Ex Parte Alley et al

Patent Trial and Appeal Board

Mar 20, 2017

13663282 (P.T.A.B. Mar. 20, 2017)

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