Hans Dietl

Patent Trials and Appeals BoardJun 17, 2021

2020005877 (P.T.A.B. Jun. 17, 2021)

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. 13/380,623 12/23/2011 Hans Dietl 76156.0219 3982 57600 7590 06/17/2021 Holland & Hart LLP PO Box 11583 Salt Lake City, UT 84147 EXAMINER HOBAN, MELISSA A ART UNIT PAPER NUMBER 3774 NOTIFICATION DATE DELIVERY MODE 06/17/2021 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): patentdocket@hollandhart.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HANS DIETL ____________ Appeal 2020-005877 Application 13/380,623 Technology Center 3700 ____________ Before MICHAEL C. ASTORINO, BRADLEY B. BAYAT, and AMEE A. SHAH, Administrative Patent Judges. BAYAT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Hans Dietl (Appellant) appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1, 2, 4, 5, 7, and 8 which constitute all claims before us for review.1,2 An oral hearing was held on March 12, 2021. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Otto Bock Healthcare Products GmbH.” Appeal Br. 1 (pages not numbered). 2 Claims 9–24 are canceled and claims 25–36 are withdrawn from consideration. Final Act. 2–3. Appeal 2020-005877 Application 13/380,623 2 Sole Independent Claim on Appeal 1. A method for setting up a control of a technical orthopedic device and operating the technical orthopedic device, the technical orthopedic device configured to be placed against a body part of a patient and connected to sensors operable to record biometric data from muscles of the body part, the technical orthopedic device being an orthotic device or a prosthetic device, the biometric data including biometric signals, the method comprising: outputting a representation of an actuation of a limb as an invitation to the patient to carry out this actuation, the representation being output as at least one of an acoustic, a tactile stimulus, or a display, the limb comprising the body part or formerly extending from the body part; capturing, with the sensors, the biometric signals from muscles of the body part, the biometric signals being produced by the patient as a voluntary reaction in response to the invitation, the biometric signals defining a first signal pattern; associating the produced biometric signals with the actuation invited to be carried out; storing the signal association; after storing the signal association: capturing, with the sensors, additional biometric signals from the muscles of the body part, the additional biometric signals defining a second signal pattern; determining whether the second signal pattern matches the first signal pattern; activating the technical orthopedic device based on the stored signal association and the second signal pattern matching the first signal pattern; and electro-stimulating muscles connected to the actuation of the limb. Appeal Br. 9, Claims App. Appeal 2020-005877 Application 13/380,623 3 Rejection3 Claims 1, 2, 4, 5, 7, and 8 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Graupe (US 4,030,141, iss. June 21, 1977) and Labun et al. (US 5,748,845, iss. May 5, 1998, hereinafter “Labun”). OPINION In rejecting independent claim 1 under 35 U.S.C. § 103(a), the Examiner finds that Graupe, which is directed to an “EMG-based method for actuating a prosthetic appliance” (Final Act. 6), discloses all the steps of the claim but “does not teach electro-stimulating the muscles of the body part with electrical impulses.” Id. at 8. The Examiner turns to Labun, which is directed to a functional electrical stimulation system for controlling the movement of a limb, to cure that deficiency. Id. The Examiner determines: It would have been obvious to one having ordinary skill in the art at the time of the invention to modify the system of Graupe to include the use of electro-stimulation of the muscles of the body part with electrical impulses, in addition to drives, in order to synchronously control the operation of both the inactive muscles and the device so as to simultaneously control the motion of the limb from these two sources, as taught by Labun. Id. at 9. Alleging error in the rejection, Appellant argues “that the Examiner has not provided an adequate reason why one of ordinary skill in the art would combine the references in the asserted manner.” Appeal Br. 5. In response to Appellant’s argument, the Examiner modifies the rejection and states instead that “one of ordinary skill in the art would 3 The rejection under 35 U.S.C. § 112, 2nd paragraph, is withdrawn. Advisory Act. 1. Appeal 