Ex Parte Swoyer

Patent Trial and Appeal Board

Aug 29, 2018

13543813 (P.T.A.B. Aug. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/543,813
7066 7590
REED SMITH LLP
Three Logan Square
FILING DATE
07/07/2012
09/06/2018
1717 Arch Street Suite 3100
PHILADELPHIA, PA 19103
FIRST NAMED INVENTOR
Joseph Swoyer
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.
15-40153-US 5223
EXAMINER
TSAI, MICHAEL JASPER
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
09/06/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
phlipdocketing@reedsmith.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH SWOYER
Appeal2017-005343
Application 13/543,813
Technology Center 3700
Before LINDA E. HORNER, JILL D. HILL, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Joseph Swoyer ("Appellant") appeals under 35 U.S.C. § 134(a) from
the Examiner's non-final decision rejecting claims 1, 2, 6, 7, and 9-15. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2017-005343
Application 13/543,813
BACKGROUND
Independent claims 1, 14, and 15 are pending. Independent claim 1,
reproduced below, represents the claimed invention.
1. An apparatus for applying a periodic motion to a
limb, the apparatus comprising:
a base;
a platform configured to move in an oscillatory manner
and receive at least a portion of a limb, the platform including
an aperture extending therethrough;
a chassis positioned above the base and secured to the
base, the chassis including a base plate, a motor for providing
rotational motion, and at least one guide member extending
between the base plate and the platform, the platform positioned
above the chassis and slideably secured to the at least one guide
member, the at least one guide member extending through the
aperture; and
a generally elliptical cam operatively connected to the
motor for converting rotational motion of the motor to provide
linear oscillatory motion to the platform,
wherein the at least one guide member extends upwardly
above the platform a first distance when the cam is in a first
position, and wherein the at least one guide member extends
upwardly above the platform a second distance when the cam is
in a second position, the first distance being greater than the
second distance.
REJECTIONS
I. Claims 1 and 9-11 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Lanny (US 8,092,347 B2, iss. Jan. 10, 2012) and Chen
(US 2003/0013577 Al, pub. Jan. 16, 2003). Non-Final Act. 2.
II. Claim 2 stands rejected under 35 U.S.C. § I03(a) as
unpatentable over Lanny, Chen, and Ahn (US 6,602,212 Bl, iss. Aug. 5,
2003). Id. at 4.
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III. Claims 6 and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lanny, Chen, and Murphy (US 6,986,181 B2, iss. Jan. 17,
2006). Id. at 5.
IV. Claim 7 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Lanny, Chen, Murphy, and Rangaswamy (US 4,669,722,
iss. June 2, 1987). Id. at 6.
V. Claim 12 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Lanny, Chen, and Gonzales (US 4,086,921, iss. May 2,
1978). Id. at 7.
VI. Claim 14 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Lanny Chen, Ahn, and Kawakami (US 5,695,451, iss Dec.
9, 1997). Id.
VII. Claim 15 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Lanny Chen, Murphy, Ahn, and Kawakami. Id. at 10.
ANALYSIS
Rejection I: Claims 1 and 9-11
Regarding claim 1, the Examiner finds that Lanny discloses an
apparatus comprising: (1) a base 2; (2) a platform 4 configured to move in
an oscillatory manner and receive at least a portion of a limb; and (3) a
chassis positioned above the base and secured to the base, the chassis
including (a) a base plate 2, (b) a motor 20 for providing rotational motion,
and ( c) guide members 3a-d extending between the base 2 and a platform 4,
the platform positioned above the chassis and secured to the guide members
3a-d, and ( d) a generally elliptical cam 14, 15, 16 operatively connected to
the motor 20 for converting rotational motion of the motor 20 to linear
oscillatory motion to the platform 4. Non-Final Act. 2-3. Lanny also
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discloses an intermediate plate 6 that can be displaced along a guide 5,
which carries the driving mechanism 10 that causes vertical movement of
the platform 4. See Lanny 4:35--40, Fig. 1. Lanny's intermediate plate 6
adjusts a height of the platform 4, which is accommodated by movement of
the guides 3a-d relative to the base plate 2 and through an aperture in the
base plate. See id. The Examiner finds that Lanny does not disclose the
platform 4 including apertures extending therethrough, or its guide members
3a-d extending through such apertures. Non-Final Act. 3. The Examiner
finds, however, that Chen discloses a platform 1 including apertures 11
extending therethrough, and guide members 5 5 extending through the
apertures 11. Id. Chen includes an electric motor 2 that moves its platform
1 up and down such that its apertures 11 and guide members 55 slide relative
to each other. Chen ,r,r 19-20. The Examiner concludes that it would have
been obvious to one skilled in the art at to modify Lanny's platform 4 to
include apertures through which its guide members 3a-d extend as taught by
Chen "to provide the same benefit for guiding the platform in a linear
oscillating movement." Id. The "benefit" provided by the apertures in both
Lanny and Chen appears to be providing a place for ends of the fixed-height
guide members to extend through as the base and the platform are brought
closer to each other.
Appellant argues claims 1 and 9-11 as a group. Appeal Br. 5. We
select claim 1 as representative. Claims 9-11 stand or fall with claim 1.
Appellant argues that the Examiner's reason for combining Lanny and Chen
lacks a rational underpinning. Appeal Br. 8.
The Examiner responds that Lanny and Chen both provide "linear
movement of one platform [relative] to another." Ans. 15. The Examiner
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further concludes that one skilled in the art would have considered it
"predictable to rearrange the apertures to be in a platform with vertical
guides extending from a base as taught by Chen." Id. at 17.
Appellant replies that the Examiner's reasoning still lacks a rational
underpinning, because it fails to explain how or why the device in Lanny is
rearranged in the proposed combination with Chen. Reply Br. 1-2.
Appellant also argues that the reasoning is not taken from either Lanny or
Chen, and thus is based on improper hindsight. Id. at 2.
We are not persuaded by Appellant's argument. Lanny discloses
adjusting a spacing between the base 2 and the platform 4, which causes its
guides 3a-d to slide within/through apertures in its base plate. See Lanny
Fig. 1, 4:35--40. The claimed invention recites adjusting a spacing between
the base and the platform causing the guides to slide within/through
apertures in its platform rather than its base. Chen discloses relative
movement of its platform 1 and base 7 causing its guides 55 to slide
within/through apertures 11 in its platform rather than its base. Chen ,r,r 19-
20. Regarding why one skilled in the art would employ Chen's aperture
location in Lanny's device, the Examiner's proposed rearrangement of parts,
which moves the aperture receiving the sliding posts during adjustment of
the spacing between the base and the platform, is akin to an obvious matter
of design choice. See In re Japikse, 181 F .2d 1019 (CCP A 1950) (Claims to
a hydraulic power press which read on the prior art except with regard to the
position of the starting switch were held unpatentable because shifting the
position of the starting switch would not have modified the operation of the
device.). Regarding how Chen's platform apertures would be employed
with Lanny's device, "[a] person of ordinary skill in the art is also a person
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of ordinary creativity, not an automaton" and "will be able to fit the
teachings of multiple patents together like pieces of a puzzle." KSR Int 'l Co.
v. Teleflex Inc., 550 U.S. 398, 420-21 (2007). We agree with the Examiner
that one skilled in the art, considering the alternate aperture locations of
Lanny and Chen, would have considered the aperture locations to be obvious
variants of each other. We further agree with the Examiner that the results
of relocating the aperture from the base to the platform would be predictable.
Appellant also argues that it would not have been obvious to combine
Lanny and Chen because the combination thereof "would have involved
additional cost or effort without providing additional benefit." Appeal Br. 9.
The Examiner responds that "the implementation of the same linear
displacement mechanism in a different arrangement as taught by Chen
would not have involved additional costs or efforts and would even provide
additional benefits." Ans. 17 ( describing additional benefit of providing
additional space for even larger linear movements without the need to
increase the size of the base's legs/feet).
Lacking an explanation of why employing Chen's platform apertures
with Lanny's device would involve additional cost or effort, we are not
persuaded by Appellant's argument. It is unclear why having the apertures
in the platform, rather than the base, would involve additional cost or effort.
Appellant next argues that "modifying Lanny such that [its] vertical
guides 3a-3d would extend upwardly through apertures in [its] stepping plate
4, as claimed in the present application, simply makes no sense," because
upper ends of vertical guides 3a-3d extending upwardly through stepping
plate 4 would "obstruct the user from standing on the stepping plate 4 as
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desired" and thereby changing the principle of operation of Lanny and
making Lanny unsatisfactory for its intended purpose. Appeal Br. 16.
The Examiner disagrees, responding that "the modification of Lanny
in view of Chen would not obstruct a user from standing on the stepping
plate as desired," because Lanny's device is "capable of accommodating a
four legged animal such as a horse," and its stepping plate "allow[ s] for the
usage of the device regardless of the size of the patient, be it animal or
humans," such that modifying Lanny with Chen as proposed "would not
obstruct a user from standing on the stepping plate as desired." Ans. 18-19.
We are not persuaded by Appellant's argument, because it is unclear
how providing apertures in Lanny's platform 4 to accommodate guide
extension would necessarily obstruct a user from standing on Lanny's
platform 4. Further, as explained above, "[a] person of ordinary skill in the
art is also a person of ordinary creativity, not an automaton" and "will be
able to fit the teachings of multiple patents together like pieces of a puzzle."
KSR, 550 U.S. at 420-21. We agree with the Examiner that one skilled in
the art would have been able to modify Lanny to implement the platform-
level apertures as in Chen to provide room for a user on the platform, and
would have done so for the reasons discussed supra.
For the reasons explained above, we sustain the rejection of claim 1.
Claims 9-11 fall with claim 1.
Rejections 111-V: Claims 6, 7, 12, and 13
Claim 6 depends from claim 1, and recites the platform including
upper and lower parallel, spaced plates. Claims 13 depends from claim 1
and recites the platform including a pad for cushioning a limb. The
Examiner finds that Murphy discloses the limitations of claims 6 and 13,
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concluding that it would have been obvious to modify Lanny's platform to
include upper and lower spaced, parallel plates 4 7, 28 as taught by Murphy
to provide a suitable support surface for positioning a patient's legs, and to
further modify Lanny's platform to include pad 45 as taught by Murphy to
provide comfort to the user. Non-Final Act. 5-6 (citing Murphy Figs. 4 and
5, 4:20-60).
Claim 7 depends from claim 6 and recites the upper plate having an
hour glass shape adapted to receive a user's calf and hamstring. The
Examiner finds that Rangaswamy discloses an hourglass-shaped upper plate
22, and concludes that it would have been obvious to provide Lanny's
device as modified with an hourglass-shaped upper plate "to better hold a
user's legs for additional comfort." Non-Final Act. 6.
Claim 12 depends indirectly from claim 1 and recites a remote control
for adjusting motor speed. The Examiner finds this disclosure in Gonzales,
concluding that it would have been obvious to use Gonzales' remote control
to control Lanny's motor "to allow the user to remotely control the device
and treatment to better suit their needs." Non-Final Act. 7 (citing Gonzales
3:5-20).
In response to these rejections, Appellant argues that the Examiner is
improperly picking and choosing from disparate references and stringing the
references together "according to the disclosure of Appellant's Specification
and claims." Appeal Br. 21-22 (citing In re McLaughlin, 443 F.2d 1392,
1395 (CCPA 1971)). Appellant argues that, therefore, these rejections are
based on impermissible hindsight. Id. at 22-23.
The Examiner disagrees, arguing that there is no inherent impropriety
in a rejection combining "an excessive number of references," because
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"reliance on a large number of references in a rejection does not, without
more, weigh against the obviousness of the claimed invention." Ans. 21
(citing In re Gorman, 933 F.2d 982 (Fed. Cir. 1991)).
Appellant fails to explain which references are disparate and why.
Further, the Examiner has provided a reason for combining each of the
references, and Appellant has not explained why each proffered reasoning
lacks a rational basis. Lacking such explanations, we are not persuaded that
the Examiner is employing impermissible hindsight by picking and choosing
from disparate references as alleged. We therefore sustain Rejections III-V.
Rejections IL VL and VII: Claims 2, 14, and 15
Dependent claim 2, and independent claims 14 and 15 recite a pivot
mechanism allowing pivoting of the base relative to the base plate or the
chassis relative to the base. Claim 2 additionally recites a releasable locking
mechanism for locking the platform at a predetermined angle with respect to
the horizontal.
The Examiner finds that Ahn discloses a pivot mechanism 30
allowing a chassis 10 to pivot relative to a base 20, and a releasable locking
mechanism 40 for locking the platform at a predetermined angle. Non-Final
Act. 4 (citing Ahn 6:49-56). The Examiner concludes that it would have
been obvious to add a pivot mechanism and a releasable locking mechanism
to the modified device of Lanny for rotating its chassis about an axis with
respect to its base 2, "to place a patient [in] a comfortable and proper
position for optimal treatment." Id. at 4--5.
Appellant argues that "the Examiner combines Lanny and Chen
without providing a rational apparent reason, improperly rearranging parts,
and using impermissible hindsight." Appeal Br. 24. According to
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Appellant, "Ahn makes no mention of an advantage of the angle adjustment
other than that '[b ]ecause the inner bottom surface of the upper casing of the
main body slopes upward, the strongly jetted water flows into the detachable
water vessel at the lower casing of the main body through a drain outlet
installed at the rear of the bottom surface.'" Id. at 24--25 ( citing Ahn 3: 10-
14). Appellant contends that the Examiner's "conclusory rationale is
derived directly from Appellant's own Specification," making the reasoning
impermissible hindsight. Id. at 25.
The Examiner disagrees, responding that inclining a platform relative
to a base on a device on which a patient is receiving treatment "is well
known in the art for ensuring the proper positioning of a patient for
comfort," such that one skilled in the art "would have recognized that in
many devices (including Ahn) the customization of a device to fit different
user[ s] for increased comfort and proper positioning for receiving treatment
is important for the most efficient and proper delivery of treatment." Ans.
23. The Examiner argues that Ahn discloses device angle adjustment
( customization), where a "user can use the foot massage apparatus at the
easiest angle by adjusting the angle of the upper casing at certain degree for
the convenience of the user." Id. at 23-24 (citing Ahn 4:10-16); see also
Ahn 12:26-31 ("the user can use the foot massage apparatus at the easiest
angle for the convenience of the user.").
Although the Examiner's reasoning discusses comfort, Ahn teaches
that its pivot and locking mechanism provides an "easiest angle for the
convenience of the user." Id. To the extent that user ease and convenience
differs from user comfort in the art of therapeutic devices, Ahn certainly
provides a reason for adding a pivot and locking mechanism to therapeutic
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devices - user ease and convenience, and we are not persuaded that
hindsight was employed in combining Ahn with Lanny and Chen.
Appellant further argues that Lanny teaches away from providing the
claimed pivot, because it discloses that "tilting of the platform is undesirable
and should be avoided" in its device. Appeal Br. 26-27 ( citing Lanny 1 :29-
33, 2:66-67, 4:32-34).
The Examiner disagrees, arguing that Lanny discusses a disadvantage
of tilting movement, rather than "pre-arrangement of the device in a tilt
before application of the force to a patient's body." Ans. 24; Lanny 1:29-
33, 2:65-3:3 (stating that the disclosed configuration "provides the further
advantage that no undesirable tilting movements of the stepping plate can
occur, which is an advantage especially for horses as these have difficulty in
compensating sudden tilting movements of the ground on which they are
standing." (emphasis added)).
The Examiner is correct. While Lanny discloses that sudden tilting
movements are disadvantageous, it does not teach away from a locked tilted
position generally, and we therefore are not persuaded by Appellant's
argument.
Appellant may also be arguing that Ahn is non-analogous art. See
Appeal Br. 12 (referring to Ahn as a "disparate device" that one skilled in
the art would not use to modify Lanny or Chen).
A reference is analogous art to the claimed invention if: ( 1) the
reference is from the same field of endeavor as the claimed invention ( even
if it addresses a different problem); or (2) the reference is reasonably
pertinent to the problem faced by the inventor ( even if it is not in the same
field of endeavor as the claimed invention). See Bigio, 381 F.3d at 1325
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(Fed. Cir. 2004). Appellant informs us of neither the field of the invention,
nor the field of Ahn's device, and provides no discussion of the problem
faced by the inventor. We therefore are not persuaded by this argument.
For the reasons explained above, we sustain Rejections II, VI, and
VII.
DECISION
We AFFIRM the pending rejections.
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
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