Thomas Bertels et al.

Patent Trials and Appeals Board

Dec 2, 2019

14007557 - (D) (P.T.A.B. Dec. 2, 2019)

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.
14/007,557 09/25/2013 Thomas Bertels 76156.0313 5669
57600 7590 12/02/2019
HOLLAND & HART
222 South Main Street, Suite 2200
P.O. Box 11583
Salt Lake City, UT 84110
EXAMINER
BAHENA, CHRISTIE L.
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
12/02/2019 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 THOMAS BERTELS, BERNARD GARUS, and
THOMAS KETTWIG
____________________

Appeal 2018-004504
Application 14/007,557
Technology Center 3700
____________________

Before FREDERICK C. LANEY, PAUL J. KORNICZKY, and
BRENT M. DOUGAL, Administrative Patent Judges.

LANEY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision (dated May 16, 2017, hereinafter “Final Act.”) rejecting claims 1,
3–11, and 13–202 under 35 U.S.C. § 103(a) as unpatentable over Laghi (US
5,443,525, iss. Aug. 22, 1995) and Hanson (US 2009/0216339 A1, pub.
Aug. 27, 2009). We have jurisdiction under 35 U.S.C. § 6(b). Appellant’s
counsel appeared for oral hearing on May 28, 2019.
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Otto Bock Healthcare GmbH as the
real party in interest. Appeal Br. 1.
2 Claims 2 and 12 have been canceled. Appeal Br. 20, 22 (Claims App.).
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CLAIMED SUBJECT MATTER
The claims are directed to a prosthesis system with a liner made of an
electrically non-conducting liner material that allows electric signals to be
registered, in particular myoelectric signals, at the right position, in a simple
and cost-effective manner, which is comfortable to the patient. Spec. 1, 5.
Claims 1 and 14 are independent claims. Claim 1 is illustrative of the
claimed subject matter and reproduced below.
1. A prosthesis system comprising:
a liner made of an electrically non-conducting liner
material, which is configured to be pulled over a residual limb,
the liner comprising an inner face configured to rest against the
residual limb and an outer face facing away from the inner face;
a plurality of electrodes each having a base portion and at
least one electrical contact face extending from the base portion;
a prosthesis socket, which is configured to be arranged on
the residual limb after the liner was pulled there over such that a
socket inner face faces the outer face of the liner;
wherein the plurality of electrodes are arranged on the
outer face of the liner or on the socket inner face of the prosthesis
socket;
a plurality of feedthroughs which extend from the inner
face to the outer face of the liner, the plurality of feedthroughs
each comprising:
an inner contact surface exposed along the inner
face of the liner to contact the residual limb;
an outer contact surface exposed along the outer
face of the liner, the outer contact surface of the plurality
of feedthroughs being smaller than the electrical contact
faces of each of the plurality of electrodes;
an electrically conducting material;
wherein the plurality of feedthroughs are arranged
in at least one region of the liner, the at least one region
includes the outer contact surface of the plurality of
feedthroughs and portions of the liner outer face
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positioned between the outer contact surfaces of the
plurality of feedthroughs;
each of the at least one electrical contact faces of the
plurality of electrodes are in contact with a plurality of the
plurality of feedthroughs when the prosthesis socket is arranged
on the residual limb after the liner was pulled over the residual
limb;
the at least one region is greater than the at least one
electrical contact face of the at least one electrode, and each of
the at least one electrical contact faces of the plurality of
electrodes contact less than all of the outer contact surfaces of
the plurality of feedthroughs at a given time such that a
misalignment or shifting between the liner and the residual limb
results in the at least one electrical contact face of the at least one
electrode maintaining contact with the at least one of the plurality
of feedthroughs.
Appeal Br. 19–20 (Claims App.).
OPINION
The Appellant argues claims 1, 3–11, and 13–20 together as a group.
Appeal Br. 12–17. Therefore, we select independent claim 1 as
representative. Only those arguments actually made by Appellant have been
considered in this Decision, and any other arguments that could have been
made are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv); see also In
re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011); Ex Parte Frye, 94 USPQ2d
1072, 1075–76 (BPAI 2010) (precedential).
The Examiner finds that Laghi and Hanson disclose each of the
elements of claim 1 and determines that, in view of these references, it
would have been obvious to a skilled artisan at the time of the invention to
assemble those elements in the manner claimed. Final Act. 2–5. Appellant
succinctly characterizes the dispute as being “about whether Laghi discloses
that each electrode contacts a plurality of feedthroughs” as required by
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independent claim 1. Reply. Br. 1. After accurately setting forth the
evidence and findings that the Examiner made regarding Laghi’s support for
the rejection, Appellant argues, “the term ‘control electrode’ in Laghi should
not be interpreted to include the standard electrode, Laghi teaches away
from using the standard electrode, and Laghi describes a specific type of
electrode that excludes the standard electrode.” Id. at 2–3; see also Appeal
Br. 13–16. We address each argument in turn below.
First, Appellant argues that the term “control electrode” in Laghi
should not be interpreted to include the standard electrode (e.g., a three-
eighths of an inch in diameter electrode) because “they are not capable of
supplying the ‘thousands’ of signals to the control system that make it
possible to move the prosthetic device through a complete range of
motions.” Reply. Br. 3. Appellant notes that pad 12 of Laghi “has a high
density of conductors that are used to detect a multitude of myoelectric
signals and their intensities with a high degree of accuracy,” which “provide
‘thousands of reliable control signals for controlling a versatile prosthetic
device.’” Id. (citing Laghi 2:19–25, 28–37, 39–50). Appellant argues that
“[t]he standard electrodes are 3/8 inch in diameter so only four can fit on a
pad 12 that is one square inch without overlapping,” which “means the four
standard electrodes can only supply four (4) signals to the control system,
not the thousands described by Laghi.” Id.
Appellant’s first argument is unpersuasive because it does not show
Laghi limits the meaning of “control electrode.” Laghi simply refers to
“control electrodes” as being attached to the novel pad, but it does not
suggest these electrodes must take any specific form. Specifically, Laghi
states, “[a] window is cut in the liner to enable attachment of limb control
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electrodes to the pad,” “window 14 enables the attachment to the pad of
control electrodes from the prosthetic hand (not shown),” and “a window
formed in said silicone liner to enable attachment of control electrodes to
said silicone pad.” Laghi Abstract, 3:15–17, 4:30–31. The evidence from
Laghi, which Appellant cites, refers solely to the design and benefits of the
inventive pad disclosed, and lacks any suggestion that the “control
electrodes” attached to the pad are limited to having the same benefits and
design.
Furthermore, beyond attorney argument, Appellant provides no
evidence or technical reasoning to support the contention that four standard
control electrodes, which are three-eighths of an inch in diameter, attached
to an exemplary one square inch pad with about forty-thousand conductive
contacts can only supply four signals to the control system. In re Geisler,
116 F.3d 1465, 1470 (Fed. Cir. 1997) (holding attorney argument alone has
little, if any, persuasive value). Nor can we find any support for this
contention in the submitted Declaration of Thomas Bertels. And Laghi does
not suggest that using four standard control electrodes attached to a one
square inch pad with about forty-thousand conductive contacts can only
receive four of the thousands of myoelectric impulses provided by the pad,
thus, limiting the standard electrode to only supplying four signals to the
control system. Therefore, we do not agree with Appellant that the
Examiner erred by not narrowly construing “control electrodes” in the
context of Laghi.
Second, Appellant argues that Laghi teaches away from using
standard electrodes “by teaching the use of a specific type of control
electrodes – i.e., those that can supply thousands of signals to the control
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system.” Reply Br. 4. Appellant, as support, refers to Laghi’s
representation that
a primary object of this invention is to provide a pioneering
breakthrough in myoelectric control systems by eschewing the
large, metallic electrodes now in use and supplanting them with
thousands of tiny electrodes embedded in a soft, flexible pad
that can be placed in comfortable, nonmigrating relation to a
patient’s skin.
Laghi 2:38–44. Appellant argues that the above passage “teaches away from
any use of the standard electrodes because even if they are removed from the
user’s skin and attached to the pad 12, they cannot provide the thousands of
signals required to enable fine granular control of the prosthetic device that
is the hallmark of Laghi’s invention.” Reply Br. 4.
Appellant’s second argument is not persuasive. As discussed above,
we disagree that Laghi teaches a specific type of control electrode, but refers
to providing a window to allow control electrodes generally to be attached to
the pad. Furthermore, Laghi does not criticize, discredit, or otherwise
discourage attaching standard electrodes to the disclosed pad with its
thousands of electrically conductive contacts that provide reliable control
signals. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). We agree
with the Examiner that Laghi teaches that the “electrode will be attached to
the pad, not the skin . . . and therefore is not subject to the disadvantages
Laghi is trying to avoid such as the metal electrode shifting and losing
contact with the limb.” Ans. 3. In other words, while Laghi teaches away
from placing standard electrodes against a user’s skin to receive and provide
the myoelectric impulses, it does not discourage attaching the standard
electrodes to the disclosed pad with its thousands of electrically conductive
contacts, which is attached to the skin to provide reliable control signals.
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Therefore, Appellant has not shown persuasively that the Examiner erred by
not finding Laghi teaches away from using standard electrodes as “control
electrodes.”
Lastly, Appellant argues that Laghi teaches a specific type of control
electrode that has a 1:1 correspondence with the pad’s electrically
conductive contacts. We disagree. Laghi does not disclose any particular
control electrodes, but refers to attaching control electrodes more generally
to the inventive pad. Appellant’s evidence does not show persuasively that a
skilled artisan would have understood Laghi to limit the control electrodes
usable with the disclosed pad to a design that is dimensionally the same as
the pad’s conductive contacts. Again, although Appellant notes that Laghi
teaches a pad that provides thousands of reliable control signals, Appellant
does not demonstrate persuasively that the standard control electrodes were
known to be capable of receiving only one of the signals provided, even
when attached to multiple contacts. Absent any evidence that the standard
0.375 inch control electrode cannot receive multiple signals from the
multiple conductive contacts when attached to the pad, we are not persuaded
the Examiner erred by determining that a skilled artisan would have
recognized a standard 0.375 inch control electrode may be an option for the
novel pad Laghi discloses. This is important because we agree with the
Examiner that “[u]sing a standard control electrode . . . (.375 inch) . . . ,
when the control electrode is attached to pad 12, the electrode and contact
face . . . must necessarily be in contact with a plurality (defined as two or
more) feedthroughs.” Ans. 2–3.
Appellant has not shown persuasively that the Examiner’s rejection of
claim 1 was improper. Therefore, because the remaining claims fall with
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independent claim 1, we sustain the Examiner’s rejection of claims 1, 3–11,
and 13–20.
CONCLUSION
The Examiner’s rejection of claims 1, 3–11, and 13–20 is affirmed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § References Affirmed Reversed
1, 3–11,
13–20
103(a) Laghi, Hanson 1, 3–11, 13–
20

TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED