Ex Parte DeSantisDownload PDFPatent Trial and Appeal BoardJan 12, 201813999800 (P.T.A.B. Jan. 12, 2018) 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. 13/999,800 03/22/2014 Stephanie L. DeSantis Occipital Plagiocephaly 6835 61364 7590 01/12/2018 ROBERT A. VANDERHYE 801 RIDGE DR. MCLEAN, VA 22101-1625 EXAMINER LEE, MICHELLE J ART UNIT PAPER NUMBER 3772 MAIL DATE DELIVERY MODE 01/12/2018 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 STEPHANIE L. DESANTIS Appeal 2017-001770 Application 13/999,800 Technology Center 3700 Before LINDA E. HORNER, NATHAN A. ENGELS, and ERIC C. JESCHKE, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Stephanie L. DeSantis (“Appellant”) seeks our review under 35 U.S.C. § 134(a) of the Examiner’s decision rejecting claims 1-13 and 21- 27. Final Office Action (May 2, 2016) (hereinafter “Final Act.”). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2017-001770 Application 13/999,800 CLAIMED SUBJECT MATTER Appellant’s claimed subject matter relates to “an orthotic and method for treatment of, substantially preventing, or minimizing the possibility of, human infant occipital plagiocephaly and sudden infant death syndrome (SIDS).” Specification 1,11. 4-6 (filed March 22, 2014) (hereinafter “Spec.”). Claims 1,21, and 26 are the independent claims. Claim 1 is reproduced below. 1. An orthotic for treating, substantially preventing, or minimizing the possibility of, human infant occipital plagiocephaly and sudden infant death syndrome, comprising: a garment having an open top portion, a substantially closed front with right and left sides, and a substantially closed rear with right and left sides, and dimensioned to fit a human infant; at least a first receptacle on said front of said garment; at least a second receptacle on said rear of said garment and operatively associated with said first receptacle; and first and second bolsters positionable within said first and second receptacles, respectively, and when positioned therein substantially precluding, or minimizing the possibility of, an infant wearing said garment from rolling over from her or his side to her or his face or back. Appeal Br. 14 (Claims Appendix). EVIDENCE The Examiner’s decision relies upon the following evidence: Eibert US 6,216,276 B1 Apr. 17,2001 Chen US 2009/0222971 A1 Sept. 10,2009 Sanger US 2011/0162660 A1 July 7,2011 2 Appeal 2017-001770 Application 13/999,800 REJECTIONS The Final Office Action includes the following rejections: 1. Claims 1-5, 8, 9, 11, 12, 21, 22, and 24-27 stand rejected under 35 U.S.C. § 102(a)(1) as anticipated by Sanger. 2. Claims 6, 13, and 23 stand rejected under 35 U.S.C. § 103 as unpatentable over Sanger and Chen. 3. Claims 7 and 10 stand rejected under 35 U.S.C. § 103 as unpatentable over Sanger and Eibert. ANALYSIS First Ground of Rejection: Anticipation by Sanger Claims 1 and 21 The Examiner found that Sanger discloses an orthotic as called for in each of independent claims 1 and 21, including a first bolster 214 and a second bolster positionable within first receptacle 290a and second receptacle 16b, respectively, and “when positioned therein substantially precluding, or minimizing the possibility of, an infant wearing said garment from rolling over from her or his side to her or his face or back.” Final Act. 4-5 (citing Fig. 15). In particular, the Examiner explained: [Wjhere a body positioner 214 is already in the first internal sleeve/receptacle and a second body positioner may be inserted into a second internal sleeve 290a on the opposite side in order to prevent the infant from rolling onto their stomach/face from his/her side, since according to [0030], the infant is not maintained in a supine position and is instead turned via the bolsters, “causing the infant’s torso to be tilted generally about their spine”; therefore, the invention of Sanger is capable of preventing an infant from rolling over from her or his side to her or his back, since one side of the infant’s torso is maintained in a raised position. 3 Appeal 2017-001770 Application 13/999,800 Final Act. 5. We disagree with the Examiner’s reading of Sanger as disclosing a garment that precludes an infant from rolling over from her or his side to her or his face or back. See Appeal Br. 5 (“[t]he entire purpose of Sanger is to have the infant lie on her/his back; that is in a supine position”) (footnote omitted). Sanger discloses that body positioner 14, when inserted into one of sleeves 16a, 16b, will be located against the infant’s back lateral to the spine such that “[w]hen the infant is laid on their back, body positioner (14) will elevate one side of the infant’s back upwardly away from the surface on which the infant is laid, causing the infant’s upper torso (above the hips) to be tilted with respect to the surface on which the infant lies.” Sanger 130. In this manner, “the side of the infant’s torso adjacent positioner (14) will be elevated off of the supporting surface (e.g., a mattress), causing the infant’s torso to be tilted generally about their spine.” Id. We understand from this description of the operation of Sanger’s garment that the portion of the infant’s back lateral to the spine on the side opposite to the body positioner 14 remains on the surface of the mattress when body positioner 14 is placed in one of sleeves 16a, 16b. This understanding is strengthened by Sanger’s description that the garment is to “caus[e] an infant’s head to rotate to one side while the infant is sleeping in a supine position.'''’ Id. 132 (emphasis added). The additional body positioner 214, described with reference to the embodiment of Figure 15 of Sanger, is positioned in one of sleeves 290a, 290b below the armpit region of the wearer and is intended “to prevent the infant from rolling onto their stomach.” Id. 1 69. This additional body positioner appears to maintain the 4 Appeal 2017-001770 Application 13/999,800 infant in a supine position and to preclude the infant from resting on her or his side. We agree with Appellant that “supine,” as that term is used in Sanger, would be understood by one having ordinary skill in the art to mean lying on one’s back, face or front upward (Reply Br. 2 n.3) and is not limited to lying flat on one’s back, as intimated by the Examiner (Ans. 14). We further find insufficient support in Sanger for the Examiner’s interpretation that “when Sanger says the infant lies on his/her back or is supine, it is meant that the infant is lying supine relative to the garment, but not relative to the surface on which he/she is lying.” Ans. 14. Further, we do not find that one having ordinary skill in the art would understand “lying on her or his side,” as recited in claims 1 and 21, when interpreted in light of Appellant’s Specification to encompass lying with the infant partially on her or his back, as in Sanger. The Specification describes, in the practice of the method, that when the infant is laid on her or his left side, the bolsters are inserted into the first and second receptacles on the left front and left rear of the garment, and when the infant is laid on her or his right side, the bolsters are inserted into the third and fourth receptacles on the right front and right rear of the garment (as shown in Figures 1 and 2). Spec. 3,11. 22-29; id. at 5,1. 38 - 6,1. 12. Such placement of the bolsters maintains the infant on her or his side and prevents the infant from rolling from her or his side to her or his front or back. By contrast, the placement of Sanger’s bolsters in Figure 15 maintain the infant in a supine position and prevent the infant from rolling from her or his back to her or his side or front. 5 Appeal 2017-001770 Application 13/999,800 For these reasons, we reverse the rejection of independent claims 1 and 21, and their dependent claims 2-6, 8, 9, 11, 12, 22, 24, and 25, as anticipated by Sanger. Claim 26 Claim 26 is directed to an orthotic comprising a garment having “a substantially closed front” and “a substantially closed rear,” “at least a first receptacle external of said front of said garment,” and “at least a second receptacle external of said rear of said garment.”1 Appeal Br. 16 (Claims Appendix). The Examiner found that Sanger’s internal sleeves 290a, 290b are “external of said front of said garment.” Final Act. 9. The Examiner explained that “since sleeves 290a/b are disposed on the surface of front panel 40, they are external to the front 40.” Id. (quoting a definition of “external” from thefreedictionary.com, which defines the term as “located, seen, or used on the outside or surface of something”). The Examiner made a similar finding that Sanger’s internal sleeves 16a, 16b are external to the rear 60. Id. The claim language recites that the receptacles are external to the front and rear “of the garment.” The Examiner’s findings, however, are based on Sanger’s receptacle being external to the front and rear panels. While Sanger’s sleeves, formed on front and rear panels, are external to the panels themselves, it does not necessarily follow that these sleeves also are external to the garment formed by the panels. We agree with Appellant that 1 Claim 26 does not include the limitation of claims 1 and 21 discussed above that “when positioned therein substantially precluding, or minimizing the possibility of, an infant wearing said garment from rolling over from her or his side to her or his face or back.” 6 Appeal 2017-001770 Application 13/999,800 the sleeves are disclosed consistently in Sanger as being “internal” of the garment. Appeal Br. 7-8; Sanger || 27-29, 41, 42, 47, 51, and 69. For this reason, we do not sustain the rejection of claim 26 and its dependent claim 27 as anticipated by Sanger.2 Remaining Grounds of Rejection: Obviousness over Sanger and either Chen or Eibert The remaining grounds of rejection of dependent claims 6, 7, 10, 13, and 23 rely on the same deficient findings as to the disclosure of Sanger as discussed above. Final Act. 10-13. Neither Chen nor Eibert cures these deficiencies. Accordingly, we do not sustain the rejections under 35 U.S.C. § 103 of claims 6, 13, and 23 as unpatentable over Sanger and Chen and of claims 7 and 10 as unpatentable over Sanger and Eibert. DECISION The decision of the Examiner rejecting claims 1-13 and 21-27 is reversed. REVERSED 2 Claim 21 contains claim language identical to claim 26 in this regard. Appeal Br. 15 (Claims Appendix). Thus, these same findings provide an additional reason for not sustaining the rejection of independent claim 21 and its dependent claims 22, 24, and 25 as anticipated by Sanger. 7 Copy with citationCopy as parenthetical citation