Ex Parte VerHoef

Patent Trial and Appeal Board

Feb 23, 2017

13328201 (P.T.A.B. Feb. 23, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/328,201 12/16/2011 Jeff H. VerHoef 2989-001-05 7351
31740 7590
LOOP IP
2014 Boyer Ave E
Seattle, WA 98112
EXAMINER
HAYES, KRISTEN C
ART UNIT PAPER NUMBER
3647
NOTIFICATION DATE DELIVERY MODE
02/27/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
thomas @ seattlepatentlaw .com
olga@seattlepatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFF H. VERHOEF
Appeal 2015-005270
Application 13/328,201
Technology Center 3600
Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1—
5. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2015-005270
Application 13/328,201
CLAIMED SUBJECT MATTER
The claims are directed to a dog mobility device. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A dog mobility device for assisting with a forward movement
of a hind leg of a dog and with an upward movement of the dog’s
toes, the dog mobility device comprising:
at least one elastic cord connectable to a dog harness,
wherein the at least one elastic cord includes an upper forward
end portion and a lower rearward end portion; and
a paw loop connectable to the lower rearward end portion
of the elastic cord, wherein the paw loop is configured to engage
one of the dog's paws, and wherein the paw loop is defined by a
material strip looped into a figure eight configuration, and
wherein the material strip figure eight configuration further
defines a metatarsal strap section and a toe strap section, and
wherein the metatarsal strap section is configured to receive and
fit about the dog’s metatarsus, and wherein the toe strap section
is configured to receive and fit about the dog’s two innermost
toes.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Tee US 4,909,505 Mar. 20, 1990
Lamb US 2013/0152870 A1 June 20,2013
REJECTIONS
Claims 1 and 2 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Tee.
Claims 1—5 stand rejected under 35 U.S.C. § 102(f) as Appellant did
not himself invent the subject matter sought to be patented.
2
Appeal 2015-005270
Application 13/328,201
OPINION
Rejection of claims 1 and 2 as anticipated by Tee
Claim 1 recites, inter alia,
[a] paw loop [] defined by a material strip looped into a figure
eight configuration, and wherein the material strip figure eight
configuration further defines a metatarsal strap section and a toe
strap section, and wherein the metatarsal strap section is
configured to receive and fit about the dog’s metatarsus, and
wherein the toe strap section is configured to receive and fit
about the dog's two innermost toes.
App. Br. 16, Claims App.
The Examiner finds that Tee discloses a paw loop (79) defined by a
material strip looped into a figure eight configuration, and wherein the
material strip figure eight configuration further defines a metatarsal strap
section (85) and a toe strap section (85). Ans. 2—3 (citing Tee, Figs. ID,
3D); see also Final Act. 2 (citing Tee, Fig. 3D).
Appellant asserts that it is self-evident that the human foot strap
component taught by Tee is structurally very different than the claimed paw
loop component. App. Br. 7—9 (citing Tee, Figs. IB and 3D). Appellant
points out that the claimed metatarsal strap section is configured to receive
and fit about the dog’s metatarsus, and wherein the toe strap section is
configured to receive and fit about the dog’s two innermost toes, “all of
which is configured for assisting with a forward movement of a hind leg of a
dog and with an upward movement of the dog’s toes.” Id. at 9.
It is clear from Tee that the straps 79 (see Tee, Figs. IB, 3D) are
designed to accommodate the human foot rather than a dog’s paw (see Tee,
Figs. 4A, 4D, 4E, 4F, 4G). Tee is silent regarding use of foot straps 79 with
anything other than a human foot (or hand, see Figs. 4H, 41). Furthermore,
as Appellant notes, the foot straps 79 of Tee are not defined by a material
3
Appeal 2015-005270
Application 13/328,201
strip looped into a figure eight configuration including a metatarsal strap
section configured to receive and fit about a dog’s metatarsus, and a toe
strap section configured to receive and fit about the dog’s two innermost
toes. In addition, the straight resilient tubes 82 (see Tee, Figs. IB, 3D)
surrounding the strap or ribbon 79 would straddle a dog’s toes rather than fit
about a dog’s two innermost toes, as recited. Accordingly, the Examiner has
not provided sufficient facts or technical reasoning explaining how the
dedicated human foot straps 79 of Tee are “capable of performing the
intended use” (Ans. 3) and thus would be reasonably regarded as the paw
loop recited in claim 1.
The Examiner further reasons that “it is conceivable that the strap [of
Tee] would have some degree of adjustability and would therefore be able to
receive a dog’s metatarsus.” Ans. 3. From the foregoing, the Examiner
appears to assert that the strap of Tee inherently possesses characteristics
that would render it suitable for receiving a dog’s metatarsus. As to that
assertion, Appellant’s contention that merely because it may be
“conceivable” that the unrelated Tee human foot strap “could possibly be
changed, or reconfigured away from its intended purpose, to arrive at a new
configuration (such as the novel figure 8 configuration of the paw loop
recited in claim 1)” is neither a teaching nor a suggestion of the claimed paw
loop. Reply Br. 3. We agree with Appellant. “Inherency [] may not be
established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.” In re
Oelrich, 666 F.2d 578, 581 (CCPA 1981) (quoting Hansgirg v. Kemmer,
102 F.2d 212, 214 (CCPA 1939).
For the foregoing reasons, we do not sustain the Examiner’s rejection
of claims 1 and 2.
4
Appeal 2015-005270
Application 13/328,201
Rejection of Claims 1—5 under section 102(f)
Under 35 U.S.C. § 102(f), a person shall be entitled to a patent unless
he did not himself invent the subject matter sought to be patented. “Where it
can be shown that an applicant ‘derived’ an invention from another, a
rejection under pre-AIA 35 U.S.C. § 102(f) is proper.” MPEP § 2137 (citing
Ex parte Kusko, 215 USPQ 972, 974 (Bd. App. 1981) (“most, if not all,
determinations under section 102(f) involve the question of whether one
party derived an invention from another”).).
A patentable invention may be the work of two or more joint
inventors. 35 U.S.C. § 116. Because “[cjonception is the touchstone of
inventorship,” each joint inventor must generally contribute to the
conception of the invention. Burroughs Wellcome Co. v. Barr Lab., Inc., 40
F.3d 1223, 1227—28 (Fed. Cir. 1994). For the conception of a joint
invention, each of the joint inventors need not make the same type or
amount of contribution to the invention. 35 U.S.C. § 116. The statute does
not set forth the minimum quality or quantity of contribution required for
joint inventorship.
All that is required of a joint inventor is that he or she (1)
contribute in some significant manner to the conception or
reduction to practice of the invention, (2) make a contribution to
the claimed invention that is not insignificant in quality, when
that contribution is measured against the dimension of the full
invention, and (3) do more than merely explain to the real
inventors well-known concepts and/or the current state of the art.
Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed Cir. 1998).
“Conception exists when a definite and permanent idea of an
operative invention, including every feature of the subject matter sought to
be patented, is known.” Sewall v. Walters, 21 F.3d 411,415 (Fed. Cir.
1994) (citing Coleman v. Dines, 754 F.2d 353, 359 (Fed. Cir. 1985) (“ft is
5
Appeal 2015-005270
Application 13/328,201
settled that in establishing conception a party must show possession of every
feature recited in the count, and that every limitation of the count must have
been known to the inventor at the time of the alleged conception.”); see also
Davis v. Reddy, 620, F.2d 885, 889 (CCPA 1980) (“A party claiming
conception must show possession of every feature recited in the counts.
This means that every limitation of the counts must be shown to have been
known to the inventor at the time the invention is alleged to have been
conceived.”) (citations omitted).
An essential element of claim 1 on appeal is the paw loop, which is
defined as follows:
a paw loop connectable to the lower rearward end portion
of the elastic cord, wherein the paw loop is configured to engage
one of the dog's paws, and wherein the paw loop is defined by a
material strip looped into a figure eight configuration, and
wherein the material strip figure eight configuration further
defines a metatarsal strap section and a toe strap section, and
wherein the metatarsal strap section is configured to receive and
fit about the dog's metatarsus, and wherein the toe strap section
is configured to receive and fit about the dog's two innermost
toes.
The Examiner has rejected claims 1—5 under 35 U.S.C. § 102(f)
“because the applicant did not invent the claimed subject matter” as
“[ejvidenced by 2013/0152870 to Lamb.”1 Final Act. 3. Elaborating on this
rejection, the Examiner asserts:
1 “2013/0152870 to Lamb” cited by the Examiner is the published version of
United States Patent Application No. 13/328,683 (“’683 application”) filed
by Dr. Alycia Lamb on December 16, 2011 (the same filing date as the
instant application) listing Dr. Lamb as the sole inventor. The ’683
application is addressed at paragraph 44 of Appellant’s Declaration under 37
C.F.R. § 1.132, discussed below.
6
Appeal 2015-005270
Application 13/328,201
From the 37 CFR 1.132 declaration [of Appellant], it appears that
Dr. Lamb is a joint inventor and should be added to the list of
inventors. The declaration states that the figure 8 configuration
was Dr. Lamb’s idea. Since the embodiment of Figure 8 is
clearly in the claims, VerHoef is not the sole inventor.
Ans. 4.
Appellant submitted a Declaration under 37 C.F.R. § 1.132
(“Declaration”) for the purpose of establishing that he is the original, first
and sole inventor of the subject matter set forth in the claimed invention. In
his Declaration, Appellant states that on or around June 30, 2011, during a
second therapy session of his dog with Dr. Alycia Lamb
I formed in my mind a definite and permanent idea of a complete
and operative dog mobility device that comprised, among other
elements, an elastic cord connected to a dog harness at one end,
and a paw strap connected to one of the dog’s rear paws at the
toes at the other end. I thought that my configuration, unlike the
configuration employed by the Biko Brace, would not only assist
with a forward movement of the dog’s hind leg but also with an
upward movement of the dog’s toes.
Deck 1 8.
In that same paragraph of his Declaration, Appellant remarks that “the
Biko Brace was poorly designed and would work better if it connected to the
dog’s toes, instead of the dog’s leg above the paw” and that Appellant said
to Dr. Lamb “[t]here has to be a way to connect the cord to the toes.”
Following this acknowledgement that Appellant was unaware of a
way to connect the cord to the dog’s toes, Appellant states:
At the end of our appointment, Dr. Lamb suggested that a strap
configured in a figure “8” that fit around the toes and wrapped
around the lower part of the leg, above the paw, might be
something to consider. In response, I said that I would try to
figure out a way to make that work.
Deck 1 8.
7
Appeal 2015-005270
Application 13/328,201
Appellant subsequently describes how he adopted Dr. Lamb’s
suggestion and fashioned from a small nylon dog collar a strap configured in
a figure “8” which included a toe loop section and a metatarsal loop section,
and how he incorporated the strap into a working version of a dog mobility
device. Decl. 19.
Further, according to Appellant:
On or about December 9, 2011,1 consulted with Mr. Loop
[Appellant’s patent attorney] about my situation and provided
additional facts that weren’t known to him previously.[2] More
specifically, I explained to Mr. Loop further details regarding Dr.
Lamb’s contributions to my dog mobility device. Based on my
further explanations and additional facts, Mr. Loop advised me
that an inventor may in certain situations consider and adopt the
ideas, suggestions and material received from others such as, for
example, an employee, a hired consultant, or a friend, so long as
the inventor maintains intellectual domination and control of the
work of making the invention. I then came to the realization that
because I had at all times maintained intellectual domination and
control of the work of making the invention that I was the sole
inventor, and Dr. Lamb was not, in fact, a co-inventor as I had
once thought.
Decl. 140.
At paragraph 45 of his Declaration, Appellant states: “I, at all times,
maintained complete intellectual domination and control over the inventive
process including the work associated with making my dog mobility device
(which device is disclosed and claimed in my U.S. Patent Application No.
13/328,201 entitled ‘Dog Mobility Device’ filed December 16, 2011 ).”
Appellant argues that:
as evidenced by Appellant’s Rule 132 Declaration, Dr. Lamb’s
contributions were, at best, nothing more than the mere aiding by
2 Appellant does not identify in the record what specific facts were
communicated to Mr. Loop that were not previously known to him.
8
Appeal 2015-005270
Application 13/328,201
an outside hire consultant^1 of the real inventor (Appellant) to
assist in the reduction of an idea to practice. Moreover, and as
also evidenced by Appellant’s Rule 132 Declaration, Appellant
has at all times maintained intellectual domination of the work
of making the invention.
App. Br. 11.
Appellant further contends that:
it is well established that an inventor may consider and adopt
ideas, suggestions and material derived from others such as for
example, an employee, a hired consultant, or a friend even if the
adopted material proves to be the key that unlocks the problem,
so long as the inventor maintains intellectual domination of the
work of making the invention.
Id. at 14 (citing Morse v. Porter, 155 USPQ 280 (BPAI 1965) and MPEP
§2137.01); see also Reply Br. 5.
Appellant admits at paragraph 8 of his Declaration that prior to
discussing the problem of assisting with a forward movement of a dog’s
hind leg but also with an upward movement of the dog’s toes with Dr.
Lamb, he was not aware of a solution. Appellant further admits at paragraph
8 of his Declaration that Dr. Lamb suggested that “a strap configured in a
figure ‘8’ that fit around the toes and wrapped around the lower part of the
leg, above the paw, might be something to consider.” Appellant further
admits at paragraph 9 of his Declaration that he adopted Dr. Lamb’s
suggestion and fashioned from a small nylon dog collar a strap configured in
a figure “8”, which included a toe loop section and a metatarsal loop section,
3 Appellant’s Declaration at paragraphs 3 and 4 indicates that Dr. Lamb was
an animal rehabilitation specialist hired by Appellant to conduct weekly
therapy sessions on Appellant’s dog. Appellant’s Declaration does not
otherwise indicate that Dr. Lamb was hired to consult to assist in the
invention.
9
Appeal 2015-005270
Application 13/328,201
and how he incorporated the strap into a working version of a dog mobility
device.
As noted above, conception requires that every feature of the subject
matter sought to be patented be known to the inventor. See, e.g., Sewall v.
Walters, 21 F.3d at 415. Prior to discussing his problem of constructing a
working dog mobility device with Dr. Lamb, the concept of a figure “8”
strap including a toe loop section and a metatarsal loop section was
unknown to Appellant. In other words, Appellant did not conceive this
feature, Dr. Lamb did. As a consequence, Appellant’s “conception” of the
claimed invention was incomplete until Dr. Lamb provided the missing
piece to the puzzle.
Despite Appellant’s contention that he at all times maintained
complete intellectual domination and control over the inventive process
including the work associated with making his dog mobility device, he in
fact did not. Appellant may have engaged Dr. Lamb for veterinary services
but did not “hire” her to work on his invention. As such, there does not
appear to be any evidence Appellant had control over Dr. Lamb’s ideas or
her decision to contribute them. While Appellant may have dominated
many aspects of the disclosed invention, he does not appear to have had any
control over the conception of the figure “8” strap, a critical part of the
claimed subject matter contributed by Dr. Lamb. Accordingly, since
Appellant did not control conception of the figure “8” strap, to the extent
domination is a relevant factor in light of the more recent case law of our
reviewing court discussed above, we cannot agree that Appellant at all times
maintained complete intellectual domination and control over the inventive
process.
10
Appeal 2015-005270
Application 13/328,201
As such, the prevailing law compels us to conclude that Dr. Lamb is a
co-inventor of at least claim 1 of the present application. That is, Dr. Lamb
(1) contributed in some significant manner to the conception or reduction to
practice of the invention, (2) made a contribution to the claimed invention
that is not insignificant in quality, when that contribution is measured
against the dimension of the full invention, and (3) did more than merely
explain to Appellant well-known concepts and/or the current state of the art.4
See Pannu v. Iolab Corp., 155 F.3d at 1351.
Appellant has thus not apprised us of Examiner error. On the totality
of the record before us, we agree with the Examiner that the inventorship
listed is incorrect.
Accordingly, for the foregoing reasons, we sustain the Examiner’s
decision rejecting claims 1—5 under 35 U.S.C. § 102(f).
DECISION
The Examiner’s rejection of claims 1 and 2 under 35 U.S.C. § 102(b)
is reversed.
The Examiner’s rejection of claims 1—5 under 35 U.S.C. § 102(f) is
affirmed.
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)(l)(iv).
AFFIRMED
4 As to the third factor, nothing in Appellant’s Declaration or arguments
suggests that Dr. Lamb’s contribution was a well-known concept and/or the
current state of the art.
11