Ex Parte Doroski

Board of Patent Appeals and Interferences

Dec 15, 2010

11358442 (B.P.A.I. Dec. 15, 2010)

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.
11/358,442 02/22/2006 Scott M. Doroski 6080
7590 12/15/2010
Scott M. Doroski
6031 Bingley Road
Alexandria, VA 22315
EXAMINER
MATTER, KRISTEN CLARETTE
ART UNIT PAPER NUMBER
3771
MAIL DATE DELIVERY MODE
12/15/2010 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 SCOTT M. DOROSKI
____________

Appeal 2009-008737
Application 11/358,442
Technology Center 3700
____________

Before JOHN C. KERINS, STEFAN STAICOVICI, and
FRED A. SILVERBERG, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-008737
Application 11/358,442

2
STATEMENT OF THE CASE
Scott Doroski (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision finally rejecting claims 1, 4, 6-13 and 15-19. Claims 2,
3, 5 and 14 have been canceled. We have jurisdiction over this appeal under
35 U.S.C. § 6.

THE INVENTION
Appellant’s invention relates to a strap that keeps a person’s arm from
abducting above the shoulder during sleep. Spec. 1, para. [0001] and figs. 1
and 3.
Claims 1 and 6 are representative of the claimed invention and read as
follows:
1. An arm restraint, comprising:

a first lower strap that is adapted to be wrapped around a right
leg of a person’s body;

a first extension part coupled to the first lower strap at one end
of the first extension part, the first extension part including an
adjusting unit for adjusting a length of the first extension part;

a first upper strap coupled to the first extension part at another
end of the first extension part;

a first pivoting unit provided between the first lower strap and
the first extension part, for allowing the first extension part to
move 360 degrees with respect to the first lower strap; and

a second pivoting unit provided between the first upper strap
and the first extension part, for allowing the first extension part
to move 360 degrees with respect to the first upper strap;

Appeal 2009-008737
Application 11/358,442

3
a second lower strap that is adapted to be wrapped around a left
leg of the person’s body;

a second extension part coupled to the second lower strap at one
end of the second extension part, the second extension part
including a second adjusting unit for adjusting a length of the
second extension part; and

a second upper strap coupled to the second extension part at
another end of the second extension part,

wherein the second upper strap is adapted to be wrapped around
a right arm of the person’s body,

wherein the first upper strap is adapted to be wrapped around a
left arm of the person’s body,

wherein the first extension part is sized by way of the adjusting
unit such that the arm cannot abduct above a shoulder level of
the person’s body, and

wherein the first extension part includes a stretchable portion
that allows the first extension part to be increased in length by
an outward force provided on one or both ends of the first
extension part, and wherein the first extension part includes a
first non-stretchable portion provided between the stretchable
portion and the first upper strap, and a second non-stretchable
portion provided between the stretchable portion and the first
lower strap.

6. A method of restraining arm movement of a person
during sleep while maintaining comfort for the person during
sleep, comprising:

fitting an upper strap of an arm restraint to an arm of the
person;

Appeal 2009-008737
Application 11/358,442

4
fitting a lower strap of the arm restraint to a lower body portion
of the person, or to a fixedly positioned object adjacent to the
lower body portion of the person; and

adjusting a size of an extension portion that is coupled at one
end to the upper strap and that is coupled at another end to the
lower strap, so that the arm of the person cannot abduct above a
shoulder level of the person.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Picard US 5,188,365 Feb. 23, 1993
Herridge US 5,397,122 Mar. 14, 1995
Taylor US 5,507,046 Apr. 16, 1996
Chapman US 2002/0092531 A1 Jul. 18, 2002

The following rejections are before us for review:
The Examiner rejected claims 1, 4, 16 and 18 under 35 U.S.C.
§ 103(a) as unpatentable over Chapman and Herridge.
The Examiner rejected claims 6, 7, 15, 17 and 19 under 35 U.S.C.
§ 103(a) as unpatentable over Chapman.
The Examiner rejected claims 8, 9 and 11 under 35 U.S.C. § 103(a) as
unpatentable over Picard.
The Examiner rejected claims 10 and 13 under 35 U.S.C. § 103(a) as
unpatentable over Picard and Herridge.
Appeal 2009-008737
Application 11/358,442

5
The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as
unpatentable over Picard and Taylor.

THE ISSUES
1. Whether the combined teachings of Chapman and Herridge would
have prompted a person of ordinary skill in the art to modify the
restraining device of Chapman with the pivot mechanism of Herridge.
2. Whether Chapman teaches a method of restraining arm movement of
a person, while maintaining comfort for the person, during sleep, as
called for by independent claim 6.
3. Whether the golf swing training harness of Picard constitutes an “arm
restraint” having a “lower strap” that is “adapted to be wrapped
around only one leg of a person’s body,” as called for by independent
claim 8.
4. Whether the combined teachings of Picard and Herridge would have
prompted a person of ordinary skill in the art to modify the training
harness of Picard with the pivot mechanism of Herridge.

OPINION
Issue (1)
The Examiner found that Chapman discloses all the features of
independent claim 1 with the exception of “a first and second pivoting unit
provided between the straps and the extension parts to allow 360-degree
movement.” Ans. 7. However, the Examiner further found that Herridge
discloses “connection means that allow 360-degree rotation are well known
in the art.” Id. Accordingly, the Examiner concluded that:
Appeal 2009-008737
Application 11/358,442

6
[I]t would have been obvious to one of ordinary
skill in the art at the time the invention was made
to have replaced the connection means (20, 6, 8,
18, 16) of Chapman with a swivel attachment that
allows 360-degree movement as taught by
Herridge, II in order to allow more degrees of
freedom of movement when restraining an
individual so as to help avoid hurting him or her.
Id.
Appellant argues that “Chapman already provides sufficient degrees
of freedom by way of his 180 degree pivoting mechanisms, whereby any
additional degrees of freedom would likely result in the person being
restrained to have enough room to get out of the restraint.” App. Br. 14. See
also, Reply Br. 6. In response, the Examiner takes the position that using
the pivoting mechanism of Herridge in the restraining device of Chapman
“may make the restraining device easier for users to don and doff on persons
being restrained” and would provide additional comfort to persons being
restrained. Ans. 12.
Although we appreciate the Examiner’s position that additional
degrees of freedom may make the restraining device easier to put on and
take off persons being restrained and may also provide additional comfort,
nonetheless, we find that a person of ordinary skill in the art would have
readily recognized that allowing Chapman’s restraining device to
incorporate too much movement, as taught by Herridge, would diminish the
restraining capabilities of the device. In other words, allowing for too many
degrees of freedom would limit the restraining capabilities of Chapman’s
device as modified by Herridge and hence, would allow the person being
restrained to hurt himself or others or could aid in the person’s removal of
the device.
Appeal 2009-008737
Application 11/358,442

7
In conclusion, the modification proposed by the Examiner of
modifying the restraining device of Chapman with the pivot mechanism of
Herridge would not have been obvious to a person of ordinary skill in the
art. Accordingly, the rejection of independent claim 1 and its dependent
claims 4, 16 and 18 cannot be sustained. See In re Fine, 837 F.2d 1071,
1076 (Fed. Cir. 1988) (If an independent claim is nonobvious under 35
U.S.C. § 103, then any claim dependent therefrom is nonobvious).

Issue (2)
Appellant argues that Chapman fails to disclose a method of
restraining arm movement of a person while maintaining comfort for the
person during sleep. App. Br. 16. According to Appellant,
. . . paragraph 0028 of Chapman clearly identifies
that wrist modules are used to be coupled to wrists,
and ankle modules are used to be coupled to
ankles, whereby the wrist modules are used to
couple one wrist to the other wrist, and whereby
the ankle modules are used to couple one ankle to
the other ankle. Paragraph 0028 of Chapman does
not contemplate using a module to couple an ankle
(on one end) to a wrist (on the other end). . . .
App. Br. 16.
We find Appellant’s arguments unpersuasive for essentially the same
reasons as the Examiner. See Ans. 9-10. Although Chapman does not
explicitly teach attaching one of the cuffs to a wrist and the other respective
cuff to an ankle, it is well established that what a reference teaches or
suggests must be examined in the context of the knowledge, skill, and
reasoning ability of a skilled artisan. What a reference teaches a person of
ordinary skill is not limited to what a reference specifically “talks about” or
Appeal 2009-008737
Application 11/358,442

8
what is specifically “mentioned” or “written” in the reference. Syntex
(U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005). In this
case, it is our finding that Chapman discloses a restraining device that can be
used on a person who is asleep, including ankle and wrist cuff modules 10
having an adjustable interconnect 60, wherein the “ankle cuff modules are
identical to the wrist modules in all respects except optionally being larger
sized.” Chapman, para. [0028]. Emphasis added. See also, Chapman,
paras. [0025] and [0047] and fig. 4. Furthermore, Chapman discloses that
because all the elements are flexible and soft, the restrained person will not
experience significant discomfort by struggling against the restraints. Id.,
para. [0046]. As such, given the similarity of structure and function of
Chapman’s and Appellant’s devices we agree with the Examiner that,
. . . the structure of Chapman is fully capable of
performing the instant method steps and it would
have been obvious to one of ordinary skill in the
art at the time of the invention to perform the
recited method steps for restraining the arms of a
user … while also maintaining comfort during
restraint. For example, because all of the cuff
modules can be identical (i.e., ankles and wrists),
there is no structure that would prevent a user from
performing the recited method steps. . . .

Ans. 5. Emphasis added.
In conclusion, the rejection of claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Chapman is sustained. With respect to claims 7, 17, and
19, Appellant does not present additional arguments. Accordingly, the
rejection of claims 7, 17, and 19 is likewise sustained.
Regarding claim 15, Appellant argues that there would not be any
reason to use two separate two-strap devices, as disclosed by Chapman, on a
Appeal 2009-008737
Application 11/358,442

9
single person because (1) one of Chapman’s devices would be sufficient to
restrain a person and (2) adding another restraining device would lead to
entanglement of the devices. App. Br. 17 and Reply Br. 3.
At the outset, we note that Appellant has not provided any evidence to
show that one of Chapman’s devices would be sufficient to restrain a person
or that adding another restraining device would lead to entanglement of the
devices. An attorney's arguments in a brief cannot take the place of
evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Furthermore,
an artisan must be presumed to know something about the art apart from
what the references disclose. See In re Jacoby, 309 F.2d 513, 516 (CCPA
1962). After all, “[a] person of ordinary skill is also a person of ordinary
creativity, not an automaton.” KSR Int'l. Co. v. Teleflex lnc., 550 U.S. 398,
421 (2007). In this case, we agree with the Examiner that “it would have
been obvious to one having ordinary skill in the art at the time the invention
was made to have used an arm restraint on both or opposite sides of the body
for more tightly restraining the patient.” Ans. 6. As such, we further agree
with the Examiner that a person of ordinary skill in the art would have
readily appreciated that it would have been advantageous to use two of
Chapman’s devices to restrain a person in order to allow “all limbs to be
restrained so that a patient could not free him or herself.” See Advisory
Action, mailed 07/09/2008, p. 2.
In conclusion, for the foregoing reasons, we shall also sustain the
rejection of claim 15.

Appeal 2009-008737
Application 11/358,442

10
Issue (3)
Appellant argues the rejection of claims 8, 9 and 11 under 35 U.S.C.
§103(a) together as a group. App. Br. 15-16. Therefore, we have selected
claim 8 as the representative claim to decide the appeal, with claims 9 and
11 standing or falling with claim 8.
Appellant argues that the waist strap of Picard cannot be “adapted to
be wrapped around only one leg of a person’s body or an object adjacent to
the only one leg of the person’s body.” App. Br. 15, Reply Br. 1-2.
Appellant further argues, “Picard only describes his training harness as a
golf swing training aid, and to assert that one would think to use Picard’s
golf swing training aid for other purposes. . . is clearly unwarranted based on
the disclosure of Picard.” App. Br. 15.
We find Appellant’s arguments unpersuasive for the following
reasons. At the outset, we agree with the Examiner that “the device of
Picard need only be capable of meeting the functional language (i.e.,
wrapping around arms and/or legs) to read on the instant invention.” Ans. 9.
Emphasis added. Moreover, it is well established that features of an
apparatus may be recited either structurally or functionally, however, claims
directed to an apparatus must be distinguished from the prior art in terms of
structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78
(Fed. Cir. 1997). “[A]pparatus claims cover what a device is, not what a
device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464,
1468 (Fed. Cir. 1990). Therefore, as long as the device of Picard is capable
of acting as an arm restraint having a lower strap that is adapted to be
wrapped around only one leg of a person’s body, the device satisfies the
limitation of an “arm restraint,” as called for by independent claim 8. In this
Appeal 2009-008737
Application 11/358,442

11
case, it is our finding that Picard discloses a training harness 2, (arm
restraint) having a removable adjustable size belt 4 (lower strap). Picard,
col. 3, ll. 32 and 47-52 and fig. 1. See also Ans. 3. We agree with the
Examiner that, “the lower strap of Picard is fully capable of being wrapped
around only one leg of a person because it is an adjustable length strap.”
Ans. 9. Furthermore, since the belt (lower strap) of Picard is adjustable, it is
also fully capable of being wrapped around an object adjacent to the only
one leg of a person’s body. Accordingly, the device of Picard functions as
an “arm restraint” having an adjustable “lower strap” that is fully capable of
being wrapped around only one leg of a person’s body or an object adjacent
to the only one leg of the person’s body.
Moreover, Appellant has not provided any evidence to show that
Picard’s training harness cannot be used as an arm restraint. An attorney’s
arguments in a brief cannot take the place of evidence. In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974). In conclusion, because the Picard device is
capable of acting as an “arm restraint” having an adjustable “lower strap”
that is fully capable of being wrapped around only one leg of a person’s
body or an object adjacent to the only one leg of the person’s body, the
device satisfies the limitations of an “arm restraint,” and a “lower strap,” as
called for by independent claim 8. Accordingly, the rejection of claim 8 and
of claims 9 and 11, standing or falling with claim 8, is sustained.
With respect to the rejection of dependent claim 12 under 35 U.S.C.
§ 103(a) as being unpatentable over Picard and Taylor, Appellant relies on
the same arguments as the arguments presented in regard to the rejection of
claim 8 over Picard. Reply Br. 6. Accordingly, for the reasons presented
Appeal 2009-008737
Application 11/358,442

12
supra, the rejection of claim 12 over the combined teachings of Picard and
Taylor is likewise sustained.

Issue (4)
Appellant argues that the combination of Picard and Herridge “fails to
meet all of the features recited in claim 13” because Herridge does not
disclose a 360 degree pivoting mechanism on the upper portion of the
extension parts of the device. App. Br. 18, Reply Br. 4.
We find Appellant’s argument unpersuasive because Appellant
appears to attack the teachings of Picard and Herridge individually, rather
than the combination of Picard and Herridge. Nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co, 800 F.2d 1091, 1097 (Fed. Cir. 1986). We further disagree with
Appellant’s argument, because obviousness does not require that all of the
features of the secondary reference be bodily incorporated into the primary
reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981). In this case, the
Examiner has cited Herridge “merely to show that such 360 degree pivoting
mechanisms are well known and commonly used in the art.” Ans. 11.
Appellant further argues that including an additional degree of
freedom to the top part of the golf swing training aid of Picard as modified
by Herridge “would not serve its purpose of providing for a golf swing along
a proper plane as the golf club is moved from a beginning position to an
ending position during a golf swing.” App. Br. 18. At the outset, we note
that Appellant has not provided any evidence to show that the pivot
mechanism of Herridge is not capable of working with the device of Picard.
Appeal 2009-008737
Application 11/358,442

13
An attorney's arguments in a brief cannot take the place of evidence. In re
Pearson, 494 F.2d at 1405. In this case, the Examiner found, and we agree,
that Picard discloses all the limitations of claim 13 with the exception of
pivoting units. Ans. 6. Furthermore, both the Examiner and Appellant
agree that both Picard and Herridge disclose golf swing training aids. Ans. 6
and App. Br. 17. Finally, the Examiner found that Herridge discloses the
use of pivoting units having 360-degree movement in a golf swing training
aid. Ans. 6. Hence, Appellant’s invention is nothing more than Picard’s
training harness in which connection means 6, 8, 16, and 18 (see Figure 1 of
Picard) have been replaced with the pivot units of Herridge. Therefore,
modifying the training harness of Picard to include the pivot units of
Herridge would not have been uniquely challenging to a person of ordinary
skill in the art, because it is no more than “the simple substitution of one
known element for another.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007). The modification appears to be the product not of innovation
but of ordinary skill and common sense.
Moreover, Appellant has not alleged, much less shown, that the
modification of Picard to include the pivot units of Herridge would have
been beyond the skill of a person of ordinary skill in the art. In conclusion,
we agree with the Examiner that one of ordinary skill in the art would have
found it obvious to use the pivoting units of Herridge “for any or all of the
connectors in Picard’s device because such connectors are well known and
commonly used in the art, and use of 360 degree pivoting mechanisms
would have added comfort and provided more degrees of freedom.” Ans.
11. Therefore, the Examiner has provided an articulated reasoning with
rational underpinning to support the legal conclusion of obviousness.
Appeal 2009-008737
Application 11/358,442

14
Lastly, we agree with the Examiner that it is the nature of the resistive
material of Picard’s device that allows it to function as a training harness and
not the connections. See Ans. 11.
In conclusion, for the foregoing reasons, the rejection of claim 13
under 35 U.S.C. § 103(a) as being unpatentable over Picard and Herridge is
sustained.
With respect to the rejection of claim 10, Appellant makes similar
arguments as presented with respect to the rejection of claim 13. App. Br.
18-19. Accordingly, for the reasons discussed above, these arguments are
not persuasive. As such, the rejection of claim 10 over the combined
teachings of Picard and Herridge is likewise sustained.

CONCLUSIONS
1. The combined teachings of Chapman and Herridge would not have
prompted a person of ordinary skill in the art to modify the restraining
device of Chapman with the pivot mechanism of Herridge.
2. Chapman teaches a method of restraining arm movement of a person,
while maintaining comfort for the person, during sleep, as called for
by independent claim 6.
3. The golf swing training harness of Picard constitutes an “arm
restraint” having a “lower strap” that is “adapted to be wrapped
around only one leg of a person’s body,” as called for by independent
claim 8.
4. The combined teachings of Picard and Herridge would have prompted
a person of ordinary skill in the art to modify the training harness of
Picard with the pivot mechanism of Herridge.
Appeal 2009-008737
Application 11/358,442

15
DECISION
The Examiner’s decision is affirmed as to claims 6-13, 15, 17 and 19
and reversed as to claims 1, 4, 16 and 18.

AFFIRMED-IN-PART

mls

SCOTT M. DOROSKI
6031 BINGLEY ROAD
ALEXANDRIA, VA 22315