Ex parte JOUTRAS et al.

Board of Patent Appeals and Interferences

Dec 3, 1998

08271022 (B.P.A.I. Dec. 3, 1998)

Application for patent filed July 6, 1994. According to1
the appellants, the application is a continuation-in-part of
Application No. 08/089,852, filed July 9, 1993.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte FRANK E. JOUTRAS and RONALD J. HRUSKA JR.
____________
Appeal No. 98-0985
Application No. 08/271,0221
____________
ON BRIEF
____________
Before CALVERT, NASE, and CRAWFORD, Administrative Patent
Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 42-47, 49-52 and 72-74. Claim 48 has been
allowed and claims 1-41, 53-71 and 75-82 have been canceled.
Appeal No. 98-0985
Application No. 08/271,022
We AFFIRM-IN-PART and enter a new rejection pursuant to
37 CFR § 1.196(b).
Appeal No. 98-0985 Page 3
Application No. 08/271,022
BACKGROUND
The appellants' invention relates to a method of fitting
an exercise device to a patient. An understanding of the
invention can be derived from a reading of exemplary claim 42,
which appears in the appendix to the appellants' brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Whitelaw 2,832,334 Apr. 29,
1958
Makansi et al. 4,822,037 Apr.
18, 1989
(Makansi)
Dalebout 4,850,585 July 25,
1989
Airy et al. 5,052,379 Oct. 1,
1991
(Airy)
Hughes 5,158,519 Oct. 27,
1992
Claims 42-47, 49-52 and 72-74 stand rejected under 35
U.S.C. § 112, second paragraph, as being indefinite for
failing to particularly point out and distinctly claim the
subject matter which the appellants regard as the invention.
Appeal No. 98-0985 Page 4
Application No. 08/271,022
Claims 42, 43, 49, 50, 52 and 72-74 stand rejected under
35 U.S.C. § 103 as being unpatentable over Airy in view of
Dalebout.
Claims 44-47 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Airy in view of Dalebout, Whitelaw and
Hughes.
Claim 51 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Airy in view of Dalebout and Makansi.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejections, we make reference to the examiner's answer (Paper
No. 17, mailed March 17, 1997) for the examiner's complete
reasoning in support of the rejections, and to the appellants'
brief (Paper No. 16, filed December 23, 1996) for the
appellants' arguments thereagainst.
OPINION
Appeal No. 98-0985 Page 5
Application No. 08/271,022
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the
determinations which follow.
Appeal No. 98-0985 Page 6
Application No. 08/271,022
The indefiniteness issue
We will not sustain the examiner's rejection of claims
42-47, 49-52 and 72-74 under 35 U.S.C. § 112, second
paragraph.
The second paragraph of 35 U.S.C. § 112 requires claims
to set out and circumscribe a particular area with a
reasonable degree of precision and particularity. In re
Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA 1977).
In making this determination, the definiteness of the language
employed in the claims must be analyzed, not in a vacuum, but
always in light of the teachings of the prior art and of the
particular application disclosure as it would be interpreted
by one possessing the ordinary level of skill in the pertinent
art. Id.
The examiner's focus during examination of claims for
compliance with the requirement for definiteness of 35 U.S.C.
§ 112, second paragraph, is whether the claims meet the
threshold requirements of clarity and precision, not whether
more suitable language or modes of expression are available.
Appeal No. 98-0985 Page 7
Application No. 08/271,022
Some latitude in the manner of expression and the aptness of
terms is permitted even though the claim language is not as
precise as the examiner might desire. If the scope of the
invention sought to be patented cannot be determined from the
language of the claims with a reasonable degree of certainty,
a rejection of the claims under 35 U.S.C. § 112, second
paragraph, is appropriate.
With this as background, we find no basis for the
specific rejections under 35 U.S.C. § 112, second paragraph,
made by the examiner of the claims on appeal. In that regard,
we agree with the appellants (brief, pp. 19-20) that a person
of ordinary skill in the art would understand the scope (i.e.,
the metes and bounds) of the invention. In addition, with
respect to the specific objection to claims 72 and 73, we note
that parent claim 42 requires that the first and second
sections of the jointed limb brace be on opposite sides of the
joint of the limb.
The obviousness issues
Claims 42, 43 and 72-74
Appeal No. 98-0985 Page 8
Application No. 08/271,022
We sustain the examiner's rejection of claims 42, 43 and
72-74 under 35 U.S.C. § 103.
The teachings of Airy and Dalebout are generally set
forth on pages 8-11 of the brief and pages 5-7 of the answer.
The examiner determined (answer, p. 6) that "Airy
discloses the claimed device except for the resistance means
being a friction means." With regard to this difference, the
examiner then determined that
because these two resistance means [the frictional
resistance means of Dalebout and the fluid resistance
means of Airy] were art-recognized equivalents at the
time the invention was made, one of ordinary skill in the
art would have found it obvious to substitute the
frictional resistance means for the fluid resistance
means of Airy.
Implicit in this rejection is the examiner's view that
the above noted modification of Airy would result in a method
which corresponds to the method recited in claims 42, 43 and
72-74 in all respects.
Appeal No. 98-0985 Page 9
Application No. 08/271,022
The appellants' argument (brief, pp. 21-25) with respect
to claims 42, 43 and 72-74 is unpersuasive for the following
reasons.
First, the appellants argue the deficiencies of each
reference on an individual basis. However, nonobviousness
cannot be established by attacking the references individually
when the rejection is predicated upon a combination of prior
art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091,
1097, 231 USPQ 375, 380 (Fed. Cir. 1986).
Lastly, the appellants argue that the claimed subject is
not suggested by the applied prior art. We do not agree.
When it is necessary to select elements of various teachings
in order to form the claimed invention, we ascertain whether
there is any suggestion or motivation in the prior art to make
the selection made by the appellants. Obviousness cannot be
established by combining the teachings of the prior art to
produce the claimed invention, absent some teaching,
suggestion or incentive supporting the combination. The
extent to which such suggestion must be explicit in, or may be
Appeal No. 98-0985 Page 10
Application No. 08/271,022
fairly inferred from, the references, is decided on the facts
of each case, in light of the prior art and its relationship
to the appellants' invention. As in all determinations under
35 U.S.C. § 103, the decision maker must bring judgment to
bear. It is impermissible, however, simply to engage in a
hindsight reconstruction of the claimed invention, using the
appellants' structure as a template and selecting elements
from references to fill the gaps. The references themselves
must provide some teaching whereby the appellants' combination
would have been obvious. In re Gorman, 933 F.2d 982, 986, 18
USPQ2d 1885, 1888 (Fed. Cir. 1991) (citations omitted). That
is, something in the prior art as a whole must suggest the
desirability, and thus the obviousness, of making the
combination. See In re Beattie, 974 F.2d 1309, 1312, 24
USPQ2d 1040, 1042 (Fed. Cir. 1992); Lindemann Maschinenfabrik
GmbH v. American Hoist and Derrick Co., 730 F.2d 1452, 1462,
221 USPQ 481, 488 (Fed. Cir. 1984).
In this case, it is our opinion that the teaching,
suggestion or incentive supporting the combination comes from
the applied prior art and not from impermissible hindsight.
Appeal No. 98-0985 Page 11
Application No. 08/271,022
In that regard, Airy teaches (column 11, lines 17-20) that
various types of resistance units may be employed in
conjunction with his invention to resist flexure or extension
of the body joint or both flexure and extension as desired.
Figures 6, 8, 9 and 11 of Airy set forth examples of suitable
resistance units, including ones that utilize the shear
resistance of a viscous fluid. Dalebout teaches a striding
exerciser to which various resistance mechanisms may be
adapted to offer resistance to the striding-type motion
(abstract, lines 12-14, and column 8, lines 53-54).
Specifically, Dalebout discloses both a resistance means
(Figure 8) utilizing friction members 160, 162 and a
resistance means (Figure 9) utilizing a hydraulic unit 190.
Thus, Airy specifically suggests employing various types of
resistance units as desired. Accordingly, we conclude that it
would have been obvious to one of ordinary skill in the art at
the time the invention was made to modify Airy's resistance
units to be frictional resistance units as suggested by
Dalebout's Figure 8 especially in view of the prior art
teachings that frictional resistance means and fluid
resistance means are art-recognized alternatives.
Appeal No. 98-0985 Page 12
Application No. 08/271,022
For the reasons set forth above, the decision of the
examiner to reject claims 42, 43 and 72-74 under 35 U.S.C. §
103 is affirmed.

