Ex Parte Lee et alDownload PDFPatent Trial and Appeal BoardMay 25, 201812898996 (P.T.A.B. May. 25, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/898,996 10/06/2010 Stephen D. Lee 45191 7590 05/30/2018 HERBERT L. ALLEN ALLEN, DYER, DOPPELT, MILBRATH & GILCHRIST, P.A. 255 SOUTH ORANGE A VENUE, SUITE 1401 P. 0. BOX 3791 ORLANDO, FL 32802-3791 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. 0110331.CIP3 4890 EXAMINER HAWTHORNE, OPHELIA AL THEA ART UNIT PAPER NUMBER 3772 NOTIFICATION DATE DELIVERY MODE 05/30/2018 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): skemraj@allendyer.com jlong@allendyer.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEPHEN D. LEE, GLENN AKRA VEIN, ROBERT BRADY, and DANIEL DUGAS Appeal2017-008048 Application 12/898,996 Technology Center 3700 Before: CHARLES N. GREENHUT, LISAM. GUIJT, and NATHAN A. ENGELS, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. § 134 from a rejection of claims 27 and 28. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 It is established that the Appellants' Appeal Brief confirms the assignee of record, Embrace LLC, is the real party in interest. (Appeal Brief, 2.) Appeal2017-008048 Application 12/898,996 CLAIMED SUBJECT MATTER The claims are directed to a compression undergarment for relief of menstrual pain and related method of use. See Spec., ,r [0002]. Claim 27, reproduced below, is illustrative of the claimed subject matter: 27. An undergarment for relieving a woman's menstrual pain, compnsmg: a body portion having a waist opening and a leg opening such that the woman can insert her legs into the leg opening and position the waist opening proximate her waist in a worn position; a compression band substantially circumscribing the body portion such that in the worn position the compression band is positioned about the woman's greater trochanters 2 and compresses the woman's greater trochanters to relax ligaments and tendons proximate the woman's uterus to alleviate pain associated with menstrual cramping. (Appeal Brief, Claims Appendix, 13.) REJECTI0NS 3 Claims 1, 6-10, 12-16, 18-20 and 24--26 are allowed. Claims 2-5, 11, 17 and 21-23 have been cancelled. Claims 27 and 28 are rejected under 35 U.S.C. § I02(b) as being anticipated by Shunichirou (US 6,454,628 Bl Sept. 24, 2002). 2 Appellants state, and Examiner does not dispute, that the greater trochanter is: "the large, irregular eminence located at the top of the femur bone at both lateral sides of the female hips." App. Br. 6. 3 We herein refer to the Specification, filed Oct. 6, 2010 ("Spec."); Advisory Action, mailed Mar. 16, 2016 ("Adv. Act."); Appeal Brief, filed Nov. 8, 2016 ("App. Br."); and, the Examiner's Answer, mailed Feb. 24, 2017 ("Ans."). No Reply Brief has been filed. 2 Appeal2017-008048 Application 12/898,996 OPINION The sole issue in this appeal is whether Shunichirou anticipates Claim 27 under pre-AIA 35 U.S.C. 102(b). Appellants argue Shunichirou does not anticipate Claim 27 because Shunichirou's compression band (3, 4) "in the worn position, is not structurally capable of compressing a user's greater trochanters to relax ligaments and tendons proximate the woman's uterus to alleviate pain associated with menstrual cramp[ing]." App. Br. 7. Instead, Appellants argue, the Shunichirou bands would actually "force the wearer's hips open, about the lower back [by] pulling each front attachment point back around to its respective anchor point." App. Br. 8-9. The Examiner finds that Shunichirou does, in fact, compress the user's greater trochanters in the manner required by Claim 27 because the bands (3, 4) "are stretch bands, which are provided at ends with hook and loop fastener[ s ]" that will "inherently compress[] the user's greater trochanters to relax ligaments and tendons proximate the woman's uterus to alleviate pain associated with menstrual cramping." Ans. 5. ( emphasis added). A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference. Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). "To establish inherency, the extrinsic evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference. 'Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing 3 Appeal2017-008048 Application 12/898,996 may result from a given set of circumstances is not sufficient.'" In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal quotations omitted). In relying upon the theory of inherency, an examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art. Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990). Each of the Shunichirou bands has one end attached to the user's side- hip, with the other end being wrapped around the back of the user and attached to the user's opposite front-hip (Figs. 1-4; col. 2, 11. 24--26, 56-68, 64--65; col. 3, 11. 24--39). The Examiner's position, as we understand it, is that despite the lack of an explicit disclosure regarding greater trochanter compression4, Shunichirou would inherently compress the user's greater trochanters, in the manner required by Claim 27, because the Shunichirou bands would cause a compression of the tissue at or around the user's hip, and that such compression would necessarily be transferred to the user's greater trochanters. Ans. 5. We find that the Examiner's position is not sufficiently supported by a factual basis and/ or technical reasoning and that the extrinsic evidence provided by the Examiner does not support the Examiner's position that such compression of the greater trochanters would necessarily occur when using the Shunichirou device. The Examiner's factual basis and technical 4 It is worth noting that Shunichirou does not include any of the following terms, or variants thereof, from Claim 27: "trochanter", "compress", "hip", "ligament", "tendon", and "menstrual." 4 Appeal2017-008048 Application 12/898,996 reasoning, at least in the final rejection, appear to be limited to the fact that the Shunichirou bands are elastic. The Examiner relies on this fact to support the contention that the bands would compress the user's greater trochanters. Ans. 5. However, relying on the band's elasticity alone requires too great of an inferential leap to arrive at the conclusion that compression of the greater trochanters in the manner recited in claim 27 would necessarily occur when the undergarment is worn. Although some amount of skin or tissue compression could possibly occur due to the Shunichirou bands' pulling different portions of a user's midsection towards each other, the Examiner has not established that the user's greater trochanters, in particular, would necessarily be compressed to relax ligaments and tendons proximate the woman's uterus as a result. Moreover, Shunichirou is not intended to address the pain of menstrual cramping; rather, it is intended "for relieving lumbago," a condition of the lumbar that is suffered by "adults and children ... young and old, of both sexes." (col. 1, 11. 6-8, 16-19). Examiner's reasoning does not address how Shunichirou-a device for treating a condition that is specific to the back, and is suffered by both sexes, young and old-would inherently perform a function that treats a condition that is specific to the hips and pelvis ofby women within a limited age range. With regard to Examiner's citation to Oyama5 (see Adv. Act. mailed Mar. 16, 2016), made in support of Examiner's inherency argument, Examiner argues that because Oyama (a) "discloses a similar undergarment 5 See Oyama et al., US 2008/0268749 Al, published Oct. 30, 2008; hereinafter "Oyama". 5 Appeal2017-008048 Application 12/898,996 having the similar configuration as Shunichirou" (Adv. Act. 2), and (b) explicitly states that it compresses the user's greater trochanters (Oyama, i-f0015), Shunichirou would, therefore, inherently compress the user's greater trochanters. Appellants, on the other hand, argue Oyama is not sufficiently similar to Shunichirou to support such a finding because Oyama "does not employ stretch bands, at all, much less a pair of stretch bands that are configured like those of Shunichirou." App. Br. 11. We agree with Appellants and find that the structural difference(s) between Oyama and Shunichirou are substantial such that little, if anything, about the inherent properties of Shunichirou can be gleaned from Oyama. Accordingly, Oyama's ability to compress the greater trochanters does not provide a factual basis for concluding that the Shunichirou stretch bands would necessarily be capable of doing the same. For the reasons stated supra, we do not sustain the Examiner's rejection of independent claim 2 7, and claim 28 depending therefrom. DECISION The Examiner's rejection of claims 27 and 28 is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation