Ex Parte Besendorfer

Patent Trial and Appeal Board

May 30, 2014

11713331 (P.T.A.B. May. 30, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/713,331 03/02/2007 Jeffrey R. Besendorfer 40325-0004 7012
20480 7590 06/02/2014
STEVEN L. NICHOLS
Van Cott, Bagley, Cornwall & McCarthy
36 South State Street
SUITE 1900
SALT LAKE CITY, UT 84111
EXAMINER
THANH, QUANG D
ART UNIT PAPER NUMBER
3771
MAIL DATE DELIVERY MODE
06/02/2014 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 JEFFREY R. BESENDORFER
____________

Appeal 2012-006461
Application 11/713,331
Technology Center 3700
____________

Before ERIC B. GRIMES, JEFFREY N. FREDMAN, and
JAMES C. HOUSEL, Administrative Patent Judges.

HOUSEL, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-7, 9-16, 22-26, and 28-37. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.2

1 Appellant identifies the Real Party in Interest in this appeal as Therapease
Management, LLC. App. Br. 2.
2 Our decision refers to Appellant’s Appeal Brief (App. Br.) filed November
16, 2011, the Examiner’s Answer (Ans.) mailed January 20, 2012, and
Appellant’s Reply Brief (Reply Br.) filed March 15, 2012.
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STATEMENT OF THE CASE
The invention relates to a joint rehabilitation method and apparatus
allowing the user to dynamically control movement of a limb support
mechanism during flexion, extension, and joint rotation excercises. Spec.
[0017], [0019]. The apparatus includes a main frame, a limb support
assembly, a drive train assembly, and a user-operated dynamic control
system. Id. at [0018].
REJECTIONS
The Examiner maintains, and Appellant appeals, the following
rejections:
1) Claims 1-3, 5, 9, 26, 34, and 35 under 35 U.S.C. § 102(b) as
anticipated by Hubbard3 or, in the alternative, under 35 U.S.C. §
103(a) as unpatentable over Hubbard in view of Wolan;4
2) Claims 1-5, 9-11, 34, and 36 under 35 U.S.C. § 102(b) as being
clearly anticipated by Splane, Jr.;5
3) Claims 12 and 25 under 35 U.S.C. § 103(a) as being unpatentable
over Splane, Jr.;
4) Claims 13 and 14 under 35 U.S.C. § 103(a) as being unpatentable
over Splane, Jr. in view of Main6;

3 US 6,464,652 B1, issued October 15, 2002.
4 US 5,776,084, issued July 7, 1998.
5 US 6,692,451 B2, issued February 17, 2004.
6 US 2002/0193710 A1, published December 19, 2002.
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5) Claims 1, 6 and 7 under 35 U.S.C. § 103(a) as being unpatentable
over Primic7 in view of Hubbard;
6) Claims 10, 15-16, 22, and 24 under 35 U.S.C. § 103(a) as being
unpatentable over Sweeny8 in view of Splane, Jr.;
7) Claim 23 under 35 U.S.C. §103(a) as being unpatentable over
Sweeny in view of Splane, Jr. and further in view of Garnies;9
8) Claims 1, 26, 28-30, 33, and 37 under 35 U.S.C. § 103(a) as being
unpatentable over Sweeny in view of Hubbard; and
9) Claims 31 and 32 under 35 U.S.C. § 103(a) as being unpatentable
over Sweeny and Hubbard, and further in view of Main.
With regard to each of rejections 1, 2, 5, and 6, Appellant presents
arguments addressing the included independent claims only (claim 1 in
rejection 1; claims 1 and 10 in rejection 2, claim 1 in rejection 5; and claim
10 in rejection 6). The remaining claims in rejections 1, 2, 5, and 6 stand or
fall with their respective independent claim.
With regard to rejection 8, Appellant separately argues claims 1, 26
and 37 only. The remaining claims in rejection 8 stand or fall with their
respective independent claim. 37 C.F.R. § 41.37(c)(1)(vii).
Appellant has waived additional arguments with respect to rejections
3, 4, 7, and 9 (App. Br. 19, 21). Thus, our disposition of claim 10 in
rejection 2 will determine the disposition of the claims in rejections 3 and 4;
our disposition of claim 10 in rejection 6 will determine the disposition of

