Ex Parte Bartlett

Patent Trial and Appeal Board

Jul 26, 2017

12925997 (P.T.A.B. Jul. 26, 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.
12/925,997 11/04/2010 Brian Bartlett BB-66203-32 5423
24692 7590
Charles J. Rupnick
4742 - 42nd Ave. SW
Suite 494
Seatlle, WA 98116-4553
EXAMINER
SNOW, BRUCE EDWARD
ART UNIT PAPER NUMBER
3738
NOTIFICATION DATE DELIVERY MODE
07/28/2017 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):
rupnick@comcast.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN BARTLETT
Appeal 2016-000902
Application 12/925,997
Technology Center 3700
Before EDWARD A. BROWN, WILLIAM A. CAPP, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Brian Bartlett (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner’s decision rejecting claims 1—5, 8, 10-15, and 17—19 under 35
U.S.C. § 102(b) as being anticipated by Beard (US 5,020,790, iss. June 4,
1991) or, in the alternative, as unpatentable under 35 U.S.C. § 103(a) over
Beard.1 We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 The Examiner objects to claims 6, 7, 9, 16, and 20, finding they “would be
allowable if rewritten in independent form including all of the limitations of
the base claim and any intervening claims.” Final Act. 4. As a result, these
claims are not before us on appeal. In addition, the Examiner has withdrawn
the nonstatutory obviousness-type double patenting rejection of claims 1—20.
Ans. 5.
Appeal 2016-000902
Application 12/925,997
INVENTION
Appellant’s invention “relates generally to prosthesis systems.” Spec.
12.
Claims 1,11, and 17 are independent. Illustrative claim 1, with added
emphasis, reads as follows:
1. A prosthesis system for a human limb, the prosthesis
system comprising:
a proximate portion configured for coupling with the
human limb;
a distal portion configured for coupling with an
appendage;
a rigid joint portion, the proximate portion hingedly
coupled to the distal portion via the joint portion such that the
distal portion and the proximate portion are pivotally movable
with respect to one another between an extended state and a
bent state; and
an elongated elastic cord member comprising a relatively
elastic portion between relatively rigid first and second end
portions that are continuous therewith, the cord member
arranged for urging the distal portion and the proximate portion
toward the extended state with the first end portion coupled to a
first retainer positioned on the proximate portion, and the
second end portion coupled to a second retainer positioned on
the distal portion.
ANALYSIS
Claim 1
Regarding the Examiner’s determination claim 1 is anticipated by
Beard, Appellant challenges the Examiner’s reliance on spring 80 as
disclosing, “an elongated elastic cord member comprising a relatively elastic
portion between relatively rigid first and second end portions that are
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Application 12/925,997
continuous therewith.” Appeal Br. 8—9. Appellant asserts spring 80 does
not evidence an “elastic cord member.” Id. Appellant also disputes the
Examiner’s alternative obviousness determination because it depends on
characterizing a polymeric elastic member with metal/hard plastic end hooks
as having, “a relatively elastic portion between relatively rigid first and
second end portions that are continuous therewith,” as claim 1 recites. Id.
at 9—10. Appellant contends the joint or connection required to combine the
metal/hard plastic end hooks with a polymeric elastic member prevent it
from having rigid first and second end portions continuous with the
relatively elastic portion. Id. Appellant persuades us of error with the
Examiner’s finding of anticipation; the arguments against the alternative
obviousness determination, however, are unpersuasive.
In the Final Office Action, at page 5, the Examiner identifies
spring 80 depicted in Figure 3 of Beard as the claimed “elongated elastic
cord member” and finds, “[t]he helical portion is considered relatively
elastic (relatively elastic portion) relative to the straight end portions
(relatively rigid first and second end portions).” In response to Appellant’s
argument, the Examiner states,
[Ajppellant does not simply claim a “cord.” The term “cord” is
used in combination as an “elongated elastic cord member”; it is
the [EJxaminer’s interpretation that this language is broader than
just a “cord.” Again, appellant provides no special definition of
“elongated elastic cord member”; it is the examiner’s position
that element 80 meets this limitation.
Id. at 6. The Examiner does not offer any interpretation of “elongated elastic
cord member,” however. Nor does the Examiner offer any explanation why
a skilled artisan would view the plain meaning of this claim language, in the
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Application 12/925,997
context of Appellant’s Specification and the claims themselves, as covering
the coil spring Beard discloses.
Appellant proposes the plain meaning of “cord” is “a long slender
flexible material usually consisting of several strands (as of a thread or yard)
woven or twisted together.” Appeal Br. 9. While correctly noting “usually”
indicates the material of a cord does not always consist of several strands,
the Examiner does not dispute a skilled artisan would have understood
“cord” to mean, “a long slender flexible material.” Final Act. 6. The
context within the claims and Specification supports this apparent
agreement. For example, “cord” is used in the context of claim 1 to describe
a “member” that is “elongated” and “elastic.” The depiction of the “elastic
member” 18 in the Figures of the Specification shows a long slender
material, which is described as a resilient material for storing and releasing
energy. See Spec. p. 9,1. 15 — p. 10,1. 7, Figs. 1—3, 6—8.
Although the Examiner’s interpretation of “cord” may broadly cover
more than several strands woven or twisted together, it would be
unreasonable to effectively read out the cord limitation completely, and its
requirement for the member to be “a long slender flexible material.” The
Examiner fails to make a showing, or provide a technical explanation for
why, the spring 80 of Beard discloses such a material.
We agree with Appellant that the spring of Beard, “is a single piece of
wire bent into a coil shape.” Appeal Br. 9 (citing Beard Fig. 3). Though
configuring a wire into a shape that creates a spring action may be flexible,
there is no evidence in this record that a skilled artisan would consider the
wire material itself to be a long slender flexible material. The Examiner,
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Application 12/925,997
moreover, does not explain why a skilled artisan would have viewed a wire
coil spring as such, nor is it readily apparent from this record that a skilled
artisan would do so. We are, therefore, persuaded the Examiner’s finding
that a wire coil spring satisfies the “elongated elastic cord member”
limitation lacks support by a preponderance of the evidence.
Nevertheless, the Examiner also determines,
[i]t would have been obvious for one having ordinary skill in the
art to have substituted a polymeric elastic member having
metal/hard plastic end hooks (such as a bungee cord) for the cord
member 80 with predictable results. (KSR rationale: simple
substitution of one know element for another to obtain
predictable results.)
Final Act. 5—6. Appellant notably does not challenge the rational
underpinning of the Examiner’s obviousness determination, nor does
Appellant dispute a bungee cord is “an elongated elastic cord member.”
Instead, Appellant argues, a “polymeric elastic member having metal/hard
plastic end hooks (such as a bungee cord)” necessarily involves connecting
the end hooks and polymeric elastic member together and, therefore, fails to
disclose “a relatively elastic portion between relatively rigid first and second
end portions that are continuous therewithas claim 1 recites. Appeal
Br. 9-10. And as support, Appellant refers to the plain dictionary meaning,
which defines “continuous” as “[f]orming an unbroken whole; without
interruption.” Id. at 10. Appellant contends a connection between the
elastic member and end hooks “is an obvious ‘interruption’ and ‘break.’” Id.
Appellant, however, offers no support from the surrounding claim language,
or the Specification, for this interpretation.
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Application 12/925,997
We agree with the Examiner that Appellant’s interpretation is too
narrow and does not accurately reflect the broadest reasonable interpretation.
In particular, the Examiner cites the description in the Specification showing
different materials may be used to form the stiffer or more rigid end portions
than the softer or less rigid elastic middle portion. Ans. 7 (citing Spec. p. 9,
1. 21—29). The Examiner determines, in the context of the Specification, “[a]
change in material does not negate that the end hook continue from the
elastic cord member.” Id.
Although the Specification discloses a manufacturing method that
connects the different materials by injecting a different material into
different portions of the die during the injection molding process of the
elastic member, Appellant’s claims and Specification does not limit the
elongated elastic cord member to a single molded member. Further, we
discern no evidence in the Specification that Appellant intends “continuous
therewith” to exclude other means of connecting the different materials
forming the different portions of the elongated elastic member. Nor do we
agree the plain meaning of “continuous” excludes other connections.
Instead, “[fjorming an unbroken whole; without interruption” is understood
as excluding additional materials from separating the relatively elastic
portion from the relatively rigid first and second end portions. Furthermore,
claim 1 uses the transition word “comprising” before describing the
composition of the elastic member, which indicates the composition is open
ended and the claim does not exclude additional non-recited elements.
Appellant does not dispute a skilled artisan would have understood the
end portions of a bungee cord attach directly to the elastic cord portion
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Application 12/925,997
without any intervening materials. Appellant has, thus, not shown any error
with the Examiner’s finding that a bungee cord discloses, “an elongated
elastic cord member comprising a relatively elastic portion between
relatively rigid first and second end portions that are continuous therewith.”
Therefore, Appellant has not shown persuasively an error with the
Examiner’s obviousness determination of claim 1, which we sustain.
Claims 11 and 17
The Examiner relies on the same evidence and rationale offered for
claim 1 to find claims 11 and 17 anticipated by Beard or, in the alternative,
to determine these claims are obvious. Final Act. 4—6. Although claims 11
and 17 do not include the “cord” limitation, Appellant argues that the
spring 80 of Beard is still deficient as evidence of an “elongated elastic
member compris[ing] an elongated relatively elastic portion between first
and second portions of relatively stiffer material and continuous therewith”
or an “elastic member comprising a resiliently stretchable portion between
first and second relatively harder portions,” which the respective claims
recite. See Appeal Br. 14—15, 18—19. In particular, Appellant asserts the
wire forming the spring is not any “stiffer” or “harder” at the end portions
than the coiled wire therebetween. Id. at 15, 18. The Examiner does not
dispute this contention and we find it persuasive. Therefore, we do not
sustain the Examiner’s finding Beard anticipates claims 11 and 17.
Appellant, however, does not make additional contentions of error
with the Examiner’s determination that substituting a bungee cord for the
wire spring 80 of Beard would have been an obvious modification, nor is it
argued that a bungee cord suffers the same deficiencies alleged for the wire
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Application 12/925,997
spring. Instead, we understand Appellant to be relying on the same alleged
“continuous therewith” deficiency argument asserted against the Examiner’s
reliance on a bungee cord for claim 1. See id. at 14, 18. For the same
reasons discussed above for claim 1, we remain unpersuaded “continuous
therewith” distinguishes the claimed elastic member from a bungee cord
with a polymeric elastic member having metal/hard plastic end hooks.
Appellant finally contends that Beard fails to disclose a lower portion
designed to couple with an artificial appendage, as claims 11 and 17 recite.
See Appeal Br. 14—15, 18, 24, 25. The Examiner finds the “artificial
appendage 44” of Beard evidences the lower portion of the device is “fully
capable of being [releasably] coupled to other ‘artificial appendages’ such as
a shoe or foot for a trans-ankle or partial foot amputee.” Final Act. 6; Ans.
7. In response, Appellant argues, “since Beard teaches the “foot shell” 44
connected to the “shank and foot of the wearer,” Beard cannot teach nor
disclose or suggest the “foot shell” 44 being “configured for coupling with
an artificial appendage.” Appeal Br. 15. This argument is unpersuasive,
however, because it does not demonstrate why the connection between the
“foot shell” 44 and the lower portion cannot also be used to releasably
connect an artificial appendage. As the Examiner notes, the claims do not
require an actual appendage to be connected, but only that the lower portion
have a configuration that allows for the connection. See Ans. 7, 8.
Therefore, for the foregoing reasons, we sustain the Examiner’s
obviousness determination of claims 11 and 17.
Claim 2
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Application 12/925,997
Claim 2 further limits claim 1 to having a “distal portion . . .
configured for coupling with an artificial appendage.” Appeal Br. 23
(Claims App.)(emphasis added). Appellant relies on the same argument
made for a similar limitation found in claim 11. Compare id. 10—11
with 14—15. For the reasons discussed above in the context of claims 11 and
17, we remain unpersuaded. Therefore, we sustain the Examiner’s rejection
of claim 2.
Claims 3, 10, 12, and 19
Claims 3, 10, 12, and 19 further limit the respective claim from which
they depend to having end portions that include material with “a higher
durometer” than material included in the relatively elastic portion, which
includes material with “a relatively lower durometer.” See Appeal Br. 23—
26 (Claims App.). Appellant disputes whether the spring 80 of Beard
discloses using materials for the elastic member and end portions with
different durometers. See id. at 11—16. The Examiner, however, finds “[t]he
metal/plastic end hooks of a bungee cord device are inherently a harder
material (higher durometer) than the middle elastic portion (lower
durometer). Final Act. 6.2 * * * * * * 9Thus, Appellant’s arguments against the wire
spring 80 are a nullity. Appellant has otherwise failed to apprise us an error
with the Examiner’s finding that a skilled artisan would have recognized the
2 The Examiner groups claim 12 with claims 4, 15, and 18, which each recite
the elongated elastic member composed of the same material as the end
portions. Although the Examiner does not identify claim 12 with the
discussion of claims 3, 10, or 19, we do not detect any relevant differences
between the language of claim 12 and those claims. Therefore, we view the
Examiner’s grouping of claim 12 as a typographical error and we view claim
12 as being properly grouped with claims 3,10, and 19.
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bungee cord has end hooks with a higher durometer material than the lower
durometer material used in the elastic member. Therefore, we sustain the
Examiner’s rejection of claims 3, 10, 12, and 19.
Claims 4, 15, and 18
Claims 4, 15, and 18 further limit their respective independent claims
to using the same material for both the elastic member and the end portions.
See Appeal Br. 23, 25, 26. The sum total of the Examiner’s analysis is,
“[cjlaims 4 ... 12, 15, 18 are reject[ed] under anticipation and obviousness.
Under obviousness, in a bungee cord, the elastic portion extends within the
end portions.” Final Act. 6. For the reasons discussed above, the
Examiner’s reliance of the wire spring 80 of Beard for meeting the claimed
elongated elastic member is error because this finding lacks support by a
preponderance of the evidence.
For the Examiner’s obviousness determination, the Examiner
identifies a bungee cord with a polymeric elastic member having metal/hard
plastic end hooks. Final Act. 5 (emphasis added). However, the Examiner
offers no evidence the end hooks and elastic member are composed of the
same material, nor does the Examiner offer a reason with a rational
underpinning explaining why a skilled artisan would have known to make
the material the same. Therefore, we do not sustain the Examiner’s rejection
of claims 4, 15, and 18.
Claims 5, 13, and 14
Claims 5,13, and 14 limit the elongated elastic member to having, “a
plurality of the relatively elastic portions extended from a common hub.”
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Appeal Br. 23, 25 (Claims App.). The Examiner rejects these
claims because it would have been obvious to have a plurality of
elastic portion (fibers) form a common hub for flexibility. The
fibers can be interpreted as having upper and lower portions.
This is known is well known in bungee cords.
Final Act. 6. The Examiner offers no evidence, however, in support of this
conclusion, nor is a rational underpinning provided for why a skilled artisan
would have known to modify the wire spring 80 of Beard or a bungee cord
to have a plurality of the relatively elastic portions extending from a
common hub. “A rejection on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Therefore,
we do not sustain the Examiner’s rejection of claims 5, 13, and 14.
Claim 8
For claim 8, Appellant makes the following argument,
Claim 8 was previously held to be allowable. See, Office action
dated March 26, 2013 at page 3. Claim 8 was objected to as
being dependent upon a rejected base claim. At least because
claim 8 is recited as originally filed, and claim 8 was previously
held to be allowable by examiner, claim 8 is believed still to be
allowable.
Appeal Br. 13. Nevertheless, in the Final Office Action, the Examiner finds
elements 70, 72 of Beard disclose the structure claim 8 recites. Final Act. 6.
Appellant has not apprised us of an error with that finding. Therefore, we
sustain the Examiner’s rejection of claim 8.
DECISION
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We affirm the Examiner’s rejection of claims 1—3, 8, 10-12, 17, and
19 and reverse the Examiner’s rejection of claim 4, 5, 13—15, and 18.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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