Ex Parte Hama et al

Patent Trial and Appeal Board

Jul 25, 2017

12994924 (P.T.A.B. Jul. 25, 2017)

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.
12/994,924 05/27/2011 Seiji Hama MAEDA6.001APC 6844
20995 7590 07/27/2017
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
HICKS, VICTORIA J
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
07/27/2017 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):
jayna.cartee@knobbe.com
efiling @ knobbe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEIJI HAMA and MASAFUMI OOTSUBO1
Appeal 2015-005449
Application 12/994,924
Technology Center 3700
Before LINDA E. HORNER, JEFFREY A. STEPHENS, and
NATHAN A. ENGELS, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants2 seek our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Office Action (“Final Act.”) rejecting claims 1, 2, and 5—
10, which are all the claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.
1 Setsuko Ootsubo filed as a legal representative of inventor Masafumi
Ootsubo (deceased).
2 The real party in interest is identified as Hiroshima University. App. Br. 3.
Appeal 2015-005449
Application 12/994,924
Claimed Subject Matter
Claim 1, the sole independent claim on appeal, is reproduced below to
illustrate the claimed subject matter.
1. A pelvic belt, comprising:
a pressing member configured to press an area of hip at a
location corresponds to a hip joint; and
a fixing member configured to be tied to the hip for
covering the hip joint corresponding area and further configured
to push the pressing member toward the hip joint
wherein the fixing member is configured to place the
pressing member at a location corresponds to a dimple of the hip
joint, the dimple extending from an outer edge of gluteus
maximus along a horizontal direction toward a lateral side, and
wherein at least a part of the fixing member is inserted through
an insertion opening of the pressing member to hold the pressing
member and to allow adjustment of relative location of the
pressing member in a longitudinal direction of the fixing
member.
Rejections
I. Claims 1, 2, and 5—10 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement. Final Act. 3^4.
II. Claims 1, 2, and 5—10 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite. Final Act. 4.
III. Claims 1, 2, and 6—10 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Wilke (US 388,608, issued Aug. 28, 1888). Final Act. 5—7.
IV. Claim 5 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Wilke and Brown (US 3,867,930, issued Feb. 25, 1975).
Final Act. 7—8.
2
Appeal 2015-005449
Application 12/994,924
DISCUSSION
Rejection I— Written Description
The Examiner finds the Specification “only provides support for the
pressing member being place[d] on a dimple of the hip joint, and not at a
location corresponding to a dimple of the hip joint as claimed” in claim 1.
Final Act. 3^4.3 The Examiner further explains that the claimed
correspondence is broad and can reasonably be interpreted in many ways
that are not supported by Appellants’ original Specification. Ans. 7. For
example, a dictionary defines “correspond” as being in agreement or parallel
with something, and “[tjhere is no teaching in [Appellants’] original
specification of the pressing member being positioned at a location that is
parallel to or that simply agrees with (defined: to be similar or in harmony
with) a dimple of the hip joint.” Ans. 7—8.
Appellants argue the disputed limitation finds support in Figures 2 and
4, and paragraphs 35, 36, 43, and 54 of the Specification. App. Br. 4—5;
Reply Br. 2. Appellants contend “the language ‘at a location corresponding
to a dimple of the hip joint’ was selected to indicate that the pressing
member is not placed directly on the dimple of the hip joint,” and instead “is
placed at the location corresponding to the dimple on the skin or overlying
clothing.” App. Br. 5.
We agree with Appellants that the Specification demonstrates
possession, at the time of filing, of claim 1 ’s limitation that “the fixing
member is configured to place the pressing member at a location
3 The Examiner finds two additional limitations in claim 1 are not supported,
but does not explain which portions of the limitations lack support or
provide further explanation. Final Act. 3.
3
Appeal 2015-005449
Application 12/994,924
correspond[ing]4 to a dimple of the hip joint.” Paragraph 54 uses the term
“corresponding” in a similar way as used in claim 1 to describe “pressing
members 2, 2 positioned at portions corresponding to the backside of the hip
joints 110 of Patient A.” Spec. para. 54 (emphasis added). As Appellants
point out, Reply Br. 2, the Specification describes the location of dimple 113
in the same location, “located right behind the hip joint 110,” Spec. para. 35.
Therefore, we understand placing the pressing member “at a location
correspond[ing] to a dimple of the hip joint” to mean the same thing as
stated elsewhere in the Specification, i.e., “positioned in the left and right
dimples 113 of the hips 111 that are right behind the hip joints 110,” Spec,
para. 36. In view of these descriptions in the Specification, we do not
interpret “correspond” as broad enough to cover simply being parallel with
the location of the hip joint.
In view of the foregoing, we do not sustain the rejection of claims 1,
2, and 5—10 under 35 U.S.C. § 112, first paragraph, as failing to comply with
the written description requirement.
Rejection II—Indefiniteness
The Examiner concludes claim 1 is indefinite because there is
insufficient antecedent basis for “the hip joint corresponding area.” Final
Act. 4. Appellants argue “a person of ordinary skill in the art would clearly
understand that ‘an area of a hip at a location corresponds to a hip joint’ . . .
provides sufficient antecedent basis for [‘]the hip joint corresponding area.’”
App. Br. 5—6.
4 We do not address the objection to claim 1 noting that the phrase “location
corresponds” is a grammatical error as used in claim 1. Final Act. 2.
4
Appeal 2015-005449
Application 12/994,924
The Examiner maintains that “the hip joint corresponding area” could
refer to an area on a separate structure to which the hip joint corresponds,
and it is, therefore, “unclear if the recited ‘an area of a hip at a location
corresponding to a hip joint’ and ‘the hip joint corresponding area’ refer to
the same areas of a body or structure.” Ans. 8. Appellants respond that
“there is only one ‘area’ recited prior to the limitation of ‘the hip joint
corresponding area,”’ and, therefore, a person of ordinary skill in the art
would clearly understand “the hip joint corresponding area” to refer back to
the “area of [a] hip at a location correspond[ing] to a hip joint” recited
earlier in the claim. Reply Br. 3.
Appellants’ argument prevails here. Although the words “hip joint
corresponding area” do not coincide exactly with the earlier-recited “area of
[a] hip at a location correspond[ing] to a hip joint,” the same words are used.
In addition, there is no other area recited in the claim to which “the hip joint
corresponding area” might refer. Thus, we agree with Appellants that one of
ordinary skill in the art would understand the claim phrases “an area of [a]
hip at a location correspond[ing] to a hip joint” and “the hip joint
corresponding area” to refer to the same area.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 1, 2, and 5—10 under 35 U.S.C. § 112, second paragraph, as
indefinite.
Rejection III—Anticipation by Wilke
We have reviewed the Examiner’s rejection of claims 1, 2, and 6—10
as anticipated by Wilke, in light of Appellants’ arguments (App. Br. 6—8;
Reply Br. 3—5). We concur with Appellants’ argument (App. Br. 8) that the
5
Appeal 2015-005449
Application 12/994,924
Examiner has not shown Wilke discloses the fixing member is configured to
be tied to the hip “for covering the hip joint corresponding area.”
Appellants argue that if a patient were to wear Wilke’s truss with the
pad D, d facing his or her hip, “the strap H would not cover an area of the
hip that corresponds to a hip joint because the strap H has no overlapping
area with the pad that might press the patient’s hip at a location that
corresponds to a hip joint.” App. Br. 8.
The Examiner responds:
Because the position of the pressing member (C, d, D, h) is
adjustable . . . and the fixing member (5) [sic, H] is attached
below the pressing member (C, d, D, h), adjustment of the
pressing member (C, d, D, h) to a location that corresponds to a
hip joint would also result in the fixing member (H) being
positioned such that it covers (is positioned over) the hip joint
corresponding area as claimed.
Ans. 9—10.
We do not follow the reasoning of the Examiner. We interpret claim
1 to require that the fixing member cover an area of the hip joint overlapping
with the area covered by the pressing member, and that the fixing member
push the pressing member toward the hip joint at this location. Consistent
with the Examiner’s finding discussed above, Wilke discloses that strap H is
attached to the pad by a buckle, h, at the bottom end of the pad. Wilke 1:69—
70, Fig. 1. Wilke’s strap H, therefore, does not cover the same area as the
pressing member. As a result, when Wilke’s pad is pressed against the
dimple of the hip joint, Wilke’s strap H would not cover this area and push
the pressing member toward the hip joint at this location. Accordingly, the
Examiner’s finding that Wilke’s strap H is the claimed “fixing member
configured to be tied to the hip for covering the hip joint corresponding area
6
Appeal 2015-005449
Application 12/994,924
and further configured to push the pressing member toward the hip joint,”
Final Act. 5, Ans. 9—10, is in error.
In view of the foregoing, on this record we do not sustain the rejection
of claim 1 as anticipated by Wilke.5 For the same reasons, we do not sustain
the rejection on the same ground of claims 2 and 6—10, which depend from
claim 1.
Rejection IV— Obviousness over Wilke and Brown
The rejection of claim 5 as obvious over Wilke and Brown (Rejection
IV) relies on the same unsupported findings as the rejection of claims 1, 2,
and 6—10 discussed supra. Accordingly, we do not sustain the Examiner’s
decision rejecting claim 5, as set forth in Rejection IV, for the same reasons
we do not sustain the Examiner’s decision rejecting claim 1.
DECISION
We reverse the Examiner’s rejection of claims 1,2, and 5—10.
REVERSED
5 Although the Board is authorized to enter a new ground of rejection under
37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects
not to do so. See Manual of Patent Examining Procedure (MPEP)
§ 1213.02.
7