Ex Parte BushbyDownload PDFPatent Trial and Appeal BoardSep 18, 201813783632 (P.T.A.B. Sep. 18, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/783,632 03/04/2013 124676 7590 09/20/2018 Russell Ng PLLC 8729 Shoal Creek Blvd., Suite 100 Austin, TX 78757 FIRST NAMED INVENTOR Donald P. Bushby 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 12793-700.303 1045 EXAMINER FRY,PATRICKB ART UNIT PAPER NUMBER 3721 NOTIFICATION DATE DELIVERY MODE 09/20/2018 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): s tephanie@russellnglaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DONALD P. BUSHBY1 Appeal2018-000283 Application 13/783,632 Technology Center 3700 Before CHARLES N. GREENHUT, JAMES P. CALVE, and JEFFREY A. STEPHENS, Administrative Patent Judges. CAL VE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Final Office Action finally rejecting claims 1-3, 5-11, 14--25, 27-29, and 32--43. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM-IN-PART. 1 Applied BioKinetics LLC is identified as the real party in interest (Appeal Br. 2) and also is the applicant pursuant to 37 C.F.R. § 1.46. Appeal2018-000283 Application 13/783,632 CLAIMED SUBJECT MATTER Claims 1, 15, and 39 are independent, with claim 1 reproduced below. 1. A method of manufacturing a system of anatomical pre- cut supports, the method comprising: acquiring a sheet of material including: a support layer comprised of a single layer of woven fabric and having a thickness of less than 15 mils and a tensile strength of greater than 10 lb/in-width, an adhesive layer on said support layer for adhesive attachment of said support layer to an outer skin surface of a user, and a removable cover layer on said adhesive layer; cutting into the support layer of the sheet of material a plurality of elongated pre-cut supports each having substantially straight sides and rounded comers and all of substantially a same size and shape, such that each of a plurality of sheet portions continuously connected at ends thereof includes a single one of the plurality of pre-cut supports, each of the plurality of pre-cut supports is at least substantially disconnected from a remainder of the support layer, and each of the plurality of pre-cut supports remains attached to a continuous portion of the removable cover layer; and forming a roll of the plurality of sheet portions. Appeal Br. 24 (Claims App.). REJECTI0NS 2 The following rejections are before us for review: Claims 1-3, 5-7, 15-19, 25, 27, 29, 32-35, and 37--43 under 35 U.S.C. § 103(a) over Morgan (US 3,357,425; iss. Dec. 12, 1967), Bailey (US 3,849,332; iss. Nov. 19, 1974), Nirschl (US 3,926,186; iss. Dec. 16, 1975), and Tumgren (US 5,891,078; iss. Apr. 6, 1999). 2 The rejection of claim 32 under 35 U.S.C. § 112, fourth paragraph, was overcome by amendment. See Adv. Action (May 18, 2017); Appeal Br. 4. 2 Appeal2018-000283 Application 13/783,632 Claims 8 and 20 under 35 U.S.C. § I03(a) over Morgan, Bailey, Nirschl, Tumgren, and Etcheparre (US 4,588,871; iss. May 13, 1986). Claims 10, 11, 23, and 24 under 35 U.S.C. § I03(a) over Morgan, Bailey, Nirschl, Tumgren, and Seitzinger (US 5,590,785; iss. Jan. 7, 1997). Claims 14 and 21 under 35 U.S.C. § I03(a) over Morgan, Bailey, Nirschl, Tumgren, and Burgess (US 6,640,465 Bl; iss. Nov. 4, 2003). Claim 28 is rejected under 35 U.S.C. § I03(a) over Morgan, Bailey, Nirschl, Tumgren, and Augst (US 5,496,605; iss. Mar. 5, 1996). Claim 36 is rejected under 35 U.S.C. § I03(a) over Morgan, Bailey, Nirschl, Tumgren, and Tomaiuolo (US 5,782,786; iss. July 21, 1998). Claims 1, 2, 5-7, 9, 15, and 22 under 35 U.S.C. § I03(a) over Morgan, Bailey, Davies (US 3,989,041; iss. Nov. 2, 1976), and Tumgren. ANALYSIS Claims 1-3, 5-7, 15-19, 25, 27, 29, 32-35, and 37-43 Over Morgan, Bailey, Nirschl, and Turngren Appellant raises a number of challenges to the Examiner's reasons for combining the references in the Final Office Action. Appeal Br. 6-13. For example, Appellant argues that the Examiner has not resolved conflicts in the references' teachings. Id. at 8-10. Appellant argues that the proposed combination would render Morgan unsatisfactory for its intended purpose. Id. at 10-11. Appellant also argues that the claimed invention is not a predictable result of the proposed combination of references. Id. at 11-13. Appellant discloses a stretch resistant plantar fascia support system that may be adhesively applied to a foot but claims more broadly "a system of anatomical pre-cut supports." As claimed, the supports are cut into sheets that are connected to form a roll of sheets with plural pre-cut supports. 3 Appeal2018-000283 Application 13/783,632 The Examiner correctly finds that Morgan teaches such a method of making anatomical pre-cut supports with the claimed support, adhesive, and removable cover layers 12, 14, 16 cut into sheet 12 as illustrated in Figures 1 and 2. See Final Act. 4. Morgan teaches the advantages of pre-cut and pre- formed adhesive straps in wrapping a person's anatomy in a particular way to provide strength and support to a desired portion of the person's anatomy. Morgan, 1 :9--58. Morgan also teaches that the shapes illustrated in Figure 1 are designed to achieve an ankle wrap to support and strengthen the ankle to heal sprains and also prevent strains from occurring. Id. at 2:58-65. Recognizing that Appellant's support system is designed to address plantar fasciitis, the Examiner turns to teachings of Nirschl for a support 10 that can be used to provide pressure to the bottom of the foot. Final Act. 6. In particular, the Examiner relies on a support illustrated in Figures 4 and 5 because Nirschl uses this support to provide support to the plantar fascia at the bottom surface of the foot. Nirschl, 5: 1-5. The Examiner correctly finds that Nirschl teaches a single support pad 101 to support the plantar fascia. Final Act. 6. The Examiner also correctly reasons that it would have been obvious to modify Morgan's pre-cut and pre-shaped supports to use a single support, as taught by Nirschl, "to apply pressure to a foot over a broad area without impairing mobility" to "make the method more efficient and therefore more desirable." Id. The Examiner's reasoning is supported by a rational underpinning based on Nirschl' s teachings that such a support pad 101 provides such broad area support without impairing mobility. Nirschl, 5 :20-27; Final Act. 6 ( citing id.). Indeed, Morgan teaches that the shapes and number of support pads on a sheet will vary with the section of anatomy that is supported. Morgan, 3:30-33; Final Act. 5 (citing id.). 4 Appeal2018-000283 Application 13/783,632 In view of these teachings, the Examiner's findings and reasoning are supported by a preponderance of evidence and rational underpinnings. The teachings of Morgan and Nirschl do not conflict. Appeal Br. 9-10. Morgan teaches a system configurable to support any body part, and Nirschl teaches a plantar fascia support. Morgan, 1:9-58, 3:30-41; Nirschl, 5:1-32. Skilled artisans are persons of ordinary creativity who can combine these teachings predictably. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Appellant argues that Nirschl uses Velcro straps to hold the support in place and permit repositioning and reuse. Appeal Br. 10. This argument is not persuasive because Morgan teaches pressure sensitive adhesive strips as an alternate way to support a body part. Morgan, 1:9-15, 3:23-37. Morgan also teaches that its pre-cut, adhesive supports can be mass produced very simply and inexpensively to save time and ensure that a wrap provides the necessary strengthening and support. Id. at 3:38--41. Thus, Morgan's kit provides a fixed support without Velcro straps, and teaches the use of extra strips to strengthen a support, as desired. Id. at 3:1-22. Morgan's strips also avoid the problems of metal rings that Nirschl criticizes. Nirschl, 5 :39--44. The proposed combination retains the advantages of Morgan's kit- low cost, ease of use, fixed support, adjustability- with the advantages of Nirschl's support that applies pressure without impairing mobility. See Ans. 2-5. Morgan teaches how to apply supports. Appellant's speculation as to design options (Appeal Br. 12) ignores the teachings of Morgan and Nirschl cited by the Examiner. Claim 1 does not preclude the use of multiple supports. It recites a system "comprising" plural sheets of plural supports. The Examiner also correctly finds that Tumgren teaches advantages of making sheets of pre-cut supports as a continuous roll. Final Act. 6. 5 Appeal2018-000283 Application 13/783,632 The Examiner correctly determines that it would have been obvious to make Morgan's sheets 10 as a continuous roll as taught by Tumgren to keep the plurality of pre-cut supports and their respective sheets organized during storage and transport. Id. at 7. Tumgren also teaches that this configuration allows individual bandages to be removed from the roll with just one hand. Tumgren, 1:13-19, 4:30-34, Figs. 1-3; Final Act. 7 (citing id. at 4:30-34). Appellant argues, however, that Morgan disparages the prior art's use of rolls of adhesive supports in favor of a single large sheet with pre-cut kit components; therefore, it would not have been obvious to modify Morgan's sheet as Tumgren teaches. Appeal Br. 11. This argument is not persuasive because the Examiner is not modifying Morgan in this alleged manner. The Examiner's rejection retains the advantages of Morgan's sheets of pre-cut supports, shaped according to Nirschl, in a continuous roll of sheets that Tumgren teaches is advantageous to improve dispensing. Final Act. 4-- 7. The Examiner correctly finds that Morgan does not criticize forming the sheets of pre-cut, pre-shaped supports into rolls. Ans. 5. Morgan criticizes prior art rolls of uncut adhesive cloth tape that trainers have to pull from the roll and tear into individual pieces of a desired length in a trial and error approach that is tedious and difficult. Morgan, 1:16-35. Thus, trainers pre- cut standard lengths from rolls of tape for quick, efficient wrapping of an ankle. Id. We find no conflict in how the Examiner combines the teachings of Morgan and Tumgren, nor any impairment of Morgan's pre-cut sheets. Nor are we persuaded by Appellant's argument that the combination would not yield predictable results. Appeal Br. 11-12. Appellant's attorney argument is not evidence and does not address the foregoing findings and determinations of the Examiner as set forth in the Final Action and Answer. 6 Appeal2018-000283 Application 13/783,632 The Examiner combines features of these references according to their intended uses for predictable results and advantages taught in the references. The reasons for combining the references are supported by express teachings in each reference of the advantages of these features when combined in the manner proposed by the Examiner. When combined in this manner, the teachings would yield predictable results of a continuous roll of pre-cut, pre- shaped adhesive supports as claimed. Ans. 6-7. Claim 1 Regarding claim 1, Appellant argues that the combined teachings do not disclose or render obvious pre-cut supports "having substantially straight sides and rounded comers" as claimed, because Nirschl teaches a support with curved sides. Appeal Br. 13-14. Appellant argues that Nirschl teaches "curvilinear elongated pad 101 has a concavely arcuately shaped long edge 102." Id. at 14 (quoting Nirschl, 5:11-22) (emphasis in original). We agree with the Examiner that Nirschl teaches substantially straight sides and rounded comers for support 101 as claimed. Ans. 7. Appellant does not dispute that Nirschl teaches rounded comers. See Reply Br. 7. The Examiner also finds that Tumgren teaches adhesive supports (bandages 12) surrounded by frames 16. Final Act. 6-7. Figures 1-3 show bandages 12 to have straight sides and rounded comers. See Tumgren, 4:30-34, 5:58---67. Morgan also teaches pressure adhesive supports 1-7 with straight sides in Figure 1. See Final Act. 4 (Morgan has elongated, pre-cut supports 1-7). We also interpret the term "substantially straight sides" to read on the configuration of support pad 101 disclosed in Nirschl as the Examiner has done. See Ans. 7 ("The phrase 'substantially straight' implies that the sides do not have to be exactly straight."). 7 Appeal2018-000283 Application 13/783,632 "Substantially" conveys the idea of something "being largely but not wholly that which is specified." See Definition of substantial by Merriam- Webster at http://www.merriam-webster.com/dictionary/substantial (viewed Sept. 7, 2018). On its face, claim 1 's recital of "a plurality of elongated pre- cut supports each having substantially straight sides" would appear to cover Nirschl' s curvilinear elongated support pad 101. Curvilinear edge 102 can be considered "substantially straight" and its opposing edge 103 includes a substantially straight portion (broad, flat projection 104) as well as other portions that are substantially straight as claimed. We tum to the Specification for clarification. Appellant discloses a variety of supports in a variety of shapes including many curvilinear shapes such as Nirschl teaches. See Figs. 6, 8, 10-12, 15-20. The Specification discloses other supports 578, 506 with rounded comers and completely, rather than substantially, straight sides. See Fig. 20. The Specification does not describe the shapes of these supports, or their sides, as being straight, substantially straight, or curvilinear. The Specification is silent on this issue. Appellant asserts that paragraph 116 discloses "substantially straight sides." Appeal Br. 2 ( summary of claimed subject matter for claim 1 ). We find no disclosure in this portion of the Specification for this feature. Absent a definition in the Specification, we interpret "substantially straight sides" to include sides with slight curves. This limitation indicates that Appellant does not want to limit the scope of claim 1 to supports with completely straight sides such as supports 578, 506 shown in Figure 20. In fact, it is not clear that claim 1 encompasses supports with completely straight sides when the Specification discloses supports 502 in Figure 20 including sides that are substantially straight and comers that are rounded as claimed. 8 Appeal2018-000283 Application 13/783,632 The Examiner correctly finds that Nirschl teaches support 101 having sides that are "substantially straight" similar to supports shown in Figures 6, 8, 10-12, and 15-20 of Appellant's disclosure. Nirschl teaches an elongated support including substantially straight sides similar to Appellant's supports that fall within the scope of claim 1. If "substantially straight" also includes "completely straight" sides, then Morgan teaches such supports 1, 2, 5-7 in Figure 1, and Tumgren teaches such support 12 in Figures 1-7. Thus, we sustain the rejection of claim 1 and its dependent claims 2, 5-7, 27, 29, 35, 38, and 40-42, which are not argued separately. See Appeal Br. 13-19. Claim 3 Claim 3 depends from claim 1 and recites that the support layer "is formed of a woven micro-fiber fabric" and "has a tensile strength of greater than 20 lb/in-width." Appeal Br. 24 (Claims App.). The Examiner relies on Bailey to teach woven rayon fabric with a tensile strength of about 22 lb/in- width. Final Act. 8. The Examiner reasons that it would have been obvious from this teaching of Bailey to use a woven micro-fiber fabric with a tensile strength of greater than 20 lb/in-width to form the support layer recited in claim 3 "since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice" and "would be beneficial to incorporate into the method because it would ensure the support system will not tear while being attached to the user and better comfort for the user." Id. The Examiner also determines that a skilled artisan "would be motivated to use a [ micro-fiber fabric] material because it would maintain the needed tensile strength to function as a foot support while making the material more comfortable against the user's skin." Ans. 8. 9 Appeal2018-000283 Application 13/783,632 Appellant argues that Bailey uses heavy rayon fabric to achieve a high tensile strength of 20 lb/in-width so it would not have been obvious to use a light micro-fiber fabric to provide that high tensile strength. Appeal Br. 15. Appellant argues that the Examiner's use of a light micro-fiber to achieve a high tensile strength, as recited in claim 3, is opposite of this general practice in the art. Appeal Br. 15. We agree. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ("[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") (quoted in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007); In re Ochiai, 71 F.3d 1565, 1571 (Fed. Cir. 1995) (holding that section 103 requires a fact-intensive comparison of the claims with the prior art rather than mechanical application of a per se rule( s) ). The Examiner cites no evidence or teaching to support the determination that a skilled artisan would have been motivated to select a micro-fiber having the recited high tensile strength when Bailey teaches to use a heavier fabric to achieve that strength. Thus, we do not sustain the rejection of claim 3. Claim 15 Independent claim 15 recites a method of making an anatomical support with a support layer having "a ratio of elongation to tensile strength (lb/in-width) that is less than 0.9." Appeal Br. 25-26 (Claims App.). The Examiner finds that Morgan lacks this feature but determines it would have been obvious "to use a material with a ratio of elongation to tensile strength that is less than 0.9, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice." Final Act. 10. 10 Appeal2018-000283 Application 13/783,632 Appellant argues persuasively that there is no record evidence that a skilled artisan knew of a material having the claimed elongation to tensile strength or knew that such a material would be suitable for use in forming an anatomical support. Appeal Br. 16-1 7. Appellant argues persuasively that the Examiner fails to provide sufficient evidence of these matters. Id. at 17. In response, the Examiner again makes an unsupported assertion that it is within the general skill of a worker in the art to select a known material that is suitable for an intended use and such a selection "would have the expected result of providing sufficient flexibility while providing the necessary support." Ans. 9--10. This conclusory reasoning is unsupported and therefore lacks a rational underpinning. Thus, we do not sustain the rejection of claim 15 and its dependent claims 16-19, 25, 34, and 43. Claims 32, 33, 37, and 39 Appellant argues that independent claim 39 and dependent claims 32, 33, and 37 recite "the plurality of pre-cut support portions are approximately rectangular" or similar limitation. Appeal Br. 18. Appellant argues that the Examiner's finding that Nirschl's support 101 teaches this feature is contrary to Nirschl's teaching that the long edges of support 101 are "non-parallel," "curvilinear," and "arcuately shaped" and therefore are non-rectangular. Id. Appellant also argues that it is known in the art that "rectangular" refers to a "shape that is a parallelogram containing a right angle, that is a four sided shape having two orthogonal pairs of straight, parallel sides." Reply Br. 9. The Examiner interprets "approximately rectangular" as a general rectangular shape not requiring exactly parallel or exactly straight lines and Nirschl discloses a support structure 101 having four predominate sides that face each other and are considered to be substantially straight. Ans. 11. 11 Appeal2018-000283 Application 13/783,632 The Examiner has the better position here. The term "approximate" can mean "nearly correct or exact: close in value or amount but not precise." See Definition of approximate by Merriam-Webster at http://www.merriam- webster.com/ dictionary/ approximate (last viewed Sept. 7, 2018). If claim 3 9 used "approximately" in this customary way, Appellant's arguments would have more merit. However, this customary usage is not consistent with the Specification or the claim language. For example, claim 39 recites that the supports have "rounded comers." This claimed feature of the supports is inconsistent with Appellant's definition of "rectangle" as a "parallelogram containing a right angle, that is, a four sided shape having two orthogonal pairs of straight, parallel sides." Reply Br. 9. Figure 20 of Appellant's disclosure illustrates such supports having ends that are completely rounded so that supports 506, 578 have only two parallel sides that are longer. The shorter sides are completely semi-circular. In other words, not only are the comers rounded but the entire shorter sides are rounded. Thus, the rounded sides are not straight or parallel to one another or orthogonal to the longer sides. Their shape cannot be said to be nearly or closely that of a rectangle. Their shape deviates considerably from that of a conventional rectangle. There is no disclosure in the written description of a rectangle shape or an "approximately rectangular" shape for any of Appellant's supports. Nor do we find a definition of this term in the Specification, and Appellant does not direct our attention to any such disclosures or definition that clarifies the meaning of "approximately rectangular" in claim 3 9. Appellant's drawings illustrate support shapes that may be considered "approximately rectangular." See Figs. 19, 20 ( support 502 ). We find no clear indication in claim 39 to exclude such supports from its scope. 12 Appeal2018-000283 Application 13/783,632 Nirschl' s elongated support pad 101 has an approximately rectangular shape to a similar extent as Appellant's supports 502, which fall within the scope of claim 39. Nirschl discloses edge 102 as "concavely arcuately shaped," and the "opposing long edge 103" having a portion that is "non- parallel to edge 102." Nirschl, 5:10-14, Fig. 4. This disclosure indicates other portions of edge 103 are parallel to edge 102. The sides and ends are substantially straight as discussed above with rounded comers as claimed. We find Nirschl' s support 101 to be approximately rectangular as recited in claim 39 when interpreted in light of the Specification. 3 Thus, we sustain the rejection of claims 39 and 37, which depends from claim 1, but not claims 3 2 and 3 3, which depend from claim 15. Claims 8 and 20 Over Morgan, Bailey, Nirschl, Turngren, and Etcheparre Appellant argues the patentability of claims 8 and 20 based on their dependency from claims 1 and 15 respectively. See Appeal Br. 21. Thus, we sustain the rejection of claim 8 but not claim 20. Claims 10, 11, 23, and 24 Over Morgan, Bailey, Nirschl, Turngren, and Seitzinger Appellant argues the patentability of claims 10, 11, 23, and 24 based on their dependency from claims 1 and 15 respectively. See Appeal Br. 21. Thus, we sustain the rejection of claims 10 and 11 but not claims 23 and 24. 3 We also note that Morgan teaches adhesive support strips 1, 2, and 5-7 that are rectangular in shape. Tumgren teaches adhesive support strips 12 that are rectangular with straight long sides, straight short sides, and rounded comers. Thus, we understand the recital of "approximately rectangular" as an attempt to define around the prior art. In so doing, claim 3 9 is broad enough, when interpreted in light of the Specification, to encompass the approximately rectangular support of Nirschl. 13 Appeal2018-000283 Application 13/783,632 Claims 14 and 21 Over Morgan, Bailey, Nirschl, Turngren, and Burgess Appellant argues the patentability of claims 14 and 21 based on their dependency from claims 1 and 15 respectively. See Appeal Br. 22. Thus, we sustain the rejection of claim 14 but not claim 21. Claim 28 Over Morgan, Bailey, Nirschl, Turngren, and Augst Appellant argues the patentability of claim 28 based on its dependency from claim 1. See Appeal Br. 22. Thus, we sustain the rejection of claim 28. Claim 36 Over Morgan, Bailey, Nirschl, Turngren, and Tomaiuolo Appellant argues the patentability of claim 36 based on its dependency from claim 1. See Appeal Br. 22. Thus, we sustain the rejection of claim 36. Claims 1, 2, 5-7, 9, 15, and 22 Over Morgan, Bailey, Davies, and Turngren Claim 1 The Examiner relies on Morgan, Bailey, and Tumgren to teach the same features of claim 1 as in the previous rejection. See Final Act. 4--7 and 22-25. The Examiner relies on Davies to teach a single, die-cut, adhesive material used to support the bottom of the foot and the ankle. Id. at 24. Appellant argues that Davies teaches an irregularly shaped support with flanging anchor wings and anchor tabs and therefore does not teach supports having "substantially straight sides and rounded comers" as recited in claim 1. Appeal Br. 20. This argument is not persuasive in view of our interpretation of this limitation in claim 1 for the previous rejection. 14 Appeal2018-000283 Application 13/783,632 As the Examiner points out, Davies discloses a support with sides that are substantially straight and comers that are rounded. Ans. 12. We agree. Davies illustrates support 11 with straight sides in Figure 1. The fact that anchor tabs 13 are positioned between the straight sides does not negate the fact that Figure 1 illustrates support 11 having substantially straight sides and rounded comers at anchor wings 12 as claimed. The use of "having" in claim 1 to describe the components of the elongated, pre-cut supports means that the support may include other features and still fall within the scope of claim 1. Claim 1 does not recite "supports each consisting of substantially straight sides and rounded comers." Such a transitional phrase would limit the scope of the claimed elongated, pre-cut supports to the features recited in claim 1 and exclude other features from being part of the claimed supports. In addition, claim 1 does not recite that the substantially straight sides extend between the rounded comers. See Ans. 12. Thus, we sustain the rejection of claim 1 and its dependent claims 2, 5-7, and 9, which are not argued separately. See Appeal Br. 20. Claim 15 The Examiner again relies on Davies to teach a single support with substantially straight sides and rounded comers as recited in claim 15. Final Act. 27. Thus, Appellant's argument that Morgan does not teach this feature (Appeal Br. 20-21) is not persuasive. The Examiner also relies on Morgan's teachings of sheet material with pre-cut supports, as claimed. The Examiner combines these teachings with Davies' teachings that a single, die-cut piece of adhesive material 11 can be used to support the bottom of the foot and the ankle and can provide a number of advantages over traditional techniques. See Davies, 1:5-10, 5:30-6:2; Final Act. 27. 15 Appeal2018-000283 Application 13/783,632 As discussed above, Morgan teaches that the number and shapes of its support elements can vary depending on the anatomical part to be supported. Morgan, 3 :30-33. In furtherance of this teaching, the Examiner provides Morgan's support kit 10 with a single, pre-cut, adhesive support taught by Davies for the benefits taught by Davies while retaining Morgan's adhesive configuration and benefits. Final Act. 26-27. Davies' alleged illustration of a support of the same size as a support sheet does not conflict with Morgan or Tumgren. See Appeal Br. 10. These arguments attack the references individually rather than address their teachings as the Examiner combines them. Davies is not relied upon, nor does Davies require, modification of Morgan's sheets of individual pre-cut supports other than the shape. Thus, we sustain the rejection of claim 15 and its dependent claim 22, which is not argued separately. See Appeal Br. 20-21. DECISION We affirm the rejection of claims 1, 2, 5-7, 27, 29, 35, and 37--42 as unpatentable over Morgan, Bailey, Nirschl, and Tumgren, and we reverse the rejection of claims 3, 15-19, 25, 32-34, and 43 on this ground. We affirm the rejections of dependent claims 8, 10, 11, 14, 28, and 36, and we reverse the rejections of dependent claims 20, 21, 23, and 24. We affirm the rejection of claims 1, 2, 5-7, 9, 15, and 22 as unpatentable over Morgan, Bailey, Davies, and Tumgren. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 16 Copy with citationCopy as parenthetical citation