Ian Revie et al.Download PDFPatent Trials and Appeals BoardJul 30, 201914753351 - (D) (P.T.A.B. Jul. 30, 2019) Copy Citation 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. 14/753,351 06/29/2015 Ian Revie 47061-501C01US (DEP5302US 9352 30623 7590 07/30/2019 Mintz Levin/Boston Office One Financial Center Boston, MA 02111 EXAMINER HOBAN, MELISSA A ART UNIT PAPER NUMBER 3774 NOTIFICATION DATE DELIVERY MODE 07/30/2019 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): IPDocketingBOS@mintz.com IPFileroombos@mintz.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte IAN REVIE, ALAN ASHBY, DUDI REZNICK, and YAACOV NITZAN ____________________ Appeal 2018-001783 Application 14/753,351 Technology Center 3700 ____________________ Before JAMES P. CALVE, LEE L. STEPINA, and ARTHUR M. PESLAK, Administrative Patent Judges. PESLAK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Ian Revie et al. (“Appellants”) appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1, 4–15, and 29–42.1 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 Depuy International Ltd. is the applicant and identified as the real party in interest. Appeal Br. 1. Appeal 2018-001783 Application 14/753,351 2 THE CLAIMED SUBJECT MATTER Appellants’ invention is directed to systems for “monitoring the orthopaedic performance of a subject using wirelessly trackable markers.” Spec. ¶ 1. Claims 1, 35, and 40 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A medical system, comprising: a bone anchor configured to be implanted in a bone of a patient during a surgical procedure, the bone anchor having a bone- engaging surface feature; and a processor configured to determine at least one of a position and an orientation of the bone anchor within the bone, assess an orthopaedic performance of the patient based on the determined at least one of position and orientation of the bone anchor, use the determined at least one of position and orientation to calculate a representation of the orthopaedic performance, and compare, using a neural network, the representation with a predetermined model representation of orthopaedic performance. REJECTION 1) The Examiner rejected claims 1, 4–15, and 29–34 as unpatentable over Mendes (US 6,245,109 B1, issued June 12, 2001) and alternatively over Mendes and Spillman (US 6,170,488 B1, issued Jan. 9, 2001). 2) The Examiner rejected claims 35–39 and claims 40–42 over Mendes. Appeal 2018-001783 Application 14/753,351 3 DISCUSSION Rejection 1 The Examiner finds that Mendes discloses all the limitations of claim 1 except for a “processor configured to compare using a neural network.” Final Act. 3–6. The Examiner determines that “the processor of Mendes is at least fully capable of using a neural network” and “a neural network is a well-known computer model used to estimate or approximate functions that can depend on a large number of inputs and such a model would be suitable for performing the comparison taught by Mendes.” Id. at 6. The Examiner also finds that Spillman discloses “a device and system for remotely interrogating a diagnostic implant device, including an artificial knee joint” and a control circuit that uses “known data analysis techniques including neural network techniques.” Id. (citing Spillman, 3:49–65, 8:17–40). The Examiner then concludes that it would have been obvious “to modify the invention of Mendes to include the use and update of a neural network, since neural network techniques are well-known data analysis techniques in the art of prosthetic devices for ascertaining the condition thereof, as taught by Spillman.” Id. at 7. With respect to the rejection based on Mendes alone, Appellants contend that the Examiner’s assertion that Mendes’s microprocessor is capable of using a neural network is not sufficient because claim 1 requires a processor configured to “compare, using a neural network.” Appeal Br. 6. Appellants also contend that the Examiner’s assertion “that neural networks are well-known and generally useful fails to provide an objective reason for the proposed modification of Mendes and thus fails to render claim 1 obvious.” Id. at 7. Appeal 2018-001783 Application 14/753,351 4 With respect to the rejection based on the combination of Mendes and Spillman, Appellants contend that the Examiner’s reason for the combination, i.e., a neural network is a “well-known data analysis technique,” is insufficient because it “is a conclusory statement, not a reason.” Appeal Br. 8. Appellants further argue against the combination because, according to Appellants, the modification would serve no purpose in Mendes. Id. at 9. Appellants submit that Mendes engages in “a simple comparison of two sets of data points to determine, if, at a later point in time, the artificial joint member 12 has moved within the patient from immediately after the surgery.” Id. Appellants contrast this with Spillman which, according to Appellants, is “taking multiple acoustic energy outputs and analyzing them for something else, namely frequency contents, and . . . also using the analysis to account for other factors identified by Spillman that can affect the accuracy of the acoustic readings.” Id. at 10 (citing Spillman 8:33–40). Appellants further argue that “the basic comparison of two data values in Mendes to determine if they are the same as one another does not need neural network analysis and, indeed, would not yield any additional or more accurate information from such analysis.” Id. The Examiner responds that because “the processor of Mendes is capable of the function of comparing,” the substitution of a neural network for Mendes’s commercially available software is the “substitution of one known element for another” to “yield predictable results to one of ordinary skill in the art.” Ans. 2–3. The Examiner responds similarly with respect to the combination of Mendes and Spillman as a “known ‘improvement technique’ . . . in order to allow for data analysis for ascertaining the condition of a prosthetic device, Appeal 2018-001783 Application 14/753,351 5 as taught by Spillman, and the results would have been predictable to one of ordinary skill in the art.” Id. at 3. With respect to Appellants’ contention that using a neural network with Mendes would serve no purpose, according to the Examiner, Mendes discloses multiple detection systems and analysis of input from multiple detection systems “would benefit from the use of a neural network.” Id. at 4 (citing Mendes, 7:12–28). For the following reasons, we do not sustain the rejection of claim 1. In connection with the rejection based on Mendes alone, the Examiner finds that Mendes’s processor “is at least fully capable of using a neural network.” Final Act. 6; Ans. 2–3. The Examiner, however, does not direct us to any evidence to support this finding. As explained by the Federal Circuit, the Examiner must show that “the apparatus as provided must be ‘capable’ of performing the recited function, not that it might later be modified to perform that function.” Typhoon Touch Technologies, Inc. v. Dell, Inc., 659 F. 3d 1376, 1380 (Fed. Cir. 2011) (quoting Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F. 3d 1367, 1375 (Fed. Cir. 2008). In the absence of evidence to support a finding the processor disclosed in Mendes is capable of using a neural network without modification, we do not sustain the rejection of claim 1 as unpatentable over Mendes. We also do not sustain the rejection of claims 4–15 and 29–34, which depend from claim 1, for the same reasons. In connection with the rejection based on the combination of Mendes and Spillman, the Examiner finds that Spillman discloses “a control circuit for comparing data with a table stored in memory” that “may use other known data analysis techniques including neural network techniques.” Final Act. 6 (citing Spillman 8:17–40). The Examiner concludes that it would Appeal 2018-001783 Application 14/753,351 6 have been obvious to substitute a neural network in Mendes, as disclosed in Spillman, as the substitution of one known element for another yielding predictable results. Final Act. 7; Ans. 3. We acknowledge that Spillman discloses that its system can be applied to “artificial joints.” Spillman 3:55. However, Spillman’s reference to neural networks is not in connection with an artificial joint. Rather, Spillman discloses substituting a neural network technique for a Fourier transform technique to analyze “reradiated acoustic energy” in the context of estimating “the degree of restenosis” of an implanted stent. See id. 7:10–8:40. The Examiner does not adequately explain why one of ordinary skill in the art would have found it obvious to utilize a neural network in Mendes to analyze the “wear or relative displacement of the articulating surfaces” in an artificial joint which, as Appellants correctly note, is “a simple comparison of two sets of data points.” Appeal Br. 9; Mendes, 3:52–53. Therefore, we do not sustain the rejection of claim 1 as unpatentable over the combination of Mendes and Spillman because it is not based on a rational underpinning. We also do not sustain the rejection of claims 4–15 and 29–34 which depend from claim 1 for the same reasons. Rejection 2 Claims 35–39 In the rejection of independent claim 35, the Examiner finds that Mendes discloses the recited “reference coordinate frame (data acquired immediately after a surgical procedure).” Final Act. 9 (citing Mendes, 7:18– 28). Appellants contend that this finding is based on an unreasonable construction of “reference coordinate frame” by the Examiner. Appeal Br. 15. According