2020-005877 Application 13/380,623 4 recognize that modifying control of the prosthetic device of Graupe by incorporating a hybrid system that includes FES (functional electrical stimulation), in addition to drives, would provide a more complex and fluid motion to the prosthetic device (Labun; col. 2, lines 65-67 through col. 3, lines 1-2), and also provide an alternative solution if the inactive muscles are unsuitable for stimulation (Labun; col. 6, lines 2-6).” Ans. 3–4. We are persuaded the Examiner has not provided an adequate reason for the proposed modification. A claim is unpatentable under § 103 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). An invention “composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” Id. at 418. Instead, a determination of unpatentability on a ground of obviousness must include “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The obviousness evaluation “should be made explicit” and it “can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Id. The motivation and rationale for the combination does not adequately establish why an artisan would be inclined to do the modification proposed by the Examiner. Graupe is directed to an “EMG-actuated prosthesis for Appeal 2020-005877 Application 13/380,623 5 upper arm amputees.” Graupe 2:57–58. Graupe recognizes that a problem associated with actuating an EMG actuated prosthesis is “finding sufficient space on the stump of the lost limb for attaching the several electrodes required to perform more than the most elementary functions.” Id. at 3:13–15. This problem is acute, according to Graupe, “especially by above- elbow amputees where the stump area is small yet the functions to be performed are numerous.” Id. at 4:1–4. Graupe solves this problem by analyzing an EMG signal within a discrete time interval related to the elapsed time within which the patient’s mind initiates a given function and the prosthesis responds to carry it out. Id. at 5:63–68. Appellant contends that “the ‘intact muscles of the body part’ in Graupe is a reference to the muscles on the stump of the missing limb because the stump is the body part to which the prosthesis in Graupe is attached” and “Graupe teaches moving the prosthetic device with motorized drives.” Appeal Br. 5 (citing Graupe 13:57–63). Appellant asserts that “Labun teaches electrically stimulating inactive muscles of an impaired limb to move the limb.” Id. Appellant argues that the Examiner’s “two new reasons for combining Graupe and Labun in the asserted manner: (1) it would ‘provide a more complex and fluid motion to the prosthetic device (Labun; col. 2, lines 65–67 through col. 3, lines 1-2)’” and (2) it would “provide an alternative solution if the inactive muscles are unsuitable for stimulation (Labun; col. 6, lines 2–6)” are insufficient to support the rejection. Reply Br. 1. We agree. The Examiner’s reasoning does not explain why a person of ordinary skill, without the benefit of hindsight, would be motivated to modify Graupe’s system in the first place because the Examiner has not adequately Appeal 2020-005877 Application 13/380,623 6 shown why such a modification may be useful. The Examiner “maintains that it would have been obvious to one of ordinary skill in the art would [sic] have looked to Labun to modify the system of Graupe by adding electro- stimulation of the intact muscles of the body part of Graupe, in addition to using the drives, in order to provide a hybrid [sic] between an active system and a FES system so as to simultaneously control the motion of the limb from these two sources, as taught by Labun.” Ans. 4. Yet, the Examiner does not explain why an artisan would have been motivated to modify Graupe as the rejection proposes. For example, the advantage noted above by the Examiner in making the proposed modification describes Labun’s polynomial processor capabilities rather than using electrostimulation when muscles are unsuitable. See Reply Br. 1–2. On the record before us, the Examiner’s reason for the proposed modification lacks a rational underpinning. It is well settled that obviousness “cannot be sustained by mere conclusory statements.” Kahn, 441 F.3d at 988, accord KSR, 550 U.S. at 418. Accordingly, we do not sustain the rejection of independent claim 1 under 35 U.S.C. § 103(a). For the same reasons, we also do not sustain the rejection of claims 2, 4, 5, 7, and 8, which depend from claim 1. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4, 5, 7, 8 103(a) Graupe, Labun 1, 2, 4, 5, 7, 8 REVERSED