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

Ex Parte Nace

Patent Trial and Appeal BoardMar 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. Â§ 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. Â§ 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. Â§ 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. Â§ 103(a) as unpatentable over Hoffmeier, Ingimundarson, and Yakimovich. 2 (III) Claim 13 is rejected under 35 U.S.C. Â§ 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. 3 Appeal2018-001554 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. 4 Appeal2018-001554 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. Â§ 1.132 Declaration of John Kenny," made of record March 31, 2017. 5 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 6 Appeal2018-001554 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 7 Appeal2018-001554 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 8