Sanders, Dr. Brett et al.

Patent Trials and Appeals Board

Apr 27, 2020

14787303 - (D) (P.T.A.B. Apr. 27, 2020)

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.
14/787,303 10/27/2015 Dr. Brett Sanders 4564 8147
45295 7590 04/27/2020
FLOYD B CAROTHERS
CAROTHERS AND CAROTHERS
670 Scrubgrass Road
Pittsburgh, PA 15243
EXAMINER
HICKS, VICTORIA J
ART UNIT PAPER NUMBER
3786
MAIL DATE DELIVERY MODE
04/27/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRETT SANDERS and KEITH J. HARPER
Appeal 2019-002212
Application 14/787,303
Technology Center 3700
Before DANIEL S. SONG, LISA M. GUIJT, and FREDERICK C. LANEY,
Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Quantum OPS,
Inc. Appeal Br. 1.
Appeal 2019-002212
Application 14/787,303
2
CLAIMED SUBJECT MATTER
The claims are directed to a surgical arm positioner support having a
sterile disposable support liner. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. An arm retainer for supporting a patient’s arm at a desired
position on an articulatable support assembly for securement to
an operating table, the arm retainer including:
a rigid arm tray having a mounting protrusion protruding
from a bottom side of said tray for connecting said tray to said
rigid arm tray[2] to an articulatable support assembly, said tray
having a pair of spaced openings for securement of a disposable
arm support liner to said tray;
said arm support liner comprised of a sheet of malleable
material with a soft engagement surface and having a
predetermined cut configuration for wrapping or forming said
malleable arm support liner about a patient’s arm for retention;
said arm support liner having two spaced foldout tabs
aligned with said tray openings for securing said liner to said
tray by folding said tabs through respective of said openings and
thereafter against the bottom side of said tray.
REFERENCES
The prior art relied upon by the Examiner is:

2 The recitation “to said rigid arm tray” appears superfluous to the
immediately preceding recitation “said tray,” and should be addressed in any
further prosecution of this application.
Name Reference Date
Robbins US 4,369,774 Jan 25, 1983
Bzoch US 5,718,671 Feb. 17, 1998
Tang US 2003/0060347 A1 Mar. 27, 2003
Scheinberg US 2004/0225241 A1 Nov. 11, 2004
Kalus US 8,567,839 B2 Oct. 29, 2013
Appeal 2019-002212
Application 14/787,303
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REJECTIONS
The Examiner rejects various claims under 35 U.S.C. § 103 as
follows:
1. Claims 1–3 and 6 as unpatentable over Bzoch in view of Kalus
and Scheinberg. Final Act. 8.
2. Claim 4 as unpatentable over Bzoch in view of Kalus,
Scheinberg, and Robbins. Final Act. 11.
3. Claim 5 as unpatentable over Bzoch in view of Kalus,
Scheinberg, Robbins, and Tang. Final Act. 12.
OPINION
Rejection 1: Bzoch in view of Kalus and Scheinberg
The Examiner rejects claims 1–3 and 6 as unpatentable over Bzoch in
view of Kalus and Scheinberg. Final Act. 8. In rejecting these claims, the
Examiner finds that Bzoch discloses the invention substantially as claimed
including a rigid arm tray 81 having a pair of spaced openings 83, 85 “for
securement of a disposable arm support liner (plastic frame 12) made of a
sheet of material (plastic material) to said tray 81.” Final Act. 8–9, citing
Bzoch, Figs. 8–9. The Examiner concedes that Bzoch does not disclose that
the arm support liner is made of a malleable material having two spaced
foldout tabs for securing the liner by folding the tabs through the openings of
the tray and against the bottom side of the tray. Final Act. 9.
The Examiner finds that Scheinberg discloses a splint 12 having a
malleable metal core, and finds that Kalus discloses an armrest 4 having
“two spaced foldout tabs 7” that are aligned with “tray 3 openings” for
securing the armrest “by folding said tabs (7, fig 2c) through respective of
said openings 8 and thereafter against the bottom side of said tray 3.” Final
Appeal 2019-002212
Application 14/787,303
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Act. 9–10. The Examiner concludes that it would have been obvious to a
person of ordinary skill in the art to have:
modified or substituted the locking pins 75, 77 of Bzoch with
the foldout tabs 7 taught by Kalus in order to provide an
improved and low-cost connector/fastener for a non-positive
anchoring of the liner with the tray such that material
consumption is reduced by merely punching out tabs out of the
material of Bzoch as modified by Scheinberg which results in
low-cost manufacturing of the arm retainer.
Final Act. 10; see also Kalus col. 1, ll. 47–48, col. 2, ll. 48–50.
The Appellant argues that the devices disclosed in both Bzoch and
Kalus are permanently mounted. In particular, the Appellant correctly notes
that in Bzoch, the locking pins 75, 77 are threadably received within
threaded openings in the underside of rigid plastic frame 12 to plate 81, and
thus, argues that “[the] padded rest 11 is permanently secured to plastic
frame 12 and that the securing mechanism provided is intended to
permanently secure padded rest 11, together with its frame portion 12 to
plate 81” such that it does not provide a “means or mechanism” for easily
removing an arm support liner. Appeal Br. 4.
The Appellant also argues that Kalus teaches permanently coupling
the arm rest 4 to first component 2 because it uses tabs that are inserted into
slots of the first component 2, and bent with the application of heat to
permanently secure the components together. Appeal Br. 4. Accordingly,
the Appellant argues that “[i]f one were to substitute the permanent bent tab
connections of Kalus for the permanent locking pins 77 and 75 of Bzoch, the
result would be merely the substitution of one permanent connection for
another.” Appeal Br. 5; see also Reply Br. 3.
We generally agree with the Appellant. As the Appellant argues, the
devices in both Bzoch and Kalus are mounted in a manner that does not
Appeal 2019-002212
Application 14/787,303
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suggest that they are to be removed, and there is no suggestion or reason to
make a liner attachable/detachable using spaced foldout tabs. Appeal Br. 6.
Although the Examiner responds that removability is not a claimed feature
(Ans. 9), this is not entirely correct considering that independent claim 1
specifically recites a disposable arm support liner, and the application is
directed to such a disposable liner. See claim 1, Title. Although we do not
disagree with the Examiner that “the entire device [of Bzoch] (including the
plastic frame 12) is capable of being disposed of by a user” (Ans. 8), we find
no evidence in the record that one of ordinary skill in the art would have
sought to use the device of Bzoch or Kalus in that manner.
We further find problematic the Examiner’s reliance on Kalus for
disclosure of the claimed securement, which is based on assertion that “the
connection of the arm rest 4 of Kalus to the segment 3 is not a permanent
connection.” Ans. 9. In particular, Kalus explicitly discloses that “[m]elting-
on of the thermoplastic components of the armrest 4 and, components of the
segment 3 compatible with these additionally leads to a material connection
between the components 2, 5.” Kalus, col. 2, ll. 40–45 (emphasis added).
We understand Kalus to be teaching fusing of the materials of the tabs 7 of
the armrest 4 to the door trim panel 3 by melting their interface, which
implies permanence and inseparability. The Examiner’s response that a user
can “re-heat[] the tabs 7” to straighten them in order to remove the arm rest
4 (Ans. 9) is speculative and, as Appellant argues, “baseless.” Reply Br. 2.
Finally, although the Examiner relies on cost savings as the
motivation for modifying Bzoch in the manner suggested to provide a “non-
positive anchoring of the liner with the tray” (Final Act. 10; see also Ans.
10), neither the Examiner nor the record establishes the basis or desirability
for providing a “non-positive anchoring” (i.e. not permanent mounting) of
Appeal 2019-002212
Application 14/787,303
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the liner with the tray, and instead, as discussed above, the applied art
discloses the contrary. Moreover, as to cost, it is not readily apparent how
the use of a malleable material such as aluminum disclosed in Scheinberg as
a substitute for the plastic frame of Bzoch, and disposing the aluminum
frame would decrease cost.
In view of the above considerations, we agree with the Appellant that
the rejection appears to be based on improper hindsight reconstruction, and
that adequate reasoning with rational underpinnings has not been provided.
Appeal Br. 6. Thus, we reverse the Examiner’s rejection of independent
claim 1, and dependent claims 2, 3, and 6 that depend from claim 1.

Rejections 2 and 3: Bzoch in view of Kalus, Scheinberg, Robbins, and Tang
The Examiner’s application of Robbins in rejecting claim 4, and
application of Robbins and Tang in rejecting claim 5, does not remedy the
deficiencies noted above relative to the rejection of claim 1 in Rejection 1.
Final Act. 11–12. The Appellant relies on the same reasons set forth above
relative to Rejection 1 for patentability of claims 4 and 5. Appeal Br. 6–7.
Therefore, we reverse Rejections 2 and 3 of claims 4 and 5 as well.
CONCLUSION
The Examiner’s rejections are reversed.

Appeal 2019-002212
Application 14/787,303
7
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 6 103 Bzoch, Kalus,
Scheinberg
1–3, 6
4 103 Bzoch, Kalus,
Scheinberg,
Robbins
4
5 103 Bzoch, Kalus,
Scheinberg,
Robbins, Tang
5
Overall
Outcome
1–6

REVERSED