Ex Parte Leydet et al

Board of Patent Appeals and Interferences

Apr 11, 2012

11741397 (B.P.A.I. Apr. 11, 2012)

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.
11/741,397 04/27/2007 Michael G. Leydet CPI-10502/16 2905
25006 7590 04/12/2012
GIFFORD, KRASS, SPRINKLE,ANDERSON & CITKOWSKI, P.C
PO BOX 7021
TROY, MI 48007-7021
EXAMINER
WILLSE, DAVID H
ART UNIT PAPER NUMBER
3738
MAIL DATE DELIVERY MODE
04/12/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MICHAEL G. LEYDET, RICHARD H. HARRINGTON,
FRANK J. FEDEL, MICHAEL LINK, and JOSHUA J. STREET
__________

Appeal 2010-009521
Application 11/741,397
Technology Center 3700
__________

Before ERIC GRIMES, STEPHEN WALSH, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) of the rejection of claims
directed to a sensing system for use with a prosthetic limb, a method of
analyzing a user’s gait, and a method of controlling the operation of a
prosthetic limb. The Patent Examiner rejected the claims for indefiniteness,
anticipation, and obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
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STATEMENT OF THE CASE
Claims 1-29 are on appeal. Claim 1 is representative and reads as
follows (bracketed letters added by the Board):
1. A sensing system for use with a prosthetic limb, comprising:
[a] a support member having a longitudinal axis configured for
attachment to a prosthetic limb;
[b] a plurality of sensor arrays disposed on the support member,
each array including a plurality of strain gauge sensors, each sensor
outputting an electrical signal responsive to loading imposed on the support
member through the prosthetic limb;
[c] the plurality of sensor arrays including at least one array having
a sensor aligned with the axis of the support member; and
[d] electronic circuitry in communication with the gauges, the
electronic circuitry being operative to receive the electrical signals from the
strain gauges and provide a signal useful in the form, fit or function of the
prosthetic limb.

(Amendments to the Claims, Jan. 30, 2009.)
The Examiner rejected the claims as follows:
 claims 1-29 under 35 U.S.C. § 112, second paragraph, as indefinite;
 claims 1, 3, 5-11, 15, 16, 19-25, 27, and 28 under 35 U.S.C. § 103(a)
as unpatentable over Kovalko;1
 claims 1-3, 5-11, 15, 16, 19, 21, and 23-28 under 35 U.S.C. § 102(b)
as anticipated by Rincoe;2
 claim 4 under 35 U.S.C. § 103(a) as unpatentable over Rincoe;
 claims 1-3, 5-9, 19, 23-25, and 27-29 under 35 U.S.C. § 102(e) as
anticipated by Boiten;3

1 A.N. Sitenko et al., SU 1621914, Jan. 23, 1991.
2 Richard G. Rincoe et al., US 5,253,656, issued Oct. 19, 1993.
3 Herman Boiten, US 7,500,407 B2, issued March 10, 2009.
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 claims 10, 11, 15, 16, and 20-22 under 35 U.S.C. § 103(a) as
unpatentable over Boiten; and
 claims 12-14, 17, and 18 under 35 U.S.C. § 103(a) as unpatentable
over Boiten and Bedard.4

DEFINITENESS
The Issue
The Examiner’s position is that the claims are indefinite because “[i]n
claim 1, line 2, the language ‘configured for attachment to a prosthetic limb’
immediately follows ‘longitudinal axis’ rather than ‘support member’ and
thus constitutes a misplaced modifier.” (Ans. 3.)
Appellants submitted an amendment with their Appeal Brief to
address this rejection (App. Br. 3), but the Examiner refused to enter the
amendment, explaining that it was inadequate (Ans. 3).
The issue with respect to this rejection is whether a person of ordinary
skill in the art would understand claim 1’s element [a] without ambiguity.

Findings of Fact
1. The claims on appeal are set out in “Amendments to the Claims” filed
January 30, 2009, as the Examiner refused entry to the later
amendment proposed January 13, 2010. (Advisory Action, April 12,
2010.)
2. Element [a] in the body of claim 1 reads: “a support member having a
longitudinal axis configured for attachment to a prosthetic limb.”

4 Stephane Bedard et al., US 2005/0107889 A1, published May 19, 2005.
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3. Element [c] in the body of claim 1 reads: “the plurality of sensor
arrays including at least one array having a sensor aligned with the
axis of the support member.”
4. Element [c] finds antecedent basis for “the axis of the support
member” in the element [a] text “support member having a
longitudinal axis.”
5. On January 13, 2010, Appellants proposed to amend claim 1 so that
element [a] would read: “a support member configured for
attachment to a prosthetic limb having a longitudinal axis.” (App. Br.
3 and 10.)
6. The proposed amendment changes the meaning of element [a] from a
support member having a longitudinal axis to a prosthetic limb having
a longitudinal axis.
7. The Examiner concluded that claim 1 would lack antecedent basis for
element [c] if the proposed amendment were entered. (Advisory
Action, April 12, 2010.)
8. Ordinary meanings for “axis”5 include:
1. A straight line about which a body or geometric object rotates or
may be conceived to rotate.
2. Mathematics
a. An unlimited line, half-line, or line segment serving to orient a
space or a geometric object, especially a line about which the
object is symmetric.
b. A reference line from which distances or angles are measured in
a coordinate system.

5 The American Heritage® Dictionary of the English Language, 4th ed.
copyright ©2000 by Houghton Mifflin Company. Updated in 2009.
Accessed at www.thefreedictionary.com/axis on April 5, 2012.
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3. A center line to which parts of a structure or body may be referred.
4. An imaginary line to which elements of a work of art, such as a
picture, are referred for measurement or symmetry.
5. Anatomy
a. The second cervical vertebra on which the head turns.
b. Any of various central structures, such as the spinal column, or
standard abstract lines used as a positional referent.

Principles of Law
“The test for definiteness is whether one skilled in the art would
understand the bounds of the claim when read in light of the specification.”
Miles Laboratories Inc. v. Shandon Inc., 997 F.2d 870, 875 (Fed. Cir. 1993).

Analysis
The ordinary meaning of axis is an imaginary or abstract line. (FF 8.)
Claim 1 uses axis as a positional referent, not as a thing to be attached to
something else. Thus, a person of ordinary skill in the art would interpret
element [a] in claim 1 to define a support member configured for attachment
to a prosthetic limb, the support member having a longitudinal axis. This
claim interpretation is consistent with element [c], which refers to “the axis
of the support member.” The rejection did not establish that a person of
ordinary skill in the art would read the claim differently, or would not
understand claim 1. This rejection is reversed.

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ANTICIPATION6
The Issue
The Examiner’s position is that Boiten described “a support member
13 (Figures 1-5) having longitudinal axes defined by the vertically extending
bridges 21 and 22 (Figure 3), a plurality of sensor arrays having strain
gauges 29 aligned with said axes, and electronic circuitry for controlling a
prosthetic knee joint (abstract, last sentence; column 1, lines 15-20; etc.).”
(Ans. 5-6.)
Appellants contend that Boiten disclosed that “‘[t]he interior 14 is
delimited by two vertically extending bridges 21, 22 which form an angle to
one another that corresponds to the angle of the connection lines 15 in FIG.
1.’ Thus, none of the sensors of Boiten are ‘aligned with the axis of the
support member,’ [claim 1, element [c]] but rather, are at angles to it.”
(App. Br. 7, citing Boiten at col. 3, ll. 62-65.)
The Examiner responds that Boiten’s “elongate bridges 21 and 22 of
the support member 13 each define a longitudinal axis along which an array
of strain gages 29 extends (Figure 3).” (Ans. 8.)
Appellants reply that the Examiner’s “interpretation runs counter to
accepted parlance. If something has a length, and is therefore capable of
having a longitudinal axis, it has one, not many.” (Reply Br. 1.)

6 Appellants do not contest the anticipation and obviousness rejections set
out at Final Rejection 4 (see also Ans. 5) over Rincoe. (See App. Br. 2-3.)
We therefore summarily affirm them. See MANUAL OF PATENT EXAMINING
PROCEDURE § 1205.02 (“If a ground of rejection stated by the examiner is
not addressed in the appellant’s brief, that ground of rejection will be
summarily sustained by the Board.”).

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The issue with respect to this rejection is whether “a support member
having a longitudinal axis” is limited to a support member that has only one
longitudinal axis.

Findings of Fact
9. Boiten’s Figure 1 is reproduced here:

{FIG. 1 shows a knee-joint prosthesis of modular construction with an
artificial foot and with a torque sensor directly below the knee joint,
which torque sensor has a virtual pivot axis intersecting the below-
knee tube of the prosthesis. (Boiten, col. 2, ll. 47-50.)}

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10. Boiten’s Figure 3 is reproduced here:

{Figure 3 shows a side view of sensor 13. (Boiten, col. 2, ll. 55-56.)}

Principles of Law
This court has repeatedly emphasized that an indefinite article “a” or
“an” in patent parlance carries the meaning of “one or more” in open-
ended claims containing the transitional phrase “comprising.” KCJ
Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000).
That “a” or “an” can mean “one or more” is best described as a rule,
rather than merely as a presumption or even a convention. The
exceptions to this rule are extremely limited: a patentee must
“evince[ ] a clear intent” to limit “a” or “an” to “one.” Id. The
subsequent use of definite articles “the” or “said” in a claim to refer
back to the same claim term does not change the general plural rule,
but simply reinvokes that non-singular meaning. An exception to the
general rule that “a” or “an” means more than one only arises where
the language of the claims themselves, the specification, or the
prosecution history necessitate a departure from the rule. See, e.g.,
Abtox Inc. v. Exitron Corp., 122 F.3d 1019 (Fed. Cir. 1997);
Insituform Techs., Inc. v. Cat Contracting, Inc., 99 F.3d 1098 (Fed.
Cir. 1996).
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Baldwin Graphic Systems, Inc. v. Siebert, Inc., 512 F.3d 1338, 1342-1343
(Fed. Cir. 2008).

Analysis
A. Claim 1
The only issue Appellants raise in relation to this anticipation
rejection is whether the Examiner reasonably interpreted the phrase “a
support member having a longitudinal axis” to include a support member
which has more than one longitudinal axis, e.g., Boiten’s support member.
The indefinite article “a” or “an” in patent parlance carries the
meaning of “one or more” in open-ended claims containing the transitional
phrase “comprising.” Baldwin Graphic Systems, 512 F.3d at 1342. The
Examiner’s interpretation of claim 1 is consistent with that established claim
interpretation rule. The fact that element [c] recites “the” support member
does not require a different interpretation. Id. Appellants do not identify
any limiting disclosure in the Specification that evinces a clear intent to limit
“a” to “one.” A review of the Specification, including the original claims,
reveals no explicit discussion or mention of the term “longitudinal axis” in
single or plural form. We conclude that a departure from the settled rule that
“a” means “one or more” is unjustified, and we therefore affirm the rejection
of claim 1.

B. Claims 2, 3, 5-9, 19, 23-25, and 27-29
Appellants object that “no reasons for the rejection [of claims 2, 3, 5-
9, 19, 23-25, and 27-29] are provided.” (App. Br. 8.) The rejection cited no
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evidence that Boiten described the features of these claims. (See Final Rej.
5; Ans. 6.) The anticipation rejection based on Boiten of claims 2, 3, 5-9,
19, 23-25, and 27-29 is therefore reversed.

