head and a central point between the condyles at the knee.”); Petersen,
col. 1,11. 45 49 (discussing “the mechanical axis of the femur”).
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Application 12/748,126
Rejections 3 and 4 — The rejection of claims
7—9 under 35 U.S.C. § 103(a)
Claims 7—9 depend from claim 1. Br. A1 (Claims App.). The
Examiner’s added reliance on Amiot (regarding Rejection 3) and Petersen
(regarding Rejection 4) does not remedy the deficiencies in the combined
teachings of Colquhoun and Gustilo, discussed above (see supra Rejection
2). Thus, for the same reasons discussed above, we do not sustain the
rejection of claims 7—9.
DECISION
We AFFIRM the decision to reject claims 1 and 3—11 under 35 U.S.C.
§ 112, first paragraph. We REVERSE the decision to reject claims 1 and 3—
11 under 35 U.S.C. § 103(a).6
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
6 See 37 C.F.R. § 41.50(a)(1) (“The affirmance of the rejection of a claim on
any of the grounds specified constitutes a general affirmance of the decision
of the examiner on that claim, except as to any ground specifically
reversed.”).
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