Ex Parte Alley et alDownload PDFPatent Trial and Appeal BoardMar 20, 201713663282 (P.T.A.B. Mar. 20, 2017) 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. 229.P001 6237 EXAMINER WATKINS, MARCIA LYNN ART UNIT PAPER NUMBER 3774 MAIL DATE DELIVERY MODE 13/663,282 10/29/2012 Randall D. Alley 43831 7590 03/21/2017 BERKELEY LAW & TECHNOLOGY GROUP, LLP 17933 NW Evergreen Parkway, Suite 250 BEAVERTON, OR 97006 03/21/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RANDALL D. ALLEY and T. WALLEY WILLIAMS, III Appeal 2017-002541 Application 13/663,2821 Technology Center 3700 Before MICHAEL C. ASTORINO, MATTHEW S. MEYERS, and ROBERT J. SILVERMAN, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’ decision rejecting claims 8—11 and 16—18. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 The Appellants identify Randall D. Alley as the real party in interest. Appeal Br. 3. Appeal 2017-002541 Application 13/663,282 ILLUSTRATIVE CLAIM 8. A prosthetic device for use by a patient having a limb that has been amputated, wherein the limb has a longitudinal axis and has a bone generally extending along the longitudinal axis, wherein the prosthetic device comprises: an enclosure portion configured for placement on the limb and having a plurality of compression portions and a plurality of relief portions, wherein the plurality of compression portions comprises three or more compression portions and the plurality of relief portions comprises three or more relief portions, wherein the plurality of compression portions and the plurality of relief portions form a unitary structure, wherein the plurality of compression portions and the plurality of relief portions further form an inner wall of the enclosure portion, wherein the inner wall is configured for encapsulating the limb along at least a portion of the longitudinal axis of the limb, wherein each of the plurality of compression portions is configured to exert a compressive force on a portion of the limb thereby providing motion capture of the bone and thereby causing excess portions of the limb to flow outwardly and into the plurality of relief portions, wherein each of the plurality of compression portions of the unitary structure is formed to exert the compressive force without a compressive force external to the unitary structure being exerted upon each of the plurality of compression portions, wherein the plurality of compression portions are disposed circumferentially around the limb during a time that the enclosure portion of the prosthetic device is on the limb, wherein each of the plurality of compression portions has a generally longitudinal shape and is disposed longitudinally along a direction of the 2 Appeal 2017-002541 Application 13/663,282 longitudinal axis of the limb during the time that the enclosure portion of the prosthetic device is on the limb, and wherein each of the plurality of relief portions has a generally longitudinal shape, is disposed between two of the compression portions, and is disposed longitudinally along the direction of the longitudinal axis of the limb during the time that the enclosure portion of the prosthetic device is on the limb. REJECTION Claims 8—1 land 16—18 are rejected under 35 U.S.C. § 103(a) as unpatentable over Dechamps (FR 2 539 616, pub. July 27, 1984) and Love (US 5,405,405, iss. Apr. 11, 1995). FINDINGS OF FACT We rely upon and adopt the Examiner’s findings stated in the Final Office Action at pages 2—7 and the Answer at pages 2—7. Additional findings of fact may appear in the Analysis below. ANALYSIS The Appellants advance five arguments regarding independent claims 8 and 16, which are argued together. Appeal Br. 15—26. Selecting claim 8 for analysis herein, these arguments are addressed, below. See 37 C.F.R. § 41.37(c)(l)(iv). Because, for the reasons that follow, the Appellants’ arguments are unpersuasive of Examiner error in the rejection of independent claim 8, and because claims 9-11 and 16—18 fall therewith (see Appeal Br. 17, 20, 21, 24, and 26), the rejection of claims 8—11 and 16—18 under 35 U.S.C. § 103(a) is sustained. 3 Appeal 2017-002541 Application 13/663,282 1. Whether the Rejection Relies Improperly upon a Per Se Rule The Examiner finds that Dechamps teaches a prosthetic device possessing the subject matter of claim 8, except that Dechamps — although it teaches the claimed “plurality of compression portions and a plurality of relief portions” — does not teach the recited “three or more” of each such structure. Final Action 2-4. The Examiner finds that Love teaches the claimed multiplication of compression and relief structures and that it would have been obvious to modify Dechamps, in view of Love, to have the claimed “three or more” compression and relief portions, in order to provide enhanced rotational stability to the Dechamps device. Id. at 4—5 (citing Love, col. 6,11. 40-43, Figs. 1,3,5). Further, the Final Office Action draws additional support from precedent recognizing that discerning an optimum value of a result-effective variable (i.e., the number of compression/relief elements), as in In reBoesch, 617 F.2d 272 (CCPA 1980), and that merely duplicating working parts taught (i.e., the compression/relief elements) in a prior art reference, as in St. Regis Paper Co. v. Bemis Co., Inc., 549 F.2d 833 (7th Cir. 1977), are emblematic of obviousness. Id. at 5. The Appellants argue that the rejection relies exclusively and improperly upon the notions set forth in the identified legal precedent, because such per se rules do not mandate a conclusion of obviousness. Appeal Br. 15—17. In response, the Answer states that the rejection properly combined the teachings of Dechamps and Love, while the additional rationales drawn from legal precedent further demonstrate the accuracy of the Examiner’s conclusion of obviousness. Answer 2—4. 