Ex Parte Dalury

Patent Trial and Appeal Board

Jun 29, 2016

12589586 (P.T.A.B. Jun. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/589,586 10/26/2009
7590
Max Stul Oppenheimer
P.O. Box SO
Stevenson, MD 21153
06/29/2016
FIRST NAMED INVENTOR
David F. Dalury
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
DDCrutch09 1097
EXAMINER
JACKSON, DANIELLE
ART UNIT PAPER NUMBER
3636
MAILDATE DELIVERY MODE
06/29/2016 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 DAVID F. DALURY
Appeal2014-005916
Application 12/589,586
Technology Center 3600
Before, MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
MARK A. GEIER, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1, 3-10, and 13. Br. 4. Claims 2, 11, and 12 have been
withdrawn from consideration. Br. 4. We have jurisdiction under 35 U.S.C.
§ 6(b ). We AFFIRM-IN-PART.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "is directed to medical devices used to
assist walking by helping to support a user's weight." Spec. 1: 5---6. Claims
Appeal2014-005916
Application 12/589,586
1, 3, 4, and 13 are independent. Independent claims 1 and 13 are illustrative
of the claims on appeal and are reproduced below:
1. A crutch comprising an axillary support, an upper shaft
segment having a first end and a second end, an intermediate
shaft segment having a first end and a second end, and a lower
shaft segment having a first end and a second end;
said axillary support connected to the first end of said
upper shaft segment at a first angle between the shaft segment1
and a user's torso of between approximately 10 and 15 degrees;
the second end of said upper shaft segment connected the first
end of said intermediate shaft segment at a second angle of
between approximately 15 to 20 degrees outward in the same
plane as the first angle and approximately 15 to 20 degrees
forward in a plane orthogonal to the plane of said first angle;
the second end of said intermediate shaft segment
connected to the first end of the lower shaft segment at a third
angle of between approximately 20 to 30 degrees outward in a
plane orthogonal to the plane of said second angle. 2
13. A crutch element comprising an intermediate shaft
segment having a first end and a second end, and a lower shaft
segment having a first end and a second end;
said first end of said intermediate shaft segment adapted
to connect to an upper segment comprising either an upper shaft
segment having an axillary support or an arm support so that said
upper segment and said intermediate shaft segment connect at a
complex angle comprising a first angle between the shaft
segment and a user's torso of between approximately 10 and 15
degrees and a second angle of between approximately 15 to 20
1 We construe the recited "the shaft segment" as being the "upper shaft
segment."
2 The recited "third angle" of claims 1 and 13 is defined as "being between
approximately 20 to 30 degrees outward in a plane orthogonal to the plane of
said second angle." Should there be further prosecution of this application,
the Examiner may want to assess whether there is support in the
Specification for this third angle having such an orthogonally oriented
outward disposition. See Spec. 8: 16-17 and page 13, col. 2, top cell.
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Application 12/589,586
degrees outward in the same plane as the first angle and
approximately 15 to 20 degrees forward in a plane orthogonal to
the plane of said first angle;
the second end of said intermediate shaft segment
connected to the first end of the lower shaft segment at a third
angle of between approximately 20 to 30 degrees outward in a
plane orthogonal to the plane of said second angle.
REFERENCES RELIED ON BY THE EXAMINER
Thomas US D 204,849 May 17, 1966
Acosta, Sr. US 4,763,680 Aug. 16, 1988
Block US 5,495,867 Mar. 5, 1996
THE REJECTIONS ON APPEAL
Claims 1, 10, and 13 are rejected under 35 U.S.C. § 112, second
paragraph as being indefinite.
Claims 1, 3-5, 7, 13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Block.
Claims 3, 6, and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Thomas.
Claims 1, 4, and 6-10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Thomas and Acosta, Sr.