7 US 5,300,090, issued April 5, 1994.
8 US 5,207,216, issued May 4, 1993.
9 US 5,730,706, issued March 24, 1998.
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claim 23 in rejection 7; and our disposition of claim 26 in rejection 8 will
determine the disposition of the claims in rejection 9. See Hyatt v. Dudas,
551 F.3d 1307, 1314 (Fed. Cir. 2008) (“In the event of such a waiver, the
PTO may affirm the rejection of the group of claims that the examiner
rejected on that ground without considering the merits of those rejections.”).
Independent claims 1, 10, and 26, and dependent claim 37 are
reproduced below:
1. A human joint rehabilitation apparatus, said apparatus
comprising:
a movable platform configured to support a portion of a
patient's body including a joint;
a motorized mechanical energy source configured to
move at least a portion of said platform to apply motion to said
joint; and
a control with which said patient, at any and all times
during use of said rehabilitation apparatus, dynamically
controls said motorized mechanical energy source to control
specifically whether and to what extent said joint moves.
10. A patient-controlled joint rehabilitation apparatus,
comprising:
a support table;
a motor;
a drive train assembly comprising an input mechanically
coupled to said motor and an output mechanically coupled to a
driveshaft;
a limb support assembly configured to provide movement
of a specified joint, said limb support assembly being attached
to said support table and coupled to said driveshaft; and
a patient-operated dynamic control system in
communication with the motor and configured to adjust
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positioning of the limb support assembly by controlling said
motor in response to input from said patient.
26. A method of exercising a joint, comprising:
supporting a portion of a patient's body including a joint
on a movable platform;
receiving dynamic control input from a patient through a
control unit; and
dynamically controlling a motorized mechanical energy
source to dictate whether and to what extent said joint moves
according to said input received from said patient, such that
said patient controls starting time, stop time, hold time and
angle of flexion or extension during exercise of said joint.
37. The apparatus of claim 1, wherein said joint is a patient's
knee, said movable platform being configured to separately
support upper and lower potions of a patient's leg, said
motorized mechanical energy source configured to cause
movement of said patient's knee such that, with said control,
patient input dictates when and to what extent said knee is bent
or extended.
App. Br. 23-25, 27-29, Claims App’x.
ANALYSIS
After careful consideration of the respective positions of the Examiner
and Appellant, we find a preponderance of the evidence supports the
Examiner’s decision rejecting claims 1-7, 9-16, 22-26, and 28-37. We will
sustain the Examiner’s Section 102(b) and 103(a) rejections for the reasons
expressed in the Answer with the comments below added for emphasis.
Rejection 1: § 102(b) as anticipated by Hubbard
The Examiner finds Hubbard discloses a human joint rehabilitation
apparatus comprising a moveable platform 136 configured to support a
portion of a patient’s body including a joint, a motorized mechanical energy
source 90 configured to move at least a portion 135 of the platform 136 to
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apply motion to the joint, and a control 174 which allows the patient, at any
and all times during use, to dynamically control the source to control
specifically whether and to what extent the joint moves. Ans. 5. The
Examiner notes Hubbard does not explicitly teach the hydraulic cylinder 90
is a motor or is motor driven, but finds such is inherent since the hydraulic
cylinder converts energy from hydraulic fluid pressure to mechanical
motion, and the hydraulic fluid pressure is conventionally generated by a
motor-driven pump. Id. at 5-6. The Examiner acknowledges Hubbard’s
apparatus is intended to stretch muscles, but nonetheless finds the user
controls movement of the joint attached to the corresponding muscle via the
hand controller 174. Ans. 14. Thus, the Examiner finds Hubbard teaches
dynamic control to control specifically whether and to what extent the
muscle moves and therefore to control specifically whether and to what
extent the joint moves. Id. at 15.
Appellant argues “[a]ny movement of a joint by Hubbard is incidental
to the stretching of a muscle.” App. Br. 10. Appellant also asserts that
Hubbard does not teach a control as required in claim 1, where the patient
controls specifically whether and to what extent the joint moves. Id.
Appellant contends the Examiner’s finding above is illogical. Reply Br. 6.
Appellant urges that incidental movement of a joint while stretching muscles
is not specifically controlling whether and to what extent the joint moves.
Id. With regard to claim 26, Appellant argues Hubbard fails to teach or
suggest a method in which “a joint moves according to said input received
from said patient, such that said patient controls . . . angle of flexion or
extension during exercise of said joint.” App. Br. 16.
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We do not find Appellant’s arguments persuasive of error in the
Examiner’s findings. As the Examiner finds, joints and muscles are
physically connected such that stretching muscles moves joints and vice
versa. Appellant offers no rebuttal to this finding. Indeed, movement of
joints in the human body is accomplished through the flexure and relaxation
of muscle. We see no difference in whether one controls the degree of joint
movement or the degree of muscle stretching in performing joint and/or
muscle rehabilitation therapy. Therefore, stretching of a muscle requires
movement of its associated joint such that specifically controlling the degree
of stretching likewise specifically controls the degree of joint movement and
vice versa. It follows that we will sustain the Examiner’s § 102(b) rejection
based on Hubbard.

Rejection 1: § 103(a) as unpatentable over Hubbard and Wolan
Although the Examiner finds Hubbard anticipates the claim 1
apparatus, the Examiner alternatively looks to Wolan for teaching a
motorized hydraulic system (Figure 8) having a motor 88 and hydraulic
pump 90 for moving a seatback in a rehabilitation apparatus. Ans. 6. The
Examiner concludes that use of a motorized hydraulic system having a
motor for driving Hubbard’s hydraulic cylinder would have been obvious in
order to operate Hubbard’s apparatus. Id.
Appellant does not contest the basis of the Examiner’s obviousness
rejection but instead relies on his arguments above as to Hubbard. Appellant
then argues that Wolan fails to teach any patient control, but does not argue
the basis of the Examiner’s proposed combination of Hubbard and Wolan.
App. Br. 11. Appellant however directs our attention to the Declaration
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under 37 CFR § 1.132 of Steven L. Nichols, as evidence of commercial
success, long-felt need in the art and unexpected, advantageous results. Id.
at 13-15. Therein, declarant provides letters “from those skilled in this art
regarding the claimed invention.” Id. at 13. Appellant notes in particular
the letter of Steven Orrock, a physical therapist, which states in part,
“patients LOVE being in control of the range of motion process,” and
“[t]here is no substitute out there on the market, that I’m aware of.” Id. at
14. Moreover, Appellant asserts that these letters are from “experts [who]
are presumed to understand and know the state of the art.” Id. at 15.
Appellant contends the Examiner, by finding “that the claimed feature of
continuous and dynamic control by the patient is old and well known” as
taught by Hubbard, fails to accord appropriate weight to Appellant’s
evidence. Id.
Initially, we note Appellant has failed to establish the expert status of
the letters’ authors. No credentials or other data have been provided as to
the education, experience, and knowledge of those authors. Without such
data, it is not possible to say that those authors are or are not experts in this
technology. For our consideration, these letters will be taken as consumer
reaction to the merits of the purchased apparatus.
Appellant has failed to prove the claimed apparatus is commercially
successful or that the allegedly increased sales result from the merits of the
claimed invention. Appellant provides no evidence regarding the volume of
sales of apparatus incorporating the features of claim 1, much less
comparing such volume to that of competing apparatus. As such, we cannot
say that Appellant’s invention is or is not commercially successful. Even if
the letters Appellant submits were adequate to demonstrate commercial
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success, Appellant has not demonstrated that these sales were a direct result
of the unique characteristics of the claimed invention as opposed to other
economic and commercial factors unrelated to the quality of the claimed
subject matter. In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). In this
regard, we note we have already sustained Hubbard as an anticipatory
teaching for a dynamic patient control as recited in claim 1. Thus, this
feature is not a unique characteristic of the claimed invention. The dynamic
patient control which the Orrock letter indicates that patients love and of
which he is not aware of any substitute in the market is not the basis of the
Examiner’s proposed combination of Hubbard and Wolan. As such,
Appellant has failed to prove a nexus between the sales and the merits of the
claimed invention. See Cable Elec. Products, Inc. v. Genmark, Inc., 770
F.2d 1015, 1027 (Fed. Cir. 1985).
Likewise, Appellant’s evidence fails to establish a long-felt but
unsolved need in the art.10 Appellant fails to present any evidence of a long-
standing problem or long-standing need in the art. In re Kahn, 441 F.3d
977, 985 (Fed. Cir. 2006). Further, the letters, while providing some
indication of a need in the market for joint rehabilitative apparatus having
dynamic patient control, fail to establish the art lacked a solution to that
need. The Examiner presented evidence in Hubbard that continuous and
dynamic patient control of joint movement was known in the art. It is this
very feature that Appellant argues is the solution to an unsolved need. Geo.
M. Martin Co. v. Alliance Machine Systems Intern. LLC, 618 F.3d 1294,
1305 (“Where the differences between the prior art and the claimed

10 See Monarch Knitting Machinery Corp. v. Sulzer Morat GmbH, 139 F.3d
877, 884 (Fed. Cir. 1998) (“The relevant secondary consideration is ‘long-
felt but unsolved need,’ not long-felt need in isolation.”)
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invention are as minimal as they are here, however, it cannot be said that any
long-felt need was unsolved.”)
Finally, as to Appellant’s argument that the evidence shows
unexpected, advantageous results, the Declaration fails to support this
argument. The Examiner finds Appellant’s Declaration provides “numerous
letters from health care professionals, which are merely opinions from those
skilled in the field,” and therefore fails to set forth facts in support of this
argument. Ans. 16. In this regard, the Examiner finds Hubbard establishes
“that the claimed feature of continuous and dynamic control by the patient is
old and well known.” Id. “[I]t is well settled that unexpected results must
be established by factual evidence. ‘Mere argument or conclusory
statements in the specification does not suffice.’” In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997) (quoting In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984)).
Because we are neither persuaded by Appellant’s arguments as to
Hubbard nor by Appellant’s declaration evidence, we find no error in the
Examiner’s prima facie obviousness rejection over the proposed
combination of Hubbard and Wolan.

Rejection 2: § 102(b) as anticipated by Splane, Jr.
The Examiner finds Splane, Jr. teaches a human joint rehabilitation
apparatus comprising a moveable platform 10, a support table 14, a
motorized mechanical energy source 64 configured to move at least a
portion 26 of the platform, and a control allowing the patient, at any and all
times during use, to dynamically control the motorized energy source. Ans.
7. In particular, the Examiner finds Splane, Jr.’s control may be a remote
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control, hand operated switch device 68 connected to a control unit 28 by a
cable 70 so as to enable the operation of the apparatus to be controlled by the
user during use. Id. The Examiner further finds Splane, Jr.’s device 68 is or
may include a “kill” switch to enable the user to immediately stop operation
of the apparatus, and may optionally include other functions such as motor
speed. Id. As such, the Examiner finds Splane, Jr.’s apparatus provides the
user with dynamic control of the extent of joint movement by killing
operation at any point during use. Id. at 7-8. Moreover, the Examiner finds
Splane, Jr.’s motorized mechanical energy source includes a motor and drive
train assembly 56 coupled to a limb support assembly 26, wherein the device
68 is a patient-controlled dynamic control system configured to adjust
positioning of the assembly 26 by adjusting the position from one side to the
other. Id. at 8.
Appellant argues that Splane, Jr. “merely teaches a kill switch and
basic motor speed control.” App. Br. 11. Appellant also contends that the
Examiner’s interpretation of the claim terms, allowing for a kill switch to
read on a dynamic control, is unreasonable. Id. According to Appellant
“killing a process is not the same thing as continuing the [sic, to]
dynamically control that process.” Id. at 11-12. Appellant asserts that a kill
switch can only be used to end operation at which time the motor cannot
adjust the positioning of the limb support assembly. Id. at 12, 18; Reply Br.
6-7. As such, Appellant argues Splane, Jr.’s kill switch is distinguishable
from the claimed dynamic control. Id.
We do not find Appellant’s arguments persuasive. As the Examiner
indicates, Splane, Jr.’s kill switch may be used at any and all points in the
operation of the device to kill the operation. Ans. 15. By killing operation
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of the device when the support assembly is at a particular position, the user
has controlled the support assembly’s position. Id. Further, although
Appellant discounts Splane, Jr.’s optional motor speed control, this control
defines the angular motion of the support assembly. With such motor speed
control and a kill switch, we find the user has dynamic control of the device
at any and all times during operation of the device to adjust the positioning
of the support assembly. This is all that is required for dynamic control as
defined in Appellant’s Specification, ¶ [0017]:
When the patient manipulates a dynamic control system, angular
motion of the limb support mechanism is precisely controlled so that
the patient can easily move his/her own limb through a substantially
full range of motion (full extension to substantially full flexion) and/or
joint rotation, at a desired speed and hold a position of flexion or
extension or at an angle of joint rotation for a desired duration,
thereby managing the personal factors of pain and stiffness.

