Ex Parte Nordt et al

Patent Trial and Appeal Board

Nov 1, 2016

13241865 (P.T.A.B. Nov. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/241,865 09/23/2011
36790 7590 11/02/2016
TILLMAN WRIGHT, PLLC
POBOX49309
CHARLOTTE, NC 28277-0076
FIRST NAMED INVENTOR
William E. Nordt III
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.
1017.039 3275
EXAMINER
JACKSON, BRANDON LEE
ART UNIT PAPER NUMBER
3772
MAILDATE DELIVERY MODE
11/02/2016 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 WILLIAM E. NORDT III, IAN D. KOV ACEVICH,
JASON HUNEYCUTT, and THOMAS J. PHILPOTT
Appeal2015-001233 1
Application 13/241,8652
Technology Center 3700
Before MICHAEL W. KIM, MICHAEL C. ASTORINO, and
JAMES A. WORTH, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. §§ 134
and 6(b).
We AFFIRM-IN-PART.
1 Our decision refers to the Appellants' Appeal Brief ("Appeal Br.," filed
Apr. 10, 2014) and Reply Brief ("Reply Br.," filed Oct. 27, 2014), and the
Examiner's Final Office Action ("Final Act.," mailed Sept. 10, 2013) and
Answer ("Ans.," mailed Aug. 27, 2014).
2 According to Appellants, the real party in interest is N ordt Development
Co., LLC (Appeal Br. 3).
Appeal2015-001233
Application 13/241,865
Introduction
Appellants' disclosure relates to various supports for the body and,
with respect to certain embodiments, to potentiating supports for hinge joints
of the body (Spec. i-f 6). Certain supports are designed for the knee and
certain for the elbow (id.). 3
Claims 1, 9, and 14 are the independent claims on appeal. Claim 1,
reproduced below, is representative of the subject matter on appeal:
1. A support for an area of a body that includes a
hinge joint, comprising:
(a) a hinge mechanism comprising an injection
molded strut component and injection molded first
and second arm components;
(b) an elastically stretchable framework injection
molded about the strut and arm components of the
hinge mechanism, the framework being configured
to extend across the hinge joint of the area of the
body, and the framework defining a flexible,
elastically stretchable web of elastomeric
interconnecting members;
( c) wherein the first arm component is connected
to the strut component such that the first arm
component is rotatable relative to the strut
component only about a first pivot axis;
( d) wherein the second arm component is
connected to the strut component such that the
second arm component is rotatable relative to the
strut component only about a second pivot axis;
and
( e) wherein the strut component is configured to
extend with the framework across the hinge joint
such that the first pivot axis is located on a first
3 Appellants state that this application is a continuation ofNo. 12/101,763,
which was the subject of Appeal No. 2012-006703 (Appeal Br. 3). A
decision in that appeal issued on July 31, 2014.
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Appeal2015-001233
Application 13/241,865
side of the hinge joint and the second pivot axis is
located on a second, opposite side of the hinge
joint.
(Appeal Br., Claims App.)
Rejection on Appeal
The Examiner maintains, and Appellants appeal, the following
rejection:
Claims 1-20 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Gildersleeve (US 6,238,360 Bl, iss. May 29, 2001).
ANALYSIS
Independent claim 1 and dependent claims 3--8
W e are unpersuaded by Appellants' argument that Gildersleeve fails
to disclose "injection molded" material, as recited in independent claim 1,
i.e., "(a) a hinge mechanism comprising an injection molded strut
component and injection molded first and second arm components" and "(b)
an elastically stretchable framework injection molded about the strut and
arm components of the hinge mechanism" (Appeal Br. 10, 20). Appellants
contend that the Examiner appears to ignore the "injection molded"
recitation, and that "injection molded" is intended to convey a structural
limitation which other terms of manufacture may convey, such as "welded"
(Appeal Br. 10-11 (citing In re Garnero, 412 F.2d 276, 279 (CCPA 1979;
MPEP 2113)).
For claims directed to products which are defined by a process of
manufacture (i.e., "product-by-process" claims), the court has explained that
a new process of manufacture does not necessarily mean that the product
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Application 13/241,865
itself is novel or non-obvious. See Greenliant Systems, Inc. v. Xicor LLC,
692 F.3d 1261, 1264---65 (Fed. Cir. 2012); Amgen Inc. v. F. Hoffman-La
Roche Ltd., 580 F.3d 1340, 1370 n.14 (Fed. Cir. 2009). Here, Appellants do
not persuasively explain what structural limitation is imparted by this
manufacturing practice. Accordingly, we agree with the Examiner that the
recitation of "injection molded" is not limiting because it does not change
the claimed product (see Ans. 5---6).
Appellants also argue that Gildersleeve fails to disclose a "framework
defining a flexible, elastically stretchable web of elastomeric interconnecting
members," as recited in independent claim 1 (Appeal Br. 12-14).
Appellants assert that Gildersleeve merely discloses that the material may be
of "any desirable fabric" (Appeal Br. 13 ). The Examiner relies on sleeve 12
of Gildersleeve (Final Act. 3). Gildersleeve states sleeve 12 may be formed
of fully or partially stretchable fabric, that it may include elastic members,
and that it is stitched together (col. 3, 11. 27-33, col. 4, 11. 1-11, col. 4, 11.
34--36). As such, we agree with the Examiner that sleeve 12 of Gildersleeve
is composed of a "flexible, elastically stretchable web of elastomeric
interconnecting members," as recited in independent claim 1 (see Ans. 5---6).
We, therefore, sustain the Examiner's rejection under§ 102(b) of
independent claim 1. Appellants do not argue the patentability of claims 3-8
separately from that of independent claim 1, from which they each depend.
We, therefore, sustain the Examiner's rejection under § 102(b) of claims 3-
8, for similar reasons as for independent claim 1.
Dependent claim 2
We are persuaded by Appellants' argument that Gildersleeve fails to
disclose a second hinge mechanism on the opposite side of the framework,
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Application 13/241,865
as recited in dependent claim 2, i.e., "the hinge mechanism is located along a
first side edge of the framework, and wherein the support further comprises
a second, identical hinge mechanism affixed to the framework and located
along a second, opposite side edge of the framework" (Appeal Br. 14, 20).
The Examiner reasons that Gildersleeve incorporates the hinge mechanism
of Mason (US 4,697,583, iss. Oct. 6, 1987), and that Mason discloses a
brace with two hinge joints on opposite sides of the brace (see Ans. 6).
However, Gildersleeve's incorporation by reference of Mason specifically
refers to, and is therefore limited to, the bicentric hinge mechanism of
Mason (see Gildersleeve, col. 5, 11. 36-39). Thus, Gildersleeve fails to
incorporate the remainder of Mason, such as how Mason arranges the
bicentric connectors in a brace. We, therefore, do not sustain the Examiner's
rejection under§ 102(b) of dependent claim 2.
Independent claim 9 and dependent claims 10--13
Independent claims 9 contains similar language and requirements as
dependent claim 2 (Appeal Br. 18). For the similar reasons as claim 2, we
do not sustain the Examiner's rejection under§ 102(b) of independent claim
9. We also do not sustain the Examiner's rejection under § 102 (b) of claims
10-13, which depend therefrom.
Independent claim 14 and dependent claims 16--20
Appellants' arguments with respect to independent claim 14 and
dependent claims 16-20 are similar to those made with respect to
independent claim 1, and we find them unpersuasive for similar reasons
(Appeal Br. 18). We, therefore, sustain the Examiner's rejection under
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Application 13/241,865
§ 102(b) of independent claim 14 and claims 16-20, for similar reasons as
for independent claim 1.
Dependent claim 15
Dependent claim 15 contains similar language and requirements as
dependent claim 2 (Appeal Br. 19). We do not sustain the Examiner's
rejection under § 102(b) of dependent claim 15, for similar reasons as for
dependent claim 2.
DECISION
The Examiner's decision to reject claims 1, 3-8, 14, and 16-20 under
§ 102(b) is affirmed.
The Examiner's decision to reject claims 2, 9-13, and 15 under
§ 102(b) is reversed.
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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