Ex Parte Mueller et al

Patent Trial and Appeal Board

Jul 22, 2013

11556684 (P.T.A.B. Jul. 22, 2013)

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.
11/556,684 11/03/2006 Brett Mueller MSM 0208 9127
60112 7590 07/22/2013
RICK ABEGGLEN, ATTY.
c/o MUELLER SPORTS MEDICINE, INC.
ONE QUENCH DRIVE
P.O. BOX 99
PRAIRIE DU SAC, WI 53578
EXAMINER
NELSON, KERI JESSICA
ART UNIT PAPER NUMBER
3772
MAIL DATE DELIVERY MODE
07/22/2013 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 BRETT MUELLER and ERIC D. BYBEE
____________________

Appeal 2011-006373
Application 11/556,684
Technology Center 3700
____________________

Before KARL D. EASTHOM, JOSIAH C. COCKS, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

COCKS, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/556,684

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I. STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-31. Independent claims 1, 15, and 27 are currently on appeal.
Claims 2-14, 16-26, and 28-31 have been canceled. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.
A. Invention
Appellants’ invention is generally related to a knee brace that includes
“an elastic base that covers the knee and adjacent portions of the leg of a
person, a mesh support layer covering an upper portion of the base and
extending below the knee . . . and a below-knee support panel made of an
inelastic sheet material.” (Abstract).
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A knee brace, comprising:

a base made of an elastic sheet material and wearable in
snug covering relationship to the knee and adjacent portions of
the upper leg and the lower leg of a person, the base having
front, side and rear portions when the brace is worn, the base
having an upper portion above the knee and a lower portion
below the knee, whereby the upper portion of the base has a
level of tension when the brace is worn;

a mesh support layer made of an elastic mesh sheet
material and having an upper portion that covers at least a part
of the upper portion of the base and having a lower portion

1 Appellants identify the Real Party in Interest as Mueller Sports Medicine,
Inc. (See App. Br. 2.)
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fixed to the lower portion of the base and extending below the
knee when the brace is worn;

wherein the upper portion of the mesh support layer is
substantially separable from the upper portion of the base,
whereby the upper portion of the mesh support layer has
a level of tension that is adjustable substantially independently
of the level of tension of the upper portion of the base when the
brace is worn; and

a below-knee support panel made of an inelastic sheet
material fixed to the lower portion of the base, extending below
the knee when the brace is worn, and covering at least a part of
the lower portion of the base.

B. The Prior Art
Nordt US Pat. App. Pub. No.: 2006/0030802 A1 Feb. 9, 2006
Applegate US Pat. No.: 4,287,885 Sept. 8, 1981
Brown US Pat. App. Pub. No.: 2005/0240134 A1 Oct. 27, 2005

C. The Rejections
The Examiner rejected claims 1 and 27 under 35 U.S. C. § 103(a) as
unpatentable over Nordt and Applegate.
The Examiner rejected claim 15 under 35 U.S. C. § 103(a) as
unpatentable over Nordt, Brown, and Applegate.
II. ISSUE
Did the Examiner correctly determine that Nordt discloses the “mesh
support layer made of an elastic mesh sheet material” that is required by
each of claims 1, 15, and 27?
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III. ANALYSIS
Appellants argue each of the independent claims based on perceived
deficiencies of Nordt as rejected under 35 U.S.C. § 103(a). Inasmuch as
Appellants raise the same issues with respect to each of these claims, we
discuss them together. With respect to claims 1, 15, and 27, Appellants
contend “that the cited references, alone or in combination, do not teach or
suggest the ‘mesh support layer made of an elastic mesh sheet material’ . . .
as required by Claims 1, 15, and 27 (emphasis added).” (App. Br. 8:6-10.)
The Examiner finds that Nordt discloses:
a mesh support layer (110) made of an elastic sheet material
and having an upper portion that covers at least part of the
upper portion of the base and having a lower portion fixed to
the lower portion of the base and extending below the knee
when the brace is worn, and wherein the mesh support layer
includes a patella support portion (surrounding opening, 122)
covering the area surrounding the knee cap and encircles the
knee cap when the brace is worn ([Nordt,] Figs. 1-9; page 9, ¶
123-124).
(Ans. 4:10-15) Further, the Examiner gives the “term ‘mesh’. . . [its]
broadest reasonable interpretation such that it is ‘a weblike pattern or
construction’ as defined by the Merriam-Webster online dictionary.” (Id. at
4:20-24.) The Examiner submits that “the ‘mesh support layer’ (110) taught
by Nordt comprises a weblike framework with a plurality of openings
(120, 122) therein.” (Id.)
Appellants contend the “rejection was premised on incorrect and
incomplete claim language, and completely ignored the requirement that the
mesh support layer must be made of an elastic mesh sheet material as
required by Claims 1, 15, and 27.” (Reply Br. 5:1-3) (emphasis in original).
Appellants further contend:
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[T]he Merriam-Webster online dictionary, like any dictionary,
may contain other definitions of ‘mesh’ that are more consistent
with Applicants’ use of that term, such as ‘the fabric of a net’ or
‘a woven, knit, or knotted material of open texture with evenly
spaced holes’. If an alternative definition exists that is more
consistent with Applicant’s disclosure, then the rejection’s
definition of mesh as ‘a weblike pattern of construction’ was
improper.”
(Id. at 6:17-22.) In that regard, Appellants submit that “[t]he mesh support
layers of Applicant’s invention, e.g. the mesh support layer 42 depicted in
Figs. 3(a)-3(d), could not be fairly described as a ‘weblike pattern of
construction.’” (Id. at 7:1-4). Instead, Appellants urge that “to a person of
skill in the art and in context of Applicant’s disclosure, the plain meaning of
‘mesh’ would be a woven, knit, or knotted material of open texture with
evenly spaced holes.” (Id. at 7:14-17.)
“Where there are several common meanings for a claim term, the
patent disclosure serves to point away from the improper meanings and
toward the proper meanings.” Renishaw PLC v. Marposs Societa’ per
Azioni, 158 F.3d 1243, 1250 (Fed Cir. 1998). Here, the Appellants and
Examiner provide two competing definitions from the same Merriam-
Webster online dictionary for the term “mesh.” Because both definitions are
possible, we turn to Appellants’ Specification to resolve which meaning is
proper. In describing an embodiment of the invention, Appellants’
disclosure states, for example, “[t]he mesh support layer 42 is preferably
made of an elastic sheet material that is strong yet porous and lightweight,
such as polyester or nylon material” in describing Figures 3(a)-3(d). (Spec.
8, ¶ 45.) The mesh materials of other disclosed embodiments are likewise
characterized using the same, or substantially the same, terminology. (E.g.,
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id. at 11, ¶ 58; 13, ¶ 72; 17-18; ¶ 88.) That descriptive content is in accord
with the meaning of mesh advanced by Appellants.
More importantly, however, the limitation at issue is not solely the
term “mesh” or “mesh layer” taken alone but is instead “a mesh support
layer made of an elastic mesh sheet material.” Thus, the layer that is the
mesh support layer must be made up of a material regarded as something
that is “mesh.” In other words, the material itself that makes up the elastic
sheet must constitute a “mesh” configuration; it is not enough that the
overall component or layer encompassing the material be a mesh. Thus,
even if the “mesh support layer” can be web-like as the Examiner contends,
the elastic material itself that makes up the web also must be made of a
“mesh sheet material.” The Examiner does not contend that Nordt discloses
or suggests that material.
In reviewing the content of Nordt, we conclude that its disclosed
framework 110 is not regarded properly as the “mesh support layer made of
elastic mesh sheet material” required by the claims. All of the rejections
proposed by the Examiner are premised on the finding that Nordt does
disclose such a layer. The additional references on which the Examiner
relies in formulating the rejections, i.e., Applegate and Brown, are offered to
address other features of the claims and not to account for that layer.
For the foregoing reasons, we conclude that Nordt lacks the “mesh
support layer made of an elastic mesh sheet material” recited in claims 1, 15,
and 27. Accordingly, Appellants have demonstrated error in the Examiner’s
rejections of claims 1, 15, and 27. We do not sustain the rejections.
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IV. CONCLUSION
The Examiner did not correctly determine that Nordt discloses the
“mesh support layer made of an elastic mesh sheet material” that is required
by each of claims 1, 15, and 27.
V. ORDER
The Examiner’s decision to reject claims 1 and 27 under 35 U.S. C.
§ 103(a) as unpatentable over Nordt and Applegate is reversed.
The Examiner’s decision to reject claim 15 under 35 U.S. C. § 103(a)
as unpatentable over Nordt, Brown, and Applegate is reversed.

REVERSED