Ex Parte Varn

Board of Patent Appeals and Interferences

Feb 12, 2004

09733359 (B.P.A.I. Feb. 12, 2004)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HAROLD T. VARN
____________
Appeal No. 2004-0367
Application No. 09/733,359
____________
ON BRIEF
____________
Before ABRAMS, FRANKFORT, and MCQUADE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 4 and 6 through 11, which are all
of the claims remaining in this application. Claim 5 has been
canceled.
As noted on page 3 of the specification, appellant's
invention is directed to a dorsal carpal tunnel splint which
limits wrist flexion and extension during repetitive hand motion,
Appeal No. 2004-0367
Application No. 09/733,359
2
but which because of its location on the dorsal surface of a
user's arm frees the volar side of any hard material, which would
interfere with everyday uses of the hand, and thus frees the
volar side so that the wearer is permitted to use their fingers
for everyday activities such as writing, typing, driving and
grasping. Independent claims 1 and 11 are representative of the
subject matter on appeal and a copy of those claims can be found
in Appendix A, filed by appellant by FAX on June 16, 2003.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Klotz 5,358,471 Oct. 25, 1994
Cherubini 5,415,623 May 16, 1995
Varn 5,637,078 Jun. 10, 1997
Claims 1 through 4 and 9 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Varn.
Claims 6, 7, 10 and 11 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Varn in view of Klotz.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Varn in view of Cherubini.
Appeal No. 2004-0367
Application No. 09/733,359
1 MPEP § 1208 states, in part, that examiners may
incorporate in the answer their statement of the grounds of
rejection merely by reference to the final rejection or a single
other action on which it is based, and clearly indicates that
only those statements of grounds of rejection appearing in a
single prior action may be incorporated by reference. Therefore,
an examiner's answer should not refer, either directly or
indirectly, to more than one prior Office action. The examiner's
answer in this case, with its references to plural prior actions
(answer, page 4) clearly does not comply with the foregoing
requirements.
3
Rather than reiterate the examiner's full statement of the
above-noted rejections and the conflicting viewpoints advanced by
the examiner and appellant regarding those rejections, we make
reference to the examiner's answer (Paper No. 15, mailed July 2,
2003) for the examiner's reasoning in support of the rejections1,
and to appellant's brief (Paper No. 14, filed March 12, 2003) and
reply brief (Paper No. 16, filed August 18, 2003) for appellant's
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant's specification and claims, to
the applied prior art references, and to the respective positions
Appeal No. 2004-0367
Application No. 09/733,359
4
articulated by appellant and the examiner. As a consequence of
our review, we have made the determinations which follow.
In maintaining the rejection of claims 1 through 4 and 9
under 35 U.S.C. § 102(b) as being anticipated by Varn, the
examiner has urged that the volar design, rigid splint member of
Varn comprises an elongated stiff splint element (e.g., col. 2,
lines 10-11) having an arcuate lateral cross section (Figs. 2-3),
first and second straps (34, 36), a finger strap (38) and a space
for the thumb, means for detachably securing the finger strap to
the lower end of the splint element, and a resilient liner pad
(30) mounted on the splint element. On page 4 of the answer, the
examiner has indicated that
the Examiner interpreted Varn as disclosing an orthosis
that engages a major portion of the dorsal outer
surfaces of the lower forearm, the wrist, and the hand
of the wearer, by the upper end, the center portion,
and the lower end of the splint element (fig. 2). The
device may be interpreted as engaging a major portion
of the outer surface of the lower forearm depending on
which surface is being interpreted as the outer
surface. If one were to turn the lower forearm in an
opposing direction, then the device could be
interpreted as engaging the dorsal outer surface of the
lower forearm when in use.
We have reviewed the applied Varn patent and, like
appellant, find that Varn does not disclose, teach or suggest a
Appeal No. 2004-0367
Application No. 09/733,359
5
dorsal carpal tunnel splint which limits wrist flexion and
extension, wherein the splint includes an elongated stiff splint
member which is arcuate in lateral cross section and has an
"unbroken length and lateral breadth sufficient to engage a major
portion of the dorsal outer surfaces of the lower forearm, the
wrist, and the hand of the wearer, by the upper end, the center
portion, and the lower end of the splint element, respectively,"
as set forth in independent claim 1 on appeal, and in similar
language in independent claim 11.
Before the USPTO, when evaluating claim language during
examination of an application, the examiner is required to give
the terminology of the claims its broadest reasonable
interpretation consistent with the specification, and to remember
that the claim language cannot be read in a vacuum, but instead
must be read in light of the specification as it would be
interpreted and understood by one of ordinary skill in the
pertinent art. See In re Sneed, 710 F.2d 1544, 1548, 218 USPQ
385, 388 (Fed. Cir. 1983); In re Bond, 910 F.2d 831, 833, 15
USPQ2d 1566, 1567 (Fed. Cir. 1990) and In re Morris, 127 F.3d
1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997). This the
examiner has clearly not done in the present case.
Appeal No. 2004-0367
Application No. 09/733,359
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In the context of appellant's invention, the "dorsal outer
surfaces of the lower forearm, the wrist, and the hand of the
wearer" as set forth in independent claims 1 and 11 on appeal
clearly and unambiguously refer to those portions of the lower
forearm, wrist and hand that are opposite the volar or palm side
of the hand and forearm. In that regard, we note that appellant
has specifically indicated in the specification (page 2) that
volar design splints have big problems, because the metal spoon
or support portions thereof make functional use of the hand
difficult by hindering use of the wrist and fingers. As we noted
above, on page 3 of the specification appellant then indicates
that a principal objective of the invention is to provide a
dorsal carpal tunnel splint which limits wrist flexion and
extension during repetitive hand motion, but which because of its
location on the dorsal surface of a user's arm frees the volar
side of any hard material, which would interfere with everyday
uses of the hand, and thus frees the volar side so that the
wearer is permitted to use their fingers for everyday activities
such as writing, typing, driving and grasping. In light of such
express disclosure in the present application, the examiner's
interpretation of the "dorsal" limitations of the claims before
us on appeal, as quoted above, is wholly unavailing.
Appeal No. 2004-0367
Application No. 09/733,359
7
There is no question that one of ordinary skill in the art
reading the Varn patent (e.g., col. 2, lines 60-67) would
understand that the resting hand orthosis therein is specifically
designed and configured to be a volar splint which engages the
inner or palm side of the user's hand, wrist and arm, and thus
would be the very type of splint appellant's dorsal carpal tunnel
splint is designed to improve upon. Nor does it appear that the
orthosis in Varn would in any way be capable of use as a dorsal
carpal tunnel splint like that claimed by appellant.
Accordingly, we will not sustain the examiner's rejection of
claims 1 through 4 and 9 under 35 U.S.C. § 102(b) as being
anticipated by Varn.
Given our above-noted determination regarding the
shortcomings of the orthosis in Varn, and the lack of any further
teaching or suggestion in either Klotz or Cherubini supplying
such deficiencies, it follows that the examiner's further
rejections of claims 6, 7, 8, 10 and 11 under 35 U.S.C. § 103(a)
also will not be sustained. That is, even if the hand resting
orthosis of Varn were to be provided with a tubular resilient
roll that surrounds a lower portion of the finger strap loop as
the examiner believes is suggested in Klotz and the rigid plastic
Appeal No. 2004-0367
Application No. 09/733,359
8
splint element (12) of Varn were formed of a heat moldable
thermoplastic material as suggested in Cherubini, the result of
any such combinations would not be a dorsal carpal tunnel splint
of the type claimed by appellant.
Since we have refused to sustain any of the rejections
posited by the examiner, the decision of the examiner rejecting
claims 1 through 4 and 6 through 11 of the present application is
reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN P. MCQUADE )
Administrative Patent Judge )
CEF/lbg
Appeal No. 2004-0367
Application No. 09/733,359
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