Ex Parte 5830237 et alDownload PDFBoard of Patent Appeals and InterferencesSep 30, 201190009268 (B.P.A.I. Sep. 30, 2011) 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. 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. App Reex Paten whic Paten versi and 2 cove we r the ‘ 2 Or for tw 90/0 90/0 eal 2011-0 amination t 5,830,23 We hear h was ente t Owner’ ons of the 011-0070 The inve ring for en eproduce b 237 Patent al argume o other r 09,387; Un 09,310; Un 10158 Control 9 7 C1 d oral argu red into th s counsel p ICEROSS 63 solely ntion claim closing a elow an e : nts for the eexaminat ited State ited State 0/009,268 ments on e record o roduced v prior art p as a visual ed in the residual lim mbodimen current ap ion appeal s Patent 6, s Patent 7, 3 July 20, 2 n August arious spe roduct ap aid (Hr’g ‘237 Pate b. To aid t of the in peal were s, namely 964,688 C 291,182 B 011, a writ 8, 2011.2 cimens inc plied in A . Tr. 4, 11- nt relates t in visual vention as consolidat 2011-0084 1) and 20 1). ten transc At oral arg luding thr ppeals 201 12). o a tube-so izing the in shown in ed with ar 83 (Contr 11-007063 ript of ument, th ee 1-008483 ck-shaped vention, Figure 9 o guments ol (Control e f 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 6 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: App Reex Paten eal 2011-0 amination t 5,830,23 C in a 2. C a 3. N fo on 10158 Control 9 7 C1 omfort Zon the advert tri-block c omfort Zon fabric. or does Co amed bloc ly an inter 0/009,268 e depicts isement to opolymer, e does no mfort Zon k copolym ior surfac 7 a Single S be a belo available t say that t e describe er and mi e of a fabr ocket Gel w-knee ge from Silip he sock of a coating neral oil g ic. Liner, wh l liner lam os. the liner of a foam el compos ich is said inated wit is made of ed or non- ition on h 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 9 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 10 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 11 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 Copy with citationCopy as parenthetical citation