Ex parte Wasserman

Board of Patent Appeals and Interferences

Sep 17, 1999

08429926 (B.P.A.I. Sep. 17, 1999)

Application for patent filed April 27, 1995. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte CONSTANCE V. WASSERMAN
____________
Appeal No. 1998-1608
Application No. 08/429,9261
____________
ON BRIEF
____________
Before COHEN, NASE, and CRAWFORD, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 and 4 through 8, which are all of the
claims pending in this application.
We REVERSE and REMAND.
Appeal No. 1998-1608 Page 2
Application No. 08/429,926
BACKGROUND
The appellant's invention relates to an anklet for a foot
orthosis. An understanding of the invention can be derived
from a reading of exemplary claims 1 and 8, which appear in
the appendix to the appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Incorvaia 4,401,113 Aug.
30, 1983
Hicks 5,372,576 Dec. 13,
1994
Claims 1 and 4 through 8 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Hicks in view of Incorvaia.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejection, we make reference to the final rejection (Paper No.
5, mailed January 15, 1997) and the answer (Paper No. 11,
mailed December 8, 1997) for the examiner's complete reasoning
in support of the rejection, and to the brief (Paper No. 10,
Appeal No. 1998-1608 Page 3
Application No. 08/429,926
filed September 19, 1997) for the appellant's arguments
thereagainst.
Appeal No. 1998-1608 Page 4
Application No. 08/429,926
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. Upon evaluation of all the evidence before us, it
is our conclusion that the evidence adduced by the examiner is
insufficient to establish a prima facie case of obviousness
with respect to the claims under appeal. Accordingly, we will
not sustain the examiner's rejection of claims 1 and 4 through
8 under 35 U.S.C. § 103. Our reasoning for this determination
follows.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting evidence that would
have led one of ordinary skill in the art to combine the
relevant teachings of the references to arrive at the claimed
invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
Appeal No. 1998-1608 Page 5
Application No. 08/429,926
1596, 1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972).
Evidence of a suggestion, teaching, or motivation to
modify a reference may flow from the prior art references
themselves, the knowledge of one of ordinary skill in the art,
or, in some cases, from the nature of the problem to be
solved, see Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc.,
75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996),
Para-Ordinance Mfg. v. SGS Imports Intern., Inc., 73 F.3d
1085, 1088, 37 USPQ2d 1237, 1240 (Fed. Cir. 1995), although
"the suggestion more often comes from the teachings of the
pertinent references," In re Rouffet, 149 F.3d 1350, 1355, 47
USPQ2d 1453, 1456 (Fed. Cir. 1998). The range of sources
available, however, does not diminish the requirement for
actual evidence. That is, the showing must be clear and
particular. See, e.g., C.R. Bard, Inc. v. M3 Sys., Inc., 157
F.3d 1340, 1352, 48 USPQ2d 1225, 1232 (Fed. Cir. 1998). A
broad conclusory statement regarding the obviousness of
modifying a reference, standing alone, is not "evidence."
E.g., McElmurry v. Arkansas Power & Light Co., 995 F.2d 1576,
Appeal No. 1998-1608 Page 6
Application No. 08/429,926
1578, 27 USPQ2d 1129, 1131 (Fed. Cir. 1993); In re Sichert,
566 F.2d 1154, 1164, 196 USPQ 209, 217 (CCPA 1977). See also
In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed.
Cir. 1999).
Hicks discloses a therapeutic foot orthosis. As shown in
Figures 2, 4, 5 and 7, the therapeutic foot orthosis includes
a liner 30 which is formed to provide an extension or flap 50
adapted to overlie the foot 22 of a user. The outer surface of
the flap 50 carries areas or patches 50a of a heavy duty
fabric, exemplified by nylon, having releasable fastening
means of the hook type provided thereon which cooperate with
releasable fastening means of the loop type provided on one
surface of an elongated strip 52 of a heavy duty fabric
secured as by stitching to the outer margin of the foot
engaging portion of the liner 30 opposite to that on which the
flap 50 is carried. Hicks teaches (column 3, line 50, to
column 4, line 25) that
the heel 18 of a user is maintained in fixed, stable,
spaced relation to the inner surface 16 of the heel
portion 16 of the structure 10 by means of a padded
member 60 secured at one of its ends to a strap 62
attached as by stitching to the reinforcing layer 40
Appeal No. 1998-1608 Page 7
Application No. 08/429,926
provided on the backing of the liner 30 adjacent to the
opening 32 formed therein. The free end 62a of the strap
62 is adapted to pass through the slot 26a formed in the
extension 26 of the heel portion 16 of the structure 10,
and to be folded back in superimposed relation on the
area of the strap 62 which is secured to the reinforcing
layer 40. The strap 62 desirably is provided with
releasable fastening means of the hook and loop type to
enable the free end 62a thereof to be disengaged from the
heel portion 16. The other end of the padded member 60
has a strap 64 secured thereto, the free end 64a thereof
being adapted to pass through the slot 24a formed in the
extension 24 of the heel portion 16, and, like the free
end 62a of the strap 62, to be folded back in
superimposed relation on itself. As with the strap 62,
the strap 64 is provided with releasable fastening means
of the hook and loop type to enable the free end 64a
thereof to be disengaged from the heel portion 16.
As shown in FIGS. 5 and 7 of the drawings, the
padded member 60 snugly overlies the foot engaging
portion of the liner 30 when the straps 62 and 64 are
connected to the extensions 24 and 26 of the heel portion
16. This arrangement acts to prevent the heel 18 of a
user of the device from coming into contact with the
inner surface 16a of the heel portion 16. The fixed,
stable position of the heel portion 16 in relation to the
heel 18 of a user is enhanced, augmented and promoted by
the reinforced areas of the panel 40 which are positioned
along the edges of the heel accommodating opening 32
formed in the liner 30. These features of the device of
this invention effectively prevent heel decubitus from
occurring, and can aid in the healing of such a condition
in the event it has occurred for some other reason. The
fixed, stable, spaced positioning of the heel of a user
with relation to heel portion 16 of the device also
enables observation during healing of any surgical
procedures performed on the heel of the user, and enables
heavier, more absorbent bandaging materials to be used on
incisions made during such procedures.
Appeal No. 1998-1608 Page 8
Application No. 08/429,926
Incorvaia discloses a sponge splint compression dressing.
As shown in Figure 1, the injured foot is placed against the
sponge side of the dressing which is folded over the foot with
the toes being uncovered. Thereafter, an ankle section 22 is
folded around the upper portion of the ankle. Incorvaia
teaches (column 3, lines 39-45) that
the dressing can be held in place by standard wrapping
such as the elastic wrap illustrated at 16 in FIG. 1 or
by means of Velcro strips 18 as illustrated for the foot
area in FIG. 1. The use of the elastic wrap provides more
rigidity and equalized compression whereas the Velcro
strip provides for ease of application.
Claim 1
After the scope and content of the prior art are
determined, the differences between the prior art and the
claims at issue are to be ascertained. Graham v. John Deere
Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
The examiner ascertained (final rejection, p. 2) that
[a]lthough Hicks discloses a fastening strap extending
over the flap element, the strap does not detachably
affix to "said other flap element" as recited in claim 1.
Appeal No. 1998-1608 Page 9
Application No. 08/429,926
With regard to this difference, the examiner then determined
that
such detachable affixation would, however, have been
obvious to a person of ordinary skill in the art given
the teaching of Incorvaia which discloses a similar sheet
member also having an overlapping flap configuration
secured by a hook and loop strap which affixes to the
outer surface of the flaps. Accordingly, claim 1 is
rendered obvious.
We agree with the appellant that claim 1 is not obvious
over the applied prior art. In that regard, it is our view
that the teachings of Incorvaia would not have rendered it
obvious to one of ordinary skill in the art at the time the
invention was made to have modified Hicks in a manner to
arrive at the subject matter of claim 1. Specifically,
Incorvaia would only have suggested replacing Hicks releasable
fastening means on patches 50a and strip 52 with Velcro®
strips as taught by Incorvaia's strips 18. Thus, it is our
opinion that Incorvaia would not have suggested any changes to
Hicks' fastening strap (i.e., padded member 60 and straps 62
and 64). Thus, there is no evidence in the applied prior art
that would have rendered it obvious to one of ordinary skill
in the art at the time the invention was made to have modified
Appeal No. 1998-1608 Page 10
Application No. 08/429,926
Hicks' fastening strap so as to arrive at the subject matter
of claim 1.
For the reasons stated above, the decision of the
examiner to reject claim 1 under 35 U.S.C. § 103 is reversed.
Claims 4 through 7
The decision of the examiner to reject dependent claims 4
through 7 under 35 U.S.C. § 103 is reversed for the reasons
stated above with respect to parent independent claim 1.
Claim 8
With respect to claim 8, the examiner ascertained (final
rejection, p. 3) that
Hicks does not anticipate the strap to be releasably
attachable to the first flap (i.e., the overlapping one
of the two flaps).
With regard to this difference, the examiner then determined
that
permanent affixation of the strap to either the
overlapping flap or the overlapped flap would have been
obvious to a person of ordinary skill in the art given
Hicks' teaching of overlapping flaps being secured with
Appeal No. 1998-1608 Page 11
Application No. 08/429,926
strap [60] as a simple matter of design. Moreover, as
identified by the applicants, Incorvaia teaches a strap
affixed to both of two overlapping flaps (see Fig. 1).
This teaching further bolsters the examiner's argument
that detachably attaching the Hicks strap to one of the
flaps would have been obvious.
Appeal No. 1998-1608 Page 12
Application No. 08/429,926
We agree with the appellant that claim 8 is not obvious
over the applied prior art. In that regard, it is our view
that the teachings of Incorvaia would not have rendered it
obvious to one of ordinary skill in the art at the time the
invention was made to have modified Hicks in a manner to
arrive at the subject matter of claim 8. As stated
previously,
Incorvaia would only have suggested replacing Hicks
releasable fastening means on patches 50a and strip 52
with Velcro strips as taught by Incorvaia's strips 18. ®
Thus, it is our opinion that Incorvaia would not have
suggested any changes to Hicks' fastening strap (i.e.,
padded member 60 and straps 62 and 64).
Additionally, the examiner has supplied no evidence (other
than Incorvaia) as to why it would have been obvious to
permanently affix Hicks' fastening strap to either the
overlapping flap or the overlapped flap. The examiner's
statement that such is "a simple matter of design" is not
evidence. Thus, there is no evidence in the applied prior art
that would have rendered it obvious to one of ordinary skill
in the art at the time the invention was made to have modified
Hicks' fastening strap so as to arrive at the subject matter
of claim 8.
Appeal No. 1998-1608 Page 13
Application No. 08/429,926
For the reasons stated above, the decision of the
examiner to reject claim 8 under 35 U.S.C. § 103 is reversed.
Appeal No. 1998-1608 Page 14
Application No. 08/429,926
REMAND
This application is remanded to the examiner for
consideration of conducting a further search of the claimed
subject matter.
Since the claimed subject matter is directed to providing
a foot orthosis that is easily attached to and detached from a
person's foot and to effectively hold the orthosis on the
person's foot, the examiner should consider other fields of
search as set forth below.
The examiner's field of search as indicated on the
filewrapper was limited to Class 602, SURGERY. Consideration
should be given to searching the following: Class 24, BUCKLES,
BUTTONS, CLASPS, ETC., especially Subclasses 712+, DRAWSTRING,
LACED-FASTENER, OR SEPARATE ESSENTIAL COOPERATING DEVICE
THEREFOR, and Class 36, BOOTS, SHOES, AND LEGGINGS, especially
Subclasses 113+, OCCUPATIONAL OR ATHLETIC SHOE, and 50.1+,
CLOSURE. These classes and subclasses appear to be reasonably
pertinent to the above-noted problems addressed by the
appellant's invention and thus may contain relevant subject
Appeal No. 1998-1608 Page 15
Application No. 08/429,926
matter and therefore a search therein would seem to be
appropriate.
Appeal No. 1998-1608 Page 16
Application No. 08/429,926
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 and 4 through 8 under 35 U.S.C. § 103 is reversed.
In addition, the application has been remanded to the examiner
for consideration of a further search.
This application, by virtue of its "special" status,
requires immediate action, see MPEP § 708.01 (Seventh Edition,
July 1998).
Appeal No. 1998-1608 Page 17
Application No. 08/429,926
REVERSED; REMANDED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 1998-1608 Page 18
Application No. 08/429,926
ZARLEY MCKEE THOMTE VOORHEES & SEASE
801 GRAND AVENUE SUITE 3200
DES MOINES, IA 50309
APPEAL NO. 1998-1608 - JUDGE NASE
APPLICATION NO. 08/429,926
APJ NASE
APJ COHEN
APJ CRAWFORD
DECISION: REVERSED; REMANDED
Prepared By: Gloria Henderson
DRAFT TYPED: 14 Sep 99
FINAL TYPED: