Ex Parte Harrison

Board of Patent Appeals and Interferences

Sep 3, 2008

10439363 (B.P.A.I. Sep. 3, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte SHELTON E. HARRISON, JR.
__________

Appeal 2008-3532
Application 10/439,363
Technology Center 3700
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Decided: September 3, 2008
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Before ERIC B. GRIMES, RICHARD M. LEBOVITZ, and MELANIE L.
McCOLLUM, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a physical
therapy device. The Examiner has rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
BACKGROUND
“Medical research indicates that carpal tunnel syndrome (‘CTS’)
results from and is aggravated by certain causes, including: (1) physical
pressure upon the hand, wrist or forearm . . . ; (2) repetitive motion . . . ;
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(3) pressure exerted upon the carpal tunnel and the nerves of the palm by
overdeveloped hand muscles . . . ; (4) trauma to the hand and wrist.” (Spec.
3-4.) The Specification states that existing devices to prevent or treat CTS
“often do as much damage as they do good” because they can aggravate one
cause of CTS in the process of preventing another (id. at 4). “What is
needed is a device that deters motion without applying pressure to the wrist
or the bones of the hand, particularly pressure to the carpal tunnel area” and
“that deters but does not prevent motion and does not provide resistance to
the flexor muscles of the hand and fingers” (id. at 5).
The Specification discloses “a flexion-discouraging splint … to which
are attached several open-sided rings” (id. at 28). The rings are said to “fit
partially around each of the user's fingers and are made of a flexible
material, such as rubber or plastic, so that the user's fingers can pop out of
the rings when she flexes her fingers to make a fist” (id. at 29).
DISCUSSION
1. CLAIMS
Claims 1-20 are pending and on appeal. Claims 1 and 7 are
representative and reads as follows:
Claim 1: A physical therapy device comprising:
a splint member, said splint member being selected from the group
consisting of (i) an inflatable splint and (ii) a non-inflatable splint;
at least one grasping member suitable for grasping a human finger,
said grasping member being mounted upon said splint member and
configured to release said finger when said finger is flexed; and
an attachment mechanism suitable for attaching said splint member to
the forearm of a human.

Claim 7: The device in claim 1 wherein said attachment mechanism
is removable.
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Figure 67 of the Specification (shown below) illustrates one
embodiment of the invention of claim 1.

Figure 67 is said to show “a perspective view of a portion of the splint
662 being worn by a user 671,” such that the “open-sided rings 661 fit
partially around each of the user's fingers and are made of a flexible
material, such as rubber or plastic, so that the user’s fingers can pop out of
the rings when she flexes her fingers to make a fist” (Spec. 29).
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2. OBVIOUSNESS I
Claims 1-6 and 8-20 stand rejected under 35 U.S.C. § 103 as obvious
in view of Kneisley1 and Clears.2
The Examiner relies on Kneisley as disclosing “an aid device . . .
comprising a non-inflatable splint . . . [and] five grasping members (5)
immovably coupled to the device . . . and spaced apart to retain [the] hand in
[an] open position” (Answer 3, citing Kneisley at Figs. 1 and 2). The
Examiner finds that Kneisley “fails to disclose a flexible grasping member
configured to release a finger when sufficient pressure is applied through
flexion of the finger” (id.).
The Examiner relies on Clears as disclosing “partial finger loops . . .
made of a springy, elastomeric material” (id. at 3-4). The Examiner reasons
that the “partial loops allow for a finger to be removed when sufficient
pressure is applied through flexion of the finger” (id. at 4). The Examiner
concludes that it “would have been obvious to one of ordinary skill in the art
to substitute the finger grasping members of Kneisley for the partial finger
loops, as taught by Clears, in order to allow quick and easy removal of the
device” (id.).
Appellant argues that proposed modification of Kneisley defeats the
clear purpose of Kneisley, and thus the claimed invention is not suggested
by the combination of the references (Appeal Br. 5-6). In particular,
Appellant argues that the references do not suggest the modification of the
golf aid glove of Kneisley to contain the partial finger loops of Clears

1 Kneisley, Des. 267,129, Dec. 7, 1982.
2 Clears, US 6,179,751 B1, Jan. 30, 2001.
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because such loops “would provide no barrier whatsoever between fingers
and club handle, such that the most apparent purpose for a golf glove--
protecting the skin against blisters--would be entirely defeated” (id. at 5) and
because such loops “would not contact the club handle when the user
gripped the club, such that the next purpose of a golf glove--improving club
grip--would be entirely bypassed” (id. at 5-6). Appellant further argues that
“in order for the partial loops of Clears to retain their shape, they must be
made of a semi-rigid material” and that “it seems profoundly unlikely that a
person of ordinary skill in the art would have golfers playing golf with four
or five pointless plastic half-rings stuck to their fingers” (id. at 6).
We agree with Appellant’s arguments that the Examiner erred in
concluding that cited references would have suggested a splint comprising
“at least one grasping member suitable for grasping a human finger, said
grasping member being mounted upon said splint member and configured to
release said finger when said finger is flexed.”
Kneisley is a design patent that discloses a golf aid glove (Kneisley,
abstract). Kneisley’s Fig. 2 is shown below:

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Fig. 2 shows a golf aid glove with a portion that wraps around the wrist and
five cylindrical open tubes for the insertion of the thumb and fingers.
Clears discloses a “device for exercising the tendons and muscles
affected by tennis elbow” that is preferably “a closed band of elastic material
of sufficient circumference to fit around the fingers and thumb of the hand,”
with “four finger loops and one thumb loop” on the band (Clears, abstract).
Clears also discloses that the “wearer repeatedly extends the fingers and
thumb against the tension of the elastic band and then retracts them” (id.).
Fig. 5 of Clears is shown below:

Fig. 5 is said to show “a plan view of a device of the invention in which the
finger loops are partial rather than closed loops” (id. at col. 2, ll. 42-43).
Clears also discloses that the partial loops are “sufficiently ‘springy’ to allow
easy insertion of a finger between the open ends or through the loop, but of
sufficient stiffness to retain the fingers through the repeated cycles of
exercise” (id. at col. 4, ll. 31-35).
We agree with Appellant that the Examiner has not adequately
explained why it would have been obvious to modify Kneisley’s golf aid
glove – which has the apparent purpose of partially protecting the fingers
while gripping the club or aiding in gripping the club with the fingers – by
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incorporating partial loops that would release the fingers when they are
flexed, as necessary to meet claim 1’s limitation of “at least one grasping
member suitable for grasping a human finger, said grasping member being
mounted upon said splint member and configured to release said finger when
said finger is flexed.” Claims 2-6 and 8-20 include the same limitation or a
similar limitation that also requires combining Clears’ partial loops with
Kneisley’s golf aid glove.
We therefore agree with Appellant that the Examiner has not made
out a prima facie case of obviousness based on the cited references, and the
rejection of claims 1-6 and 8-20 under 35 U.S.C. § 103 as obvious in view of
Kneisley and Clears is reversed.
3. OBVIOUSNESS II
Claim 7 stands rejected under 35 U.S.C. § 103 as obvious in view of
Kneisley, Clears, and Kawamura.3
The Examiner relies on Kneisley and Clears as discussed above. The
Examiner further finds that Kneisley and Clears “fail to disclose [that] the
attachment mechanism is removable” (Answer 4). The Examiner relies on
Kawamura as disclosing a removable attachment mechanism (id.). The
Examiner concludes that it would have been obvious “to modify the
attachment mechanism of Kneisley/Clears with the attachment mechanics, as
taught by Kawamura, in order to allow the user to tighten or loosen the
attachment mechanism without affecting the position of the hand portion of
the device.” (Id.).

3 Kawamura, Des. 340,990, Nov. 2, 1993.
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Appellant argues that the additional modifications asserted to be in
view of Kawamura do not cure the deficiency of Kneisley and Clears
(Appeal Br. 14).
We agree with Appellant that the Examiner has not made out a prima
facie case of obviousness of claim 1 based on Kneisley and Clears for the
reasons discussed above. The Examiner has pointed to nothing in
Kawamura that makes up for the deficiency in Kneisley and Clears.
Therefore, the rejection of claim 7 under 35 U.S.C. § 103 as obvious in view
of Kneisley, Clears, and Kawamura is reversed.
SUMMARY
We agree with Appellant that the Examiner has not established a
prima facie case of obviousness based on the evidence of record. We
therefore reverse the rejection of claims 1-20 under 35 U.S.C. § 103.

REVERSED

clj
SHELTON HARRISON, JR.
6643 POPLAR PIKE
MEMPHIS, TN 38119

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