Ex Parte Nozik et al

Board of Patent Appeals and Interferences

Jul 13, 2007

10759713 (B.P.A.I. Jul. 13, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MARCIA GROSSMAN NOZIK
and RANDY GROSSMAN NOZIK
__________

Appeal 2007-1812
Application 10/759,713
Technology Center 3700
__________

Decided July 13, 2007
__________

Before TONI R. SCHEINER, ERIC GRIMES, and LORA M. GREEN,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a sling
holder. The Examiner has rejected the claims as anticipated or obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.
BACKGROUND
The Specification describes “a sling holder that when assembled can
be secured around a body part to hold an object thereto. The sling holder
comprises a strap having first and second ends and a fastener for securing
Appeal 2007-1812
Application 10/759,713

the strap to itself. The strap includes at least one pocket into which the
object is placed.” (Specification 2.) The Specification also describes
attaching the pocket to the strap with a fastener, as well as using fasteners to
interconnect additional straps to the first strap (id.)
DISCUSSION
1. CLAIMS
Claims 1-22 are pending and on appeal. With regard to the
obviousness rejection of claims 1-10 and 12-22, the claims have been argued
in two groups (Br. 4 and 6). The claims within each of these two groups
stand or fall together. 37 C.F.R. § 41.37(c)(1)(vii). We will focus on
claims 1 and 16, which are representative and read as follows:
1. A sling holder for holding an object for an extended
period of time against the skin, said sling holder comprising:
a strap having a first end and an opposing end;
a single fastener for coupling and first end to said
second end, said fastener being positioned at said first end and said opposing
second end of said strap and positioned completely within the perimeter of
said strap; and
at least one pocket attachable to said strap.

16. A sling holder for holding an object against the skin, said
holder comprising:
a first strap;
a second strap for adjusting a length of said sling holder,
said second strap being attachable at a first end thereof to said first strap;
a single fastener for coupling a second end of said second
strap to said first strap, said fastener being positioned at said first strap and
said second end of said second strap and positioned completely within the
perimeter of said first and second straps; and
at least one pocket attachable to at least one of said first
strap and said second strap.
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Application 10/759,713

Thus, claim 1 is directed to a sling holder comprising a strap having
two ends, a fastener for coupling the ends, and a pocket attachable to the
strap. Claim 1 also requires that the fastener be “positioned completely
within the perimeter of [the] strap.”
Claim 16 is directed to a sling holder comprising two straps and an
attachable pocket. One strap (the “second strap”) is attachable at one end to
the other strap (the “first strap”). The sling holder of claim 16 also
comprises a single fastener for coupling the other end of the second strap to
the first strap, the fastener being “positioned completely within the perimeter
of” the two straps.
2. REFERENCES
The Examiner relies on the following references:
Noppel US 5,069,208 Dec. 3, 1991
Allen US 5,507,794 Apr. 16, 1996
Silverberg US 5,823,984 Oct. 20, 1998
Edwards US 6,440,159 B1 Aug. 27, 2002

3. ANTICIPATION
Claims 1-10 stand rejected under 35 U.S.C. § 102(e) as anticipated by
Edwards. The Examiner relies on Edwards for disclosing all of the
limitations of claim 1 (Answer 4). With regard to the recitation of “a single
fastener,” the Examiner argues that “[c]laim 1 uses the transitional phrase
‘comprising’, which is . . . inclusive or open-ended and does not exclude
additional, unrecited elements” (id. at 11).
We conclude that the Examiner has set forth a prima facie case of
anticipation. Edwards describes a “wrap for applying thermal therapy to a
patient ha[ving] a therapy section with a pocket sized to receive and retain a
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Application 10/759,713

