Ex Parte Bushby

Patent Trial and Appeal Board

Sep 18, 2018

13783632 (P.T.A.B. Sep. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/783,632 03/04/2013
124676 7590 09/20/2018
Russell Ng PLLC
8729 Shoal Creek Blvd., Suite 100
Austin, TX 78757
FIRST NAMED INVENTOR
Donald P. Bushby
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
12793-700.303 1045
EXAMINER
FRY,PATRICKB
ART UNIT PAPER NUMBER
3721
NOTIFICATION DATE DELIVERY MODE
09/20/2018 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):
s tephanie@russellnglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONALD P. BUSHBY1
Appeal2018-000283
Application 13/783,632
Technology Center 3700
Before CHARLES N. GREENHUT, JAMES P. CALVE, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Final Office
Action finally rejecting claims 1-3, 5-11, 14--25, 27-29, and 32--43. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Applied BioKinetics LLC is identified as the real party in interest (Appeal
Br. 2) and also is the applicant pursuant to 37 C.F.R. § 1.46.
Appeal2018-000283
Application 13/783,632
CLAIMED SUBJECT MATTER
Claims 1, 15, and 39 are independent, with claim 1 reproduced below.
1. A method of manufacturing a system of anatomical pre-
cut supports, the method comprising:
acquiring a sheet of material including:
a support layer comprised of a single layer of
woven fabric and having a thickness of less than 15 mils
and a tensile strength of greater than 10 lb/in-width,
an adhesive layer on said support layer for
adhesive attachment of said support layer to an outer skin
surface of a user, and
a removable cover layer on said adhesive layer;
cutting into the support layer of the sheet of material a
plurality of elongated pre-cut supports each having substantially
straight sides and rounded comers and all of substantially a
same size and shape, such that each of a plurality of sheet
portions continuously connected at ends thereof includes a
single one of the plurality of pre-cut supports, each of the
plurality of pre-cut supports is at least substantially
disconnected from a remainder of the support layer, and each of
the plurality of pre-cut supports remains attached to a
continuous portion of the removable cover layer; and
forming a roll of the plurality of sheet portions.
Appeal Br. 24 (Claims App.).
REJECTI0NS 2
The following rejections are before us for review:
Claims 1-3, 5-7, 15-19, 25, 27, 29, 32-35, and 37--43 under
35 U.S.C. § 103(a) over Morgan (US 3,357,425; iss. Dec. 12, 1967), Bailey
(US 3,849,332; iss. Nov. 19, 1974), Nirschl (US 3,926,186; iss. Dec. 16,
1975), and Tumgren (US 5,891,078; iss. Apr. 6, 1999).
2 The rejection of claim 32 under 35 U.S.C. § 112, fourth paragraph, was
overcome by amendment. See Adv. Action (May 18, 2017); Appeal Br. 4.
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Application 13/783,632
Claims 8 and 20 under 35 U.S.C. § I03(a) over Morgan, Bailey,
Nirschl, Tumgren, and Etcheparre (US 4,588,871; iss. May 13, 1986).
Claims 10, 11, 23, and 24 under 35 U.S.C. § I03(a) over Morgan,
Bailey, Nirschl, Tumgren, and Seitzinger (US 5,590,785; iss. Jan. 7, 1997).
Claims 14 and 21 under 35 U.S.C. § I03(a) over Morgan, Bailey,
Nirschl, Tumgren, and Burgess (US 6,640,465 Bl; iss. Nov. 4, 2003).
Claim 28 is rejected under 35 U.S.C. § I03(a) over Morgan, Bailey,
Nirschl, Tumgren, and Augst (US 5,496,605; iss. Mar. 5, 1996).
Claim 36 is rejected under 35 U.S.C. § I03(a) over Morgan, Bailey,
Nirschl, Tumgren, and Tomaiuolo (US 5,782,786; iss. July 21, 1998).
Claims 1, 2, 5-7, 9, 15, and 22 under 35 U.S.C. § I03(a) over
Morgan, Bailey, Davies (US 3,989,041; iss. Nov. 2, 1976), and Tumgren.
ANALYSIS
Claims 1-3, 5-7, 15-19, 25, 27, 29, 32-35, and 37-43
Over Morgan, Bailey, Nirschl, and Turngren
Appellant raises a number of challenges to the Examiner's reasons for
combining the references in the Final Office Action. Appeal Br. 6-13. For
example, Appellant argues that the Examiner has not resolved conflicts in
the references' teachings. Id. at 8-10. Appellant argues that the proposed
combination would render Morgan unsatisfactory for its intended purpose.
