Ex Parte Burns et al

Patent Trial and Appeal Board

Apr 28, 2017

13843754 (P.T.A.B. Apr. 28, 2017)

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.
V0270 9213
EXAMINER
NGUYEN, SON T
ART UNIT PAPER NUMBER
3643
MAIL DATE DELIVERY MODE
13/843,754 03/15/2013
17614 7590
John F. Vodopia PC
191 New York Avenue
Huntington, NY 11743
05/01/2017
Curtis J. BURNS
05/01/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte CURTIS J. BURNS and SCOTT EDWARD MORRISON
Appeal 2016-000351
Application 13/843,754
Technology Center 3600
Before ANNETTE R. REIMERS, JILL D. HILL, and
GORDON D. KINDER, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Curtis J. Bums and Scott Edward Morrison (Appellants) appeal under
35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1—15.
Claims 16—20 have been withdrawn from consideration. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2016-0003 51
Application 13/843,754
CLAIMED SUBJECT MATTER
The claimed subject matter “relates to a therapeutic support
horseshoe.” Spec. 1:16, Figs. 26, 27a—27c.
Claim 1, the sole independent claim on appeal, is representative of the
claimed subject matter and recites:
1. A therapeutic support horseshoe comprising:
a resilient, flexile moldable material formed in a U shape
with an anterior segment from which opposing first and second
side segments continuously extend to opposing caudal ends
separated as an open heel; and
a pliable, metal rod-like reinforcer embedded in the flexile
moldable material between opposing hoof-contacting and
ground-contacting surfaces, the reinforcer extending from one
caudal end, through the anterior segment, to the other caudal end
of the horseshoe;
wherein the horseshoe so formed includes an inner side
surface and an outer side surface between the opposing hoof­
contacting and ground-contacting surfaces; and
wherein the horseshoe so formed includes a slot formed in
the inner side surface, approximately halfway between the
opposing hoof-contacting and ground-contacting surfaces, and
extending from the one caudal end to the other caudal end.
REJECTIONS
I. Claims 1-4, 8, 12, and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Paar (US 608,156; iss. July 26, 1898) and Filliez (US
904,193; iss. Nov. 17, 1908).
II. Claims 5-7 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Paar, Filliez, and Brisson (US 7,685,801 B2; iss. Mar. 30, 2010).
III. Claims 14 and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Paar, Filliez, and Kolonia (US 6,868,914 B2; iss. Mar. 22,
2005).
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Appeal 2016-0003 51
Application 13/843,754
IV. Claims 1, 2, and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Filliez, and Boehmer (US 560,119; iss. May 12, 1896).
V. Claims 9-11 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Filliez, Boehmer, and Poupard (US 2010/0294517 Al; pub. Nov. 25,
2010).
ANALYSIS
Rejection I
Claims 1-4, 8, 12, and 13
Independent claim 1 is directed to a therapeutic support horseshoe
including “a pliable, metal rod-like reinforcer embedded in the flexile
moldable material between opposing hoof-contacting and ground-contacting
surfaces, the reinforcer extending from one caudal end, through the anterior
segment, to the other caudal end of the horseshoe.” Appeal Br. 21, Claims
App. The Examiner finds that Paar discloses the therapeutic support
horseshoe substantially as claimed except for the above-cited limitation.
Final Act. 2-3; see also Ans. 3. For that limitation, the Examiner relies
upon Filliez, stating: “Filliez teaches a horseshoe comprising a pliable, metal
rod-like reinforcer (11) embedded in a flexile moldable material (5) between
opposing hoof-contacting and ground-contacting surfaces, the reinforcer
extending from one caudal end, through the anterior segment, to the other
caudal end of the horseshoe.” Final Act. 3; see also Ans. 3. The Examiner
concludes that it would have been obvious “to include a pliable, metal rod­
like reinforce as taught by Filliez in the flexile moldable material of Paar in
order to further reinforce the horseshoe.” Final Act. 3 (emphasis added); see
also Ans. 3.
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Appeal 2016-0003 51
Application 13/843,754
Appellants contend that
the skilled artisan would not have modified Paar’s horseshoe 1
comprising rubber tread 4 to include Filliez’s reinforcer 11 “to
further reinforce the horseshoe” because Paar’s horseshoe (metal
body 1) would not be “further” reinforced by a metal, rod-like
reinforcer (such as the Filliez pair of longitudinal wires 11)
embedded in the rubber tread because both the metal body 1 and
the spring retaining bar 6 are metal. Adding the Filliez metal
would [be] unnecessary (redundant). That is, because Paar’s
rubber tread 4 is intended to be forced against the metal flange 3
of the metal horseshoe body 1 by spring retaining-bar 6, the metal
horseshoe body 1 and the metal spring retainer-bar 6 is in place
against the tread 4 and body 1, there is no need for “further
reinforcing” by the Filliez pair of longitudinal wires 11.
Appeal Br. 11; see also Reply Br. 4.
Paar discloses
[t]he tread 4 is provided with the groove 5, which groove is
located upon the inner portion of the tread and is for the purpose
of receiving the spring retaining-bar 6. The spring retaining-bar
is formed of spring metal of a high tension and is so adjusted or
tempered that its normal position will be that illustrated in Figs.
1 and 6, and when in its normal position and placed in proper
relation to the tread 4 its outer edge will be firmly seated against
the bottom or seat[,] of the groove 5, as illustrated in Fig. 4,
thereby securely holding the tread in proper position, which is
accomplished by the pressure exercised by the retaining-bar,
thereby forcing the tread snugly against the flange 3.
Paarp.l, 11. 42—57 (emphasis added).
In this case, the Examiner does not adequately explain how modifying
“the rubber material 4 of Paar” with reinforcer 11 of Filliez would “further
reinforce[e] or stiffly support[] the rubber material [4 of Paar]” or why a
skilled artisan would double up on reinforcers (i.e., include both spring steel
retaining bar 6 of Paar and reinforcer 11 of Filliez) in Paar’s horseshoe. See
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Appeal 2016-0003 51
Application 13/843,754
Ans. 12; see also id. at 3; Final Act. 3, 10-11; Appeal Br. 11; Reply Br. 4.
Appellants correctly point out that “there is no need to add the Filliez wire[s]
[i.e., reinforcer 11] to [further reinforce] Paar’s rubber tread 4 as the rubber
tread 4 already is held in place against flange 3 . . . of horseshoe body 1. .
.by spring steel retaining bar 6.” Reply Br. 4; see also Appeal Br. 11; Paar
p.l, 11. 49—57. The Examiner fails to provide sufficient evidence or technical
reasoning to establish that spring retaining bar 6 of Paar is inadequate for
appropriately reinforcing/securing tread 4, such that further
reinforcement/securement of tread 4 is necessary. See Final Act. 3, 10—11;
see also Ans. 3,12. Without a persuasive articulated reasoning that is
supported by a rational underpinning for modifying the reference as
proposed, the Examiner’s rejection appears to be the result of an
impermissible hindsight analysis. See In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 418 (2007) (citation omitted)) (“[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.”); see also Appeal Br. 12; Reply Br. 4.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner’s rejection of claims 1—4, 8, 12, and 13 as unpatentable over Paar
and Filliez.
Rejections //-///
Claims 5—7, 14, and 15
The Examiner’s obviousness rejections of claims 5—7, 14, and 15 are
each based on the same unsupported findings discussed above with respect
to independent claim 1 over Paar and Filliez. See Final Act. 4—5; see also
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Appeal 2016-0003 51
Application 13/843,754
Ans. 4—5. The Examiner does not rely on Brisson or Kolonia to remedy the
deficiencies of Paar and Filliez. Accordingly, for reasons similar to those
discussed above for claim 1 over Paar and Filliez, we do not sustain the
Examiner’s obviousness rejections of claims 5—7, 14, and 15.
Rejection IV
Claims 1, 2, and 8
The Examiner finds that Filliez discloses the therapeutic support
horseshoe of claim 1 except for the claimed “slot.” Final Act. 5-6; see also
Ans. 6. The Examiner finds that rabbet 8 of Boehmer meets the claimed
“slot.” Ans. 16; see also id. at 6; Final Act. 6. Additionally, the Examiner
takes the position that “[A]ppellant[s] [do] not claim the slot being
approximately halfway between the opposing hoof-contacting and ground­
contacting surfaces.” Ans. 16; see also id. at 17.
Although we agree with the Examiner that under the broadest
reasonable interpretation rabbet 8 of Boehmer constitutes a “slot,” claim 1
explicitly recites that the slot is “approximately halfway between the
opposing hoof-contacting and ground-contacting surfaces.” Appeal Br. 21,
Claims App. (emphasis added); see also Ans. 16. Appellants correctly point
out that Boehmer merely discloses that “[t]he upper surface of the shoe
opposite grooves 2 and 5 is plain, but in the rear of the grooves each end of
the shoe is rabbeted upon its upper edge and inner side, as represented at 8.”
Boehmer, p. 1:66—70 (emphasis added); see also Appeal Br. 16. Boehmer
fails to disclose that rabbet (slot) 8 is “approximately halfway between . . .
opposing hoof-contacting and ground-contacting surfaces,” as claimed. See
Appeal Br. 16; see also id. at 21, Claims App; Reply Br. 5—6. Moreover, the
Examiner fails to provide sufficient evidence or technical reasoning to
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Appeal 2016-0003 51
Application 13/843,754
establish that rabbet (slot) 8 of Boehmer is necessarily located
approximately halfway between opposing hoof-contacting and ground­
contacting surfaces. See Final Act. 6; see also Ans. 6, 16—17. Consequently,
the Examiner fails to establish by a preponderance of the evidence that the
combined teachings of Filliez and Boehmer disclose the horseshoe of claim
1.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner’s rejection of claims 1, 2, and 8 as unpatentable over Filliez and
Boehmer.
Rejection V
Claims 9—11
The Examiner’s obviousness rejection of claims 9—11 is based on the
same unsupported findings discussed above with respect to independent
claim 1 over Filliez and Boehmer. See Final Act. 7—8; see also Ans. 7—8.
The Examiner does not rely on Poupard to remedy the deficiencies of Filliez
and Boehmer. Accordingly, for reasons similar to those discussed above for
claim 1 over Filliez and Boehmer, we do not sustain the Examiner’s
obviousness rejection of claims 9—11.
DECISION
We REVERSE the decision of the Examiner to reject claims 1—15.
REVERSED
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