Ex Parte Varn

Board of Patent Appeals and Interferences

Jan 31, 2007

10341038 (B.P.A.I. Jan. 31, 2007)

The opinion in support of the decision being entered today was not written
for publication in and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte HAROLD T. VARN
___________

Appeal No. 2006-1684
Application No. 10/341,038
Technology Center 3700
___________

ON BRIEF
___________

Before, WILLIAM F. PATE, MURRIEL E. CRAWFORD,
and JENNIFER D. BAHR Administrative Patent Judges.
PATE, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 1-20.
These are the only claims in the application.
The claimed invention is directed to a substantially rigid
hand splint member which has a forearm portion attached to a
finger portion. Both the forearm portion and the finger portion

Appeal Number: 2006-1684
Application Number: 10/341,038
are on the dorsal side of the limb. Rubberband members are
provided to allow finger flexion exercises.
The references of record relied upon by the Examiner as
evidence of anticipation and obviousness are:
Hall 494,197 Mar. 28, 1893
Varn 6,120,471 Sep. 19, 2000
Holland et al. (Holland) 6,547,752 Apr. 15, 2003
Claims 1-7 stand rejected under 35 U.S.C. section 102 as
anticipated by Varn.
Claim 8 stands rejected under 35 U.S.C. section 103 as
unpatentable over Varn in view of Holland. Claims 9-17 and
19-20 stand rejected under 35 U.S.C. section 103 as unpatentable
over Varn in view of Hall.
Claim 18 stands rejected under 35 U.S.C. section 103 as
unpatentable over Varn in view of Hall and Holland.
For details of these rejections a reference is made to the
Examiner’s answer. For details of the Appellant’s arguments
with respect to the rejections reference is made to the brief
and reply brief.
GROUPING OF CLAIMS
Appellant chooses to group the claims into two groups for
purposes of this appeal. See brief at 3. According to the
brief, claims 1-10 are considered one group and will stand or
fall with claim 1, and claims 11-20 constitute a second group to
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Appeal Number: 2006-1684
Application Number: 10/341,038
stand or fall with independent claim 11. Although not argued
separately, claim 20 is of a different scope than claims 11-19.
Accordingly, we will consider this claim separately,
hereinbelow.

OPINION

We have carefully reviewed the rejections on appeal in
light of the arguments of the appellant and the examiner. As
a result of this review we have determined that claim 1 is
anticipated by Varn under section 102. The rejection of this
claim is sustained. Claims 2-9 fall with claim 1. The
rejection of claims 11-19 as unpatentable under section 103 is
not sustained. Lastly, the rejection of claim 20 under section
103 is sustained. Our reasons follow.
We find that Varn discloses a substantially rigid contoured
splint 12 with a forearm and wrist portion 18 adapted to fit on
and receive the dorsal portion of the forearm and wrist of a
patient 54. We further find that Varn discloses straps 38, 40,
42 to secure the orthosis to the patent and to prevent finger
and wrist extensions.
Neither the appellant nor the examiner expressly construes
the claim language of claim 1. In our view the patentability of
claim 1 turns on the construction of the expression “a finger
portion spaced forwardly from said wrist portion to receive
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Appeal Number: 2006-1684
Application Number: 10/341,038
the dorsal portion of the hand and fingers of the patient,” as
argued by the appellant. Specifically we are called on to
construe the term “receive.” The PTO applies to the verbiage
of the proposed claims the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one
of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be
afforded by the written description contained in the applicant's
specification. In re Morris, 127 F.3d 1048, 1053-54, 44 USPQ2d
1023, 1027(Fed. Cir. 1997). When we apply the usual and
customary meaning to the term “receive” in this situation, we
conclude that it means to hold or contain. Thus the claim calls
for a finger portion that contains or holds the dorsal portion
of the hand and fingers. We further note that the finger
portion called for in the claim does not have to “fit” the wrist
and finger portion of the patient, for to so hold would be to
render the claim term “fit” in line 3, superfluous.
As shown in Figure 3 of Varn, Varn provides a trough-like
area for the hand and fingers ahead of the hand-entry opening
66. From Figure 1 of Varn it appears that the entire hand and
fingers fit into this trough-like area. If the entire hand and
fingers are contained in this trough-like area, then certainly
the dorsal portion of the hand and fingers is contained or
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Appeal Number: 2006-1684
Application Number: 10/341,038
received therein. Accordingly, we find that claim 1 is
anticipated by Varn. Claims 2-9 fall with claim 1.
Turning to the obviousness rejections of claims 11-19,
we note that Hall discloses what Hall refers to as a manual
gymnasium. Individual rubber bands are used to strengthen the
fingers. The strap G of Hall is not a splint and does not
hold or support the forearm and wrist to hold it immobile while
exercises are being conducted. The examiner states that it
would have been obvious to incorporate the finger flexion as
taught by Hall into the orthosis in order to increase finger
flexion
while wearing the orthosis. We find no teaching, suggestion, or
motivation for the examiner’s proposed combination in either
the applied prior art or in the implicit general knowledge
applicable to one of ordinary skill in the orthotic art.
Recognition of the problem is part of the invention as a whole.
None of the prior art cited establishes that finger flexion is
desirable while the patient is splinted. Accordingly, we must
conclude that the examiner’s combination of references is based
on impermissible hindsight reconstruction. The rejections of
claims 11-19 are reversed.
Claim 20 is of different scope than claim 11. Claim 20
requires a buckle on at least one of the straps. Turning to
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Appeal Number: 2006-1684
Application Number: 10/341,038
Hall, we note that Hall discloses at least a buckle to fasten
the strap G. See Hall at line 50. We note that Varn fastens
his straps by hook-and-loop fasteners. It would have been
obvious to replace at least one of the hook-and-loop fasteners
of Varn with a buckle as disclosed by Hall to insure a more
secure fastening of the orthosis of Varn. Note that as long as
some motivation or suggestion to combine the references is
provided by the prior art taken as a whole, the law does not
require that the references be combined for the reasons
contemplated by the inventor. In re Beattie, 24 USPQ2d 1040,
1042 (Fed. Cir. 1992) citing In re Kronig, 539 F.2d 1300, 1304,
190 USPQ 425, 427-28 (CCPA 1976); In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972). Thus, it is our legal
conclusion that claim 20 is unpatentable under section 103 as
obvious over Varn and Hall.
In Summary, the rejections of claims 1-10 and 20 are
affirmed. The rejections of claims 11-19 are reversed.
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Appeal Number: 2006-1684
Application Number: 10/341,038
AFFIRMED-IN-PART

WILLIAM F. PATE, III )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MURRIEL E. CRAWFORD ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )

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Appeal Number: 2006-1684
Application Number: 10/341,038
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