Ex Parte Draper

Patent Trial and Appeal Board

Sep 15, 2016

12852380 (P.T.A.B. Sep. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/852,380 08/06/2010
128128 7590 09/19/2016
Durham Jones & Pinegar, P.C.
Intellectual Property Law Group
3301 North Thanksgiving Way, Suite 400
Lehi, UT 84043
FIRST NAMED INVENTOR
Shane D. Draper
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.
27146-9482USU1 3767
EXAMINER
BROWN, MICHAEL A
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
09/19/2016 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):
ipmail@djplaw.com
jbroadbent@djplaw.com
ckoy@djplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHANE D. DRAPER
Appeal2014-006895 1
Application 12/852,3802
Technology Center 3700
Before ANTON W. PETTING, BRUCE T. WIEDER, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE DECISION
We AFFIRM.
1 Our decision references Appellant's Appeal Brief ("App. Br.," filed Nov.
15, 2013) and Reply Brief ("Reply Br.," filed May 28, 2014), and the
Examiner's Answer ("Ans.," mailed Mar. 28, 2014) and Final Office Action
("Final Act.," mailed Apr. 25, 2013).
2 Appellant identifies "Shane D. Draper" as the real party in interest. App.
Br. 2.
Appeal2014-006895
Application 12/852,380
CLAIMED INVENTION
Appellant's claimed "invention relates generally to [an] apparatus for
bracingjoints of the body, or 'braces,' and, more specifically, to braces for
stabilizing joints to prevent injury thereto while allowing for a full range of
motion or a substantially full range of motion of at least one appendage
associated with the joint." Spec. i-f 2. Claims 1, 13, and 17 are independent.
Claim 1 is representative of the subject matter on appeal:
1. A brace for a joint of a body of a subject, comprising:
at least one engagement element for securing the brace to a body
part of a subject adjacent to a joint of a body of the subject; and
at least one flexible support strap extending from a first location
of the at least one engagement element to a second location of
the at least one engagement element, a position and orientation
of the at least one flexible support strap on the brace
approximating a location and orientation of at least one
connective band of the joint in the body of the subject,
the at least one engagement element and the at least one flexible
support strap configured and arranged to enable full range of
motion of the joint while preventing abnormal motion of the
joint.
REJECTIONS
Claims 1, 2, and 5-12 are rejected under 35 U.S.C. § 102(b) as
anticipated by Hubbard (US 5,944,678, iss. Aug. 31, 1999).
Claims 3, 4, and 13-17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hubbard and Gaylord (US 7,651,472, iss. Jan. 26, 2010).
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Appeal2014-006895
Application 12/852,380
ANALYSIS
Anticipation by Hubbard
We are not persuaded by Appellant's argument that the Examiner
erred in rejecting independent claim 1under35 U.S.C. § 102(b) because
Hubbard does not disclose "a position and orientation of the at least one
flexible support strap on the brace approximating a location and orientation
of at least one connective band of the joint in the body of the subject."
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage
as they would be understood by one of ordinary skill in the art,
taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in applicant's specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). To read a claim in light
of the Specification, one must interpret limitations explicitly recited in the
claim, without reading limitations from the Specification into the claim, to
thereby narrow the scope of the claim by implicitly adding disclosed
limitations that are not recited in the claim. In re Prater, 415 F.2d 1393,
1404---05 (CCPA 1969).
Appellant disputes the Examiner's finding that strap 60, as shown in
Figure 4 of Hubbard, is positioned and oriented in a manner that
approximates the position and orientation of at least one connective band in
the body. App. Br. 6. In particular, Appellant argues that while the top
portion of strap 60 of the ankle brace of Hubbard is closer to the location of
the top of the inferior extensor retinaculum, the lower lateral portion of strap
60 is oriented toward the middle portion of the base of the foot, not toward
the heel, like the lower portion of the inferior extensor retinaculum (Reply
Br. 2-3).
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Appeal2014-006895
Application 12/852,380
The Specification "indicates that a 'connective band' is a band[] of
fibrous connective tissue (e.g., ligaments, tendons, fascia) ... of [a] joint with
which [a] brace is to be used." App. Br. 5 (citing Spec. i-f 10). The scope of
the claim is not limited to a specific body part, strap size, or any particular
connective tissue or tissues. Rather, claim 1 is directed to a brace with a
strap of any size to support any joint in the body, wherein the support strap
is defined by "approximating a location and orientation of at least one
connective band of the joint in the body." Although the Specification
describes various embodiments, it does not provide specific guidance on
how such approximation and orientation is determined with respect to each
connective band. Appellants' Specification, however, provides that "a brace
is positioned around a joint with at least one support strap aligned
approximately over a connective band or group of connective bands to
which the at least one support strap corresponds." Spec. i-f 12. We find that
Hubbard's foot brace is positioned around the ankle-joint, as shown in
Figure 4, wherein support strap 60 is aligned over at least one connective
band, approximating the location and orientation of the inferior extensor
retinaculum, as required by the language of claim 1 and consistent with the
Specification. In other words, claim 1 does not require the support strap to
match the exact shape of a connective band, but only to approximate the
location and orientation of the connective band.
In view of the foregoing, we sustain the Examiner's rejection of
claim 1under35 U.S.C. § 102(b), including claims 2 and 5-12, which are
not argued separately.
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Appeal2014-006895
Application 12/852,380
Obviousness over Hubbard and Gaylord
Appellants do not provide any argument in support of the patentability
of claims 3, 4, and 13-17 except to assert that neither Hubbard nor Gaylord
cures the alleged deficiency discussed above with respect to Hubbard, and
that the claims are allowable over the teachings of Hubbard and Gaylord.
App. Br. 8. We are not persuaded for the reasons set forth above that the
Examiner erred in rejecting independent claims 13 and 17 under 35 U.S.C.
§ 103(a). Therefore, we sustain the Examiner's rejection of independent
claims 13 and 1 7 for substantially the same reasons, including claims 14--16
which depend from claim 13. We also sustain the rejection of dependent
claims 3 and 4, which are not argued separately.
DECISION
The Examiner's rejections of claims 1-17 are sustained.
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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