Ex Parte Nelson

Board of Patent Appeals and Interferences

Feb 7, 2008

10095366 (B.P.A.I. Feb. 7, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RONALD E. NELSON

Appeal 2007-4525
Application 10/095,366
Technology Center 3700
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Decided: January 7, 2008
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Before DEMETRA J. MILLS, NANCY J. LINCK, and RICHARD M.
LEBOVITZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the final rejection of claims 1-16.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
The claims are directed to an adjustable ankle brace “in which
fastening straps are used, rather than eyelets and a shoelace” to fasten the
brace around the ankle (Specification 3).
Claims 1-16 are pending. Appellant requests review of the following
rejection:
Appeal 2007-4525
Application 10/095,366

Claims 1-16 under 35 U.S.C. § 103(a) as obvious over Nelson (U.S.
Pat. No. 5,814,002, Sep. 29, 1998) in view of Varn (U.S. Pat. No. 5,885,236,
Mar. 23, 1999), Harroff (U.S. Pat. No. 3,935,858, Feb. 3, 1976), and/or
Gaylord (U.S. Pat. No. 4,090,508, May 23, 1978) (Answer 3).
We select claims 1 and 9 as representative of the claimed subject
matter. Claims 1 and 9 read as follows:
1. An adjustable size ankle brace, comprising:
(a) a base of flexible material shaped to wrap around the rear
and sides of a foot and ankle, the base having a first side and a
second side;
(b) a first detachable movable side flap for detachable
attachment to the first side of the base, and a second detachable
movable side flap for detachable attachment to the second side
of the base;
(c) a first detachable attachment means for detachable
attachment of the first detachable movable side flap to the first
side of the base, and a second detachable attachment means for
detachable attachment of the second removable flap to the
second side of the base;
(d) a first plurality of straps and a second plurality of straps,
each strap having a proximal strap end with an exterior surface,
a third detachable attachment means on the exterior surface of
the proximal strap end, a distal strap end with an exterior
surface, and a fourth detachable attachment means on the
exterior surface of the distal strap end;
(e) a first plurality of loops and a second plurality of loops;
(f) the proximal strap end of each strap in the first plurality of
straps and each loop in the first plurality of loops mounted to
the first detachable movable side flap, the proximal strap end of
each strap in the second plurality of straps and each loop in the
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second plurality of loops mounted to the second detachable
movable side flap the straps and loops mounted so that when
the first detachable movable side flap is attached to the first side
of the base and the second detachable movable side flap is
attached to the second side of the base, each strap in said first
plurality of straps is opposite, and trainable through, a loop in
said second plurality of loops and each strap in said second
plurality of straps is opposite, and trainable through, a loop in
said first plurality of loops whereby the positioning of the
detachable movable side flaps is adjustable by removing the
detachable movable side flaps from the base and repositioning
them on the base according to the size of the foot and ankle of
the intended wearer of the brace, and the distal end of each
strap may be trained through a loop and the exterior surface of
the distal end of the strap may be detachably attached to the
exterior surface of the proximal end of the strap to apply
tension to the strap to secure the base about the foot and ankle.
9. An adjustable size ankle brace, comprising:
(a) a base of flexible material shaped to wrap around the rear
and sides of a foot and ankle, the base having a first side and a
second side;
(b) a first reinforcing patch secured to the first side of the base,
and a second reinforcing patch secured to the second side of the
base;
(c) a first carrier strip secured to the first reinforcing patch and a
second carrier strip secured to the second reinforcing patch;
(d) a first plurality of straps and a second plurality of straps,
each strap having a proximal strap end with an exterior surface,
a first detachable attachment means on the exterior surface of
the proximal strap end, a distal strap end with an exterior
surface, and second detachable attachment means on the
exterior surface of the distal strap end;
(e) a first plurality of loops and a second plurality of loops,
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(f) the proximal strap end of each strap in the first plurality of
straps and each loop in the first plurality of loops mounted to
the first carrier strip, the proximal strap end of each strap in
the second plurality of straps and each loop in the second
plurality of loops mounted to the second carrier strip, the straps
and loops mounted so that each strap in said first plurality of
straps is opposite, and trainable through, a loop in said second
plurality of loops and each strap in said second plurality of
straps is opposite, and trainable through, a loop in said first
plurality of loops whereby the distal end of each strap may be
trained through a loop and the exterior surface of the distal end
of the strap detachably attached to the exterior surface of the
proximal end of the strap to adjust the size of the ankle brace
and apply tension to the straps to secure the base about the foot
and ankle.
ISSUE ON APPEAL
The Examiner contends that it would have been obvious to persons of
ordinary skill in the art to have modified Nelson’s ankle brace by replacing
its eyelets and laces with straps and loops as taught by the prior art for
securing other orthopedic support devices to a limb part.
Appellant contends that there would have been no motivation to have
modified Nelson’s ankle brace as suggested by the Examiner.
Thus, the issue in this appeal is whether persons of skill in the art
would have had reason to have replaced the eyelets and laces in Nelson’s
ankle brace with straps and loops to secure the brace to the ankle.

