Ex Parte Herr et al

Patent Trial and Appeal Board

Oct 1, 2018

14150840 (P.T.A.B. Oct. 1, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/150,840 01/09/2014
121159 7590 10/03/2018
Kacvinsky Daisak Bl uni PLLC-Boston
Scott T. Bluni
50 Doaks Lane
Marblehead, MA 01945
FIRST NAMED INVENTOR
Hugh Miller Herr
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
8120BI00106US 1643
EXAMINER
SNOW, BRUCE EDWARD
ART UNIT PAPER NUMBER
3738
NOTIFICATION DATE DELIVERY MODE
10/03/2018 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):
docketing@kdbfirm.com
bbonneville@kdbfirm.com
ehysesani@kdbfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HUGH MILLER HERR, RICHARD J. CASLER JR.,
ZHIXIU HAN, CHRISTOPHER ERIC BARNHART,
GARY GIRZON, and DAVID ADAMS GARLOW1
Appeal2017-008265
Application 14/150, 840
Technology Center 3700
Before: DEMETRA J. MILLS, RICHARD M. LEBOVITZ, and
RYAN H. FLAX, Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims to an ankle-foot prosthesis or orthosis apparatus. 2 The Examiner's
rejection of claims 1-3, 5, and 6 under 35 U.S.C. § 102(b) is appealed. 3 We
have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 The Real Party in Interest is identified as "BionX Medical Technologies,
Inc." Appeal Br. 2.
2 We herein refer to the Specification of Jan. 9, 2014 ("Spec."); Final Office
Action Aug. 20, 2015 ("Final Action"); Appeal Brief of Aug. 30, 2016
("Appeal Br."); and Examiner's Answer of Nov. 22, 2016 ("Answer"). No
Reply Brief was submitted.
3 A rejection of claims 1-7 as indefinite and the rejection for anticipation as
to claims 4 and 7 were each withdrawn. Answer 5.
Appeal2017-008265
Application 14/150,840
STATEMENT OF THE CASE
Independent claim 1, reproduced below, is representative:
1. An ankle-foot prosthesis or orthosis apparatus comprising:
a shank member;
a foot member that is operatively configured with respect
to the shank member so as to support walking and permit the foot
member to plantarfiex and dorsiflex with respect to the shank
member;
a motor configured to plantarflex the foot member with
respect to the shank member;
a series elastic element connected between at least one of
(a) the motor and the shank member and (b) the motor and the
foot member;
a bumper coupled to at least one of the shank member and
the foot member;
at least one sensor having an output from which a
deflection of the series elastic element and a compression of the
bumper can be determined, the at least one sensor comprising a
sensor that senses a position of the motor and a sensor that senses
a sensed angle e of the foot member with respect to the shank
member; and
a controller configured to determine a torque component
rs based on the position of the motor, the sensed angle e, and
torque vs. deflection characteristics of the series elastic element,
to determine a desired torque based on the output and to control
motor torque based on the determined desired torque.
Appeal Br. 16 (Claims Appendix).
The following rejection is on appeal:
Claims 1-3, 5, and 6 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Herr. 4 Final Action 3; see also Answer 2.
4 US 2006/0249315 Al (pub. Nov. 9, 2006) ("Herr").
2
Appeal2017-008265
Application 14/150,840
DISCUSSION
"[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting aprimafacie case ofunpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
"Anticipation requires that all of the claim elements and their limitations are
shown in a single prior art reference." In re Skvorecz, 580 F.3d 1262, 1266
(Fed. Cir. 2009).
The Examiner determined claims 1-3, 5, and 6 are anticipated by
Herr. Final Action 3-5 and Answer 5-9 (citing Herr ,r,r 40, 142, 192-203,
Figures 20, 50); see also Herr ,r,r 125, 137-141, 143 (for context).
Appellants argue Herr does not disclose the following claim
limitations:
at least one sensor having an output from which a
deflection of the series elastic element and a compression of the
bumper can be determined, the at least one sensor comprising a
sensor that senses a position of the motor and a sensor that senses
a sensed angle e of the foot member with respect to the shank
member; and
a controller configured to determine a torque component
rs based on the position of the motor, the sensed angle e, and
torque vs. deflection characteristics of the series elastic element,
to determine a desired torque based on the output and to control
motor torque based on the determined desired torque.
Appeal Br. 10-12.
For a disclosure of such limitations, the Examiner pointed to Herr's
Figure 50 and paragraph 202. Final Action 5; see also Answer 9. This
paragraph and Figure 50 are reproduced together below:
3
Appeal2017-008265
Application 14/150,840
Instead of directly measuring
the deflection of the motor 5Q02
series springs as noted at ( 4)
5004 -----above, sensory information
from the position sensors ( 1) !iOOO
can be employed. By sub-
tracting the biomimetic joint sooo -------...
angle from the motor output
shaft angle, it is possible to sow ------...,
Sp~g