Trials@uspto.gov Paper 35
`571-272-7822
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`Date Entered: July 26, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BLUE BELT TECHNOLOGIES, INC.,
`Petitioner,
`v.
`ALL-OF-INNOVATION GMBH,
`Patent Owner.
`____________
`
`Case IPR2015-00765
`Patent 7,346,417 B2
`____________
`
`Before SALLY C. MEDLEY, KEVIN F. TURNER, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`FINK, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`
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`I. INTRODUCTION
`On February 19, 2015, Blue Belt Technologies (“Petitioner”) filed a
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`Petition requesting an inter partes review of claims 1, 3, 5–7, 9, 10, 16, 17,
`21, 26, 40, 45, 56, and 57 of U.S. Patent No. 7,346,417 B2 (Ex. 1001, “the
`’417 patent”). Paper 1 (“Pet.”). On June 5, 2015, All-Of-Innovation GmbH
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`571-272-7822
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`Date Entered: July 26, 2016
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BLUE BELT TECHNOLOGIES, INC.,
`Petitioner,
`v.
`ALL-OF-INNOVATION GMBH,
`Patent Owner.
`____________
`
`Case IPR2015-00765
`Patent 7,346,417 B2
`____________
`
`Before SALLY C. MEDLEY, KEVIN F. TURNER, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`FINK, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
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`I. INTRODUCTION
`On February 19, 2015, Blue Belt Technologies (“Petitioner”) filed a
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`Petition requesting an inter partes review of claims 1, 3, 5–7, 9, 10, 16, 17,
`21, 26, 40, 45, 56, and 57 of U.S. Patent No. 7,346,417 B2 (Ex. 1001, “the
`’417 patent”). Paper 1 (“Pet.”). On June 5, 2015, All-Of-Innovation GmbH
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`(“Patent Owner”) filed a Preliminary Response. Paper 9 (“Prelim. Resp.”).
`On August 3, 2015, we granted the Petition and instituted trial as to claims 1,
`3, 5–7, 9, 10, 16, 17, 21, 26, 40, 45, 56, and 57 of the ’417 patent on one of
`the grounds of unpatentability, under 35 U.S.C. § 103, that was alleged in
`the Petition. Paper 10 (“Inst. Dec.”).
`
`After institution Patent Owner filed a Patent Owner Response (“PO
`Resp.”). Paper 14. Petitioner filed a Reply to the Patent Owner Response.
`Paper 21 (“Pet. Reply”). Patent Owner also filed a Motion to Amend. Paper
`15 (“Mot.”). Petitioner filed an Opposition to Patent Owner’s Motion to
`Amend. Paper 22 (“Opp. Mot.”). Patent Owner filed a Reply to Petitioner’s
`Opposition. Paper 25 (“Reply Mot.”). Patent Owner also filed a Motion for
`Observation on Cross-Examination. Paper 27 (“Mot. Obsv.”). Petitioner
`filed a Response to Petitioner’s Motion for Observation. Paper 31 (“Resp.
`Obsv.”) An oral hearing for IPR2015-00765 was held on April 7, 2016.
`The transcript of the hearing has been entered into the record. Paper 34
`(“Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a). Petitioner has shown that
`claims 1, 3, 5–7, 9, 10, 16, 17, 21, 26, 40, 45, 56, and 57 of the ’417 patent
`are unpatentable. Patent Owner’s Motion to Amend is denied.
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`A. Related Proceeding
`According to the Petition, the ’417 patent is involved in at least the
`following lawsuit: Mako Surgical Corp. v. Blue Belt Techs., Inc., Case No.
`14-cv-61263 (S.D. Fla.), filed May 30, 2014. Pet. 1–2.
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`B. The ’417 Patent
`The ’417 patent relates to a method and system for removing tissue or
`other material in dentistry or surgery. Ex. 1001, 1:7–10, 6:12–19. Figure 1
`is reproduced below:
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`Figure 1 illustrates a medical instrument with a tissue-removing
`effector 2 in a position and orientation relative to a reference position of
`tissue object 5, in accordance with the invention. Ex. 1001, 8:50–53. The
`effector can be implemented as a saw blade, cutter, drill, laser, etc., which
`can be powered on or off according to the position of the effector relative to
`the reference position of the tissue object. Id. at 8:53–65. The effector may
`have one or more markers 7, such as glass spheres, secured in a fixed
`position relative to the effector on marker support 6. Id. at 8:65–9:5. In
`general, the markers are a set of points whose position relative to a position
`coordinate system can be determined. Id. at 9:5–10. Various measurement
`methods, including optical, acoustical, electromagnetic, etc., can be used.
