Dennis Walter

Patent Trials and Appeals Board

Jan 27, 2020

15315537 - (D) (P.T.A.B. Jan. 27, 2020)

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.
15/315,537 12/01/2016 Dennis Walter GLEISS-56921 6122
86378 7590 01/27/2020
Pearne & Gordon LLP
1801 East 9th Street
Suite 1200
Cleveland, OH 44114-3108
EXAMINER
BAHENA, CHRISTIE L.
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
01/27/2020 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):
patdocket@pearne.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DENNIS WALTER
Appeal 2019-002044
Application 15/315,537
Technology Center 3700
BEFORE HUBERT C. LORIN, NINA L. MEDLOCK, and
MATTHEW S. MEYERS, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 3–12 and 15.2 We have jurisdiction
under 35 U.S.C. § 6(b).

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Uniprox GmbH &
Co. KG. Appeal Br. 2.
2 Appellant incorrectly states that the “application includes claims 3–10 and
15” (Appeal Br. 4). In the after-final amendment filed July 16, 2018,
Appellant canceled claims 11 and 12. However, that amendment was not
entered. We treat the Appellant’s appeal as appealing the rejection of
claims 3–12 and 15.
Appeal 2019-002044
Application 15/315,537

2
We REVERSE.
CLAIMED SUBJECT MATTER
The claims are directed to a prosthesis liner for application to a limb
stump. Claim 15, reproduced below, is illustrative of the claimed subject
matter:
15. Prosthesis liner for application to a limb stump, with an
elastic liner layer of elastomer, wherein the liner layer has pores
in at least one distal portion thereof, wherein the pores are closed
in a relaxed state of the liner layer and become opened by
stretching of the liner layer on the limb stump during movement.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Richter et al. US 2011/0022171 A1 Jan. 27, 2011
McCarthy US 2012/0191218 A1 July 26, 2012
John F. Schulte, Prosthetic Socks The Foundation for a Good Fit,
inMotion Volume 11, Issue 2 March/April 2001 (“Schulte”).

REJECTIONS
1. Claims 3, 4, 6, 8, 9, 11, 12, and 15 are rejected under 35 U.S.C.
§ 102(a)(1) as anticipated by McCarthy.3
2. Claim 7 is rejected under 35 U.S.C. § 103 as unpatentable over
McCarthy.

3 Although the heading of the rejection lists claim 2 (Final Act. 2; Supp.
Ans. 3), claim 2 was canceled in the amendment filed August 18, 2017 and
is not addressed in the body of the rejection. Claims 4, 9, 11, and 12,
although not listed in the heading of the rejection, are rejected under
35 U.S.C. § 102(a)(1) as anticipated by McCarthy (Final Act. 3–4).
Appeal 2019-002044
Application 15/315,537

3
3. Claim 5 is rejected under 35 U.S.C. § 103 as unpatentable over
McCarthy and Schulte.
4. Claim 10 is rejected under 35 U.S.C. § 102(a)(1) as anticipated by
McCarthy or alternatively under 35 U.S.C. § 103 as unpatentable over
McCarthy and Richter.
OPINION
The rejection of claims 3, 4, 6, 8, 9, 11, 12, and 15 under 35 U.S.C.
§ 102(a)(1) as anticipated by McCarthy.
Independent claim 15, and thus dependent claims 3, 4, 6, 8, 9, 11, and
12, include the limitation “wherein the pores are closed in a relaxed state of
the liner layer and become opened by stretching of the liner layer on the
limb stump during movement” (Appeal Br. 19) (emphasis added).
The Examiner finds said claim limitation inherently disclosed in
McCarthy (Final Act. 2–3, 7; Supp. Ans. 3–4). In particular, the Examiner
finds that Figures 1, 1A, and 1B of McCarthy show the liner in a stretched
state with open pores. According to the Examiner, “[t]hese figures clearly
show the liner is stretched since it is applied to residual limb 2” (Supp.
Ans. 3). And, according to the Examiner,
The pores being opened or closed when silicone is stretched is an
inherent property of any pore in an elastomeric medium such as
silicone. The liner of McCarthy is fully capable of meeting these
limitations since the liner is made of the same material (silicone
[0023]) as the instant invention and the pores are formed by the
same process as the instant invention ([0021: laser ablation is a
form of drilling], open cell foam [0074]).
(Final Act. 2–3).
Appeal 2019-002044
Application 15/315,537

4
The Appellant disagrees with the Examiner’s finding that Figure 1 of
McCarthy shows the liner in a stretched state (Appeal Br. 7). According to
the Appellant, “FIGS. 1 & 1A of McCarthy presumably show its liner
layer 4 in a relaxed state, suggesting that the pores 18 are open in their
relaxed state, contrary to the claimed pores” (id.). And the Appellant argues,
inter alia, that “the fact that silicone is inherently an elastic material does not
mean that McCarthy’s pores 18 will necessarily stretch ‘closed’ when its
liner 20 is relaxed” (id. at 9). The Appellant acknowledges that
“McCarthy’s pores 18 will indeed stretch and contract as its liner 20 is
stretched and relaxed,” but the Appellant contends that “McCarthy’s
pores 18 could nonetheless remain open when its liner 20 is fully relaxed”
(id.).
Responding to the Appellant’s arguments in the Answer, the
Examiner states that “[s]ilicone is inherently an elastic material and the
pores will therefore stretch open and closed when the liner is stretched and
relaxed” (Supp. Ans. 7).
There is no dispute in this case that silicone is an elastic material that
can exist in a relaxed or a stretched state. And there does not appear to be
any dispute that McCarthy does not expressly disclose a liner having pores
that are closed in any state (i.e., whether the liner is relaxed or stretched).
The question is whether pores of a liner layer made of silicone will
necessarily be “closed in a relaxed state of the liner layer and become
opened by stretching of the liner layer on the limb stump during movement”
as required by claim 15. We agree with the Appellant that the Examiner has
not adequately shown that this is necessarily the case.
Appeal 2019-002044
Application 15/315,537

5
Anticipation may be found through inherency. Given that McCarthy
arguably expressly describes pores of an elastic liner layer that are open in a
stretched state, it is possible that the pores are closed when the liner is in a
relaxed state. “Inherency, however, may not be established by probabilities
or possibilities. The mere fact that a certain thing may result from a given
set of circumstances is not sufficient.” Hansgirg v. Kemmer, 102 F.2d 212,
214 (CCPA 1939), quoted in Continental Can Co. USA v. Monsanto Co.,
948 F.2d 1264, 1269 (Fed. Cir. 1991). Although it may be inevitable that
some deformation of the pores will occur when the liner layer stretches or
relaxes, it is not certain that McCarthy’s pores are “closed in a relaxed state
of the liner layer and become opened by stretching of the liner layer on the
limb stump during movement” as claimed.
The rejection as to claims 3, 4, 6, 8, 9, 11, 12, and 15 is not sustained.

The rejection of claim 7 under 35 U.S.C. § 103 as unpatentable over
McCarthy.
Claim 7 depends from claim 15 and thus includes the subject matter of
claim 15. Because McCarthy does not describe the subject matter of
claim 15, and no other prior art or reasoning has been relied upon, a prima
facie case of obviousness for the subject matter covered by claim 7 has not
been made out in the first instance by a preponderance of the evidence.
Accordingly, the rejection is not sustained.

Appeal 2019-002044
Application 15/315,537

6
The rejection of claim 5 under 35 U.S.C. § 103 as unpatentable over
McCarthy and Schulte.
Claim 5 depends, indirectly, from claim 15 and thus includes the
subject matter of claim 15. Because McCarthy does not describe the subject
matter of claim 15, and no other prior art or reasoning has been relied upon,
a prima facie case of obviousness for the subject matter covered by claim 5
has not been made out in the first instance by a preponderance of the
evidence. Accordingly, the rejection is not sustained.

The rejection of claim 10 under 35 U.S.C. § 102(a)(1) as anticipated by
McCarthy or alternatively under 35 U.S.C. § 103 as unpatentable over
McCarthy and Richter.
Claim 10 depends from claim 15 and thus includes the subject matter
of claim 15. Because McCarthy does not describe the subject matter of
claim 15, and no other prior art or reasoning has been relied upon, a prima
facie case of anticipation or obviousness for the subject matter covered by
claim 10 has not been made out in the first instance by a preponderance of
the evidence. Accordingly, the rejection is not sustained.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
3, 4, 6, 8, 9,
11, 12, 15
102(a)(1) McCarthy 3, 4, 6, 8, 9,
11, 12, 15
7 103 McCarthy 7
5 103 McCarthy, Schulte 5
10 102(a)(1) McCarthy 10
10 103 McCarthy, Richter 10
Appeal 2019-002044
Application 15/315,537

7
Overall
Outcome
3–12, 15

REVERSED