Ex Parte Osterbye et al

Board of Patent Appeals and Interferences

Oct 15, 2009

10338135 (B.P.A.I. Oct. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte PAUL OSTERBYE and SUZANNE AMBROSE
__________

Appeal 2009-004288
Application 10/338,135
Technology Center 3700
__________

Decided: October 15, 2009
__________

Before DONALD E. ADAMS, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a muscle
rehabilitation device and method of muscle rehabilitation. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

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Statement of the Case
Background
“Utilization of the lumbar spine stabilizers is the basis for spine
stabilization exercises” (Spec. 1, ll. 21-22). The Specification teaches that
“if lumbar spine stabilization exercises are indicated, it is critical that the
lumbar spine stabilizing muscles are actually engaged in exercise” (Spec. 2,
ll. 3-6).
The Claims
Claims 1-6 are on appeal. We will focus on claims 1, 3, 4 and 5
which are representative and read as follows:
1. A muscle rehabilitation device comprising:
a bladder configured to maintain internal pressure;
an envelope surrounding the bladder;
an adjustment belt configured to encompass a human
body portion and secured to the envelope;
a viewable pressure monitor connected to the bladder;
and
a hand pump for pressurizing the bladder.

3. The device of claim 1, wherein:
the pressure monitor is a gauge having a viewable
nonactive dial hand and an active dial hand.

4. A muscle rehabilitation device comprising:
an inflatable bladder;
portable means of retaining the bladder against a
human body portion;
a viewable pressure monitor connected to the bladder
and having a means of indicating a preset pressure level; and
a hand pump for pressurizing the bladder.

5. A method of muscle rehabilitation comprising the
steps of:
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retaining a bladder against a body portion while
enabling the body portion to be displaced;
pressurizing the bladder;
establishing an initial bladder pressure;
manipulating the body while monitoring the bladder
pressure to maintain a constant pressure.

The prior art
The Examiner relies on the following prior art references to show
unpatentability:
Nelson US 1,018,582 Feb. 27, 1912
Lundrigan US 5,205,814 Apr. 27, 1993
Jull US 5,338,276 Aug. 16, 1994

The issues
A. The Examiner rejection claims 5 and 6 under 35 U.S.C. § 102(b) as
anticipated by Jull (Ans. 9).
B. The Examiner rejected claims 1 and 2 under 35 U.S.C. § 103(a) as
obvious over Jull and Lundrigan (Ans. 4-5).
C. The Examiner rejected claims 3 and 4 under 35 U.S.C. § 103(a) as
being obvious over Jull, Lundrigan and Nelson (Ans. 6).
D. The Examiner rejected claims 1, 2, 5, and 6 under 35 U.S.C. § 103(a)
as being obvious over Lundrigan and Jull (Ans. 6-8).
E. The Examiner rejected claims 3 and 4 under 35 U.S.C. § 103(a) as
being obvious over Lundrigan, Jull and Nelson (Ans. 8-9).
A. 35 U.S.C. § 102(b) over Jull
In a New Grounds of Rejection, the Examiner rejected claims 5 and 6
under 35 U.S.C. § 102(b) as being anticipated by Jull (Ans. 9). The
Examiner followed the proper procedure set forth in MPEP § 1207.03 for
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this New Grounds of Rejection, and Appellants properly responded to the
New Grounds of Rejection in the Reply Brief filed June 30, 2008.
The Examiner finds that Jull teaches
[r]etaining a bladder against a body portion while enabling
the body portion to be displaced (the user can move the body
from one side to the other); pressurizing the bladder ;
establishing an initial bladder pressure; manipulating the
body while monitoring the bladder pressure to maintain a
constant pressure; and setting a viewable pressure indicator
to the initial bladder pressure

(Ans. 9).
Appellants argue that “Jull et al. does not teach the limitation of
‘retaining a bladder against a body portion while enabling the body portion
to be displaced’” (Reply Br. 10). Appellants argue that “[b]ecause Jull et
al.’s bladder does not strap to the user, a user employing the Jull et al. device
would not under normal operation retain the bladder against a body portion
while displacing the body portion” (Reply Br. 10).
In view of these conflicting positions, we frame the anticipation issue
before us as follows:
Have Appellants demonstrated that the Examiner erred in finding that
Jull teaches the step of “retaining a bladder against a body portion while
enabling the body portion to be displaced” as required by claim 5?
Findings of Fact (FF)
1. The Specification teaches that a “bladder is retained against a
portion of the body and pressurized” (Spec. Abstract).
2. Jull teaches a “process for monitoring of physiotherapy
exercises . . . which includes the steps of: (1) supporting the pressure pad
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between a body part of a patient requiring monitoring and a support surface
such as a floor, belt, back of a chair, wall, plinth bed” (Jull, col. 3, ll. 3-10).
3. Jull teaches a second step of “(2) inflating the pressure pad until
it moulds between the body part and the support surface” (Jull, col. 3, ll. 11-
12).
4. Jull teaches a third step of “(3) monitoring the pressure on the
feedback means including noting any changes in the pressure . . . In relation
to step (3) once a constant pressure has been obtained then any deviations
from that constant pressure may indicate that the patient is trying too hard or
alternatively is not putting the required effort into the relevant exercise”
(Jull, col. 3, ll. 13-20).
5. Jull shows the bladder in use in figure 6, reproduced below:

“FIG. 6 is a view showing the exercise monitoring device . . . used for
monitoring abdominal muscle training and postural training” (Jull, col. 3, ll.
43-45).
6. The word “retaining” is defined as “to keep or hold in a
particular place, condition, or position” (see
http://education.yahoo.com/reference/dictionary/entry/retain).

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Principles of Law
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable over the
prior art under 35 U.S.C. § 102 begins with a determination of the scope of
the claim.
Claim terms are interpreted using the broadest reasonable
interpretation in light of the Specification. See, e.g., In re Hyatt, 211 F.3d
1367, 1372 (Fed. Cir. 2000) (“[D]uring examination proceedings, claims are
given their broadest reasonable interpretation consistent with the
specification.”). Also see In re Morris, 127 F.3d 1048, 1054-56 (Fed. Cir.
1997). (“Absent an express definition in their specification, the fact that
appellants can point to definitions or usages that conform to their
interpretation does not make the PTO's definition unreasonable when the
PTO can point to other sources that support its interpretation.”)
Analysis
Claim interpretation is at the heart of patent examination because
before a claim is properly interpreted, its scope can not be compared to the
prior art. There is no dispute that Jull teaches a method where an inflatable
bladder is supported between a patient and a support surface, such as a belt
or wall, the bladder is pressurized, an initial bladder pressure is established
and the patient exercises while monitoring the bladder pressure (FF 2-4).
In this case, Appellants challenge the Examiner's interpretation of the
phrase “retaining a bladder against a body portion while enabling the body
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portion to be displaced” as required by claim 5, arguing that “a user
employing the Jull et al. device would not under normal operation retain the
bladder against a body portion while displacing the body portion” (Reply Br.
10).
Thus, before addressing the rejection at issue in this appeal, we must
determine the proper meaning of the phrase “retaining a bladder against a
body portion while enabling the body portion to be displaced.” During
prosecution, claim terms are given their broadest reasonable interpretation as
they would be understood by persons of ordinary skill in the art in the light
of the Specification. We therefore first turn to the Specification to determine
whether the meaning of the phrase “retaining a body portion” can be
discerned.
The Specification teaches that a “bladder is retained against a portion
of the body and pressurized” (Spec. Abstract; FF 1). While the phrase at
issue was filed in the original claims, we do not find any discussion of the
phrase in the Specification, nor do Appellants identify any discussion of any
specific language describing this embodiment .
The ordinary skilled worker would have therefore understood
“retaining” using its ordinary meaning of “to keep or hold in a particular
place, condition, or position” (FF 6). Jull teaches that the patient, as shown
in Figure 6, for example, holds the bladder in a particular position while
exercising abdominal muscles by leg movements (see FF 5).
We therefore agree with the Examiner that Jull anticipates claim 5
since Jull teaches the step of “retaining a bladder against a body portion
while enabling the body portion to be displaced” (FF 2-5).
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Conclusion of Law
Appellants have not demonstrated that the Examiner erred in finding
that Jull teaches the step of “retaining a bladder against a body portion while
enabling the body portion to be displaced” as required by claim 5.
B. and D. 35 U.S.C. § 103(a) over Jull and Lundrigan
The Examiner rejected claims 1 and 2 under 35 U.S.C. § 103(a) as
obvious over Jull and Lundrigan (Ans. 4-5). The Examiner also rejected
claims 1, 2, 5, and 6 under 35 U.S.C. § 103(a) as being obvious over
Lundrigan and Jull (Ans. 6-8). Because these two rejections rely upon the
same two references, we consider them together.
The Examiner finds that “Jull et al teaches a device comprising a
bladder ( figures 6-9) configured to maintain internal pressure, hand pump
24 (figures 1A, 1 B) and viewable pressure monitor 19 connected to the
bladder for self-monitoring” (Ans. 4). The Examiner finds that “Lundrigan
et al teaches a device comprising a bladder 13 configured to maintain
internal pressure, an envelope 16’ surrounding the bladder (figure 7), an
adjustable belt 22,23 ( figure 2), a hand pump 27 pressurizing the bladder”
(Ans. 6-7). The Examiner finds it obvious in view of Lundrigan, “to provide
the bladder of Jull et al with an envelope surrounding the bladder to protect
the bladder, and with an adjustable belt 22,23 ( figure 2) in order to secure
the bladder to a user” (Ans. 5).
Appellants argue that “Neither the disclosure of Lundrigan et al. or
Jull et al. would motivate one that is skilled in the art to employ a belt on a
device similar to that described by Jull et al. to realize the advantages of
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Petitioners’ invention” (App. Br. 7). Appellants argue that “there is no
reason one that is skilled in the art would be motivated to provide a pressure
gauge on a lumbar support device. Accordingly, since ‘motivation to
combine’ has not been shown, a prima facie case of obviousness has not
been made” (App. Br. 7).
Appellants also argue that “the Patent to Lundrigan et al. is
nonanalogous art in comparison to Petitioners’ invention and the Patent to
Jull” (App. Br. 7).
In view of these conflicting positions, we frame the obviousness issue
before us as follows:
Have Appellants demonstrated that the Examiner erred in finding that
it would have been obvious to modify the monitoring device of Jull with a
belt as taught by Lundrigan?
Findings of Fact
7. Jull teaches “an exercise monitoring device including a pressure
pad, an air pump, feedback means and an air line associated with the
pressure pad, air pump and feedback means to permit inflation of the
pressure pad for monitoring purposes” (Jull, col. 1, ll. 61-66).
8. Jull teaches “an exercise monitoring device 10 having a
pressure pad 11 including air compartments or chambers 12 separated by
boundaries 13 having restricted air passages 14” (Jull, col. 3. 58-61).
9. Jull teaches that the device has a gauge and that “the patient can
monitor his own progress by reading the pressure valve on gauge 19” (Jull,
col. 4, ll. 42-43).
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10. Jull teaches that the “air pump may be of any suitable kind and
suitable comprises an air bulb or pressure bulb which may be actuated or
pressurised manually” (Jull, col. 2, ll. 25-27).
11. Jull teaches “supporting the pressure pad between a body part
of a patient requiring monitoring and a support surface such as a . . . belt”
(Jull, col. 3, ll. 7-9).
12. Figure 2 of Lundrigan is reproduced below:

