Ex Parte WilkinsDownload PDFPatent Trial and Appeal BoardJun 10, 201511734325 (P.T.A.B. Jun. 10, 2015) Copy Citation 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. 11/734,325 04/12/2007 Larry C. Wilkins 10877.0006 9815 22852 7590 06/10/2015 FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP 901 NEW YORK AVENUE, NW WASHINGTON, DC 20001-4413 EXAMINER PAGE, EVAN RANDALL ART UNIT PAPER NUMBER 3715 MAIL DATE DELIVERY MODE 06/10/2015 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 PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte LARRY C. WILKINS ____________________ Appeal 2013-004614 Application 11/734,325 Technology Center 3700 ____________________ Before: CHARLES N. GREENHUT, JILL D. HILL, and LEE L. STEPINA, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1– 27. App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2013-004614 Application 11/734,325 2 The claims are directed to a therapy apparatus. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. Rehabilitation therapy apparatus comprising: platform for support of a human therapy patient while standing; a plurality of platform lighting sources for illuminating portions of said platform in four quadrants around a center, said platform having areas in said portions which are made of material capable of transmitting light from said sources through said areas for viewing from above said platform, to provide instructions to perform exercises ; a control housing associated with one end of the platform, the control housing comprising a front face and a rear face on opposite sides of the control housing from one another, with the rear face facing the human therapy patient when standing on the platform ; a monitor disposed above the control housing and positioned to show the front face of the control housing to the human therapy patient when standing erect on the platform ; an exercise instruction program driver ; and an exercise selector having a plurality of selector switches associated with said platform and said driver and operable, when set, to enable said driver to activate said platform lighting sources sequence in accord with settings of said selector switches, to thereby illuminate those of said areas of said platform specified for selected exercises in a sequence of exercises, wherein the exercise instruction program driver is configured to provide instructions for performance of selected exercises by the human therapy patient. Appeal 2013-004614 Application 11/734,325 3 REJECTIONS Claims 1–8, 21–23, and 271 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Suzuki (US Patent 6,227,968 B1, iss. May 8, 2001) in view of Light (US Patent 3,611,591, iss. Oct. 12, 1971). Claims 9–20 and 24–262 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Suzuki, possibly in view of Light3, and further in view of Hwang (US 2001/0022574 A1, pub. Sept. 20, 2001). OPINION Initially, we note that the references forming the basis for the rejection of claims 9–20 and 24–26 is a point of contention. Reply Br. 3, 15. The Examiner claims the omission of Light in the rejection statement was merely a typographical error. Ans. 14. As Hwang is not relied upon by the Examiner in a cumulative sense, for the same teachings as Light, the Examiner’s position makes sense regarding claim 9, because it depends from claim 1 and seemingly could not otherwise be rejected without relying on Light. However, the Examiner provides no explanation for the purported reliance on Light concerning independent claim 24, or claims 25 and 26 depending therefrom. In any case, we consider this a moot point because, 1 Like Appellant, we will assume the Examiner intended to include claim 27 in the rejection statement as claim 27 is discussed in the body of the rejection. See App. Br. 9. 2 Claims 25 and 26 are omitted from the rejection statement. They are included in a heading of a subparagraph but the specific limitations of these claims do not appear to be discussed. Nevertheless we, like Appellant, will presume the Examiner intended to include claims 25 and 26 in this rejection. See App. Br. 18. 3 As discussed below, the extent to which the Examiner relies on Light for this rejection is not clear. Appeal 2013-004614 Application 11/734,325 4 for the reasons discussed below, we reverse the rejection regardless of whether or not Light is relied on by the Examiner. Regarding the rejection of independent claim 1, Appellant contends that Light’s frame 38 is not reasonably construed as the recited “control housing.” App. Br. 13–14; Reply Br. 4–6. The Examiner’s response, that “Light is merely used to teach a mirror used to monitor the area around the feet” (Ans. 14), is inconsistent with the Examiner’s own statement in rejecting claim 1: “Light teaches: a control housing associated with one end of the platform.” Final Act. 2 (citing Light Fig. 1, element 38). If Light is not relied on regarding the “control housing” aspect of claim 1, the Examiner has failed to identify any other structure that is, and has therefore failed to articulate the reasons why the claimed subject matter would have been obvious. See In re Wilson, 424 F.2d 1382, 1385 (All words in a claim must be considered in judging the obviousness of the claimed subject matter.); see also MPEP § 2142 discussing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) and KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). If, on the other hand, the Examiner does rely on Light’s frame 38, we are not apprised of any reason forming the basis for the Examiner’s belief that it is reasonable to interpret the recited term “control housing” as including such a structure. Whichever the case, the Examiner has failed to carry the burden of establishing unpatentability with regard to claim 1, and for the same reasons, of those claims depending therefrom. See In re Warner 379 F.2d 1011, 1016 (CCPA 1967). (“[T]he precise language of 35 U.S.C. § 102 that ‘(a) person shall be entitled to a patent unless,’ concerning novelty and unobviousness, clearly places a burden of proof on the Patent Office”). Appeal 2013-004614 Application 11/734,325 5 Turning to independent claim 21, it appears the Examiner now relies upon Suzuki, as opposed to Light, for disclosing the “control housing” aspect of the claim. Final Act. 6. However, the Examiner, in citing Figure 2 of Suzuki does not identify any specific structure of Suzuki that is relied upon. According to Suzuki, a control section 100 is disposed at an appropriate location inside main unit 1. Perhaps, main unit 1, or a portion thereof, can reasonably satisfy the “control housing” limitation, when that term is read in isolation. According to the claim, however, the control housing comprises the first and second panels configured to provide information relating to the visual cue. As the recited “first and second panels” the Examiner does not rely on any element of main unit 1. Rather, the Examiner relies on base sections 13L/R, which are elements of floor panel 104 and not main unit 1. Thus, if the Examiner’s position is that some portion of main unit 1 is the control housing, it is not reasonable to construe base sections 13L/R as panels thereof. If, on the other hand, the Examiner regards floor panel 10 or some portion thereof as the recited “control housing” there is nothing in the record to indicate such or demonstrate a reasonable basis for such a claim construction. The Patent Trial and Appeal Board is primarily a tribunal of review. See Ex Parte Frye, 94 USPQ2d 1072, 1075-1077 (BPAI 2010) (precedential). Our review is hindered by the lack of any statements in the record to support the Examiner’s factual findings and legal conclusions. See In re Zurko, 258 F.3d 1379, 1386 (Fed. Cir. 2001). It is neither our place, nor Appellants’ burden, to speculate as to the basis for rejecting claims. In 4 Reference numeral 10 appears to have been truncated from Figure 2. See Suzuki col. 3, ll. 5–6. Appeal 2013-004614 Application 11/734,325 6 re Stepan, 660 F. 3d 1341, 1345 (Fed. Cir. 2011)(It is the PTO’s obligation to provide prior notice to the applicant of all matters of fact and law asserted prior to an appeal hearing before the Board.). The Examiner has not demonstrated the unpatentability of claim 21, and for the same reasons, of those claims depending therefrom. Turning to the Examiner’s rejection of independent claim 24, the Examiner proposes to replace Suzuki’s ‘step-on’ sensor which indicates when and where a user steps on floor panel 10, with a ‘step-off’ sensor of the type taught by Hwang in order to yield a device configured to detect “when a user . . .lifts . . .a foot,” as required by claim 24. Final Act. 9. Appellant correctly points out that a primary purpose of Suzuki is to detect stepping on the base sections 13. Suzuki col. 6, ll. 44–52. The Examiner’s only comment on this issue is that “the purpose of Suzuki is to act as a dance apparatus, and the foot pads are merely one means of detecting movement.” Ans. 15. “[D]etecting movement” is an overly broad generalization of Suzuki’s purpose. Suzuki more specifically aims to have a user match the stepping position indication marks M1 to M4 by stepping on corresponding base sections 13. It is not clear how the Examiner proposes to incorporate Hwang’s light sensors without a destruction of this function and a complete redesign of Suzuki’s device. On the record before us, the only reason to make the proposed modification appears to be to reconstruct the claimed invention. It is improper to base a conclusion of obviousness upon facts gleaned only through hindsight. To draw on hindsight knowledge of the patented invention, when the prior art does not contain or suggest that knowledge, is to use the invention as a template for its own reconstruction— an illogical and inappropriate process by which to determine patentability. Appeal 2013-004614 Application 11/734,325 7 Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (citing W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983)). Accordingly, the Examiner has not established the unpatentability of claim 24 and of those claims depending therefrom. DECISION The Examiner’s rejections are reversed. REVERSED mp Copy with citationCopy as parenthetical citation