Ex Parte Slemker et al

Board of Patent Appeals and Interferences

Jan 30, 2009

10251142 (B.P.A.I. Jan. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte TRACY C. SLEMKER,
SCOTT R. SCHALL, and STEVE STEINBARGER
__________

Appeal 2008-5167
Application 10/251,142
Technology Center 3700
__________

Decided:1 January 30, 2009
__________

Before DEMETRA J. MILLS, LORA M. GREEN, and
FRANCISCO C. PRATS, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-5167
Application 10/251,142

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
prosthetic knee joint assembly for a prosthetic limb. The Examiner has
rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Claims 1-12, 28, 38-40, and 42-50 stand rejected and are on appeal
(App. Br. 5).2 Claims 1 and 47 are representative and read as follows:
1. A prosthetic knee-joint assembly for a prosthetic limb
comprising:
a proximal segment;
a distal segment pivotally disposed with respect to the
proximal segment and pivotable with respect to the proximal
segment in at least an anterior-posterior direction to provide a
knee-joint pivot point;
a first coupling including a first coupling base component
monolithically integral with the proximal segment, the first
coupling including a first adjustable member having a first
frustopyramidal boss extending proximally with respect to the
first coupling base component, the first frustopyramidal boss
being adapted to mount the proximal segment to an above-knee
prosthetic limb component, and the first frustopyramidal boss
being slidably adjustable with respect to the proximal segment,
and rotatably adjustable with respect to the proximal segment;
and
a second coupling including a second coupling base
component monolithically integral with the distal segment, the
second coupling including a second adjustable member having
a second frustopyramidal boss extending distally with respect to

2 Appeal Brief filed January 8, 2007.
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the second coupling base component, the second
frustopyramidal boss being adapted to mount the distal segment
to a below-knee prosthetic limb component, and the second
frustopyramidal boss being slidably adjustable with respect to
the distal segment so as to be slidable in at least one of the
anterior-posterior and medial-lateral directions, and rotatably
adjustable with respect to the distal segment.

47. A prosthetic knee-joint assembly for a prosthetic limb
comprising:
a proximal segment;
a distal segment pivotally disposed with respect to the
proximal segment, and pivotable with respect to the proximal
segment in at least an anterior-posterior direction to provide a
knee-joint pivot point; and
at least one adjustable coupling at least one component of
which is monolithically integrated with at least one of the
proximal segment and the distal segment, the coupling being
adapted to mate with and couple to a respective one of an
above-knee and below-knee prosthetic limb component, and at
least another component of the coupling being selectively
adjustable with respect to the respective one knee-joint segment
in at least one of a rotational adjustability and a slidable
adjustability.

The Examiner cites the following documents as evidence of
unpatentability:
Biedermann US 5,800,565 Sep. 1, 1998
Shiraishi US 5,899,943 May 4, 1999
Schall US 6,033,440 Mar. 7, 2000

The following rejections are before us for review:
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Claims 47-50 stand rejected under 35 U.S.C. § 103(a) as being
obvious in view of Shiraishi and Schall (Ans. 3-4).3
Claims 1-12, 28, 38-40, and 42-50 stand rejected under 35 U.S.C.
§ 103(a) as being obvious in view of the admitted prior art in Appellants’
Figure 1 and “Background” description in the Specification, Schall, and
Biedermann (Ans. 4-5).