Id. at 10-11. Appellant also argues that the claimed invention is not a
predictable result of the proposed combination of references. Id. at 11-13.
Appellant discloses a stretch resistant plantar fascia support system
that may be adhesively applied to a foot but claims more broadly "a system
of anatomical pre-cut supports." As claimed, the supports are cut into sheets
that are connected to form a roll of sheets with plural pre-cut supports.
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Application 13/783,632
The Examiner correctly finds that Morgan teaches such a method of
making anatomical pre-cut supports with the claimed support, adhesive, and
removable cover layers 12, 14, 16 cut into sheet 12 as illustrated in Figures 1
and 2. See Final Act. 4. Morgan teaches the advantages of pre-cut and pre-
formed adhesive straps in wrapping a person's anatomy in a particular way
to provide strength and support to a desired portion of the person's anatomy.
Morgan, 1 :9--58. Morgan also teaches that the shapes illustrated in Figure 1
are designed to achieve an ankle wrap to support and strengthen the ankle to
heal sprains and also prevent strains from occurring. Id. at 2:58-65.
Recognizing that Appellant's support system is designed to address
plantar fasciitis, the Examiner turns to teachings of Nirschl for a support 10
that can be used to provide pressure to the bottom of the foot. Final Act. 6.
In particular, the Examiner relies on a support illustrated in Figures 4 and 5
because Nirschl uses this support to provide support to the plantar fascia at
the bottom surface of the foot. Nirschl, 5: 1-5. The Examiner correctly finds
that Nirschl teaches a single support pad 101 to support the plantar fascia.
Final Act. 6. The Examiner also correctly reasons that it would have been
obvious to modify Morgan's pre-cut and pre-shaped supports to use a single
support, as taught by Nirschl, "to apply pressure to a foot over a broad area
without impairing mobility" to "make the method more efficient and
therefore more desirable." Id. The Examiner's reasoning is supported by a
rational underpinning based on Nirschl' s teachings that such a support pad
101 provides such broad area support without impairing mobility. Nirschl,
5 :20-27; Final Act. 6 ( citing id.). Indeed, Morgan teaches that the shapes
and number of support pads on a sheet will vary with the section of anatomy
that is supported. Morgan, 3:30-33; Final Act. 5 (citing id.).
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In view of these teachings, the Examiner's findings and reasoning are
supported by a preponderance of evidence and rational underpinnings. The
teachings of Morgan and Nirschl do not conflict. Appeal Br. 9-10. Morgan
teaches a system configurable to support any body part, and Nirschl teaches
a plantar fascia support. Morgan, 1:9-58, 3:30-41; Nirschl, 5:1-32. Skilled
artisans are persons of ordinary creativity who can combine these teachings
predictably. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
Appellant argues that Nirschl uses Velcro straps to hold the support in
place and permit repositioning and reuse. Appeal Br. 10. This argument is
not persuasive because Morgan teaches pressure sensitive adhesive strips as
an alternate way to support a body part. Morgan, 1:9-15, 3:23-37. Morgan
also teaches that its pre-cut, adhesive supports can be mass produced very
simply and inexpensively to save time and ensure that a wrap provides the
necessary strengthening and support. Id. at 3:38--41. Thus, Morgan's kit
provides a fixed support without Velcro straps, and teaches the use of extra
strips to strengthen a support, as desired. Id. at 3:1-22. Morgan's strips also
avoid the problems of metal rings that Nirschl criticizes. Nirschl, 5 :39--44.
The proposed combination retains the advantages of Morgan's kit-
low cost, ease of use, fixed support, adjustability- with the advantages of
Nirschl's support that applies pressure without impairing mobility. See Ans.
2-5. Morgan teaches how to apply supports. Appellant's speculation as to
design options (Appeal Br. 12) ignores the teachings of Morgan and Nirschl
cited by the Examiner. Claim 1 does not preclude the use of multiple
supports. It recites a system "comprising" plural sheets of plural supports.
The Examiner also correctly finds that Tumgren teaches advantages
of making sheets of pre-cut supports as a continuous roll. Final Act. 6.
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The Examiner correctly determines that it would have been obvious to
make Morgan's sheets 10 as a continuous roll as taught by Tumgren to keep
the plurality of pre-cut supports and their respective sheets organized during
storage and transport. Id. at 7. Tumgren also teaches that this configuration
allows individual bandages to be removed from the roll with just one hand.
Tumgren, 1:13-19, 4:30-34, Figs. 1-3; Final Act. 7 (citing id. at 4:30-34).
Appellant argues, however, that Morgan disparages the prior art's use
of rolls of adhesive supports in favor of a single large sheet with pre-cut kit
components; therefore, it would not have been obvious to modify Morgan's
sheet as Tumgren teaches. Appeal Br. 11. This argument is not persuasive
because the Examiner is not modifying Morgan in this alleged manner.
The Examiner's rejection retains the advantages of Morgan's sheets of
pre-cut supports, shaped according to Nirschl, in a continuous roll of sheets
that Tumgren teaches is advantageous to improve dispensing. Final Act. 4--
7. The Examiner correctly finds that Morgan does not criticize forming the
sheets of pre-cut, pre-shaped supports into rolls. Ans. 5. Morgan criticizes
prior art rolls of uncut adhesive cloth tape that trainers have to pull from the
roll and tear into individual pieces of a desired length in a trial and error
approach that is tedious and difficult. Morgan, 1:16-35. Thus, trainers pre-
cut standard lengths from rolls of tape for quick, efficient wrapping of an
ankle. Id. We find no conflict in how the Examiner combines the teachings
of Morgan and Tumgren, nor any impairment of Morgan's pre-cut sheets.
Nor are we persuaded by Appellant's argument that the combination
would not yield predictable results. Appeal Br. 11-12. Appellant's attorney
argument is not evidence and does not address the foregoing findings and
determinations of the Examiner as set forth in the Final Action and Answer.
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The Examiner combines features of these references according to their
intended uses for predictable results and advantages taught in the references.
The reasons for combining the references are supported by express teachings
in each reference of the advantages of these features when combined in the
manner proposed by the Examiner. When combined in this manner, the
teachings would yield predictable results of a continuous roll of pre-cut, pre-
shaped adhesive supports as claimed. Ans. 6-7.
Claim 1
Regarding claim 1, Appellant argues that the combined teachings do
not disclose or render obvious pre-cut supports "having substantially straight
sides and rounded comers" as claimed, because Nirschl teaches a support
with curved sides. Appeal Br. 13-14. Appellant argues that Nirschl teaches
"curvilinear elongated pad 101 has a concavely arcuately shaped long edge
102." Id. at 14 (quoting Nirschl, 5:11-22) (emphasis in original).
We agree with the Examiner that Nirschl teaches substantially straight
sides and rounded comers for support 101 as claimed. Ans. 7. Appellant
does not dispute that Nirschl teaches rounded comers. See Reply Br. 7. The
Examiner also finds that Tumgren teaches adhesive supports (bandages 12)
surrounded by frames 16. Final Act. 6-7. Figures 1-3 show bandages 12 to
have straight sides and rounded comers. See Tumgren, 4:30-34, 5:58---67.
Morgan also teaches pressure adhesive supports 1-7 with straight sides in
Figure 1. See Final Act. 4 (Morgan has elongated, pre-cut supports 1-7).
We also interpret the term "substantially straight sides" to read on the
configuration of support pad 101 disclosed in Nirschl as the Examiner has
done. See Ans. 7 ("The phrase 'substantially straight' implies that the sides
do not have to be exactly straight.").
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Application 13/783,632
"Substantially" conveys the idea of something "being largely but not
wholly that which is specified." See Definition of substantial by Merriam-
Webster at http://www.merriam-webster.com/dictionary/substantial (viewed
Sept. 7, 2018). On its face, claim 1 's recital of "a plurality of elongated pre-
cut supports each having substantially straight sides" would appear to cover
Nirschl' s curvilinear elongated support pad 101. Curvilinear edge 102 can
be considered "substantially straight" and its opposing edge 103 includes a
substantially straight portion (broad, flat projection 104) as well as other
portions that are substantially straight as claimed.
We tum to the Specification for clarification. Appellant discloses a
variety of supports in a variety of shapes including many curvilinear shapes
such as Nirschl teaches. See Figs. 6, 8, 10-12, 15-20. The Specification
discloses other supports 578, 506 with rounded comers and completely,
rather than substantially, straight sides. See Fig. 20. The Specification does
not describe the shapes of these supports, or their sides, as being straight,
substantially straight, or curvilinear. The Specification is silent on this issue.
Appellant asserts that paragraph 116 discloses "substantially straight
sides." Appeal Br. 2 ( summary of claimed subject matter for claim 1 ). We
find no disclosure in this portion of the Specification for this feature. Absent
a definition in the Specification, we interpret "substantially straight sides" to
include sides with slight curves. This limitation indicates that Appellant
does not want to limit the scope of claim 1 to supports with completely
straight sides such as supports 578, 506 shown in Figure 20. In fact, it is not
clear that claim 1 encompasses supports with completely straight sides when
the Specification discloses supports 502 in Figure 20 including sides that are
substantially straight and comers that are rounded as claimed.
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Application 13/783,632
The Examiner correctly finds that Nirschl teaches support 101 having
sides that are "substantially straight" similar to supports shown in Figures 6,
8, 10-12, and 15-20 of Appellant's disclosure. Nirschl teaches an elongated
support including substantially straight sides similar to Appellant's supports
that fall within the scope of claim 1. If "substantially straight" also includes
"completely straight" sides, then Morgan teaches such supports 1, 2, 5-7 in
Figure 1, and Tumgren teaches such support 12 in Figures 1-7. Thus, we
sustain the rejection of claim 1 and its dependent claims 2, 5-7, 27, 29, 35,
38, and 40-42, which are not argued separately. See Appeal Br. 13-19.
Claim 3
Claim 3 depends from claim 1 and recites that the support layer "is
formed of a woven micro-fiber fabric" and "has a tensile strength of greater
than 20 lb/in-width." Appeal Br. 24 (Claims App.). The Examiner relies on
Bailey to teach woven rayon fabric with a tensile strength of about 22 lb/in-
width. Final Act. 8. The Examiner reasons that it would have been obvious
from this teaching of Bailey to use a woven micro-fiber fabric with a tensile
strength of greater than 20 lb/in-width to form the support layer recited in
claim 3 "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 obvious design choice" and "would be beneficial
to incorporate into the method because it would ensure the support system
will not tear while being attached to the user and better comfort for the
user." Id. The Examiner also determines that a skilled artisan "would be
motivated to use a [ micro-fiber fabric] material because it would maintain
the needed tensile strength to function as a foot support while making the
material more comfortable against the user's skin." Ans. 8.
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Appellant argues that Bailey uses heavy rayon fabric to achieve a high
tensile strength of 20 lb/in-width so it would not have been obvious to use a
light micro-fiber fabric to provide that high tensile strength. Appeal Br. 15.
Appellant argues that the Examiner's use of a light micro-fiber to achieve a
high tensile strength, as recited in claim 3, is opposite of this general practice
in the art. Appeal Br. 15. We agree. See In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) ("[R]ejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion
of obviousness") (quoted in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418
(2007); In re Ochiai, 71 F.3d 1565, 1571 (Fed. Cir. 1995) (holding that
section 103 requires a fact-intensive comparison of the claims with the prior
art rather than mechanical application of a per se rule( s) ). The Examiner
cites no evidence or teaching to support the determination that a skilled
artisan would have been motivated to select a micro-fiber having the recited
high tensile strength when Bailey teaches to use a heavier fabric to achieve
that strength. Thus, we do not sustain the rejection of claim 3.
Claim 15
Independent claim 15 recites a method of making an anatomical
support with a support layer having "a ratio of elongation to tensile strength
(lb/in-width) that is less than 0.9." Appeal Br. 25-26 (Claims App.). The
Examiner finds that Morgan lacks this feature but determines it would have
been obvious "to use a material with a ratio of elongation to tensile strength
that is less than 0.9, 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 obvious design choice." Final Act. 10.
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Appellant argues persuasively that there is no record evidence that a
skilled artisan knew of a material having the claimed elongation to tensile
strength or knew that such a material would be suitable for use in forming an
anatomical support. Appeal Br. 16-1 7. Appellant argues persuasively that
the Examiner fails to provide sufficient evidence of these matters. Id. at 17.
In response, the Examiner again makes an unsupported assertion that
it is within the general skill of a worker in the art to select a known material
that is suitable for an intended use and such a selection "would have the
expected result of providing sufficient flexibility while providing the
necessary support." Ans. 9--10. This conclusory reasoning is unsupported
and therefore lacks a rational underpinning. Thus, we do not sustain the
rejection of claim 15 and its dependent claims 16-19, 25, 34, and 43.