DISCUSSION
Claims 1-8
In making an obviousness determination, it is necessary to take the
following factors into consideration: (a) the scope and content of the prior
art; (b) the differences between the prior art and the claimed invention; (c)
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the level of skill in the pertinent art; and (d) evidence of secondary
considerations. Graham v. John Deere, 383 U.S. 1, 17-18 (1966). We begin
with the scope and contents of the prior art.

Scope and contents of the prior art
The claims are rejected over the combination of Nelson, Varn,
Harroff, and Gaylord. The following numbered findings of fact (“FF”) are
pertinent to the Examiner’s basis for the rejection:
1. Nelson describes an adjustable ankle brace (Nelson, Abstract).
2. The ankle brace comprises a base which “has forward edges that
come toward one another over the front superior foot and ankle region” (id.)
3. The base has first and second detachable and movable flaps
attached to the sides of the base to vary the size of the brace to accommodate
different ankle sizes (Nelson, Abstract; at col. 1, l. 50 to col. 2, l. 10).
4. The flaps (“38”) are “releasable fixed” to the sides of the base by
“hooks and loop material” (Nelson, Abstract; at col. 3, ll. 29-32; see Fig. 3).
5. Varn describes a foot support (“orthosis”) that has flaps 30 formed
from one (sewn) piece which extend up from the sole portion (Varn, at col.
2, ll. 7-16; Figs. 1 and 4).
6. “Conventional straps” are fastened to flap fabric and connected
together to hold the flaps together when placed on the ankle (Varn, at col. 2,
ll. 16-20; Fig. 1, elements 38, 38A, 40, 40A, 42, and 42A; Answer 3).
7. Velcro can be utilized to secure the straps together (Varn, at col. 2,
ll. 20-22).
8. Harroff describes a wraparound orthopedic immobilizer for the
knee with rings and straps to secure the cover around the knee (Harroff,
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Abstract; at col. 2, ll. 27-29; see Fig. 1 showing opposing strap 40 and ring
38; Answer 4).
9. Harroff states that “belts [i.e., straps] or similar securement means”
can be used to secure the cover “about the patient’s leg” (Harroff, at col. 1,
ll. 13-15).
10. Gaylord describes a knee brace which utilizes a plurality of
laterally directed straps and associated buckles mounted to a sheet to hold it
around the knee (Gaylord, at col. 2, ll. 42-51; Fig. 2, elements 65 and 66, the
straps and buckles, respectively; Answer 4).
11. Each of Varn (FF 6), Harroff (FF 8, 9), and Gaylord (FF 10) teach
that straps and corresponding buckles (or rings) are conventionally used by
persons of ordinary skill in the art to secure an orthopedic support to a limb
part.

Differences between the prior art and the claimed invention
Once the scope and content of the prior art has been established, the
next step is to ascertain the differences between the prior art and the claimed
invention. Graham, 383 U.S. at 17-18. The following numbered findings of
fact are relevant to this determination:
12. Nelson teaches every claimed feature” of claim 1 “except for the
recited plurality of straps and loops” (Answer 3) as recited in elements (d)
through (f) of the claim.
These “features” of the claimed invention include:
13. An ankle brace comprising a base of flexible material shaped to
wrap around the foot and ankle as recited in (a) of claim 1 (FF 1-2; Nelson,
Abstract).
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14. First and second detachable movable side flaps attached to the
sides of the base by attachment means as in elements (b) and (c) of claim 1
(FF 3-4; Nelson, Abstract; at col. 1, l. 50 to col. 2, l. 10; at col. 3, ll. 29-32;
see Fig. 3).
15. Appellants do not challenge the Examiner’s finding that Nelson
teaches all the elements of claim 1, except for the plurality of straps and
loops.
16. Varn, Harroff, and Gaylord teach straps and loops to secure an
orthopedic support to a limb arranged in the same configuration as required
by claim 1 (FF 6, 8, 10, 11; Answer 3-4).

Level of skill in the art
17. Persons of ordinary skill in the art were familiar with the
operation of straps and loops to secure an orthopedic support (FF 6, 8, 9, 10,
and 11).
18. The selection of a particular attachment means to use for an
orthopedic limb support is the type of choice ordinarily made by persons of
skill in the art (see FF 9; Harroff, at col. 1, ll. 13-15, stating that belts or
similar means can be used to secure an orthopedic device around a patient’s
leg – indicating that the choice is within the ordinary level of skill in the art).
19. Persons of skill in the art would have recognized that detachable
flaps as shown in Nelson (FF 3-4) would perform the same function as flaps
permanently attached to the base in Varn (FF 5). See also FF 18.

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Reason to combine the prior art
The next step after ascertaining the differences between the prior art
and the claimed invention is to identify a reason why persons of ordinary
skill in the art would have been prompted to combine the prior art to have
made the claimed invention. KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1741 (2007). The following findings of fact are relevant to this issue:
20. The evidence provided by Varn, Harroff, and Gaylord establishes
that straps and loops were well-known in the art as useful fasteners to secure
an orthopedic support to a limb part (FF 11; see Answer 3, 5).
21. Persons of skill in the art would have had reason to have
substituted Nelson’s “lace and eyelets securing means” for a plurality of
straps and loops – which are well known and conventional – (FF 6, 11, 20)
“for the purpose of more quickly securing the brace to a foot” (Answer 3, 5).
22. “The substitution of one type of fastener for another . . . well-
known fastener for the purpose of providing [its] well-known functions and
advantages” would have motivated persons of skill in the art to have
replaced Nelson’s lace and eyelets with straps and loops (Answer 7).
23. The modification of Nelson’s ankle brace with the straps and
loops of Varn, Harroff, or Gaylord was within the scope of ordinary skill in
the art at the time the claimed invention was made (FF 18).
Analysis
The Examiner bears the initial burden of showing unpatentability. In
re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993). In this case, the Examiner
provides evidence that all the elements of the claimed invention are in the
prior art, points to the differences between the prior art and the claimed
invention (FF 12), and provides a well reasoned statement as to why a
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person of skill in the art would have been prompted to have combined the
prior art to have made the claimed invention (FF 21-22). Because we find
no defect in the Examiner’s findings, and agree with the reasoning, we
conclude that sufficient evidence has been provided to establish prima facie
obviousness of claim 1. Once prima facie obviousness has been established,
it is Appellant’s burden to provide rebuttal arguments or evidence. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); Hyatt v. Dudas, 492 F.3d
1365, 1370 (Fed. Cir. 2007).
Appellant argues that neither Varn, Harroff, nor Gaylord “teach any
structure for the purpose of quickly securing an orthosis to a foot” (Appeal
Br.1 8-10). We do not find this argument persuasive. The cited references
describe straps and loops that have the same structural configuration
required by claim 1 (FF 16). Appellant provides no arguments or evidence
to the contrary.
Appellant also contends that there would have been no motivation to
have modified Nelson “since there is no reason to think that combining the
adjustable size ankle brace of Nelson '002 with the straps of Varn, Harroff,
and/or Gaylord would result in an ankle brace that would be more quickly
secured” (Appeal Br. 11; see also Appeal Br. 13). Appellant asserts that the
Examiner’s statements about the advantages of straps and loops are
“conclusory” and “do not show where the required teaching or suggestion to
make the claimed combination is found in the prior art and not as a result of
impermissible hindsight using applicant’s disclosure” (Appeal Br. 12).
We are not persuaded by this argument that the Examiner erred. The
Examiner’s position is that the loops and straps would be more easily

1 “Appeal Br.” refers to the “Amended Brief on Appeal” dated Jan. 26, 2007.
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secured than laces (FF 21; Answer 3, 5). The Examiner’s position is well-
reasoned and based on common knowledge and common sense. See Dystar
Textilfarben Gmbh & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
1356, 1367 (Fed. Cir. 2006) (The “suggestion test is in actuality quite
flexible and not only permits, but requires, consideration of common
knowledge and common sense.”). Appellant provides no evidence or
arguments to rebut the Examiner’s position.
Furthermore, a suggestion, teaching, or motivation to combine the
relevant prior art teachings does not have to be found explicitly in the prior
art. In re Kahn, 441 F. 3d 977, 988 (Fed. Cir. 2006). See also KSR, 127 S.
Ct. at 1741 (The obviousness analysis “can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”).
In this case, the Examiner has provided sufficient evidence that straps and
loops – of the type recited in claim 1 – are conventional means to secure a
limb part to an orthopedic support (FF 11, 16, 17) and that their selection
was within the scope of ordinary skill in the art (FF 18). When “a patent
‘simply arranges old elements with each performing the same function it had
been known to perform’ and yields no more than one would expect from
such an arrangement, the combination is obvious.” KSR, 127 S. Ct. at 1740.
Thus, it is not even necessary to rely on that Examiner’s assertion that straps
and loops would more easily secure an ankle brace than laces – because
straps/loops were known in the art to perform the “same function” as
laces/eyelets and therefore would have been reasonably suggested by the
prior art.
Appellant also states “the claimed invention is not specifically
intended to be more quickly secured to the foot compared to the prior art,
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and that an adjustable size ankle brace according to the present invention can
have other advantages as discussed above” (Appeal Br. 12).
We are not persuaded by this argument. The problem motivating an
applicant to solve a problem does not have to be same motivation relied
upon by the PTO in finding a claimed invention obvious. “In determining
whether the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls. . . . [A]ny need
or problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed.” KSR, 127 S. Ct. at 1741-42.
With respect to the recognition of additional advantages (Appeal Br.
12), we note that “[m]ere recognition of latent properties in the prior art does
not render nonobvious an otherwise known invention.” In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). Thus, when the prior
art suggests what a patent applicant has done, any inherent advantages –
unless based on unexpected results – cannot form the basis for patentability.
See Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985).
Finally, Appellant argues that the modification of Varn, Harroff, and
Gaylord would “render them unsuitable for their intended purposes” which
differ from that of the claimed invention (Appeal Br. 14). We are not
convinced by this argument. The only modification proposed by the
Examiner is to replace Nelson’s laces with straps and loops which are
conventional in orthopedic supports (FF 11). Therefore, as pointed out by
the Examiner, “there is no need to modify” the Varn, Harroff, and Gaylord
patents (Answer 10).
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For the foregoing reasons, we affirm the rejection of claim 1. Claims
2-8 fall with claim 1 because separate reasons for their patentability were not
provided. See 37 C.F.R. § 41.37(c)(1)(vii).

Claims 9-16
Claim 9 differs, inter alia, from claim 1 in having first and second
“reinforcing” patches “secured” to the ankle brace base and carrier strips (for
carrying the straps and loops) “secured” to the reinforcing patches (claim 9,
elements (b), (c), and (f).) (See also Reply Br.2 7.)
Appellant presents the same arguments as he did for claim 1 (see
Appeal Br. 14-15). For the reasons discussed above, we do not find these
arguments persuasive.
Appellant further contends:
The inventions of claims 9-16 do not require any movable side
flaps to accommodate the size of the foot and ankle of the
intended wearer. In contrast, the device of Nelson '002 utilizes
and requires movable side flaps to accommodate the size of the
foot and ankle of the intended wearer. . . . Modifying the device
of Nelson '002 by removing its movable side flaps to form
applicant's inventions of Claims 9-16 would change the
principle of operation of Nelson '002.
(Appeal Br. 16). Appellant states that “the closure assembly in the ankle
brace of Claims 9-16 is permanently secured to the base, preferably by
stitching (see, for example, paragraphs [0052]-[0056] and Figs. 15- 16)”
(Reply Br. 7).
We do not find this argument persuasive. It appears that Appellant is
arguing a limitation that does not appear in the claims. Claim 9 recites that

2 “Reply Br.” refers to the “Reply Brief to Examiner’s Answer” filed March
24, 2005.
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the closure assembly is “secured” to the base – not “permanently secured” as
argued by Appellant (Reply Br. 7). We give claims their broadest
reasonable interpretation as they would be understood by persons of skill in
the art in the context of the Specification. There is no definition in the
Specification that limits the term “secure” to mean “permanently secured,”
e.g., by stitching. There is an embodiment in the Specification where
stitching is described (Specification 16: ¶ 49), but it is improper to read
limitations from the Specification into the claims. See Sjolund v. Musland,
847 F.2d 1573, 1581, (Fed. Cir. 1988); In re Van Geuns, 988 F.2d 1181,
1184, (Fed. Cir. 1993). Thus, we do not interpret claim 9 to require the
closure to be permanently attached to the base as Appellants argue.
In any case, we do not consider permanent attachment of the closure
to the base to patentably distinguish claim 9 over the prior art. For example,
in Varn, the flaps which support the closure are formed from piece (FF 5)
and are not movable as in Nelson. Thus, persons of skill in the art would
have recognized that detachable flaps as shown in Nelson (FF 3-4) would
perform the same function as flaps permanently attached to the base as in
Varn (FF 5).
For the foregoing reasons, we affirm the rejection of claim 9. Claims
10-16 fall with claim 1 because separate reasons for their patentability were
not provided. See 37 C.F.R. § 41.37(c)(1)(vii).
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TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED
lp

RICK ABEGGLEN, ATTY.
c/o MUELLER SPORTS MEDICINE, INC.
ONE QUENCH DRIVE
P.O. BOX 99
PRAIRIE DU SAC WI 53578

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