Ex Parte Nace

Patent Trial and Appeal Board

Mar 20, 2018

14748610 (P.T.A.B. Mar. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
141748,610 06/24/2015
22497 7590 03/22/2018
LARSON AND LARSON
11199 69TH STREET NORTH
LARGO, FL 33773
FIRST NAMED INVENTOR
Richard A. Nace
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.
1440.56 8916
EXAMINER
NELSON, KERI JESSICA
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
03/22/2018 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):
frank@larsonpatentlaw.com
ipdocket@larsonpatentlaw.com
justin@larsonpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD A. NACE 1
Appeal2018-001554
Application 14/748,610
Technology Center 3700
Before JENNIFERD. BAHR, WILLIAM A. CAPP, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1--4, 6, 7, 13, and
15-20. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
THE CLAIMED SUBJECT MATTER
The claimed invention is directed to a knee orthosis that provides
support to the knee of a patient with a damaged or severed posterior cruciate
1 Appellant is the Applicant, Medical Alliance, S.A., which, according to the
Brief, is the real party in interest. Br. 2.
Appeal2018-001554
Application 14/748,610
ligament (PCL) by supporting the knee with a brace and providing an air
bladder to create force against the rear of the tibia. Abstract. Claim 1 is
illustrative of the claims on appeal and is reproduced below with emphasis
added.
1. A device to compensate for a PCL injury by increasing
stability of a knee of a patient and decreasing rearward deflection
of a tibia of the patient and unloading the patient's PCL; the
device comprising:
a) a leg brace having a pair of upper struts and a pair of
lower struts;
i) the pair of lower struts having an upper end and a
lower end;
ii) the upper end of the pair of lower struts ending at
a pair of hinges;
iii) the lower end of the pair of lower struts ending
at a shin cuff,
( 1) the shin cuff adapted to surround a front
of the tibia;
(2) a lower shin strap adapted to surround a
rear of the tibia, the lower shin strap adapted to hold
the device in place with respect to the tibia of the
patient by applying a first pressure;
b) an air bladder;
i) the air bladder affixed to the lower shin strap;
ii) the air bladder adapted to inflate after the lower
shin strap has been secured;
iii) the air bladder adapted to assert pressure
against the tibia at a point above the shin cuff and below
the pair of hinges, the pressure of the air bladder adapted
to unload the patient's PCL by applying a second pressure,
thus preventing further PCL damage.
Br. 24 (Claim App.).
REFERENCES RELIED ON BY THE EXAMINER
Cassford
Y akimovich
us 5,415,625
US 7,410,472 B2
2
May 16, 1995
Aug. 12, 2008
Appeal2018-001554
Application 14/748,610
Hoffmeier
Ingimundarson
US 2005/0240135 Al
US 2010/0331750 Al
Oct. 27, 2005
Dec. 30, 2010
THE REJECTIONS ON APPEAL
(I) Claims 1and16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hoffmeier and Ingimundarson.
(II) Claims 2--4, 6, 7, 15, and 17-20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hoffmeier, Ingimundarson, and Yakimovich. 2
(III) Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Hoffmeier, Ingimundarson, Y akimovich, and Cassford.
ANALYSIS
Rejection(!); Hoffmeier and Ingimundarson; claims 1and16
The Examiner finds that Hoffmeier discloses most of the elements
required by claim 1, but does not disclose an "air bladder applying a second
pressure to effect the unloading of the patient's PCL." Final Act. 3--4.
However, the Examiner finds that Hoffmeier discloses strap 48 and padded
member 74, and that pressure provided by padded member 74, on strap 48,
is adapted to unload the patient's PCL, thus preventing further PCL damage.
Id. As for the requirement for an air bladder to perform this function, the
Examiner finds that Ingimundarson discloses air bladders 836 and 838
connected to straps 832 and 834 "to provide additional cushioning and
fitting to the straps and thereby to the user's leg," and determines it would
2 The Examiner lists the rejection of claims 7 and 15 over these references
separately from the rejection of claims 2--4, 6, and 17-20. Final Act. 6, 10.
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Application 14/748,610
have been obvious to modify the knee orthosis of Hoffmeier to include an air
bladder for the purpose of providing these benefits. Id. at 4 (citing
Ingimundarson i-fi-1352-353).
Appellant contends that both Hoffmeier and Ingimundarson are
related to osteoarthritis (OA) braces and are intended to provide lateral
support for the sides of the knee and to reduce the load carried by the knee.
Br. 7-12. Appellant asserts that such braces "provide no compensation for
harm to the PCL of the knee" because this function requires the brace to
provide a forward force, resulting in a forward motion of the tibia that
prevents stretching the PCL. Br. 13-15.
Appellant argues that the Examiner's proposed combination of
Hoffmeier and Ingimundarson does not provide a pressure adapted to unload
the patient's PCL because, in Hoffmeier, strap 66 extends across the front of
brace 10, obstructing any forward motion of the tibia that would result from
force created by strap 48. Br. 17-19. In support of this argument, Appellant
provides an annotated version of a portion of Figure 2 of Hoffmeier, which
we reproduce below.
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Application 14/748,610
Appellant's annotated version of Figure 2 of Hoffmeier depicts the lower
portion of brace 10, in side view, with an arrow added by Appellant
extending horizontally from strap 48 to strap 66. Br. 17; see also Hoffmeier,
Fig. 2. According to Appellant, even if an air bladder were added to strap 48
of Hoffmeier, the force created by the air bladder would not function as
required by claim 1 because of the presence of strap 66 and its associated
structure. Br. 17-21.
As additional support for this argument, Appellant relies on a
Declaration3 by John Kenny (the "Kenny Declaration"). Br. 17, 20-21. The
Kenny Declaration states, "[a ]dding a rear bladder to Hoffmeier may further
tighten the OA brace against the patient's leg, but it will fail to provide a
secondary anterior force, or force toward the front of the patient that
compensates for a damaged PCL," and "[t]he shin cuff of Hoffmeier blocks
the action of the rear-mounted bladder, preventing the bladder from
compensating for a damaged PCL." Kenny Declaration i-fi-134, 37.
In response, the Examiner takes the position that padded member 7 4
of Hoffmeier provides force to the knee in a direction so as to provide the
claimed effect, and, contrary to Appellant's argument, strap 66 need not
negate this force. Ans. 15. Specifically, the Examiner finds that strap 66 of
Hoffmeier "is adjustable using hook and loop fasteners ... such that the
rearward force provided by the anterior strap ( 66) that would oppose the
forward force provided by the padded member (74) is also adjustable." Id.
(citing Hoffmeier i1 41 ). The Examiner also finds that
3 "Rule 37 C.F.R. § 1.132 Declaration of John Kenny," made of record
March 31, 2017.
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Appeal2018-001554
Application 14/748,610
depending on the amount of force provided by each strap [ 48 and
66] and padded member, the force applied to the posterior
portion of the patient's upper tibia is capable of being greater
than the force applied to the anterior portion of the patient's
upper tibia such that the padded member of the brace taught by
Hoffmeier would be capable of unloading the patient's PCL by
applying pressure as recited in the claims.
Ans. 15. Thus, according to the Examiner, straps 48 and 66 of Hoffmeier
are capable of unloading the PCL, depending on the amount of force
provided by each strap.
Appellant has the better position. The term "adapted to" in a claim
may mean, in some cases, "capable of," but frequently means "designed to"
or "configured to." See In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir.
2014). The rejection of claim 1 relies on an interpretation of "adapted to" to
mean "capable of' (see Final Act. 4), but, in light of Appellant's discussion
of Figure 2 of Hoffmeier and the Kenny Declaration, a preponderance of the
evidence does not support the Examiner's finding that strap 48 (or strap 48
including an air bladder in the proposed combination of Hoffmeier and
Ingimundarson) is capable of providing the recited "unload" effect. In this
regard, we note that strap 48 of Hoffmeier appears to be present merely to
secure knee brace 10 to the patient, and is not disclosed as providing any
therapeutic pressure or as being positioned in a location where such pressure
would provide any therapeutic benefit, much less a benefit specific to the
PCL. See Hoffmeier i-f 33. Further, according to the Kenny Declaration, the
structure ofHoffmeier's knee brace (e.g., strap 66) located on the front
portion of the knee will prevent strap 48 from providing a pressure adapted
to unload the patient's PCL. See Kenny Declaration i-fi-134--37. The
Examiner's response that strap 66 (on the front side of the knee) may be
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Application 14/748,610
adjusted to provide the conditions necessary for the "unload" effect recited
in claim 1 is not supported by a preponderance of the evidence. As
explained in paragraphs 34 through 37 of the Kenny Declaration, structure
other than strap 66 is located in front of the knee. Thus, it is not apparent
that any adjustment of strap 66 as proposed by the Examiner would
eliminate the obstruction preventing strap 48 from providing a pressure
adapted to unload the patient's PCL. Accordingly, as the evidence of record
falls short of supporting a finding that Hoffmeier satisfies the "unload"
requirement in claim 1, we do not sustain the rejection of claim 1 as
unpatentable over Hoffmeier and Ingimundarson. Independent claim 16
recites a substantially similar feature to the one discussed above regarding
claim 1 (see Br. 24, 28-29 (Claims App.)), and, for the same reasons, we do
not sustain the rejection of claim 16 as unpatentable over Hoffmeier and
Ingimundarson.
Rejection (II); Hoffmeier, Ingimundarson, and Yakimovich;
claims 2-4, 6, 7, 15, and 17-20
Independent claim 7 recites a substantially similar feature to the one
discussed above regarding claim 1. See Br. 24, 27 (Claims App.). The
Examiner's use of Yakimovich does not remedy the deficiency discussed
above regarding Rejection (I). See Final Act. 6-14. Accordingly, we do not
sustain the rejection of claim 7 as unpatentable over Hoffmeier,
Ingimundarson, and Yakimovich. Claims 2--4, 6, 15, and 17-20 each
depend from one of claims 1, 7, and 16, and we likewise do not sustain the
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Application 14/748,610
rejection of these claims as unpatentable over Hoffmeier, Ingimundarson,
Y akimovich.
Rejection (III); Hoffmeier, Ingimundarson, Yakimovich, and
Cassford; claim 13
Claims 13 depends from claim 7, and the Examiner's use of Cassford
does not remedy the deficiency discussed above regarding Rejection (II).
See Final Act. 14--15. Accordingly, we do not sustain the rejection of claim
13 as unpatentable over Hoffmeier, Ingimundarson, Yakimovich and
Cassford.
DECISION
The Examiner's decision to reject claims 1--4, 6, 7, 13, and 15-20 is
reversed.
REVERSED
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