Ex Parte Hopkins

Board of Patent Appeals and Interferences

Dec 21, 2006

10244011 (B.P.A.I. Dec. 21, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PENNINGTON S. HOPKINS
____________

Appeal No. 2006-2280
Application No. 10/244,011
Technology Center 3600
____________

ON BRIEF
____________

Before CRAWFORD, LEVY and HORNER, Administrative Patent Judges.
HORNER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the examiner's
final rejection of claims 1-28, all of the claims pending in the application.
We affirm-in-part and enter new grounds of rejection of claims 17, 18 and
26-28 pursuant to 37 C.F.R. § 41.50(b).
Appeal No. 2006-2280 Page 2
Application No. 10/244,011

BACKGROUND
The appellant's invention relates to a support adapted to be mounted on a
crutch or cane. Claims 1 and 23, reproduced below, are representative of the
subject matter on appeal. A copy of all of the claims on appeal can be found in the
appendix to the appellant’s brief.
1. A support adapted to be mounted on a crutch having at
least one longitudinally extending crutch strut of a selected length
with a bottom end for engaging a walking surface and a top end with
at least one under arm support extending laterally from the crutch
strut, or adapted to be mounted on a cane of a selected length with a
cane shaft having a bottom end for engaging a walking surface and a
top end with a handle extending laterally from the can [sic] shaft, the
support comprising:
a flexible pad having a first surface and a second surface in
opposed relation to the first surface;
an adhesive area on at least one of the surfaces of the pad for
adhering to the other surface of the pad upon engaging the other
surface; the pad being adapted to form a tube when folded around
the strut or shaft, the tube having an interior surface provided by the
first surface for frictionally engaging the crutch strut or cane shaft to
mount the tube thereon, the tube further having an exterior
consisting essentially of an exterior surface adapted to frictionally
engage an edge or curved surface to keep the crutch or cane
supported at an angle to the vertical with the bottom end resting on a
Appeal No. 2006-2280 Page 3
Application No. 10/244,011

walking surface, the tube having a length selected to be substantially
less than that of the crutch strut or cane shaft.

23. In combination with a crutch having at least one
longitudinally extending crutch strut with a bottom end for engaging
a walking surface and a top end with at least one under arm support
extending laterally from the crutch strut, or in combination with a
cane with a cane shaft having a bottom end for engaging a walking
surface and a top end with a handle extending laterally from the cane
shaft:
an attachment on the crutch strut or cane shaft, the attachment
having an exterior consisting essentially of an exterior surface for
frictionally engaging an edge or curved surface to keep the crutch or
cane supported with the bottom end resting on a walking surface, the
attachment having a length extending above the center of gravity of
the strut or shaft when the strut or shaft is vertically oriented.

The examiner relies upon the following as evidence of unpatentability:
Carpenter 4,884,730 Dec. 05, 1989
Crusor 6,000,414 Dec. 14, 1999
Finegan 6,036,607 Mar. 14, 2000
Shrader 6,410,848 Jun. 24, 2002
Filed: Apr. 24, 2000
The following rejections are before us for review.
1. Claims 1-14 stand rejected under 35 U.S.C. § 112, second paragraph, for
failing to particularly point out and distinctly claim the invention.
Appeal No. 2006-2280 Page 4
Application No. 10/244,011

2. Claims 1 and 12-14 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Shrader.
3. Claims 1-7, 10-12 and 14 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Finegan.
4. Claims 1, 3-6, 10-12, 14-16, 19-21 and 23-28 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Carpenter.
5. Claims 23, 25, 26 and 28 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Crusor.
6. Claims 8, 9 and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Finegan in view of Shrader.
7. Claims 1-7, 10-12 and 14-21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Carpenter in view of Finegan.
8. Claims 8, 9, 13 and 22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Carpenter in view of Finegan and Shrader.
Rather than reiterate in detail the conflicting viewpoints advanced by the
examiner and the appellant regarding this appeal, we make reference to the
examiner's answer (mailed January 6, 2006) for the examiner's complete reasoning
in support of the rejections and to the appellant's brief (filed October 27, 2005)1
and reply brief (filed March 3, 2006) for the appellant's arguments.

1 The appellant filed a first Appeal Brief on April 18, 2005; however, the examiner found the
brief defective because it did not comply with 37 C.F.R. § 41.37. See Notice of Non-Compliant
Appeal Brief, mailed June 23, 2005. The appellant filed a second Appeal Brief on July 19, 2005,
which was also defective. See Notice of Non-Compliant Appeal Brief, mailed September 27,
2005. The appellant filed a Revised Appeal Brief on October 27, 2005, on which we rely for the
appellant’s arguments. When we refer throughout this opinion to the appellant’s brief, we are
referring to the Revised Appeal Brief.
Appeal No. 2006-2280 Page 5
Application No. 10/244,011

OPINION
In reaching our decision in this appeal, we have carefully considered the
appellant’s specification and claims, the applied prior art, and the respective
positions articulated by the appellant and the examiner. As a consequence of our
review, we make the determinations that follow.
I. Rejection under 35 U.S.C. § 112, second paragraph
The examiner rejected claims 1-14 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and distinctly
claim the subject matter which the appellant regards as the invention. In particular,
the examiner found that a portion in claim 1, which recites that the length of the
tube is substantially less than the length of the crutch strut or cane shaft, is vague
and indefinite because the cane and crutch are unclaimed articles, which makes the
metes and bounds of the claim unclear. Answer, p. 3.
The appellant argues that the scope of the claim is clear, because the
preamble recites that both the crutch strut and cane shaft have selected lengths. As
such, the appellant argues that the crutch and cane are preexisting structures to
which the inventive structure is applied. Brief, p. 11.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the claim
is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs,
Inc., 806 F.2d 1565, 1576, 1 USPQ2d 1081, 1088 (Fed. Cir. 1986) (citations
omitted). In this case, we hold that the claim language that recites the length of the
tube is substantially less than the length of the crutch strut or cane shaft is not
unclear. We find that one skilled in the art would understand that the limitation
depends on the length of the cane or crutch to which the support is attached, and
Appeal No. 2006-2280 Page 6
Application No. 10/244,011

thus the limitation is not vague just because there are many different sizes of
crutches and canes. Accordingly, we do not sustain the examiner’s rejection of
claims 1-14 under 35 U.S.C. § 112, second paragraph.
II. Rejections under 35 U.S.C. § 102(b)
The examiner rejected claims 1-7, 10-12, 14-16, 19-21 and 23-28 under 35
U.S.C. §§ 102(e) and 102(b) over various references. The appellant argues
generally that none of the cited references discloses a pad having “an exterior
surface for frictionally engaging an edge or curved surface to keep the crutch or
cane supported at an angle to the vertical with the bottom end resting on a walking
surface.” Brief, p. 11. We address each rejection in turn.
A. Shrader
The examiner rejected claims 1 and 12-14 under 35 U.S.C. § 102(e) as being
anticipated by Shrader. The appellant argues the rejected claims as a group. Brief,
p. 12. As such, we select claim 1 as a representative claim. 37 C.F.R.
§ 41.37(c)(1)(vii) (2006).
The examiner found that Shrader discloses a flexible pad (20) having
adhesive (11) on one surface to be connected to the other opposing surface, as
shown in Figure 4, when the pad forms the tube, and wherein the adhesive has a
removable patch (12). Answer, p. 3. The examiner further determined that
although Shrader refers to a jacket for a cable, it is capable of being mounted on a
crutch or a cane and the exterior surface of the jacket is capable of frictional
engagement with an edge or surface. Answer, p. 7. The examiner correctly noted
that a recitation of intended use of the claimed invention must result in a structural
difference over the prior art in order to overcome an anticipation rejection, and if a
prior art structure is capable of performing the intended use, then it meets the
Appeal No. 2006-2280 Page 7
Application No. 10/244,011

claim. Answer, p. 7 (citing In re Casey, 152 USPQ 235 (CCPA 1967) and In re
Otto, 136 USPQ 458, 459 (CCPA 1963)).
The appellant argues that Shrader is non-analogous art, and that Shrader
does not anticipate because it fails to solve the problem solved by the structure of
the claims. Brief, p. 12 and Reply Brief, p. 2. The appellant further argues that the
jacket of Shrader does not anticipate the claimed support, because it is “not
adapted for mounting on a crutch or a cane” as claimed. Brief, p. 12.
It is well settled that the question of whether a reference is analogous art is
irrelevant to whether that reference anticipates. See State Contracting &
Engineering Corp. v. Condotte America, Inc., 346 F.3d 1057, 1068, 68 USPQ2d
1481, 1488 (Fed. Cir. 2003) and In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d
1429, 1432 (Fed. Cir. 1997) (holding that "[a] reference may be from an entirely
different field of endeavor than that of the claimed invention or may be directed to
an entirely different problem from the one addressed by the inventor, yet the
reference will still anticipate if it explicitly or inherently discloses every limitation
recited in the claims.") Further, the recitation of a new intended use for an old
product does not make a claim to that old product patentable. Id. at 1477, 44
USPQ2d at 1432. As such, we reject the appellant’s arguments that Shrader is not
anticipatory because it is directed to non-analogous art and is directed to a different
problem than the claimed invention.
The question before us, raised by the appellant’s other argument, is whether
Shrader explicitly or inherently discloses every limitation recited in the claims.
The appellant argues that Shrader does not disclose the limitation of a support
adapted for mounting on a crutch or a cane. This limitation is found only in the
preamble of claim 1. We must determine whether this language of the preamble
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Application No. 10/244,011

provides a structural limitation to the claimed support or whether it is merely a
recitation of intended use of the claimed support.
“[A] claim preamble has the import that the claim as a whole suggests for
it.” Bell Communications Research, Inc. v. Vitalink Communications Corp., 55
F.3d 615, 620, 34 USPQ2d 1816, 1820 (Fed. Cir. 1995). “If the claim preamble,
when read in the context of the entire claim, recites limitations of the claim, or, if
the claim preamble is ‘necessary to give life, meaning, and vitality’ to the claim,
then the claim preamble should be construed as if in the balance of the claim.”
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d
1161, 1165 (Fed. Cir. 1999) (quoting Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ
478, 480-81 (CCPA 1951)). “If, however, the body of the claim fully and
intrinsically sets forth the complete invention, including all of its limitations, and
the preamble offers no distinct definition of any of the claimed invention's
limitations, but rather merely states, for example, the purpose or intended use of
the invention, then the preamble is of no significance to claim construction because
it cannot be said to constitute or explain a claim limitation.” Id. The appellant has
made clear that “the crutch and cane shafts [of the preamble] are not part of the
invention, but are rather structures on which the invention is used.” Brief, p. 11
(emphasis added). We find that the “adapted to” language used in the preamble is
merely a statement of the intended use of the support and is not a limitation of the
claim. Rather, this language merely requires that the support is capable of being
used on a cane shaft or a crutch strut. We see no reason why the jacket of Shrader
would not be capable of such use. As such, we sustain the examiner’s rejection of
claims 1 and 12-14 under 35 U.S.C. § 102(e) as being anticipated by Shrader.
Appeal No. 2006-2280 Page 9
Application No. 10/244,011

B. Finegan
The examiner rejected claims 1-7, 10-12 and 14 under 35 U.S.C. § 102(b) as
being anticipated by Finegan. The examiner determined that Finegan discloses a
flexible rubber pad (30) having an adhesive area on a surface being a hook/loop
type (34) to engage an opposing surface with hook/loop type fastener (32) when
formed into a loop. Answer, p. 3.
The appellant argues the rejected claims as a group. Brief, pp. 12-13. As
such, we select claim 1 as a representative claim. 37 C.F.R. § 41.37(c)(1)(vii)
(2006). The appellant argues that the adjustable grip of Finnegan has a tapered
grip which is adapted for use on a golf club. The appellant contends that the grip
of Finnegan is not adapted for use on crutches or canes because they do not require
a tapered grip. Brief, p. 12. For the reasons set forth supra in section II.A., we
find that the “adapted to” language used in the preamble of claim 1 is merely a
statement of the intended use of the support and is not a limitation of the claim. As
such, the appropriate question for an anticipation determination is whether the
adjustable grip of Finegan is capable of being used as the claimed support on a
crutch or cane. Although crutches and canes might not require a tapered grip, as
argued by the appellant, this does not mean the Finegan’s grip is not capable of
being mounted on a crutch or a cane and frictionally engaging an edge or curved
surface to keep the crutch or cane supported at an angle to the vertical with the
bottom end resting on a walking surface. As such, we sustain the examiner’s
rejection of claims 1-7, 10-12 and 14 under 35 U.S.C. § 102(b) as anticipated by
Finegan.
Appeal No. 2006-2280 Page 10
Application No. 10/244,011

C. Carpenter
The examiner rejected claims 1, 3-6, 10, 11, 12, 14-16, 19-21 and 23-28
under 35 U.S.C. § 102(b) as being anticipated by Carpenter. The examiner
determined that Carpenter discloses a flexible pad of a strip of material (7) having
hook and loop fastener (9) to form a sleeve on the shaft of a cane and is capable of
sliding on the shaft of the cane and thus inherently could be located above the
center of gravity of the cane when supported vertically against a surface. The
examiner further determined that the strip of material (7) of Carpenter would
inherently frictionally engage an edge or curved surface when the cane is leaned on
the edge or curved surfaces. Answer, p. 4.
The appellant argues claims 1, 3-6, 10, 11, 12, 14-16, 19-21 and 23-25 as
one group (Brief, p. 13) and argues claims 26-28 as another group (Brief, p. 14).
We select claim 23 as a representative claim of the first group and claim 26 as a
representative claim of the second group. 37 C.F.R. § 41.37(c)(1)(vii) (2006).
With regard to claim 23, the appellant argues that Carpenter does not
disclose an attachment having an exterior surface for frictionally engaging an edge
or curved surface. The appellant argues that the exterior surface of the strap (10)
of Carpenter is used to facilitate engagement with a hook (4) connected to a chain
(6), which is in turn mounted on the belt of the cane user. Brief, p. 13.
The issue for an anticipation determination is not what Carpenter teaches for
the use of the strap; the question is whether the exterior surface of the attachment
of Carpenter is capable of the claimed use. The examiner took the position that the
strip of material (7) of Carpenter is capable of and would inherently frictionally
engage an edge surface when leaned against such surface. We agree. Although
the perpendicular strap (10) of Carpenter is used to hook the cane to the user’s belt,
Appeal No. 2006-2280 Page 11
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the strap (7) that is securely encircling the elongate shaft of the cane is, when put to
the intended use of leaning it against an edge or curved surface, capable of
frictionally engaging that edge or surface. Further, the top of the strap (7) is
secured about the cane shaft by a “rubbery O-ring”. Carpenter, col. 1, lines 36-37
and col. 2, lines 2-5. We find that the rubbery O-ring attachment to the cane shaft
would certainly frictionally engage the edge or curved surface to keep the cane
supported with the bottom end resting on walking surface, as claimed. As such, we
sustain the examiner’s rejection of claims 1, 3-6, 10, 11, 12, 14-16, 19-21 and 23-
25 under 35 U.S.C. § 102(b) as being anticipated by Carpenter.
With regard to claim 26, the appellant argues that the claim is directed to the
combination of a crutch and a pad and that Carpenter is directed only to canes and
not to crutches. We agree. In order for a reference to anticipate a claimed
invention, each and every element of the claim must be disclosed in a single
reference. We find that claim 26 positively recites the crutch as part of a claimed
combination, and there is no disclosure in Carpenter of applying the strap (7) to a
crutch. As such, we do not sustain the examiner’s rejection of claims 26-28 under
35 U.S.C. § 102(b) as being anticipated by Carpenter.
We find it necessary, however, to enter a new ground of rejection of claims
26-28 under 35 U.S.C. § 103(a) as being unpatentable over Carpenter in view of
U.S. Patent No. 4,300,742 to Hunn. Carpenter teaches that the purpose of its guard
device is to enable a user to retrieve a cane if it is accidentally misplaced or
dropped. Carpenter, col. 1, lines 21-24. Carpenter recognizes that “[m]any
individuals who require the help of a cane when walking do not have the ability to
recover a cane when it is accidentally dropped or misplaced.” Carpenter, col. 1,
lines 9-11. Carpenter does not, however, disclose attaching this guard to a crutch.
Appeal No. 2006-2280 Page 12
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We find that the common knowledge of one having ordinary skill in the art at the
time the invention was made was that both crutches and canes suffer from the same
problem of accidentally falling when leaned against the edge of a table or other
surface. See Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick
Co., 464 F.3d 1356, 1367, 80 USPQ2d 1641, 1650 (Fed. Cir. 2006) (“Our
suggestion test is in actuality quite flexible and not only permits, but requires,
consideration of common knowledge and common sense.”) Those persons having
ordinary skill in the art recognized that a mechanism to maintain walking aid
devices, such as crutches and canes, in a vertical position against the edge of a
table or similar horizontal structure was needed. See Hunn, col. 1, lines 22-26
(directed to preventing a crutch from falling by using “an improved cane, crutch or
pole holder which is removably attached to the cane itself, and provides positive
clamping means by which the cane is held in a vertical position against the edge of
a table or similar horizontal structure.”) The common knowledge was that this
need was the same for canes and for crutches, both of which are devices used to aid
a user in walking, and which are often rested against an edge of a table or other
surface when not in use as a walking aid. We find that one having ordinary skill in
the art, possessed with the teachings of Carpenter and with the common knowledge
of one of ordinary skill that canes and crutches are both walking aid devices
suffering from the same slippage problem, as noted in Hunn, would have been led
to apply the guard device of Carpenter to a crutch to prevent a crutch from being
dropped.
With regard to dependent claim 27, we find that Carpenter discloses that the
attachment (shaft strap 7) is a sleeve, which is wrapped around the shaft of the
cane. Carpenter, col. 1, lines 59-63. With regard to dependent claim 28, we find
Appeal No. 2006-2280 Page 13
Application No. 10/244,011

that Carpenter discloses that the attachment is a strip of material (shaft strap 7)
affixed to the shaft of the cane. We hold that it would have been obvious, in view
of the teaching of the structure of the cane guard of Carpenter, to attach the strap
(7) to a crutch strut based on the common knowledge, as acknowledged in Hunn,
that crutches have a similar slippage problem when rested against an edge or other
surface.
D. Crusor
The examiner rejected claims 23, 25, 26 and 28 under 35 U.S.C. § 102(b) as
being anticipated by Crusor. The examiner determined that Crusor discloses a
cane or crutch with frictional strip attachment (26) having a length above the center
of gravity of the crutch when supported vertically from a curved surface (32). The
examiner further determined that Crusor’s assembly inherently can be used to
support the cane even with the bottom end of the cane resting on a walking surface.
Answer, p. 4.
The appellant argued claims 23 and 25 as one group and claims 26 and 28 as
another group. As such, we treat claim 23 as a representative claim for the first
group and claim 26 as a representative claim for the second group. 37 C.F.R.
§ 41.37(c)(1)(vii) (2006).
With regard to claim 23, the appellant argued that hooks and loops of the
Velcro patch on the cane of Crusor do not create a frictional surface because the
hooks and loops will slide against a corner or edge. The appellant further argued
that because Crusor does not teach resting the cane against a corner or edge that it
does not meet the limitation of a cane shaft or crutch strut having “an exterior
surface for frictionally engaging an edge or curved surface to keep the cane or
crutch supported with the bottom and resting on a walking surface.” Brief, p. 13.
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The examiner responded that the claim does not preclude a surface having a
complimentary hook or loop. The examiner determined that Crusor’s hook and
loop patch would provide frictional engagement when the cane is disposed on the
walking ground and leaned against an edge surface, because even a smooth
contacting surface would provide some degree of friction depending on the edge
surface material or the weight of the cane or crutch. Answer, p. 8.
With regard to the appellant’s argument that Crusor does not teach leaning
the cane against a corner or edge, for the same reasons provided supra in Section
II.A., we hold that such a teaching is not required for an anticipation rejection as
long as the structure disclosed in Crusor is capable of performing the recited
function of frictionally engaging the edge or curved surface to keep the crutch or
cane supported with the bottom end resting on a walking surface. As such, we do
not find the appellant’s argument about the lack of teaching in Crusor to be
persuasive.
With regard to the appellant’s argument that the attachment disclosed in
Crusor would not frictionally engage an edge, but rather would slide against the
edge, we must define the phrase “frictionally engage” to resolve this issue. The
examiner has taken a broad interpretation of frictionally engage that is satisfied by
virtually any material attached to a cane or crutch, because such material will
inherently frictionally engage an edge when the cane is leaned against it so that the
material attached to the cane comes in contact with the edge. The degree of
frictional engagement will vary depending, for example, on the material attached to
the cane and the weight of the cane.
We determine the scope of the claims in patent applications “not solely on
the basis of the claim language, but upon giving claims their broadest reasonable
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construction ‘in light of the specification as it would be interpreted by one of
ordinary skill in the art.’” Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75
USPQ2d 1321, 1329 (Fed. Cir. 2005) (en banc) (quoting In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004)). We
must be careful not to read a particular embodiment appearing in the written
description into the claim if the claim language is broader than the embodiment.
See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d
1865, 1868 (Fed. Cir. 2004) (“Though understanding the claim language may be
aided by explanations contained in the written description, it is important not to
import into a claim limitations that are not part of the claim. For example, a
particular embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment.”) The challenge
is to interpret claims in view of the specification without unnecessarily importing
limitations from the specification into the claims. See E-Pass Techs., Inc. v. 3Com
Corp., 343 F.3d 1364, 1369, 67 USPQ2d 1947, 1950 (Fed. Cir. 2003).
We remind appellant that it is their burden to precisely define the invention,
not the PTO’s. In re Morris, 127 F.3d 1048, 1056, 44 USPQ2d 1023, 1029 (Fed.
Cir. 1997). Appellant always have the opportunity to amend the claims during
prosecution, and broad interpretation by the examiner reduces the possibility that
the claim, once issued, will be interpreted more broadly than is justified. In re
Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969).
The specification discusses the frictional engagement between the support
and an edge of a table as follows:
The support device 20 is positioned above the center of
gravity of the crutch 22. Consequently, when the bottom
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end 36 of the crutch 22 is resting on a surface such as the
walking surface 40, and the crutch is leaning against an
edge 42 of, for example a table 44 (Fig. 1) or a counter
top (Fig. 6), the weight of the crutch is applied against
the support 20, generally in the form of a horizontal or
lateral force component. This force component is
sufficient to provide a frictional engagement between the
support 20 and the edge 42 of the table 44. Preferably,
the support 20 is made of a deformable material such as
rubber so that there is increased area to provide sufficient
frictional force to keep the crutch partially upright and
available to a person when the person needs to resume
use of the crutch 22. (Specification, page 5, lines 9-19).
In one example, the specification contrasts the conventional “smooth”
surface of a strut of a crutch to the rubber, or rubber-like support material (20)
having an exterior surface (80) that frictionally engages the edge (42) of a counter
or the like or other supporting surface. The exterior surface (80) has a series of
indentations (82) defining edges (84) which enhance frictional engagement with an
edge (42) or other surface. Specification, page 7, line 5-6 and page 8, lines 16-20.
We must be careful not to read into the “frictionally engage” language the
requirement that the support be made of rubber or a rubber-like material or that the
exterior surface contain indentations, as described in one embodiment of the
specification. We see no explicit definition of frictionally engage in the
specification that defines an amount of frictional engagement between the support
and an edge or other surface. We find, thus, that the broadest reasonable
interpretation of “frictionally engage” means any amount of force between the
exterior surface of the support and the edge or other surface against which it rests
that resists relative motion between the support and the surface to keep the crutch
or cane supported with the bottom end resting on a walking surface.
Appeal No. 2006-2280 Page 17
Application No. 10/244,011

In the case of Crusor, the material that is secured to the cane (10) is a strip
(26) of cooperative hook-pile fastening material. Crusor, col. 3, lines 10-12.
Crusor describes that this material is conventionally fabricated of nylon. Crusor,
col. 3, lines 47-48. We find that in a hook-pile fabric, the hooks on the exterior
surface of the strip (26) provide an uneven surface. We find that this uneven nylon
surface would be capable of frictionally engaging an edge or other surface when
leaned against such surface, because the uneven surface and the hooks of the hook-
pile material would engage the surface to provide a force to resist relative motion
between the material and the surface. As such, we sustain the examiner’s rejection
of claims 23 and 25 under 35 U.S.C. § 102(b) as being anticipated by Crusor.
With regard to claim 26, the appellant argued that the claim is directed to the
combination of a crutch and a pad and that Crusor is directed only to canes and not
to crutches. We agree. As explained in Section II.C. supra, claim 26 positively
recites the crutch as part of a claimed combination. We find no disclosure in
Crusor of applying the hook-pile attachment to a crutch. As such, we do not
sustain the examiner’s rejection of claims 26 and 28 under 35 U.S.C. § 102(b) as
being anticipated by Crusor.
III. Rejections under 35 U.S.C. § 103(a)
A. Finegan and Shrader
The examiner rejected claims 8, 9 and 13 under 35 U.S.C. § 103(a) as being
unpatentable over Finegan in view of Shrader. The examiner determined that
Finegan discloses all of the claimed features except for the adhesive area being
provided with a removable patch. The examiner found that Shrader teaches a
flexible pad (20) having adhesive (11) on one surface to be connected to the other
opposing surface when the pad forms the tube and shows that the adhesive has a
Appeal No. 2006-2280 Page 18
Application No. 10/244,011

removable patch (12). The examiner found that it would have been obvious to one
of ordinary skill in the art to modify the fastener of Finegan by providing adhesive
with a removable patch, as taught in Shrader, because such modification would
have involved mere substitution of one well-known fastener for another well-
known type which is well within the ambit of one of ordinary skill in the art.
Answer, pp. 4-5.
The appellant argues that Shrader is non-analogous art and that only in the
light of the appellant’s claimed invention would one combine Shrader, which
relates to a cable jacket, with Finnegan, which relates to an adjustable grip for a
golf club. We agree with the appellant.
The analogous-art test requires that the Board show that a
reference is either in the field of the applicant's endeavor
or is reasonably pertinent to the problem with which the
inventor was concerned in order to rely on that reference
as a basis for rejection. In re Oetiker, 977 F.2d 1443,
1447 (Fed. Cir. 1992). References are selected as being
reasonably pertinent to the problem based on the
judgment of a person having ordinary skill in the art. Id.
(“[I]t is necessary to consider ‘the reality of the
circumstances,’-in other words, common sense-in
deciding in which fields a person of ordinary skill would
reasonably be expected to look for a solution to the
problem facing the inventor.” Id. (quoting In re Wood,
599 F.2d 1032, 1036 (C.C.P.A.1979))).
In re Kahn, 441 F.3d 977, 986-87, 78 USPQ2d 1329, 1335-1336 (Fed. Cir. 2006).
We find that Shrader is not in the field of the applicant’s endeavor of attaching
flexible pads to crutches or canes. We further see no reason why one having
ordinary skill in the art would combine the teaching of a reference relating to cable
jackets with the teachings of a reference relating to a golf club grip to solve the
Appeal No. 2006-2280 Page 19
Application No. 10/244,011

problem facing the inventor. A person of ordinary skill would not reasonably be
expected to look for a solution to the inventor’s problem in the field of heat
shrinkable plastic jackets supporting cables. As such, we do not sustain the
examiner’s rejection of claims 8, 9 and 13 under 35 U.S.C. § 103(a) as being
unpatentable over Finegan in view of Shrader.
B. Carpenter and Finegan
The examiner rejected claims 1-7, 10-12 and 14-21 under 35 U.S.C. § 103(a)
as being unpatentable over Carpenter in view of Finegan. The examiner
determined that Carpenter disclose a flexible elastomeric or rubber sleeve (2) that
is slidable on the shaft of the cane and would inherently frictionally engage an
edge or surface when the cane is placed on the walking surface and leaned against
such surface. The examiner found that Carpenter does not disclose that the rubber
sleeve (2) is a pad rolled into a sleeve using Velcro or adhesive areas on the pad
surface. The examiner relied on Finegan for the teaching of a flexible rubber pad
(30) having an adhesive area (11) on a surface being a hook/loop type (34) to
engage an opposing surface with a hook/loop type fastener (32) when formed into
a loop to facilitate easy assembly. The examiner found that it would have been
obvious to one of ordinary skill in the art to modify the rubber sleeve of Carpenter
such that it is of a pad type rolled into a sleeve form connected by a hook/loop type
fastener, as taught by Finegan, for easy assembly. Answer, p. 5.
The appellant argues that Carpenter solves the problem of retrieving a cane
that has been misplaced or dropped by using a complex structure that attaches the
cane to the user’s belt. The appellant contends that there is no teaching or
suggestion in Carpenter to solve the problem of preventing a cane from falling over
in the first place by attaching a pad that is adapted to frictionally engage an edge or
Appeal No. 2006-2280 Page 20
Application No. 10/244,011

curved surface. The appellant further argues that Finegan does not cure the
deficiencies of Carpenter and that one skilled in the art would not think of
combining Finegan with Carpenter in the absence of the appellant’s teachings.
Brief, pp. 15-16. The motivation-suggestion-teaching test for obviousness was
recently described in In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1337 (Fed.
Cir. 2006),
[T]he “motivation-suggestion-teaching” test asks not
merely what the references disclose, but whether a person
of ordinary skill in the art, possessed with the
understandings and knowledge reflected in the prior art,
and motivated by the general problem facing the
inventor, would have been led to make the combination
recited in the claims. From this it may be determined
whether the overall disclosures, teachings, and
suggestions of the prior art, and the level of skill in the
art – i.e., the understandings and knowledge of persons
having ordinary skill in the art at the time of the
invention-support the legal conclusion of obviousness.
(internal citations omitted).
The court further explained that the general problem facing the inventor in this
analysis “is not the specific problem solved by the invention but the general
problem that confronted the inventor before the invention was made. Kahn, 441
F.3d at 988, 78 USPQ2d at 1336 (citations omitted). In this case, the general
problem to be solved was to develop a mechanism for preventing a cane or crutch
from falling when not in use. We agree with the appellant that a person having
ordinary skill in the art at the time of the invention, possessed with the teaching of
Carpenter to attach the cane to a user’s belt and the teaching of Finegan to attach
an adjustable grip to a golf club, would not have been led to solve the problem
facing the invention by making the support recited in the claims absent hindsight.
Appeal No. 2006-2280 Page 21
Application No. 10/244,011

As such, we do not sustain the examiner’s rejection of claims 1-7, 10-12 and 14-21
under 35 U.S.C. § 103(a) as being unpatentable over Carpenter in view of Finegan.
We find it necessary, however, to enter a new ground of rejection of claims
17 and 18 under 35 U.S.C. § 103(a) as being unpatentable over the combined
teachings of Carpenter and U.S. Patent No. 6,520,194 to Frazier. We find that
Carpenter discloses a flexible pad (shaft strap 7) which has an adhesive area (hook
and loop fastening means 9) for adhering first and second opposed surfaces of the
pad, where the pad forms a tube when folded around the cane shaft (Figure 1), and
an exterior adapted to frictionally engage an edge or curved surface to keep the
cane supported (see Section II.C. supra), where the tube (strap 7) has a length
substantially less than the shaft (Figure 1). We further find that the tube of
Carpenter is disposed between the center of gravity of the cane and the handle.
Carpenter, Figure 1. Carpenter does not disclose that the strap (7) is made of
rubber or is deformable under the lateral component of the weight of the cane, as
recited in claims 17 and 18, respectively.
Frazier discloses a holder for canes for reducing the possibility that the cane
will fall when it is hung on a table, counter, or other elevated, horizontal surface.
Frazier, col. 1, lines 30-33. Frazier teaches “a tubular member that fits onto a cane,
umbrella or similar accessory on the handle or otherwise one or near one end of the
longitudinal member of the accessory.” Frazier, col. 1, lines 38-41. Frazier further
teaches that “[t]he tubular member may be split in order to allow the tubular
member to fit over a larger range of sizes of handles or longitudinal members.”
Frazier, col. 1, lines 46-48. In one embodiment, Frazier describes that the tubular
member (100) has diameter that allows the end of the longitudinal member (201) to
be inserted into the tubular member (100) and frictionally held in place. Frazier,
Appeal No. 2006-2280 Page 22
Application No. 10/244,011

col. 2, lines 20-23. Frazier further teaches that the tubular member (100) is at least
partly constructed of a flexible material or the entire holder may be formed of the
same flexible material. Frazier, col. 2, lines 23-27. Frazier teaches applying a
contact surface (105, 305) to the tubular member (100) and that this contact surface
must be of a high-friction texture which is preferably formed of rubber. Frazier,
col. 3, lines 24-36. We note that rubber is a flexible and deformable material.
Frazier does not teach an adhesive area on the ends of the tubular member for
adhering the ends together.
One having ordinary skill in the art at the time of the invention, possessed
with the teaching of Frazier to use a tubular member around the shaft (longitudinal
portion) of a cane having a high friction contact surface of rubber to prevent
slippage, and possessed with the teachings of Carpenter to attach a strap around
cane shaft to form a tube using a hook-and-loop fastener on the ends of the strap,
would have been led to add a hook-and-loop attachment to the tubular member of
Frazier in order to make the attachment of the tubular member to the cane stronger.
See Dystar, 464 F.3d at 1368, 80 USPQ2d at 1651 (holding that when an
improvement is technology independent, an implicit motivation to combine can be
found based on a universal desire to enhance commercial opportunities when the
combination results in a product or process that is more desirable, for example
because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or
more efficient.)
C. Carpenter, Finegan and Shrader
The examiner rejected claims 8, 9, 13 and 22 under 35 U.S.C. § 103(a) as
being unpatentable over Carpenter in view of Finegan and Shrader. The examiner
determined that Carpenter and Finegan combined disclose all of the claimed
Appeal No. 2006-2280 Page 23
Application No. 10/244,011

features except for the adhesive area being provided with a removable patch. The
examiner found that Shrader teaches a flexible pad (20) having adhesive (11) on
one surface to be connected to the other opposing surface when the pad forms the
tube and shows that the adhesive has a removable patch (12). The examiner found
that it would have been obvious to one of ordinary skill in the art to modify the
sleeve forming fastener of Carpenter and Finegan combined by providing adhesive
with a removable patch, as taught in Shrader, because such modification would
have involved mere substitution of one well-known fastener for another well-
known type, which is well within the ambit of one of ordinary skill in the art.
Answer, pp. 5-6. For the reasons set forth in Sections III.A. and III.B. supra, we
find no motivation to combine the teachings of Carpenter, Finegan and Shrader
that would have led one having ordinary skill in the art to the support as claimed.
As such, we do not sustain the examiner’s rejection of claims 8, 9, 13 and 22 under
35 U.S.C. § 103(a) as being unpatentable over Carpenter in view of Finegan and
Shrader.
CONCLUSION
To summarize:
1. The decision of the examiner to reject claims 1-14 under 35 U.S.C. § 112,
second paragraph, is not sustained.
2. The decision of the examiner to reject claims 1 and 12-14 under 35 U.S.C.
§ 102(e) as being anticipated by Shrader is sustained.
3. The decision of the examiner to reject claims 1-7, 10-12 and 14 under 35
U.S.C. § 102(b) as being anticipated by Finegan is sustained.
Appeal No. 2006-2280 Page 24
Application No. 10/244,011

4. The decision of the examiner to reject claims 1, 3-6, 10-12, 14-16, 19-21 and
23-25 under 35 U.S.C. § 102(b) as being anticipated by Carpenter is
sustained.
5. The decision of the examiner to reject claims 26-28 under 35 U.S.C.
§ 102(b) as being anticipated by Carpenter is not sustained.
6. The decision of the examiner to reject claims 23 and 25 under 35 U.S.C.
§ 102(b) as being anticipated by Crusor is sustained.
7. The decision of the examiner to reject claims 26 and 28 under 35 U.S.C.
§ 102(b) as being anticipated by Crusor is not sustained.
8. The decision of the examiner to reject claims 8, 9 and 13 under 35 U.S.C.
§ 103(a) as being unpatentable over Finegan in view of Shrader is not
sustained.
9. The decision of the examiner to reject claims 1-7, 10-12 and 14-21 under 35
U.S.C. § 103(a) as being unpatentable over Carpenter in view of Finegan is
not sustained.
10. The decision of the examiner to reject claims 8, 9, 13 and 22 under 35
U.S.C. § 103(a) as being unpatentable over Carpenter in view of Finegan
and Shrader is not sustained.
11. We enter a new ground of rejection, pursuant to 37 C.F.R. § 41.50(b), of
claims 26-28 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Carpenter and Hunn.
12. We enter a new ground of rejection, pursuant to 37 C.F.R. § 41.50(b), of
claims 17 and 18 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Frazier and Carpenter.
Appeal No. 2006-2280 Page 25
Application No. 10/244,011

This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b), which provides, "[a] new ground of rejection pursuant to this paragraph
shall not be considered final for judicial review." 37 C.F.R. § 41.50(b) also
provides that the appellant, WITHIN TWO MONTHS FROM THE DATE OF
THE DECISION, must exercise one of the following two options with respect to
the new grounds of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence
relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same
record. The request for rehearing must address any new
ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in
entering the new ground of rejection and also state all
other grounds upon which rehearing is sought.
Appeal No. 2006-2280 Page 26
Application No. 10/244,011

No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART; 37 CFR § 41.50(b)

)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
STUART S. LEVY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LINDA E. HORNER )
Administrative Patent Judge )
Appeal No. 2006-2280 Page 27
Application No. 10/244,011

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