Ex Parte Alley et al

Patent Trial and Appeal Board

Jun 2, 2017

13663282 (P.T.A.B. Jun. 2, 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.
229.P001 6237
EXAMINER
WATKINS, MARCIA LYNN
ART UNIT PAPER NUMBER
3774
MAIL DATE DELIVERY MODE
13/663,282 10/29/2012 Randall D. Alley
43831 7590 06/02/2017
BERKELEY LAW & TECHNOLOGY GROUP, LLP
17933 NW Evergreen Parkway, Suite 250
BEAVERTON, OR 97006
06/02/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RANDALL D. ALLEY and T. WALLEY WILLIAMS, III
Appeal 2017-002541
Application 13/663,2821
Technology Center 3700
Before MICHAEL C. ASTORINO, MATTHEW S. MEYERS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
The Appellants filed a Request for Rehearing, dated May 17, 2017, of
the Decision on Appeal, dated March 21, 2017 (“Decision,” herein), which
affirmed the rejection of claims 8—11 and 16—18 under 35 U.S.C. § 103(a).
We have jurisdiction over the Request for Rehearing under 35 U.S.C. § 6(b).
1 The Appellants identify Randall D. Alley as the real party in interest.
Appeal Br. 3.
Appeal 2017-002541
Application 13/663,282
ANALYSIS
The Appellants’ Request for Rehearing advances five arguments, each
of which is addressed in turn. For the reasons provided below, the
Appellants’ arguments do not persuade us that any point presented in the
Request for Rehearing has been misapprehended or overlooked. See 37
C.F.R. § 41.52(a)(1)
Insofar as particular claims are addressed, the Request for Rehearing
(e.g., pages 8, 9) argues the independent claims (claims 8 and 16) together,
with no separate argument presented for any of the dependent claims.
Accordingly, claim 8 is selected for analysis herein. See 37 C.F.R.
§ 41.37(c)(l)(iv).
1. Arguments Raised for the First Time in the Reply Brief
The Decision states that the Reply Brief raised an issue that was not
presented in the Appeal Brief— specifically,
whether structures in Love, other than the compression and
relief regions, provide rotational stability to the prosthetic
device, such that the reason in the rejection for modifying
Dechamps (by increasing the number of such regions) is
illusory.
Decision 5 (citing Reply Br. 3—6). Thus, the Decision did not address this
untimely raised material. Id. (citing 37 C.F.R. § 41.41(b)(2)).
The Appellants contend that the Decision mistakenly overlooked such
portions of the Reply Brief— which, according to the Appellants, were
merely responsive to arguments that the Examiner introduced only in the
Answer. Req. Reh’g 2—3.
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Thus, at issue, in the first section of the Request for Rehearing (pages
2—5), is whether the rejection of claim 8 should have been reversed, based
upon any information presented in the Reply Brief that the Decision
mistakenly determined to be untimely presented under 37 C.F.R.
§ 41.41(b)(2).
According to the Examiner, in the Final Office Action, Dechamps2
teaches a prosthetic device possessing the subject matter of claim 8 —
including the claimed “plurality of compression portions and a plurality of
relief portions” — except that Dechamps does not teach the recited “three or
more” “compression portions” and “relief portions.” Final Action 2-4. The
Final Office Action states:
Love teaches a socket with 3 or more compression portions
(formed by portions of 30 extending through 50, 52, 54 and 56)
and 3 or more relief portions (sections of 40 there-between[ — ]
figures 1, 3 and 5), wherein the structure provides enhanced
rotational stability (e.g., see at least col. 6, lines 40-43; figures
1, 3 and 5).
Id. at 4—5. The Final Office Action draws further support from precedent,
recognizing that discerning an optimum value of a result-effective variable
(i.e., the number of compression/relief elements), as in In re Boesch, 617
F.2d 272 (CCPA 1980), and that merely duplicating working parts taught
(i.e., the compression/relief elements) in a prior art reference, as in St. Regis
Paper Co. v. Bemis Co., Inc., 549 F.2d 833 (7th Cir. 1977), are hallmarks of
obviousness. Id. at 5. Therefore, the Examiner concludes,
it would have been obvious to one of ordinary skill in the art at
the time of the invention to try modifying the device of
Dechamps so as to form the socket with three or more of each
of compression and relief portions, as taught and/or suggested
2 Dechamps, FR 2 539 616, pub. July 27, 1984.
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by Love, in order to optimize the rotational stability of the
device by merely duplicating the essential working parts thereof
based at least on the teaching and/or suggestion of Love with
predictable results and a reasonable expectation of success.
Id.
The Final Office Action set forth reasons for the combination that
were based upon the attributes of Love3 (characterized as providing
rotational stability) that the Examiner ascribed to Love’s use of three or
more compression/relief structures. Yet, the Appeal Brief did not dispute
the Examiner’s determination that the identified three or more
compression/relief structures of Love provide rotational stability, nor did the
Appeal Brief argue that increasing the number (to three or more thereof) of
such structures found in Dechamps would not impart enhanced rotational
stability to the Dechamps device. Instead, the Appeal Brief contended “that
[the Examiner’s] explanation amounts to only invoking a per se rule, without
more, to support the combination.” Appeal Br. 16. See also id. at 17 (“This
is an improper use of a per se rule.”)
Nevertheless, the Reply Brief, introduces the new argument that the
compression/relief structures are not “the principal factor in the Love design
for addressing rotational stability” (Reply Br. 3), which the Appellants
regard as “mainly driven by” molded contours of the socket (Req. Reh’g 4;
see also Reply Br. 4—5). The Reply Brief also contends, for the first time in
the Appeal, that applying Love’s teaching, by “the addition of more
longitudinal, rigid parts” — i.e., the features corresponding to the claimed
“compression portions” — to the Dechamps device “would harm its
3 Love, US 5,405,405, iss. Apr. 11, 1995.
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flexibility, thus defeating [Dechamps’] purpose of alleviating discomfort.”
Reply Br. 6.
The Appellants argue that such new arguments are merely rebuttal to
matters allegedly “provided for the first time in the [Examiner’s] Answer.”
Req. Reh’g 3. Yet, the portion of the Answer quoted by the Appellants on
page 3 of the Request for Rehearing states the very point about Love’s
compression/relief areas providing rotational stability, that was already
presented in the Final Office Action, as discussed above. Thus, the
Appellants’ new arguments could have been advanced in the Appeal Brief
and, accordingly, were not presented properly for the first time in the Reply
Brief. As such, these arguments may be disregarded for purposes of the
present Appeal. See 37 C.F.R. § 41.41(b)(2). A Reply Brief is not “an
opportunity to make arguments that could have been made in the principal
brief on appeal to rebut the Examiner’s rejections, but were not.” Ex parte
Borden, 93 USPQ2d 1473, 2010 WL 191083 at *2 (BPAI2010)
(informative) (addressing previous version of 37 C.F.R. § 41.41). Respect
for this principle is no mere formalism. In an Appeal, the Examiner has no
opportunity to respond in writing to new arguments introduced in a Reply
Brief, leaving the Board without the benefit of the Examiner’s perspective
concerning such matters — a situation that could impair the efforts of the
Board. See Borden, 2010 WL 191083 at *3^4.
In any event, even if they had been considered, the Appellants’
additional arguments raised in Reply Brief are unavailing.
Although Love states that the contoured socket interface can
contribute to rotational stability, there is no support for the Appellants’
suggestion that it is the “main[] drive[r]” thereof. See Req. Reh’g 4.
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Moreover, as the Examiner finds (see Final Action 4—5), Love (col. 6,11. 40—
43) teaches the use of multiple compression regions that “cause pressure
over the common weight bearing areas of the stump in order to control the
movement and rotational stability of the prosthetic device.” Thus, the aim of
providing rotational stability constituted a viable reason for applying Love’s
teaching (of “three or more” compression areas) to Dechamps. See WMS
Gaming, Inc. v. Inti Game Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999)
(“The suggestion to combine may be found in explicit or implicit teachings
within the references themselves.”)
The Appellants’ proposal that the Examiner’s combination of
references might harm the flexibility of Dechamps, “thus defeating the
purpose of alleviating discomfort” (Reply Br. 6), to begin with, amounts to
attorney argument, which is speculative and lacks factual support. Indeed,
combining the teachings of Dechamps and Love does not mandate bodily
incorporation of their embodiments that would result in any such
obstruction. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference .... Rather,
the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.”) Moreover, any such
detrimental impact would not necessarily preclude the combination. See In
re Urbanski, 809 F.3d 1237, 1243 (Fed. Cir. 2016) (“On this record, the
Board properly found that one of ordinary skill would have been motivated
to pursue the desirable properties taught by Wong, even at the expense of
foregoing the benefit taught by Gross.”)
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Accordingly, the Appellants’ arguments in this section of the Request
for Rehearing are not persuasive.
2. Appellants ’ Argument Directed to an Issue Not Included in
the Final Office Action
In the second section of the Appellants’ Request for Rehearing, the
Appellants argue that the Decision should have addressed an argument
directed to an issue that was not included in the Final Office Action that is
the subject of the present Appeal. Req. Reh’g 5—8.
Specifically, the Appellants argued, in the Appeal Brief, that the Love
embodiment is constructed for a tight fit on a patient’s limb, such that
Love’s relief portions would not provide sufficient room for “excess
portions of the limb to flow outwardly,” as required by claim 8. Appeal Br.
18—19. Thus, the Appellants urged that Love would satisfy this feature, only
by using Love’s device on an “unintended patient” (i.e., having a limb that is
too small for the sized device). Id. at 19-20. The Appellants point out that
the Examiner took such a position in a previous Office Action (dated
January 6, 2015) — where the rejection was based upon anticipation by
Love under 35 U.S.C. § 102 — but not in the Final Office Action (dated
December 3, 2015) presently being appealed. Id. at 19—20. Indeed, as stated
in the Examiner’s Answer, “the reconstruction and argument posed by
Appellants] are based on a combination of piecemeal analysis and bodily
incorporation of one reference by the other that were never a basis for
rejection.” Answer 5.
The Appellants’ various cited authorities (see Req. Reh’g 6—7) do not
address — let alone authorize — review of an Examiner’s position that has
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been superseded and is not included in the Office Action being appealed.
Although 37 C.F.R. § 41.31(a)(1) permits appeals from non-final rejections,
as the Appellants note (Req. Reh’g 6), this does not mean that the ensuing
appeal must address rejections predating the decision from which the appeal
is taken. After all, an appeal must be “from the decision of the examiner,”
37 C.F.R. § 41.31(a)(1) (emphasis added), and the Appeal Brief must
present arguments “explain[ing] why the examiner erred as to each ground
of rejection contested by” the Appellants, 37 C.F.R. § 41.37(l)(c)(iv)
(emphasis added).
Elsewhere, the Appellants appear to suggest that superseded aspects
of the prosecution history “were presented to illustrate the Examiner’s
inconsistencies, thus demonstrating that the reasoning behind the rejection is
not persuasive and that impermissible hindsight was used.” Req. Reh’g 7.
However, this characterization appears to be at odds with the corresponding
Section B of the Appeal Brief. See Appeal Br. 20 (“One skilled in the art
would not be motivated to look to Love, because a skilled person would not
use such a prosthetic socket (manufactured for a snug fit on a specific patient
according to the teachings of Love) on an unintended patient.”) Therefore, it
is not clear what argument the Appellants intend to present for Board
review.
Accordingly, the Appellants’ arguments in this section of the Request
for Rehearing are not persuasive.
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3. Whether the Combination or Modification of Teachings
Changes the Principle of Operation of Dechamps
The third section of the Request for Rehearing (pages 8—9) concerns
the argument presented in Section C of the Appeal Brief (pages 20—21) —
i.e., whether the combination of Dechamps and Love improperly changes
Dechamps’ principle of operation.
According to the Appellants, the references employ different
principles of operation — the flexible portions of Love compress the limb
(through the application of an inflatable bladder) by expanding inwardly
toward the wearer’s limb, whereas the flexible portions of Dechamps expand
outwardly, for the wearer’s comfort. Appeal Br. 21; see also Reply Br. 8.
According to the Decision, the Examiner relied upon Love solely for
its teaching of the number of compression and relief portions, and that the
rejection does not rely upon a bodily incorporation of features of Love into
Dechamps, such as the Appellants envision in the Appeal Brief; thus, the
alleged conflict between their respective principles of operation does not
arise. Decision 7.
The Appellants contend that the Decision did not consider or address
the merits of the Appellants’ argument — which, as the Appellants explain,
amounts to reasons showing why it was improper for the references to have
been combined in the first place:
Even if the Examiner may not have been arguing the bodily
incorporation of an isolated feature of Love into Dechamps,
Appellants] still [are] entitled to show a changed principle of
operation. That is, Appellants] still may show that a skilled
person would not have turned to Love, because the construction
and mode of operation of each reference is so different from the
other, that the principle of operation of Dechamps would be
changed had there been a bodily incorporation.
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Req. Reh’g 8.
The underlying difficulty with the Appellants’ position, though, is that
the purported changed principle of operation only comes about if Love’s
mechanism for compressing the limb were to be bodily incorporated into the
Dechamps device. Yet, it was the Appellants’ argument—not the
Examiner’s position — that relied upon such bodily incorporation of Love’s
device into that of Dechamps. Contrary to the Appellants’ argument, “it is
not necessary that the inventions of the references be physically combinable
to render obvious the invention under review,” In re Sneed, 710 F.2d 1544,
1550 (Fed. Cir. 1983), and “[cjombining the teachings of references does
not involve an ability to combine their specific structures,” In re Nievelt, 482
F.2d 965,968 (CCPA 1973).
Accordingly, the Appellants’ arguments in this section of the Request
for Rehearing are not persuasive.
4. Whether Love Teaches or Suggests “causing excess portions
of the limb to flow outwardly and into the plurality of relief
portions ”
The fourth section of the Request for Rehearing (pages 9-10)
concerns Section E of the Appeal Brief (pages 24—26), wherein the
Appellants argued that claim 8 was rejected erroneously, because Love fails
to teach or suggest the recited feature of “causing excess portions of the limb
to flow outwardly and into the plurality of relief portions.” The Decision
(page 8) stated that the rejection relies upon Dechamps, rather than Love, for
this feature.
According to the Appellants, “the Board has misapprehended or
overlooked the fact that the Examiner’s rejection in fact does depend upon
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whether Love teaches the three or more relief portions within the meaning of
the claims.” Req. Reh’g 10.
By saying that the rejection depends upon Love teaching “the three or
more relief portions within the meaning of the claims’'' {id. (emphasis
added)), we understand the Appellants as saying that the rejection requires
Love to teach the feature of claim 8 identified above: “causing excess
portions of the limb to flow outwardly and into the plurality of relief
portions.”
The rejection states otherwise. The Final Office Action states that
Dechamps (not Love) teaches various claimed features, including “a
plurality of compression portions,” “a plurality of relief portions,” and
“wherein each of the plurality of compression portions is configured to”
compress the limb, “thereby causing excess portions of the limb to flow
outwardly and into the plurality of relief portions.” Final Action 2-4.
By contrast, the Final Office Action relies upon Love to teach
increasing the number of “compression portions” and “relief portions” to
“three or more” of each. The Final Office Action goes on to say:
“However, Dechamps is silent regarding the plurality of compression and
relief portions specifically comprise three or more of each, respectively.” Id.
at 4—5.
Accordingly, the Appellants’ arguments in this section of the Request
for Rehearing are not persuasive.
5. The Significance of “three or more ”
In the fifth and final section of the Request for Rehearing, the
Appellants contend that “[t]he Examiner apparently believes that a
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difference between two compression and relief portions, on the one hand,
and three or more such portions, on the other hand, is not all that
significant.” Req. Reh’g 10. However, the Request for Rehearing does not
identify any portion of the rejection that allegedly ignores the “three or
more” limitation, nor does this section of the Request for Rehearing identify
any portion of the Decision that might be reconsidered.
Accordingly, the Appellants’ arguments in this section of the Request
for Rehearing are not persuasive.
DECISION
The Appellants’ Request for Rehearing has been granted to the extent
that the Decision has been reconsidered in light of the Request for
Rehearing, but is denied in all other respects.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
DENIED
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