Ex parte Saito et al.

Board of Patent Appeals and Interferences

May 30, 2000

08574544 (B.P.A.I. May. 30, 2000)

1
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publication in a law journal and (2) is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MAKOTO SAITO,
SYUJI HAGIHARA
and HIROKI NAKAYAMA
__________
Appeal No. 1998-2775
Application 08/574,544
___________
HEARD: May 3, 2000
___________
Before MCCANDLISH, Senior Administrative Patent Judge, STAAB
and GONZALES, Administrative Patent Judges.
MCCANDLISH, Senior Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s
final rejection of claims 5 through 11. The rejection of
claim 11 as set forth in the final office action (Paper No.
6 mailed April 17, 1997) has not been carried forward and
restated in the examiner’s answer (Paper No. 13, mailed
Appeal No. 1998-2775
Application 08/574,544
The bearing part 4 is described in appellants’ specification as having1
two portions 7 and 15 integrally joined to each other. Appellants’
drawings show that only portion 7 is embedded in the lower leg portion
in the sense that it is received in an aperture 2 in the lower leg
2
November 25, 1997). It therefore is presumed that the
rejection of claim
11 has been withdrawn as a result of the amendment filed
with appellants’ main brief. See Ex parte Emm, 118 USPQ
180, 181 (Bd. App. 1957). Although the examiner has not
notified appellants about the current status of claim 11, it
appears that this dependent claim is considered to be
allowable subject to being rewritten in independent form.
Based on this understanding of the record before us, the
only issues remaining in this appeal involve the examiner’s
rejections of claims 5 through 10.
Appellants’ claimed invention relates to an artificial
leg having a thigh section (21) and a lower leg portion (1)
pivotally connected to the thigh section by a knee joint
structure (4, 12, 17, 19). According to claim 6, the only
independent claim on appeal, the knee joint structure
comprises a bearing part (17) having what is defined as a
“third stopper portion” (16). The third stopper portion is 1
Appeal No. 1998-2775
Application 08/574,544
portion. In contrast, claim 6 recites that the bearing part is embedded
in the lower leg portion as if the entire bearing part is received in an
aperture in the lower leg portion. Consistent with appellants’ original
disclosure we have therefore interpreted clause “c” of claim 6 as
meaning that the bearing part has a portion embedded in the lower leg
portion. Correction of this informality is in order upon return of this
application to the examiner.
3
engagable with a first stopper portion (9) to limit rotation
of the lower leg portion in one direction to a standing
position. The third stopper portion is also engagable with
a second stopper portion (10) to limit rotation of the lower
leg portion in the opposite direction to a kneeling
position.
A copy of the appealed claims is appended to
appellants’ brief.
The following reference is relied upon by the examiner
in support of his rejections under 35 U.S.C. § 103 and
35 U.S.C. § 102(b):
Lewis 278,566 May 29, 1883
Appealed claims 6 through 10 stand rejected under
Appeal No. 1998-2775
Application 08/574,544
4
35 U.S.C. § 102(b) as being anticipated by Lewis, and
appealed claim 5 stands rejected under 35 U.S.C. § 103 as
being unpatentable over Lewis. Appealed claim 5
additionally stands 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
appellants regard as their invention.
Considering first the § 102(b) rejection of claim 6,
Lewis discloses an artificial leg having a thigh section A
and a lower leg portion D attached to the thigh section by a
pair of strap assemblies. Each strap assembly in Lewis’
artificial leg has pivotally interconnected upper and lower
metal straps E and F to allow pivotal movement between the
thigh section and the lower leg portion. The upper straps E
of the two strap assemblies are fastened to the thigh
section. The lower straps F of the strap assemblies are
attached to the lower leg portion. Contrary to appellants’
arguments, the lower straps F are considered to be embedded
in the lower leg portion in that they appear from the
showing in Figure 1 of Lewis’ drawings to be received in
upwardly opening pockets in the lower leg portion.
Appeal No. 1998-2775
Application 08/574,544
5
In each of Lewis’ strap assemblies, an arcuate portion
on the lower end of the upper strap E seats on and is
capable of articulating about a generally circular portion
at the upper end of the lower strap F to provide a hinged
joint e as shown in Figures 3 and 4 of Lewis’ drawings. The
arcuate portion on the lower end of the upper strap E lies
circumferentially between two circumferentially opposed,
radially extending shoulders on the circular portion at the
upper end of the lower strap F. The end e’ of the arcuate
portion is described as a stop and is engagable with the
opposing shoulder on the generally circular portion of the
lower strap F to limit clockwise rotation of the upper strap
E to a generally vertical standing position as shown in
Figure 3.
There is no description, however, about the other
circumferential shoulder. In particular, Lewis’
specification lacks a disclosure that the other
circumferential shoulder provides a stop for limiting
counterclockwise rotation of the upper strap E (as viewed
from Figure 3 of Lewis’ drawings) in a kneeling position.
Appeal No. 1998-2775
Application 08/574,544
6
The examiner takes the position, in substance, that the
other, unlabeled circumferential shoulder will inherently
act as a stop to limit rotation of the upper strap e to a
kneeling position. The examiner’s reasoning follows:
The Lewis specification, contrary to the
Appellant’s [sic] comments, very plainly provides
support for the Examiner’s position that the thigh
socket A is flexible enough to permit the
shoulders of the joint e to contact one another at
full flexion. If the “sole-leather” is “of
sufficient elasticity to adapt itself to the shape
of the limb” (lines 30-32), then it will certainly
offer little if any resistance to a contacting
wooden leg member D. [Answer, page 5.]
Admittedly, the upper strap E may be capable of
rotation in a counterclockwise direction to a position where
the arcuate portion on the upper strap abuts the unlabeled
circumferential shoulder on the generally circular portion
of the lower strap so that the unlabeled shoulder acts as a
stop. However, as stated in In re Oelrich, 666 F.2d 578,
581, 212 USPQ 323, 326 (CCPA 1981), inherency may not be
established by possibilities or even probabilities.
Instead, the examiner must provide a basis in fact and/or
technical reasoning to reasonably support the determination
Appeal No. 1998-2775
Application 08/574,544
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that the allegedly inherent features necessarily flow from
the teachings of the applied reference. See Ex parte Levy,
17 USPQ2d 1461, 1464 (BPAI 1990) and cases cited therein.
In the present case, it does not necessarily flow from
Lewis’ disclosure that Lewis’ upper strap E is inherently
capable of rotation to a position where the unlabeled
circumferential shoulder on the generally circular portion
acts as a stop for the reasons stated by appellants on pages
6 and 7 of the main brief. Accordingly, we are constrained
to reverse the § 102(b) rejection of claim 6 and the
§ 102(b) rejection of dependent claims 7 through 10 since
Lewis does not expressly or inherently meet all of the
limitations in claim 6. See In re Schreiber, 128 F.3d 1473,
1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) (To anticipate a
claim, a prior art reference must disclose every limitation
of the claimed invention, either explicitly or inherently.).
We also cannot sustain the § 103 rejection of dependent
claim 5. The examiner has not supplied any motivation to
establish that it would have been obvious to enable Lewis’
Appeal No. 1998-2775
Application 08/574,544
8
upper strap E to be rotated sufficiently far in a
counterclockwise direction to engage the unlabeled
circumferential shoulder on the generally circular portion
of the lower strap F.
With regard to the rejection of claim 5 under the
second paragraph of § 112, appellants contend in their reply
brief that the examiner has raised a new basis for this
rejection in his answer. However, appellants have not
challenged the grounds set forth in the answer. Instead
appellants merely state in the reply brief that they are
“prepared to amend claim 5” (reply brief, page 1). Thus,
appellants have not pointed out how the examiner erred in
this rejection. We will therefore sustain the § 112, second
paragraph, rejection of claim 5.
In summary, we have reversed the § 102(b) rejection of
claims 6 through 10, reversed the § 103 rejection of claim 5
and affirmed the § 112, second paragraph, rejection of claim
5.
Appeal No. 1998-2775
Application 08/574,544
9
The examiner’s decision rejecting the appealed claims
is affirmed in part.

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
Appeal No. 1998-2775
Application 08/574,544
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HARRISON E. MCCANDLISH )
Senior Administrative Patent Judge )
)
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
HEM/kis
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