3 Examiner’s Answer mailed October 24, 2007
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OBVIOUSNESS -- SHIRAISHI AND SCHALL
ISSUE
In rejecting claims 47-50 as obvious over Shiraishi and Schall, the
Examiner cites Shiraishi as disclosing a prosthetic knee assembly that has “a
proximal segment 12” and “a distal segment pivotally disposed with respect
to the proximal segment” as recited in claim 47 (Ans. 3). The Examiner
finds that Shiraishi also meets the limitation in claim 47 requiring the knee-
joint assembly to have “at least one . . . coupling at least one component of
which is monolithically integrated with at least one of the proximal segment
and the distal segment” because “Shiraishi et al teaches no attachment plate
is utilized and the first coupling 12a is attached directly to the proximal
section. Therefore, the coupling is monolithically integrated into the
proximal segment with the first coupling 12a threadedly attached and
integral with the proximal segment” (id.).
The Examiner concedes that “Shiraishi fails to teach the coupling is
rotatably with respect to the proximal segment” and cites Schall to meet that
limitation (id. at 4). Based on the teachings of the two references, the
Examiner concludes that one having ordinary skill in the art would have
considered it obvious “to have substituted the frustopyramidal boss coupling
with conical portion 76 (and 72) of Schall et al for the frustopyramidal boss
with threaded attachment (and threaded receiving hole) of Shiraishi et al
such that the coupling could be rotatably adjustable” (id.).
Appellants argue that the Examiner has failed to make a prima facie
case of obviousness because the combined disclosures of the references fail
to teach all of the elements in the claims, in particular the limitation
requiring the adjustable coupling of claim 47 to have at least one component
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which is “monolithically integrated” with at least one of the proximal
segment and the distal segment (App. Br. 23-24). Moreover, Appellants
argue, the Examiner has failed to show that one of ordinary skill in the art
would have had a reasonable expectation of successfully combining the
claimed components in the claimed configuration, and has also “provided no
basis for the conclusion that one of ordinary skill would be motivated to
exchange the lower profile coupling 12a of Shiraishi with the higher profile
pyramid of Schall” (id. at 24).
Appellants do not argue the claims subject to this ground of rejection
separately. We select claim 47 as representative of the rejected claims. See
37 C.F.R. § 41.37(c)(1)(vii).
Therefore, in view of the respective positions advanced by Appellants
and the Examiner, the issues with respect to this rejection are whether the
Examiner erred in finding that the references teach the limitation requiring
the adjustable coupling of claim 47 to have at least one component which is
“monolithically integrated” with at least one of the proximal segment and
the distal segment, and whether the Examiner has adequately shown that one
of ordinary skill in the art would have had a reasonable expectation, and
motivation, for combining the elements recited in claim 47 in the claimed
configuration.
FINDINGS OF FACT
1. Claim 47 recites a prosthetic knee-joint assembly for a prosthetic
limb, the assembly having a proximal segment and a distal segment pivotally
disposed with respect to the proximal segment.
2. The prosthetic knee-joint assembly of claim 47 also has at least one
adjustable coupling adapted to mate with, and couple to, either an
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above-knee or below-knee prosthetic limb component. The adjustable
coupling of claim 47 has a component that is selectively adjustable with
respect to its respective one knee-joint segment in at least one of a rotational
adjustability and a slidable adjustability.
3. The adjustable coupling recited in claim 47 also has “at least one
component . . . which is monolithically integrated with at least one of the
proximal segment and the distal segment” of the knee-joint assembly.
4. The Specification does not define “component” or “monolithically
integrated.”
5. Appellants’ Figure 3 is reproduced below:
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Appellants’ Figure 3 shows “a prosthetic knee-joint assembly or knee-
chassis 42, having adjustable coupling components integrated into its
proximal and distal segments 44, 46” (Spec. [0024]). In the embodiment
shown, “the adjustable coupling on the proximal segment 44 is a male
pyramid component assembly 48 that is slidably adjustable in the anterior-
posterior direction and that is also rotationally adjustable,” and the coupling
on the distal segment 46 “is an adjustable pyramid assembly 50 that is
slidingly adjustable in the medial-lateral directions and is also rotationally
adjustable” (id.).
6. Appellants’ Figure 3 also shows the coupling as being held together
by a “threaded bolt 102 [which] extends upwardly into the bottom of the
axial channel 98 and mates with a threaded bore 104 extending into the
bottom of the pyramidal boss component 86. The lower end of the bolt 102
includes a flange 105 that is seated within a counter-bore 106 of the dove-
tail shaped member 76” (Spec. [0028]).
7. Appellants’ Figure 3 also shows:
[T]he planar base portion 52 of the proximal segment and
the planar base portion 64 of the distal segment 46 [which] each
include a dove-tail shaped (in cross-section) channel or groove
74 extending axially therethrough. The dove-tail shaped groove
74 in the proximal member 44 extends along the planar base 56
in the anterior-posterior directions while the dove-tail shaped
groove in the distal member 46 extends along the planar base
64 in the medial-lateral directions. Each of the adjustable
coupling assemblies 48, 50 include a dove-tail shaped (in cross-
section) base component 76 carried within the dove-tail shaped
groove 74. The dove-tail shaped base component 76 is oriented
within the dove-tail shaped groove 74 such that the upwardly
and outwardly facing angled surfaces 73 of the dove-tail shaped
base component 76 face the downwardly and inwardly facing
angled surfaces 75 of the dove-tail shaped groove 74.
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(Spec. [0026].)
8. Appellants state, that “[f]or purposes of exemplary explanation only,
as shown in FIG. 3, the channel or groove 74 through the planar base portion
52, 64 forming surfaces 75 corresponds to the claimed ‘one component’” of
the coupling recited in claim 47 that is monolithically integrated into the
proximal/distal segment of the knee assembly (App. Br. 20 (citing Spec.
[0026]) (italics removed); see also Reply Br. 2).
9. Shiraishi discloses “an artificial limb which is so quiet in operating
noise that the user sometimes forgets his/her wearing of the artificial limb,
and which can provide the perception of comfortableness to the user”
(Shiraishi, col. 1, ll. 8-11).
Shiraishi discloses that the quiet operation is accomplished by
“remov[ing] the play in the axial direction of the knee axis by providing a
unique spacer means between the first and second support members for
supporting the opposite end portions of the knee axis and the load brake
means located between the support members” (id. at col. 2, ll. 50-54).
Specifically, Shiraishi uses specific oil-containing or phenolic resins for its
spacer means (id. at col. 2, l. 60, through col. 3, l. 9).
10. Figure 1 of Shiraishi is reproduced below:

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Figure 1 of Shiraishi shows:

[K]nee prosthesis 10 [which] comprises an upper member 120
including a knee plate 12 having a knee-like configuration, a
lower member 140 chiefly consisting of a hollow frame 14
extending from the knee portion towards the foot portion, and a
knee axis 20 for rotatably interconnecting the lower member
140 and the upper member 120 at the knee portion.

(Shiraishi, col. 5, ll. 30-36.)
11. Regarding Figure 1, Shiraishi also discloses that “knee plate 12
integrally supports on a part thereof a connector 12a for connecting a socket,
not shown” (Shiraishi, col. 5, ll. 37-39).
12. Schall discloses that “[i]n fitting prosthetic limbs to patients, it is often
necessary for the prosthetist to modify the alignments and orientations of the
various prosthetic limb components with respect to each other during the
initial fitting or after the patient has worn the prosthetic limb for a period of
time” (Schall, col. 1, ll. 55-59).
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13. In view of the need for adjustable prostheses, Schall discloses “a
rotatably adjustable pyramidal link-plate assembly which does not require
the prosthetic limb to be removed or disassembled prior to adjustment, and
which provides for infinite rotatable adjustments without substantially
increasing the profile and/or length of the conventional pyramidal link-plate
components” (Schall, col. 2, l. 64, through col. 3, l. 2).
14. Figures 4 and 5 of Schall are reproduced below:

Figures 4 and 5 of Schall show:
[A]n adjustable pyramidal link-plate assembly 34 which
is both rotatably adjustable and laterally adjustable. The
adjustable pyramidal link-plate assembly 34 includes a
proximal attachment-plate component 36; a distal, spherically
convex or dome-shaped base-plate component 38 stacked upon
and laterally slidable with respect to the attachment-plate
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component 36; a frustopyramidal boss component 40; and a
frustoconical boss attachment component 42. The attachment-
plate component 36 includes a plurality of screw holes 44
extending therethrough which are preferably arranged in a
conventional four-hole pattern (such as the European four-hole
pattern) as is known to those of ordinary skill in the art. The
screw holes 44 are provided so that screws 46 . . . may be
threaded therein so as to secure the attachment-plate component
36 to a distal end of a prosthetic limb socket 22 or to any other
prosthetic limb component such as a prosthetic limb foot
component or a prosthetic joint component.

(Schall, col. 5, l. 56 through col. 6, l. 6.)
15. Schall discloses that, once the link-plate assembly is secured to an
appropriate joint component, such as a prosthetic knee assembly, a limb
component can be affixed to the pyramidal portion of the link plate assembly
using a coupling socket comprising set screws, and the relative rotational
and/or lateral position of the limb component can be adjusted simply by
loosening the set screws, repositioning the limb component as desired, and
retightening the set screws (Schall, col. 6, l. 55, through col. 7, l. 36; see also
Figures 3 and 6).
PRINCIPLES OF LAW
In proceedings before the Patent and Trademark Office,
the Examiner bears the burden of establishing a prima facie
case of obviousness based upon the prior art. “[The Examiner]
can satisfy this burden only by showing some objective
teaching in the prior art or that knowledge generally available to
one of ordinary skill in the art would lead that individual to
combine the relevant teachings of the references.”

In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir. 1992) (citations omitted,
bracketed material in original).
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Thus, as the Supreme Court pointed out in KSR Int' l Co. v. Teleflex
Inc., 550 U.S. 398, ___, 127 S. Ct. 1727, 1741 (2007), “a patent composed
of several elements is not proved obvious merely by demonstrating that each
of its elements was, independently, known in the prior art.” Rather, as the
Court stated:
[I]t can be important to identify a reason that would have
prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed new invention
does . . . because inventions in most, if not all, instances rely
upon building blocks long since uncovered, and claimed
discoveries almost of necessity will be combinations of what, in
some sense, is already known.

Id. (emphasis added); see also 127 S. Ct. 1727 at 1740-41 (requiring a
determination of “whether there was an apparent reason to combine the
known elements in the fashion claimed by the patent at issue”) (emphasis
added).
Accordingly, as our reviewing court has stated, “obviousness requires
a suggestion of all limitations in a claim.” CFMT, Inc. v. Yieldup Intern.
Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (citing In re Royka, 490 F.2d
981, 985 (CCPA 1974)).
While holding that some rationale must be supplied for a conclusion
of obviousness, the Supreme Court nonetheless rejected a “rigid approach”
to the obviousness question, and instead emphasized that “[t]hroughout this
Court's engagement with the question of obviousness, our cases have set
forth an expansive and flexible approach . . . .” KSR, 127 S. Ct. 1727 at
1739. The Court also rejected the use of “rigid and mandatory formulas” as
being “incompatible with our precedents.” Id. at 1741; see also 1742-43
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(“Rigid preventative rules that deny factfinders recourse to common sense,
however, are neither necessary under our case law nor consistent with it.”).
The Court thus reasoned that the analysis under 35 U.S.C. § 103 “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.” Id. at 1741.
The Court further advised that “[a] person of ordinary skill is . . . a person of
ordinary creativity, not an automaton.” Id. at 1742.
Thus, “when the question is whether a patent claiming the
combination of elements of prior art is obvious,” the relevant inquiry is
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id. at 1740.
Applying these concepts, the Court ultimately reaffirmed “that when a
patent ‘simply arranges old elements with each performing the same
function it had been known to perform’ and yields no more than one would
expect from such an arrangement, the combination is obvious.” Id. (quoting
Sakraida v. AG Pro, Inc., 425 U.S. 273 (1976)).
With respect to claim interpretation, during examination, the PTO
must interpret terms in a claim using “the broadest reasonable meaning of
the words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).

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ANALYSIS
Appellants’ arguments do not persuade us that the Examiner erred in
finding that the cited references teach the limitation requiring the adjustable
coupling of claim 47 to have at least one component which is
“monolithically integrated” with at least one of the proximal segment and
the distal segment. Nor are we persuaded that the Examiner has failed to
adequately show that one of ordinary skill in the art would have had a
reasonable expectation, and motivation, for combining the elements recited
in claim 47 in the claimed configuration.
We first address the limitation in claim 47 requiring the coupling to
have “at least one component . . . which is monolithically integrated with at
least one of the proximal segment and the distal segment.” The
Specification does not provide a definition of the term “component” that
clarifies what items or structures must be monolithically integrated (FF 4).
However, as Appellants point out, and is illustrated in Appellants’ Figure 3,
in one embodiment encompassed by claim 47, the proximal and distal
segments of the knee assembly have dove-tail shaped channels or grooves 74
through the planar base portions of proximal/distal segments, and those
grooves form surfaces 75 which correspond to the claimed ‘one
component’” of the coupling recited in claim 47 that is monolithically
integrated into the proximal/distal segments of the knee assembly (see FF 5,
7, 8).
We therefore conclude that when claim 47 is given its broadest
reasonable interpretation consistent with the Specification, the limitation
“component . . . which is monolithically integrated with at least one of the
proximal segment and the distal segment,” encompasses a surface or shape
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formed into the proximal/distal segment, such as a groove, that
accommodates other components of the coupling, enabling the entire
coupling to fixedly fit onto the proximal/distal segment.
As the Examiner points out, Shiraishi’s knee assembly has a structure,
knee plate 12, that corresponds to the “proximal segment” recited in claim
47 (FF 10). As seen in Figure 1 of Shiraishi, the proximal segment 12 of
Shiraishi’s knee assembly also has a threaded opening to accommodate the
coupling structure, connector 12a (see FF 10, 11).
Like the dove-tail grooves 74 and their surfaces 75 shown in
Appellants’ Figure 3, Shiraishi’s threaded opening is a channel with grooves
formed into the proximal segment 12, and the grooves accommodate other
components of the coupling, the threaded portion of element 12a, thereby
enabling the entire coupling to fixedly fit onto the proximal segment 12. We
therefore agree with the Examiner that Shiraishi meets the limitation in
claim 47 requiring the coupling to have “at least one component . . . which is
monolithically integrated with at least one of the proximal segment and the
distal segment.”
Appellants argue that “Shiraishi's threaded opening is simply not part
of the coupling. The threaded opening is merely a part of the proximal
segment that forms a non-monolithic connection with the coupling” (Reply
Br. 2).4 Therefore, Appellants argue, “Shiraishi does not teach a coupling
monolithically integrated into the proximal segment and, therefore, the
combination of cited references fails to teach or suggest all claim
limitations” (id.).

4 Reply Brief filed July 12, 2007.
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We are not persuaded by this argument. As pointed out above, by
referring to Appellants’ Figure 3 and its supporting disclosure, a
“component” of the coupling as recited in claim 47 can be a surface or shape
formed into the proximal/distal segment, such as grooves 74 and their
surfaces 75. Those surfaces or shapes accommodate other components of
the coupling, enabling the entire coupling structure to fixedly fit onto the
proximal/distal segment. Similar to the situation shown in Appellants’
Figure 3, in the instant case the threaded opening in Shiraishi’s proximal
segment 12 that accommodates element 12a has grooves which allow the
entire coupling to fixedly fit onto the proximal segment. Moreover, because
the threads in Shiraishi’s opening are grooves which are integrated into the
structure of proximal segment 12, the threads cannot be readily removed
from the proximal segment, and therefore meet the limitation of being
monolithically integrated.
Appellants argue that the Examiner has not shown that a person of
ordinary skill in the art would have had a basis for a reasonable expectation
of success when combining Shiraishi with Schall because “[t]he limited
discussion directed to the coupling 12a in Shiraishi renders unclear how the
coupling of Schall would be mounted to the knee-joint of Shiraishi, as well
as how the coupling would be assembled/ disassembled from the knee-joint
of Shiraishi” (App. Br. 24). Thus, Appellants argue, the Examiner “has
failed to explain how such a combination would be operative, while
concurrently reading on Appellants’ claims” (id.).
However, Appellants do not explain or point to any evidence of record
suggesting that modifying the structure of Shiraishi’s coupling to
accommodate the rotatably adjustable coupling of Schall would be beyond
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the skill of an ordinary artisan. Given the variety of configurations of
couplings disclosed in the cited references, we are not persuaded that a
person of ordinary skill in the art would have lacked a reasonable
expectation of success when combining Shiraishi with Schall. See also,
KSR, 127 S. Ct. at 1742 (“A person of ordinary skill is also a person of
ordinary creativity, not an automaton.”).
Appellants argue that the Examiner has not shown that a person of
ordinary skill in the art would have been motivated to combine the cited
references’ disclosures to arrive at the claimed combination of features, and
that “the alleged combination completely ignores the advantages and
considerations relevant to the claimed invention, as Appellants are
concerned with providing a lower profile pyramid-to-knee connection;
something clearly not provided by a combination of Shiraishi with Schall”
(App Br. 24-25). Moreover, Appellants argue, Shiraishi and Schall are
directed to solving different problems, and “[i]n fact, one of ordinary skill
looking to reduce the profile of the pyramid-to-knee connection would stay
with the embodiment taught by Shiraishi and not switch to the higher profile
coupling of Schall” (id. at 25). Thus, Appellants argue, it is clear that the
alleged combination of Shiraishi with Schall is impermissible because the
teaching or suggestion to make the claimed combination are not found in the
cited references, but instead are found only in Appellants’ disclosure” (id.).
We are not persuaded by these arguments. Regarding the asserted
lower profile of Appellants’ pyramid-to-knee connection, we see no
limitation in claim 47 directed to the profile of any of the components.
Appellants’ argument in this respect is therefore not relevant to the rejected
claims.
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As to the issue of motivation for combining the references, Schall
discloses that it was desirable to make prosthetic knee linkages rotationally
adjustable (FF 12, 13). Thus, while it may be true that Shiraishi focused on
the quietness of its apparatus, one of ordinary skill in the art preparing a
device having Shiraishi’s knee linkage would nonetheless have recognized
the importance and desirability of making that device rotationally adjustable,
and would therefore have been prompted to incorporate the adjustability of
Schall’s coupling into Shiraishi’s device. Accordingly, rather than relying
on the mere existence of the claimed elements in the prior art to support the
conclusion of obviousness, the appealed rejection relies on the explicit
disclosures in the references themselves to provide the impetus for
practicing the device recited in claim 47, when the subject matter recited in
that claim is evaluated as a whole.
Because we agree with the Examiner that the cited references would
have prompted a person of ordinary skill to prepare a device having all of
the features recited in claim 47, we affirm the Examiner’s obviousness
rejection of that claim. Because they were not argued separately, claims
48-50 fall with claim 47. See 37 C.F.R. § 41.37(c)(1)(vii).
OBVIOUSNESS -- SCHALL, BIEDERMANN,
AND ADMITTED PRIOR ART
ISSUE
Claims 1-12, 28, 38-40, and 42-50 stand rejected under 35 U.S.C. §
103(a) as being obvious in view of the admitted prior art in Appellants’
Figure 1 and “Background” description in the Specification, Schall, and “if
necessary,” Biedermann (Ans. 4).
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The Examiner cites the prior art as shown in Appellants’ Figure 1 as
teaching a prosthetic knee-joint assembly for a prosthetic limb, the assembly
having the claimed proximal and distal segments (id.). The Examiner relies
on Schall’s disclosure to meet the limitations requiring rotatably and slidably
adjustable frustopyramidal bosses (id.).
The Examiner notes that “[s]ome of the claims require the coupling to
be adjustable in the anterior-posterior direction,” and finds that Schall
“teaches adjustment in the lateral direction which is perpendicular to the
TKA line” (id. at 5). To meet the anterior-posterior adjustability limitation,
the Examiner cites Biedermann’s disclosure of a similar knee joint, and that
“it is desirable to adjust the first coupling and second coupling in an
anterior-posterior direction” (id.). Based on the all of the prior art teachings,
the Examiner concludes that a person of ordinary skill in the art would have
considered it obvious “to have assembled the prior art shown in figure 1 in
combination with the Shall et al taught by applicant such that the couplings
could be adjustable in the anterior-posterior direction as taught by
Biedermann such that the prosthetist could adjust the assembly to best fit the
wearer” (id.).
Appellants argue that the Examiner has failed to make a prima facie
case of obviousness because the cited prior art fails to disclose knee
assemblies with couplings that have at least one component monolithically
integrated into a proximal or distal segment (App. Br. 29, 32; see also Reply
Br. 2-4). Moreover, Appellants argue, the Examiner has “fail[ed] to provide
a reasonable expectation of success when combining Appellants[’]
Background section, with Schall, and with Biedermann” and “has likewise
failed to provide any permissible basis for why one of ordinary skill would
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be motivated to combine Appellants' Background section with Schall, or in
combination with Biedermann” (App. Br. 30, 35).
Appellants argue the claims subject to this rejection in two separate
groups, the first group including claims 10-12, 28, and 47-50 (App. Br. 27),
and the second group including claims 1-9, 38-40, and 42-46 (id. at 31).
With respect to the first group, Appellants state that “claims 10-12, 28, and
47-50 stand or fall together and independent claim 47 is representative of the
subject matter claimed” (id. at 28). With respect to the second group,
Appellants state that “claims 1-9, 38-40, and 42-46 stand or fall together and
independent claim 1 is representative of the subject matter claimed” (id. at
33).
Therefore, given the positions advanced by Appellants and the
Examiner, the issues with respect to this rejection are whether the Examiner
erred in finding that the references fail to teach the limitations in claims 1
and 47 requiring the adjustable couplings to have at least one component
which is “monolithically integrated” with the proximal and/or distal
segments, and whether the Examiner has adequately shown that one of
ordinary skill in the art would have had a reasonable expectation, and
motivation, for combining the elements recited in claims 1 and 47 in the
claimed configurations.
FINDINGS OF FACT
16. Claim 1 recites a prosthetic knee-joint assembly for a prosthetic limb,
the assembly having a proximal segment and a distal segment pivotally
disposed with respect to the proximal segment.
17. The prosthetic knee-joint assembly of claim 1 also has first and
second adjustable couplings with frustopyramidal bosses adapted to mate
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and couple to, respectively, an above-knee or below-knee prosthetic limb
component. The first coupling is a slidably and rotationally adjustable with
respect the proximal segment, and the second coupling is slidably adjustable
with respect to the distal segment so as to be slidable in at least one of the
anterior-posterior and medial-lateral directions, and rotatably adjustable with
respect to the distal segment.
18. The first coupling of claim 1 includes also includes “a first coupling
base component monolithically integral with the proximal segment,” and the
second coupling includes “a second coupling base component monolithically
integral with the distal segment.”
19. The Specification does not define “component” or “monolithically
integrated” (see FF 4).
20. Appellants state that, “[f]or purposes of exemplary explanation only,
as shown in FIG. 3, the channel or groove 74 through the planar base portion
52 forming surfaces 75 corresponds to the claimed ‘first coupling base
component’” in claim 1 that is monolithically integrated into the proximal
segment of the knee assembly (App. Br. 8 (citing Spec. [0026]) (italics
removed); see also Reply Br. 2).
Appellants also state that, “[f]or purposes of exemplary explanation
only, as shown in FIG. 3, the channel or groove 74 through the planar base
portion 64 forming surfaces 75 corresponds to the claimed ‘second coupling
base component’” in claim 1 that is monolithically integrated into the distal
segment of the knee assembly (App. Br. 9 (citing Spec. [0026]) (italics
removed); see also Reply Br. 2).
21. Appellants’ Figure 1 is reproduced below:
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Appellants’ Specification describes Figure 1 as follows:
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As shown in Fig. 1, a conventional prosthetic limb 10 for
a transfemoral amputee will include a prosthetic limb socket 12
for receiving the wearer's residual limb, a knee-joint assembly
14, a first pylon component 16 between the prosthetic limb
socket 12 and the knee- joint assembly 14, interconnection
components 18 for coupling the first pylon 18 to the prosthetic
limb socket 12, interconnection components 20 for coupling the
first pylon 16 to the knee-joint assembly 14, a prosthetic
ankle/foot assembly 22, a second pylon 24 between the knee-
joint assembly 14 and the ankle/foot assembly 22,
interconnection components 26 for coupling the second pylon
24 to the knee-joint assembly 14 and interconnection
components 28 for coupling the second pylon 24 to the ankle-
foot assembly 22. The interconnection components 20 may
include a conventional pyramid connector 30 mounted to a
proximal end 32 of a proximal segment 34 of the knee-joint
assembly 14 and a conventional pyramid receiver 36 mounted
to a distal end of the first pylon 16. Interconnection components
26 may include a conventional pyramid coupling 30 mounted to
a distal end surface 38 of a distal segment 40 of the knee-joint
assembly 14 and a conventional pyramid receiver 36 mounted
to a proximal end of the second pylon 24. If the prosthetist
wishes to provide rotational and/or lateral adjustability with
respect to the first pylon 16 and the proximal segment 34 of the
knee-joint assembly or wishes to provide rotational and/or
lateral adjustability between the distal segment 40 of the knee-
joint assembly and the second pylon 24, the prosthetist may
wish to replace one or both of the conventional pyramid plates
30 with the adjustable pyramidal link plate assemblies as
disclosed in U.S. Patent Nos 6,033,440 and 6,231,618. Such
adjustable pyramidal link plate assemblies are commercially
available from Prosthetic Design, Inc. as component nos. PYR-
SL, PYR-SL-R, PYR-TL-SL, PYR-TL-SL-R, Stealth360, and
PYR-TL-R.

(Spec. [0002].)
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22. Biedermann discloses “a leg prosthesis, in particular, to device in
form of a test prosthesis for testing various combinations of the possible
members of the prosthesis and their adaptation to the anatomical conditions”
(Biedermann, col. 1, ll. 6-8).
23. Figure 2 of Biedermann is reproduced below:

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Figure 2 of Biedermann shows connection unit 8, which has an
adjustment device that “serves the purpose of changing the position of the
thigh member comprising the thigh shaft connection member and the thigh
shaft 10 relative to the upper knee member 2” (Biedermann, col. 3, ll. 22-
25). The adjustment device allows “thigh member 6 [to] move relative to
the axis of the leg (leg-axis) which is formed by a virtual line through the
lower leg member, the knee part and the thigh member” (id. at col. 3, ll. 25-
28).
Biedermann further discloses that in Figure 2 “a displacement in a
plane parallel to the axis of the joint 4 and in a direction perpendicular
thereto and a pivot motion in a plane perpendicular to the axis of the joint 4,
i.e. in corresponding directions inclined with respect to the leg-axis, are
schematically indicated by arrows” (id. at col. 3, ll. 28-33).
PRINCIPLES OF LAW
While the Supreme Court in KSR emphasized a flexible approach to
the issue of obviousness, it nonetheless also stressed that “rejections 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 obviousness.” KSR, 550
U.S. 398, ___, 127 S. Ct. 1727, 1741 (quoting In re Kahn, 441 F.3d 977,
988, (Fed. Cir. 2006) (emphasis added).
ANALYSIS
Appellants’ arguments do not persuade us that the Examiner erred in
finding that the references teach the limitation requiring the adjustable
couplings of claims 1 and 47 to have components which are “monolithically
integrated” with the proximal segment and/or distal segment. Nor are we
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persuaded that the Examiner has failed to adequately show that one of
ordinary skill in the art would have had a reasonable expectation, and
motivation, for combining the elements recited in claim 47 in the claimed
configuration.
Specifically, given Schall’s disclosure of the desirability of making
knee prostheses rotationally and laterally adjustable (FF 12, 13), we agree
with the Examiner that a person of ordinary skill in the art would have been
prompted to confer adjustability to a prior art device like that depicted in
Appellants’ Figure 1 by substituting Schall’s frustopyramidal adjustable
coupling (FF 14) for the non-adjustable couplings 30 (FF 21) in the prior art
device. We therefore do not agree with Appellants that the Examiner failed
to provide an adequate showing of motivation for preparing a device as
recited in claims 1 and 47.
Moreover, attachment of Schall’s coupling would require the presence
of screw holes in the adjacent proximal or distal segment (see FF 14). As
discussed above, we interpret the limitation in claim 47, “component . . .
which is monolithically integrated with at least one of the proximal segment
and the distal segment,” as encompassing a surface or shape formed into the
proximal/distal segment, such as a groove, that accommodates other
components of the coupling, enabling the entire coupling to fixedly fit onto
the proximal/distal segment.
Thus, when claim 47 is given its broadest reasonable interpretation
consistent with the Specification, a threaded hole in the proximal/distal
segment of a knee assembly is, in fact, a “component . . . which is
monolithically integrated with at least one of the proximal segment and the
distal segment.” We therefore agree with the Examiner that the limitation in
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claim 47 at issue encompasses the screw holes in the proximal/distal
segments used to accommodate Schall’s couplings.
Regarding the corresponding limitations in claim 1, similar to the
situation in claim 47, the first and second base components correspond to the
shaped grooves and their surfaces in the proximal and distal segments, as
Appellants point out (FF 20). We therefore conclude that when claim 1 is
given its broadest reasonable interpretation consistent with the Specification,
the term “base component” encompasses a surface or shape formed into the
proximal/distal segment, such as a groove, that accommodates other
components of the coupling, enabling the entire coupling to fixedly fit onto
the proximal/distal segment. As with claim 47, we agree with the Examiner
that the threaded screw holes used to secure Schall’s couplings onto the
proximal/distal segments of the prior art device shown in Appellants’ Figure
1 meet that limitation.
As to the issue of reasonable expectation of success, Appellants argue
that the plates of Biedermann cannot be properly combined with the
frustopyramidal bosses of Schall (App. Br. 30, 35). We are not persuaded
by this argument. First, representative claim 47 does not recite an anterior-
posterior adjustment, which is the limitation for which Biedermann is
applied (see Ans. 5). Thus, Biedermann is not required to meet all of the
limitations of claim 47.
While representative claim 1 recites that the second coupling must be
“slidable in at least one of the anterior-posterior and medial-lateral
directions,” one of ordinary skill in the art would have recognized from
Biedermann the desirability of anterior-posterior adjustability (see FF 17,
18). Given the recognized desirability of anterior-posterior adjustability, one
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of ordinary skill in the art, advised of the slidable adjustability of Schall’s
couplings, would have reasoned that Schall’s couplings would accommodate
anterior-posterior adjustability when oriented appropriately. Thus, because
anterior-posterior adjustability would not have required using Biedermann’s
plates, we do not agree with Appellants that a person of ordinary skill would
have lacked a reasonable expectation of successively achieving anterior-
posterior adjustability using Schall’s device.
Appellants argue that because the Examiner stated that the claim
limitations not explicitly addressed are “self-evident” (see, e.g. Ans. 5),
Appellants “are left only to guess as to where the Examiner has allegedly
found such limitations. In this regard, Appellants are not able to specifically
refute the grounds of rejection under 35 U.S.C. § 103 without attempting to
prove a negative” (App. Br. 31). Appellants urge that “[s]uch a burden is
not one Appellants should bear in the absence of the Examiner carrying his
initial burden” (id. (citing In re Kahn, 441 F.3d at 985); see also App. Br.
36).
We are not persuaded by this argument. In both appealed rejections
the Examiner identified the relevant prior art teachings, the differences
between the claims and the prior art, and provided a rationale for combining
the teachings (see Ans. 3-5). While the Examiner’s analysis may have been
less specific than Appellants wished, we see nothing on the record that
prevented Appellants from examining the cited prior art, and, if finding it
deficient with respect to a claim limitation, identifying the absent claim
limitation and presenting argument regarding the specific deficiency.
In sum, Appellants’ arguments do not persuade us that the Examiner
erred in finding that the cited prior art taught all of the limitations in claims 1
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and 47, and that the prior art provided a reason, and reasonable expectation
of success, for assembling the components in the configuration recited in
those claims. We therefore affirm the Examiner’s obviousness rejection of
claims 1 and 47 over the admitted prior art in Appellants’ Figure 1 and
“Background” description in the Specification, Schall, and Biedermann.
Claims 10-12, 28, and 48-50 fall with claim 47 (App. Br. 28). Claims
2-9, 38-40, and 42-46 fall with claim 1 (id. at 33).
SUMMARY
We affirm the Examiner’s rejection of claims 47-50 under 35 U.S.C. §
103(a) as being obvious in view of Shiraishi and Schall.
We affirm the Examiner’s rejection of claims 1-12, 28, 38-40, and 42-
50 under 35 U.S.C. § 103(a) as being obvious in view of the admitted prior
art in Appellants’ Figure 1 and “Background” description in the
Specification, Schall, and Biedermann.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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