Ex Parte Pallari

Patent Trial and Appeal Board

Mar 28, 2017

12636219 (P.T.A.B. Mar. 28, 2017)

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.
12/636,219 12/11/2009 Jari Heikki Petteri PALLARI E1278.001(T).US 1888
134602 7590
Fairview IP
c/o Phillip Bennett
2305 Historic Decatur Road
Suite 100
San Diego, CA 92106
EXAMINER
WILLSE, DAVID H
ART UNIT PAPER NUMBER
3738
NOTIFICATION DATE DELIVERY MODE
03/30/2017 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):
pbennett @ fairviewip. com
u spto @ fairviewip .com
uspto@dockettrak.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JARI HEIKKI PETTERI PALLARI
Appeal 2015-006592
Application 12/636,219
Technology Center 3700
Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA,
Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jari Heikki Petteri Pallari (Appellant) seeks our review under
35 U.S.C. § 134 of the final rejection of claims 1, 2, 5—13, and 21—29. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
THE INVENTION
Appellant’s claimed invention is directed to orthotic and prosthetic
devices having a cushioning layer.
Claims 1 and 21 are independent. Claim 1, reproduced below, is
illustrative:
Appeal 2015-006592
Application 12/636,219
1. A prosthetic or orthotic device comprising:
an orthotic or prosthetic shell; and
a cushioning layer superimposed onto the orthotic or
prosthetic shell, the cushioning layer comprising an array of
discrete solid, deformable, and compressibly resilient
cushioning elements that are integrally formed with the orthotic
or prosthetic shell, wherein one or more of the cushioning
elements of the array comprises a cantilevered beam extending
outwardly from the cushioning layer, wherein the cantilevered
beam is positioned to make contact with at least one of a patient
or an item directly contacting the patient, and wherein the item
directly contacting the patient comprises a surface of a second
shell, wherein the second shell has a varied thickness.
REJECTIONS
The Examiner rejects:
(i) claims 1, 5, 7, 9-12, 21, and 23—29 under 35 U.S.C. § 102(b) as
being anticipated by Fusco (WO 2007/060500 A2, published May 31, 2007
via corresponding US 2008/0301975 Al, published Dec. 11, 2008)1; and
(ii) claims 2, 6, 8, 13, and 22 under 35 U.S.C. § 103(a) as being
unpatentable over Fusco.
ANALYSIS
Claims 1, 5, 7, 9—12, 21, and 23—29—Anticipation—Fusco
The Examiner finds that Fusco teaches all limitations of independent
claims 1 and 21, and states that the term “‘item’ (instant claim 1 at line 9) is
not a positively recited element of the device as claimed, and the Fusco
1 Throughout the decision, “Fusco” refers to US 2008/0301975 Al and
its paragraph numbering for consistency with Appellant and the Examiner.
2
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Application 12/636,219
cushioning layer is certainly capable of functioning with an item of uneven
wear due to usage, for instance.” Final Act. 2. The Examiner considers that
“the second shell corresponds to one or both of elements 3 and 6, for
example, and is of varied thickness by virtue of elastic and/or plastic
deformation at the stress concentrations imparted by discrete elements 5.”
Id.; see also Ans. 2.
Appellant notes that although the “patient” and the “item directly
contacting the patient” are not positively recited, the cantilevered beam is,
and the claim requires that the cantilevered beam has a particular structure
that is positioned to make contact with a patient or an item directly
contacting the patient, and that the item directly contacting the patient
comprises a surface having a varied thickness. See Appeal Br. 8. Appellant
argues that at least layer 3 of Fusco precludes direct contact between the
patient and elastic element 4 (cantilevered beam), and, although layer 3
directly contacts the patient, layer 3 has a uniform thickness, not a varied
thickness. Id. at 8—9. Appellant notes that even if the combination of layers
3 and 6 is considered the item directly contacting the patient, each of these
layers has a uniform thickness. See Reply Br. 7. Appellant contends that the
Examiner’s position that the cushioning layer of Fusco is “capable of
functioning with an item of uneven wear due to usage” is speculation and is
insufficient to support an anticipation rejection because uneven wear to
create a varied thickness is not an inherent feature. See id. at 8; see also
Appeal Br. 9.
Appellant has the better position here. Although we appreciate that
neither the patient nor an item directly contacting the patient is positively
recited, we understand the term “positioned to make contact,” to require that
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Application 12/636,219
the cantilevered beam has a structure that is capable of contacting the patient
and/or an item in direct contact with the patient that has a varied thickness.
Fusco discloses that “[ijnsole 1 comprises a bottom layer 2 apt to contact the
shoe insole and a top layer 3 apt to contact the subject’s sole of the foot.”
Fusco, para. 13. Fusco also discloses that elastic elements 4 (cantilevered
beam), including coupling means 5 are between layers 2 and 3. Id.', Fig. 3.
As such, elastic elements 4 and coupling means 5, which collectively form
the cantilevered beam do not contact the patient. Nor does the Examiner
point to any portion of Fusco that discloses a cantilevered beam in contact
with the patient, or capable of being so.
Fusco also discloses “[pjreferably, between the top layer 3 and the
elastic elements 5 it is also provided an additional intermediate layer 6.” Id.
para 16. The term “preferably” here denotes that layer 6 is included in the
preferred embodiment, but is not required by all embodiments. Nonetheless,
regardless of whether layer 3, or the combination of layers 3 and 6, is
considered the item directly contacting the patient, the Examiner does not
point to any portion of Fusco disclosing that layers 3 and 6 are other than
substantially uniform. See id. Fig. 3; see also Reply Br. 7—8.
In taking the position that one or both of elements 3 and 6 of Fusco
has a varied thickness “by virtue of elastic and/or plastic deformation at the
stress concentrations imparted by discrete elements 5,” the Examiner
invokes the principle of inherent disclosure. Under principles of inherency,
when a reference is silent about an asserted inherent characteristic, it must be
clear that the missing descriptive matter is necessarily present in the thing
described in the reference, and that it would so be recognized by persons of
ordinary skill in the art. Continental Can Co. v. Monsanto Co., 948 F.2d
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Appeal 2015-006592
Application 12/636,219
1264, 1268 (Fed. Cir. 1991). It appears that the Examiner takes the position
that different portions of the same layer, i.e. layer 3, or layers 3 and 6, will
deform to different thicknesses when the article is worn. See Final Act. 2.
However, the claims recite that the item has a varied thickness, which
requires a varied thickness in the absence of any deformation caused by a
patient.
For these reasons, the Examiner has not established by a
preponderance of the evidence that Fusco discloses a cantilevered beam
positioned to make contact with at least one of a patient or an item directly
contacting the patient, and wherein the item directly contacting the patient
has a varied thickness. The rejection of claims 1 and 21, and of claims 5, 7,
9-12, and 23—29 depending therefrom, as anticipated by Fusco, is not
sustained.
Claims 2, 6, 8, 13, and 22—Obviousness—Fusco
Claims 2, 6, 8, and 13 depend from claim 1, and claim 22 depends
from claim 21. The Examiner’s finding that the item of Fusco directly
contacting the patient has a varied thickness is not supported by a
preponderance of the evidence, as discussed above relative to the rejection
of claims 1 and 21. Furthermore, the Examiner’s modification of Fusco
does not remedy the deficiency of Fusco discussed supra. See Final Act. 3—
4.
Accordingly, the rejection of claims 2, 6, 8, 13, and 22 is not sustained
for the same reasons that the rejection of claims 1 and 21 as anticipated by
Fusco was not sustained.
DECISION
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Appeal 2015-006592
Application 12/636,219
The Examiner’s decision to reject claims 1,2, 5—13, and 21—29 is
reversed.
REVERSED
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