Ex Parte Goldenberg et al

Patent Trial and Appeal Board

Feb 20, 2018

12878840 (P.T.A.B. Feb. 20, 2018)

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.
12/878,840 09/09/2010 Andrew A. GOLDENBERG 17370 5745
293 7590 02/22/2018
DOWELL & DOWELL, P.C.
2560 HUNTINGTON AVE, SUITE 203
ALEXANDRIA, VA 22303
EXAMINER
COOK, CHRISTOPHER L
ART UNIT PAPER NUMBER
3737
NOTIFICATION DATE DELIVERY MODE
02/22/2018 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):
DOWELL@DOWELLPC.COM
D Vej erano @ do wellpc. com
wferrebee @dowellpc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW A. GOLDENBERG,
JOHN TRACHTENBERG, YI YANG, and LIANG MA
Appeal 2017-009843
Application 12/878,8401
Technology Center 3700
Before DONALD E. ADAMS, ERIC B. GRIMES, and JOHN G. NEW,
Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims 1—4, 7-11, 13,
14, 17-21, 34-37, and 39 (Final Act.2 1). Examiner entered rejections under
35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as “ENGINEERING
SERVICES INC.” (App. Br. 1.)
2 Examiner’s June 8, 2016 Office Action.
Appeal 2017-009843
Application 12/878,840
STATEMENT OF THE CASE
Appellants’ disclosure “relates to tools for use in surgery and in
particular manual tools that may be used for Minimally Invasive Surgery
(MIS) such as prostate-related interventions: focal ablation, brachytherapy,
and biopsy” (Spec. 1: 10-12). Claim 1 is representative and reproduced
below:
1. A medical device for use in association with a medical
image of a gland/organ having a known reference point, the
medical device comprising a probe having a probe positioning
stepper and with a medical instrument assembly whereby the
probe is positionable relative to the medical image reference
point and into a definable position relative to the probe
positioning stepper, the medical device further comprising;
a mechanical frame attachable to the probe positioning
stepper, the mechanical frame defining a generally vertical
plane, the mechanical frame being positioned at a frame
predetermined location on the probe positioning stepper and
thus in a definable position relative to the medical image
reference point;
a first joint being a horizontal joint operably connected to
a horizontal position sensor and operably connected to the
frame;
a second joint different from the first joint, the second
joint being a vertical joint operably connected to a vertical
position sensor and operably connected to the frame;
a third joint different from the first and second joints, the
third joint being a pan joint operably connected to a pan
position sensor including a pan rotary potentiometer and a pan
locking mechanism and the pan joint being operably connected
to the frame;
a fourth joint different from the first, second and third
joints, the fourth joint being a tilt joint operably connected a tilt
position sensor including a tilt potentiometer and a tilt locking
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Application 12/878,840
mechanism and the tilt joint being operably connected to the
frame;
the medical instrument assembly operably connectable to
a medical instrument position sensor including a linear
potentiometer for determining linear motion, and the medical
instrument assembly being operably connectable to the
horizontal joint, the vertical joint, the pan joint and the tilt joint
such that the medical instrument assembly is spaced from the
probe, the medical instrument assembly extending outwardly
from and transversely to the generally vertical plane and
positioned external to the horizontal joint, the vertical joint, the
pan joint and the tilt joint; and
a control system operably connected to the horizontal
position sensor, the vertical position sensor, the pan position
sensor, the tilt position sensor, and the medical instrument
position sensor whereby the control system includes a computer
that is programmed to:
determine an actual position of a medical instrument
assembly predetermined location relative to the frame and the
probe positioning stepper and thus in a definable position
relative to the medical image reference point;
determine an insertion path to the medical image
reference point; and determine when the medical device is in a
position for the insertion path.
(App. Br. 20-21 (emphasis added).)
3
Appeal 2017-009843
Application 12/878,840
The claims stand rejected as follows:
I. Claims 1, 2, 17, 19, 20, and 34-373 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Hogendijk,4 Bums,5
Tsonton,6 Quaid,7 Phee,8 and Ayati.9
II. Claims 3, 4, 7, 13, and 14 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Hogendijk, Bums, Tsonton, Quaid,
Phee, Ayati, Allen,10 and Belson.11
III. Claims 8-10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Hogendijk, Bums, Tsonton, Quaid,
Phee, Ayati, Allen, Belson, and Bax.12
IV. Claim 11 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Hogendijk, Bums, Tsonton, Quaid,
Phee, Ayati, Allen, Belson, Bax, and Glossop.13
3 Examiner’s statement of this rejection fails to identify Appellants’ claims
34-37 (see Final Act. 2). The body of this rejection, however, makes
reference to Appellants’ claims 34-37 (see id. at 3). Therefore, we find
Examiner’s failure to identify Appellants’ claims 34-37 in the statement of
the rejection to represent a harmless typographical error and include
Appellants’ claims 34-37 in the statement of this rejection.
