11657344 (P.T.A.B. May. 14, 2013)

Ex Parte Lloyd

Patent Trial and Appeal BoardMay 14, 2013

11657344 (P.T.A.B. May. 14, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte RICHARD E. LLOYD ____________________ Appeal 2011-004263 Application 11/657,344 Technology Center 3700 ____________________ Before JOHN C. KERINS, SCOTT A. DANIELS, and JEREMY M. PLENZLER, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-004263 Application 11/657,344 2 STATEMENT OF CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-14. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER Claims 1 and 10 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An apparatus for stabilizing the lower spine of a patient during emergency transport of the patient, comprising: (a) a back board comprising a flat surface longer and wider than the patient when the patient is situated on said back board in a supine position; (b) at least one strap attached to said back board and adaptable to secure a patient to said back board; (c) a flexible container adaptable to fit in a space between the arched portion of the patient’s spine and said back board when the patient is secured to said back board; (d) a solid curable material disposed within said flexible container; and (e) a liquid activator introducible to said solid curable material and operable to rapidly cure said solid curable material whereby the arched portion of the patient’s spine is stabilized during emergency transport. REJECTIONS 1. Claims 1-5 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Karason (US 2004/0077979 A1; pub. Apr. 22, 2004), Appeal 2011-004263 Application 11/657,344 3 Grim (US 5,632,723; iss. May 27, 2997), and Perisho (US 6,055,988; pub. May 2, 2000); 2. Claims 6-8 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Karason, Grim, Perisho, and Schulz (US 5,176,621; iss. Jan. 5, 1993); 3. Claim 9 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Karason, Grim, Perisho, Schulz, and Bayer (US 3,913,571; iss. Oct. 21, 1975); 4. Claims 10 and 12 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Honeycutt (US 4,793,330; iss. Dec. 27, 1988), Grim, and Perisho; 5. Claim 11 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Honeycutt, Grim, Perisho, and Karason; 6. Claim 13 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Honeycutt, Grim, Perisho, Schulz, and Eschmann (US 4,019,506; iss. Apr. 26, 1977); and 7. Claim 14 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Honeycutt, Grim, Perisho, and Langen (US 6,358,220 B1; iss. Mar. 19, 2002). OPINION Appellant contends that the Examiner did not properly consider Appellant’s evidence of long-felt need in the obviousness rejections of claims 1-14. App. Br. 14-18; Reply Br. 1-4. Rather than weighing the evidence supporting the secondary consideration of long-felt need relative to the evidence of obviousness, the Examiner has determined that Appellant Appeal 2011-004263 Application 11/657,344 4 has failed to meet the burden required for a showing of long-felt need. Ans. 15. The Examiner submits that in order to establish a long-felt need, “evidence of previous unsuccessful attempts to solve the problem” is needed and that “[s]uch evidence must be a series of patents or publications that show the problem to be solved and a solution which the Declarant claims is inoperable.” Id. The Examiner offers no support for this requirement. “Establishing long-felt need requires objective evidence that an art- recognized problem existed in the art for a long period of time without solution.” Ex Parte Jellá, 90 USPQ2d 1009, 1019 (BPAI 2008) (precedential). The Examiner does not indicate that Appellant has failed to present such evidence. Instead, the Examiner appears to require proof of failure of others to establish long-felt need. While long-felt need and failure of others are closely related, we are unaware of any authority for the Examiner’s proposition that failure of others is required to establish long- felt need. Therefore, we agree with Appellant that the Examiner has improperly required proof of failure of others to establish long-felt need. The Examiner further indicates that “the existence of a prior art reference showing a solution to the problem (as in the rejection mailed 12/23/09) is evidence that there is [] no long-felt need.” Ans. 15. Appellant explains that the rejection mailed December 23, 2009 cites numerous references with none teaching the solution to Appellant’s problem. Reply Br. 4. Initially, we note that the Examiner acknowledged that “Appellant successfully established a long-felt and unmet need for the claimed invention” in the Advisory Action mailed March 10, 2012. Adv. Act. 2 (emphasis added). This statement in the Advisory Action was made subsequent to the December 23, 2009 rejection. Further, the general Appeal 2011-004263 Application 11/657,344 5 assertion that “a prior art reference” exists, with nothing more, does not convince us that the solution to Appellant’s problem was known in the art before Appellant’s invention. For the reasons set forth above, the Examiner has improperly dismissed Appellant’s evidence of long-felt need without due consideration. See In re Oetiker 977 F.2d 1443 (Fed. Cir. 1992) (The ultimate determination of patentability must be based on consideration of the entire record, by a preponderance of evidence, with due consideration to the persuasiveness of any arguments and any secondary evidence.); see also MPEP §716.01(d). Accordingly, we reverse the Examiner’s rejections of claims 1-14. 1 DECISION We REVERSE the Examiner’s decision to reject claims 1-14. REVERSED Klh 1 Our decision should not be construed as any indication of the weight that should be given to Appellant’s evidence of long-felt need relative to the evidence of obviousness. Rather, our decision simply requires that, provided that Appellant is found to have established the required nexus between the evidence and the subject matter of claims 1-14, some weight is given to Appellant’s evidence and that the determination of patentability is based upon the entire record, including the evidence of long-felt need.