TBI Innovations, LLC et al.

Patent Trials and Appeals Board

Jul 7, 2020

2019000741 (P.T.A.B. Jul. 7, 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.
14/317,282 06/27/2014 David W. Smith Q30.001.X4 9411
95508 7590 07/07/2020
One LLP
4000 MacArthur Blvd.
East Tower, Suite 500
Newport Beach, CA 92660
EXAMINER
HOLWERDA, KATHLEEN SONNETT
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
07/07/2020 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):
IPdocketing@onellp.com
PAIRgroup@onellp.com
onellpdocketing@onellp.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID W. SMITH, KEVIN JOHN VITITOE,
JAMISON JOSEPH FLOAT, CHAD MICHAEL LEEDER,
JOSEPH A. FISHER, and JOHN STITES

Appeal 2019-000741
Application 14/317,282
Technology Center 3700
____________

Before CYNTHIA L. MURPHY, KENNETH G. SCHOPFER, and
BRADLEY B. BAYAT, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–11.2 We have jurisdiction under
35 U.S.C. § 6(b). A hearing was held on June 22, 2020.
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as “Q30
SPORTS SCIENCE, LLC., . . . by virtue of an exclusive license from the
assignee TBI Innovations, LLC.” Appeal Br. 1.
2 Claims 12–18 are withdrawn from consideration and claims 19–36 have
been canceled. Id. at 21–22.
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BACKGROUND
The Specification discloses that “[t]he present disclosure is generally
related to systems for reducing the effects of exposure to concussive events.”
Spec. ¶ 2.

ILLUSTRATIVE CLAIM
Claim 1 is the only independent claim on appeal and recites:
1. A device comprising a circumferential collar adapted to be
worn on the neck of a human subject, said collar comprising
a pair of rigid or semi-rigid side members comprising
inwardly-directed protuberances adapted to apply sufficient
pressure to one or more neck veins of the subject to restrict blood
flow egressing from the head of the subject through the one or
more neck veins, and wherein the side members substantially
oppose each other;
a rigid front member having two laterally-disposed ends
adapted to connect the ventral-facing ends of the pair of rigid side
members and further adapted to bridge the laryngeal prominence
of the subject; and
a back member having two laterally-disposed ends
adapted to connect the dorsal-facing ends of the pair of rigid side
members.
Appeal Br. 20.
REJECTIONS
1. The Examiner rejects claims 1, 2, 4–7, 10, and 11 under 35 U.S.C. § 103
as unpatentable over Coakwell3 in view of Buckman ’820.4

3 Coakwell, US 2,676,586, iss. Apr. 27, 1954.
4 Buckman et al., US 2008/0132820 A1, pub. June 5, 2008
(“Buckman`820”).
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2. The Examiner rejects claim 1 under 35 U.S.C. § 103 as unpatentable over
Buckman ’820 in view of Coakwell.
3. The Examiner rejects claim 3 under 35 U.S.C. § 103 as unpatentable over
Buckman ’820 in view of Coakwell and Ward.5
4. The Examiner rejects claim 9 under 35 U.S.C. § 103 as unpatentable over
Buckman ’820 in view of Coakwell and Buckman ’934.6
5. The Examiner rejects claims 1 and 8 under 35 U.S.C. § 103 as
unpatentable over Coakwell in view of Rose.7
DISCUSSION
Coakwell in view of Buckman ’820
With respect to claim 1, the Examiner finds that Coakwell teaches a
collar comprising a pair of side members including inwardly-directed
protuberances, a front member, and a back member. Final Act. 5–6 (citing
Coakwell Fig. 2; col. 2, ll. 7–9, 13–14, 45–49). With respect to the specific
requirements of claim 1, the Examiner finds that Coakwell does not
“explicitly disclose wherein the side members are rigid or semi-rigid and the
front member is rigid.” Id. at 6 (emphasis omitted). With respect to these
requirements, the Examiner relies on Buckman ’820. Specifically, the
Examiner finds that Buckman ’820 teaches a circumferential collar for
applying pressure to a wound including side, front, and back members that
are formed of rigid material “to prevent uniform radially inwardly directed
forces causing a tourniquet effect.” Id. (citing Buckman ’820 Fig. 20; ¶¶ 11,

