Ex Parte Testa

Patent Trial and Appeal Board

Jun 27, 2013

11224854 (P.T.A.B. Jun. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD

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Ex parte ANTHONY S. TESTA, JR.

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Appeal 2011-006734
Application 11/224,854
Technology Center 3700
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Before EDWARD A. BROWN, ANNETTE R. REIMERS and
CARL M. DeFRANCO, Administrative Patent Judges.

DeFRANCO, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/224,854

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-4 and 6. Br. 5. Claims 5, 7 and 8 have been canceled.
Id. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
CLAIMED INVENTION
The claimed invention relates to “a knee brace adapted to absorb
impact and support a knee joint.” Spec., para. [0001]. Claims 1 and 6 are
the independent claims, and claim 1 is illustrative of the claims on appeal:
1. A protective brace for a knee joint comprising:
a tube-shaped brace formed of an elastic material, the
tube-shaped brace formed to be generally positionable on a
wearer's knee and adjacent leg areas above a knee joint and
below the knee joint, the tube-shaped brace having a first
opening designed to be positioned above the wearer's knee
joint, a second opening designed to be positioned below the
wearer's knee joint, and a center opening disposed between the
first and second openings, the center opening formed to
accommodate the knee joint of the wearer;
at least two cylindrical pouches, each one of said pouches
formed of an elastic material, a first one of said pouches being
disposed along a length of the tube-shaped brace and a second
one of said pouches disposed along a length of the tube-shaped
brace generally opposite the first pouch, wherein a first end of
each one of the pouches begins at a point above the center
opening and a second end of each one of the pouches terminates
at a point below the center opening, each one of the pouches
formed to contain a cylindrical spring, each of said pouches
having an opening and closing means for allowing said
cylindrical springs to be replaced or changed as needed; and
a first cylindrical spring retained in the first pouch and a
second cylindrical spring retained in the second pouch, each
spring having a first end and a second end, wherein a distance
between the first and second ends is approximately equal to a
length of one of the pouches such that the first cylindrical
spring and the second cylindrical spring each extend between a
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Application 11/224,854

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point below a wearer's knee to a point above the wearer's knee
such that the first cylindrical spring and the second cylindrical
spring absorb force related to leg impact, including side impact,
and direct the force away from knee ligaments and into muscle
tissue adjacent to the wearer's knee.

Br. 14, Clms. App’x.

REJECTION
Claims 1-4 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wilson (US 5,792,084, iss. Aug. 11, 1998), Pape (US
2007/0271668 A1, pub. Nov. 29, 2007) and Garelick (US 2005/0267391 A1,
pub. Dec. 1, 2005). Ans. 5.
ANALYSIS
Appellant argues claims 1-4 and 6 as a group, relying on the same
arguments for both independent claims 1 and 6. Br. 10-13. Appellant does
not separately argue dependent claims 2-4. Id. We select claim 1 for review
with claims 2-4 and 6 standing or falling with claim 1. See 37 C.F.R. §
41.37(c)(1)(vii) (2011).
The Examiner relied on Wilson for teaching all the limitations of the
claimed knee brace (including the limitations of two cylindrical pouches
(42a, 42b) along the lateral and medial sides of the knee, and stiffeners in the
form of spiral springs (50) retained in each pouch) except for “the springs
[being] cylindrical and . . . each pouch [having] opening and closing means.”
Ans. 5-6. The Examiner relied on Pape for teaching a knee covering
wherein “helical springs (see Fig. 3) are enclosed in pockets to provide[]
greater resistance to bending.” Id. at 6 (also referencing Pape, Fig. 7). The
Examiner relied on Garelick for teaching a hand brace having elongated
pockets (8a, 9a) and closure flaps (8, 9) for holding bendable, semi-rigid
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inserts (8, 9). Id. (referencing Garelick, para. [0018]). In view of the
teachings of Pape and Garelick, the Examiner concluded that a skilled
artisan would have found it obvious, first, to substitute Wilson’s “spiral
spring” elements with “helical springs,” as taught by Pape, to obtain the
predictable result of providing “greater resistance to bending,” and second,
to add closure flaps, as taught by Garelick, to Wilson’s pockets in order to
permit removal of the springs when not needed. Id.
Appellant contends that the Examiner erred in combining Wilson and
Pape because Wilson is directed to immobilizing the knee whereas Pape is
directed to providing resistance against bending of the knee. Br. 11. Thus,
according to Appellant, an ordinary artisan would not look to incorporate the
resistance helical springs of Pape into the knee brace of Wilson. Id. We
disagree. Although Appellant correctly states that Wilson’s brace includes
an inflatable pad for immobilizing the knee’s patella, the Examiner found
that Wilson’s brace also includes “stiffeners (50) in the form of . . . spiral
metal stays” along the lateral and medial sides of the knee that “resist
bending of the knee.” See Ans. 7. Pape’s cylindrical springs serve
essentially the same function—providing “greater resistance to bending [of
the knee joint].” See id. at 8; see also Pape, para. [0027]. Given that
Wilson’s spiral stiffeners and Pape’s cylindrical springs function similarly
(i.e., resist against bending of the knee), we are not persuaded that Appellant
has apprised us of error with the Examiner’s findings and rationale as to the
combined teachings of Wilson and Pape. “[W]hen a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.” KSR Int’l Co. v. Teleflex, Inc.,
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550 U.S. 398, 418 (2007). Here, because both Wilson and Pape are
concerned with the problem of increasing resistance against bending of the
knee along the lateral and medial sides, a skilled artisan would have found it
obvious to substitute the known cylindrical spring of Pape for the known
spiral stiffeners of Wilson as a matter of simple substitution to obtain the
predictable result of varying resistance against bending of the knee.
Appellant next contends that Garelick is directed to immobilizing the
wrist “so it is not concerned with redirecting force from leg impact away
from knee ligaments.” Br. 11. The Examiner, however, did not rely on
Garelick for such a teaching; rather, the Examiner relied on Garelick as
evincing obviousness of providing opening/closing flaps for Wilson’s
elongated pockets. See Ans. 6, 8. Appellant does not address that finding
by the Examiner. As such, Appellant’s contention with respect to Garelick
is not persuasive.
Appellant also argues that Wilson, as modified by Pape and Garelick,
does not disclose first and second cylindrical springs which “absorb force
related to leg impact and direct the force away from knee ligaments and into
muscle tissue adjacent to the wearer's knee.” Br. 11-12. The Examiner
expressly found, however, that both Wilson’s spiral stiffeners and Pape’s
cylindrical springs “extend between a point below a wearer’s knee to a point
above the wearer’s knee” and thus Wilson’s knee brace, as modified by
Pape, “is capable of absorbing force related to leg impact and capable of
directing the force away from the knee ligaments and applying them to the
muscle tissue adjacent the wearer’s knee.” Ans. 7. The Examiner explained
that, because the modified knee brace includes essentially the same structure
as the claimed invention, “nothing precludes Wilson et al.’s first and second
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springs from functioning in such a manner” as recited by claim 1. Id. at 9.
We discern no error in the Examiner’s finding. The absence of an express
disclosure relating to function does not defeat a finding of obviousness. In
re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Where the claimed and
prior art devices are identical or substantially identical, the Examiner can
presume the claimed properties or functions to be inherent, thereby
establishing a prima facie case of obviousness. In re Best, 562 F.2d 1252,
1255-56 (CCPA 1977). Here, Appellant does not identify any disclosure in
Wilson or Pape, or provide any technical evidence, that supports the
contention that the cylindrical springs of Wilson, as modified by Pape,
would not absorb impact force and direct it away from the knee ligaments.
Given that the modified Wilson brace defines essentially the same structure
as the claimed invention, and that Appellant has not come forward with any
persuasive evidence or argument to rebut the Examiner’s finding that the
modified Wilson brace is capable of performing the claimed function, we
agree with the Examiner that the claimed invention would have been
obvious.
Appellant lastly proffers two affidavits, contending that they evince
non-obviousness in terms of commercial success, long felt need, failure of
others, praise by others, and recognition of a problem. Br. 12. The
Examiner, however, found that Appellant’s evidence lacks in several key
respects, namely, it “fails to provide hard evidence (i.e., sales data),” it
“merely discusses the use on two athletes and a senior,” it fails to show that
“others of ordinary skill in the art were working on the problem and if so, for
how long,” and whether if they “knew of the teaching of the cited references,
they would still be unable to solve the problem.” Ans. 10. Based on these
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findings, the Examiner gave little, if any, weight to the affidavits. Id.
Moreover, to the extent that the affidavits evince praise by others and
recognition of a problem, the Examiner found that “the presented evidence is
not so great as to outweigh the evidence of obviousness.” Id. Having
considered all the evidence presented by Appellant against obviousness and
weighing such evidence anew, we discern no error in the Examiner’s
analysis and reasoning on the issue of secondary considerations. As such,
we agree with the Examiner that Appellant has not overcome the prima facie
case of obviousness.
Because the combined teachings of Wilson, Pape and Garelick render
obvious all the limitations of claim 1, we sustain the rejection of independent
claim 1. We also sustain the rejection of independent claim 6, and
dependent claims 2-4, as they fall with claim 1.
DECISION
We affirm the Examiner’s decision rejecting claims 1-4 and 6.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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