Although Splane, Jr.’s control is not the same as that of Hubbard and
Appellant’s specific disclosed embodiments, Appellant fails to identify how
Splane, Jr.’s motor speed and kill switch control does not read on dynamic
control as broadly defined in the Specification. We therefore will sustain the
Examiner’s § 102(b) anticipation rejection based on Splane, Jr.

Rejection 5: § 103(a) as unpatentable over Primic in view of Hubbard
The Examiner finds Primic teaches a human joint rehabilitation
apparatus comprising a moveable platform 1, 2, a motorized mechanical
energy source (Figures 6 and 7), and a control 100 with which the patient
controls the motorized mechanical energy source to control whether and to
what extent the joint moves. Ans. 9. Further, the Examiner finds Primic’s
control includes a keypad control panel to permit control of various elements
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of the apparatus in sequence and at the desired speed for a selected time
period. Id. The Examiner concedes Primic appears silent with regard to
whether the control allows the user to dynamically control the apparatus at
any and all times during use. Id. Nevertheless, the Examiner finds such
dynamic control is old and well known as taught by Hubbard. Id.
Therefore, the Examiner concludes it would have been obvious to have
provided Primic with dynamic control as taught by Hubbard in order to
allow the user to change to what extent the joint moves due to pain or
fatigue. Id.
Appellant relies on previous arguments raised against Hubbard and
does not otherwise contest the propriety of the Examiner’s proposed
combination of Primic and Hubbard. As we have not found Appellant’s
previous arguments regarding Hubbard persuasive, we will sustain the
Examiner’s § 103(a) rejection over the combination of Primic and Hubbard.