5 Ward et al., WO 2008/150966 A1, pub. Dec. 11, 2008.
6 Buckman et al., US 2011/0028934 A1, pub. Feb. 3, 2011
(“Buckman`394”).
7 Rose et al., US 2011/0270299 A1, pub. Nov. 3, 2011.
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15, 72, 101, 102). The Examiner determines that it would have been
obvious “to substitute the semi-rigid or rigid shelled structured collar, as
taught by Buckman [’820], for the strap collar, of Coakwell, to prevent a
tourniquet effect that would cause an uniform radially inward directed force
about the circumference of the neck (Buckman: [0072]).” Id. at 7.
Because the devices of Buckman ’820 and Coakwell serve such
different functions and based on the specific substitution proposed by the
Examiner, we determine the Examiner has failed to establish that it would
have been obvious to modify Coakwell in view of Buckman ’820 as
proposed.
Coakwell discloses a device in the form of a collar that provides
pressure to a pilot’s neck in order to temporarily restrict blood flow from the
head to prevent blackouts. See Coakwell col. 2, ll. 1–14. In contrast,
Buckman ’820 discloses a device “for achieving hemostasis in patients who
have received skin-penetrating wounds.” Buckman ’820 Abstract. In
particular, in the embodiment the Examiner relies upon, Buckman ’820
discloses rigid or semi-rigid upper and lower shell members that enclose a
limb. See id. ¶¶ 100–102. The device is intended to provide an enclosure
around a wound that prevents blood leakage without applying pressure that
causes a tourniquet effect. See, e.g., id. ¶ 15. Thus, one of ordinary skill in
the art would understand that Coakwell’s design provides direct pressure to
the neck region to restrict blood flow while Buckman ’820’s design seeks to
provide a “dam” around a wound without providing direct pressure.
In light of these contrasting functions, we agree with Appellant that
the Examiner has not set forth an adequate reason to support the
combination proposed. The Examiner proposes to substitute the entirety of
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Buckman ’820’s hard shell collar for Coakwell’s collar. We find this
proposed substitution problematic for at least two reasons. First, we agree
with Appellant that the Examiner’s selective decision to substitute only the
hard shell collar from Buckman ’820’s device into Coakwell’s collar is
problematic. The Examiner does not explain adequately why such a
substitution would occur or how it is intended to work with the existing
functionality of Coakwell’s design, particularly in light of the different
functions of the prior art devices explained above. Second, it is not clear,
without further explanation, that a person of ordinary skill in the art would
have perceived any benefit from making such a substitution, and we agree
with Appellant that one of ordinary skill in the art would have readily
observed disadvantages regarding the users comfort and mobility. See
Appeal Br. 13. In short, the Examiner does not explain adequately how
applying the rigid structure of Buckman ’820 out of the context of the
hemostasis functionality of Buckman ’820’s overall design would work with
Coakwell’s collar.
Based on the foregoing, we do not sustain the rejection of claim 1 as
obvious over Coakwell in view of Buckman ’820. For the same reasons, we
also do not sustain the rejection of dependent claims 2, 4–7, 10, and 11 over
the same combination.
Buckman ’820 in view of Coakwell
With respect to claim 1, the Examiner alternatively determines that it
would have been obvious “to apply pressure to treat a neck vein, as taught
by Coakwell, when applying pressure to a blood vessel in the neck, of
Buchman [’820], to impede venous blood flow from the brain from being
drained and thus preventing a user from blacking out and having temporary
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blindness.” Final Act. 9–10. We are persuaded of error by Appellant’s
arguments. See Appeal Br. 14–15. As discussed above, the Examiner fails
to provide an adequate explanation regarding how the proposed combination
would work in light of the different functions of the devices. In particular,
we agree with Appellant that Buckman ’820 teaches providing hemostasis
without direct pressure and it is not clear what the effect of providing direct
pressure taught by Coakwell would be and how that it would affect the
hemostasis function of Buckman ’820’s device. Thus, we also do not
sustain the rejection of claim 1 here.
Regarding the other rejections over Buckman ’820 in view of
Coakwell, the Examiner does not provide further evidence or reasoning with
respect to the art of record that overcomes the deficiency in the rejection of
claim 1. Thus, we also do not sustain the rejections of dependent claims 3
and 9.
Coakwell in view of Rose
With respect to claim 1, the Examiner alternatively determines that:
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to incorporate a rigid material
with portions being elastic, as taught by Rose, into the collar of
Coakwell, to selectively apply pressure to a portion of the body
and adjust the circumference about the body. . . . [I]t also would
have been obvious to one of ordinary skill in the art at the time
the invention was made to incorporate a rigid material and an
elastic material into the collar of Coakwell, since it has been held
to be within the general skill of a worker in the art to select a
known material on the basis of its suitability for the intended use
as a matter of design choice.
Final Act. 13.
For reasons similar to those discussed above, we agree with Appellant
that the Examiner has not provided an adequate reason to apply any of the
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features of Rose to a modification of Coakwell. See Appeal Br. 18. We
agree with Appellant that Rose and Coakwell teach devices with different
functionalities in much the same way that Buckman ’820 and Coakwell
teach different functionalities. In light of these differences, the Examiner’s
lack of explanation regarding the specific combination proposed is
problematic because the Examiner does not provide an explanation as to
how Coakwell’s device is being modified or why one of ordinary skill in the
art would do so in view of Rose.
Further, we determine that the Examiner has not made the requisite
findings to establish that the materials of Coakwell’s device would have
been an obvious design choice. A so-called “design choice” rationale, such
as the Examiner relies upon, has been deemed appropriate where one prior
art element or property is proposed to be substituted for another that
achieves the same purpose. See ACCO Brands Corp. v. Fellowes, Inc., 813
F.3d 1361, 1367 (Fed. Cir. 2016) (“The prior art consistently locates the two
sensors at issue in the shredder’s feed, and no party disputes that an ordinary
artisan would have found this the obvious location for the combination of
sensors. The ordinary artisan would then be left with two design choices.”);
Ex parte Maeda, Appeal 2010-009814, 2012 WL 5294326, at *3 (PTAB
Oct. 23, 2012) (informative). Cf. In re Gal, 980 F.2d 717, 719 (Fed. Cir.
1992) (“The Board held that Gal had simply made an obvious design choice.
However, the different structures of Gal and Matsumura achieve different
purposes.”). Given the differences between Rose and Coakwell it is not
clear how the choice of using any rigid materials in the design of Rose’s
device shows the suitability of using such materials in Coakwell’s device.
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Based on the foregoing, we also do not sustain the rejection of claim 1
over Coakwell in view of Rose. And for the same reasons, we do not sustain
the rejection of dependent claim 8.
CONCLUSION
We REVERSE the rejections of claims 1–11.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–7, 10,
11
103 Coakwell,
Buckman ’820
1, 2, 4–7,
10, 11
1 103 Buckman ’820,
Coakwell
1
3 103 Buckman ’820,
Coakwell, Ward
3
9 103 Buckman ’820,
Coakwell,
Buckman ’934
9
1, 8 103 Coakwell, Rose 1, 8
Overall
Outcome
1–11

REVERSED