Ex Parte Ceriani

Board of Patent Appeals and Interferences

Apr 23, 2012

11067305 (B.P.A.I. Apr. 23, 2012)

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.
11/067,305 02/25/2005 Dylann D. Ceriani 001P0306.P1 3339
7590 04/23/2012
Rodney F. Brown
3365 Baltimore Street
San Diego, CA 92117
EXAMINER
JACKSON, BRANDON LEE
ART UNIT PAPER NUMBER
3772
MAIL DATE DELIVERY MODE
04/23/2012 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 DYLANN D. CERIANI
____________________

Appeal 2010-003109
Application 11/067,305
Technology Center 3700
____________________

Before: STEVEN D.A. MCCARTHY, STEFAN STAICOVICI, and
CHARLES N. GREENHUT, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003109
Application 11/067,305
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
10-13, 15-17, 20 and 211. App. Br. 16. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.

The claims are directed to a method for fitting an orthopedic brace to
the body. Claim 10, reproduced below, is illustrative of the claimed subject
matter:
10. A method for fitting an orthopedic brace to a body section
of a user comprising the steps of:
providing an orthopedic brace including a first
longitudinal brace assembly, a second longitudinal brace
assembly, a first strap, and a second strap, wherein said first
and second straps each has a first end and a second end and is
segmented between said first and second ends into a first side
segment on a first side of said orthopedic brace and a second
side segment on a second side of said orthopedic brace, said
first and second side segments joined at a segment intersection;
attaching said first ends to said first longitudinal brace
assembly and slidably connecting said segment intersections to
said second longitudinal brace assembly such that said first side
segments have an arbitrary length and connect said first and
second longitudinal brace assemblies to one another on said
first side of said orthopedic brace;
positioning a body section between said first and second
longitudinal brace assemblies;

1 Appellant attempted to cancel claims 18 and 19 by the amendment of May
12, 2008 which the Examiner indicated would be entered for purposes of
appeal. Adv. Action June, 3, 2008. However, the Examiner reopened
prosecution after Appellant filed the Appeal Brief of Aug. 4, 2008, and
rejected claims 18 and 19. Claims 18 and 19 are not presented by Appellant
for our review. App. Br 36; Ans. 2-3. We direct the Examiner’s attention to
§ 1215.03 of the Manual of Patent Examining Procedure.
Appeal 2010-003109
Application 11/067,305
3
releasably fixably connecting said first and second straps
to said first longitudinal brace assembly, thereby connecting
said first and second longitudinal brace assemblies to one
another about said body section on said second side of said
orthopedic brace with said second side segments such that said
second side segments have an arbitrary length;
adjusting said arbitrary length of said first side segments
to a desired fixed length by sliding said first and second straps
relative to said second longitudinal brace assembly, thereby
varying a location of said segment intersection on said first and
second straps;
releasably locking connection of said segment
intersections to said second longitudinal brace assembly to
substantially prevent sliding of said segment intersections
relative to said second longitudinal brace assembly, thereby
fixing said first side segments to said desired fixed length;
adjusting said arbitrary length of said second side
segments to a desired fixed length without changing said
desired fixed length of said first side segments or changing said
location of said segment intersection on said first and second
straps; and
fixing said second side segments to said desired fixed
length.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Dittmer US 6,669,659 B2 Dec. 30, 2003

REJECTIONS
Claims 10-13, 15-17, 20, and 21 are rejected under 35 U.S.C. 103(a)
as being unpatentable over Dittmer. Ans. 3.
Appeal 2010-003109
Application 11/067,305
4

OPINION
The last three clauses of each of the independent claims involved in
this appeal, claims 10 and 15, recite the steps of releasably locking segment
intersections to fix a first side segment2, adjusting a second side segment
without changing the length of the first segment, and fixing the length of the
second segment. The Examiner does not address these steps in the statement
of rejection. In responding to Appellant’s argument that Dittmer neither
performs, nor enables performance of these steps (App. Br. 23,26) the
Examiner responds:
[T]he straps must be able to be locked in place along with the
side assemblies, because horizontal or vertical sliding of the
straps (60) would deem the device (10) inoperable for
immobilizing/splinting. Therefore, one of ordinary skill in the
art would interpret the Dittmer device (10) as releasably fixing
or locking the straps about the side assemblies (12, 14).
Ans. 5. However, the Examiner’s response does not address the claim
language in question. All words in a claim must be considered in judging the
obviousness of the claimed subject matter. See In re Wilson, 424 F.2d 1382,
1385. The recited steps are enabled, for example, by Appellant’s strap lock
46. See App. Br. 11 (citing Spec. 23 and figs. 8-9). In contrast, Dittmer’s
strap retaining slots 50, 56, would allow the straps to pass freely without
being able to fix one segment thereof. The Examiner does not articulate any
persuasive reasoning to account for this difference between Dittmer and the
claimed subject matter. Accordingly, the Examiner’s rejection of

2 “said first side segments” in the third-to-last line of claim 15 should read
“said first side segment” for agreement with the remainder of the claim.
Appeal 2010-003109
Application 11/067,305
5
independent claims 10 and 15, along with dependent claims 11-13, 16, 17,
20 and 21 cannot be sustained.

DECISION
The Examiner’s rejection of claims 10-13, 15-17, 20 and 21 is
reversed.

REVERSED

mls