ANALYSIS
The rejection of claims 1, 10, and 13 as being indefinite
Claim 1
The Examiner states that claim 1 describes two different angles, each
being in a plane orthogonal to the other, as representing the claimed "second
angle," and further that the claimed "third angle" is "orthogonal to the plane
of the second angle." Final Act. 3. The Examiner states, "[i]t is unclear
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Application 12/589,586
exactly which of the two planes of the second angle that the third angle is
orthogonal to." Final Act. 3; see also Ans. 2-3.
When addressing issues of claim indefiniteness, our reviewing court
stated, "what we have asked is that the claims be amenable to construction,
however difficult that task may be." Exxon Research & Eng'g Co. v. United
States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). They have also provided
instruction that indefiniteness "requires a determination of whether those
skilled in the art would understand what is claimed when the claim is read in
light of the specification." Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,
806 F.2d 1565, 1576 (Fed. Cir. 1986).
According to Appellant's Specification, the second angle, which is
identified as "angle (b )," "should approximate the complex angle of the
user's elbow in a relaxed carrying position, i.e., approximately 15 to 20
degrees outward (in the sagittal plane) and approximately 15 to 20 degrees
forward (in the coronal plane)." Spec. 8: 6-8 (emphasis added); see also Br.
10 (referencing an exhibit where a "standard 'anatomical position' is
described"). Thus, one skilled in the art would understand the second angle
to be a complex or skewed angle that is not fully in either orthogonal plane
(i.e., the sagittal or coronal plane). In this case, it would have been
understood that the claimed "second angle" is in a different plane and that
this claimed "second angle" has components residing in or projecting onto
each of these orthogonal planes as stated. Accordingly, it is the resultant
plane of the second angle that the third angle is orthogonal to, and not the
"x" or "y" (i.e., sagittal or coronal) planes where the respective components
of this second angle can be found. For this reason, claim 1 would have been
understood as being sufficiently definite within the meaning of 35 U.S.C. §
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Application 12/589,586
112, second paragraph. See also Br. 10. As such, we do not sustain the
Examiner's rejection of claim 1 as being indefinite on this point.
Claim 10
With regard to claim 10, the Examiner states: "Claim 10 recites the
limitation 'the crutch tip' in line [3]. There is insufficient antecedent basis
for this limitation in the claim with respect with claims [sic] 4, wherein no
crutch tip was previously recited." Final Act. 4; see also Ans. 4. Claim 10
depends from claim 4, and claim 4 provides no antecedent basis for "the
crutch tip" as recited in claim 10. Accordingly, we sustain the Examiner's
rejection of claim 10 under 35 U.S.C. § 112, second paragraph, as being
indefinite.
Claim 13
The Examiner relies on two different indefinite rationales for the
rejection of claim 13 under 35 U.S.C. § 112, second paragraph. Final Act. 4.
First, the Examiner addresses the limitation "an upper segment comprising
either an upper shaft segment having an axillary support or an arm support."
The Examiner states, "[i]t is unclear whether the upper segment can
comprise either an upper shaft segment having an axillary support or an arm
support, or if it's the upper shaft segment that has an [axillary] support or an
arm support." Final Act. 4. It appears clear that the limitation is written
such that it is the upper segment that comprises "either" an upper shaft
segment (with axillary support) "or" an arm support. As such, we view the
claim as clearly stating an alternative. For that reason, we do not sustain the
Examiner's indefiniteness rejection of claim 13 based on this rationale.
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Second, claim 13 recites "an intermediate shaft segment," "a lower
shaft segment," and "an upper shaft segment." Claim 13 also recites "a
complex angle comprising a first angle between the shaft segment and a
user's torso" (emphasis added). The Examiner states: "It is not clear exactly
which shaft segment is being referred to here - the upper shaft segment, the
intermediate shaft segment, or the lower shaft segment." Final Act. 4; see
also Ans. 5. We agree with the Examiner that it is unclear which shaft
segment is being referred to here. Accordingly, we sustain the Examiner's
rejection of claim 13 under 35 U.S.C. § 112, second paragraph, as being
indefinite under this stated rationale.
The rejection of claims 1, 3-5, 7, and 13 as unpatentable over Block
Independent claims 1, 3, 4, and 13 each refer to an angle between an
axillary support/arm support and a shaft segment/user's torso "of between
approximately 10 and 15 degrees."
The Examiner finds that Block teaches this angle between Block's
corresponding components. See Final Act. 6. The Examiner notes that
Block teaches and illustrates an angle a "which Block says may be between
90° and 135° with respect to the central longitudinal axis." Final Act. 6
(citing Block, 6: 32-34; Fig. 2). The Examiner states, "This equates to a
range of about 0° to 45° if it is being measured in the same manner that
angle a in the present invention is measured (as seen in the side view shown
in FIG. 2)." Final Act. 6 (emphasis added). We understand the Examiner to
be finding that Block's "range of about 0° to 45°" encompasses the claimed
range of 10 to 15 degrees if "measured in the same manner." Final Act. 6.
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Application 12/589,586
Block describes the manner by which angle a is measured as follows:
"In FIG. 2, the handles are inclined at an angle of greater than 90° with
respect to a central longitudinal axis running through the load-bearing
shaft 19. The angle alpha for handle 23 may be from about 90° to about
135° with respect to said central longitudinal axis." Block 6:29--34. From
this passage, and with reference to Fig. 2 of Block, it is apparent that the 90°
to about 135° angle a is measured in a clockwise direction beginning at the 6
o'clock position of the central longitudinal axis of load-bearing shaft 19 and
ending at the inclined handle 23 (i.e., either of the illustrated dashed lines,
one at 90 degrees and the other at 135 degrees).
None of the angles recited in Appellant's independent claims are
measured in the same manner as angle a is measured in Block. That is,
Appellant's Specification states that the angle in question is measured
"relative to the long axis." Spec. 7:27-28. Upon reading Appellant's
Specification and viewing Appellant's Drawings, one skilled in the art
would understand that the claimed range of 10 to 15 degrees extends from
the 12 o'clock position on the vertical axis. Consequently, there is no
angular overlap between angle a of Block and the angle recited in each of
Appellant's independent claims 1, 3, 4, and 13. The only way for angular
overlap to occur between angle a of Block and the angle claimed in each of
Appellant's independent claims 1, 3, 4, and 13 would be for the "upper
extent" of angle a of Block to reach approximately 165 degrees to
approximately 170 degrees. Since there is no angular overlap between angle
a of Block and the angle claimed in each of Appellant's independent claims
1, 3, 4, and 13, the Examiner appears to be mistaken when finding that
Block teaches the recited angle range "if it is being measured in the same
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manner that angle a in the present invention is measured." Final Act. 6; see
also Br. 12. Accordingly, Block fails to disclose an essential limitation of
each of claims 1, 3, 4, and 13, and as such, Block does not render obvious
the crutches defined in those claims. We therefore do not sustain the
rejection of claims 1, 3, 4, and 13, as well as dependent claims 5 and 7,
under 35 U.S.C. § 103(a) as unpatentable over Block.
The rejection of claims 3, 6, and 10 as unpatentable over Thomas
With regard to independent claim 3, the Examiner determines that the
design patent to "Thomas et al. is silent on the angle between the axillary
support and the upper shaft segment." Final Act. 11. Nevertheless, the
Examiner states that it would have been obvious to have the axillary support
of Thomas be attached to the upper shaft segment "at an angle in the range
of 10° to 15° so that the weight of the user is supported by their torso as
opposed to directly under their arm which is known to cause nerve damage."
Final Act. 11. In essence; the Examiner is converting Thomas' crutch from
one that provides support directly under the arm to one that provides support
to the torso, and specifically one that is angled in the manner recited to
provide this torso support. The Examiner's rationale for converting
Thomas' crutch to a different design is to avoid "nerve damage," yet the
Examiner does not explain why this particular range of angles would have
been obvious when altering Thomas' method of operation by converting
Thomas' crutch to provide torso support. Appellant's Specification states,
"[t]he basic objective is to provide a crutch which matches the contour of the
arm as it flexes forward when it is in a supporting position." Spec. 7:11-12.
As such, it would appear from Appellant's Specification that the claimed
range of angles was selected for a particular purpose, i.e., to match the
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contour of the arm when in a supporting position. We thus, agree with
Appellant that the Examiner does "not explain why it would have been
obvious to vary the angles specified in the references to those disclosed and
claimed in the application." Br. 11; see also Br. 13. Accordingly, we do not
sustain the Examiner's rejection of claim 3 as being unpatentable over
Thomas.
As for claim 6, 3 the Examiner determines that "Thomas et al. teaches
a handgrip connected to the intermediate shaft segment at a fourth angle.
Thomas et al. is silent on the degree of the angle." Final Act. 11 (citing Fig.
1 of Thomas). Nevertheless, the Examiner maintains that it would have
been an obvious matter of design choice "to have the handgrip of Thomas et
al. be attached to the intermediate shaft segment at an angle in the range of
10° upward to 10° downward and 0° to 15° inward" so that the user's wrist
is "properly aligned for maximum comfort and to prevent damage to the
wrist." Final Act. 11. Again, the Examiner does not explain how this
recited range of angles is rendered obvious in view of the design patent to
Thomas. We do not sustain the Examiner's rejection of claim 6 for this
reason as well as for the reasons expressed supra with respect to parent
claim 3.
With regard to claim 10, this claim depends from independent claim
4, yet the Examiner does not address the limitations of parent claim 4 nor
does the Examiner reject parent claim 4 over Thomas. We thus, are not
clear as to how dependent claim 10 can be properly rejected by the Examiner
3 Both claim 6 and claim 7 are multiple dependent claims dependent on
claims 1, 2, 3, 4, and 5. However, claim 2 has been withdrawn from
consideration. Br. 4. We therefore, treat claims 6 and 7 as being dependent
on claims 1, 3, 4, and 5.
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under Thomas. Additionally, the Examiner alleges that Thomas "teaches a
crutch tip that is angled outward (as seen in FIG. 1, the tip is attached to a
vertical segment that is angled from the lower shaft segment)." Final Act.
11. In the Answer, the Examiner "notes that even though the angles of
Thomas are not specified, the crutch is clearly shown to have angle[ d]
portions in the figures." Ans. 7. Again, the Thomas crutch is planar (see
Thomas, Figs. 2, 3). The "angled" portions cited by the Examiner refer to
bends in the Thomas crutch, all of which lie in the same plane. See Thomas,
Fig. 1. Thus, Thomas does not teach a crutch tip that is angled outward
between 0 and 20 degrees as the term "outward" is understood from the
Specification, namely, "meaning to the side and away from the user." See
Spec. 1: 23-24. We also do not sustain the Examiner's rejection of claim 10
under the design patent to Thomas for reasons similar to those previously
discussed. See also Br. 13.
Furthermore, regarding the Examiner's rejection of claims 3, 6, and
10 as unpatentable over Thomas, our reviewing court has provided
instruction that, "[ t ]he Patent Office has the initial duty of supplying the
factual basis for its rejection. It may not, because it may doubt that the
invention is patentable, resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in its factual basis." In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967). The Examiner's reliance on
"an obvious matter of design choice" (Final Act. 11 ), without any further
explanation by the Examiner as to why these particular angles, and the
change in where Thomas' s crutch support is provided to the patient, are a
resort to speculation, unfounded assumptions, or hindsight. Consequently,
lacking any teaching of the specific angles recited in claims 3, 6, and 10,
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Thomas does not render obvious the crutch recited in those claims. See also
Br. 13. Again, we do not sustain the rejection of claims 3, 6, and 10 under
35 U.S.C. § 103(a) as unpatentable over Thomas.
The rejection of claims 1, 4, 6--10
as unpatentable over Thomas and Acosta, Sr.
As for independent claims 1 and 4, the Examiner admits, "Thomas et
al. is silent on the angle between the axillary support and the upper shaft
segment." Final Act. 12. This angle refers to the "first angle" recited in
claims 1 and 4. The Examiner does not rely on Acosta, Sr. to remedy this
acknowledged deficiency. For this reason alone, Thomas and Acosta, Sr.
fail to disclose or suggest the crutch recited in claims 1 and 4.
The Examiner further determines that "Thomas et al. teaches the
second end of said upper shaft segment to be connected to the first end of
said intermediate shaft segment at a second angle outward in the same plane
as the first angle (as seen in FIG. 1)." Final Act. 13 (emphasis added).
However, the Examiner does not indicate where the recited range of this
"outward" angle is disclosed in Thomas. See Br. 13. The Examiner further
relies on Acosta, Sr. for disclosing an angle that "is angled forward," but
again there is no indication by the Examiner that Acosta, Sr. discloses the
recited range of this "forward" angle. Final Act. 13; see also Br. 13.
Nevertheless, the Examiner relies on design choice concluding that it would
have been obvious for Thomas' "outward" angle "to include" Acosta, Sr.' s
"forward" angle, with both having the recited range in order to "avoid
putting any unnecessary pressure on the user's joints which could cause
damage." Final Act. 13-14. The Examiner provides no further support for
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making this second angle a complex or skew angle as recited by Appellant,
or why this particular angle range would have been selected. See Br. 13.
The Examiner further determines that Thomas "teaches the second
end of the intermediate shaft segment to be connected to the first end of the
lower shaft segment at a third angle (as seen in FIG. 1)." Final Act. 14.
Again relying on design choice the Examiner maintains that it would have
been obvious to have the angle "be between 20° to 30° so the crutch could
be balanced around the center of the angled axillary and intermediate
segments." Final Act. 14. We note, however, the Examiner's silence
regarding the limitation found in independent claim 1 that the third angle lies
"outward in a plane orthogonal to the plane of said second angle."
Despite the Examiner's reliance on design choice, Appellant's
Specification provides a reason for the particular ranges recited. See supra.
In view of this, the Examiner has not established a prima facie case that the
proposed combination of Thomas and Acosta, Sr. would have been obvious
under a "design choice" rationale. Furthermore, the Examiner has not
indicated how the combination of Thomas and Acosta, Sr. satisfies all of the
limitations of independent claims 1and4. Again, see In re Warner, 379
F.2d 1011(CCPA1967).
As for claims 6 and 10, the Examiner relies on Thomas for the same
reasons as those advanced above. See Final Act. 14--15. The Examiner does
not rely on Acosta, Sr. to remedy those deficiencies. Accordingly, we do not
sustain the rejection of independent claims 1 and 4, as well as dependent
claims 6-10 under 35 U.S.C. § 103(a) as unpatentable over Thomas and
Acosta, Sr.
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DECISION
The Examiner's rejection of claim 1 under 35 U.S.C. § 112, second
paragraph, is reversed.
The Examiner's rejection of claims 10 and 13 under 35 U.S.C. § 112,
second paragraph, is affirmed.
The Examiner's rejection of claims 1, 3-5, 7, and 13 under 35 U.S.C.
§ 103(a) as unpatentable over Block is reversed.
The Examiner's rejection of claims 3, 6, and 10 under 35 U.S.C.
§ 103(a) as unpatentable over Thomas is reversed.
The Examiner's rejection of claims 1, 4, and 6-10 under 35 U.S.C.
§ 103(a) as unpatentable over Thomas and Acosta, Sr. is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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