Ex Parte Novick

Patent Trials and Appeals Board

Jun 3, 2019

14682790 - (D) (P.T.A.B. Jun. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/682,790 04/09/2015
23460 7590 06/05/2019
LEYDIG VOIT & MA YER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON A VENUE
CHICAGO, IL 60601-6731
FIRST NAMED INVENTOR
Walter R. Novick
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.
284887 1018
EXAMINER
HICKS, VICTORIA J
ART UNIT PAPER NUMBER
3786
NOTIFICATION DATE DELIVERY MODE
06/05/2019 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):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte WALTERR. NOVICK
Appeal2018-009015
Application 14/682,790 1
Technology Center 3700
Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and
BRADLEY B. BAY AT, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner's rejection of claims 1-18. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
According to Appellant, the invention "generally relates to devices,
apparatuses[,] and equipment ... configured to be wrapped around a body
1 According to Appellant, the real party in interest is "the inventor, Walter R.
Novick." Appeal Br. 1.
Appeal2018-009015
Application 14/682,790
extremity, such as an arm or leg, to offer a degree of support, comfort[,]
and/or protection in the vicinity of a joint." Spec. ,r 2. Below, we reproduce
claim 1, the only independent claim on appeal, as illustrative of the appealed
claims.
1. A joint protection device fix comfortably protecting
a knee of a wearer while in a resting position, the joint protection
device comprising:
an interior device cover structure comprising a fabric sheet
incorporating a ceramic fiber phase change material and having
a moisture wicking property, wherein during use the interior
device cover structure faces toward the knee of the wearer;
an exterior device cover structure comprising unbroken
loop fabric, wherein the exterior device cover structure and the
interior device cover structure are joined along edges to form a
pocket;
a wrap for securing the joint protection device against a
leg of the wearer; and
at least one heat dissipating protective pad occupying the
pocket such that while the joint protection device is secured
against the knee of the wearer, the heat dissipating protective pad
covers a substantial majority of the knee, but capable of
extending less than a full knee circumference when fastened to
the knee, to provide protection against forces exerted by external
objects on the substantial majority of the knee while providing
an opening for direct exposure to air,
wherein the at least one heat dissipating protective pad
occupying the pocket is configured to extend over a front and
both sides of the knee of the wearer, such that the joint protection
device may provide protection for the front and both sides of the
knee.
2
Appeal2018-009015
Application 14/682,790
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
I. Claims 1, 2, and 10-16 under 35 U.S.C. § 103 as unpatentable
over Brown (US 2012/0227150 Al, pub. Sept. 13, 2012),
Mondal, "Phase change materials for smart textiles," Applied
Thermal Engineering, Vol. 28, pp. 1536-1550 (2008), and
Darlington, "Stretch fabrics for hook and loop applications,"
Innovation in Textiles (May 11, 2012) (retrieved from
http://www. innovationintextiles. com/ stretch-fabrics- for-hook-
and-loop-aoolications );
II. Claims 3, 5, and 6 under 35 U.S.C. § 103 as unpatentable over
Brown, Mondal, Darlington, and Srour et al. (US 6,199,234 B 1,
iss. Mar. 13, 2001) (hereinafter "Srour");
III. Claims 4 and 9 under 35 U.S.C. § 103 as unpatentable over
Brown, Mondal, Darlington, and Dugan (US 7,975,634 Bl, iss.
July 12, 2011);
IV. Claim 8 under 35 U.S.C. § 103 as unpatentable over Brown,
Mondal, Darlington, Dugan, and Srour;
V. Claim 17 under 35 U.S.C. § 103 as unpatentable over Brown,
Mondal, Darlington, and Paulos et al. (US 2011/0275970 Al,
pub. Nov. 10, 2011) (hereinafter "Paulos"); and
VI. Claims 7 and 18 under 35 U.S.C. § 103 as unpatentable over
Brown, Mondal, Darlington, and Chen (US 6,279,160 Bl, iss.
Aug. 28, 2001 ).
3
Appeal2018-009015
Application 14/682,790
ANALYSIS
Re;ection I
As set forth above, independent claim 1 recites, in relevant part, that
"the at least one heat dissipating protective pad occupying the pocket is
configured to extend over a front and both sides of the knee of the wearer."
Appeal Br., Claims App. (Claim 1). The Examiner relies on Brown's pad 24
to disclose the claimed protective pad, determining that "pad 24 occupying a
pocket between substrate 14 and sleeve 12, extending over an area
substantially greater than or equal to the underlying knee cap of the user, [is]
capable of providing flexibility and compression to protect anterior and
lateral portions of a user's knee." Answer 4 (citing Brown i-fl9, Figs. 2, 3)2;
see also Answer 25. Appellant argues that the Examiner's rejection is in
error, because "the only padded surface in Brown is the front surface,"
which means that Brown fails to provide "multidirectional (three-sided)
protection." Appeal Br. 6; see also Reply Br. 5---6 ("the [F]inal Office
[A]ction does not demonstrate how Brown's pad could 'extend over a front
and both sides of the knee of the wearer"').
Brown's Figures 2 and 3 show dimensionless, generally rectangular-
shaped pads, but do not indicate the pads' widths relative to the widths of
users' knees. Brown Figs. 2, 3. Brown discloses that "pad 24 is disposed on
substrate 14 of sleeve 12[,] and has an area substantially greater than or
equal to the area of a knee cap of the user." Id. ,r 19. Based on these
portions of Brown, the Examiner determines that "Brown[' s pad 24] is
2 Although the Examiner purports to cite Brown's paragraph "0048" (see
Final Action 4--5; see Answer 4), Brown includes only thirty-two (32)
numbered paragraphs.
4
Appeal2018-009015
Application 14/682,790
capable of being flexed to cover both sides of the knee when positioned
thereon." Answer 25.
Although Brown does disclose that pad 24 is "substantially greater
than or equal to the area of a knee cap of the user" (Brown ,r 19), this does
not teach a protective pad, as specifically recited in claim 1. First, just
because Brown's pad 24 "has an area substantially greater than ... the area
of a knee cap of the user" (id.), this does not mean that pad 24 is, in fact,
"capable of being flexed to cover both sides of the knee" (Answer 25).
Further, the Federal Circuit has held that when a claim recites an
element that is "configured to" achieve a function, the claim requires that the
specific element is not only "capable of' performing the recited function, but
is also specifically designed to accomplish the function that is claimed. See
Aspex Eyewear, Inc. v. Marchan Eyewear, Inc., 672 F.3d. 1335, 1349 (Fed.
Cir. 2012) (The court indicated that claim language "configured to" is
construed more narrowly than "capable of," and held that where claim
language is construed consistent with "configured to," the claim language
requires that the structure must be "designed or configured to accomplish the
specified objective, not simply that [it] can be made to serve that purpose.").
Therefore, even assuming arguendo that the Examiner correctly states that
"Brown is capable of being flexed to cover both sides of the knee when
positioned thereon" (Answer 25 (italics added)), the Examiner does not
establish that Brown is designed to cover both sides of the knee.
Thus, based on the foregoing, we do not sustain the Examiner's
obviousness rejection of independent claim 1. Further, we do not sustain the
Examiner's rejection of claims 2 and 10-16 that depend from claim 1, for
the same reasons we do not sustain claim 1 's rejection.
5
Appeal2018-009015
Application 14/682,790
Reiections II-VI
Claims 3-9, 17, and 18 depend from claim 1, the rejection of which
we do not sustain. In the Examiner's obviousness rejections of claims 3-9,
17, and 18, the Examiner does not rely on any other reference to disclose
something capable of remedying the above-discussed deficiency in claim 1 's
rejection. Thus, we do not sustain any of the rejections of claims 3-9, 17,
and 18.
DECISION
We REVERSE the Examiner's obviousness rejections of claims 1-18.
REVERSED
6