4 Hogendijk et al., US 2003/0139642 Al, published July 24, 2003.
5 Bums, US 6,483,610 Bl, issued Nov. 19, 2002.
6 Tsonton et al., US 7,438,692 B2, issued Oct. 21, 2008.
7 Quaid et al., US 2009/0012532 Al, published Jan. 8, 2009.
8 Louis Phee, et al., Ultrasound Guided Robotic System for Transperineal
Biopsy of the Prostate, Proc. of the 2005 IEEE International Conference on
Robotics and Automation 1315-1320 (2005).
9 Ayati et al., US 2009/0275823 Al, published Nov. 5, 2009.
10 Allen et al., US 5,142,930, issued Sept. 1, 1992.
11 Belson et al., US 2003/0191367 Al, published Oct. 9, 2003.
12Bax et al., US 2008/0004481 Al, published Jan. 3, 2008.
13 Glossop et al., US 2007/0232882 Al, published Oct. 4, 2007.
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Application 12/878,840
V. Claim 18 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Hogendijk, Bums, Tsonton, Quaid, Phee, Ayati, and
Bax.
VI. Claims 21, and 35-3714 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Hogendijk, Bums, Tsonton, Quaid,
Phee, Ayati, and Glossop.
VII. Claim 39 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Hogendijk, Bums, Tsonton, Quaid,
Phee, Ayati, Glossop, and either of Appellants’ Admitted Prior Art (AAPA)
or Xie.15
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
We adopt Examiner’s findings concerning the scope and content of
the prior art (Final Act. 2-19), and provide the following findings for
emphasis.
FF 1. Hogendijk discloses an apparatus “for improved brachytherapy
treatment of prostate disease” (Hogendijk, Abstract; see Final Act. 3; cf.
Spec. 1: 10-12).
14 Examiner’s statement of this rejection fails to identify Appellants’ claim
35 (see Final Act. 16). The body of this rejection, however, makes reference
to Appellants’ claim 35 (id.). Therefore, we find Examiner’s failure to
identify Appellants’ claim 35 in the statement of the rejection to represent a
harmless typographical error and include Appellants’ claim 35 in the
statement of this rejection.
15 Yaoqin Xie, et al., Feature-based rectal contour propagation from
planning CT to cone beam CT, 35 Med. Phys. 4450-4459 (2008).
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Application 12/878,840
FF 2. Hogendijk discloses that “[i]t is [an] . . . object of. . . [Hogendijk’s]
invention to provide methods and apparatus for orienting a needle guide in a
manner to access the broadest range of available orientations, thereby
providing a more precise and accurate brachytherapy procedure” and that
[tjhese and other objects of. . . [Hogendijk’s] invention are
accomplished by providing methods and apparatus for angular
repositioning of the needle guide with respect to an ultrasound
probe. When used in conjunction with previously-known
apparatus for longitudinal, horizontal, and vertical orientation
of the template,. . . [Hogendijk’s] invention provides enhanced
control over needle template orientation, so that brachytherapy
needles may be inserted in a manner that avoids skeletal
structures.
(Hogendijk ^[19 and 21; see Final Act. 3.)
FF 3. Hogendijk’s Figures 4A and 4B are reproduced below:
if MWto \ !/()■
FIG, 4 A FIG.4B
Hogendijk’s “FIGS. 4A and 4B are, respectively, an exploded isometric
view and an exploded cross-sectional view of the guide body [110] and the
socket [120] of. . . [Hogendijk’s] invention, illustrating axes of rotation
[190, 195] and means for securing[, i.e., retaining knob 170 and slot 175,]
the guide body [110] to the socket [120]” (Hogendijk 27 (emphasis
omitted); see also id. ^ 50; see generally Final Act. 3 (“Hogendijk provides a
hanging ball joint mechanically coupled to the frame to facilitate pan and
tilting motions” (emphasis omitted))).
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Application 12/878,840
FF 4. Hogendijk discloses, with reference to Hogendijk’s FIGS. 4A and
4B:
[A]n embodiment to enable rotation of guide body 110 within
socket 120 ... . Guide body 110 further comprises recessed
slot 175 that is disposed along meridian 115, the meridian
passing through both proximal and distal apertures. Socket 120
comprises retaining knob 170 that is centrally disposed on the
interfacial surface of the socket.