to Appellants, the recited “reference coordinate frame” Appeal 2018-001783 Application 14/753,351 7 clearly would not be understood by a person skilled in the art to refer to data acquired from sensors as is alleged by the Examiner” but “generally relates to a concept of an observational reference frame of coordinates such as a Cartesian reference frame of (x, y, z) coordinates.” Id. (citing Spec. ¶¶ 92, 94–95, 124–126, 158). The Examiner responds that Appellants’ Specification does not disclose a special definition of this term and “when given the broadest reasonable interpretation, the immediate three- dimensional data taught by Mendes can be construed to meet the limitation of a reference coordinate frame to which the coordinate position . . . is compared.” Ans. 5. Appellants reply that the Examiner’s interpretation is unreasonably broad because “[a] point is clearly not a frame” and according to Appellant, this “interpretation is not even consistent with the language of claim 35, which indicates that ‘an (x, y, z) coordinate position of the bone anchor is compared ‘with a reference coordinate frame,’ . . . indicating . . . a difference between a reference coordinate frame and an (x, y, z) position or point.” Reply Br. 11. For the following reasons, we sustain this rejection. Claim 35 broadly recites “a reference coordinate frame.” As shown in Figure 2 of Mendes, detection systems 20 are placed at three locations. Mendes, 7:14–15, Fig. 2. Mendes discloses that it uses detection systems 20 to “obtain information on the relative displacement between bone 18 and member 12 in three different planes . . . by comparing three dimensional data acquired from detection systems 20 immediately following joint replacement surgery.” Id. 7:17–21. Thus, the Examiner does not rely on an individual point to satisfy the claim limitation “a reference coordinate frame,” as asserted by Appellants, but rather relative displacement information in three different planes acquired from the detection systems. Appeal 2018-001783 Application 14/753,351 8 Appellants’ argument, thus, does not persuasively explain why relative displacement information in three different planes acquired from three detection systems does not satisfy the broadly recited “reference coordinate frame.” See Ans. 5. Thus, a preponderance of the evidence supports the Examiner’s finding that Mendes discloses the recited “reference coordinate frame.” Therefore, we sustain the rejection of claim 35. Appellants do not argue separately for the patentability of claims 36–39, which depend from claim 15. Appeal Br. 16. We sustain the rejection of these dependent claims for the same reasons. Claims 40–42 In the rejection of independent claim 40, the Examiner finds that Mendes does not disclose a processor configured to “determine an orientation of the bone anchor . . . based on pitch, yaw, and roll orientations” as required by claim 40, but determines “that it would have been obvious to. . . use a sensor that detects pitch, yaw, and roll orientations of the bone anchor, in order to get a more accurate assessment of the state of the implanted members.” Id. at 10–11. Appellants contend that “Mendes is completely silent as to determining an orientation of a bone anchor within a bone.” Appeal Br. 19. In response, the Examiner asserts that column 7, lines 12–18 of Mendes support a finding that Mendes discloses an orientation of a bone anchor. Ans. 6. In the Reply Brief, Appellants contend that while Mendes “considers positions . . . there is simply no determination of orientation in Mendes as recited in claim 40. Pitch, yaw, and roll orientations of the artificial joint member 12 are unknown in Mendes.” Reply Br. 12. For the following reasons, we do not sustain the rejection of claim 40. Appeal 2018-001783 Application 14/753,351 9 The passage of Mendes, which the Examiner relies on, as Appellants correctly note, does not disclose that Mendes processor determines pitch, yaw, and roll orientations. Mendes, 7:12–18. Mendes discloses using two or three-dimensional information to determine relative displacement. See id. There is no mention of determining pitch, yaw, and roll in the cited passage. Although, as discussed above, Mendes obtains information on the relative displacement between bone 18 and member 12 in three different planes, obtaining such information, on its own, does not necessarily equate to determining pitch, yaw, and roll. For this reason, we do not sustain the rejection of claim 40 and claims 41 and 42 which depend from claim 40. DECISION The Examiner’s decision rejecting claims 1, 4–15, 29–34, and 40–42 is reversed. The Examiner’s decision rejecting claims 35–39 is 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART Copy with citationCopy as parenthetical citation