thermal unit” (Edwards, col. 1, ll. 54-56). Attached to the therapy section of
the wrap are long and short connecting means; each of the connecting means
has left and right sections that extend outwardly from the sides of the
therapy section, as well as elements for attaching the two sections of each
connecting means to each other (id. at col. 1, l. 61, to col. 2, l. 30). As
depicted in Figure 1, Edwards discloses attaching elements that are
positioned completely within the perimeter of the wrap.
Appellants argue that Edwards fails to disclose a strap having a single
fastener (Br. 4). Instead, Appellants argue that the “Edwards device has two
fasteners, each of which are positioned on the respectively attachable ‘ears’
of an hourglass-shaped wrap” (id.). Appellants also argue that, “while
‘comprising’ takes on the appearance of opening the claim to an additional
fastener, the explicit recitation of a ‘single’ fastener should limit the claim to
one fastener for the sole reason that it would be impossible (and nonsensical)
to have more than one single fastener” (Reply Br. 2).
We are not persuaded by this argument. “It is axiomatic that, in
proceedings before the PTO, claims in an application are to be given their
broadest reasonable interpretation consistent with the specification.” In re
Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983) (citation
omitted). In this case, we agree with the Examiner that reciting “a single
fastener” is insufficient to require that no other fastener be present in the
device. First, in view of the “comprising” language, we agree that it is
reasonable to interpret claim 1 to include another fastener.
Second, even if the term “single” fastener was interpreted to mean
“one and only one” fastener, claim 1 would still reasonably appear to read
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Application 10/759,713

on Edwards. That is, claim 1 is not limited to a device having a strap with
only two ends. Claim 1 merely requires a “single fastener for coupling” the
first end of the strap to the second end of the strap. The attaching elements
on, for example, the long connecting means of Edwards appear to meet this
limitation. That is, Edwards discloses a sling holder having only one
fastener for connecting the first section of the long connecting means to the
second section of the long connecting means. There is no language in
claim 1 that excludes a fastener from being present on other portions of the
device, such as the ends of the short connecting means of Edwards’ device.
We conclude that the Examiner has set forth a prima facie case that
claim 1 is anticipated by Edwards, which Appellants have not rebutted. We
therefore affirm the rejection of claim 1 under 35 U.S.C. § 102(e).
Claims 2-10 fall with claim 1.
4. OBVIOUSNESS
Claims 1-10 and 12-22 stand rejected under 35 U.S.C. § 103 as
obvious over Silverberg in view of Allen. With regard to claim 1, the
Examiner relies on Silverberg for disclosing a sling holder comprising “a
strap (12); having a first end and an opposing second end; a fastener (14) for
coupling said first end to said second end; and at least one pocket
attachable (20) to said strap” (Answer 6). With regard to claim 16, the
Examiner relies on Silverberg for additionally disclosing “a second strap
(second of 12) for adjusting a length of said sling holder, said second strap
being attachable at a first end thereof to said first strap; [and] a fastener (14)
for coupling a second end of said second strap to said first strap” (id. at 8-9).
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Application 10/759,713

The Examiner relies on Allen for disclosing a thermal strap having
“an alternate means of fastening by providing the device with a single hook-
type fastener positioned completely within the perimeter of the strap (10)
that fastenably couples to the loop-like material on the other end and side of
the strap in order to secure the strap/device about the user” (id. at 6). The
Examiner concludes that it would have been obvious “to modify the
invention of Silverberg, as is well known in the art and taught by Allen, to
use a single hook-type fastener positioned completely within the perimeter
of the strap as an alternate fastening means in order to secure the strap to a
user” (id. at 6-7).
We conclude that the Examiner has set forth a prima facie case of
obviousness. Silverberg describes a wrap for snugly fitting around a body
area that “includes one or more panels with . . . surfaces of a fabric loop-type
material,” “[h]ook-type fasteners which mate with the fabric loop-type
material . . . used to secure adjoining panels together to form a wrap of an
appropriate size,” and “[o]ne or more pockets . . . removably attached to the
interior surface of the panels” (Silverberg, col. 2, ll. 8-20). “Preferably,
three hook-type fasteners are coupled to a right edge of each panel to
provide securing means for securing the panel to an adjoining panel” (id. at
col. 2, ll. 13-17). “The fasteners 14 are preferably sewn to the panel 12 and
extend over the edge of the panel for securing to an adjoining panel” (id. at
col. 3, ll. 20-24).
Allen describes a “support member having two ends, a securing
member for removably securing the support member ends, a breast pouch
disposed on the support member, and a temperature regulator positioned in
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Application 10/759,713

the breast pouch” (Allen, col. 2, ll. 5-8). Preferably, “the adjustable securing
member 2 includes a layer 13 of hook-like material disposed proximate one
end 11 of the support member,” which meshes with a “layer 18 of fibrous
material . . . disposed proximate the opposite end 12 of the support member”
(id. at col. 3, ll. 14-23). As depicted in Figure 1, Allen discloses a securing
member positioned completely within the perimeter of the support member.
We agree with the Examiner that it would have been obvious to modify the
wrap described in Silverberg to replace the three hook-type fasteners with a
layer of hook-like material positioned completely within the perimeter of
Silverberg’s panels, as described in Allen.
With regard to claim 1, Appellants argue that “Silverberg and Allen,
individually or in combination, fail to disclose, teach, or suggest a sling
holder having a strap having a single fastener, the fastener being positioned
completely within the perimeter of the strap” (Br. 5). In particular,
Appellants argue that the “securing member in the Allen device extends
from one end of the support member” and is therefore “not within the
perimeter of the support member” (id.)
We are not persuaded by this argument. As discussed above, Allen’s
Figure 1 depicts a securing member having “a layer 13 of hook-like material
disposed proximate one end 11 of the support member,” which meshes with
a “layer 18 of fibrous material . . . disposed proximate the opposite end 12 of
the support member” (Allen, col. 3, ll. 14-23). Both the layer of hook-like
material and the layer of fibrous material are completely within the
perimeter of the support member. Thus, we do not agree with Appellants
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that the combination of Silverberg with Allen “does not result in a fastener
positioned within a perimeter of a strap (Br. 5).1
Appellants also argue that Allen “emphasizes the stretchable, elastic
qualities of its device while Silverberg explicitly discloses a wrap that
snugly fits around a body area without the need for elastic bands” (Br. 5-6).
Appellants conclude that “one of skill in the art would not likely look from
multiple panel wraps that explicitly avoid the use of elastic bands
(Silverberg) to stretchable elastic devices (Allen) to arrive at the invention as
recited in claim 1” (id. at 6).
We are not persuaded by this argument. The Examiner is relying on
Allen to demonstrate that it would have been obvious to use a single fastener
positioned completely within the perimeter of the strap. Although
Silverberg describes a wrap that “snugly fit[s] around a body area without
the need for . . . elastic bands” (Silverberg, col. 2, ll. 12-13) and Allen
describes a support member formed from an “elastic material which is
capable of stretching in multiple directions” (Allen, col. 2, ll. 63-67), we do
not agree that one of ordinary skill in the art would not look to Allen for
ways to fasten a strap around a body area. “The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int’l v. Teleflex Inc., 127 S. Ct.
1727, 1739, 82 USPQ2d 1385, 1395 (2007).
Appellants raise substantially the same arguments for claim 16 that
are raised for claim 1 (Br. 7). We are not persuaded by these arguments for
the reasons discussed above.

1 In fact, Allen appears to anticipate claim 1.
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We conclude that the Examiner has set forth a prima facie case that
claims 1 and 16 would have been obvious over Silverberg in view of Allen,
which Appellants have not rebutted. We therefore affirm the rejection of
claims 1 and 16 under 35 U.S.C. § 103. Claims 2-10 and 12-15 fall with
claim 1 and claims 17-22 fall with claim 16.
Claim 11 stands rejected under 35 U.S.C. § 103 as obvious over
Silverberg in view of Allen and Noppel. Claim 11 depends from claim 1
and requires that the sling holder further comprises a temperature indicator
on the strap or pocket.
The Examiner relies on Silverberg and Allen for the features of
claim 1 (Answer 10). The Examiner relies on Noppel for disclosing “a film
of a sensitive material capable of indicating whether the temperature of
transformation has been reached” (id.) The Examiner concludes that it
would have been obvious to modify the combined teachings of Silverberg
and Allen to include, on the strap or pocket thereof, Noppel’s temperature
indicating film (id.).
Appellants argue that claim 11 is non-obvious based on its
dependency from claim 1 (Br. 6). However, as discussed above, we agree
with the Examiner that Silverberg and Allen render claim 1 obvious.
We conclude that the Examiner has set forth a prima facie case that
claim 11 would have been obvious over Silverberg in view of Allen and
Noppel, which Appellants have not rebutted. We therefore affirm the
rejection of claim 11 under 35 U.S.C. § 103.
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SUMMARY
The Examiner’s position is supported by the preponderance of the
evidence of record. We therefore affirm the rejection of claims 1-10 under
35 U.S.C. § 102 and the rejection of claims 1-22 under 35 U.S.C. § 103.
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

Ssc

RICHARD R. MICHAUD
MICHAUD-DUFFY GROUP LLP
SUITE 206
306 INDUSTRIAL PARK ROAD
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