(Hogendijk]} 50 (emphasis omitted); see id. ]| 49 (“socket 120 . . . enabl[es]
angular reorientation of guide body 110 and needle guide channel 150”
(emphasis omitted)); see generally Final Act. 3.)
FF 5. Hogendijk’s FIG. 4C is reproduced below:
FIG. 4C
Hogendijk’s FIG. 4C is an “isometric view[] of the guide body [110] of. . .
[Hogendijk’s] invention depicting means for rotation about. . . the
horizontal axis [195]” (Hogendijk ]f 28 (emphasis omitted); see also id.
]fl| 50 and 51; see generally Final Act. 3).
FF 6. Hogendijk’s FIG. 4D is reproduced below:
, no
FIG. 40
Hogendijk’s FIG. 4D is an “isometric view[] of the guide body [110] of. . .
[Hogendijk’s] invention depicting means for rotation about. . . the vertical
axis [190]” (Hogendijk ]f 28 (emphasis omitted); see also id. ]fl| 50 and 51;
see generally Final Act. 3).
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Application 12/878,840
FF 7. Hogendijk discloses, with reference to Hogendijk’s FIGS. 4C and
4D:
[K]nob 170 and slot 175 are configured such that knob 170 is
retained securely within slot 175, thereby attaching guide body
110 to socket 120. Knob 170 and slot 175 are further
configured to allow the knob to slidably translate along the
length of slot 175 while following meridian 115.
Rotating the guide body about horizontal axis 195 is
accommodated by knob 170 following meridian 115 while
slidably moving within slot 175. In this manner, the rotation
may be accomplished while guide body 110 remains secured by
the socket. . . . [K]nob 170 is further configured so as not to
impede rotation of guide body 110 about vertical axis 190 while
the guide body is retained within the socket. Rotation about
both axes in the foregoing manner allows guide body 110 to
access substantially all angular orientations bounded by the
limits of each rotational means.
(Hogendijk 50 and 51 (emphasis omitted); see generally Final Act. 3.)
FF 8. Examiner finds that “Hogendijk does not expressly disclose or depict
. . . [a] medical device [that] includes separate pan and tilt joints each
comprising a potentiometer and locking mechanism as [required by
Appellants’] claimed [invention]” (Final Act. 3—4 (emphasis omitted)).
FF 9. Bums discloses “[a] mounting system for a two-dimensional scanner
[] comprising] a base and a platen mounted to the base,” which “allows the
two-dimensional scanner to be moved between a first position . . . and a
second position” (Bums, Abstract; see generally Final Act. 4).
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Appeal 2017-009843
Application 12/878,840
FF 10. Bums’ Figure 4 is reproduced below:
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^ : Cf 3
Bums’ “FIG. 4 is an enlarged front view in elevation of [Bums’] multi-axis
scanner support apparatus” (Bums 2: 58-59 (emphasis omitted); see
generally Final Act. 4).
FF 11. Bums’:
[M]ulti-axis scanner support apparatus 26 may comprise a
generally rectangularly shaped support frame or gimbal 56 that
is pivotally mounted to the base 14 so that the support frame or
gimbal 56 may be rotated about pan axis 30. That is, the
gimbal 56 may be rotated about the pan axis 30 generally in the
directions indicated by arrows 34. The two-dimensional
scanner 12 may be mounted within the frame or gimbal 56 by a
support shaft 72 so that the two-dimensional scanner 12 may be
rotated within the gimbal 56 about a tilt axis 28, i.e., generally
in the directions indicated by arrows 32. Consequently, the
multi-axis scanner support apparatus 26 allows the two-
dimensional scanner to be tilted and panned as necessary about
the tilt and pan axes 28 and 30, respectively, to capture an
image of the desired object.
(Bums 7: 19-34 (emphasis omitted); see Final Act. 4.)
FF 12. Bums discloses that
the gimbal actuator 58 may be provided with a suitable position
sensor . . ., such as an optical encoder or a potentiometer, to
9
Appeal 2017-009843
Application 12/878,840
allow the control system . . . associated with the multi-axis
scanner support apparatus 26 to determine the rotational
position of the gimbal 58 with respect to the base 14.
(Bums 7: 60-66 (emphasis omitted); see Final Act. 4.)
