Ex Parte SwoyerDownload PDFPatent Trial and Appeal BoardAug 29, 201813543813 (P.T.A.B. Aug. 29, 2018) Copy Citation 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. 2 Appeal2017-005343 Application 13/543,813 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 3 Appeal2017-005343 Application 13/543,813 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 4 Appeal2017-005343 Application 13/543,813 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 5 Appeal2017-005343 Application 13/543,813 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 6 Appeal2017-005343 Application 13/543,813 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, 7 Appeal2017-005343 Application 13/543,813 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 8 Appeal2017-005343 Application 13/543,813 "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 9 Appeal2017-005343 Application 13/543,813 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 10 Appeal2017-005343 Application 13/543,813 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 11 Appeal2017-005343 Application 13/543,813 (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 12 Copy with citationCopy as parenthetical citation