Ex Parte Nordt et al

Patent Trial and Appeal Board

May 1, 2018

13241865 (P.T.A.B. May. 1, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/241,865 09/23/2011
36790 7590 05/02/2018
TILLMAN WRIGHT, PLLC
POBOX49309
CHARLOTTE, NC 28277-0076
FIRST NAMED INVENTOR
William E. Nordt III
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.
1017.039 3275
EXAMINER
RODRIQUEZ, KARI KRISTIN
ART UNIT PAPER NUMBER
3772
MAILDATE DELIVERY MODE
05/02/2018 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 WILLIAM E. NORDT III, IAN D. KOV ACEVICH,
JASON HUNEYCUTT, and THOMAS J. PHILPOTT
Appeal2015-001233 1
Application 13/241,8652
Technology Center 3700
Before MICHAEL W. KIM, MICHAEL C. ASTORINO, and
JAMES A. WORTH, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON REMAND
This case is on remand from the United States Court of Appeals for
the Federal Circuit ("Federal Circuit"). In re Nordt Development Co., LLC,
881F.3d1371 (Fed. Cir. 2018).
BACKGROUND
In a Final Office Action mailed Sept. 13, 2013 ("Final Act."), the
1 Our decision refers to the Appellants' Appeal Brief ("Appeal Br.," filed
Apr. 10, 2014) and Reply Brief ("Reply Br.," filed Oct. 27, 2014), and the
Examiner's Final Office Action ("Final Act.," mailed Sept. 10, 2013) and
Answer ("Ans.," mailed Aug. 27, 2014).
2 According to Appellants, the real party in interest is Nordt Development
Co., LLC (Appeal Br. 3).
Appeal2015-001233
Application 13/241,865
Examiner rejected claims 1-20, which constitutes all pending claims, as
follows:
Claims 1-20 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Gildersleeve (US 6,238,360 Bl, iss. May 29, 2001).
Appellants appealed to the Board under 35 U.S.C. § 134(a) from the
Final Rejection. We entered a Decision on Appeal (mailed Nov. 2, 2016)
("Decision") affirming the Examiner's decision to reject claims 1, 3-8, 14,
and 16-20 and reversing the Examiner's decision to reject claims 2, 9-13,
and 15. Ex parte Nordt, Appeal 2015-001233. Appellants appealed to the
Federal Circuit for review of our Decision affirming the rejection of
independent claims 1 and 14. The Federal Circuit vacated our Decision and
remanded the case for further consideration by the Board consistent with its
opinion, i.e., pursuant to the court's revised claim construction.
We have re-evaluated the Examiner's anticipation rejection, in light of
the court's comments and instructions. Based upon the court's revised claim
construction, we REVERSE the Examiner's rejection of claims 1, 3-8, 14,
and 16-20.
Introduction
Appellants' disclosure relates to various supports for the body and,
with respect to certain embodiments, to potentiating supports for hinge joints
of the body (Spec. i-f 6). Certain supports are designed for the knee and
certain for the elbow (id.).
Claims 1 and 14 are the independent claims remaining on remand. 3
Claim 1, reproduced below, is representative of the subject matter on appeal:
3 The Examiner's rejection under§ 102 of independent claim 9 and
dependent claims 2, 10-13, and 15 was previously reversed and was
2
Appeal2015-001233
Application 13/241,865
1. A support for an area of a body that includes a
hinge joint, comprising:
(a) a hinge mechanism comprising an injection
molded strut component and injection molded first
and second arm components;
(b) an elastically stretchable framework injection
molded about the strut and arm components of the
hinge mechanism, the framework being configured
to extend across the hinge joint of the area of the
body, and the framework defining a flexible,
elastically stretchable web of elastomeric
interconnecting members;
( c) wherein the first arm component is connected
to the strut component such that the first arm
component is rotatable relative to the strut
component only about a first pivot axis;
( d) wherein the second arm component is
connected to the strut component such that the
second arm component is rotatable relative to the
strut component only about a second pivot axis;
and
( e) wherein the strut component is configured to
extend with the framework across the hinge joint
such that the first pivot axis is located on a first
side of the hinge joint and the second pivot axis is
located on a second, opposite side of the hinge
joint.
(Appeal Br., Claims App'x.)
ANALYSIS
therefore not the subject of appeal to the Federal Circuit (see Nordt, 881
F.3d at 1372 ("Nordt Development Co., LLC appeals the Patent Trial and
Appeal Board's decision affirming an examiner's rejection of claims 1 and
14").
3
Appeal2015-001233
Application 13/241,865
The court agreed with Nordt that the claim term "injection molded" is
structural and should have been afforded weight when assessing
patentability. Nordt, 881 F.3d at 1375. The court observed that "neither the
Board nor the examiner dispute Nordt's assertion that 'there are clear
structural differences' between a knee brace made with fabric components
and a knee brace made with injection-molded components." Id. The court
analyzed the plain claim language and the Specification (e.g., i-f 14), and held
that "at a minimum, the specification demonstrates that 'injection molded'
connotes an integral structure." Id.
The court instructed the Board as follows: "We remand for the Board
to construe the 'injection molded' limitation in the first instance. While the
specification supports an interpretation that requires an integral structure, we
leave it to the Board to determine whether this claim language or the
surrounding claim language requires any additional structure." Id. at 1376.
Further to the court's guidance, we determine that the term "injection
molded" means "integral" such that the framework is one-piece that is
disposed about the strut and arm components of the hinge mechanism. See
Spec. i-f 32 (comparing and contrasting types of composition); Claims App 'x,
claim 1 ("(b) an elastically stretchable framework injection molded about the
strut and arm components of the hinge mechanism").
Appellants contend that Gildersleeve fails to anticipate the structure of
a framework injection molded about strut and arm components, as recited in
claim 1. Appeal Br. 11. We are persuaded by Appellants' contention in
view of the court's claim construction. The Examiner finds that
Gildersleeve discloses the claimed framework as sleeve 12. Final Act. 3.
The Examiner finds that sleeve 12 is composed of fabric that is stitched
4
Appeal2015-001233
Application 13/241,865
together. Id. at 2. Gildersleeve states sleeve 12 may be formed of fully-,
non-, or partially-stretchable fabric, and may be fabricated using
conventional stitching. Gildersleeve, col. 3, 11. 27-33, col. 4, 11. 1-11, col. 4,
11. 34--36. Applying the court's claim construction, we determine that
Gildersleeve' s framework is not integral or one-piece, and, therefore, does
not meet the "injection molded" limitation of independent claim 1.
Accordingly, we do not sustain the Examiner's rejection under§ 102 of
independent claim 1 and dependent claims 3-8.
Independent claim 14 contains similar language and requirements as
independent claim 1. For the same reasons, we do not sustain the
Examiner's rejection under§ 102 of independent claim 14 and dependent
claims 16-20. The Examiner shall be guided by the court's claim
construction in the event of any future prosecution with respect to the same
or similar claim limitations.
DECISION
The Examiner's decision to reject claims 1, 3-8, 14, and 16-20 under
§ 102(b) is reversed.
REVERSED
5