Ex Parte Kim

Patent Trial and Appeal Board

Feb 24, 2014

12094640 (P.T.A.B. Feb. 24, 2014)

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.
12/094,640 10/03/2008 Jae Young Kim HYU01 P-300 4101
277 7590 02/24/2014
PRICE HENEVELD LLP
695 KENMOOR SE
P O BOX 2567
GRAND RAPIDS, MI 49501
EXAMINER
HAWTHORNE, OPHELIA ALTHEA
ART UNIT PAPER NUMBER
3772
MAIL DATE DELIVERY MODE
02/24/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAE YOUNG KIM
____________

Appeal 2012-003102
Application 12/094,640
Technology Center 3700
____________

Before JENNIFER D. BAHR, JOHN C. KERINS and
FRANCES L. IPPOLITO, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Jae Young Kim (Appellant) seeks our review under 35 U.S.C.
§ 134(a) of the Examiner’s final rejection of claims 1-20. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2012-003102
Application 12/094,640

2

THE INVENTION
Appellant’s invention is directed to a corrective device for ingrown
toenails, and a method for correcting an ingrown or incurvated toenail.
Independent claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A corrective device for ingrown toenails and
incurvated toenails comprising:

a central member made of a shape memory alloy,
and

prefabricated toenail side-engaging parts, each
being attached to both ends of the central member.

Independent claim 12 is a method claim directed to mounting the
correcting device on a toenail.

THE REJECTION
Appellant appeals from the rejection of claims 1-20 under 35 U.S.C.
§ 103(a) as being unpatentable over Andersen (US 1,708,716, issued April 9,
1929) in view of Machida (US 7,008,391 B2, issued Mar. 7, 2006).

ANALYSIS
The Examiner takes the position that Andersen teaches the limitations
set forth in claims 1 and 12, with the exception that the central member is
not made of a shape-memory alloy. Ans. 5-6, 8. The Examiner cites to
Machida as disclosing a tool for treatment of ingrown nails that employs a
shape-memory alloy for the central member or nail-shaping correcting
member in that device. Ans. 6, 8. The Examiner concludes that it would
Appeal 2012-002067
Application 11/873,022

3
have been obvious to modify the material from which the central member of
Andersen is made to be a shape-memory alloy, “since the elastic force
generated by the super elastic wire made of shape memory alloy when
applied to the nail plate will effectively flattened [sic.] the nail.” Id.
Appellant criticizes the Examiner’s position as “not clearly
articulat[ing] the reasons why the claimed invention would have been
obvious.” App. Br. 3. Appellant further maintains that the cited references
teach away from the claimed invention, in that Andersen discloses that the
central member or cross bar is to be stiff, whereas making the cross bar of a
shape-memory alloy would result in a cross bar that is not stiff. App. Br. 4-
5. Appellant further argues that the proposed modification would result in a
device that would be “less efficient and probably unworkable” to use, given
that “it would be impossible to determine a proper engaging distance
between the screws 7 and the nut members 8” shown in Andersen as
effecting the engagement and lifting of the corners of the toenail. App. Br.
5; Andersen, Fig. 2.
The Examiner responds by pointing out that Appellant’s arguments
are effectively opinions that are not supported by objective and factual
evidence of nonobviousness. Ans. 12-13. The Examiner further notes that
Andersen calls for the central member or cross bar to be “comparatively
stiff,” and not necessarily “stiff” as argued by Appellant. Id. at 12. The
Examiner’s position is that the nail shape correcting member or central
member in Machida is, too, comparatively stiff, and that Appellant’s
argument is thus not persuasive of nonobviousness. Id.
We find that the Examiner’s conclusion of obviousness is not
adequately supported by an explication of a reason to combine the references
Appeal 2012-002067
Application 11/873,022

4
that is supported by rational underpinnings. Despite denigrating Appellant’s
arguments as not being supported by evidence, the Examiner proceeds to
take the position, itself unsupported by evidence, that the shape memory
alloy material used in Machida is “comparatively stiff,” while failing to
point to evidence that such material would function properly and predictably
in the Andersen device once that device is modified as proposed.
The shape-memory alloy wire 5 in Machida appears to operate by
attempting to contract in some manner to pull a tubular member 1 to which it
is fastened toward the point Nh at which the wire is anchored at its opposite
end. Machida, Fig. 2; col. 4, ll. 11-12 (discussing tensional force exerted by
wire 5). The Examiner has not explained how, in view of this disclosure, the
central member or cross bar 5 of Andersen would obviously be configured
and used in conjunction with the toenail side engaging members (screws 7
and nut members 8 with hooks 9) so as to achieve a predictable result of
lifting the edges of the nail to correct ingrown and incurvated toenails.
The rejection of independent claims 1 and 12, and of claims 2-11 and
13-20 depending therefrom, as being unpatentable over Andersen and
Machida, is not sustained.

DECISION
The decision of the Examiner to reject claims 1-20 under 35 U.S.C.
§ 103(a) is reversed.

REVERSED
pgc