FF 13. Examiner finds that the combination of Hogendijk and Bums does
not disclose “horizontal and vertical joints [that] include horizontal and
vertical position sensors (e.g. encoders)” or “a linear potentiometer for
determining linear motion” and relies on the combination of Tsonton and
Quaid to make up for this deficiency in the combination of Hogendijk and
Bums (Final Act. 5-6).
FF 14. Examiner finds that the combination of Hogendijk, Bums, Tsonton,
and Quaid fails to disclose a pre-operative planning step to determine “the
optimal needle path” and relies on the combination of Phee and Ayati to
make up for this deficiency in the combination of Hogendijk, Bums,
Tsonton, and Quaid (Final Act. 7-8).
FF 15. Examiner finds that the combination of Hogendijk, Bums, Tsonton,
Quaid, Phee, and Ayati “does not specifically disclose [a] . . . joint sensor
[that] is a ‘multi-turn’ potentiometer operably connected to an anti-backless
spur gear” and relies on the combination of Allen and Belson to make up for
this deficiency in the combination of Hogendijk, Bums, Tsonton, Quaid,
Phee, and Ayati (Final Act. 9-11).
FF 16. Examiner finds that the combination of Hogendijk, Bums, Tsonton,
Quaid, Phee, Ayati, Allen, and Belson “does not expressly disclose wherein
the needle tool includes a slide block” and relies on Bax to make up for this
deficiency in the combination of Hogendijk, Bums, Tsonton, Quaid, Phee,
Ayati, Allen, and Belson (Final Act. 11-12).
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Application 12/878,840
FF 17. Examiner finds that the combination of Hogendijk, Bums, Tsonton,
Quaid, Phee, Ayati, Allen, Belson, and Bax “does not expressly disclose
obtaining a pre-operative MR image and fusing or blending a real time
ultrasound image” and relies on Glossop to make up for this deficiency in
the combination of Hogendijk, Bums, Tsonton, Quaid, Phee, Ayati, Allen,
Belson, and Bax (Final Act. 13-14).
FF 18. Examiner finds that the combination of Hogendijk, Bums, Tsonton,
Quaid, Phee, Ayati, Allen, and Belson “does not expressly disclose wherein
the needle tool includes a slide block” and relies on Bax to make up for this
deficiency in the combination of Hogendijk, Bums, Tsonton, Quaid, Phee,
Ayati, Allen, and Belson (Final Act. 14-15).
FF 19. Examiner finds that the combination of Hogendijk, Bums, Tsonton,
Quaid, Phee, and Ayati “does not expressly disclose obtaining a pre­
operative MR image and fusing or blending a real time ultrasound image”
and relies on Glossop to make up for this deficiency in the combination of
Hogendijk, Bums, Tsonton, Quaid, Phee, and Ayati (Final Act. 16-17).
FF 20. Examiner finds that the combination of Hogendijk, Bums, Tsonton,
Quaid, Phee, Ayati, and Glossop “does not expressly disclose obtaining a
pre-operative MR image and fusing or blending (e.g. registering) a real time
ultrasound image in order to define contours and points of an anatomical
feature” and relies on either AAPA or Xie to make up for this deficiency in
the combination of Hogendijk, Bums, Tsonton, Quaid, Phee, Ayati, and
Glossop (Final Act. 17-19).
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Application 12/878,840
ANALYSIS
Rejection I\
Appellants’ claim 1 is representative and reproduced above. Separate
arguments are not provided with respect to Appellants’ claims 2, 17, 19, and
20, which, therefore, stand or fall with claim 1.
Based on the combination of Hogendijk, Bums, Tsonton, Quaid, Phee,
and Ayati, Examiner concludes that, at the time Appellants’ invention was
made, it would have been prima facie obvious to, inter alia, modify
Hogendijk’s medical device by replacing Hogendijk’s “tilt/pan means (e.g.,
ball joint)” with Bums’ separate tilt and pan joints “in order to allow more
precise control of the angular orientation of the needle” (Final Act. 4). In
this regard, “Examiner notes that such a modification merely involves a
simple substitution of one tilt/pan means for another to yield predictable
results” {id.). We find no error in Examiner’s conclusion of obviousness.
“[Wjhen a patent claims a stmcture already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (discussing United States
v. Adams, 383 U.S. 39 (1966)). See In re Mayne, 104 F.3d 1339, 1340 (Fed.
Cir. 1997) (“Because the applicants merely substituted one element known
in the art for a known equivalent, this court affirms [the rejection for
obviousness]”).
