Ian Revie et al.

Patent Trials and Appeals Board

Jul 30, 2019

14753351 - (D) (P.T.A.B. Jul. 30, 2019)

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.
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Application 14/753,351

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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.

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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.
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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,
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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
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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”
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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.
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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.
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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