Ex Parte Boone et al

Patent Trial and Appeal Board

Jun 20, 2017

13854723 (P.T.A.B. Jun. 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.
13/854,723 04/01/2013 David Alan Boone ORIL141034 5947
26389 7590 06/22/2017
rTTRTSTRNSFN OTONNOR TOHNSON KTNDNFNN PT T C EXAMINER
1201 THIRD AVENUE SNOW, BRUCE EDWARD
SUITE 3600
SEATTLE, WA 98101-3029 ART UNIT PAPER NUMBER
3738
NOTIFICATION DATE DELIVERY MODE
06/22/2017 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):
efiling @ cojk. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID ALAN BOONE and BEN GILBERT MACOMBER1
Appeal 2016-004926
Application 13/854,723
Technology Center 3700
Before ERIC B. GRIMES, JOHN E. SCHNEIDER, and
DAVID COTTA, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to a robotic
prosthesis alignment device, which have been rejected as anticipated and as
obvious and as indefinite. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The Specification describes “a robotic prosthesis alignment device
that may be coupled to the prosthesis sensor (i.e., transducer). . . that can be
controlled by a computer, including, but not limited to, a wireless personal
1 Appellants identify the Real Party in Interest as Orthocare Innovations,
LLC. Br. 2.
Appeal 2106-004926
Application 13/854,723
digital assistant (PDA) that enables the prosthetist or wearer to quickly and
easily make controlled alignment changes to a prosthesis.” Spec. 2,1. 31 —
3,1.3.
Claims 1—7, 10, 18—21 are on appeal. Claim 1 is representative of the
rejected claims and reads as follows:
1. A robotic prosthesis alignment device, comprising:
a translation assembly comprising a lower slide deck
connected to a universal joint, a middle slide deck that is
slidingly connected to the lower slide deck, and an upper slide
deck that is slidingly connected to the middle slide deck, wherein
the middle and upper slide decks are automatically translated
orthogonally with respect to each other;
an angulation assembly supporting the translation
assembly, the angulation assembly comprising a first wedge ring
and a second wedge ring, each wedge ring being separately
capable of rotation, wherein each wedge ring is automatically
rotated; and
the universal joint allowing tilting of the translation
assembly during rotation of each wedge ring.
The claims have been rejected as follows.
Claims 1—7, 10, and 18—21 have been rejected under 35 U.S.C. § 112,
second paragraph as indefinite.2
2 In the Final Office Action, the Examiner rejected the pending claims for
failing to comply with the written description requirement. Final Act. 2.
Appellants noted that the rejection should have been stated as a rejection
based on indefmiteness. Appeal Br. 4. The Examiner agreed that the
rejection was for indefmiteness. Ans. 7.
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Application 13/854,723
Claims 1—5 have been rejected under 35 U.S.C. § 102(b) as
anticipated by Waggott3 or alternatively under 35 U.S.C. § 103(a) as
unpatentable over Waggott in view of Johnson.4
Claims 6, 7, 10, and 18—21 have been rejected under 35 U.S.C. §
103(a) as unpatentable over Waggott in view of Johnson and Boone l5 as
evidenced by Boone 2.6
INDEFINITENESS
Issue
The issue is whether the evidence of record supports the Examiner’s
conclusion that the claims are indefinite.
The Examiner finds the term “automatically” indefinite in that it is not
clear if the term is functional language only or inherently requires additional
mechanisms to perform the automatic functions. Final Act. 3. The
Examiner finds that if “automatically” requires additional structure, it is
unclear what structures are required. Id.
Appellants contend that the term “automatically” is not indefinite in
that the Specification offers guidance as to what is meant by the term.
Appeal Br. 4. Appellants point to the section of the Specification wherein it
teaches that drivers automatically move the wedges and decks. Id.
3 Waggott et al., US 3,414,908, issued Dec. 10, 1968 (“Waggott”).
4 Johnson, US 6,761,743 Bl, issued July 13, 2004 (“Johnson”).
5 David Boone et al., Computerized Prosthesis Alignment Instrument, Inf 1
Soc. Prosthetics & Orthotics, 11th World Cong. 2004, 322 (“Boone 1”)
6 David Boone et al., Determination of Prosthetic Malalignment by Fuzzy
Logic Algorithm, Inf 1 Soc. Prosthetics & Orthotics, 11th World Cong. 2004,
363 (“Boone 2”)
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Appeal 2106-004926
Application 13/854,723
Principles of Law
“[A] patent is invalid for indefiniteness if its claims, read in light of
the specification delineating the patent, and the prosecution history, fail to
inform, with reasonable certainty, those skilled in the art about the scope of
the invention.” Nautilus, Inc. v. BiosigInstruments, Inc., 134 S.Ct. 2120,
2124 (2014).
Analysis
We agree with the Examiner that the claims are indefinite. As the
Examiner points out, neither the claims nor the Specification inform with
reasonable certainty which structure or structures are required to fulfill the
“automatically translated” and “automatically rotated” limitations. Ans. 7.
We have reviewed the section of the Specification cited by Appellants
in support of their contention that the claims are not indefinite, which reads
as follows: “Self or automatic alignment is a goal of methods disclosed
herein. The self-aligning automatic alignment application 319 performs a
set of operations, without the use of the torque sensor 100 and module 102
that can automatically align the prosthesis with the use of the drivers.” Spec.
19,11. 21—24. While the cited portion teaches that a self-aligning application
can use drivers to automatically align the prosthesis, it is not clear how this
is accomplished without input regarding the current orientation and position
of the prosthesis — i.e. “without the use of torque sensor 100, module 102,
and drivers” — as taught by the Specification. Thus, the claim language,
even when read in light of the Specification, does not make clear the scope
of the claimed device.
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Appeal 2106-004926
Application 13/854,723
Conclusion of Law
We conclude that the evidence of record supports the Examiner’s
conclusion that the rejected claims are indefinite.
PRIOR ART REJECTIONS
CLAIMS 1-5: WAGGOTT ALONE OR IN COMBINATION WITH
JOHNSON
Issue
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner’s conclusion that claims 1—5 are either
anticipated by Waggott or obvious over Waggott combined with Johnson.
The Examiner finds that Waggott discloses a robotic prosthesis
alignment device comprising “a translation assembly comprising a lower
slide deck 21 connected to a universal joint 18, 28, a middle slide deck 21'
that is slidingly connected to said lower slide deck, and an upper slide deck
22 that is slidingly connected to said middle slide deck.” Final Act. 4.
(References are to Figure 6 of Waggott reproduced below.)
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Application 13/854,723
Figure 6 shows a prosthetic device disclosed in Waggott. The Examiner also
finds that the alignment device of Waggott comprises an angulation
assembly which comprises at least two wedge rings. Id. at 5. The Examiner
finds that the device in Waggott further comprises a universal joint. Id. at 6.
The Examiner finds that if “automatically” is interpreted as functional
language, then there is no need to identify a specific element in Waggott
which accomplished this limitation. Final Act. 6. The Examiner finds that a
prosthetist would automatically rotate the wedge rings to translate the upper
and lower decks, and thus that Waggott anticipates the claimed device. Id.
Alternatively, if “automatically” is interpreted to require elements to
automatically orthogonally translate the middle and upper slide decks with
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Appeal 2106-004926
Application 13/854,723
respect to each other and automatically rotate each wedge ring, the Examiner
finds that the claimed device is obvious because Johnson teaches the use of
various positioning elements for use with a prosthetic device. Id. The
Examiner concludes that
It would have been obvious to one having ordinary skill in the art
to have utilized the teachings of Johnson to have used one of the
taught actuators such as an electric actuator replacing all manual
adjustment mechanisms (including translation and rotation) of
the prosthetic alignment device of Waggott such that the
adjustments could be done accurately, quickly or simultaneously
to different user settings. Adapting the manual adjustment
mechanisms to an actuated configuration would only require
routine mechanical skill in the art.
Final Act. 6—7.
Appellants contend that Waggott does not teach that the angulation
assembly supports the translation assembly as required by the claims.
Appeal Br. 5. Appellants point to a clearance shown in Figure 6 of Waggott
as showing that the angulation assembly does not support the translation
assembly. Id. Appellants contend that Johnson does not remedy this
deficiency in Waggott. Id. at 6.
Analysis
We adopt the Examiner’s findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Final Action and
Answer regarding this rejection. While we find that the Examiner has not
established that the claims are anticipated by Waggott, we agree with the
Examiner that the claims would have been obvious over Waggott in view of
Johnson. Appellants have not produced evidence showing, or persuasively
argued, that the Examiner’s determinations on obviousness are incorrect.
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Application 13/854,723
Only those arguments made by Appellants in the Briefs have been
considered in this Decision. Arguments not presented in the Briefs are
waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2015). We have identified claim 1
as representative; therefore, claims 2—5 fall with claim 1. We address
Appellants’ arguments below.
Appellants contend that Figure 6 of Waggott discloses a gap between
the translational assemblies and the angulation assemblies indicating that the
angulations assemblies do not support the translational assemblies. Appeal
Br. 5. We are not persuaded. As the Examiner points out, while Figure 6
shows a gap, the figure also makes clear that the wedges directly contact the
outer portions of element 26 which directly contacts element 21. Ans. 9.
(See enlarged portion of Figure 6, as annotated by the Examiner, below.)
small clearance
The Figure shows an enlarged portion of one of the alignment apparatuses of
Waggott. As the Examiner points out, the claims do not require direct
contact. Ans. 9. The Examiner also points out that the device in Waggott
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Application 13/854,723
would not work as intended if there were not contact between the angulation
elements and the translation elements. Ans. 8.
Appellants contend that the drawings of Waggott are not accurate.
Reply Br. 3. Appellants submit that clearance is needed for the apparatus of
Waggott to work. Id. We are unpersuaded. As shown above, Figure 6
clearly shows that the clearance cited by Appellants does not extend across
the translational member or the angulation member. Moreover, Appellants
offer no evidence to support their attorney argument that the drawings are in
error. “Attorney’s argument in a brief cannot take the place of evidence.”
In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Conclusion of Law
We conclude that a preponderance of the evidence supports the
Examiner’s conclusion that claim 1 would have been obvious over Waggott
combined with Johnson. We also conclude that the evidence does not
support the Examiner’s conclusion that claim 1 is anticipated by Waggott.
Claims 2—5 have not been argued separately and therefore fall with
claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
CLAIMS 6, 7, AND 18-21: WAGGOTT COMBINED WITH JOHNSON
AND BOONE 1 AS EVIDENCED BY BOONE 2.
Issue
The issue with respect to this rejection is whether a preponderance of
the evidence supports the Examiner’s conclusion that claims 6, 7, and 18—21
would have been obvious over Waggott combined with Johnson and Boone
1.
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Application 13/854,723
The Examiner reiterates the findings with respect to Waggott and
Johnson discussed above. Final Act. 7. The Examiner also finds that Boone
1 teaches a prosthetic alignment device which allows for translation and
angular measurements controlled by a controller. Id. The Examiner finds
that
It would have been obvious to one having ordinary skill in
the art to have used the computer control taught by Boone et al
(PR 5D7.09) on the alignment device of Waggott et al and
Johnson to efficiently an[d] accurately make alignment changes.
Regarding claim 6, a revolution counter is believed to be inherent
to the device of Boone et al (PR 5D7.09), if not, it would have
been obvious to one having ordinary skill in the art to have used
a revolution counter as a sensor (encoder), such as a stepper
motor, or other known position sensors (encoders) with
predictable results.
Final Act. 7—8.
Appellants contend that the device taught by Boone 1 is only a
measurement tool and that it does not automatically perform alignment of
the prosthesis. Appeal Br. 7. Appellants argue that the device of Boone 1
requires an investigator to make the actual adjustments. Id.
Analysis
We again adopt the Examiner’s findings of fact, reasoning on scope
and content of the prior art, and conclusions set out in the Final Action and
Answer regarding this rejection. We find the Examiner has established that
the claims would have been obvious over the references. Appellants have
not produced evidence showing, or persuasively argued, that the Examiner’s
determinations are incorrect. Only those arguments made by Appellants in
the Briefs have been considered in this Decision. Arguments not presented
in the Briefs are waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2015). We have
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Application 13/854,723
identified claim 6 as representative; therefore, claims 7 and 18—21 fall with
claim 6. We address Appellants’ arguments below.
Appellants contend that the device disclosed in Boone 1 is only a
measurement tool and that nothing teaches or suggests using the device to
automatically adjust the prosthesis. Appeal Br. 7. We are unpersuaded. As
noted by the Examiner, claim 6 as presently written does not call for the
processor to actuate a driver to move the device but only to measure
translational position. Ans. 10. Thus Appellants are arguing limitations
which are not recited in the claims.
Conclusion of Law
We conclude that a preponderance of the evidence supports the
Examiner’s conclusion that claim 6 would have been obvious over Waggott
in view of Johnson and Boone 1.
Claims 7 and 18—21 have not been argued separately and therefore fall
with claim 6. 37 C.F.R. § 41.37(c)(l)(iv).
SUMMARY
We affirm the rejection under 35 U.S.C. § 112, second paragraph.
We reverse the rejection under 35 U.S.C. § 102(b).
We affirm the rejections under 35 U.S.C. § 103(a).
TIME PERIOD FOR RESPONSE
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
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