ORTHOSOFT, INC.

Patent Trials and Appeals Board

Nov 2, 2020

13954279 - (D) (P.T.A.B. Nov. 2, 2020)

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.
13/954,279 07/30/2013 Francois Paradis 05015228-120US 2827
93758 7590 11/02/2020
NORTON ROSE FULBRIGHT CANADA LLP (Zimmer Cas)
1 Place Ville Marie
Suite 2500
Montreal, QUEBEC H3B 1R1
CANADA
EXAMINER
HANNA, SAMUEL SALEEB
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
11/02/2020 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):
NRFCUSPTOMAIL@nortonrosefulbright.com
ipcanada@nortonrose.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANCOIS PARADIS, JOEL ZUHARS, KARINE DUVAL,
MATHIEU CHEVRIER, LOUIS-PHILIPPE AMIOT, HERBERT JANSEN,
MYRIAM VALIN, DON DYE, ISABELLE ROBITAILLE,
SIMON FERRON-FORGET, and FRANCOIS BAUDOIN
Appeal 2020-001205
Application 13/954,279
Technology Center 3700
Before CHARLES N. GREENHUT, MICHAEL J. FITZPATRICK, and
GEORGE R. HOSKINS, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–6, 8–10, 17, and 18, which
constitute all the claims pending in this application. See Final Act. 1. The

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Orthosoft, Inc.
Appeal Br. 2.
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Examiner agreed claim 2 would be canceled to reduce the issues for appeal.
Adv. Act. Jul. 22, 2019. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to a method and system for creating a frame
of reference for computer assisted surgery with inertial sensors. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A digitizer device comprising:
an elongated body defining a longitudinal axis;
a pair of legs connected to the elongated body, each leg
extending away from the elongated body to a distal free end
thereof, the free ends of the legs being pointy-shaped;
at least one translational joint disposed in the elongated
body, such that the free ends of the legs are displaceable relative
to one another in a first translational direction being parallel to
the longitudinal axis of the elongated body, a translational joint
on each said leg to adjust a distance between each of the free ends
and the elongated body in a second translational direction being
substantially transverse to the first translational direction, a
plurality of planes each being defined as normal to the first
translational direction, one of the planes intersecting one of the
legs at the free end thereof and another one of the planes
intersecting the other leg at the free end thereof, the
pointy-shaped free end of each leg projecting outwardly from the
plane intersecting the free end of said respective leg to point
towards the other pointy-shaped free end; and
an inertial sensor unit connected to the elongated body, the
inertial sensor unit having a preset orientation aligned with the
elongated body.
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REFERENCES
Name Reference Date
Cho US 4,257,411 Mar. 24, 1981
Stone '044 US 2005/0021044 A1 Jan. 27, 2005
Singhatat US 2005/0075641 A1 Apr. 7, 2005
Stone '026 US 2005/0251026 A1 Nov. 10, 2005
Stone '142 US 2007/0162142 A1 July 12, 2007
Teague US 2009/0138054 A1 May 28, 2009
Puricelli US 2010/0010491 A1 Jan. 14, 2010
Borja US 2010/0137869 A1 June 3, 2010
Pelletier US 2012/0053594 A1 Mar. 1, 2012
REJECTIONS
The rejection of claims 2–4 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement (Final Act. 8)
appears to have been withdrawn by the Examiner’s agreement to enter the
amendment canceling claim 2 for purposes of this appeal. Adv. Act. Jul. 22,
2019.
The rejection of claims 1–4 and 17 under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over, Borja (Final Act. 9) was withdrawn. Ans. 15.
Claims 1–6, 8–10, and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Stone '142 and Singhatat or Cho. Final Act. 13.
Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Stone '142, Singhatat or Cho, and Stone '026. Final Act. 18.
Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Stone '142, Cho, and Teague. Final Act. 19.
Claims 1, 3–6, 8–10, and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Pelletier, Puricelli, and Singhatat or Cho. Final Act. 19.
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OPINION
The Examiner made cumulative2 rejections, with each such rejection
applying cumulative references against the claim 1, the sole independent
claim involved in this appeal. The Examiner relied on either Stone '142 or
Pelletier as the primary or base reference with either one of Singhatat or Cho
as a secondary reference. Appellant makes two groupings, the first regarding
the rejection citing Stone '142 as the primary reference, the second based on
the rejection citing Pelletier as the primary reference. Dependent claims are
not separately argued. Because the disclosures of Stone '142 or Pelletier are
cumulative and Appellant’s arguments are essentially the same regardless of
which reference is applied as the base reference (cf. Appeal Br. 12–17 with
Appeal Br. 17–23) the rejections can be discussed together.
The Examiner correctly found that each of Stone '142 and Pelletier
discloses the basic device of claim 1 albeit without “a translational joint on
each said leg to adjust a distance between each of the free ends and the
elongated body in a second translational direction being substantially
transverse to the first translational direction.” Final Act. 14–15; 20–21.

Inertial Sensor Unit
Appellant’s first argument is that, contrary to the Examiner’s finding
mentioned above, neither Stone '142 nor Pelletier discloses the recited
“inertial sensor unit connected to the elongated body, the inertial sensor unit

2 The term “cumulative” is used throughout the MPEP to connote references
or rejections which establish essentially the same thing and will typically
stand or fall together. See, e.g., MPEP §§ 1207.01, 2120.
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having a preset orientation aligned with the elongated body.” Appeal Br. 13–
14; 19; Reply Br 2–3.
Appellant argues that “[n]either Stone ['142] nor the incorporated US
Publication 2005/0021044 A1 disclose or suggest that the electronic
navigation device 76 or the electronic surgical orientation guide device 80
have a preset orientation, or that they are aligned with an elongated body.”
Appeal Br. 14.
There does not appear to be any dispute that the guide device 80 of
Stone '142 is reasonably considered an “inertial sensor unit” according to
claim 1.3 Stone '142 may not depict guide device 80 in place, but the cited
paragraphs of Stone '142 (Final Act. 14 (citing Stone '142 paras. 50–52))
would have clearly implied to the skilled artisan that various navigation
systems will attach to or take the place of pins 75 (shown in Figure 3A
carrying fiduciaries 74 or in Figure 3B where navigation device 76 is
located). See, e.g., In re Baxter Travenol Labs 952 F.2d 388, 390 (Fed. Cir.
1991) (the dispositive question is “whether one skilled in the art would
reasonably understand or infer” that a reference teaches or discloses all of
the elements of the claimed invention); In re Preda, 401 F.2d 825, 826

3 The Examiner’s contention that in an alternate interpretation “inertial
sensor unit” could be regarded as the unit carrying the sensor as opposed to
the sensor itself (Ans. 21–22) seems “divorced from” the Specification (see
Spec. para. 29) and is not adopted. “[When giving claim] terms their
broadest reasonable construction, the construction cannot be divorced from
the specification.” In re NTP, 654 F.3d 1279, 1288 (Fed. Cir. 2011).
“‘[R]eading a claim in light of the specification,’ to thereby interpret
limitations explicitly recited in the claim, is a quite different thing from
‘reading limitations of the specification into a claim,’ to thereby narrow the
scope of the claim by implicitly adding disclosed limitations which have no
express basis in the claim.” In re Prater, 415 F.2d 1393, 1404 (CCPA 1969).
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(CCPA 1968) (stating, “in considering the disclosure of a reference, it is
proper to take into account not only specific teachings of the reference but
also the inferences which one skilled in the art would reasonably be
expected to draw therefrom”). Appellant does not apprise us, and we are
unaware, as to precisely what language of claim 1 distinguishes from the
arrangement of Stone '142 when guide device 80 is placed in such a position.
There does not appear to be any dispute that the trackable members of
Pelletier relied upon by the Examiner (e.g., 50, 54) are “inertial sensor[s]”
(see, e.g., Pelletier para. 58) or that their positioning being for purposes of
defining or determining their respective axes makes them reasonably
understood as “having a preset orientation aligned with the elongated body.”
Appellant’s point of contention appears to be that neither trackable member
50 nor 54 is “mounted to the base 25,” and it is Pelletier’s base 25 that the
Examiner regards as the recited “elongated body” in rejecting claim 1.
Appeal Br. 19; Final Act. 20.
Appellant’s argument is not commensurate in scope with the claim
language. Limitations not appearing in the claims cannot be relied upon for
patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Claim 1
does not call for the inertial sensor to be “mounted on” the elongated body.
In the Specification Appellant states “[a]n inertial sensor support or
receptacle 23 is defined on the elongated body 20.” Spec. para. 29 (emphasis
added). However, according to claim 1 the inertial sensor must only be
“connected to” the elongated body. Intermediate structure is clearly
permitted so as not to exclude Appellant’s preferred embodiment including a
“support or receptacle” for the sensor. Further, where appellant elected to
use broader language in the claim (“connected to”) as compared to the
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language of the Specification (“defined on”), it is a clear indication to one
skilled in the art reading the claims in light of the Specification that a
broader scope of coverage is sought by the claims in comparison to the
preferred embodiment or embodiments disclosed in the Specification. Thus
it would be improper for us to now import limitations from the Specification
that Appellant elected to omit. Our reviewing court has repeatedly
“cautioned against reading limitations into a claim from the preferred
embodiment described in the specification, even if it is the only embodiment
described, absent clear disclaimer in the specification.” In re American
Academy of Science Tech Center, 367 F.3d 1359, 1369 (Fed. Cir. 2004)
(citations omitted). “[T]he accepted definition of the term ‘connected’ is
restricted to neither a direct nor an indirect connection, and the term is
therefore applicable to an indirect connection.” Ullstrand v. Coons, 147 F.2d
698, 700 (CCPA 1945). There is no dispute that the cited sensors of Pelletier
are “connected to” base 25, albeit indirectly, via intermediate structures.
Ans. 25–26.

Changing the Principle of Operation of Stone '142 or Pelletier
Appellant contends that the incorporation of the extra degree of
freedom in the devices of Stone '142 or Pelletier that would be afforded by
Singhatat or Cho would require substantial reconstruction and compromise
desirable features such as rigidity or positional tracking. Appeal Br. 15–16,
21–22; Reply Br 3–6.
In regards to the complexity or substantiality of the redesign or
reconstruction required to implement the teachings of either Singhatat or
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Cho into the devices of either Stone '142 or Pelletier, we cannot agree that
any overly complex or technical problems must be solved. Appellant’s
ability to list numerous components that must be borrowed from Singhatat or
Cho in order to arrive at a functioning device does not, without more,
demonstrate that such a proposal is beyond that which would have been
obvious to the skilled artisan. The components identified by Appellant
(Appeal Br. 15) are merely simple mechanical elements typical of common
mechanical locking, unlocking and sliding joints. The fact that judgment and
mechanical skill may be required to arrive at a particular combination does
not necessarily mean that particular combination constitutes a nonobvious
invention. Graham v. John Deere Co. of Kansas City, 383 US 1, 10–12
(discussing Hotchkiss v. Greenwood, 11 How. 248 (1851)). One of ordinary
skill can use his or her ordinary skill, creativity, and common sense to make
the necessary adjustments and further modifications to result in a properly
functioning device. See KSR Int’l. v. Teleflex, 550 U.S. 398, 418 (2007)
(“the [obviousness] analysis need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ”).
As the Examiner points out, rigidity of the device resulting from the
Examiner’s proposed combination is not compromised so long as there is the
ability to fix the clamps or jaws of the devices once the adjustments are
made. Ans. 16–17. As the Examiner further points out, Singhatat and Cho
each teach how to achieve such a capability. Id (citing Singhatat paras. 62,
90 and Cho col. 4, ll. 38–46; col. 5, l. 64–col. 6, l. 13).
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The Examiner recognizes that, in order to maintain positional tracking
capabilities, additional measurements may be required to account for the
proposed additional degree of freedom. Ans. 26–27. Again, we do not think
such a minor additional modification required to arrive at a device retaining
all its functions demonstrates nonobviousness. Pelletier, in particular,
already contemplates the use of multiple sensors 50, 52, 54 (Pelletier para.
57) so it is not difficult to envision additional sensors to account for
additional degrees of freedom. The sensor discussion in Stone '142 (paras.
50–52) though not illustrating specific examples using multiple sensors in a
single embodiment, would nevertheless, by its consistent use of plural or
“one or more” language, also be understood to imply multiple sensors could
be employed.
For the foregoing reasons, we do not agree with Appellant that the
incorporation of the extra degree of freedom in the devices of Stone '142 or
Pelletier that would be afforded by Singhatat or Cho would require
substantial reconstruction and compromise desirable features such as rigidity
or positional tracking.

Creating a Problem in Order to Solve it
Appellant contends it was conjecture on the part of the Examiner that
either Stone '142 or Pelletier had any adjustability problems. Appeal Br. 16–
17, 23; Reply Br 7–8. It is well-settled that a description of a prior-art device
that an Examiner or other decision maker proposes would have been obvious
to modify in the course of an obviousness analysis need not identify its own
problems or shortcomings in order to provide a motivation to improve upon
or otherwise modify that device. Just because a prior art product functions
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satisfactorily does not mean that a skilled artisan would not try to improve it.
See KSR Int’l Co. v. Teleflex Inc., 550 U.S. at 417 (explaining that if a
technique has been used to improve one device and a person of ordinary skill
in the art would recognize that it would improve a similar device in the same
way, using the technique is obvious unless its actual application is beyond
his or her skill). In that regard, a reason to modify a prior art reference may
be found explicitly or implicitly in market forces; design incentives; the
“interrelated teachings of multiple patents”; “any need or problem known in
the field of endeavor at the time of invention and addressed by the patent”;
and the background knowledge, creativity, and common sense of the person
of ordinary skill. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324,
1328–29 (Fed. Cir. 2009) (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. at
418–21). “[T]he analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSR, 550 U.S. at 418. Our reviewing court has recognized
that even without an express suggestion in the prior art, an implicit
motivation to combine reference teachings often exists when the
combination results in a product or process that is more desirable, for
example because it is “stronger, cheaper, cleaner, faster, lighter, smaller,
more durable, or more efficient.” Dystar Textilfarben GmBH & Co, v. C.H.
Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006). In the particular art now
before us, we think that making anatomical clamping devices used to
accurately ascertain anatomical positional information, such as those of
Stone '142 or Pelletier, more easily or precisely adjustable to accommodate
anatomical variations (Final Act. 16, 23) is a very fair addition to that list.
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CONCLUSION
The Examiner’s rejections are AFFIRMED.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–6, 8–
10, 17
103(a) Stone '142,
Singhatat or Cho
1, 3–6, 8–
10, 17

10 103(a) Stone '142,
Singhatat or Cho,
Stone '026
10
18 103(a) Stone '142, Cho,
Teague
18
1, 3–6, 8–
10, 17
103(a) Pelletier, Puricelli,
Singhatat, Cho
1, 3–6, 8–
10, 17

Overall
Outcome
1, 3–6, 8–
10, 17, 18

RESPONSE
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