Ex Parte JOHNSON

Patent Trial and Appeal Board

Jun 11, 2018

12910006 (P.T.A.B. Jun. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/910,006 10/22/2010 NORMAN L. JOHNSON
82357 7590 06/13/2018
James Ray & Associates Intellectual Property, LLC
P.O. Box244
Turtle Creek, PA 15145
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.
NLJ 10089 7125
EXAMINER
W ARSI, YASMEEN S
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
06/13/2018 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):
jray@jrayassoc.com
apogeegroup@comcast.net
snatal@jrayassoc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NORMAN L. JOHNSON
Appeal2017-003390
Application 12/910,006
Technology Center 3700
Before RICHARD M. LEBOVITZ, JOHN E. SCHNEIDER, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
MAJORS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 submits this appeal under 35 U.S.C. § 134 involving
claims to a method of physical therapy, and to a related mobility assessment
device. The Examiner rejected the claims as obvious. We have jurisdiction
under 35 U.S.C. § 6(b). We Reverse and enter New Grounds of Rejection.
1 Appellant identifies the named inventor, Norman L. Johnson, as the real
party in interest. App. Br. 2.
Appeal2017-003390
Application 12/910,006
STATEMENT OF THE CASE
Appellant's "invention relates, in general, to a mobility assessment
device, more particularly, ... to a [floor] mat with pre-selected indicia
disposed thereon for use in evaluating a predetermined person's mobility."
Spec. 1:7-10. According to the Specification, the device "may include
markings or indicia to aid a patient in properly performing one or several
mobility assessment tests [e.g., Four Square Step Test] ... [and the] indicia
may have measurements and other marking for aiding a medical professional
in evaluating a patient's mobility." Id. at 2:4--9; see also id. at 1: 12-20.
The Specification's drawings help to show representative features of
Appellant's "mobility assessment device" ( e.g., "mat type member"). See
Spec. Figs. 1-2; id. at 5:23---6:4. Figure 2 is reproduced below.
Id. Fig. 2. Figure 2 is a perspective view of an embodiment of the invention,
showing a substantially flat, rectangular-shaped base member (unlabeled)
with "indicia" (numbers, lines, arrows) disposed on the base member. Id. at
2
Appeal2017-003390
Application 12/910,006
6:3-22. According to the Specification, "predetermined indicia 16 [may]
include[] at least one of directional markings, directional instructions, length
markings, numbers, letters, words, symbols, and a combination thereof." Id.
at 6:23-7:2. As shown, Fig. 2 includes indicia (16) (e.g., numbered lines
perpendicular to the long edges of the base member), indicating where the
base/mat reaches certain lengths (e.g., 5, 6, 10, 12 feet; 2, 3, 4 meters). Id. at
7:9-14. Figure 2 also shows the base as including first (22) and second (28)
sets of arrows forming, respectively, first (24) and second (32) squares, such
that the second square (32) is formed within the first square (24). Id. at
7: 13-8 :2. As shown, the interior comers of the second square each include a
numeral (1, 2, 3, or 4) and the arrows forming the second square are directed
in a clockwise manner. Id. Fig. 2. The comers of the first square each
include a numeral (5, 6, 7, or 8) and the arrows forming the first square are
directed in a counter-clockwise manner. Id.; see also id. at 7:15-24. The
indicia may also include "a marking to indicate a center point 36 of such
second square 32" and "center point 36 can also be marked down the
mobility assessment device 10 to designate the center of the [base's] width."
Id. at 7:25-8:4. Figure 2 depicts a chair (42) located near a short edge of the
base/mat. Id. Fig. 2. The Specification explains that the device "may be
used alone or with a chair 42 placed closely adjacent thereto to act as a
starting point, and possibly as an ending point" for a patient using the
device. Id. at 8: 19-21.
Claims 2, 3, 5, 6, 15-19, and 21-28 are on appeal. Independent
claims 3, 21, and 24 are reproduced below:
3
Appeal2017-003390
Application 12/910,006
3. A method of physical therapy comprising the steps of:
providing a floor mat having indicia disposed within
confines thereof, said indicia having plurality of lines disposed
generally normal to each of a pair of opposite edges of said floor
mat in a spaced apart relationship with each other, two sets of
arrows oriented in different directions and positioned to define
an inner square and an outer square, markings and plurality of
numerals, each disposed adjacent a respective arrow and adjacent
a respective one of said plurality of lines and defining a specific
distance from one edge disposed normal to said pair of opposite
edges, arrows;
positioning a chair adjacent said one edge disposed normal
to said pair of opposite edges;
moving, by a person undergoing said physical therapy,
through a series of movements beginning with said person sitting
in said chair, then moving therefrom to at least one of
predetermined positions on said floor mat, predetermined
positions near said floor mat, and a combination thereof, said
series of movements including at least one of a Four Square Step
Test, a Figure-of-8 Walk Test, Timed "up and go" tests, and a
Dynamic Gait Index; and
assessing, by observation of a practitioner through said
series of movements, a mobility of said person undergoing said
physical therapy, said mobility including at least one of gait,
speed, and balance.
21. A mobility assessment device consisting of:
a floor mat; and
indicia disposed within confines of said floor mat said
indicia including:
plurality of lines disposed in a spaced apart relationship
with each other generally normal to each of a pair of opposite
edges of said floor mat,
plurality of numerals, each disposed adjacent a respective
one of said plurality oflines and defining a specific distance from
an edge of said mat disposed normal to said pair of opposite
edges,
4
Appeal2017-003390
Application 12/910,006
four first arrows positioned to define a first square adjacent
said edge of said floor mat disposed normal to said pair of
opposite edges,
numerals 5, 6, 7 and 8, each positioned within said
first square at one comer thereof,
four second arrows positioned within said first square
to define a second square,
numerals 1, 2, 3 and 4, each positioned within said
second square at one comer thereof,
plurality of markings disposed in a spaced apart
relationship with each other along said pair of opposite edges to
define a center line of said floor mat, wherein one of said
plurality of markings is disposed within said second square to
define a center point thereof, and
whereby said indicia is configured to assess mobility of a
person undergoing a physical therapy and during a series of
movements of the person within said confines of said floor mat
in at least one of at least one predetermined distance, at least one
predetermined direction, at least one predetermined manner, and
a combination thereof.
24. A mobility assessment device for evaluating, by a
practitioner, a mobility of a patient undergoing physical therapy,
comprising a floor mat having a pair of opposite long edges and
indicia disposed within confines thereof and including lines,
numerals, arrows and plurality of makings [sic markings],
whereby said indicia is configured to assess the mobility of the
patient undergoing the physical therapy and during a series of
movements of the patient within said confines in at least one of
at least one predetermined distance, at least one predetermined
direction, at least one predetermined manner, and a combination
thereof, wherein the mobility includes at least one of gait, speed
and balance and wherein said indicia is configured to cause the
patient to perform at least one of a Four Square Step Test, a
Figure-of-8 Walk Test, Timed "up and go" tests, and a Dynamic
and Gait Index.
App. Br. 33-36 (Claims App'x.).
5
Appeal2017-003390
Application 12/910,006
The claims stand rejected by the Examiner under 35 U.S.C. § I03(a)
over Schneider2 in view of Whitney. 3
DISCUSSION
The Examiner "bears the initial burden ... of presenting a prima facie
case ofunpatentability." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). On the record here, we are not persuaded the Examiner met the
burden to establish that the appealed claims would have been obvious.
Regarding method claim 3, the Examiner finds that Schneider
discloses a method of physical therapy comprising providing a floor mat
having markings/indicia printed on the mat. Ans. 6. According to the
Examiner, these "indicia" include lines disposed generally normal to each of
a pair of opposite edges of the floor mat in a spaced apart relationship with
each other. Id. at 7.
The Examiner finds that "Schneider is silent regarding two sets of
arrows oriented in different directions and positioned to define an inner
square and an outer square," and further silent on the additional numerals
and markings on the mat that are recited in the "providing" step of claim 3.
Id. The Examiner also finds that Schneider is silent regarding the remaining
steps of claim 3 ( e.g., "positioning a chair ... ," "moving, by a person
undergoing physical therapy" through a series of movements such as "a Four
Square Step Test," and "assessing, by observation of a practitioner, through
2 Schneider, US 2009-0181836 Al, published July 16, 2009.
3 Susan L. Whitney et al., The Reliability and Validity of the Four Square
Step Test for People With Balance Deficits Secondary to a Vestibular
Disorder, 88 ARCH PHYS MED REHABIL 99-104 (2007).
6
Appeal2017-003390
Application 12/910,006
said series of movements, a mobility of said person undergoing said physical
therapy."). Id. (underlining omitted).
The Examiner turns to Whitney, finding it teaches the two sets of
arrows and other required numerals. Ans. 7. The Examiner also finds that
Whitney teaches the remaining steps of claim 3, and that "inclusion of other
markings on the device [are] a mere design consideration which would be an
obvious variant of the device as combined." Id. at 7-8.
The Examiner then concludes it would have been obvious "to modify
Schneider, which is an exercise mat created with printed references to show
where in the user should place their extremities" to include the arrows and
other indicia, and to add the steps disclosed in Whitney. Id. According to
the Examiner, this modification would have been made "for the purpose of
implementing a more precise means of extremity placement instruction for
the patient to ensure correct form and further analysis for the observer." Id.
at 8-9.
Although independent claims 21 and 24 are drawn to a "mobility
assessment device," the Examiner provides substantially the same findings,
and gives the same reasoning for modifying the exercise mat of Schneider as
described above. Ans. 2-3, 9-10.
Appellant makes several arguments against the Examiner's rejection. 4
Appellant contends Schneider does not disclose a method of physical
therapy, particularly related to assessing a "mobility" of a subject
undergoing physical therapy. App. Br. 9-10. According to Appellant, the
4 Appellant raises substantially the same arguments for independent claims
3, 21, and 24. See App. Br. 6-15, 17-24, and 25-30.
7
Appeal2017-003390
Application 12/910,006
Examiner has given an unreasonably broad interpretation of "mobility,"
which is inconsistent with the understanding of skilled persons. Id. at 10
( citing Whitney Deel. 5). Appellant contends the combination of Schneider
and Whitney fails to teach all the lines and markings required by the claims.
App. Br. 10-11. Appellant argues "a skilled worker would not have been
compelled to combine Schneider's exercise mat with [Whitney's] teaching
of the PSST [Four Square Step Test]" and that Schneider is non-analogous
art. Id. at 11, 13. And, Appellant contends, the Examiner fails to present a
convincing line of reasoning, and instead provides only a conclusory
assertion in support of the determination of obviousness. Id. at 12, 14--15
(similarly arguing the Examiner's design consideration rationale is lacking).
We find the Examiner has not provided a persuasive line of reasoning
for modifying the exercise mat of Schneider as proposed. The Examiner's
basis for the modification - "for the purpose of implementing a more
precise means of extremity placement instruction for the patient to ensure
correct form and further analysis for the observer" - is inadequately
explained. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007)
("[R ]ejections 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
5 Declaration of Dr. Susan L. Whitney dated Dec. 10, 2015 ("Whitney
Deel."). According to Dr. Whitney the skilled artisan would "clearly
understand that mobility assessment during a physical therapy requires the
patient to remain in a vertical direction while walking on the claimed mat.").
Whitney Deel. ,r 6. Dr. Whitney further declares that she is one of the
authors of the Whitney publication relied upon by the Examiner. Id. ,r 11.
8
Appeal2017-003390
Application 12/910,006
obviousness.") (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
The Examiner has not met the burden on this record to demonstrate
persuasively why the ordinarily skilled person would have modified
Schneider's exercise mat to include the required markings (e.g., the sets of
arrows related to the Four Square Step Test), and that the modified mat
would have been used to perform the claimed method.
