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
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Ex parte BRYAN K. TILGHMAN
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Appeal 2011-006698
Application 12/140,516
Technology Center 3700
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Before JAMES T. MOORE, Deputy Chief Administrative Patent Judge,
LINDA E. HORNER, STEFAN STAICOVICI, KEN B. BARRETT,
GAY ANN SPAHN, BARRY L. GROSSMAN, and JILL D. HILL,
Administrative Patent Judges.

Opinion for the Board filed by SPAHN, Administrative Patent Judge.

Opinion dissenting filed by GROSSMAN, Administrative Patent Judge,
with whom HILL, Administrative Patent Judge, joins.

SPAHN, Administrative Patent Judge.

DECISION ON REHEARING

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STATEMENT OF THE CASE
Bryan K. Tilghman (Appellant) requests that we reconsider our
decision of March 22, 2013 (“Decision”),1 in which we affirmed the
Examiner’s decision rejecting: claims 1 and 3 under 35 U.S.C. § 103(a) as
being unpatentable over Schultz (US 6,122,901, issued Sep. 26, 2000) and
Moore (US 3,508,544, issued Apr. 28, 1970); and claim 4 under 35 U.S.C.
§ 103(a) as being unpatentable over Schultz, Moore, and Nor (US 5,389,061,
issued Feb. 14, 1995).2
Appellant argues that the Decision is erroneous in affirming the
Examiner’s rejections of claims 1, 3, and 4 because Schultz “expressly
teaches against the Examiner’s proposed modification.” Req. for Reh’g 2.
For the reasons discussed infra, we agree with Appellant that the Record on
appeal evidenced that Schultz expressly teaches away from the Examiner’s
proposed modification thereof by the teachings of Moore. As such,
Appellant’s request for rehearing has raised a point misapprehended by the
Board it is Decision. We grant Appellant’s request for rehearing to

1 Appellant mistakenly requests reconsideration pursuant to 37 C.F.R.
§ 41.50(b)(2). Req. for Reh’g. 1. 37 C.F.R. § 41.50(b)(2) relates to
requesting rehearing when the Board enters a new ground of rejection.
Since no new ground of rejection was entered in the Decision, 37 C.F.R.
§ 41.50(b)(2) is not applicable here. However, we are treating Appellant’s
request as a request for rehearing under 37 C.F.R. § 41.52.
2 The underlying application in this Appeal is a continuation-in-part (CIP)
application of U.S. Patent Application Serial No. 11/156,383 (hereinafter
“the ʼ383 application”). The ʼ383 application was the subject of an earlier,
related appeal, namely, Appeal 2010-009924, in which, on December 13,
2012, the Examiner’s rejections, under 35 U.S.C. § 103(a), of claims 1 and 3
as unpatentable over Schultz and Moore, and of claim 4 as unpatentable over
Schultz, Moore, and Nor, were reversed based upon a determination that
Schultz taught away from modification by overlapping the lobes.
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reconsider our Decision. We vacate the original Decision in its entirety and
substitute the following decision in its place. As a result of this rehearing,
we reverse the Examiner’s rejections, under 35 U.S.C. § 103(a), of: claims 1
and 3 as being unpatentable over Schultz and Moore; and claim 4 as being
unpatentable over Schultz, Moore, and Nor.3

THE INVENTION
Appellant’s claimed invention relates to “bandaging configured for
hooves” of animals, such as horses. Spec. 1, ll. 7-10. Claim 1 (the sole
independent claim on appeal), reproduced below, with emphasis added, is
representative of the appealed subject matter.
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.
App. Br., Clms. App’x.

3 We note that the Office Action, mailed May 27, 2010, included a
provisional rejection of claims 1 and 3 on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1 and
3 of the co-pending ʼ383 application. Final Rej. 5-6. Appellant did not list
this provisional double patenting rejection in the Grounds of Rejection to be
Reviewed on Appeal section of the Appeal Brief (App. Br. 7), and this
rejection was not addressed in the Decision. Since a Notice of
Abandonment for the ʼ383 application was mailed on July 11, 2013, the
provisional obviousness-type double patenting rejection appears to be moot.
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PRINCIPLES OF LAW
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994).

ISSUE
The Examiner found that Schultz discloses a bandage for a hoof
including at least six independently foldable palmate lobes (tabs 30) that are
“foldable over one another” and a strap (attachment portions 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.” Ans. 4; see also Schultz, figs. 2, 4, and 5. The
Examiner further found that because bandages 20 of Schultz are “provided
in several sizes to accommodate variations in hoof size” and “may also be
reshaped to accommodate hooves with different silhouettes,” lobes (tabs 30)
of Schultz are foldable over each other and “it is obvious that the strap
[(attachment portion 34)] of Schultz . . . is able to extend around a back side
of the hoof and [be] positioned adjacent a toe of the hoof.” Ans. 5 (citing
Schultz, col. 5, l. 66 through col. 6, line 17).
Without explicitly stating what was lacking in Schultz, the Examiner
then turned to Moore for the disclosure of a “heel guard for [a] human foot
(human foot is broadly interpreted as hoof of human)” including a central
portion (central body portion 12) and six palmate lobes (straps 13-18) which
“wrap about each other over the ankle and extend[] from the back of [the]
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foot to the front of [the] foot.” Ans. 5 (citing Moore, col. 3, ll. 50-68). The
Examiner concluded that:
it would have been obvious to one having ordinary skill in the art
to make the lobes of Schultz . . . such that the extended portions
of the lobes . . . have [a] size and shape so as to be foldable over
one another and a strap that extends around [a] back side of the
hoof and [be] positioned [so that the] lobe [is] adjacent to [a] toe
portion, as taught by Moore . . . to accommodate [a] different
size and shape of hoof and to provide additional securement of
the guard.
Ans. 5-6.
Appellant argued that Schultz expressly teaches against the
modification proposed by the Examiner because Schultz “specifies that the
lobes are designed so they do not overlap as this renders the bandage
ineffective.” App. Br. 9 (citing Schultz, col. 3, l. 58 through col. 4, l. 5); see
also Reply Br. 2.
Thus, the issue presented is whether the Examiner’s rejections are
erroneous because Schultz teaches away from the Examiner’s proposed
modification of Schultz’s lobes to have a size and shape so as to be foldable
over one another, as taught by Moore.

ANALYSIS
We are persuaded by Appellant’s arguments, because Schultz
specifically discloses that:
As can be seen [in Figures 4 and 5], the tabs 30 and attachment
bar 32 are configured so that they do not overlap one another.
This is a preferred arrangement. 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. Therefore, if the tabs 30 and attachment bar 32
were allowed to overlap, the overlapping portions would not be
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securely attached and would provide loose edges where the
bandage 20 could begin to work loose. To achieve the
nonoverlapping configuration, some of the tabs 30 are
configured as truncated triangles with the bases of the truncated
triangles adjacent the perimeter 24 of the center portion 22 of
the bandage 20.
Schultz, col. 3, 1. 59 through col. 4, 1. 5. Italics added.
While the Examiner posits that the size and shape of Schultz’s
bandages 20 can be varied to accommodate different hooves (Ans. 4 and 5),
nonetheless, Schultz specifically states that “tabs 30 [(lobes)] and attachment
bar 32 [(lobe from which straps extend)] are configured such that they do not
overlap each other.” Schultz, col. 3, ll. 59-61.
Thus, even assuming arguendo that the size and shape of Schultz’s
bandages 20 are varied, as the Examiner proposes, the reference discourages
varying the size and shape of bandages 20 in such a manner as to have tabs
30 (lobes) and attachment bar 32 (lobe from which straps extend) overlap
each other, as the Examiner proposes.
Furthermore, because some of the tabs 30 (lobes) of Schultz are
specifically designed as truncated triangles so that they do not overlap with
each other and with attachment bar 32 (lobe from which straps extend),
Schultz would have discouraged a person of ordinary skill in the art from
modifying either the tabs 30 (lobes) or the attachment bar 32 (lobe from
which straps extend) so as to overlap at least one of the tabs 30 (lobes).
Moreover, Schultz specifically discloses that such an overlapping
arrangement would result in a loose bandage 20. See also Schultz, col. 3, l.
64 through col. 4, l. 1. A loose bandage is not merely an inferior, less
preferred embodiment, but rather an inoperative embodiment.
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The Examiner’s modification of Schultz in view of Moore relies on
the preferred adhesive and bandage material disclosed in Schultz. In other
words, the Examiner does not propose to replace the adhesive and bandage
material of Schultz with another adhesive and bandage material that would
allow for the lobes to stick to each other rather than to the hoof. The
Examiner’s modification proposes only “to make the lobes of Schultz . . .
such that the extended portions of the lobes have a size and shape so as to be
foldable over one another and a strap that extends around back side of the
hoof and positioned lobe adjacent to toe portion, as taught by Moore.” Ans.
5-6.
The Examiner’s obviousness determination is based on Schultz’s
disclosed adhesive and bandage material and proposes to modify the lobes to
overlap with each other and with the straps, even though Schultz discloses
that the disclosed adhesive and bandage material are known to not stick to
each other and become loose. Schultz’s teachings directly suggest that the
combination of Schultz and Moore, in the manner suggested by the
Examiner, will likely be unproductive of the results sought and will produce
an inoperative invention in the form of a loose bandage.
Thus, we agree with Appellant that Schultz teaches away from the
Examiner’s proposed modification of Schultz by the teaching of Moore to
overlap the lobes, because a person of ordinary skill in the art would have
been discouraged from doing this by the teaching of Schultz. See Gurley, 27
F.3d at 553.
Accordingly, the modification proposed by the Examiner would not
have been obvious to a person of ordinary skill in the art and therefore, the
rejection of independent claim 1, and claim 3 dependent thereon, under 35
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U.S.C. § 103(a) as unpatentable over Schultz and Moore is reversed. See In
re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) (If an independent claim is
nonobvious under 35 U.S.C. § 103, then any claim dependent therefrom is
nonobvious). With respect to the rejection of claim 4 under 35 U.S.C.
§ 103(a) as unpatentable over Schultz, Moore, and Nor, the addition of Nor
does not remedy the deficiencies of Schultz and Moore as described supra
and thus, the rejection of claim 4 is also reversed.

CONCLUSION
The Examiner’s rejections are erroneous because Schultz teaches
away from the Examiner’s proposed modification of Schultz’s lobes to have
a size and shape so as to be foldable over one another, as taught by Moore.

DECISION
We GRANT the Request for Rehearing and REVERSE the
Examiner’s decision to reject claims 1, 3, and 4.

GRANTED; REVERSED

mls
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GROSSMAN, Administrative Patent Judge, with whom HILL,
Administrative Patent Judge, joins, dissenting.
Because I view the facts differently than my colleagues in the
majority, I reach a different result, and thus must respectfully dissent from
the majority decision.
Whether or not a reference teaches away from a claimed invention is a
question of fact. In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012). Thus,
the emphasis is on the facts and the claimed invention.
The rejected claims do not call for a specific adhesive to be used with
a specific bandage material. Thus, as I view the facts, the disclosure in
Schultz of a preferred adhesive/material as the only reason to avoid
overlapping lobes, on which the majority relies, does not teach away from
the claimed invention.
The majority accurately cites In re Gurley, which states that the
general rule to determine whether a reference “teaches away” is when a
person of ordinary skill, upon reading the reference, would be discouraged
from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant. The Court
in Gurley, however, further explained its holding:
The degree of teaching away will of course depend on the
particular facts; in general, a reference will teach away if it
suggests that the line of development flowing from the
reference's disclosure is unlikely to be productive of the result
sought by the applicant.
27 F.3d 551, 553 (emphasis added).
In the Decision, significant weight was given to the reason why
Schultz avoided overlapping lobes. As stated in the Decision:
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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.
Decision 5.
Indeed, Schultz teaches that bandage tabs can overlap or not overlap
and that, when using its preferred adhesive and bandage material, it is
preferred that the bandage tabs not overlap because the preferred adhesive
adheres to the hoof better than the bandage material. See Schultz, col. 3, l.
59 through col. 4, l. 5.
The Schultz disclosure does not suggest that the combination of
Schultz and Moore proposed by the Examiner is “unlikely to be productive”
of the claimed invention. As I view the facts, Schultz’s preferred
embodiment does not teach away from the claimed invention; it teaches
toward a preferred arrangement.
The Board has broad discretion as to the weight to give to the
evidence. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir.
2004). Exercising that discretion does not establish that the Decision
misapprehended or overlooked any points that should have been considered.
Accordingly, I would only grant Appellant’s Request to the extent that
the Decision is reconsidered in light of the arguments in Appellant’s
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Request, but I would deny the Request with respect to making any
modification to the Decision and thus would sustain the Examiner’s
rejection.