Claims 49-52
We will not sustain the examiner's rejection of claims
49-52 under 35 U.S.C. § 103.
Claim 49 adds to parent claim 42 the addition limitation
that "said resistance is controlled by a microprocessor
program."
With regard to claim 49, the examiner states (answer, p.
6) that "Airy teaches the method of controlling the resistance
means by a microprocessor program (column 15 lines 13-20)."
The appellants argue (brief, p. 23) that the subject
matter of claim 49 is not taught by either Airy or Dalebout.
The appellants point out that controlling resistance to
movement with a microprocessor is not the same as taking data
with a microprocessor.
Appeal No. 98-0985 Page 13
Application No. 08/271,022
We have also reviewed the Makansi reference additionally2
applied in the rejection of claim 51 (dependent on claim 50)
but find nothing therein which makes up for the deficiencies
of Airy and Dalebout discussed above regarding claim 49.
We agree with the appellants that the subject matter of
claim 49 is not suggested or taught by the applied prior art.
Specifically, the microprocessor (referred to by the examiner
in Airy at column 15, lines 13-20) does not control the
resistance of the exercise apparatus. Accordingly, all the
limitations of claim 49, and claims 50-52 dependent thereon,
are not suggested by the applied prior art. Thus, the2
decision of the examiner to reject claims 49-52 under 35
U.S.C. § 103 is reversed.
Claims 44-47
We sustain the examiner's rejection of claims 44-47 under
35 U.S.C. § 103.
The additional teachings of Whitelaw and Hughes are
generally set forth on pages 11-12 of the brief and pages 7-9
of the answer.
Appeal No. 98-0985 Page 14
Application No. 08/271,022
The examiner determined (answer, pp. 7-8) that in
addition to the difference noted above with respect to parent
claim 42, Airy discloses the claimed device "except for a
program means for varying the resistance of the first and
second sections at different relative angles." With regard to
this additional difference, the examiner then determined that
[i]t would have been obvious to one having ordinary skill
in the art at the time the invention was made to include
the method of providing the resistance means of Airy in
view of Dalebout with the adjustable resistance means of
Whitelaw and Hughes, in order to provide the user
different resistance relative to the positions of the
first and second sections for a smooth resistance to the
movement.
Once again, implicit in this rejection is the examiner's
view that the above noted modifications of Airy would result
in a method which corresponds to the method recited in claims
44-47 in all respects.
The appellants argue (brief, pp. 25-27) that there is no
suggestion to combine the prior art to arrive at the claimed
invention. We do not agree. Airy teaches (column 5, lines 1-
5) that frame sections 18 and 20 are provided with a
resistance unit to apply desired levels of resistance.
Appeal No. 98-0985 Page 15
Application No. 08/271,022
Dalebout teaches (column 7, lines 46-55) that the bolt member
156 and the nut member 166 together constitute an adjusting
means for adjusting the frictional resistance to movement of
the pedal means 34, 36 to the frame 16, 18. Whitelaw teaches
(column 3, lines 25-45) that the resistive force of the
friction member 56 may be varied by adjustment of the
adjusting cap 49 to increase or decrease the force imposed on
the friction member. Lastly, Hughes teaches (column 1, line
41, to column 2, line 51) a body exerciser having an
adjustable calibration member that can increase or decrease
the force imposed on the members (i.e., rotatable members 26
and stationary members 27 shown in Figure 3). It is our
opinion that these teachings would have suggested to one of
ordinary skill in the art at the time the invention was made
to make the resistance means of Airy in view of Dalebout
adjustable in order to provide a program for varying the
resistance force over a portion of movement in accordance with
the program at different angles between the first and second
sections.
Appeal No. 98-0985 Page 16
Application No. 08/271,022
For the reasons set forth above, the decision of the
examiner to reject claims 42, 43 and 72-74 under 35 U.S.C. §
103 is affirmed.
New ground of rejection
Under the provisions of 37 CFR § 1.196(b), we enter the
following new ground of rejection.
Claims 50-52 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which the
appellants regard as the invention. Claim 50 recites that
"said microprocessor program controls pressure between said
first and second friction members." However, there is no
proper antecedent basis for "said first and second friction
members." The parent claims of claim 50 (i.e., claims 42 and
49) do not recite first and second friction members. It is
our opinion that in view of the lack of antecedent basis for
"said first and second friction members" a person of ordinary
skill in the art would not be able to understand the scope
(i.e., the metes and bounds) of the claimed invention.
Appeal No. 98-0985 Page 17
Application No. 08/271,022
CONCLUSION
To summarize, the decision of the examiner to reject
claims 42-47, 49-52 and 72-74 under 35 U.S.C. § 112, second
paragraph, is reversed; the decision of the examiner to reject
claims 42-47 and 72-74 under 35 U.S.C. § 103 is affirmed; the
decision of the examiner to reject claims 49-52 under 35
U.S.C. § 103 is reversed; a new rejection of claims 50-52
under 35 U.S.C. § 112, second paragraph, has been added
pursuant to provisions of 37 CFR § 1.196(b).
In addition to affirming the examiner's rejection of one
or more claims, this decision contains a new ground of
rejection pursuant to 37 CFR § 1.196(b)(amended effective Dec.
1, 1997, by
Appeal No. 98-0985 Page 18
Application No. 08/271,022
final rule notice, 62 Fed. Reg. 53131, 53197 (Oct. 10, 1997),
1203 Off. Gaz. Pat. Office 63, 122 (Oct. 21, 1997)). 37 CFR §
1.196(b) provides, "A new ground of rejection shall not be
considered final for purposes of judicial review."

Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for
rehearing within two months from the date of the
original decision . . . .
37 CFR § 1.196(b) also provides that the appellants,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (37
CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Appeal No. 98-0985 Page 19
Application No. 08/271,022
Should the appellants elect to prosecute further before
the Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in
order to preserve the right to seek review under 35 U.S.C. §§
141 or 145 with respect to the affirmed rejection, the
effective date of the affirmance is deferred until conclusion
of the prosecution before the examiner unless, as a mere
incident to the limited prosecution, the affirmed rejection is
overcome.
If the appellants elect prosecution before the examiner
and this does not result in allowance of the application,
abandonment or a second appeal, this case should be returned
to the Board of Patent Appeals and Interferences for final
action on the affirmed rejection, including any timely request
for rehearing thereof.

Appeal No. 98-0985 Page 20
Application No. 08/271,022
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART; 37 CFR § 1.196(b)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
JVN/gjh
Appeal No. 98-0985 Page 21
Application No. 08/271,022
VINCENT L. CARNEY
P.O. BOX 80836
LINCOLN, NE 68501-0836
APPEAL NO. 98-0985 - JUDGE NASE
APPLICATION NO. 08/271,022
APJ NASE
APJ CALVERT
APJ CRAWFORD
DECISION: AFFIRMED-IN-PART;
37 CFR § 1.196(b)
Prepared By: Gloria Henderson
DRAFT TYPED: 30 Nov 98
FINAL TYPED: