Ex Parte Nickel et al

Patent Trial and Appeal Board

Sep 28, 2017

13174533 (P.T.A.B. Sep. 28, 2017)

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.
13/174,533 06/30/2011 Michael J. Nickel 71356US011 1001
32692 7590 10/02/2017
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
HAWTHORNE, OPHELIA ALTHEA
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
10/02/2017 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL J. NICKEL, SEAN T. CAVANAGH,
ROBERT E. BURNS, MARK KERNS,
EDWARD L. WEAVER II, SHERRY A. HINDS, and
BETH E. GRAMZA
Appeal 2016-002629
Application 13/174,533
Technology Center 3700
Before MICHELLE R. OSINSKI, LISA M. GUIJT, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-002629
Application 13/174,533
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Office Action (“Final Act.”) rejecting claims 1—10, 13—19,
and 22—25, which are all the claims pending in the application.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Claimed Subject Matter
The claimed subject matter relates to medical braces (e.g., wrist
braces and ankle braces) that use lacing systems. Spec. para. 2. Claims 1
and 14 are independent. Claim 1, reproduced below, illustrates the claimed
subject matter.
1. A medical brace comprising:
a main body configured to be worn by a user; and
a lacing system configured to tighten and loosen the main
body, the lacing system comprising:
a first reel configured to rotate about a first axis to
tighten a first portion of the lacing system;
a second reel configured to rotate about a second
axis different than the first axis to tighten a second portion
of the lacing system; and
a first housing piece coupled to the body and
configured to house and connect both the first reel and the
second reel, wherein the medical brace is configured to
restrict movement of a portion of the user anatomy.
1 The real party in interest is identified as 3M Company and its affiliate 3M
Innovative Properties Company. App. Br. 2.
2 The Final Action is supplemented by an Advisory Action (mailed Feb. 12,
2015).
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Appeal 2016-002629
Application 13/174,533
Rejections
I. Claims 1, 4—8, 10, 13—15, 17—19, 22, and 24 stand rejected
under 35 U.S.C. § 102(b) as anticipated by Hammerslag et al. (US
2008/0066272 Al, published Mar. 20, 2008) (“Hammerslag”). Final Act. 2—
8.3
II. Claims 2, 3, 9, 16, 23, and 25 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hammerslag and Deharde et al. (US
5,658,241, issued Aug. 19, 1997) (“Deharde”). Final Act. 9-11.
DISCUSSION
We have reviewed the Examiner’s rejections in light of Appellants’
arguments. We concur with Appellants’ argument that the Examiner has not
shown Hammerslag discloses “a first housing piece coupled to the body and
configured to house and connect both the first reel and the second reel,” as
recited in claim 1, or “a first unitary housing piece coupled to the body, and
configured to house and connect both the first reel and the second reel,” as
recited in claim 14. App. Br. 10—11.
Appellants contend Hammerslag’s “unlabeled structures” in which the
reels sit “do not constitute the claimed housing piece, as they are
independent and discrete] structural entities on opposite cuffs” of
Hammerslag’s knee brace. App. Br. 11. Appellants cite paragraphs 43 44
of the Specification as support for interpreting the term “housing piece” as a
3 The Examiner also relies on Hammerslag et al. (US 2006/0156517 Al,
published July 20, 2006), which is incorporated by reference into
Hammerslag. Final Act. 2. The Examiner’s reference to “Deharde et al.” as
part of this rejection, id., appears to be an inadvertent error corrected in the
Answer, Ans. 3.
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Appeal 2016-002629
Application 13/174,533
structure specifically configured to house both reels and connect both reels,
App. Br. 11, or, in other words, as “an integrated, monolithic structure” such
as that shown in Figure 3 A of Appellants’ Specification, Reply Br. 1.
Although the Examiner provides some explanation for how the term
“unitary,” as in “a first unitary housing piece” recited in claim 14, may
comprise several parts secured together, Ans. 11—12, the Examiner does not
address the claim term “housing piece.” Paragraph 44 of Appellants’
Specification provides that “[i]t can be less time consuming and cheaper to
mold one housing piece than three separate pieces,” and this “housing piece”
(housing 136) shown in Appellants’ Figure 3 A consists of a single,
monolithic material without seams or joints. Thus, the Specification
differentiates between a single “piece” and multiple “pieces,” even for
interconnected pieces that perform a single function. Given this usage in the
Specification and language in claims 1 and 14 limiting these claims to a
singular “housing piece,” we agree with Appellants that several parts
secured together are not a “housing piece” as claimed. Accordingly, we
agree with Appellants, App. Br. 11, that Hammerslag’s separate structures
forming recesses to house one reel on the upper cuff and another reel on the
lower cuff, even where the cuffs are connected by struts and a hinge, does
not meet the limitation of “a first housing piece coupled to the body and
configured to house and connect both the first reel and the second reel,” as
recited in claim 1, or “a first unitary housing piece coupled to the body, and
configured to house and connect both the first reel and the second reel,” as
recited in claim 14. App. Br. 10—11.
In view of the foregoing, we do not sustain the rejection of
independent claims 1 and 14 under 35 U.S.C. § 102(b) as anticipated by
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Appeal 2016-002629
Application 13/174,533
Hammerslag. For the same reasons, we do not sustain the rejection of
dependent claims 4—8, 10, 13, 15, 17—19, 22, and 24, rejected on the same
basis.
The Examiner’s rejection of dependent claims 2, 3, 9, 16, 23, and 25
as obvious over Hammerslag and Deharde relies on the same unsupported
findings discussed above for the independent claims. Final Act. 9—11.
Accordingly, we do not sustain the Examiner’s rejection of claims 2, 3, 9,
16, 23, and 25 for the same reasons.
DECISION
We reverse the Examiner’s rejections of claims 1—10, 13—19, and 22—
25.
REVERSED
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