When appealing a rejection to the PTAB at the USPTO, the result of most cases is a majority opinion without dissent. However, dissents do sometimes occur in cases that are affirmed, as well as cases that are reversed. Such cases can provide insights as to how certain issues manifest in the PTAB decision-making process. This post reviews a case related to a real-world mechanical product.
Appeal 2023-000277, Application 15/798,826, relates to a knee rehabilitation device. The device is marketed as the “GOKNEE”. Below are some images from the website (www.thegoknee.com).
Claim 1 on appeal is reproduced below. Of particular importance in the appeal are the break-away C-clamps holding the cross bars in place – enabling both adjustment and safety. As described by the applicant, the invention “resembles a ladder with slidable rungs attached to the left and right posts via c-claims. Depending on the exercise, the user places his or her legs against the rungs and either straightens or bends his or her knee.”
1. A knee rehabilitation device configured to increase the range of motion of a leg of a human user having a first side and a second side opposite the first side and a knee comprising:
a) a left post having a left post top end, a left post bottom end configured to rest on the ground, a left post height extending from the left post top end to the left post bottom end, an interior surface configured to face the user’s leg, and an outside surface;
b) a right post having a right post top end, a right post bottom end configured to rest on the ground, a right post height extending from the right post top end to the right post bottom end, an interior surface configured to face the user’s leg, and an outside surface, the right post height generally parallel to the left post height, the interior surfaces of the left and right posts facing each other and the outside surfaces of the left and right posts facing away from each other;
c) an upper transverse bar extending between the left post and the right post, the upper transverse bar comprising a foam pad configured to rest against the first side of the user’s leg, the upper transverse bar comprising a left end comprising a left end c-clamp, a right end comprising a right end c-clamp, and a length extending from the left end to the right end, the upper transverse bar slideably attached to the left post and the right post by the left end and right end c-clamps of the upper transverse bar, the left end and right end c-clamps configured to slide along the interior surfaces of the left post and right post for at least a segment of the left post height and the right post height;
d) a lower transverse bar located below the upper transverse bar and above the left post bottom end and the right post bottom end and extending between the left post and the right post, the lower transverse bar comprising a foam pad configured to rest against the second side of the user's leg, the lower transverse bar comprising a left end comprising a left end c-clamp, a right end comprising a right end c-clamp, and a length extending from the left end to the right end, the lower transverse bar slideably attached to the left post and the right post by the left and right end c-clamps of the lower transverse bar, the left end and right end c-clamps configured to slide along the interior surfaces of the left and right posts for at least a segment of the left post height and the right post height,
wherein the lower transverse bar and upper transverse bar are independently movable, wherein the left post top end is not attached to the right post top end, wherein the left post bottom end is not attached to the right post bottom end, wherein the left post and the right post are rigid, wherein each of said left end c-clamps comprises a left side opening leading to a generally hollow interior receiving said left post, wherein each of said right end c-clamps comprises a right side opening leading to a generally hollow interior receiving said right post, wherein the left side opening of the left end c-clamp of the upper transverse bar faces away from the right side opening of the right end c-clamp of the upper transverse bar and toward the interior surface of the left post, and further wherein the left side opening of the left end c-clamp of the lower transverse bar faces away from the right side opening of the right end c-clamp of the lower transverse bar and toward the interior surface of the left post.
The USPTO examiners handling the case seemed intent on rejecting the application. The applicant filed multiple appeals, with the examiner re-opening prosecution with new rejections twice. The applicant then filed the present appeal, which went to the board and was ultimately reversed (with a dissenting opinion). As noted by the applicant, the examiner essentially maintained rejections until applicant appealed, and only then withdrew them. This pattern of maintaining admittedly improper rejections, especially for an invention that is of minimal complexity, is troubling to see and the applicant clearly was forced to spend substantial resources as a result:
The rejection on appeal was based on a combination of four separate references, including massagers and baby seats. None of the references used c-clamps in the particular way claimed. The prior art knee rehabilitation device had c-clamps for attaching cross-bars, but they were oriented in a different direction and there were a plurality of them at different purposely fixed locations. To remedy this deficiency, the examiner turned to the baby seat which used c-clamps to attach a bar on which toys were positioned. However, again, the c-clamps did not face away from one another but faced in the same direction (similar to the primary reference). None of the cited references recognized or taught the desirability of having the dual functionality of the cross-bar being both slideable, and able to break away for safety.
Rather than relying merely on attorney argument as to these points, the inventor (Ms. Briggs) filed a declaration in order to provide an explanation of the importance of the particular location and orientation of the c-clamps. In particular, the inventor explained, with technical details and even a video (via a series of still clips), how the c-clamps not only allow the cross bars to slide during use (so as to enable the correct amount of force through the knee during rotation), but also enable them to break away if too much pressure or force is applied. This dual functionality turned out to be key to the successful appeal to the board, and was specifically cited by the majority opinion.
The majority found as follows (citations omitted):
We further credit the sworn testimony of Ms. Briggs in support of Appellant’s argument. …
Ms. Briggs further explains that “[i]t was important that [GoKnee] include c-clamps in the design so that the transverse bars could independently and freely slide along the left and right posts during use to accommodate the changing angle of the knee.” Ms. Briggs further testifies that “as the knee is bent further back in the knee flexion exercise (bending of the knee), the upper transverse bar of the GoKnee slides down so that the correct force moves through the knee throughout the entire motion.” Ms. Briggs explains that “the design of the c-clamps increases the safety of the product and lessens the likelihood of damage to the user’s knee, which is important because many users of the device are healing from a major knee surgery and have fragile knees.” Ms. Briggs further testifies that “[i]t’s important that the side openings of the c-clamps face away from each other and toward the interior surface of the respective post,” because “if the side openings of the c-clamps were to face frontwardly or rearwardly, they would be prone to disengage from the left and right posts even in correct use of the device.”
The examiner (as well as their supervisor and the Quality Assurance Specialist for Group 3700) appeared to rely on the mere simplicity of the device in finding that it was obvious to modify the prior art since doing so would make attachment “easier.” For example, the examiner states that “it appears that having the c-clamps on the bar would perform equally well with location adjustments.” The majority disagreed (citations omitted):
The Examiner does not address Ms. Briggs’s testimony in the Answer. Rather, the Examiner appears to equate the claimed slidability with Sakamoto’s discreet adjustability. In doing so, the Examiner treats the claim limitation that requires the transverse bars to slide along the left and right posts as an arbitrary or overly simple structural requirement, yet simplicity itself does not negate invention. … Moreover, the Examiner’s reasoning presumes that the modified device would allow Sakamoto’s rollers 20, 30 to attach to stay member 10 “more easily”, yet nothing in the record supports a finding that the proposed modification would allow these rollers to attach more easily than the structure shown in Sakamoto’s Figure 11, which depicts c-shaped holders 61 that allow connection bar 50 to detachably fit within one of the three holders.
The dissent would have affirmed the rejection since the invention was allegedly ordinary in its conception and ordinary in its execution. From there, the dissent explains in great detail how the very simple and easily conceived of structure claimed in claim 1 is obvious. Below are a few excerpts:
Furthermore, there is nothing particularly innovative about using C-clamps as an adjustment means. C-clamps are nothing more than one well-known and obvious alternative to provide adjustability. I agree with the Examiner that a person of ordinary skill in the art would realize that C-clamps would perform equally well as other adjustment means in providing location adjustment. …
The Examiner relies on Sedlack as disclosing the use of C-clamps. Non-Final Act. 5. Appellant makes no persuasive argument to counter the Examiner’s position that a person of ordinary skill in the art would realize that C-clamps would perform equally well as other known adjustment means. …
… Disengagement when used incorrectly is, at best, an ancillary benefit that would accompany the obvious design choice that a person of ordinary skill in the art would have arrived at to solve the problems of connectivity and adjustability. In an obviousness analysis it must be remembered that a skilled artisan need not be motivated to combine the prior art for the same reason contemplated by an inventor. …Thus, a person of ordinary skill in the art would not have needed to envision disengagement upon incorrect usage in order to consider it obvious to use C-clamps.
…C-clamps are a well-known and widely used connection mechanism. I view the Examiner’s reliance on Sedlack as merely exemplary of a wide assortment of prior art devices that make use of C-clamps for connection and adjustability. As maintained by the predecessor to our supervising court, it is not unreasonable in cases involving relatively simple everyday-type mechanical concepts to permit inquiry into other areas where one of even limited technical skill would be aware that similar problems exist. …
In my opinion, the majority places too much weight on the inventor’s declaration testimony. “[A]n affidavit by an applicant or co-applicant as to the advantages of his invention is less persuasive than one made by a disinterested person.” Ms. Briggs declaration is merely descriptive of what the invention is and how it possesses certain utility. There is nothing in her testimony that is probative on the question of whether such alleged utility required more than merely ordinary skill to achieve. Utility is not to be confused with non-obviousness. It is well settled that even though Appellant’s modification results in great improvement and utility over the prior art, it may still not be patentable if the modification was within the capabilities of one skilled in the art. …
In my opinion, Appellant’s invention falls with the ambit of mere ordinary skill in the art and, for that reason, we should have affirmed the Examiner’s rejection. Accordingly, I dissent from the decision of the majority.
As this case illustrates, minds can differ at the PTAB and where the appellant must win two votes, it can pay dividents to push back against examiners that assume so-called “simple” improvements are obvious without sufficient evidence in the record Further, declarations that help illustrates the inventiveness of such improvements can carry sufficient weight against a rejection that relies too heavily on appearances and speculation.