UNIVERSITY OF NOTRE DAME

Patent Trials and Appeals Board

Apr 2, 2021

2020005585 (P.T.A.B. Apr. 2, 2021)

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.
15/074,339 03/18/2016 Mike W. Bean UND-025239 US ORD 6439
26294 7590 04/02/2021
TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P.
1300 EAST NINTH STREET, SUITE 1700
CLEVELAND, OH 44114
EXAMINER
HICKS, VICTORIA J
ART UNIT PAPER NUMBER
3786
NOTIFICATION DATE DELIVERY MODE
04/02/2021 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):
docketing@tarolli.com
rkline@tarolli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MIKE W. BEAN
____________________

Appeal 2020-005585
Application 15/074,339
Technology Center 3700
____________________

Before JOHN C. KERINS, EDWARD A. BROWN, and
WILLIAM A. CAPP, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Decision rejecting claims 1–8, the only claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The term “Appellant” is used herein to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies TayCo Brace LLC as the real party in
interest, under license from assignee University of Notre Dame du Lac.
Appeal Br. 3.
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CLAIMED SUBJECT MATTER
Appellant’s invention relates to an external ankle brace configured to
be worn on the exterior of a shoe. Independent claim 1 is illustrative, and is
reproduced below:
1. An external ankle brace for restricting movement of an ankle
in a first direction and permitting movement of the ankle in a
second direction, wherein said external ankle brace is
configured to be disposed on an exterior of a shoe and the shoe
having a heel portion, a sole, a toe, a top, and oppositely
disposed sides, comprising:
a rigid heel enclosure having a rear portion and a forward
portion;
said rear portion for receiving the heel portion of the shoe;
said forward portion having a medial sidewall and a lateral
sidewall for collectively surrounding the sides of the shoe, the
medial and lateral sidewalls being cantilevered from the rear
portion of the rigid heel enclosure, the medial and lateral
sidewalls each being configured to extend from the heel portion
of the shoe in a longitudinal direction beyond a talus of a
wearer's foot and toward the toe, each of the medial and lateral
sidewalls being at least partially located adjacent to an instep
area of a corresponding medial or lateral side of the shoe;
a lateral upright extension selectively perpendicular to at least
the lateral sidewall of said rigid heel enclosure and pivotally
attached to said lateral sidewall;
a medial upright extension selectively perpendicular to at least
the medial sidewall of said rigid heel enclosure and pivotally
attached to said medial sidewall;
a lower fastening system comprising at least one connecting
strap for connecting said lateral sidewall to said medial sidewall
underneath the sole of the shoe forward of the talus of the
wearer's foot, the lower fastening system being the only
structure connecting the lateral and medial sidewalls underneath
the sole of the shoe such that a sole of the shoe underneath a
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heel of the wearer's foot is exposed to ambient space beneath
the shoe; and
an upper fastening system comprising at least one connecting
strap for removably connecting said lateral sidewall to said
medial sidewall across the top of the shoe.
REJECTIONS
The Examiner rejects:
(i) claim 8 under 35 U.S.C. § 112(b) as being indefinite;
(ii) claims 1–6 and 8 under 35 U.S.C. § 103(a) as being unpatentable
over Birmingham (US 6,299,587 B1, issued Oct. 9, 2001) in view of Dittmer
(US 6,669,659 B2, issued Dec. 30, 2003); and
(iii) claim 7 under 35 U.S.C. § 103(a) as being unpatentable over
Birmingham in view of Dittmer and Crispin (US 4,771,768, issued Sept. 20,
1988).
ANALYSIS
Claim 8--Indefiniteness
The Examiner finds claim 8 to be indefinite, in that the recitation of
“the upper connecting system” lacks sufficient antecedent basis in that claim
or in claim 1, from which claim 8 depends. Final Act. 4–5. Appellant
requests that the rejection be held in abeyance, and that the rejection will be
addressed appropriately after a decision as to the § 103 rejections is reached.
Appeal Br. 8. Although the Examiner acknowledges that a proposed
amendment to the claim was presented in an unentered amendment after
final action (dated November 21, 2019), the rejection is not withdrawn.
Ans. 10.
Appellant does not present substantive argument contesting the
rejection. The rejection is therefore summarily sustained.
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Claims 1–6 and 8--Unpatentability--Birmingham/Dittmer
Appellant presents arguments contesting the rejection of claim 1, and
does not present separate arguments for any of dependent claims 2–6 and 8.
Appeal Br. 8–17. Accordingly, we select claim 1 as representative of this
group of claims, and claims 2–6 and 8 stand or fall with claim 1.
The Examiner finds that Birmingham discloses an external ankle
brace that teaches all limitations appearing in claim 1, with the exception of
the lower fastening system comprising at least one connecting strap, with its
attendant features. Final Act. 6–8. The Examiner cites to Dittmer as also
disclosing an external ankle brace having lateral and medial sidewalls that
includes a lower fastening system (elements 60, 61, 68) having at least one
connecting strap (60) that connects the medial sidewall to the lateral
sidewall, and extends underneath the sole of a shoe forward of the talus of
the wearer’s foot, with the lower fastening system being the only structure
connecting the lateral and medial sidewalls of the brace underneath the shoe
sole, such that the shoe sole is exposed to ambient space beneath the shoe.
Id. at 8–9. The Examiner concludes that it would have been obvious to have
provided the brace of Birmingham with a lower fastening system as taught
by Dittmer, in order to more firmly hold the medial and lateral sidewalls in
place alongside the shoe. Id. at 9 (citing Dittmer, col. 4, ll. 2–6).
Appellant presents several arguments as to why Birmingham and
Dittmer are not believed to render claim 1 obvious. Appellant first
challenges the Examiner’s use of Dittmer in the combination with
Birmingham, on the basis that Dittmer is nonanalogous art relative to the
claimed invention. Appeal Br. 10. (“[Dittmer] is not properly analogized to
the claimed invention.”). Appellant maintains that Dittmer’s stated goal is to
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restrain movement of the affected body part, not to selectively permit
movement as in Birmingham and in the claimed invention. Id. According to
Appellant, a person of ordinary skill in the art would therefore be disinclined
to look to the Dittmer splint when looking to secure an ankle-foot orthosis to
a foot. Id.
The Examiner, correctly applying the two-prong analysis for non-
analogous art, determines that Dittmer is in the field of Appellant’s
endeavor, to wit, ankle braces having lateral and medial upright extension,
and lateral and medial sidewalls. Ans. 12. We fail to see error in this
determination. Further, if immobilizing splints and motion-allowing braces
were somehow regarded as coming from two different fields of endeavor,
Dittmer would be reasonably pertinent to the portion of the problem faced
by Appellant in terms of how one might best secure an external brace to a
shoe and foot. As such, we disagree that Dittmer is non-analogous art.
Appellant next argues that the Dittmer strap (60) would not likely be
equal to the rigors of repeated, weight-bearing contact during normal
walking or sports activity, and that extensive modification would be
involved in the Examiner’s proposed modification in order to perform
similarly to the claimed invention. Appeal Br. 10–11. Appellant asserts that
the combination “would likely destroy the function of the [Dittmer] device.”
Id. at 11.
As to the latter, any assertion of the impairment or destroying of a
function is germane only as to the reference, here, Birmingham, proposed to
be modified. The assertion is therefore not indicative of Examiner error. As
to the former, the Examiner responds that Dittmer discloses that its strap
may be made of hook-and-loop material, which is a flat, durable material
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that is capable of being walked on, and that, in the course of a wearer using
the Dittmer splint in transporting the wearer to obtain medical treatment, the
wearer may well have to walk with the splint in position wrapped around the
wearer’s shoe and in contact with the ground. Ans. 12. The Examiner
additionally points out that any particular use of the claimed ankle brace,
such as to play sports, does not appear in any way in the claims.
Appellant provides no evidence or sound technical reasoning as to
why the hook-and-loop fastening material in Dittmer would not be suitable
in terms of wear or durability. Further, Appellant does not claim any
specific strap material in claim 1, and its Specification indicates that the
strap of the lower fastening system could be made of rubber, plastic, nylon,
“or any other suitable strap type that is commonly known in the art.” Spec.
¶ 32. This signifies that it would not amount to a matter of patentable
invention to select a strap material that can withstand repeated walking or
sports activities, and if Dittmer’s hook-and-loop strap were somehow not up
to the task, the ordinary creativity of the person skilled in the art would
select some different material from among known possibilities. It is well
settled that an artisan must be presumed to know something about the art
apart from what the references disclose. See In re Jacoby, 309 F.2d 513,
516 (CCPA 1962). After all, “[a] person of ordinary skill is also a person of
ordinary creativity, not an automaton.” KSR Int'l. Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007).
The argument does not apprise us of Examiner error.
Appellant maintains that the proposed combination of Birmingham
and Dittmer would at least partially destroy the function of the Birmingham
device. Appeal Br. 12. Appellant reasons that the Birmingham device
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already includes a strap that urges its U-shaped member against the sole of a
shoe, and that the Examiner has not adequately explained or provided any
reason why this strap would not be adequate for its intended function. Id.
According to Appellant, adding an additional strap would result in additional
compressive forces being applied, which would “likely caus[e] discomfort.”
Id. Further, the added strap would almost certainly cross over the top of the
existing strap and likely interfere with it. Id. Appellant maintains that these
considerations point to a requirement to make significant modifications in
combining the teachings, and to the use of impermissible hindsight
reconstruction as the only motivation for the combination. Id.
The Examiner points out that making the proposed modification to
add a strap as a lower fastening system, would provide another point of
securement of the brace to the shoe and foot, to supplement the existing
upper fastening system in more securely and firmly holding the medial and
lateral sidewalls in place. Ans. 14. The Examiner additionally notes the
positioning of the existing Birmingham strap as being in the vicinity of the
neck and head of the talus of the foot, whereas the Dittmer strap extends
over the top of the midfoot of the user, and, thus, there would be no spatial
interference of one with the other in the combination. Id. We believe the
Examiner has the better position in this regard, but even if one strap were to
partially cross over the other, we are not apprised of any detrimental effect
this might have.
Any discomfort brought about by the provision of a second strap
adding compressive forces to the shoe and foot are seen as being readily
addressed within the level of skill in the art, as the brace is fitted to a user’s
shoe and leg. It is less so the addition of compressive force than it is the
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securement at a second location that drives the Examiner’s proposed
combination. As to the argument regarding the single strap of Birmingham
not having been shown to be inadequate, such is not a requirement in
establishing the obviousness of including a further strap at a separate
location. Further, Birmingham itself discusses an embodiment (Figures 5–7)
in which a lower fastening system and an upper fastening system operate in
concert, “[t]o further secure and stabilize” the attachment of the device to a
shoe. Birmingham, col. 5, ll. 11–22.
We are therefore not persuaded that the proposed combination of
Birmingham and Dittmer requires any significant modification as the
additional strap is added, nor that the combination employs the use of
impermissible hindsight reconstruction.
Appellant additionally argues that it is unclear how the proposed
modification would serve to strengthen the connection of the brace to the
shoe of the wearer. Appeal Br. 13. Appellant argues that, to the contrary,
the addition of a strap as taught by Dittmer to the Birmingham bracket
“would appear to . . . necessitate pulling the U-shaped member out of the
described engagement with the lip 76 [of the shoe] in order to accommodate
the strap 90 [sic, 60] of [Dittmer] for passage therethrough.” Appeal Br. 13.
This would cause, according to Appellant, U-shaped member to be urged
upward under the force of the added strap and thus further away from its
intended position, thereby weakening the connection. Id.
Relatedly, Appellant argues that the cutting of slots in the U-shaped
member of Birmingham, in a manner similar to providing slots in the
segments in Dittmer, would likely detrimentally weaken the U-shaped
member, due to the relatively small size of the lateral and medial extensions
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of the U-shaped member. Appeal Br. 15–16. Appellant indicates that the
Examiner has not indicated any other installation or attachment method
would be used adding the second strap. Id. at 16.
As best we understand these arguments, Appellant appears to believe
that the Examiner’s proposed combination requires that the strap run at least
partially between the shoe and the U-shaped member, apparently in
reference to Figure 1 of Dittmer, which shows, at the bottom of the laterally-
oriented segment, the strap briefly passing between the shoe and the segment
in a slot formed at the lower portion of the segment.
The Examiner responds that the argument is in the nature of bodily
incorporating the teaching of a slotted segment with a strap extending
therethrough, but that “Birmingham has not been modified in the rejection of
claim 1 to include slots.” Ans. 17. We do not see where the Examiner
explicitly explains how the additional strap might be secured to the
remainder of the brace; instead, the Examiner takes the position that “one of
ordinary skill [in the art] would be capable of combining the teachings of
Birmingham and Dittmer to arrive at an operable brace with a heel enclosure
and corresponding lower fastening system.” Id. We understand this to mean
that the person of ordinary skill using ordinary creativity, would, without
using extraordinary skill, adopt a securement means that would not be
otherwise detrimental to the operation of the Birmingham brace. We agree,
and also note that claim 1 does not require any specific means of securement
to the lateral or medial sidewall, or any securement at all, for that matter.
The strap can simply be installed by wrapping it around the lateral and
medial sidewall, once positioned, and secured to itself.
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The arguments thus fail to apprise us of error in the Examiner’s
rejection.
For all of the foregoing reasons, we sustain the rejection of claim 1 as
being unpatentable over Birmingham and Dittmer. Claims 2–6 and 8 fall
with claim 1.

Claim 7--Unpatenability--Birmingham/Dittmer/Crispin
Appellant relies on the arguments presented for claim 1 for the
patentability of claim 7 as well. Appeal Br. 17–18. For the reasons noted
above, we do not find the arguments persuasive of Examiner error. The
rejection of claim 7 is therefore sustained.
DECISION
The rejection of claim 8 under 35 U.S.C. § 112(b) is affirmed.
The rejections of claims 1–6 and 8, and of claim 7, under 35 U.S.C.
§ 103, are affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
8 112(b) Indefiniteness 8
1–6, 8 103 Birmingham,
Dittmer
1–6, 8
7 103 Birmingham,
Dittmer, Crispin
7
Overall
Outcome
1–8

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED