Ex Parte Latour

Patent Trials and Appeals Board

Mar 28, 2019

14447416 - (D) (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/447,416 07/30/2014
21003 7590 04/01/2019
BAKER BOTTS L.L.P.
30 ROCKEFELLER PLAZA
44THFLOOR
NEW YORK, NY 10112-4498
FIRST NAMED INVENTOR
Debra Ann Latour
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.
006910.5949 3125
EXAMINER
WATKINS, MARCIAL YNN
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
04/01/2019 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):
DLNYDOCKET@BAKERBOTTS.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEBRA ANN LATOUR
Appeal 2018-007793
Application 14/447,416 1
Technology Center 3700
Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant appeals from the
Examiner's decision rejecting claims 1--4, 6-13, and 16-18. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 "The real party in interest is Shriners Hospital for Children." Appeal
Br. 2.
Appeal2018-007793
Application 14/447,416
STATEMENT OF THE CASE
Claimed Subject Matter
Claim 1, the sole independent claim, is representative of the subject
matter on appeal and is reproduced below.
1. An anchoring system comprising:
(i) a fastener including a base defining a plane and a first
clasp-engaging member protruding perpendicularly from the
plane of the base to define an axis of rotation and having an
outwardly-extending flange, the fastener further including an
adhesive suitable to secure the base directly to skin of a wearer,
and
(ii) a clasp having a first end configured to engage and
rotate about the axis of rotation defined by the first clasp-
engaging member and a second end configured to engage a cable
of a prosthetic or orthotic device, wherein the fastener and clasp
are configured to facilitate manual operation of the cable of the
prosthetic or orthotic device when the clasp is engaged with the
fastener, the adhesive having a sufficient strength to remain
adhered to the skin during manual operation of the prosthetic or
orthotic device.
Rejections2
I. Claims 1, 3, 4, 7-13, and 16-18 are rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Mazur (US 4,011,637, iss. Mar. 15,
1977), Oswald (US 1,153,334, iss. Sept. 14, 1915), and Schottenfels
(US 2,079,426, iss. May 4, 1937).
II. Claim 2 is rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Mazur, Oswald, Schottenfels, and Hodge (US 2,260,778,
iss. Oct. 28, 1941).
2 The Examiner has withdrawn the rejection of claims 1--4, 6-13, and 16-18
under 35 U.S.C. § 112 (pre-AIA), second paragraph. Ans. 2.
2
Appeal2018-007793
Application 14/447,416
III. Claim 6 is rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Mazur, Oswald, Schottenfels, and Davis
(US 2003/0073378 Al, pub. Apr. 17, 2003).
IV. Claims 1--4, 6-13, and 16-18 are rejected on the ground ofnon-
statutory double patenting as being unpatentable over claims 1-14 of Latour
(US 8,323,355 B2, iss. Dec. 4, 2012) and Mazur.
ANALYSIS
Re} ections 1-111
The Examiner's rejection of independent claim 1 relies on Mazur's
teaching of a fastener. Final Act. 5. The Examiner finds that Mazur's
fastener fails to "include[e] an adhesive substantially as claimed." Id. at 6.
Claim 1, as it relates to an adhesive, recites "the fastener further including an
adhesive suitable to secure the base directly to skin of a wearer," and "the
adhesive having a sufficient strength to remain adhered to the skin during
manual operation of the prosthetic or orthotic device." Appeal Br., Claims
App. The Examiner turns to Schottenfels to teach an adhesive as claimed.
Final Act. 6-7. The Examiner concludes:
[I]t would have been obvious to one of ordinary skill in the art
. . . to try modifying the device of Mazur by including the
adhesive means to the base thereof, as taught by Schottenfels, in
order to use the anchoring system of Mazur in any application
that would avoid discomfort, negatively affect blood circulation,
cause numbness or other troubles, as taught and/or suggested by
Oswald, with predictable results and a reasonable expectation of
success.
3
Appeal2018-007793
Application 14/447,416
Id. at 7. Accordingly, the Examiner's rejection relies on Oswald only as
support for the reason for modifying Mazur' s fastener to have an adhesive.
See id. at 6 (citing Oswald 1:13-18).
The Appellant argues that the Examiner's rejection of independent
claim 1 fails to include an adequate reason for modifying Mazur' s "easily
deta[]chable fastener ... with the means to prevent nether garment slipping
of Schottenfels." Appeal Br. 16. The Appellant argues that "Oswald
suggests that the means to prevent nether garment slipping of Schottenfels
would not be an adequate way of supporting a clasp and strap fastener
because it is not 'connecting it with the fabric' of the wearer's clothes." Id.
at 16-17; see id. at 8, 15 (citing Oswald 1:12-13). The Appellant's
argument is persuasive.
In response, the Examiner explains:
Mazur expressly states it is applicable to any detachable anchor
systems (e.g., col. 1, lines 8-9). Oswald expressly teaches a
known need for strapless attachment to a user in detachable
anchor systems (pg. 1, col. 1, lines 13-18). Schottenfels
expressly teaches a known selectable solution of using adhesives
to the problem of attaching a detachable anchor system to a user
selectable with predictable results and a reasonable expectation
of success.
Ans. 9. However, the Examiner's response overestimates the breadth of
Oswald's teachings. The Examiner's rejection seeks to apply an adhesive,
as taught by Schottenfels, on the base of Mazur' s fastener, on the basis of a
teaching from Oswald. However, Oswald's teaching addresses a problem
not solved by the use of an adhesive on the skin of a wearer. See Appeal
Br. 8, 15-17. Accordingly, we determine that the Examiner's reasoning is
based impermissible hindsight.
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Application 14/447,416
Thus, we do not sustain the Examiner's rejection of independent
claim 1 and dependent claims 3, 4, 7-13, and 16-18 as unpatentable over
Mazur, Oswald, and Schottenfels. The remaining rejections, based on
Mazur, Oswald, and Schottenfels in combination with Hodge or Davis, rely
on the same deficiency as discussed above. The deficiency is not cured by
the additional findings and reasoning of the remaining rejections. Thus, we
do not sustain the rejections of: dependent claim 2 as unpatentable over
Mazur, Oswald, Schottenfels, and Hodge; and dependent claim 6 as
unpatentable over Mazur, Oswald, Schottenfels, and Davis.
Re} ection IV
In the Appeal Brief and the Reply Brief, the Appellant does not
address the obviousness-type double patenting rejection. 3 Thus, we
summarily sustain the Examiner's rejection of claims 1--4, 6-13, and 16-18.
DECISION
We REVERSE the Examiner's decision rejecting claims 1--4, 6-13,
and 16-18 under pre-AIA 35 U.S.C. § 103(a).
We SUMMARILY AFFIRM the Examiner's decision rejecting
claims 1--4, 6-13, and 16-18 on the ground of non-statutory double
patenting as being unpatentable over claims 1-14 of Latour and Mazur.
3 In an Amendment and Response to Final Office Action (filed Oct. 9, 2017;
hereinafter "Amendment"), the Appellant acknowledged the obviousness-
type double patenting rejection and "reserve[d] the opportunity to file a
Terminal Disclaimer." Amendment 12-13.
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Appeal2018-007793
Application 14/447,416
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)(l )(iv).
AFFIRMED
6