Claims 32, 33, 37, and 39
Appellant argues that independent claim 39 and dependent claims 32,
33, and 37 recite "the plurality of pre-cut support portions are approximately
rectangular" or similar limitation. Appeal Br. 18. Appellant argues that the
Examiner's finding that Nirschl's support 101 teaches this feature is contrary
to Nirschl's teaching that the long edges of support 101 are "non-parallel,"
"curvilinear," and "arcuately shaped" and therefore are non-rectangular. Id.
Appellant also argues that it is known in the art that "rectangular" refers to a
"shape that is a parallelogram containing a right angle, that is a four sided
shape having two orthogonal pairs of straight, parallel sides." Reply Br. 9.
The Examiner interprets "approximately rectangular" as a general
rectangular shape not requiring exactly parallel or exactly straight lines and
Nirschl discloses a support structure 101 having four predominate sides that
face each other and are considered to be substantially straight. Ans. 11.
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The Examiner has the better position here. The term "approximate"
can mean "nearly correct or exact: close in value or amount but not precise."
See Definition of approximate by Merriam-Webster at http://www.merriam-
webster.com/ dictionary/ approximate (last viewed Sept. 7, 2018). If claim 3 9
used "approximately" in this customary way, Appellant's arguments would
have more merit. However, this customary usage is not consistent with the
Specification or the claim language. For example, claim 39 recites that the
supports have "rounded comers." This claimed feature of the supports is
inconsistent with Appellant's definition of "rectangle" as a "parallelogram
containing a right angle, that is, a four sided shape having two orthogonal
pairs of straight, parallel sides." Reply Br. 9. Figure 20 of Appellant's
disclosure illustrates such supports having ends that are completely rounded
so that supports 506, 578 have only two parallel sides that are longer. The
shorter sides are completely semi-circular. In other words, not only are the
comers rounded but the entire shorter sides are rounded. Thus, the rounded
sides are not straight or parallel to one another or orthogonal to the longer
sides. Their shape cannot be said to be nearly or closely that of a rectangle.
Their shape deviates considerably from that of a conventional rectangle.
There is no disclosure in the written description of a rectangle shape
or an "approximately rectangular" shape for any of Appellant's supports.
Nor do we find a definition of this term in the Specification, and Appellant
does not direct our attention to any such disclosures or definition that
clarifies the meaning of "approximately rectangular" in claim 3 9.
Appellant's drawings illustrate support shapes that may be considered
"approximately rectangular." See Figs. 19, 20 ( support 502 ). We find no
clear indication in claim 39 to exclude such supports from its scope.
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Nirschl' s elongated support pad 101 has an approximately rectangular
shape to a similar extent as Appellant's supports 502, which fall within the
scope of claim 39. Nirschl discloses edge 102 as "concavely arcuately
shaped," and the "opposing long edge 103" having a portion that is "non-
parallel to edge 102." Nirschl, 5:10-14, Fig. 4. This disclosure indicates
other portions of edge 103 are parallel to edge 102. The sides and ends are
substantially straight as discussed above with rounded comers as claimed.
We find Nirschl' s support 101 to be approximately rectangular as recited in
claim 39 when interpreted in light of the Specification. 3
Thus, we sustain the rejection of claims 39 and 37, which depends
from claim 1, but not claims 3 2 and 3 3, which depend from claim 15.
Claims 8 and 20
Over Morgan, Bailey, Nirschl, Turngren, and Etcheparre
Appellant argues the patentability of claims 8 and 20 based on their
dependency from claims 1 and 15 respectively. See Appeal Br. 21. Thus,
we sustain the rejection of claim 8 but not claim 20.
Claims 10, 11, 23, and 24
Over Morgan, Bailey, Nirschl, Turngren, and Seitzinger
Appellant argues the patentability of claims 10, 11, 23, and 24 based
on their dependency from claims 1 and 15 respectively. See Appeal Br. 21.
Thus, we sustain the rejection of claims 10 and 11 but not claims 23 and 24.
3 We also note that Morgan teaches adhesive support strips 1, 2, and 5-7 that
are rectangular in shape. Tumgren teaches adhesive support strips 12 that
are rectangular with straight long sides, straight short sides, and rounded
comers. Thus, we understand the recital of "approximately rectangular" as
an attempt to define around the prior art. In so doing, claim 3 9 is broad
enough, when interpreted in light of the Specification, to encompass the
approximately rectangular support of Nirschl.
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Claims 14 and 21
Over Morgan, Bailey, Nirschl, Turngren, and Burgess
Appellant argues the patentability of claims 14 and 21 based on their
dependency from claims 1 and 15 respectively. See Appeal Br. 22. Thus,
we sustain the rejection of claim 14 but not claim 21.
Claim 28
Over Morgan, Bailey, Nirschl, Turngren, and Augst
Appellant argues the patentability of claim 28 based on its
dependency from claim 1. See Appeal Br. 22. Thus, we sustain the
rejection of claim 28.
Claim 36
Over Morgan, Bailey, Nirschl, Turngren, and Tomaiuolo
Appellant argues the patentability of claim 36 based on its
dependency from claim 1. See Appeal Br. 22. Thus, we sustain the
rejection of claim 36.
Claims 1, 2, 5-7, 9, 15, and 22
Over Morgan, Bailey, Davies, and Turngren
Claim 1
The Examiner relies on Morgan, Bailey, and Tumgren to teach the
same features of claim 1 as in the previous rejection. See Final Act. 4--7 and
22-25. The Examiner relies on Davies to teach a single, die-cut, adhesive
material used to support the bottom of the foot and the ankle. Id. at 24.
Appellant argues that Davies teaches an irregularly shaped support
with flanging anchor wings and anchor tabs and therefore does not teach
supports having "substantially straight sides and rounded comers" as recited
in claim 1. Appeal Br. 20. This argument is not persuasive in view of our
interpretation of this limitation in claim 1 for the previous rejection.
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As the Examiner points out, Davies discloses a support with sides that
are substantially straight and comers that are rounded. Ans. 12. We agree.
Davies illustrates support 11 with straight sides in Figure 1. The fact
that anchor tabs 13 are positioned between the straight sides does not negate
the fact that Figure 1 illustrates support 11 having substantially straight sides
and rounded comers at anchor wings 12 as claimed. The use of "having" in
claim 1 to describe the components of the elongated, pre-cut supports means
that the support may include other features and still fall within the scope of
claim 1. Claim 1 does not recite "supports each consisting of substantially
straight sides and rounded comers." Such a transitional phrase would limit
the scope of the claimed elongated, pre-cut supports to the features recited in
claim 1 and exclude other features from being part of the claimed supports.
In addition, claim 1 does not recite that the substantially straight sides extend
between the rounded comers. See Ans. 12.
Thus, we sustain the rejection of claim 1 and its dependent claims 2,
5-7, and 9, which are not argued separately. See Appeal Br. 20.
Claim 15
The Examiner again relies on Davies to teach a single support with
substantially straight sides and rounded comers as recited in claim 15. Final
Act. 27. Thus, Appellant's argument that Morgan does not teach this feature
(Appeal Br. 20-21) is not persuasive. The Examiner also relies on Morgan's
teachings of sheet material with pre-cut supports, as claimed. The Examiner
combines these teachings with Davies' teachings that a single, die-cut piece
of adhesive material 11 can be used to support the bottom of the foot and the
ankle and can provide a number of advantages over traditional techniques.
See Davies, 1:5-10, 5:30-6:2; Final Act. 27.
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As discussed above, Morgan teaches that the number and shapes of its
support elements can vary depending on the anatomical part to be supported.
Morgan, 3 :30-33. In furtherance of this teaching, the Examiner provides
Morgan's support kit 10 with a single, pre-cut, adhesive support taught by
Davies for the benefits taught by Davies while retaining Morgan's adhesive
configuration and benefits. Final Act. 26-27. Davies' alleged illustration of
a support of the same size as a support sheet does not conflict with Morgan
or Tumgren. See Appeal Br. 10. These arguments attack the references
individually rather than address their teachings as the Examiner combines
them. Davies is not relied upon, nor does Davies require, modification of
Morgan's sheets of individual pre-cut supports other than the shape.
Thus, we sustain the rejection of claim 15 and its dependent claim 22,
which is not argued separately. See Appeal Br. 20-21.
DECISION
We affirm the rejection of claims 1, 2, 5-7, 27, 29, 35, and 37--42 as
unpatentable over Morgan, Bailey, Nirschl, and Tumgren, and we reverse
the rejection of claims 3, 15-19, 25, 32-34, and 43 on this ground.
We affirm the rejections of dependent claims 8, 10, 11, 14, 28, and 36,
and we reverse the rejections of dependent claims 20, 21, 23, and 24.
We affirm the rejection of claims 1, 2, 5-7, 9, 15, and 22 as
unpatentable over Morgan, Bailey, Davies, and Tumgren.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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