We recognize “that when the prior art teaches away from combining
certain known elements, discovery of a successful means of combining them
is more likely to be nonobvious.” KSR, 550 U.S. at 416 (discussing United
12
Appeal 2017-009843
Application 12/878,840
States v. Adams, 383 U.S. 39 (1966)). This is, however, notwithstanding
Appellants’ contentions to the contrary, not the situation in this Appeal.
As Appellants explain, “the guide body [110] and socket joint [120] is
a key feature of the Hogendijk device” (App. Br. 7; see also id. at 10; see,
e.g., FF 3). An objective of Hogendijk’s disclosure is to provide an
“apparatus for orienting a needle guide in a manner to access the broadest
range of available orientations, thereby providing a more precise and
accurate brachytherapy procedure” (FF 2). To accomplish this objective,
Hogendijk provides “for angular repositioning of the needle guide with
respect to an ultrasound probe,” which “[w]hen used in conjunction with
previously-known apparatus for longitudinal, horizontal, and vertical
orientation of the template . . . provides enhanced control over needle
template orientation” {id. (emphasis added)). Hogendijk’s “socket 120 .. .
enabl[es] angular reorientation of guide body 110 and needle guide channel
150” (FF 4).
Hogendijk, thus, discloses the use of a socket joint 120 in combination
“with previously-known apparatus for,” inter alia, “horizontal^ and vertical
orientation” (FF 2—4 and 7). Although Hogendijk discloses mechanisms that
provide horizontal and vertical orientations, as Bums makes clear,
Hogendijk’s mechanisms are not the only “previously-known” means to
obtain these orientations {see FF 5-6; cf FF 9-12). Therefore, we find no
error in Examiner’s conclusion that a person of ordinary skill in this art
would have found it prima facie obvious, at the time of Appellants’ claimed
invention, to constmct Hogendijk’s device, which comprises a socket joint,
and substitute Bums’ pan and tilt mechanisms for those “previously-known”
mechanisms exemplified by Hogendijk. Because Hogendijk discloses the
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Application 12/878,840
use of “previously-known” pan and tilt mechanisms in conjunction with
Hogendijk’s socket joint, we are not persuaded by Appellants’ contention
that “someone skilled in the art would not be lead to substitute other types of
joints for its guide body and socket joint” (App. Br. 7; see Reply Br. 1-2).
Appellants fail to explain how, or otherwise provide persuasive
argument or evidence to support a conclusion that, the foregoing
modification of Hogendijk to use Bums’ pan and tilt mechanisms in
combination with Hogendijk’s socket joint will “eliminate one of the
degrees of freedom that is offered with a ball joint and, in effect, constrain
[Hogendijk’s] device” (App. Br. 7-8). For the foregoing reasons, we are not
persuaded by Appellants’ contention that by modifying the pan and tilt
mechanism of Hogendijk’s device with the mechanism disclosed by Bums
the resulting device will “fail[] to provide substantially all angular
orientations required for Hogendijk” (App. Br. 10; see also id. at 11-13).
For these reasons, we are not persuaded by Appellants’ contention that the
modification of Hogendijk’s device with Bums will “frustrate the purpose of
[Hogendijk’s] system” (id.; see also id. at 9 (“the ball and socket type joint
of the primary reference cannot simply be combined with the pan and tilt
means of Bums with a reasonable expectation that a functional product
would be achieved”); see Reply Br. 1-2).
Notwithstanding Appellants’ contention to the contrary, the “direction
or motivation” to make the modification comes directly from Hogendijk’s
disclosure of the use of “previously-known” mechanisms to provide
“horizontal[] and vertical orientation” (FF 2; cf. App. Br. 8). Nevertheless,
“[ejxpress suggestion to substitute one equivalent for another need not be
present to render such substitution obvious.” In re Font, 675 F.2d 297, 301
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Application 12/878,840
(CCPA 1982). Therefore, we are not persuaded by Appellants’ contention
that Examiner articulates “[n]o rational underpinning ... for combining the
numerous references” (App. Br. 16-17 (emphasis omitted)).
We are not persuaded by Appellants’ contention “that even if
someone skilled in the art was looking to replace the ball joint of Hogendijk
they would not look to Bums because it is in a completely different art”
(App. Br. 8; see id. (“if someone was interested in substituting a device for
the ball joint of Hogendijk ... it would not look to a device in the scanning
art, as the latter is an art that is very different from that of the medical
surgical devices”); id. at 9 (“Bums is . . . not analogous to Hogendijk”); see
Reply Br. 2). As discussed above, Hogendijk directs those of ordinary skill
in this art to “previously-known” pan and tilt mechanisms (FF 2). Thus, pan
and tilt mechanisms were reasonably pertinent to the particular problem with
which both Appellants and Hogendijk were involved. See In re Clay, 966
F.2d 656, 659 (Fed. Cir. 1992). Thus, notwithstanding Appellants’
contention to the contrary, Bums, which relates to pan and tilt mechanisms,
is analogous prior art and properly combinable with Hogendijk. See id.
