Ex Parte Janssen et al

Patent Trial and Appeal Board

Jul 17, 2018

13505239 (P.T.A.B. Jul. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/505,239 04/30/2012
57600 7590 07/26/2018
HOLLAND & HART
222 South Main Street, Suite 2200
P.O. Box 11583
Salt Lake City, UT 84110
FIRST NAMED INVENTOR
Heinz-Gerd Janssen
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.
76156.0235 4510
EXAMINER
WILLSE, DAVID H
ART UNIT PAPER NUMBER
3738
NOTIFICATION DATE DELIVERY MODE
07/26/2018 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):
PA TENTDOCKET@HOLLANDHART.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEINZ-GERD JANSSEN, MARKUS SCHNEEGANS,
and WALDEMAR SCHNEEGANS
Appeal2017-004933
Application 13/505,239 1
Technology Center 3700
Before ELIZABETH A. LA VIER, RICHARD J. SMITH,
and TIMOTHY G. MAJORS, Administrative Patent Judges.
LA VIER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants seek review of the
Examiner's rejections of claims 1, 2, 4, 5, 7, 9, 11, and 13-24. We have
jurisdiction under 35 U.S.C. § 6(b ). For the reasons set forth below, we
REVERSE.
BACKGROUND
The Specification relates to a casing for an artificial limb and methods
for producing the same. See Spec. 1 :4--11.
Claim 21 is illustrative, and recites:
1 Appellants state the real party in interest is Otto Bock Healthcare GmbH.
Appeal Br. 1.
Appeal2017-0094933
Application 13/505,239
21. An artificial limb casing, comprising
an insertion opening for inserting the artificial limb, wherein a
joint area to which an end area is integrally connected is formed
on the casing, the joint area being arranged in alignment with a
joint of the artificial limb, the end area being arranged distal of
the joint area along a length of the artificial limb casing, and the
casing is formed from an elastomer material that has a lower
Shore hardness in the joint area than in the end area, wherein
there is a lower material thickness in the joint area than in the
end area.
Appeal Br. 30 (Claims Appendix) (emphases added).
REJECTIONS MAINTAINED ON APPEAL
1. Claims 21 and 22 stand rejected under pre-AIA 35 U.S.C. § 102(b)
as anticipated by Watts. 2 Ans. 2.
2. Claim 23 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Watts. Ans. 2.
3. Claims 1, 2, 4, 5, 7, 9, 11, and 13 stand rejected under pre-AIA 35
U.S.C. § 103(a) as unpatentable over Watts and Asgeirsson. 3 Ans.
2.
4. Claims 1, 2, 4, 5, 7, 9, 11, 13-19, and 21-23 stand rejected under
pre-AIA 35 U.S.C. § 103(a) as unpatentable over Bouchier-
Blease. 4 Ans. 3.
2 Watts, EP O 985 388 A2, published Mar. 15, 2000.
3 Asgeirsson et al., US 7,503,937 B2, issued Mar. 17, 2009.
4 Bouchier-Blease et al., GB 2 357 725 A, published July 4, 2001.
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Application 13/505,239
5. Claims 20 and 24 stand rejected under pre-AIA 35 U.S.C. § I03(a)
as unpatentable over Grundei. 5 Ans. 4.
DISCUSSION
A. Rejection 1
The Examiner finds that Watts teaches all of the elements of claim 21,
including an artificial limb casing "comprising a joint area of lower material
thickness (e.g., at the back of the knee: column 8, lines 53-54) and a higher
Shore hardness end area distal of the patella (column 8, lines 46-53; Figure
5) or along the foot (column 8, lines 38-44)." Final Action 2 (emphasis
added). From our review of the cited passages of Watts, however, it appears
that Watts teaches altering Shore hardness or thickness as alternative
approaches. As Appellants put it, "Watts only discloses either the lower
Shore hardness in the joint area or a lower material thickness in the joint
area, but not both features together." Reply Br. 3. Because claims 21 and
22 each requires the 'joint area" to have a lower Shore hardness and a lower
material thickness than the "end area," the Examiner has not established that
Watts anticipates claim 21 or claim 22. On this record, we must reverse
Rejection 1.
B. Rejections 2-5
Rejections 2 and 3 sound in obviousness, not anticipation. But the
shortcomings in Watts described above with respect to Rejection 1 also lead
5 Grundei, DE 10040955 Al, published Mar. 7, 2002.
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Application 13/505,239
to problems for Rejections 2 and 3, 6 as the rejected claims directly or
indirectly recite the same requirement for the 'joint area" to have a lower
Shore hardness and a lower material thickness than the "end area." In the
absence of a finding by the Examiner that it would have been obvious from
Watts to do both instead of one or the other, 7 we cannot sustain these
rejections. Accordingly, we reverse Rejections 2 and 3.
Rejections 4 and 5, though based on different references, suffer from
similar problems. In neither Bouchier-Blease nor Grundei do we discern a
teaching or suggestion of the 'joint area" having a lower Shore hardness and
a lower material thickness than the "end area," as required by the claims
subject to these rejections. See generally Appeal Br. 23-24. Specifically, in
regard to Rejection 4, the Examiner cites portions of Bouchier-Blease (see
Final Action 3--4) supporting different Shore hardness values. But the
Examiner's inference that the upper areas of the foot portion is "relatively
thick" compared to the knee joint area because it has a single layer (id. at 4)
does not appear to be supported adequately by the record. Nor can a
difference in thickness in the manner claimed be inferred ( as the Examiner
suggests (see id. at 4)) merely from the ranges for the foot portion cited in
claim 7 of Bouchier-Blease. Rejection 5 similarly leans too heavily on
inferences (see id. at 4--5). Accordingly, we reverse Rejections 4 and 5.
6 For Rejection 3, the Examiner relies on Asgeirsson only for its teaching of
polyurethane foam. See Final Action 3. Accordingly, Asgeirsson does not
cure the deficiencies of Watts.
7 Watts teaches using thicker silicone or stiffer silicone to reduce creasing or
ballooning. See Watts ,r 41. In the absence of record evidence, we decline to
speculate how using both approaches at the same time might affect the
prosthesis cover, either as to creasing/ballooning or otherwise.
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Application 13/505,239
CONCLUSION
The rejections of claims 1, 2, 4, 5, 7, 9, 11, and 13-24 are reversed.
REVERSED
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