Ex Parte 5830237 et al

Board of Patent Appeals and Interferences

Sep 30, 2011

90009268 (B.P.A.I. Sep. 30, 2011)

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.
90/009,268 09/08/2008 5830237 OHI 1717-047C 4529
8698 7590 09/30/2011
STANDLEY LAW GROUP LLP
6300 Riverside Drive
Dublin, OH 43017
EXAMINER
JASTRZAB, JEFFREY R
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
09/30/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THE OHIO WILLOW WOOD COMPANY
Appellant
____________

Appeal 2011-010158
Reexamination Control 90/009,268
Patent 5,830,237 C1
Technology Center 3900
____________

Before ROMULO H. DELMENDO, SALLY G. LANE, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-010158
Reexamination Control 90/009,268
Patent 5,830,237 C1

2
The Ohio Willow Wood Company, the owner of the patent under
reexamination,1 appeals under 35 U.S.C. §§ 134(b) and 306 from the
Examiner’s final rejection of claims 1-23 (Appeal Brief filed June 14, 2010,
hereinafter “App. Br.,” at 1; Final Office Action mailed January 12, 2010).
We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We REVERSE.

STATEMENT OF THE CASE
The current reexamination of the ‘237 Patent was ordered on October
17, 2008 based on a Third-Party Request for Reexamination filed by Dr.
Aldo A. Laghi on September 8, 2008.
We have been informed that the ‘237 Patent is (or has been) the
subject of several civil actions, namely: The Ohio Willow Wood Co. v. ALPS
South Corp., Case No. 2:04-cv-01223 (S.D. Ohio); The Ohio Willow Wood
Co. v. DAW Industries, Inc., Case No. 2:04-cv-01222 (S.D. Ohio); Thermo-
Ply, Inc. v. The Ohio Willow Wood Co., Case No. 8:05-cv-00779 (M.D.
Fla.); The Ohio Willow Wood Co. v. Fillauer Cos., Inc., et al., Case No.
2:06-cv-00108 (S.D. Ohio); and OWW v. Seattle Orthopedic Group, Inc.,
Case No. 1:01-cv-00355 (D. Del.) (App. Br. 2-3). We have not been made
aware of any decision that may affect the outcome of the current appeal.

1 United States Patent 5,830,237 C1(hereinafter “‘237 Patent”) originally
issued to Bruce G. Kania on November 3, 1998 based on Application
08/611,306 filed March 5, 1996, for which a reexamination certificate issued
on September 2, 2008 based on Control 90/008,277 filed October 5, 2006.
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Appeal 2011-010158
Reexamination Control 90/009,268
Patent 5,830,237 C1

4
Figure 9 above depicts a “tube sock-shaped locking liner” showing an
optional distal insert attached to fabric on the exterior surface of the liner
(col. 4, ll. 56-57).
Claim 1 on appeal read as follows:
1. A tube sock-shaped covering for enclosing an
amputation stump, said amputation stump being a residual limb,
said covering having an open end for introduction of said
[stump] residual limb and a closed end opposite said open end,
said covering comprising fabric in the shape of a tube sock,
[and] said fabric having a coating of [polymeric material] a
foamed or non-foamed block copolymer and mineral oil gel
composition residing on only an interior surface thereof[, said
polymeric material comprising a foamed or non-foamed gel
composition comprising a block copolymer and mineral oil].
(App. Br. 29, Claims App’x; underlining and bracketing indicate
insertions and deletions, respectively, relative to the original patent
claim.)
The Examiner relied upon the following as evidence of
unpatentability (Examiner’s Answer mailed April 7, 2011, hereinafter
“Ans.,” 6-8):
Peterson 2,202,598 May 28, 1940
Caspers 5,258,037 Nov. 2, 1993
Chen 5,633,286 May 27, 1997
Silipos Comfort Zone: Single Socket Gel Liner, O & P BUSINESS
NEWS, January 1, 1995 at 16 (hereinafter “Comfort Zone”).
Knit-Rite, Inc. Silipos Special!: 10% Off These Silipos Products
(publication date unknown; Ex. B of App. Br., Evid. App’x).
Otto Bock Orthopadische Industrie Otto Bock Gel-Strumpf “Derma
Seal” (publication date unknown; Ex. D of App. Br., Evid. App’x).
Silipos New Introductory Price!: Soft Socket Gel-Liner (Multi-
Durometer) (publication date unknown; Ex. E of App. Br., Evid. App’x).
Appeal 2011-010158
Reexamination Control 90/009,268
Patent 5,830,237 C1

5
Decl. of Jean-Paul Comtesse executed on September 4, 2008 and filed
September 8, 2008 (hereinafter “Comtesse Decl.”).
Decl. of Bruce G. Kania filed September 8, 2008.
Dep. Tr. of Jean-Paul Comtesse filed September 8, 2008 at 117-126.
Decl. of John William Michael filed June 30, 2009.
Dep. Tr. of Jean-Paul Comtesse filed February 12, 2010 at 3, 25, 55,
121, 185, 207, 212, 213 (marked Ex. A2).
Admitted prior art at column 5, lines 1-38 of the ‘237 Patent.
The Patent Owner relied upon the following evidence in rebuttal
(Evid. App’x, App. Br. 33):
Decl. of Jean-Paul Comtesse executed on September 4, 2008
and filed September 8, 2008.
Silipos, PROSTHETICS/ORTHOTICS (1997) (marked Ex. A).
Silipos New Introductory Price!: Soft Socket Gel-Liner (Multi-
Durometer) (publication date unknown; Ex. E of App. Br., Evid. App’x).
Dep. Tr. of Jean-Paul Comtesse filed February 12, 2010 at 3,
25, 55, 121, 185, 207, 212, 213 (marked Ex. A2).
Traversing the Road Ahead, THE O&P (July 2006) (Marked Ex.
F).
ALPS Is Looking for Samples of the Following Silipos
Products: 1. Soft Socket Gel Liner and 2. Single Socket Gel
Liner That Were Produced Prior to March 5, 1995 (With
Documentation) (publication date unknown).
Translation of Otto Bock Orthopadische Industrie Otto Bock
Gel-Strumpf “Derma Seal” (marked Ex. B2).
The Examiner rejected the claims under 35 U.S.C. § 103(a) as
follows:
I. Claims 1, 2, 4-8, 13-15, 18, 19, and 21-23 as
unpatentable over Comfort Zone, as evidenced by the
Appeal 2011-010158
Reexamination Control 90/009,268
Patent 5,830,237 C1

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Comtesse Declaration and the Comtesse deposition, in
view of Chen and the admitted prior art (Ans. 8-10); and
II. Claims 2-5, 9-12, 16, 17, 20, and 21 as unpatentable over
Comfort Zone in view of Chen and the admitted prior art,
and further in view of Caspers or Peterson (Ans. 11).

ISSUE
The Examiner states that the Comfort Zone Single Socket Gel Liner
“meets” the “foamed or non-foamed block copolymer and mineral oil gel
composition residing on only an interior surface [of the fabric]” limitation of
claim 1 (Ans. 8). In support, the Examiner relies on the Comtesse
Declaration (id.).
The Patent Owner contends, inter alia, that the Examiner’s rejections
fail because the uncorroborated testimony of an interested third party
(Comtesse) is insufficient as proof to demonstrate that the claims are
unpatentable (App. Br. 10-17).
Based on these contentions, the dispositive issue in this appeal is:
Did the Examiner err in crediting the uncorroborated testimony of a
third party in support of the rejections?

FINDINGS OF FACT (“FF”)
1. The entire one-page disclosure of the Comfort Zone Single
Socket Gel Liner, which includes figures, is reproduced as
follows:
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Appeal 2011-010158
Reexamination Control 90/009,268
Patent 5,830,237 C1

8
4. Comtesse declares that he “was the General Manager of IPOS
Germany and the President of IPOS USA, a company that
develops artificial limbs and liners for limbs for the prosthetics
and orthotics business” (Comtesse Decl., ¶ 3).
5. According to Comtesse, “IPOS was a 30% owner of Silipos”
(Comtesse Decl., ¶ 3).
6. Comtesse states that he was “responsible for research and
development, as well as marketing” at IPOS and Silipos and
that he and others “began making a line of Silipos products
called sheaths, that were made of nylon with a closed end and
an open end, which were laminated with tri-block copolymer
gel” (Comtesse Decl., ¶ 4).
7. Comtesse further declares that Silipos developed a line of
products known as “Gel Liners,” which included a “Single
Socket Gel Liner” made of tri-block copolymer gel covered by
a layer of Coolmax material (Comtesse Decl., ¶¶ 5, 6).
8. According to Comtesse, “[d]ue to the thickness of the Coolmax
material, the Single Socket Gel Liner had no gel bleeding
through to the outer surface of the liner” (Comtesse Decl., ¶ 6).
9. Comtesse does not provide any experimental details on how the
absence of gel bleed-through was determined or tested.
10. Comtesse does not identify any corroborating evidence to
support his testimony that the Single Sock Gel Liner depicted in
the Comfort Zone advertisement was covered by a layer of
Coolmax material (fabric).
Appeal 2011-010158
Reexamination Control 90/009,268
Patent 5,830,237 C1

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11. It is undisputed that Comtesse is an interested third party (App.
Br. 14-15; Ans. 19).

PRINCIPLES OF LAW
Even in the context of ex parte patent prosecution, a declarant’s
“uncorroborated statements regarding his alleged prior invention are entitled
to no weight.” In re Reuter, 670 F.2d 1015, 1022 (CCPA 1981).

ANALYSIS
We must agree with the Patent Owner that the Examiner erred.
Claim 1, the sole independent claim on appeal, recites “said fabric
having a coating of a foamed or non-foamed block copolymer and mineral
oil gel composition residing on only an interior surface thereof” (bracketing
and underlining omitted). Comfort Zone, the principal printed publication
on which the Examiners’ rejection is based, makes no mention of any fabric,
let alone a fabric having the gel composition residing on only its interior
surface (FF 1-3).
To account for these differences, the Examiner relies on the Comtesse
Declaration. It is undisputed, however, that Comtesse is an interested third
party who is testifying regarding an alleged prior invention said to have been
made by himself and others, namely Silipos’s Single Socket Gel Liner with
Coolmax, to demonstrate that the claims of the ‘237 Patent are unpatentable
(FF 4-7, 11). In such situations, Comtesse’s Declaration testimony must be
corroborated with sufficient evidence. Reuter, 670 F.2d at 1021-22.
Here, we have not been directed to the requisite corroborating
evidence. The statements in Comtesse’s Declaration are largely conclusory,
Appeal 2011-010158
Reexamination Control 90/009,268
Patent 5,830,237 C1

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unaccompanied by credible factual support (e.g., details of experiments or
tests performed) and/or other acceptable evidence (e.g., testimony of a
credible corroborating witness) (FF 8-10). Even if the Comfort Zone
advertisement could be said to corroborate the Comtesse testimony that a
Single Socket Gel Liner was made, we have not been directed to evidence
sufficient to corrobate the Comtesse testimony indicating that the Liner was
covered in fabric with no gel bleed-through.
For these reasons, we conclude that the Examiner erred.

CONCLUSION
The Examiner’s rejections of claims 1-23 are reversed.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

REVERSED

KMF

Appeal 2011-010158
Reexamination Control 90/009,268
Patent 5,830,237 C1

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PATENT OWNER:

ERIC M. GAYAN
STANDLEY LAW GROUP LLP
6300 RIVERSIDE DRIVE
DUBLIN, OHIO 43017

THIRD-PARTY REQUESTER:

DR. ALDO A. LAGHI
c/o RONALD A. CHRISTALDI
SHUMAKER, LOOP & KENDRICK, LLP
101 EAST KENNEDY BLVD., SUITE 2800
TAMPA, FL 33602