4 Appeal 2017-002541 Application 13/663,282 In the Reply Brief, the Appellants also raise an issue not presented in the Appeal Brief— i.e., whether structures in Love, other than the compression and relief regions, provide rotational stability to the prosthetic device, such that the reason in the rejection for modifying Dechamps (by increasing the number of such regions) is illusory. See Reply Br. 3—6. Because this argument is raised for the first time in the Reply Brief, the argument is not properly presented; thus, we do not address it herein. 37 C.F.R. § 41.41 (b)(2) (“Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner’s answer, including any designated new ground of rejection, will not be considered by the Board for purposes of the present appeal, unless good cause is shown.”) Per se rules for determining obviousness are disfavored. In re Ochiai, 71 F.3d 1565, 1571 (Fed. Cir. 1995); In re Eli Lilly & Co., 902 F.2d 943, 947-48 (Fed. Cir. 1990) (“The uniform application of the law of ‘obviousness’ is essential to the commercial incentive that is the core of the patent system. The obligation of the decisionmaker is to apply the law consistently to the evidence for each new invention. All relevant facts must be considered, while recognizing that it is inappropriate to ‘squeez[e] new factual situations into preestablished pigeonholes.’”) (citing In re Yates, 663 F.2d 1054, 1056 n.4 (CCPA 1981)). The Examiner here does not rely exclusively on such principles in legal precedent, as the Appellants contend. Rather, the rejection is grounded properly in an analysis of the teachings of the references, reaching a determination that is further supported by reference to established legal 5 Appeal 2017-002541 Application 13/663,282 principles. Accordingly, the Appellants’ argument is not persuasive of error in the rejection of claim 8. 2. Whether the Combination of Teachings in the Rejection Would Render a Reference Unsatisfactory for its Intended Purpose The Appellants contend that the proposed combination of Dechamps and Love is improper, because it would render the prior art unsatisfactory for its intended purpose. Appeal Br. 18—20. Specifically, the Appellants argue that, because Love is constructed for a tight fit on a patient’s limb, the relief portions of Love would not provide sufficient room for “excess portions of the limb to flow outwardly,” as required by claim 8. Id. at 18—19 (citing Ex. B, Alley Declaration, p. 3). It is only by using the Love device on an “unintended patient” (i.e., having a limb that is too small for the sized device) that Love might satisfy this claimed feature. Id. at 19—20. However, the purportedly offending combination is not part of the Final Office Action that is the subject of the Appeal, but instead concerns a previous Office Action that is not presently before the Board. Id. at 19 (citing Office Action dated Jan. 6, 2015); see also Answer 4—5. Accordingly, this argument is not persuasive of error in the rejection of claim 8. 3. Whether the Combination or Modification of Teachings Changes the Principle of Operation The Appellants contend that the proposed combination of Dechamps and Love is improper, because it would change Dechamps’ principle of operation. Appeal Br. 20. Specifically, the Appellants argue that the flexible portions of Love compress the limb (through the application of an inflatable bladder) by expanding inwardly toward the wearer’s limb, 6 Appeal 2017-002541 Application 13/663,282 whereas the flexible portions of Dechamps expand outwardly, for the wearer’s comfort — different principles of operation. Id. at 21; see also Reply Br. 8. Yet, the Answer explains that Love is relied upon solely for its teaching of the number of compression and relief portions; the rejection does not rely upon the bodily incorporation envisioned in the Appellants’ argument. Answer 6. Accordingly, this argument is not persuasive of error in the rejection of claim 8. 4. Whether Love Teaches or Suggests “the plurality of compression portions and the plurality of reliefportions form a unitary structure ” The Appellants argue that the combination of Dechamps and Love does not teach or suggest “the plurality of compression portions and the plurality of relief portions form a unitary structure,” as in claim 8, because Love is a composite device having an expandable bladder between inner and outer sockets. Appeal Br. 23. Yet, the Examiner finds that Dechamps teaches the “unitary structure” and explains that the rejection does not rely upon Love for any such teaching. See Final Action 3^4; see also Answer 6. Because the rejection does not involve any purported teaching of the claimed “unitary structure” in Love, the Appellants’ argument is not persuasive of error in the rejection of claim 8. 7 Appeal 2017-002541 Application 13/663,282 5. Whether the Prior Art Teaches or Suggests “causing excess portions of the limb to flow outwardly and into the plurality of reliefportions ” The Appellants argue that the combination of Dechamps and Love does not teach or suggest “causing excess portions of the limb to flow outwardly and into the plurality of relief portions,” as in claim 8, because this feature is not present in Love. Appeal Br. 24—25 (citing Ex. B, Alley Declaration, p. 3). Yet, the rejection relies upon Dechamps — not Love — for this feature. See Final Action 3; see also Answer 6—7. Thus, the rejection does not hinge upon whether or not Love might also teach the same feature. Accordingly, the Appellants’ argument is not persuasive of error in the rejection of claim 8. DECISION We AFFIRM the Examiner’s decision rejecting claims 8—11 and 16— 18 under 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 8 Copy with citationCopy as parenthetical citation