Therefore, we are not persuaded by Appellants’ contentions that Bums is
nonanalogous art and Examiner relied upon improper hindsight to combine
Bums with Hogendijk (App. Br. 14-16).
For the reasons set forth above, we are not persuaded by Appellants’
contention that the combination of Hogendijk, Bums, Tsonton, Quaid, Phee,
and Ayati “do not disclose or suggest ‘a third joint. . .” and “<2 fourth joint”
as required by Appellants’ claim 1.
Appellants fail to explain, or otherwise provide persuasive reasoning
or evidence regarding, what a person of ordinary skill in this art would find
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Application 12/878,840
missing in Bums’ disclosure to support Appellants’ contention that the ‘“pan
rotary potentiometer’ and ‘tilt potentiometer’ are not actually taught or
suggested by Bums, and at the very least are not disclosed in such a way to
sufficiently enable one of ordinary skill in the art to modify Hogendijk with
Bums to arrive at the claimed invention” (App. Br. 9 (citing Bums 7: 60-8:
51); see also id. (“Bums is unworkable”); see Reply Br. 3—4; cf. FF 9-12).
As discussed above, Hogendijk discloses that such mechanisms are
“previously-known” in this art (FF 2). In re Jacoby, 309 F.2d 513, 516
(CCPA 1962) (obviousness “cannot be approached on the basis that workers
in the art would know only what they could read in the references. Those
skilled in the ... art must be presumed to know something about [the art]
apart from what the references disclose”). See also KSR, 550 U.S. at 421
(“A person of ordinary skill is also a person of ordinary creativity, not an
automaton.”).
Notwithstanding Appellants’ contention to the contrary, Appellants’
did not present an argument in their Appeal Brief “that Bums does not
supply the claim limitations ‘a pan position sensor including a pan rotary
potentiometer and a pan locking mechanism’ and ‘a tilt position sensor
including a tilt potentiometer and a tilt locking mechanism’” (Reply Br. 3).
Thus, Appellants’ contention, presented in their Reply Brief, is not timely
filed. See 37 C.F.R. § 41.41(b)(2); see also Ex parte Borden, 93 USPQ2d
1473, 1474 (BPAI 2010) (informative) (Appellant fails to “explain what
‘good cause’ there might be to consider the new argument. On this record,
Appellant’s new argument is belated.”).
Having found no deficiency in the combination of Hogendijk and
Bums, we are not persuaded by Appellants’ contention that Tsonton, Quaid,
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Application 12/878,840
Phee, and Ayati fail to make up for Appellants’ alleged deficiencies in the
combination of Hogendijk and Bums (App. Br. 9; see generally id. at 16-
17).
We recognize Appellants’ discussion of “U.S. Patent Publication
2004/0065792 to Yost et al. (‘Yost’)” (App. Br. 13-16). Examiner,
however, does not rely upon Yost in support of the rejection, but instead
appears to cite Yost, at best, in rebuttal to Appellants’ contentions (see Final
Act. 19-20). Therefore, we are not persuaded by Appellants’ contentions
regarding Yost.
For the foregoing reasons, the rejection of Appellants’ claim 1 under
35 U.S.C. § 103(a) as unpatentable over the combination of Hogendijk,
Bums, Tsonton, Quaid, Phee, and Ayati is affirmed. Claims 2, 17, 19, and
20 are not separately argued and fall with claim 1.
Rejections II VI:
Appellants do not provide separate arguments relating to rejections II-
VI. Instead, Appellants, at best, rely upon their arguments with respect to
rejection I, which, for the reasons set forth above, we found unpersuasive.
Thus, we affirm rejections II-VI.
Rejection VII:
Appellants’ contentions with respect to their independent claim 39 are
the same as those presented with respect to Appellants’ claim 1, which, for
the reasons set forth above, we found unpersuasive (see App. Br. 6-17; see
also Reply Br. 1^1). For the same reasons, we are not persuaded by
Appellants’ contentions with respect to their claim 39.
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Appeal 2017-009843
Application 12/878,840
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness.
All rejections of record are affirmed.
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
18