“FIG. 2 is a view of the cushion holding band” (Lundrigan, col. 1, l. 47).
13. Lundrigan teaches “an outer container or envelope 16 . . .
within which said cushion 10 is contained for use” (Lundrigan, col. 2, ll. 28-
30).
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14. Lundrigan teaches that cushion 10 has “a cavity 12. Disposed
within said cavity is an inflatable bladder 13 having an air tube 14 extending
therefrom. … Said valve yields to pressure such as the pressure of incoming
air for inflation or to the pressure of suction for withdrawal of air or
deflation” (Lundrigan, col. 2, ll. 21-27).
15. Lundrigan teaches “a squeeze type of air pump 27 is shown
which pumps air into said bladder with its inlet valve 27a” (Lundrigan, col.
2, ll. 62-64).
16. Lundrigan teaches that “a strap or band 30 is shown in
connection with the cushion device” (Lundrigan, col. 3, ll. 24-25).
Principles of Law
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
The Supreme Court has recently emphasized that “the [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int'l v. Teleflex Inc., 550 U.S. 398, 418 (2007).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Id. at 416. “If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability.” Id. at 417.
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Moreover, an “[e]xpress suggestion to substitute one equivalent for
another need not be present to render such substitution obvious.” In re Fout,
675 F.2d 297, 301 (CCPA 1982). As noted by the Court in KSR, “[a] person
of ordinary skill is also a person of ordinary creativity, not an automaton.”
550 U.S. at 421.
Analysis
Jull teaches a muscle rehabilitation device which comprises a bladder,
a viewable pressure monitor and a hand pump (FF 7-10). Jull also suggests
that the pad be placed between the patient and a support such as a belt (FF
11). Lundrigan teaches a device for lumbar support which comprises a
bladder, an envelope surrounding the bladder, an adjustment belt and a hand
pump (FF 12-16).
Applying the KSR standard of obviousness to the findings of fact,
incorporation of Lundrigan’s envelope around the bladder into the device of
Jull along with the use of an adjustment belt represents a combination of
known predictable elements which would reasonably be expected to function
as a muscle rehabilitation device. Such a combination is merely a
“predictable use of prior art elements according to their established
functions.” KSR, 550 U.S. at 417.
We are not persuaded by Appellants argument that the “evidence of a
suggestion, teaching, or motivation to combine prior art references must be
established in order to set forth a prima facie case of obviousness” (App. Br.
8).
In KSR, the Supreme Court rejected the rigid application of the
teaching, suggestion, and motivation test by the Federal Circuit, stating that
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The principles underlying [earlier] cases are instructive
when the question is whether a patent claiming the
combination of elements of prior art is obvious. When a
work is available in one field of endeavor, design incentives
and other market forces can prompt variations of it, either in
the same field or a different one. If a person of ordinary skill
can implement a predictable variation, § 103 likely bars its
patentability.

KSR Int'l v. Teleflex Inc., 550 U.S. 398, 417 (2007). The addition of the belt
and envelope of Lundrigan to the device of Jull is a predictable variation and
the Examiner provides specific reasons for making these changes, noting
that it would have been obvious to “provide the bladder of Jull et al with an
envelope surrounding the bladder to protect the bladder, and with an
adjustable belt 22, 23 (figure 2) in order to secure the bladder to a user”
(Ans. 5).
We are also not persuaded by Appellants argument that “the Patent to
Lundrigan et al. is nonanalogous art in comparison to Petitioner’s invention
and the Patent to Jull” (App. Br. 9). In Icon, the Federal Circuit explained
that
A reference is reasonably pertinent if, even though it may
be in a different field from that of the inventor's endeavor, it
is one which, because of the matter with which it deals,
logically would have commended itself to an inventor's
attention in considering his problem.” In re Clay, 966 F.2d
656, 659 (Fed.Cir.1992). In other words, “familiar items
may have obvious uses beyond their primary purposes.”
KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 127 S.Ct.
1727, 1742 (2007). We therefore have concluded, for
example, that an inventor considering a hinge and latch
mechanism for portable computers would naturally look to
references employing other “housings, hinges, latches,
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springs, etc.,” which in that case came from areas such as “a
desktop telephone directory, a piano lid, a kitchen cabinet, a
washing machine cabinet, a wooden furniture cabinet, or a
two-part housing for storing audio cassettes.” Paulsen, 30
F.3d at 1481-82.

In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379-1380 (Fed. Cir.
2007). In achieving Jull’s purpose of “supporting the pressure pad between
a body part of a patient requiring monitoring and a support surface such as a
. . . belt” (Jull, col. 3, ll. 7-9), we think that the ordinary practitioner would
have reasonably considered other devices with pressure pads which were
designed to support body parts of patients such as the lumbar support of
Lundrigan. We therefore find that Lundrigan is reasonably pertinent to the
purposes of Jull (FF 11, 16).
Conclusion of Law
Appellants have not demonstrated that the Examiner erred in finding
that it would have been obvious to modify the monitoring device of Jull with
a belt as taught by Lundrigan.
C. and E. 35 U.S.C. § 103(a) over Jull, Lundrigan, and Nelson
The Examiner rejected claims 3 and 4 under 35 U.S.C. § 103(a) as
being obvious over Jull, Lundrigan and Nelson (Ans. 6, 9).
The Examiner finds that “Jull et al and Lundrigan et al do not teach a
pressure monitor having both viewable non-active dial hand and active dial
hand. Nelson teaches a pressure monitor with a viewable non-active dial
hand 10, and an active dial hand 7” (Ans. 6). The Examiner finds it obvious
“to substitute the pressure monitor of Jull et al with a pressure monitor
having a viewable non-active dial hand and an active dial hand in order for a
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user to preset and monitor the pressure of the inflatable bladder” (Ans. 6).
The Examiner finds that the “substitution of one pressure monitor with
another well known pressure monitor for viewing and monitoring the
pressure, and for a user to preset and monitor the pressure of the inflatable
bladder, is well within the realm of one ordinary skill in the art, and does not
provide any unobvious result” (Ans. 6).
Appellants argue that “[t]here is no teaching in the Nelson reference
(or in any of the cited references) that suggests that it would be desirable to
use the ‘maximum pressure indicator’ of Nelson’s pressure gauge in
combination with the exercise monitoring device of Jull” (App. Br. 9).
Appellants further argue that “the pressure gauge of Nelson is also
‘nonanalogous art.’ Applying the test for analogous art from In re Clay,
Nelson is from a different field of endeavor” (App. Br. 9).
In view of these conflicting positions, we frame the obviousness issue
before us as follows:
Have Appellants demonstrated that the Examiner erred in finding it
obvious to use the substitute the pressure monitor of Nelson for the pressure
monitor of Jull?
Findings of Fact
17. Nelson teaches the pressure gauge shown in Figure 1,
reproduced below:
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“Figure 1 is a front elevation of a gage” (Nelson 1, col. 1, ll. 26-27).
18. Nelson teaches “a pressure indicator (7) . . . whereby, when the
tube (2) responds to variations in pressure, the indicator (7) will show these
variations on the face” (Nelson 1, col. 2, ll. 69-74).
19. Nelson teaches “a maximum pressure indicator (10). This
indicator is preferably secured in position upon a rotatable stud (11) . . . The
maximum pressure indicator hand (10) is formed of thin wire which is
secured in position on the stud” (Nelson 1, col. 2, ll. 75-90).
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR at 416. “If a person of ordinary skill can implement a predictable
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variation, § 103 likely bars its patentability.” Id. at 417. Moreover, an
“[e]xpress suggestion to substitute one equivalent for another need not be
present to render such substitution obvious.” In re Fout, 675 F.2d 297, 301
(CCPA 1982).
Analysis
Jull teaches the use of a viewable pressure gauge on a muscle
rehabilitation device (FF 8-9). Nelson teaches pressure gauges with
viewable nonactive dial hands and an active dial hand (FF 17-19).
Applying the KSR standard of obviousness to the findings of fact,
substitution of the pressure gauge of Nelson for the pressure gauge used by
Jull represents a combination of known predictable elements which would
reasonably be expected to function to measure the pressure, including
maximum pressure, of Jull’s muscle rehabilitation device. Such a
combination is merely a “predictable use of prior art elements according to
their established functions.” KSR, 550 U.S. at 417.
We are not persuaded by Appellants argument that “[n]either the
references themselves nor the Examiner have shown a motivation to
combine the references” (App. Br. 11). As noted supra, the Supreme Court
rejected the rigid application of the teaching, suggestion, and motivation test
by the Federal Circuit. See KSR, 550 U.S. at 417. The Examiner applied the
KSR test and found that the substitution of pressure monitors “is well within
the realm of one ordinary skill in the art, and does not provide any
unobvious result, and therefore is not patentable over prior art” (Ans. 9).
We also are not persuaded by Appellants argument that “the pressure
gauge of Nelson is also ‘nonanalogous art’” (App. Br. 11). In achieving
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Jull’s purpose of “(3) monitoring the pressure on the feedback means
including noting any changes in the pressure” (Jull, col. 3, ll. 13-14; FF 4),
we think that the ordinary practitioner would have reasonably considered
other pressure gauges. We therefore find that Nelson is reasonably pertinent
to the purposes of Jull (FF 17-19).
Conclusion of Law
Appellants have not demonstrated that the Examiner erred in finding it
obvious to use the substitute the pressure monitor of Nelson for the pressure
monitor of Jull.
SUMMARY
In summary, we affirm the rejection of claim 5 under 35 U.S.C. §
102(b) as anticipated by Jull. Pursuant to 37 C.F.R. §
41.37(c)(1)(vii)(2006), we also affirm the rejection of claim 6 as this claim
was not argued separately.
We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as
obvious over Jull and Lundrigan. Pursuant to 37 C.F.R. §
41.37(c)(1)(vii)(2006), we also affirm the rejection of claims 2, 5, and 6 as
these claims were not argued separately.
We affirm the rejection of claim 3 under 35 U.S.C. § 103(a) as
obvious over Jull, Lundrigan, and Nelson. Pursuant to 37 C.F.R. §
41.37(c)(1)(vii)(2006), we also affirm the rejection of claim 4 as this claim
was not argued separately.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006).
AFFIRMED
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