For the above reasons, we reverse the Examiner's rejection of
independent claims 3, 21, and 24. We also reverse the rejection of the
dependent claims. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
("[D]ependent claims are nonobvious if the independent claims from which
they depend are nonobvious."). 6
NEW GROUNDS OF REJECTION
As explained further below, we enter a New Ground of Rejection of
independent claims 3, 21, and 24 under 35 U.S.C. § 103(a) as obvious over
Whitney in view of Schneider.
Should there be further prosecution, we leave to the Examiner to
determine whether to make a new ground of rejection of any other claims.
See 37 C.F.R. § 4I.50(b); see also Manual of Patent Examining Procedure
6 Several of the dependent claims require the floor mat be manufactured
from a "projector screen material." App. Br. 34, 36 (claims 5, 6, and 23).
We agree with Appellant that "[t]he Examiner failed to make the rejection
explicit by identifying a specific material that the Examiner believes to be a
projector screen material." See, e.g., App. Br. 16. The Examiner's mere
quotation of Schneider's paragraph 26 (listing numerous materials, none of
which are described as projector screen material) is insufficient without
evidence or technical reasoning to show that any of the listed materials
comprise a projector screen material. Ans. 14.
9
Appeal2017-003390
Application 12/910,006
(MPEP) § 1213.02. Under 37 C.F.R. § 4I.50(b), the Board may, in its
decision, make a new rejection of one or more of any of the claims pending
in the case. Because the exercise of authority under 37 C.F .R. § 41.50(b) is
discretionary, no inference should be drawn from the decision to exercise
that discretion with respect to some but not all of the claims on appeal.
Findings of Fact (FF)
The following findings of fact are provided for emphasis and
convenient reference.
FF 1. Whitney teaches
The development of tools that can help better identify
balance deficits and risk of falling is critical for people with
balance disorders. The Four Square Step Test (PSST) has been
validated as a balance test for identifying fall risk in older
adults. [J It incorporates stepping backward, forward, and
sideways quickly, which have been reported as being difficult for
people with vestibular disorders. [J It is common practice for
physical therapists to have patients perform exercises that
contain components of the PSST-that is, walking or stepping in
place and changing directions[L_yet rarely have therapists
attempted to quantify sideward and backward movements.
Whitney 99.
FF 2. Whitney teaches "the PSST might be used by physicians to
determine if a person should be referred to physical therapy for balance
and/or a falls prevention intervention." Id. at 99. Whitney further teaches
that "validity of the PSST was established by comparing PSST performance
with [inter alia] gait velocity, the Timed Up & Go (TUG) Test[J results,
[and] the Dynamic Gait Index (DGI)." Id. Whitney further teaches that the
PSST "has a sensitivity score of 89%, and for nonmultiple fallers, it has a
10
Appeal2017-003390
Application 12/910,006
specificity of 85% with a positive predictive value of 86% for detecting
history of falls among community-living adults." Id. at 100.
FF 3. Whitney describes the PSST using the figure shown below.
Subjects Always Face This Direction
7 r•.-··-··-··_._._ .._ .._ ... _ ...... •..... _ .._ .._ .._ ... _ •._ ... _!11,·~•-B'l
. 2 . .
8 :
. . . 4 • c ...... ~lo:· .. ·~··PCilo
5
Fi,g 1. The i'SST
3 :
~ 6 . . . . .
Id. at 100 (Fig. 1). This figure illustrates performance of the PSST as the
subject steps, first in a clockwise fashion, sequentially through the positions
labelled 1, 2, 3, 4, and then second in a counter-clockwise fashion through
the positions labelled 5, 6, 7, 8 as illustrated by the arrows shown in the
diagram. Id. As Whitney explains, "[b ]oth feet enter each square," before
proceeding to the next numbered square. Id. In practice of PSST, Whitney
describes using "4 canes that are laid on the ground at 90° angles to each
other (like a 'plus' sign) (fig. 1) ... [and] T-shaped canes were used, so that
there was less risk of people rolling the foot over the cane and injuring the
ankles" when the subjects step from square-to-square. Id. at 100.
11
Appeal2017-003390
Application 12/910,006
FF 4. Whitney further teaches testing subjects using a Timed Up &
Go (TUG) test. Id. Whitney discloses that "[p]atients were asked to stand
from a chair with armrests, walk 3 m, and return to a sitting position in the
armchair at their comfortable pace." Whitney 100, 101. According to
Whitney, "[ s ]cores on the TUG test of 11.2 seconds or greater showed the
highest sensitivity and specificity for identifying a fall history among people
with vestibular dysfunction." Id. at 101. Whitney teaches "[p]atients were
also asked to walk at their normal speed over an 11-m pathway where the
middle 6. lm was recorded with a digital stopwatch so that gait speed could
be determined." Id.
FF 5. Schneider discloses an "exercise mat" including "markings
indicating where a person places their hands in relation to their feet to obtain
the alignment necessary to exercise selected muscles of the chest by
performing one or more pushups." Schneider Abstract. Schneider teaches
that "[ o ]ther markings on the mat may facilitate the desired positioning of
the body for sit-ups and other floor exercises." Id. According to Schneider
"[t ]hese markings and measurements on the mat may facilitate the
positioning of the body for pushups, sit-ups, and many other exercises." Id.
,r 4. For example, Schneider also describes the use of an array or
arrangement of circles or other suitable coded markings on the mat that can
be used for "stretching, lunges, squats, and other floor exercises." Id.
FF 6. Schneider exemplifies an exercise mat that is six feet six inches
in its height and four feet in its width, but teaches that "[t]he size of the mat
100 may[]be adjusted when manufactured to be larger or smaller than
mentioned depending on the design choice desired." Id. ,r 11.
12
Appeal2017-003390
Application 12/910,006
FF 7. Schneider teaches that the coded markings on the mat may take
a variety of forms, such as colors, cross-hatching patterns, dots, ovals,
square, circle, hand prints, and lines. Id.
FF 8. Schneider exemplifies use of a centerline at the center of the
mat to help aid body alignment during performance of the exercises. Id. ,r,r
12-13; see also id. Fig. 1 (line 110). In this embodiment, Schneider further
teaches that "[a]long every twelve inches, or foot, on the centerline is a
marking 140 denoting a foot of length" and that other markings may denote
other lengths (e.g., markings every three inches, every six inches). Id.
,r,r 12-13. Schneider shows these length markings as being horizontal to the
long edges of the mat. Id. Fig. 1. Schneider further teaches that a legend
may be provided on the mat to provide instructions or help explain the
markings. Id. ,r,r 15, 17, Fig. 2.
FF 9. Schneider teaches the mat is preferably durable, tear and water
resistant, flexible, and lightweight. Id. ,r,r 26-30. Schneider teaches the
"mat may be selectively rolled up for storage or unrolled for use" and that,
due to its flexibility and lightweight, it is also easily portable. Id.
Analysis
Claim 3
Whitney describes the performance of a variety of tests designed to
allow a physical therapist to assess a subject's mobility (e.g., gait and
balance) and, based on that assessment, the subject's risk of falling. See FF
1-2, 4. The tests include, for example, the PSST and TUG test, and Whitney
suggests the advantages of using these tests to assess the mobility of elderly
subjects, such as those in community or assisted living facilities. FF 1--4.
13
Appeal2017-003390
Application 12/910,006
Whitney describes the performance of the PSST in detail, and
provides a diagram specifically illustrating - using arrows and numbers -
how the subject should move forward, backward, left, and right through a
series of boxes when taking the test. FF 3. Whitney also describes the TUG
test, and specifically how the subject is instructed to stand from their chair,
and walk certain lengths along a pathway before returning to the chair and
sitting. FF 4.
We find that Whitney teaches or suggests the steps of claim 3, except
that Whitney does not disclose providing a floor mat with the indicia
( arrows, lines, etc.) disposed on it as recited in the claim. Nevertheless,
Schneider teaches a durable, lightweight, and portable floor mat having a
plurality of markings ( e.g., lines, length markers, ovals, etc.) on it, which are
described as useful for indicating where a user should place their hands
and/or feet and align their body when engaging in various exercises (e.g.,
pushups, sit-ups, lunges, and squats). FF 5-9.
We conclude that it would have been obvious to the skilled artisan at
the time of the invention to design a floor mat with the arrows, squares,
numerals and other indicia on it as recited in claim 3, and that the skilled
artisan would have done so with a reasonable expectation of success.
Whitney provides a diagram clearly showing how the PSST is performed.
FF 3. This diagram includes arrows that define inner and outer squares, and
a plurality of numerals adjacent the arrows, defining the subject's clockwise
and counter-clockwise movement consistent with the PSST test. Id. 7 It
7 The particular placement of the numerals (e.g., 1, 2, 3, 4) at an internal
comer of the squares/boxes or somewhere else along the arrow defining the
14
Appeal2017-003390
Application 12/910,006
would have been obvious to dispose Whitney's diagram on a mat to simplify
the practitioner's instructions, and also, the arrows and numbers would have
helped the subject understand the direction and sequence of steps they are
supposed to take- as compared to canes merely being laid out on the
ground. Schneider provides evidence that the use of floor mats having
various indicia printed on the mat to help define the placement and
movement of a subject's body on the mat was known in the prior art.
The skilled person in the art would have had further reason to make
this modification and avoid the use of canes to lessen the risk of injury from
the subject stepping on the canes, and potentially twisting their ankle and/or
falling. FF 3. Also, the skilled person could have, and predictably would
have included other indicia/markings within the larger squares formed by the
arrows ( e.g., a marking centered in the larger squares such as a "plus sign")
to better define the individual numbered boxes into which the subject
sequentially steps. FF 3.
We also conclude it would have been obvious to include a plurality of
horizontal lines, reflecting numbered length markings, along the long edges
of the mat. Whitney teaches that, in the performance of the TUG test, the
subject stands from their chair and walks a certain distance (e.g. 9 meters,
etc.) along a pathway, then turns and walks back to the chair. FF 4. But
Whitney does not specifically describe this pathway as a floor mat. The
squares/boxes (as shown in Whitney's Fig. 1) is merely a matter of design
choice provided the numerals still indicate the generally square-shaped
pattern of steps the subject takes to conduct the PSST (which the numerals
do in Whitney's figure). FF 3.
15
Appeal2017-003390
Application 12/910,006
skilled person, however, would have had multiple reasons for including such
length markings on a floor mat, such as shown in Schneider. First, by
disposing the length markings on the mat itself, this would obviate the need
for additional tools ( e.g., a measuring tape, or cones or other physical
markers placed at the desired lengths). Second, the markings would be
easily seen by the therapist during testing, so the time taken for the subject to
reach certain lengths along the mat could be tracked with accuracy. And
third, by including the markings on a floor mat, this would provide the
therapist with a highly consistent, and easily storable and portable multi-
purpose mobility testing tool (for conducting at least PSST and TUG tests)
that could be used in an office or taken to the location of subjects being
tested (e.g., a community-living facility) as necessary. FF 2, 9.
We address Appellant's contention that Whitney and Schneider are
"completely non-analogous to one another." App. Br. 13. Even assuming
Appellant is correct and Whitney ( as related to balance assessments and
physical therapy) was in a different field than Schneider (as purportedly
related to exercise), the Supreme Court has held that "[ w ]hen a work is
available in one field, design incentives and other market forces can prompt
variations of it, either in the same field or another." KSR Intern. Co. v.