OBVIOUSNESS
A. The rejection of claims 10, 11, 15, 16, and 20-22 over Boiten
The Examiner’s position is that “[t]he further limitations of claims 10
and 20-22 would have been obvious for reasons similar to those presented
above. Regarding claim 11, an analog multiplexer and an amplifier would
have been obvious in order to enable the controller to distinguish the strain
gauges 29 from which signals are obtained. Regarding claim 15, a data
collection module would have been obvious in order to store data for further
processing and/or evaluation.” (Ans. 6.)
Appellants contend that “apart from not knowing to which reasons
given above the Examiner is referring, the previous rejections were based
upon section 102(b), and not 103(a). Appellant cannot interpret how the
arguments for an anticipation rejection apply to an obvious rejection.
Additionally, the rationale ‘to store data for further processing and/or
evaluation’ appears too vague and unrelated to support obviousness.” (App.
Br. 8.)
The Examiner responds that (i) “[r]egarding claims 10 and 20-22, the
similar rationale for obviousness is plainly set forth in the rejection based
upon Kovalko;” and (ii) “[r]egarding claim 15, a stored set of data would be
necessary for ascertaining different portions of the gait cycle (column 1,
lines 34-38; column 4, lines 38-39) in controlling a prosthetic knee joint
(column 1, lines 27-32).” (Ans. 8.)
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The rejection of claims 10 and 20-22 is reversed because the rejection
over Boiten did not establish relevant similarities to the Kovalko disclosure.
As to claims 11, 15, and 16, the rejection identified no evidence that
Boiten described electronic circuitry to be modified in the manner required
to produce the features of claims 11, 15, and 16. “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.” In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006), cited with approval in KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 417-18 (2007). The rejection of claims 11, 15, and 16 is therefore
reversed.

B. The rejection of claims 12-14, 17, and 18 over Boiten and Bedard
The Examiner’s position is that “[r]egarding claims 12-14, combining
the torque (kinetic) data of Boiten with kinematic data from inclinometers
and accelerometers would have been obvious from the discussions of Bedard
et al. at paragraphs 0025 and 0061 in order to augment the data processed so
as to provide more reliable analyses of particular gait patterns and hazardous
situations. Regarding claims 17 and 18, an unaffected limb electronics
package would have been obvious from paragraphs 0022 and 0026 of
Bedard et al.” (Ans. 6.)
Appellants disagree that the limitations in these claims would have
been obvious, and further contend that “[w]hile the Bedard et al. reference is
directed to an instrumented foot, the teachings of Boiten are limited to
torque sensing. Accordingly, it would not be obvious to ‘to augment the data
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processed so as to provide more reliable analyses of particular gait patterns
and hazardous situations,’ for example.” (App. Br. 8.)
The Examiner responds that “[r]egarding claims 12-14 and the
secondary reference of Bedard et al., the Appellant fails to acknowledge that
Bedard et al. likewise encompasses kinetic sensors and strain gauges
(paragraph 0025, third line) along with knee joint control (Figures 1 and 2;
paragraphs 0024 and 0061); the two teachings are thus combinable under
35 U.S.C. 103(a) as to enhancements that would have been inferred by the
ordinary practitioner at the time of the present invention.” (Ans. 8.)

Further Findings of Fact
11. Bedard disclosed:
Referring therefore to FIG. 1 an individual (10) has a pair of
legs (26) and (28), one of which, (26), is amputated above the knee. A
prosthesis (14) is attached to the leg (26) and includes an actuating
mechanism (16), which may be either passive or active. An
instrumented prosthetic foot (20) is attached to the prosthesis (14) and
includes sensors (22A, 22B). Additional sensors (24A, 24B) are
located on the healthy foot and additional sensors (26) located on the
individual (10) and/or the prosthesis (14). A passive actuating
mechanism may be generally defined as an electromechanical
component that only absorbs mechanical energy in order to modify
dynamics of mechanical joints of the prosthesis, while an active
actuating mechanism may be generally defined as an
electromechanical component that absorbs and supplies mechanical
energy in order to set dynamics of mechanical joints of the prosthesis.

(Bedard, ¶ 22.)
12. Bedard disclosed:
It should be noted that the present invention is not limited to its
use with the mechanical configuration illustrated in FIG. 1 or the
control system (100) illustrated in FIG. 2. It may be used with a leg
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prosthesis having more than one joint. For instance, it may be used
with a prosthesis having an ankle joint, a metatarsophalangeal joint or
a hip joint in addition to a knee joint. Moreover, instead of a
conventional socket a [sic] osseo-integrated devices could also be
used, ensuring a direct attachment between the mechanical component
of the prosthesis and the amputee skeleton. Other kinds of prostheses
may be used as well.

(Id. at ¶ 61.)
Analysis
Claims 12-14, 17, and 18 call for an inclinometer, a pair of
inclinometers, a certain disposition of inclinometers, an electronics package
including an inclinometer and accelerometer, and a module operative to
output data approximating that of a goniometer. The rejection identifies no
evidence that Boiten or Bedard described these devices. “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.” In re Kahn,
441 F.3d at 988, cited with approval in KSR, 550 U.S. at 417-18. The
rejection of claims 12-14, 17, and 18 is therefore reversed.

C. The rejection over Kovalko
The Issue
The Examiner’s position is that Kovalko described “a support
member 9 (Figure 2) having a longitudinal axis defined by bar 10 (Figures 2
and 3) aligned with one array of pressure sensors 24 each outputting an
electrical signal responsive to loading imposed on the support member
(Figure 3).” (Ans. 3-4.)
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Appellants contend that the Examiner’s definition of longitudinal axis
is unreasonable. (App. Br. 4.)
The Examiner responds that “the ‘support member’ as claimed is also
broad enough to encompass the carrier case 9 itself, which serves to support
the remainder of the adjustment and measurement unit 3 . . . .” (Ans. 7.)
The issue with respect to this rejection is whether a person of ordinary
skill in the art would agree with the Examiner’s interpretation of
“longitudinal axis.”

Further Findings of Fact
13. The Appeal Brief provided a copy of Kovalko’s Figure 2, which
Appellants annotated with A, B, and C to label axes on the figure as
follows:

{Kovalko’s Figure 2 shows an adjusting and measuring unit 3, with
lines labeled A, B, and C added by Appellants.(App. Br. 4.)}
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14. Referring to Appellants’ labels added to Kovalko’s Figure 2, the
Examiner found that a person of ordinary skill in the art would
recognize axis A as a longitudinal axis of support member 9.
15. Referring to Appellants’ labels added to Kovalko’s Figure 2,
Appellants contend that a person of ordinary skill in the art would
recognize axes A and C as transverse axes, and axis B as a
longitudinal axis.

Principles of Law
[T]he PTO applies to the verbiage of the proposed claims 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).

Analysis
The claim must be interpreted as its words in their ordinary meaning
would be understood by one of ordinary skill in the art. Appellants’
arguments on this issue are persuasive. (See App. Br. 4.) We agree that the
axis along Kovalko’s bar 10 does not correspond to a “longitudinal axis” as
recited in the claims. The rejection over Kovalko is therefore reversed.

SUMMARY
We reverse the rejection of claims 1-29 under 35 U.S.C. § 112, second
paragraph.
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We reverse the rejection of claims 1, 3, 5-11, 15, 16, 19-25, 27, and
28 under 35 U.S.C. § 103(a) as unpatentable over Kovalko.
We affirm the rejection of claims 1-3, 5-11, 15, 16, 19, 21, and 23-28
under 35 U.S.C. § 102(b) as anticipated by Rincoe.
We affirm the rejection of claim 4 under 35 U.S.C. § 103(a) as
unpatentable over Rincoe.
We affirm the rejection of claim 1 under 35 U.S.C. § 102(e) as
anticipated by Boiten.
We reverse the rejection of claims 2, 3, 5-9, 19, 23-25, and 27-29
under 35 U.S.C. § 102(e) as anticipated by Boiten.
We reverse the rejection of claims 10, 11, 15, 16, and 20-22 under
35 U.S.C. § 103(a) as unpatentable over Boiten.
We reverse the rejection of claims 12-14, 17, and 18 under 35 U.S.C.
§ 103(a) as unpatentable over Boiten and Bedard.

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-IN-PART

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