`Id. at 9:10–15. A physician or dentist uses information obtained from, e.g.,
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`an X-RAY or CT-image, to plan a cut volume to allow fitted pieces to be
`integrated within the fitted shape of the residual tissue volume. Id. at 9:33–
`60; 10:8–12; 12:60–65. Importantly, the invention prevents accidental tissue
`removal outside the fitted shape by powering off the effector when its
`position is outside of the cutting geometry. Id. at 13:17–28.
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`C. Illustrative Claim
`Claims 1 and 40 are independent claims. Claims 3, 5–7, 9, 10, 16, 17,
`21, and 26 directly or indirectly depend from claim 1, and claims 45, 56, and
`57 directly or indirectly depend from claim 40. Claim 1 is reproduced
`below.
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`1. A method for removing and processing material with at
`least one effector, wherein the effector defines a volume and has
`a predetermined geometry, the method comprising:
`removing and processing material from an object with the
`effector, wherein the removing and processing comprises:
`manually guiding the effector in relation to the
`object;
`determining, using a navigation system, position
`and orientation of the effector in relation to at least
`one reference body as the effector removes material
`from the object;
`storing data representative of the position and
`orientation of the effector in relation to the reference
`body as the effector removes the material from the
`object; and
`and
`power
`of
`one
`least
`at
`supplying
`parameterization control commands to the effector
`as a function of at least one of a predetermined work
`volume for the object, volume of the material
`removed from the object and volume of residual
`material in the work volume, wherein the removed
`material volume and the residual material volume
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`are determined based on the volume and the
`geometry of the effector and the position and
`orientation of the effector data.
`Ex. 1001, 17:40–63.
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`D. Pending Ground of Unpatentability
`The pending ground of unpatentability challenges claims 1, 3, 5–7, 9,
`10, 16, 17, 21, 26, 40, 45, 56, and 57 as obvious, under 35 U.S.C. § 103(a),
`over the combined teachings of Mushabac1 and Klimek.2 Petitioner also
`relies on the Declarations of Dr. Brian Davies in support of its contentions
`(Ex. 1002; Ex. 1012).
`
`E. Level of Ordinary Skill in the Art
`
`Petitioner’s declarant, Dr. Davies, testifies that a person of ordinary
`skill in the art, for purposes of the ’417 patent, would have had a “Master’s
`or Doctorate degree with a concentration in mechanical or medical
`engineering from an accredited engineering program with an area of
`emphasis of medical robotics and at least two years of relevant experience in
`industry.” Ex. 1002 ¶ 16. Patent Owner’s declarant, Dr. Robert Howe,
`testifies that a person of ordinary skill in the art would have had “at least a
`bachelor’s degree in mechanical, electrical, or biomedical engineering or
`computer science and at least five years of experience developing or
`researching image-guided medical devices and procedures or surgical
`robotics.” Ex. 2023 ¶ 21.
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`1 U.S. Patent No. 5,562,448, issued Oct. 8, 1996 (Ex. 1004) (“Mushabac”).
`2 Klimek, et al., “A Passive-Marker-Based Optical System for Computer-
`Aided Surgery in Otorhinolaryngology: Development and First Clinical
`Experiences,” The Laryngoscope, Vol. 109, pp. 1509–1515, Sept. 1999 (Ex.
`1005) (“Klimek”).
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`Having considered the testimony of the parties’ declarants, we do not
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`discern substantial differences between the parties’ definitions of the level of
`ordinary skill. Although Dr. Davies’s definition relies on more education
`(i.e., a Master’s or Doctorate degree as opposed to a Bachelor’s degree) but
`less experience than Dr. Howe’s definition (i.e. 2 years as opposed to 5
`years), Dr. Davies agrees “someone with less technical education but more
`practical experience” could also be considered a person of ordinary skill in
`the art. Ex. 1002 ¶ 16. Given this lack of apparent disagreement, we
`determine an express definition of the level of ordinary skill is not required,
`but, instead, find the level of ordinary skill in the art to be reflected in the
`cited references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
`2001) (“[T]he absence of specific findings on the level of skill in the art does
`not give rise to reversible error ‘where the prior art itself reflects an
`appropriate level and a need for testimony is not shown.’”) (internal
`quotations omitted); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).
`
`II. ANALYSIS
`A. Claim Interpretation
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed
`Techs., LLC, 793 F.3d 1268, 1277–78 (Fed. Cir. 2015) (“We conclude that
`Congress implicitly approved the broadest reasonable interpretation standard
`in enacting the AIA.”), aff’d sub nom. Cuozzo Speed Techs. LLC v. Lee, 136
`S.Ct. 2131 (2016). Under the broadest reasonable construction standard,
`claim terms are generally given their ordinary and customary meaning, as
`would be understood by one of ordinary skill in the art in the context of the
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`entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
`Cir. 2007). Thus, the claims are read in light of the specification and
`“prosecution history in proceedings in which the patent has been brought
`back to the agency for a second review.” Microsoft Corp. v. Proxyconn,
`Inc., 789 F.3d 1292 (Fed. Cir. 2015). Only those terms that are in
`controversy need to be construed, and only to the extent necessary to resolve
`the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999).
`1. “manually guided” or “manually guiding”
`In the Decision to Institute, we construed the terms “manually
`guiding” and “manually guided”3 (recited in independent claims 1 and 40,
`respectively), as “moving/moved by hand, without robotic or kinematic
`support.” Inst. Dec. 9. We based this construction on the Specification and
`prosecution history, which, we determined, distinguished manually guiding
`an effector4 from including robot or kinematic-supported movement. Id. at 8
`(citing, e.g., Ex. 1001, 12:22–25, 20:25–40 (claim 26); Ex. 1003, 42–43
`(distinguishing the invention by “absence of robotic control of the
`positioning of the effector”). At that time, we specifically noted the term
`“manually guiding” does not prohibit “moving restriction” or “expensive
`mechanical assemblies.” Inst. Dec. 7.
`Patent Owner does not dispute the construction of “manually guiding”
`we adopted for purposes of institution, i.e. “moving/moved by hand, without
`robotic or kinematic support.” See PO Resp. 5–10. However, citing its
`
`
`3 As with the Decision to Institute, we hereinafter refer only to “manually
`guiding” for convenience purposes.
`4 An effector can be “a cutter, a drill, or a laser.” Ex. 1001, 12:22–23.
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`declarant, Dr. Howe, and dictionary definitions of the word “support,”
`Patent Owner contends a person of ordinary skill in the art would have
`understood the term “kinematic support” to mean mechanical assemblies
`that constrain or facilitate device movement to obtain a desired position or
`motion. Id. at 5–7 (citing, e.g., Ex. 2023 ¶¶ 42–43; Ex. 2012, 1180
`(definition of “support”)). For example, citing Dr. Howe, Patent Owner
`argues that the presence of “friction in the joints of a mechanical arm could
`provide kinematic support to maintain the position of the arm, or a motor
`could provide kinematic support for the movement of the arm.” Id. at 6
`(citing Ex. 2023 ¶ 42).
`As an initial matter, we reject Patent Owner’s attempted further
`construction of “kinematic support” as “mechanical assemblies that
`constrain or facilitate movement” as contrary to our explicit determination
`that the term “manually guiding” does not prohibit “moving restriction” or
`“expensive mechanical assemblies.” Inst. Dec. 8. In arguing for this further
`construction, Patent Owner also notes the “Background of the Invention
`[portion of the Specification] . . . describes supported systems when
`discussing the state of the art at the time of the invention in contrast to the
`claimed invention of manually guided systems.” PO Resp. 7–8 (citing Ex.
`1001, 3:25–6:65). However, the background states this was because
`“humans lack the ability to precisely orient their hands in a 3-D-reference
`coordinate system.” Ex. 1001, 2:10–12. In other words, precise surgery
`required robotic or interactive control over the tissue-removing effector,
`which substantially increased cost. See Ex. 1001, 2:14–18, 2:29–31.
`Indeed, the “Summary of the Invention” emphasizes that with the present
`invention “[c]omparable results can also be achieved by guiding the
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`instruments manually, without using robots.” Id. at 7:10–13 (emphasis
`added). Consequently, as we determined in the Decision to Institute, the
`invention intended to eliminate the necessity to have “robotic assemblies for
`guiding the instruments.” Inst. Dec. 8.
`As we pointed out previously, the prosecution history is consistent
`with this view. See id. For example, during prosecution the applicant stated
`that “[n]owhere does Glassman et al. teach or suggest manually guiding an
`effector to remove material from an object, in the absence of robotic control
`of the positioning of the effector.” Ex. 1003, 42–43 (emphasis added)).
`According to the Examiner, the “Glassman [prior art] teach[es] of a robotic
`surgical system that includes a manipulator arm that has a surgical tool.” Id.
`at 51–52 (emphasis added). As with the Specification, these file history
`statements support excluding robotic control, but do not support the Patent
`Owner’s view that the present invention excluded mechanical assemblies
`capable of support or passive movement restrictions.
`For its part, Petitioner argues our preliminary construction goes too
`far in precluding “kinematic support.” PO Resp. 5–10 (explaining that
`neither the Specification nor claim 26 require manually guiding to be
`mutually exclusive of kinetic support). As noted above, in the Decision on
`Institution, we relied on claim 26 and the Specification, column 12, lines 22–
`25, in determining that manually guiding precludes kinematic support. Inst.
`Dec. 8. Citing Dr. Davies testimony, Petitioner contends the Specification,
`which states “[t]he effector . . . is guided manually . . . (but can also be
`kinematically supported . . .),” could reasonably be read to mean that the
`effector can be both manually and kinematically supported. Pet. Reply 7
`(Ex. 1012 ¶ 13). We agree with Petitioner that this is a reasonable reading
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`of the Specification. We also agree claim 26 could reasonably be read to
`cover situations in which the effector is both manually arranged and
`kinematically arranged. Id. at 6. Consequently, we agree with Petitioner
`that our preliminary construction—by precluding “kinematic support”—is
`unnecessarily restrictive and not supported by the Specification or
`prosecution history. See Proxyconn, 789 F.3d at 1298. Rather, for the
`reasons discussed above, the record simply reflects that “‘manually guiding’
`requires the movement by a person’s hand as opposed to movement
`controlled by a robot,” as Petitioner’s declarant testifies. Ex. 1012 ¶ 9. At
`most, the record supports excluding robotic control from “manually
`guiding.” Accordingly, we modify our preliminary construction of
`“manually guiding” from “moving/moved by hand, without robotic or
`kinematic support” (which we noted does not prohibit “moving restrictions”
`or “expensive mechanical assemblies”) to “moving/moved by hand without
`robotic control.”
`
`B. Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
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`In that regard, an 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.” KSR, 550 U.S. at 418; see
`Translogic, 504 F.3d at 1259.
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`C. Obviousness of Claims 1, 3, 5–7, 9, 10, 16, 17,
`21, 26, 40, 45, 56, and 57 over Mushabac and Klimek
`For the reasons given below, after consideration of the arguments in
`the Petition, Patent Owner’s Response, and Petitioner’s Reply, and the
`evidence cited therein, we conclude that Petitioner has shown by a
`preponderance of the evidence that claims 1, 3, 5–7, 9, 10, 16, 17, 21, 26, 40,
`45, 56, and 57 of the ’417 patent are unpatentable, under 35 U.S.C. § 103, as
`the subject matter of those claims would have been obvious over the
`combination of Mushabac and Klimek. See Pet. 13–36.
`1. Mushabac (Ex. 1004)
`Mushabac describes a method for preparing a dental preparation, such
`as a dental implant, in a patient’s jaw using a computer to generate a
`graphical representation of the orientation of a drill in relation to pre-existing
`structures. Ex. 1004, Abstract, 1:13–18. Figure 12 of Mushabac is
`reproduced below:
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`Figure 12 shows a stylus 52 connected to pantograph arm 56 in
`accordance with the invention. Tracking CCD cameras 184, 186, and 188
`are positioned to track the stylus based on the movements of the pantograph
`arm 56 against reference frame plates 198, 200, and 202. Ex. 1004, 14:48–
`56. The stylus 52 is used for pre-operative planning (id. at 4:41–45, 14:55–
`61), but a drill is used in place of the stylus for the actual operation (id. at
`4:45–51, 12:22–33).
`In a pre-operative phase, the dentist may direct the computer to
`overlay a predefined tooth preparation on a three-dimensional representation
`of the tooth. Ex. 1004, 12:3–5. The computer may be programed to
`automatically select a possible tooth preparation, or the dentist may direct
`the computer to alter the graphic representation of the tooth, for example, by
`removing a layer of material from the tooth surface. Id. at 12:8–17. The
`dentist may use the computer to select a preformed tooth preparation
`corresponding to an implant or inlay. Id. at 17:20–45.
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`During the operation, a dentist guides the drill (or other cutting tool)
`while the computer 24 monitors the location of the operating tip. Ex. 1004,
`11:20–26. When the operating tip approaches a boundary defined to the
`computer during the pre-operative planning phase, the computer can display
`a color change or interrupt power to the drill. Id. at 11:25–34; 16:44–57.
`The computer 24 has memory loaded with encoded data corresponding to all
`preformed inlays in a kit, and, thus, may control machining operation to
`limit the range of motion to provide the tooth with the desired preparation.
`Id. at 17:46–65.
`2. Klimek (Ex. 1005)
`Klimek describes an “optical computer-aided surgery (CAS) device.”
`Ex. 1005, 1509. Klimek’s system includes a freehand probe, tracked by a
`passive-marker sensor system, linked to a computer image space on a
`patient’s CT or MRI scan. Id. at 1510. Infrared cameras track the markers
`attached to the surgical instrument. Id. Figure 3 is reproduced below:
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`Figure 3 shows a passive marker array that can be adapted to fit on
`any existing surgical instrument. Id. at 1511. In addition, low-profile
`fiducial markers are attached to the patient’s skin to allow the system to
`know the patient’s position in three-dimensional space relative to infrared
`cameras. Id. at 1510.
`3. Analysis
`In support of this asserted ground of unpatentability, Petitioner
`provides explanations as to how the subject matter of claims 1, 3, 5–7, 9, 10,
`16, 17, 21, 26, 40, 45, 56, and 57 is taught by Mushabac and Klimek. Pet.
`13–36. Petitioner also provides a proposed rationale for combining the
`teachings of Mushabac and Klimek. Id. at 24 (citing Ex. 1002 ¶¶ 136–140).
`Patent Owner does not dispute most of Petitioner’s mappings of
`Mushabac and Klimek to the limitations of claims 1 and 40, see id. at 19–24
`(citing Ex. 1004; Ex. 1002 ¶ 141 (claim chart)). For example, claim 1
`requires an “effector, wherein the effector defines a volume and has a
`predetermined geometry” and “removing and processing material from an
`object with the effector.” Ex. 1001, 17:40–45. We determine that Petitioner
`has shown that Mushabac’s drill 38 is such an effector, see Pet. 19–20
`(citing, e.g., Ex. 1004, 11:20–32, 16:44–57), because “drill 38 (FIG. 1) is
`then used to remove a portion of the subject tooth . . . [up] to a defined
`boundary.” Ex. 1004, 16:44–53.
`Claim 1 also requires “determining, using a navigation system,
`position and orientation of the effector in relation to at least one reference
`body.” Ex. 1001, 17:47–49. Petitioner has shown that both Mushabac and
`Klimek teach this limitation. Pet. 20–21 (citing, e.g., Ex. 1004, 25:44–55,
`27:27–47; Ex. 1005, 1510). Regarding Klimek, for example, Petitioner
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`relies on its teaching of a passive marker-based optical system wherein “[t]o
`provide link between patient anatomy and the diagnostic image data . . .
`[s]pecial low-profile fiducial markers were developed.” Ex. 1005, 1510.
`“Manually Guiding” Limitation
`Claim 1 also requires “manually guiding the effector in relation to
`[an] object.” Ex. 1001, 17:46. Petitioner relies on Mushabac’s teaching that
`the “dentist holds either the actual drilling instrument or a practice
`instrument in the patient’s mouth and manipulates it while watching monitor
`34.” Pet. 20 (quoting Ex. 1004, 25:35–37); see also Ex. 1002 ¶¶ 89–95.
`Patent Owner disputes Petitioner’s contention that Mushabac teaches
`this limitation. PO Resp. 11–16. In particular, Patent Owner contends
`Mushabac does not teach manually guiding the effector, because “Mushabac
`discloses a mechanical pantograph arm system, which is kinematically
`supported, and thus outside the scope of the claims of the ’417 patent.” PO
`Resp. 11 (citing Ex. 2023 ¶ 51). Referring to Figure 14, reproduced below,
`Patent Owner argues that Mushabac discloses a six-segment support arm
`that provides “kinematic support” by providing enough friction to maintain
`its position, such that the user—e.g., a dentist, does not have to hold up the
`arm to keep it in place. Id. at 13 (citing Ex. 1004, 15:32–39, 15:60–61); see
`also Ex. 2023 ¶ 64.
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`Figure 14 depicts an effector 338 and mechanical support arm 310. See Ex.
`1004, 15:32–44. As a result of the friction used to support the movement of
`arm 310, Patent Owner contends, Mushabac does not disclose manually
`guiding the effector without kinematic support. PO Resp. 16.
`Patent Owner’s position relies entirely on its interpretation of the term
`“kinematically supported”—in our construction of “manually guiding”—as
`including any mechanical linkage that provides enough friction to maintain
`support. PO Resp. 16. However, in the Decision to Institute, we specifically
`rejected Patent Owner’s proposed construction that would exclude any
`“expensive mechanical assemblies” or “moving restrictions.” Inst. Dec. 8–9.
`Thus, even under the preliminary construction of “manually guiding,” we
`would not be persuaded by this argument. In any event, we determine above
`that the construction of “manually guiding” is “moving/moved by hand
`without robotic control.” Although there is undisputed evidence that drill
`318 is moved by hand (i.e., “manually guiding the effector”), there is no
`evidence that support arm 310 does anything other than passively record
`movement and provide frictional support. See Pet. Reply 10–11; Ex. 1004,
`15:60–61, 15:64–16:4. That is, there is no evidence that support arm 310
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`IPR2015-00765
`Patent 7,346,417 B2
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`provides robotic control. Accordingly, Petitioner has shown that Mushabac
`teaches the “manually guiding” limitation of claim 1.
`Motivation to Combine
`Patent Owner also contends a person of ordinary skill in the art would
`not have been motivated to combine Mushabac with the tracking system of
`Klimek. PO Resp. 16–26. However, before addressing these specific
`arguments, we start with Patent Owner’s last argument first, which is that
`the “Petition provides no articulated rationale for the proposed
`combination,” id. at 16.
`An articulated rationale is a required part of an obviousness analysis.
`See KSR, 550 U.S. at 418. Here, Petitioner does propose a rationale by
`contending it would have been obvious to use the passive optical-based
`marker system of Klimek on the drill of Mushabac to obtain a more
`accurate, flexible, and robust navigation system than that provided by
`Mushabac’s optical pantograph system. See Pet. 24–25 (citing Ex. 1005,
`Figs. 1–3, 1512); Ex. 1002 ¶¶ 136–140. As an example, Petitioner contends
`that mounting optical markers, such as those disclosed in Klimek, directly on
`the drill 38 of Mushabac, would eliminate for the linkages, separate power
`sources, mechanical losses, and space restrictions required by Mushabac’s
`pantograph tracking system. Pet. 24–25; Ex. 1002 ¶ 138. We agree. We
`also give substantial weight to Dr. Davies’s testimony that Klimek teaches
`the advantages of passive marker technology as suitable for use on any
`common surgical instrument, such as the effector in Mushabac. See Ex.
`1002 ¶ 137. Based on this evidence, we agree with Petitioner’s conclusion
`that such a combination would be a substitution of known elements with
`predictable results. Pet. 25; see KSR, 550 U.S. at 416, 418.
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`As for the specific arguments for why a person of ordinary skill would
`not have made the proposed combination, Patent Owner provides the
`following summary:
`(1) Klimek’s proposed markers are impractical for the dental
`procedures discussed
`in Mushabac;
`(2)
`the
`lack of
`reproducibility of the Klimek system makes it unusable for
`dental procedures; and (3) Klimek’s suboptimal tracking system
`would not have provided any advantages or improvements to the
`tracking system disclosed in Mushabac and could lead to a loss
`of synergy by removing Mushabac’s multiple functions. (Ex.
`2023 at ¶¶ 84-89.) Moreover, the Petition provides no articulated
`rationale for the proposed combination.
`
`PO Resp. 16; see also id. at 17–26. We address these in turn.
`
`Patent Owner first argues that Klimek’s proposed markers are
`impractical for dental procedures because Klimek requires positioning
`external markers (for ear, nose, and throat surgery) on scalp areas or on a
`mouth piece placed into a patent’s mouth. PO Resp. 17 (citing Ex. 1005,
`1509–10). According to Patent Owner neither of these positions is practical
`for dental procedures (as addressed by Mushabac) because Klimek’s scalp
`markers would require shaving someone’s head and its alternative mouth
`piece would prevent access to the teeth. Id. (citing Ex. 2023 ¶¶ 80–81). We
`disagree.
`First, it is unnecessary for a combination to be the most desirable
`combination described in the prior art to provide motivation for making the
`combination. In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (“[T]he
`question is whether there is something in the prior art as a whole to suggest
`the desirability, and thus the obviousness, of making the combination, not
`whether there is something in the prior art as a whole to suggest that the
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`combination is the most desirable combination available.” (internal
`quotations omitted)). We find that the possible inconveniences alleged by
`Patent Owner are not sufficient to overcome the motivation in this instance.
`Second, as Petitioner points out, Mushabac is not limited to dental
`applications, but instead “its techniques ‘may be performed in areas of
`surgery other than dental surgery.’” Pet. Reply 19–20 (quoting Mushabac,
`26:37–39); see also Inst. Dec. 19. Thus, even if scalp markers would have
`been inconvenient for dental procedures, there is no persuasive evidence
`such markers are inconvenient for other types of surgery.5 Indeed, Klimek
`itself suggests they are suitable. Ex. 1005, 1514 (“The system was found to
`be useful in nearly all cases of revision paranasal sinus surgery with missing
`landmarks.”).
`
`Patent Owner next argues the error range and “low reproducibility” of
`the measurements in Klimek renders it unsuitable for the dental work
`discussed in Mushabac. PO Resp. 18–19 (citing Ex. 1005, 1513 (discussing
`error ranges between 0 and 2.8 mm, with an average of 0.86 mm); Ex. 2023
`¶ 84). As such, Patent Owner contends, Klimek’s high error range would
`have discouraged a person of ordinary skill and teach away from combining
`Klimek’s optical tracker for dental procedures. Id. at 20 (citing Ex. 2023
`¶¶ 82–84). Here again, we disagree because Mushabac is not limited to
`dental applications. As Patent Owner’s declarant, Dr. Howe, concedes, what
`constitutes an unacceptable outlier (i.e., error) “[v]ery much depends on the
`
`
`5 We also credit the testimony of Petitioner’s declarant, Dr. Davies, who
`stated that at the time of the claimed invention it would have been obvious to
`place such markers on a patient’s temple, which is substantially fixed and
`does not require shaving the patient’s head. Ex. 1012 ¶ 27.
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`application.” Ex. 1013, 139:17–21. As discussed in the previous paragraph,
`Klimek itself reports its optical marker system suitable for paranasal sinus
`surgery.
`Furthermore, we point out that Klimek, which is dated September
`1999, predates the ’417 patent’s earliest foreign application by over two
`years. Ex. 1001 at [22]. Dr. Davies testifies that by early 2001, persons of
`ordinary skill in the art had produced highly reliable passive markers similar
`to those described in Klimek. Ex. 1012 ¶ 29 (citing Ex. 1018). We give
`substantial weight to this testimony because, in describing the invention, the
`’765 patent specifically contemplates using optical markers, without
`mentioning accuracy or reproducibility problems. See Ex. 1001, 9:5–15.
`Moreover, Mushabac does not disclose the required level of accuracy in
`quantifiable terms. Thus, there is little evidence Klimek’s system is not
`sufficiently accurate and reproducible for use in Mushabac’s system.
`Consequently, we determine that Petitioner has shown that a person of
`ordinary skill in the art at the time of the invention would not have been
`discouraged from making the proposed combination.
`
`Finally, Patent Owner argues a person of ordinary skill would not
`have replaced the less effective and suboptimal Klimek optical tracking
`system for Mushabac’s superior pantograph-based tracking system. PO
`Resp. 22–23 (citing Ex. 2023 ¶¶ 88–89). However, as we pointed out, it is
`unnecessary for a combination to be the most desirable combination for
`there to be motivation to combine. Fulton, 391 F.3d at 1200. For example,
`as discussed above, Petitioner contends a benefit of using Klimek’s system
`is eliminating additional linkages, power sources, and space restrictions
`imposed by Mushabac’s system. Pet. 24–25. Even if this did result in a less
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`accurate system, as Patent Owner alleges (but which is not clear from the
`evidence), the overall combination would still be desirable if the resulting
`acc
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