2018008420 (P.T.A.B. May. 19, 2020)

Brett W. Mills

Patent Trials and Appeals BoardMay 19, 2020

2018008420 (P.T.A.B. May. 19, 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. 14/706,844 05/07/2015 Brett W. Mills 0029-004US1 3150 16404 7590 05/19/2020 Leber IP Law 400 TradeCenter Suite 5900 Woburn, MA 01801 EXAMINER NGUYEN, SON T ART UNIT PAPER NUMBER 3643 NOTIFICATION DATE DELIVERY MODE 05/19/2020 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): admin@leberiplaw.com celia@leberiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte BRETT W. MILLS ____________________ Appeal 2018-008420 Application 14/706,844 Technology Center 3600 ____________________ Before EDWARD A. BROWN, BENJAMIN D. M. WOOD, and ANNETTE R. REIMERS, Administrative Patent Judges. WOOD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from a Non-Final Action entered August 24, 2017 rejecting claims 1 and 3–11, which constitute all the claims pending in this application. Claim 2 has been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Brett W. Mills. Appeal Br. 1. Appeal 2018-008420 Application 14/706,844 2 THE CLAIMED SUBJECT MATTER The claims are directed to an equine leg boot that provides “impact protection to the posterior aspects of the front legs and support to the associated ligaments, tendons and tissues of the lower leg.” Spec., 1:16–18. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An equine leg boot comprising: a fabric body configured to wrap around the lower leg of a horse, an impact-resistant protective member disposed within the fabric body, the protective member comprising a semi-rigid thermoplastic material that is pre-formed to have a molded, predetermined shape that conforms to the back of the lower leg of the horse and thereby wraps around the posterior aspect of the lower leg and provides impact protection to the flexor tendons of the horse, the semi-rigid thermoplastic material having sufficient strength to deflect and thereby dissipate or absorb an impact; and a suspensory support strap, at least a portion of which is integral with the fabric body. REFERENCE Springs US 2004/0031246 A1 Feb. 19, 2004 REJECTIONS Claims 1, 3–5, and 7–11 are rejected under 35 U.S.C. § 102(a)(1)/(a)(2) as anticipated by Springs. Claim 6 is rejected under 35 U.5.C. § 103 as unpatentable over Springs. Appeal 2018-008420 Application 14/706,844 3 ANALYSIS Claims 1, 3–5, and 7–11—Rejected as Anticipated by Springs Appellant argues claims 1, 3–5, and 7–11 as a group. Appeal Br. 3– 11. We consider claim 1 as representative of the group, and decide the appeal of this rejection on the basis of claim 1 alone. 37 C.F.R. § 41.37(c)(1)(iv). In finding that Springs anticipates claim 1, the Examiner finds, inter alia, that Springs’ inner foam bodies 36, 42 correspond to the claimed impact-resistant protective member comprising a semi-rigid thermoplastic material that conforms to the back of the lower leg of the horse. Non-Final Act. 2–3. In doing so, the Examiner relies on Springs’ disclosure that “foam body 36 may be made up of a variety of suitable foams,” such as “polyethylene [and] polypropylene.” Id. at 3 (citing Springs ¶ 20). The Examiner finds that body 36, made of polyethylene or polypropylene, would have sufficient strength to deflect and thereby dissipate or absorb an impact, as claim 1 requires, because “such is a property of thermoplastic.” Id. The Examiner further finds that Springs’ connection straps 50 of fastening assembly 48 correspond to the claimed suspensory support strap. Id. at 2–3. We have reviewed each of Appellant’s arguments for the patentability of claim 1, and find them unpersuasive. We address each argument in turn. Appellant first argues that “Springs lacks any teaching or suggestion of a member formed of a semi-rigid thermoplastic.” Appeal Br. 5. According to Appellant, elements 36 and 42 “are formed of flexible, resilient foams, and 42 is specifically formed of neoprene foam.” Id. at 6 (citing Springs ¶¶ 2, 4, 9, 10, 20, and 21). Appellant contends that “[t]here is nothing in Springs” to indicate that foams made of polyethylene or Appeal 2018-008420 Application 14/706,844 4 polypropylene are semi-rigid, and that “the context of Springs would suggest the opposite—that if another material, other than neoprene, were utilized, it would be one with resiliency and other performance characteristics similar to that of neoprene.” Id. This is not persuasive of Examiner error. Appellant does not appear to dispute that foams made of polyethylene or polypropylene are “thermoplastic.” Further, the Specification does not define “semi-rigid,” and, in any event, Appellant has not provided evidence or persuasive argument establishing that foam layers made from polyethylene or polypropylene would not be “semi-rigid,” as the Examiner found. Appellant’s context argument is not sufficient to do so, because it does not necessarily follow that all of the materials listed with neoprene would have performance characteristics similar to neoprene (assuming that neoprene would not be considered “semi-rigid”). On the contrary, Springs identifies neoprene as the preferred material (see Springs ¶ 20), and therefore suggests that neoprene differs from the other materials; otherwise all of the listed materials would be equally preferable. Appellant also disputes that the semi-rigid thermoplastic material is “pre-formed to have a molded, predetermined shape that conforms to the back of the lower leg of the horse.” Appeal Br. 7–8. Appellant notes that “the shape of the body, shown best in Springs’ FIG. 2,” is “provided by stitching 26.” Id. at 7 (citing Springs ¶ 18). Thus, according to Appellant: [T]he manner in which Springs gives shape to the panel supports Appellant’s contention that the panel is not semi-rigid, pre- formed or molded, as required by Appellant’s claim 1, but instead is a flexible resilient foam fabric (e.g., neoprene) that can be stitched and that indeed must be stitched if it is to have a defined shape other than flat. Appeal 2018-008420 Application 14/706,844 5 Id. at 8. This argument is not persuasive of Examiner error for a number of reasons. First, Appellant does not dispute that the panel is “pre-formed” to have a “predetermined shape that conforms to the back of the lower leg of the horse,” as claim 1 requires. Second, Appellant does not explain why the presence of stitching is inconsistent with the panel being “semi-rigid.” The Specification does not define “semi-rigid,” and Appellant has not provided evidence establishing what one of ordinary skill in the art would understand “semi-rigid” to mean. Instead, Appellant provides attorney argument that semi-rigid thermoplastics “have a fixed shape at room temperature, become pliable or moldable above a specific temperature, and solidify upon cooling.” Appeal Br. 5. Attorney arguments and conclusory statements that are unsupported by factual evidence, as here, are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Even if we were to accept this definition, we note again that Appellant does not dispute that polyethylene and polypropylene materials are thermoplastic. Appellant next argues that Springs does not teach or suggest the claimed suspensory strap because Springs’ straps 50 “are on the upper portion of the leg boot and their only function is to attach the leg boot to the lower leg of a horse.” Id. at 9. Appellant refers us to suspensory support strap 36 depicted in Figure 5 of the Specification, and asserts that, unlike Springs’ straps 50, “suspensory strap 36 is configured to substantially wrap under and around the fetlock joint of the leg,” such that “[w]hen secured, the suspensory strap provides additional support and stability to the fetlock joint and the surrounding tendons and ligaments, e.g. the suspensory ligament.” Id. (citing Spec., 3:5–8). Appeal 2018-008420 Application 14/706,844 6 This argument is not persuasive of Examiner error. Claim 1 itself does not specify that the suspensory support strap be located at the lower portion of the leg boot, or that it be configured to wrap under and around a horse’s fetlock.2 Nor does the Specification define “suspensory support strap” to encompass those requirements, but instead describes an embodiment of a suspensory support strap. Spec., 3:5–8, 5:14; see Epos Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338, 1341 (Fed. Cir. 2014) (holding that “it is improper to read limitations from a preferred embodiment described in the specification—even if it is the only embodiment—into the claims absent a clear indication in the intrinsic record that the patentee intended the claims to be so limited”). Accordingly, we are not persuaded that the Examiner erred in identifying straps 50 as corresponding to the claimed suspensory support strap.3 Finally, Appellant argues that there is no teaching in Springs of a member having sufficient strength “to deflect and thereby dissipate or absorb an impact.” Appeal Br. 5. This argument is unpersuasive of Examiner error. Claim 1 does not specify any particular magnitude of impact that the impact-resistant protective member must be able to deflect. 2 In the Reply Brief, Appellant provides an image of the lower leg of a horse depicting the suspensory ligament to be above the fetlock joint. Reply Br. 4. Figures 1 and 2 of Springs show that straps 50 of Springs boot would wrap around this area, indicating that straps 50 would in fact provide support and stability to the suspensory ligament. 3 Appellant argues that “Springs teaches away from an integral suspensory strap.” Appeal Br. 11. Springs is cited as an anticipatory reference, however, and “‘teaching away’ is irrelevant to anticipation.” Leggett & Platt, Inc. v. VUTEk, Inc., 537 F.3d 1349, 1356 (Fed. Cir. 2008) (internal citation omitted). Appeal 2018-008420 Application 14/706,844 7 Nor does Appellant explain why inner foam body 36, made of polyethylene or polypropylene, would not be able to deflect at least a modest impact. Claim 6—Rejected as Unpatentable over Springs The Examiner acknowledges that “Springs is silent about wherein the protective member has a wall thickness of from about 0.05 to 0.1 inch,” but determines that it would have been obvious to a skilled artisan to have Springs’ protective-member wall thickness be within the claimed range because “discovering the optimum or workable ranges . . . involves only routine skill in the art.” Non-Final Act. 4–5. Appellant responds that “[t]here is nothing in the art of record to indicate that such a thin layer of Springs’ foam materials would be effective in protecting the horse’s lower leg,” but rather that “[i]t would instead be expected that better results would be obtained by making the foam as thick as practicable, to provide additional cushioning.” Appeal Br. 12. This is not persuasive of Examiner error. Again, the claim does not specify a magnitude of impact that the impact- resistant member must be able to deflect, and thus does not substantially limit the thickness of the impact-resistant member based on such consideration. DECISION For the above reasons, the Examiner’s rejection of claims 1 and 3–11 is affirmed. More specifically: Appeal 2018-008420 Application 14/706,844 8 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–5, 7–11 102 Springs 1, 3–5, 7–11 6 103 Springs 6 Overall Outcome 1, 3–11 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