Ex Parte Davis

Patent Trial and Appeal Board

Jun 27, 2016

12964713 (P.T.A.B. Jun. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/964,713 12/09/2010
27272 7590 06/28/2016
DELPHINE M, JAMES
2616 South Loop West #415
HOUSTON, TX 77054
FIRST NAMED INVENTOR
Eddie Davis
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.
dmj201026 5257
EXAMINER
WOODWARD, VALERIE LYNN
ART UNIT PAPER NUMBER
3771
MAILDATE DELIVERY MODE
06/28/2016 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 EDDIE DA VIS
Appeal2014-006932
Application 12/964,713 1
Technology Center 3700
Before BIBHU R. MOHANTY, BRUCE T. WIEDER, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of
claims 1-9. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
BACKGROUND
According to Appellant:
The present invention relates generally to a device for use
in relieving pain in the foot or heel on the body. In particular,
the present invention relates to a device which provides a gentle
massage to the areas of the body in order to alleviate pain
1 According to Appellant, the real party in interest is Eddie Davis. Appeal
Br. 1.
Appeal2014-006932
Application 12/964,713
resulting from and speed the healing of plantar fascutls and/or
bone spurs.
Spec. ,-r 1.
CLAIMS
Claims 1-9 are on appeal. Claims 1 and 9 recite:
1. A therapeutic device for massaging a person's foot with a
connected knee bent in angular sitting position, the device
compnsmg:
a top horizontal member having a first end and an
opposing second end;
a bottom horizontal member having a first end section
and an opposing second end section;
the top horizontal member spaced apart a pre-determined
distance from the bottom horizontal member in a parallel
arrangement wherein an opened support area is formed and
adapted to receive the connected knee therein;
the top horizontal member having a mid-section that is
stationary and adapted to be placed upon the connected knee;
a mid segment rotationally mounted between the first end
section and the second end section of the bottom horizontal
member;
a flexible and stretchable first cord member connecting
the first end to the first end section in a vertical parallel
arrangement;
a flexible and stretchable second cord member
connecting the second end to the second end section in a
vertical parallel arrangement wherein the underside of the
person's foot is adapted to be placed over the mid-segment of
the bottom horizontal member thereby allowing the person to
roll its foot backward and forward for a desired period of time
upon the mid-segment of the bottom horizontal member.
9. A method of massaging a person's foot with connected
knee bent in angular sitting position using the device in claim 1,
the method comprising:
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Application 12/964,713
placing the underside of the person's foot upon the mid
segment of the bottom horizontal member;
placing the connected - knee upon the top horizontal
member;
adjusting the first flexible cord member to a desired
length to receive the connected knee;
adjusting the second flexible cord member to a desired
length to receive the connected knee; and
rolling the person's foot backward and forward upon the
mid segment for an effective amount of time.
Appeal Br. 7-9.
REJECTIONS
1. The Examiner rejects claim 1 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement.
2. The Examiner rejects claims 1-9 under 35 U.S.C. § 112, second
paragraph, as indefinite.
3. The Examiner rejects claims 1-8 under 35 U.S.C. § 103(a) as
unpatentable over Holton2 in view of Winkler3 and Hebert. 4
4. The Examiner rejects claims 9 under 35 U.S.C. § 103(a) as
unpatentable over Holton in view of Winkler, Hebert, and Mikell. 5
DISCUSSION
Rejection 1
2 Holton, US 5,569,136, iss. Oct. 29, 1996.
3 Winkler, US 6,672,997 B 1, iss. Jan. 6, 2004.
4 Hebert, US 4,023,808, iss. May 17, 1977.
5 Mikell, Jr., US 2,467,943, iss. Apr. 19, 1949.
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Application 12/964,713
The Examiner finds that the phrase "a mid-section that is stationary"
in claim 1 lacks written description support because the Specification "does
not mention that the mid-section [of the top member] is stationary or
[include] any language that implies that the mid-section is stationary." Final
Act. 5. We are persuaded by Appellant's argument that the Specification
provides sufficient written description support for the claim phrase at issue.
See Appeal Br. 3--4. In particular, we agree that "Figure 1 ... shows that the
top horizontal bar is stationary because there is no rotational mechanism
shown in the cutaway drawing." Reply Br. 3. Accordingly, we do not
sustain this rejection.
Rejection 2
The Examiner rejects the claims as indefinite based on the phrase "an
opened support area" in claim 1. The rejection states:
Claim 1 recites "an opened support area" (lines 7-8), but
this is not clear. What is an open support area? What does the
open area support? How can an open area of no stn1cture
support a knee? Since the metes and bounds of the limitation
cannot be ascertained, claim 1 is indefinite.
Final Act. 5. We are not persuaded that the metes and bounds of this
limitation cannot be ascertained. The test for definiteness under 35 U.S.C.
§ 112, i-f 2, is whether "those skilled in the art would understand what is
claimed when the claim is read in light of the specification." Orthokinetics,
Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986)
(citations omitted). As indicated by Appellant, Figure 2 shows an open area
between the top and bottom bars. Appeal Br. 3. We also note that the
Specification indicates that a knee is said to be supported when inserted into
this area. See Spec. i-f 14 ("Additionally, the top bar member ... can be flat
to provide the most support for the knees."). In light of these disclosures, we
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Application 12/964,713
find that one of ordinary skill in the art would understand the term "an
opened support area" to include the area between the top and bottom
members that is "adapted to receive the connected knee therein." That
Appellant's chose to name this open area "an opened support area" does not
add ambiguity to the claim. Accordingly, we do not sustain this rejection.
Rejection 3
With respect to claim 1, the Examiner finds that Holton discloses an
exercise device with the configuration claimed except that Holton does not
disclose that the mid-section of the top member is stationary or that the
device has two cords attached to each of the top and bottom members in a
vertical parallel arrangement as claimed. Final Act. 6-7. The Examiner
relies on Winkler with respect to teach a top member with a stationary mid-
section, and the Examiner relies on Hebert to disclose two cords in vertical
parallel arrangement attached to two end members. Id.
As discussed below, Appellant's arguments do not persuade us of
error in the Examiner's findings and conclusions.
Appellant first argues that "Holton and [Hebert] teaches away from
the present invention as defined in claim 1." Appeal Br. 5 (emphasis
omitted). In support, Appellant first asserts that Holton includes a connected
ring that "makes it inoperable to support the bent knee configuration to be
placed within the opened area as claimed in the present invention." Id. On
this point, we note that the rejection is premised on modifying Holton to
include two cords in a vertical parallel arrangement, thus eliminating the
connecting ring. Thus, it is irrelevant to the rejection before us whether
Holton's unmodified device is adapted to be placed on the knee as claimed.
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Appellant also indicates that "the Examiner has not laid out the
parameters that would cause one skilled in the art to remove the ring in
Holton." Appeal Br. 5. We disagree. The rejection states:
However, figures 1 and 6 of Hebert teach substituting a
resistance means 12 connected via a ring 18 (see figure 6) with
a resistance means that has a cord member (top 12) connecting
the top end of left handle element 14 to the top end of the right
handle element 14 and a cord member (bottom 12) connecting
the bottom end of the left handle element 14 to the bottom end
of the right handle element 14 (parallel arrangement) (see figure
3).
Therefore, it would have been obvious to one of ordinary
skill in the art at the time the invention was made to substitute
Holton's orientation of the cord members with the parallel
arrangement of the cord members, as taught by Hebert, to
provide a well-known orientation of cord members for
exercising and therapy and to simplify manufacturing and use
by reducing the number of parts required for the device.
Final Act. 7. The Examiner also finds that "one can see from [Hebert's]
disclosure, two substitute means for achieving a desired resistance between
two handle elements, with or without a ring" and that it would have been
obvious to modify Holton "in order to achieve a desired biasing force
against the user's body." Thus, the Examiner laid out how and why one of
ordinary skill in the art would have modified Holton based on the teachings
of Hebert, and Appellant has not identified any error in the Examiner's
reasomng.
Next, Appellant states:
[Hebert] discloses an opened area in Figure 1, but also discloses
the ring configuration of Holton Figure 6. See Exhibit C. In
column 3, lines 40-45, the device of [Hebert] is specifically
designed to support the breast area. Thus, one skilled in the art
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would not look to [Hebert] to support the knee configuration of
the present invention.
Appeal Br. 5. We are not persuaded that Hebert's teaching of two
embodiments and its intended use to support the breast area shows that
Hebert teaches away from the claimed invention. A reference may be said
to teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Finally, we are not persuaded by Appellant's argument that "Winkler
does not teach independent adjustment of the chords upon knee as defined in
Claim 1." Appeal Br. 5 (emphasis omitted). This argument is not
commensurate with the scope of claim 1, which is silent regarding any
adjustment of the cord members. Further, Appellant "submits that neither
Holton nor [Hebert] discloses the requirement to independently adjust each
flexible cord member as claimed in 4 and 6." Reply Br. 3. However, this
argument does not adequately address the rejection made, which relies on
Winkler as teaching the limitations of claims 4 and 6. See Final Act. 8.
Based on the foregoing, we are not persuaded of error in the
Examiner's rejection of claim 1 over Holton, Hebert, and Winkler.
Accordingly, we sustain the rejection of claim 1. For the same reasons, we
sustain the rejection of claims 2-8, which depend from claim 1.
Rejection 4
With respect to claim 9, the Examiner finds that Holton, Winkler, and
Hebert teach a device as recited in claim 1 and that the use of the device as
required by claim 9 would have been obvious in light of the method taught
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in iviikell. Final Act. 9--10. As discussed below, we are not persuaded of
error by Appellant's argument.
Appellant argues that "Mikell discloses a different method than the
present invention as defined in claim 9." Appeal Br. 6 (emphasis omitted).
In support, Appellant asserts:
As shown in Figure 2 in Exhibit D, Mikell discloses a method
which is oscillating the foot at the ankle joint so that a person
exercises all bones and muscles. Additionally the foot is
secured within the device as shown in Figure 2. The present
invention requires the underside of the mid-section of the foot
to freely rotate upon the bottom bar, as shown in Exhibit A.
Thus, Mikell does not teach the method of the present invention
and one skilled in the art would not look to Mikell to function
as claimed in the present invention. Thus, the combined
teachings as disclosed by the examiner does [sic] not teach the
claimed invention.
Id. Mikell discloses a method in which the user oscillates the foot at the
ankle joint to exercise the bones and muscles of the leg. See Mikell col. 2,
11. 2--4. We agree with the Examiner that oscillating the foot in iviikell' s
device as shown in Figures 1-3 would result in some rolling of the foot
backward and forward as claimed. See Ans. 6-7. Finally, Appellant asserts
that "[t]here is no need to individually tension the flexible cord member as in
claim 9." Reply Br. 3. However, Appellant relates this assertion to the
devices of Holton and Hebert without addressing the Examiner's findings
regarding Winkler related to the adjustability of the cord members. Thus,
the argument does not show error in the rejection.
Based on the foregoing, we are not persuaded of error in the
Examiner's rejection of claim 9. Accordingly, we sustain this rejection.
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CONCLUSION
For the reasons set forth above, we affirm the rejection of claims 1-9
under 35 U.S.C. § 103(a); we reverse the rejection of claim 1 under
35 U.S.C. § 112, first paragraph; and we reverse the rejection of claims 1-9
under 35 U.S.C. § 112, second paragraph.
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
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