Rejection 6: § 103(a) as unpatentable over Sweeny in view of Splane, Jr.
The Examiner finds Sweeny teaches a rehabilitation apparatus (Figure
1) comprising a support table 1, a motor 24, a drive train assembly 25, a
limb support assembly 4-7, 28, 31, 33, 34, and a control 103 to adjust the
positioning of the limb support assembly by controlling the speed and timer.
Ans. 10. The Examiner concedes Sweeny appears silent with regard to
whether the control allows the user to dynamically control the apparatus
during use. Id. Nevertheless, the Examiner finds such dynamic control is
well known as taught by Splane, Jr. in the controller 68. Id. Therefore, the
Examiner concludes it would have been obvious to have provided Sweeny
with dynamic control as taught by Splane, Jr. in order to allow the user to
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adjust the positioning of the limb and kill the operation if the movement is
causing pain. Id.
Appellant argues Sweeny teaches a machine for simulating walking
with only the speed being controlled. App. Br. 11, 18; Reply Br. 11.
Appellant contends Sweeny does not teach the claimed patient-operated
dynamic control system configured to adjust positioning of the limb support
assembly. Id. Appellant then relies on previous arguments raised against
Splane, Jr. and does not otherwise contest the propriety of the Examiner’s
proposed combination of Sweeny and Splane, Jr.
Appellant’s arguments are not persuasive. Although the Examiner
acknowledges that Sweeny fails to teach the claimed claimed patient-
operated dynamic control system configured to adjust positioning of the
limb support assembly, the Examiner finds Splane, Jr. suggests the use of
such patient-operated control in order to allow the user to adjust the
positioning of the limb and kill the operation if the movement is causing
pain. Ans. 10. Further, as the Examiner finds, use of Splane, Jr.’s patient-
operated control including a kill switch enables the patient to kill or end the
operation at any and all times during use, thereby determining the position of
the limb support assembly. Id. at 18. Appellant has not identified any
reason why the Examiner’s proposed combination of Sweeny and Splane, Jr.
would not result in the claimed invention with a reasonable expectation of
success. As we have not found Appellant’s previous arguments regarding
Splane, Jr. persuasive, we will sustain the Examiner’s § 103(a) rejection
over the combination of Sweeny and Splane, Jr.

Rejection 8: § 103(a) as unpatentable over Sweeny in view of Hubbard
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The Examiner finds Sweeny teaches a rehabilitation apparatus (Figure
1) comprising a support table 1, a motor 24, a drive train assembly 25, a
limb support assembly 4-7, 28, 31, 33, 34, and a control 103 to adjust the
positioning of the limb support assembly by controlling the speed and timer.
Ans. 13. The Examiner concedes Sweeny appears silent with regard to
whether the control allows the user to dynamically control the apparatus
during use. Id. Nevertheless, the Examiner finds such dynamic control is
well known as taught by Hubbard in the controller 174, which allows the
patient, at any and all times during use, to dynamically control via the
mechanized energy source specifically whether and to what extent the joint
moves. Id. Therefore, the Examiner concludes it would have been obvious
to have provided Sweeny with dynamic control as taught by Hubbard in
order for the patient to control the movement of the joint so the patient can
slow it down or even stop it if the movement is causing too much pain. Id.
Appellant argues Sweeny teaches a machine for simulating walking
with only the speed being controlled. App. Br. 11, 18; Reply Br. 11.
Appellant contends Sweeny does not teach the claimed patient-operated
dynamic control system configured to adjust positioning of the limb support
assembly. Id. Appellant then relies on previous arguments raised against
Hubbard and does not otherwise contest the propriety of the Examiner’s
proposed combination of Sweeny and Hubbard as applied to claims 1 and
26.
Appellant’s arguments are not persuasive. Although the Examiner
acknowledges that Sweeny fails to teach the claimed claimed patient-
operated dynamic control system configured to adjust positioning of the
limb support assembly, the Examiner finds Hubbard suggests the use of such
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patient-operated control in order to allows the patient at any and all times
during use to dynamically control the motorized mechanical energy source
to control specifically whether and to what extent the joint moves. Ans. 13.
Further, as the Examiner finds, use of Hubbard’s patient-operated control
enables the patient to control the positioning of the limb in order for the
patient to control the movement of the joint so the patient can slow it down
or even stop it if the movement is causing too much pain. Id. Appellant has
not identified any reason why the Examiner’s proposed combination of
Sweeny and Hubbard would not result in the claimed invention with a
reasonable expectation of success. As we have not found Appellant’s
previous arguments regarding Hubbard persuasive, we will sustain the
Examiner’s § 103(a) rejection over the combination of Sweeny and
Hubbard.
With regard to claim 37, the Examiner finds Sweeny teaches
supporting at least one leg on a moveable platform such that a portion of the
patient’s body is supported that includes a knee joint. Ans. 18. Further,
although conceding Sweeny is silent regarding patient dynamic control
during use, the Examiner finds Sweeny’s apparatus is capable of actuating a
patient’s knee joint in a simulated walking motion. Id. at 19. Appellant
contends the rejection provides no explanation of how the prior art teaches
or suggests all the claimed features, and is therefore legally insufficient.
App. Br. 20. Appellant also argues the only control Sweeny offers is speed.
Id. According to Appellant, Sweeny’s device is physically incapable of
allowing “patient input [that] dictates when and to what extent said knee is
bent or extended.” Id. at 21. Therefore, Appellant urges that Sweeny does
not teach or suggest a “motorized mechanical energy source configured to
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cause movement of said patient’s knee such that, with said control, patient
input dictates when and to what extent said knee is bent or extended.” Id. at
20, quoting claim 37.
Appellant further contends Hubbard has nothing to do with a device
allowing such patient control of when and to what extent a knee is bent or
extended. Id. Appellant argues it is only through impermissible hindsight
that Hubbard’s patient control could be applied to Sweeny to arrive at the
claim 37 structure. Id. at 21. Appellant asserts that “doing so would
necessarily disrupt[ ] Sweeny’s stated purpose of providing a simulated
walking motion,” which precludes a finding of obviousness. Id.
We do not find Appellant’s arguments persuasive.
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant’s
disclosure, such a reconstruction is proper.

In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). In assessing
whether a claim to a combination of prior art elements would have been
obvious, the question to be asked is whether the improvement of the claim is
more than the predictable use of prior art elements according to their
established functions. KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007). “[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.” Id. at 418.
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The Examiner finds that the basis for the combination of Sweeny and
Hubbard takes into account only knowledge of one of ordinary skill in the
art, and does not rely on Appellant’s disclosure. Id. at 20. Appellant has not
identified error in this finding, nor does Appellant identify how the proposed
combination would disrupt Sweeny’s simulated walking motion. Indeed, as
the Examiner finds, the application of patient control as taught by Hubbard
in Sweeny’s apparatus would enable the user to initiate movement, thereby
dictating when the knee is bent or extended. Further, such patient control
would also enable the user to terminate movement, thereby dictating to what
extent the knee is bent or extended.

ORDER
Upon consideration of the record, and for the reasons given above and
in the Answer, it is
ORDERED that the decision of the Examiner rejecting claims 1-3, 5,
9, 26, 34, and 35 under 35 U.S.C. § 102(b) as anticipated by Hubbard or, in
the alternative, under 35 U.S.C. § 103(a) as unpatentable over Hubbard in
view of Wolan, is affirmed;
ORDERED that the decision of the Examiner rejecting claims 1-5, 9-
11, 34, and 36 under 35 U.S.C. § 102(b) as being clearly anticipated by
Splane, Jr., is affirmed;
ORDERED that the decision of the Examiner rejecting claims 12 and
25 under 35 U.S.C. § 103(a) as being unpatentable over Splane, Jr., is
affirmed;
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ORDERED that the decision of the Examiner rejecting claims 13 and
14 under 35 U.S.C. § 103(a) as being unpatentable over Splane, Jr. in view
of Main, is affirmed;
ORDERED that the decision of the Examiner rejecting claims 1, 6 and
7 under 35 U.S.C. § 103(a) as being unpatentable over Primic in view of
Hubbard, is affirmed;
ORDERED that the decision of the Examiner rejecting claims 10, 15-
16, 22, and 24 under 35 U.S.C. § 103(a) as being unpatentable over Sweeny
in view of Splane, Jr., is affirmed;
ORDERED that the decision of the Examiner rejecting claim 23 under
35 U.S.C. §103(a) as being unpatentable over Sweeny in view of Splane, Jr.
and further in view of Garnies, is affirmed;
ORDERED that the decision of the Examiner rejecting claims 1, 26,
28-30, 33, and 37 under 35 U.S.C. § 103(a) as being unpatentable over
Sweeny in view of Hubbard, is affirmed;
ORDERED that the decision of the Examiner rejecting claims 31 and
32 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Sweeny
and Hubbard, and further in view of Main, is affirmed; and
FURTHER ORDERED that no time period for taking any subsequent
action in connection with this appeal may be extended under 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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