Ex Parte Seyr et al

Patent Trial and Appeal Board

Jul 19, 2017

13508525 (P.T.A.B. Jul. 19, 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.
13/508,525 05/07/2012 Martin Seyr 76156.0232 1005
57600 7590
HOLLAND & HART
222 South Main Street, Suite 2200
P.O. Box 11583
Salt Lake City, UT 84110
EXAMINER
WATKINS, MARCIA LYNN
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
07/21/2017 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):
PATENTDOCKET@HOLLANDHART.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN SEYR, PHILIPP KAMPAS, and CONSTANTIN POP
Appeal 2015-007621
Application 13/508,525
Technology Center 3700
Before LINDA E. HORNER, LISA M. GUIJT, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Martin Seyr et al. (Appellants)1 seek our review under 35 U.S.C.
§ 134(a) of the Examiner’s decision rejecting claims 1-7, 9, and 11-20.
Final Office Action (May 5, 2014) (hereinafter “Final Act.”). Claims 8 and
10 are canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Otto Bock Healthcare Products GmbH as the real party
in interest. Appeal Brief 1 (January 2, 2015) (hereinafter “Appeal Br.”).
Appeal 2015-007621
Application 13/508,525
CLAIMED SUBJECT MATTER
Appellants’ claimed subject matter relates to a “method ... for
controlling an artificial orthotic or prosthetic joint with a resistance device.”
Spec. 1,11. 5-7. Claims 1, 11, and 19 are independent. Claim 1 is
illustrative of the subject matter on appeal and is reproduced below, with the
pertinent claim language italicized.
1. A method for controlling an artificial orthotic or
prosthetic joint with a resistance device to which at least one
actuator is assigned, via which actuator at least one of a flexion
resistance and an extension resistance is changed depending on
sensor data, wherein the at least one of a flexion resistance and
an extension resistance is changed depending on at least a
measured temperature of the resistance device.
Appeal Br. 21 (Claims App.).
REJECTIONS2
The Final Office Action includes the following rejections:
1. Claims 1, 4, 6, 9, 11, 14, 16, and 18-20 stand rejected under
35 U.S.C. § 102(b) as anticipated by Martin (US 2009/0030530
Al, published January 29, 2009).
2. Claims 2, 3, 5, 12, 13, and 15 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Martin.
2 The Examiner withdrew a rejection of claims 1-7, 9, and 11-20 under
35 U.S.C. § 112, first paragraph, for lack of an enabling disclosure.
Examiner’s Answer 2 (June 19, 2015) (hereinafter “Ans.”). The Examiner
also mentioned the possibility of applying a rejection for failure to disclose
the best mode; however, the Examiner does not appear to have entered such
a rejection in the Final Action. Final Act. 3—4.
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Application 13/508,525
3. Claims 7 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Martin and Herr (US 2002/0052663 Al,
published May 2, 2002).
ANALYSIS
Anticipation by Martin
Appellants argue the claims subject to the first ground of rejection as a
group. Appeal Br. 16-18. We select claim 1 as representative of the group,
with claims 4, 6, 9, 11, 14, 16, and 18-20 standing or falling with claim 1.
37C.F.R. §41.37(c)(l)(iv).
Appellants acknowledge that “Martin discloses, generally, using a
temperature input in association with the operation of a prosthetic foot.”
Appeal Br. 17. Appellants argue, however, that Martin fails to disclose
specifically changing a resistance applied by a resistance device depending
on measured temperature of the resistance device itself. Id. at 18.
The Examiner points to two locations in Martin that disclose the use
of temperature sensors in association with operation of a prosthetic foot.
Final Act. 4 (citing Martin, paras. 232, 353). In paragraph 232, Martin
discloses the possibility of using a temperature sensor located “around other
portions of keel 12, brackets, or damper joint to provide additional
information to further enhance the control of the system as a whole.”
Martin, para. 232. We agree with the Examiner that this disclosure in
Martin evidences that Martin contemplated use of a sensor to measure the
temperature of the damper joint (i.e., the resistance device) to provide
information to the control system used to control the prosthetic foot. Martin
further discloses in this paragraph that “sensors and sensor systems
communicate with dampening system 18.” Id. This disclosure teaches
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providing feedback from the sensors to the dampening system 18; however,
paragraph 232 lacks explicit disclosure of changing resistance applied by the
resistance device based on measured temperature of the resistance device.
Appeal Br. 15, 18. Such a teaching is found, however, in paragraph 353 of
Martin.
In paragraph 353, Martin addresses the issue of changing thermal
viscosity in the damper system. Martin discloses that the issue may be
resolved by incorporating an additional sensor system into the device “to
assess fluid viscosity or temperature, and allow the control program to
account for that change accordingly.” Martin, para. 353.
Appellants argue that “Martin discusses using temperature of the fluid
to potentially compensate for changes in fluid viscosity in order to maintain
an already predetermined amount of resistance, the resistance being
determined by angular velocity, not by temperature.” Appeal Br. 15. The
Examiner contests this reading, and explains that “[t]he device increases the
resistance provided thereby in order to respond to decreased viscosity or
increases [sic, decreases] the resistance provided thereby in order to respond
to an increased viscosity. This is a change in resistance for a maintained
joint movement function, which falls within the scope of the claims.”
Ans. 4. In responding, Appellants contradict their earlier assertion that
Martin discusses measuring temperature of the fluid, and argue instead that
“Martin only teaches measuring temperature around the damper joint, not
the temperature of the damper device itself or any aspect of the damper (e.g.,
the damping fluid).” Reply Br. 4 (contesting the Examiner’s reading of
Martin as disclosing a sensor system that assessing the temperature of the
damping fluid).
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Application 13/508,525
We disagree with Appellants’ reading of Martin. We understand
Martin to teach in paragraph 353 using a sensor to measure temperature of
the fluid in the damper system and to adjust the control program controlling
the damper system to account for changes in fluid viscosity. In other words,
we find that Martin’s disclosure of using a sensor “to assess fluid viscosity
or temperature” within the context of a paragraph addressing changing
thermal viscosity refers to measuring temperature of the fluid in the damper
system. As noted by the Examiner, the fluid is a portion of the resistance
device, and Martin discloses measuring the temperature of this fluid. Ans. 4.
Further, Appellants’ argument that Martin adjusts the control program
to maintain the resistance of the resistance device is not accurate. We agree
with the Examiner’s understanding that Martin’s teaching of allowing the
control program to account for a change in fluid viscosity (para. 353) refers
to “an actuator adjusting a valve of the resistance device” such that “the
resistance of the resistance device (i.e., valve orifice size) is changed as a
result of the measured temperature.” Id. (emphasis omitted). In other
words, Martin teaches that if the measured temperature of the dampening
fluid indicates a decrease in fluid viscosity, then the resistance of the
dampening system will be changed to account for a less viscous fluid, and
vice versa.
Appellants also argue that Martin “teaches away from using additional
sensors (such as temperature sensors).” Appeal Br. 18 (citing Martin,
para. 297). As the Examiner correctly notes (Ans. 5), teaching away is not
applicable in an anticipation analysis. See Celeritas Techs., Ltd. v. Rockwell
Inti Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998) (“whether a reference
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Application 13/508,525
‘teaches away’ from [an] invention is inapplicable to an anticipation
analysis”).
For these reasons, Appellants have not demonstrated error in the
Examiner’s rejection of claim 1. Accordingly, we sustain the rejection of
claim 1, and of claims 4, 6, 9, 11, 14, 16, and 18-20, which fall with claim 1,
under 35 U.S.C. § 102(b) as anticipated by Martin.
Obviousness of claims 2, 3, 5, 7, 12, 13, 15, and 17
Appellants reiterate the asserted deficiencies in the disclosure of
Martin as it pertains to the subject matter of claim 1 as the basis for
patentability of the dependent claims rejected under 35 U.S.C. § 103.
Appeal Br. 19-20 (Appellants arguing the Examiner erred in rejecting the
dependent claims without properly showing the independent claims as
anticipated or obvious and arguing that Herr fails to remedy the deficiencies
of Martin). For the reasons provided supra, we do not find any deficiencies
in the disclosure of Martin as to the anticipation of claim 1. Although not
applicable for the first ground of rejection, to the extent Appellants rely on
the teaching away argument in contesting the remaining grounds of rejection
based on obviousness of some of the dependent claims, we address it now.
Martin discloses in paragraph 297 that “it is generally desired to use
fewer sensors to control such a system” due to the added cost and
complexity and lower durability and dependability of a system with
numerous sensors. Martin suggests that the control system may limit the
sensors to an angle sensor and a force sensor. Id. Martin discloses,
however, that “alternative sensors may be used, added, replaced with, or
altered to provide similar outcomes, including but not limited to
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nanotechnology sensors ... to determine . . . temperature.” Id. Martin
teaches that “it is understood that sensors in general provide information to
the microprocessor or other computer system to provide a ‘reaction’ and
affect the damper in a given way.” Id. This paragraph of Martin suggests
using a sensor that measures temperature to provide information used by the
microprocessor to affect the damper, i.e., the resistance device.
Martin does not teach away from using a temperature sensor. Despite
stating that “it is generally desired to use fewer sensors to control such a
system,” Martin explicitly suggests using “alternative sensors,” including
temperature sensors, either in addition to or in place of other sensors to
provide similar outcomes. Thus, Martin recognizes that the use of additional
sensors might enable better control of the system, but at a cost. “[A] given
course of action often has simultaneous advantages and disadvantages, and
this does not necessarily obviate motivation to combine.” Medichem, S.A. v.
Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). “The fact that the
motivating benefit comes at the expense of another benefit, however, should
not nullity its use as a basis to modify the disclosure of one reference with
the teachings of another. Instead, the benefits, both lost and gained, should
be weighed against one another.” Winner Int’l Royalty Corp. v. Wang, 202
F.3d 1340, 1349 n.8 (Fed. Cir. 2000). Accordingly, we likewise sustain the
rejections under 35 U.S.C. § 103(a) of claims 2, 3, 5, 12, 13, and 15 as
unpatentable over Martin, and claims 7 and 17 as unpatentable over Martin
and Herr.
DECISION
The rejections of claims 1-7, 9, and 11-20 are affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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