OSSUR HF

Patent Trials and Appeals Board

Dec 18, 2020

2019005192 (P.T.A.B. Dec. 18, 2020)

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.
14/011,300 08/27/2013 Jason Robert TAYLOR 19793.260.1 4889
22913 7590 12/18/2020
Workman Nydegger
60 East South Temple
Suite 1000
Salt Lake City, UT 84111
EXAMINER
ABDOU TCHOUSSOU, BOUBACAR
ART UNIT PAPER NUMBER
2482
NOTIFICATION DATE DELIVERY MODE
12/18/2020 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):
Docketing@wnlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JASON ROBERT TAYLOR
________________

Appeal 2019-005192
Application 14/011,300
Technology Center 2400
____________

Before ST. JOHN COURTENAY III, LINZY T. McCARTNEY, and
MATTHEW J. McNEILL, Administrative Patent Judges.

McNEILL, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, 4, 6, and 8‒13, which are all the claims pending in
this application.1 Claims 3, 5, 7, and 14‒20 are canceled. See Appeal Br. 28‒
30. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies OSSUR HF as the real party in
interest. Appeal Br. 2.
Appeal 2019-005192
Application 14/011,300

2

STATEMENT OF THE CASE
Introduction
Appellant’s application relates to ordering a custom orthopedic
device. Spec. ¶ 2. Claim 1 is illustrative of the appealed subject matter and
reads as follows:
1. A method of ordering a custom orthopedic device for a
knee joint, comprising the steps of:
aligning a viewfinder image displayed on a screen and
generated by an image sensor of a portable device with at least
one predetermined portion of a limb including the knee joint,
centering the knee joint in an image and capturing the image
from a location at a same height as the knee joint with a plane
of the image being parallel to the limb in a portrait orientation
of the portable device, or a vertical axis of the portable device
in a landscape orientation;
using a gyroscope and/or accelerometer of the portable
device to determine whether the orientation of the portable
device is within a certain degree range and thereby guide a user
to manually orient the portable device to within the certain
degree range, whether a longitudinal axis of the portable device
is within a predetermined amount of degrees of a horizontal
axis or within a predetermined amount of degrees of a vertical
axis, where the horizontal axis is parallel to an x-axis, a y-axis
represents depth, and the vertical axis is parallel to a z-axis, the
longitudinal axis of the portable device being parallel to the
horizontal axis when in the landscape orientation or to the
vertical axis when in the portrait orientation, wherein when the
portable device is within the predetermined amount of degrees
of the landscape or portrait orientation, the screen will indicate
by highlighting the landscape or portrait orientation, and if the
portable device is not within the predetermined amount of
degrees of the vertical axis or the portable device is otherwise
rotated about the vertical or horizontal axes, a notification will
indicate that the portable device is tilted and adjustment is
required;
Appeal 2019-005192
Application 14/011,300

3

applying first and second markings on the limb, and
corresponding to first and second predetermined distances on
the limb, the first predetermined distance on the limb having
discrete first starting and first ending points above the knee
joint and the second predetermined distance on the limb having
discrete second starting and second ending points below the
knee joint, and the first and second predetermined distances on
the limb not overlapping one another;
aligning the first and second predetermined distances on
the limb and above and below the knee joint with a depth of
field guideline shown in the viewfinder image before capturing
the image;
capturing and storing at least one image of the at least
one predetermined portion of the limb using the image sensor
of the portable device based on the first and second
predetermined distances on the limb, the depth of field
guideline overlays the limb on the viewfinder image;
associating the at least one captured image of the limb
with measurements of the limb, and patient information entered
into the portable device; and
transmitting an order containing the at least one captured
image of the limb, the measurements of the limb, and the
patient information from the portable device to a provider;
wherein the depth of field guideline being a reference
frame for the first predetermined distance on the limb and
above a knee axis indicated on the limb by the first marking and
defining an upper guideline, the second predetermined distance
on the limb and below the knee axis indicated on the limb by
the second marking and defining a lower guideline, and a center
hash mark corresponding to the knee axis forming a generally
horizontal line and located between the upper and lower
guidelines by the first and second predetermined distances on
the limb, respectively, a vertical line generally aligned to the
longitudinal axis and arranged on the center of the viewfinder
image to intersect and align the center hash mark with the
center of the knee joint.
Appeal 2019-005192
Application 14/011,300

