Ex Parte Tilghman

Patent Trial and Appeal Board

Mar 20, 2013

12140516 (P.T.A.B. Mar. 20, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRYAN K. TILGHMAN
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Appeal 2011-006698
Application 12/140,516
Technology Center 3700
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Before GAY ANN SPAHN, BARRY L. GROSSMAN, and JILL D. HILL,
Administrative Patent Judges.

GROSSMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-006698
Application 12/140,516

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1, 3, and 4. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim on appeal, is reproduced below:
1. A bandage for a hoof, comprising: a sheet material
having a central body portion and a plurality of at least six
independently foldable palmate lobes radiating outwardly from
a central body portion and foldable one over another so as to
enable the bandage to lie flat against the profiles of the hoof,
one of the lobes located to fold up and substantially surround a
back side of the hoof and including straps that extend from
opposed sides of such lobe adjacent the back side of the hoof
toward a toe of the hoof and which straps are secured to an
exterior portion of the bandage adjacent the toe of the hoof
when the bandage is installed on the hoof.

REFERENCES
The Examiner relied upon the following prior art references:

Moore US 3,508,544 Apr. 28, 1970
Nor US 5,389,061 Feb. 14, 1995
Schultz US 6,122,901 Sep. 26, 2000
Appeal 2011-006698
Application 12/140,516

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REJECTIONS
Appellant seeks review of the following rejections:
1. Claims 1 and 3 rejected under 35 U.S.C. §103(a) as unpatentable
over Schultz and Moore.
2. Claim 4 rejected under 35 U.S.C. §103(a) as unpatentable over
Schultz, Moore, and Nor.
ANALYSIS
Rejection (1) – Obviousness Based on Schultz and Moore
Appellant offers specific arguments only for claim 1 (App. Br. 8-12)1
and states that the rejection of dependent claim 3 is “traversed” for the same
reason as claim 1 (App. Br. 10). Accordingly, we address only claim 1 and
claim 3 stands or falls with claim 1. See 37 C.F.R. § 41.37 (c)(1)(vii).
The Examiner found that Schultz discloses an adhesive bandage for a
hoof comprising independently foldable palmate lobes radiating outwardly
from a central body portion and “foldable over one another” so as to enable
the bandage to lie flat against profiles of the hoof. Ans. 42. The Examiner
also found that one of the lobes included a strap (reference numeral 34) that
extends around a back side of the hoof, “with opposite ends of the strap
positioned adjacent the toe of the hoof and secured to an exterior portion of
the first one of the lobes.” Id. The Examiner explained that this finding was
based on the disclosure that the bandage is provided in several sizes and
shapes to accommodate variations in hoof size and shape. The Examiner

1 Citations to “App. Br. ___” are to the indicated page in the Appeal Brief
filed November 18, 2010.

2 Citations to “Ans. ___” are to the indicated page in the Examiner's Answer
mailed January 5, 2011.

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Application 12/140,516

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interpreted this as disclosing or suggesting that one could chose a size and
shape wherein the lobes “would be able to fold over” each other and wherein
the straps would be able to extend from around the back of the hoof with its
opposite ends secured over the lobes of the bandage at the toe of the hoof.
Ans. 4.
Notwithstanding this explanation and interpretation of Schultz, the
Examiner also cited and applied Moore for the disclosure of lobes/straps
extending from the back of the foot to the front of the foot and fastened over
the ankle, citing column 3 lines 50-68 of Moore. Ans. 5. The Examiner
concluded that at the time of the invention was made, based on the
disclosure of Moore, it would have been obvious to one having ordinary skill
in the art to make the lobes of Shultz such that the extended portions of the
lobes have a size and shape so as to be foldable over one another with a strap
that extends around from the back side of the hoof and is secured to another
lobe adjacent the toe portion. Id. The rationale provided by the Examiner
for making this proposed modification is that it would accommodate
different sizes and shapes of the hoof and would provide additional
“securement” of the guard. Id. at 6.
Appellant argues that the Examiner’s explanation or interpretation is
inconsistent with the disclosure of Schultz. App. Br. 10. Appellant asserts
that to modify Schultz as proposed by the Examiner would make Schultz
“inoperable.” Id. According to Appellant, Schultz “expressly teaches
against” overlapping lobes (id.), citing the disclosure in Schultz at column 3,
line 58 – column 4, line 5 that tabs 30 and attachment bar 32 are configured
such that they “do not overlap one another (emphasis added).”
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Appellant overstates the Schultz disclosure. Schultz does not
expressly teach against overlapping lobes. Schultz states that lobes that do
not overlap one another are “a preferred arrangement.” Schultz, col. 3, l. 61
(emphasis added). Schultz explains that the reason he prefers lobes that do
not overlap is because with the “preferred adhesive 42 and bandage material
40,” the tabs 30 and attachment bar 32 bond easily to the horn 14 of the hoof
10 but do not easily stick to one another. Id. at col. 3, ll. 62-64 (emphasis
added). Thus, while Schultz prefers lobes that do not overlap, and prefers
adhering the lobes to the hoof rather than to other lobes, by stating these
preferences Schultz suggests that other arrangements are possible. One such
other arrangement, as found by the Examiner, is the arrangement suggested
by Moore.
As explained in Moore, the overlapping lobes/straps provide a smooth
contour which has no protrusions which will snag objects and provide the
advantage of “a complete wrapping of the ankle.” See, Moore, col. 3, ll. 62-
67. We note that the ability to “lie flat,” that is, to have a smooth contour, is
one of the alleged unique features of the claimed invention. App. Br. 11.
“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 Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). When there is a
design need or market pressure to solve a problem and there are a finite
number of identified, predictable solutions, a person of ordinary skill has
good reason to pursue the known options within his or her technical grasp.
If this leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. Id. at 421. That is the
case here.
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Schultz shows all the limitations of claim 1 except overlapping lobes
and straps secured to the exterior of the bandage. Moore discloses
overlapping lobes and the claimed strap arrangement for (1) providing a
smoother contour for the bandage, that is, allowing the bandage to lie flat
against the profile of the foot, and (2) providing a complete wrapping of the
foot. Modifying the Schultz bandage according to the Moore disclosure
would thus have been obvious for one with ordinary skill in the art trying to
provide a smoother contour and a more secure attachment to the hoof. The
decision to attach the straps directly to the bandage instead of the hoof
would have been a common sense alternative design choice, as found by the
Examiner. Such a modification is nothing more than a predictable use of
prior art elements according to their established functions. See KSR, 550
U.S. at 417.
Accordingly, upon consideration of the record as a whole in light of
Appellant’s contentions and the preponderance of relevant evidence, we are
of the opinion that Appellant has not shown any error in the rejections by the
Examiner. We sustain the Examiner’s rejection of independent claim 1, and
claim 3 which stands or falls therewith, under 35 U.S.C. § 103(a) as
unpatentable over Schultz and Moore.
Only those arguments actually made by Appellant have been
considered in this decision. Arguments which Appellant could have made
but chose not to make have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Rejection 2 – Obviousness Based on Shultz, Moore, and Nor
Appellant argues that “[t]he rejection of the dependent claim[] . . . 4
based on Shultz . . . [is] likewise respectfully traversed for th[e] same reason
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[as indepedendent claim 1],” and “[f]urther combination does not overcome
this defect in the Examiner’s reliance on Schultz.” App. Br. 10. As we
found no deficiency in Schultz for the reasons discussed supra, we are not
persuaded by Appellant’s argument of Examiner error, and we sustain the
Examiner’s rejection of claim 4 under 35 U.S.C. § 103(a) as unpatentable
over Schultz, Moore, and Nor.

DECISION
We AFFIRM the rejections of claims 1, 3, and 4.
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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