Teleflex Inc., 550 U.S. 398, 401 (2007). In this case, one of ordinary skill in
the art would have had reasonably found the teachings in Schneider about
where to align the body when performing exercises pertinent to Whitney
whose assessment involves body movement and exercise (FF 1) because both
prior art publications require physical activity in the context of improving
health. Nonetheless, we do not necessarily agree that Schneider and
16
Appeal2017-003390
Application 12/910,006
Whitney are in different fields of invention because, while Whitney involves
the performance of a test to assess vestibular disorders in the context of
physical therapy, it expressly teaches that physical therapists have patients
perform exercises (FF 1) and Schneider teaches an exercise mat.
Putting aside whether Schneider is in a different field, as discussed,
we find Schneider is reasonably pertinent to the problem confronting the
inventor. As explained above, Schneider teaches a flexible and easily
storable floor mat with markings to help direct a subject's body placement
and movement on that mat. FF 5-9. The fact that Schneider's mat and
markings would be helpful to a user or physical trainer in assessing whether
a user is performing, for example, a pushup or lunge with the proper form, is
at least reasonably pertinent to a physical therapist looking to explain how to
perform, for example, the Four Square Step Test with the proper form, and
to better assess a subject's performance on that test.
Moreover, we have considered the opinions of Appellant's declarant,
Dr. Whitney, in support of Appellant's contention that the cited art is non-
analogous, yet Dr. Whitney does not consider Schneider for all it teaches
and suggests. Dr. Whitney opines that "the Schneider device is used to
perform exercises in quadruped ( on all 4' s meaning on your hands and
knees)" and "Schneider does not mention any use of the device in the
upright (standing or walking) posture which is the intent of the Dr. Johnson
invention." Whitney Deel. ,r 9. That is not accurate. Schneider discloses its
floor mat is useful for a variety of activities. FF 5. Some involve being on
all fours (like pushups ), but others clearly involve standing and stepping
(like squats and lunges). Id. Hence, Appellant's and Dr. Whitney's
17
Appeal2017-003390
Application 12/910,006
suggestion that Schneider's mat is non-analogous and unsuitable for
mobility assessment applications appears, at least in part, to be based on an
unduly narrow reading of Schneider.
Claims 21 and 24
We conclude that claims 21 and 24 would have been obvious based on
the findings and reasoning explained above. Claims 21 and 24 are directed
to a mobility assessment device, not a method. But, as explained above, it
would have been obvious based on Whitney and Schneider to design a floor
mat with the various indicia claimed, which indicia are configured to assess
a subject's mobility.
The only "indicia" recited in either of claims 21 or 24 that is not
addressed above is in claim 21. And, more specifically, the limitation
reciting a "plurality of markings disposed in a spaced apart relationship ...
to define a center line of said floor mat, wherein one of said plurality of
markings is disposed within said second square to define a center point
thereof." App. Br. 35. We conclude, however, that these additional
markings would have been obvious on the present record. Schneider teaches
markings defining a center along the length of the mat, which is helpful for
orienting the user's body. FF 8. Although Schneider shows this as a solid
line, the inclusion of a line with one or more breaks would have been an
obvious design choice and variation absent persuasive evidence otherwise.
Also, in the proposed, modified floor mat, we find that the skilled person
would have had a reason to include a plurality of markings along the mat's
center to provide cues for the subject of a straight path down mat's length, or
18
Appeal2017-003390
Application 12/910,006
to help the physical therapist more easily observe departures of the subject
from the path and deficits in the subject's balance.
SUMMARY
We reverse the rejection on appeal of claims 2, 3, 5, 6, 15-19, and 21-
28. We enter a New Ground of Rejection of claims 3, 21, and 24 under 35
U.S.C. § 103(a) over Whitney and Schneider.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under §41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
19
Appeal2017-003390
Application 12/910,006
Further guidance on responding to a new ground of rejection can be
found in the MANUAL OF PA TENT EXAMINING PROCEDURE § 1214.01 (9th
Ed., Rev. 07.2015, Nov. 2015).
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).
REVERSED; 37 C.F.R. § 4I.50(b)
20