4

The Examiner’s Rejections2
Claim 10 stands rejected under 35 U.S.C. § 112(b) as being indefinite.
See Final Act. 3.
Claims 1, 2, 4, 6, and 9‒13 stand rejected under 35 U.S.C. § 103 as
unpatentable over Schoenefeld (US 2011/0092804 A1; Apr. 21, 2011),
Massen (US 2004/0032595 A1; Feb. 19, 2004), and Ferrantelli (US
2012/0165648 A1; June 28, 2012). See Final Act. 5‒21.
Claim 8 stands rejected under 35 U.S.C. § 103 as unpatentable over
Schoenefeld, Massen, Ferrantelli, and Shachar (US 2004/0088584 A1; May
6, 2004). See Final Act. 21.
ANALYSIS
Obviousness
Claim 1
Appellant argues the Examiner errs in rejecting claim 1 because an
ordinarily skilled artisan would not have been motivated to combine the
references in the manner proposed and because the proposed combination
does not teach or suggest several limitations. See Appeal Br. 11‒22.
First, Appellant argues Schoenefeld, Massen, and Ferrantelli do not
teach or suggest “the first predetermined distance above a knee axis
indicated on the limb by the first marking and defining an upper guideline,
the second predetermined distance below the knee axis indicated on the limb
by the second marking and defining a lower guideline.” See Appeal Br. 16‒

2 In the Final Action, the Examiner also rejected claims 15 and 17‒20 under
35 U.S.C. §§ 101, 103, and 112(b). See Final Act. 3‒5. However, these
claims were canceled by Appellant on December 10, 2018. Accordingly,
these claims and rejections are not presently before us on Appeal.
Appeal 2019-005192
Application 14/011,300

5

18. In particular, Appellant argues Schoenefeld teaches a method for
determining the hip, ankle, and knee centers from a captured image of a limb
in front of a reference grid. See id. at 16 (citing Schoenefeld, ¶ 98, Fig. 19,).
Appellant argues the Examiner relies on the distances between these various
centers for the first and second predetermined distances, as claimed. See id.
(citing Final Act. 6).
Second, Appellant argues Schoenefeld, Massen, and Ferrantelli do not
teach or suggest “a second predetermined distance defining a lower
guideline.” See Appeal Br. 18‒20. In particular, Appellant argues Massen
does not teach a lower guideline corresponding to a predetermined second
distance, but rather a range of second distances because of the manner in
which the lower projector impinges vertical line on the target limb. See id. at
19 (citing Massen Fig. 3, ¶¶ 26‒27).
Third, Appellant argues Schoenefeld, Massen, and Ferrantelli do not
teach or suggest “aligning the first and second predetermined distances on
the limb and above and below the knee joint with a depth of field guideline
shown in the viewfinder image before capturing the image;” “the depth of
field guideline overlays the limb on the viewfinder image;” and “wherein the
depth of field guideline being a reference frame for the first predetermined
distance on the limb and above a knee axis indicated on the limb by the first
marking and defining an upper guideline, the second predetermined distance
on the limb and below the knee axis indicated on the limb by the second
marking and defining a lower guideline.” See Appeal Br. 20‒22. In
particular, Appellant argues Ferrantelli teaches upper and lower reference
lines 24a, 25a may be aligned with a desired portion of an image after the
Appeal 2019-005192
Application 14/011,300

6

image has been captured, not before the image has been captured. See id. at
21 (citing Ferrantelli, Figs. 5, 6, ¶ 32).
Appellant has not persuaded us the Examiner errs in finding
Schoenefeld, Massen, and Ferrantelli teach or suggest the disputed
limitations. Each of these three arguments reflects a misapprehension of the
Examiner’s findings regarding the cited references. As explained in the
Answer, the Examiner does not rely upon the cited portions of the references
in each instance. See Ans. 6‒7 (the Examiner does not rely on hip and ankle
centers 76, 68), 7‒8 (the Examiner does not rely on Massen for teaching
upper and lower guidelines, only for the markings on the target limb), and 8‒
9 (the Examiner does not rely on upper and lower reference lines 24a, 25a).
Appellant’s arguments are, therefore, not responsive to the Examiner’s
findings and are not persuasive of Examiner error.
The Examiner clarifies the findings related to each of these limitations
in the Answer. See id. at 6‒9. Appellant does not respond to these findings in
the Reply Brief. See generally Reply Br. Accordingly, Appellant has
forfeited any arguments regarding the Examiner’s findings that are clarified
in the Answer.3 See 37 C.F.R. § 41.37(c)(1)(iv).

3 See In re Google Technology Holdings LLC, 2020 WL 6685948, slip op. at
* 3 (Fed. Cir. 2020):
It is well established that “[w]aiver is different from forfeiture.”
United States v. Olano, 507 U.S. 725, 733 (1993).[] “Whereas
forfeiture is the failure to make the timely assertion of a right,
waiver is the ‘intentional relinquishment or abandonment of a
known right.’” Id. (quoting Johnson v. Zerbst, 304 U.S. 458,
464 (1938)) (additional citations omitted). The two scenarios
can have different consequences for challenges raised on
appeal, id. at 733–34, and for that reason, it is worth attending
to which label is the right one in a particular case.
Appeal 2019-005192
Application 14/011,300

7

In the Appeal Brief, Appellant also argues the Examiner errs because
an ordinarily skilled artisan would not have been motivated to combine
Schoenefeld, Massen, and Ferrantelli in the manner proposed. See Appeal
Br. 11‒16. In particular, Appellant argues the Examiner does not explain
how or why an ordinarily skilled artisan would have combined Massen’s
projector-camera duo and Ferrantelli’s viewfinder with Schoenefeld’s
photograph, where the combination is contrary to the operations and
purposes of the references. See id. at 11‒12. Appellant argues Massen
teaches away from alignment with a depth of field guideline in a viewfinder
image because it relies solely on projectors to align the camera. See id. at 12
(citing Massen ¶¶ 27‒38). Appellant argues the aims of Schoenefeld and
Massen would not be served by the proposed combination, which cherry
picks elements from Massen. Id. at 12‒13. According to Appellant, the
proposed combination would change the principle of operation of the
references, and the Examiner has failed to sufficiently explain how the
combination would function so there is no reasonable expectation of success.
Id. at 14.
Appellant has not persuaded us of Examiner error. Much of
Appellant’s argument in the Appeal Brief regarding the motivation to
combine the references focuses on bodily incorporating teachings of one
reference into another. See Appeal Br. 11‒16. These arguments are
unpersuasive because “[t]he test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the structure of the

Appeal 2019-005192
Application 14/011,300

8

primary reference. . . . Rather, the test is what the combined teachings of
those references would have suggested to those of ordinary skill in the art.”
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted).
Appellant’s argument that Massen teaches away from the proposed
combination is also unpersuasive because Massen’s teaching of an
alternative method does not criticize, discredit, or otherwise discourage the
claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
In the Answer, the Examiner responds to Appellant’s arguments by
making factual findings regarding the manner in which the references would
be combined and explaining why an ordinarily skilled artisan would do so.
See Ans. 3‒6. In particular, the Examiner finds an ordinarily skilled artisan
would use Schoenefeld’s teachings of size- and orientation-indicative
markers on the patient (see Schoenefeld ¶ 98) with Massen’s teachings of
markings on the patient as the reference for image alignment to “achieve[]
accurate, simple, and reliable automatic photogrammetric evaluation image
recordings in a simple manner.” Ans. 5. The Examiner finds this would
“facilitate the orientation (rotary position and translation) of the camera in
relation to the body part to be digitized while obtaining the image recordings
by using optical aids mounted thereto and generating light markings on the
object which are aligned by a user to form alignment markers prior to
obtaining an image.” Id.
The Examiner further finds an ordinarily skilled artisan would
combine the Schoenefeld/Massen teachings with Ferrantelli’s depth of field
guideline, aligning reference 18, to aid a user in aligning the patient in the
field of view, which would enable screening a patient quickly using only a
mobile, hand-held communication device. See id. at 5‒6.
Appeal 2019-005192
Application 14/011,300

9

In the Reply Brief, Appellant argues the Examiner’s findings
regarding an ordinarily skilled artisan’s motivation are unsupported. See
Reply Br. 2‒6. In particular, Appellant argues the Examiner has not supplied
a rational underpinning as to why an ordinarily skilled artisan would have
combined Schoenefeld’s grid 1120, “which allows a practitioner to
determine anatomical dimensions from an image after the image has been
captured” with Massen’s light beam projectors and Ferrantelli’s mobile
device. Id. at 3‒4. Appellant argues an ordinarily skilled artisan would not
have combined these teachings to provide a method of capturing a
predetermined portion of a limb bounded above and below by markings that
are aligned to depth of field guidelines in a viewfinder. Id. at 4. Appellant
also argues Ferrantelli’s reference overlay 18 is used to capture a level
image of a patient, but there is no indication that it can be used with a depth
of field guideline. Id. at 4.
Appellant has not persuaded us of Examiner error. As an initial
matter, Appellant’s argument repeats the assertion that Schoenefeld’s grid
1120 is used for determining anatomical dimensions after an image has been
captured. See Reply Br. 4 (citing Fig. 20, ¶ 99). Although this is one
disclosed embodiment, the Examiner finds Schoenefeld also teaches size-
and orientation-indicative markers on the patient that can be used for
determining anatomical dimensions prior to image capture. See Ans. 4
(citing Schoenefeld ¶ 98). Appellant has not persuasively identified error in
this finding. Nor has Appellant’s argument regarding the motivation to
combine the references addressed the combination in a manner that accounts
for Schoenefeld’s markings on the patient prior to image capture. This alone
renders Appellant’s argument unpersuasive of error.
Appeal 2019-005192
Application 14/011,300

10

However, regardless of Appellant’s failure to address this finding
regarding Schoenefeld, Appellant’s argument that the Examiner fails to
supply a rationale underpinning for combining the references is unavailing.
As noted above, the Examiner provides extensive findings regarding
combining the references in the Answer. See Ans. 3‒6. Further, Appellant’s
arguments about the specific manner in which the references are combined
are unpersuasive because “[a] person of ordinary skill is also a person of
ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). An ordinarily skilled artisan would have been capable
of adapting Massen’s light beam projectors to Ferrantelli’s mobile device,
and the Examiner’s proposed combination relies on combining these
teachings, not the specific structures of each reference.
For these reasons, we sustain the obviousness rejection of claim 1. We
also sustain the obviousness rejection of dependent claims 6 and 9‒13, for
which Appellant provides no separate argument. See Appeal Br. 7.
Claim 2
Claim 2 recites “[t]he method according to claim 1, wherein the at
least one image of the limb satisfies the depth of field guideline, the
horizontal or the vertical orientation guideline, the tilt angle guideline, and
the limb alignment guideline.” Appellant argues the Examiner errs in
rejecting claim 4 because Ferrantelli teaches a system that normalizes or
crops captured images to fit to reference lines and that this occurs after the
image has been captured, rather than requiring compliance with a guideline
prior to image capture. See Appeal Br. 23.
Appellant has not persuaded us of Examiner error. The Examiner does
not rely on Ferrantelli’s cropping of images to satisfy the guideline
Appeal 2019-005192
Application 14/011,300

11

limitations recited in claim 2. See Ans. 10 (citing Ferrantelli Figs. 1‒4).
Accordingly, Appellant’s argument is not responsive to the Examiner’s
findings. Instead, the Examiner finds, and we agree, Ferrantelli teaches
depth of field guideline 18, including guidelines 18a and 18b or 20a and 20b,
is satisfied before capturing the image. See id. Appellant has not argued this
finding is in error. See generally Reply Br. Accordingly, Appellant has
forfeited any arguments regarding this finding. See 37 C.F.R.
§ 41.37(c)(1)(iv). For these reasons, we sustain the obviousness rejection of
claim 2.
Claim 4
Claim 4 recites “[t]he method according to claim 1, wherein the first
and second distances are the same and referenced from a knee axis line.”
Appellant argues the Examiner errs in rejecting claim 4 because nothing in
Schoenefeld in combination with Massen and Ferrantelli suggests that the
distance between the knee center 70 and the hip and ankle centers 76, 78 are
the same. See Appeal Br. 23‒24. Appellant argues the purpose of
Schoenefeld’s pre-operative photograph is to ascertain these distances,
contrary to the claimed first and second distances which are pre-set,
standard, and the same. See id.
Appellant has not persuaded us of Examiner error. The Examiner does
not rely on the distance between the knee center 70 and the hip and ankle
centers 76, 78. Ans. 11. Accordingly, Appellant’s argument is not responsive
to the Examiner’s findings. Instead, the Examiner finds, and we agree,
Schoenefeld teaches grid surface 1120, which includes upper and lower
guidelines defined by the first and second distances. Id. Appellant has not
argued this finding is in error. See generally Reply Br. Accordingly,
Appeal 2019-005192
Application 14/011,300

12

Appellant has forfeited any arguments regarding this finding. See 37 C.F.R.
§ 41.37(c)(1)(iv). For these reasons, we sustain the obviousness rejection of
claim 4.
Indefiniteness
Claim 10 stands rejected under 35 U.S.C. § 112(b) as indefinite for
reciting “the captured portion of the limb” without sufficient antecedent
basis. Final Act. 3. Appellant does not argue this rejection is in error. See
generally Appeal Br. Therefore, the doctrine of forfeiture applies. See 37
C.F.R. § 41.37(c)(1)(iv). Accordingly, we summarily affirm the
indefiniteness rejection of claim 10.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
10 112(b) Indefiniteness 10
1, 2, 4, 6,
9‒13
103 Schoenefeld, Massen,
Farrantelli
1, 2, 4, 6,
9‒13

8 103 Schoenefeld, Massen,
Farrantelli, Shachar
8
Overall
Outcome
1, 2, 4, 6,
8‒13

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED