Ex Parte RyscavageDownload PDFPatent Trial and Appeal BoardApr 30, 201312287121 (P.T.A.B. Apr. 30, 2013) Copy Citation 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. 12/287,121 10/06/2008 Thomas S. Ryscavage 740105-3CONT 7710 41972 7590 04/30/2013 LAW OFFICES OF STUART J. FRIEDMAN 28930 RIDGE ROAD MT. AIRY, MD 21771 EXAMINER BROWN, MICHAEL A ART UNIT PAPER NUMBER 3772 MAIL DATE DELIVERY MODE 04/30/2013 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 THOMAS S. RYSCAVAGE ____________________ Appeal 2011-003414 Application 12/287,121 Technology Center 3700 ____________________ Before: MICHAEL C. ASTORINO, JOHN W. MORRISON, and ADAM V. FLOYD, Administrative Patent Judges. MORRISON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-003414 Application 12/287,121 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1- 9. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. CLAIMED INVENTION The claims are directed to device for treating conditions known as trigger finger and trigger thumb. Spec. para.[0002]. Claim 1, reproduced below, is the sole independent claim and is illustrative of the claimed subject matter: 1. A digit pad for treating trigger finger and trigger thumb, comprising: a digit band adapted to be slid over the free end of the affected digit to a position wherein the proximal end of the band is at the MCP joint of the affected digit, said digit band being dimensioned and adapted to be positioned between the PIP and MCP joints of the affected digit, but not to overlie the PIP joint of the affected digit so as not to significantly interfere with the bending, use or functioning of the affected digit; a palm pad unitary with said digit band, said palm pad extending from the proximal end of the digit band toward the wrist, said palm pad being dimensioned and adapted to be positioned to overlie a portion of the palm to at least cover the A1 pulley of the affected digit, the proximal end of the palm pad extending beyond the Al pulley, but not beyond the proximal palmer crease, said palm pad being at least as wide as the A1 pulley; and said digit pad being formed of a material which is soft, flexible, resilient and which has a sufficient density to protect the palm area which it overlies, and wherein neither the palm pad nor the digit band significantly interferes with the bending or use of the affected digit or hand. Appeal 2011-003414 Application 12/287,121 3 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Loafman Albertsson McDevitt US 4,194,736 US 5,634,854 US 6,647,549B2 Mar. 25, 1980 Jun. 3, 1997 Nov. 18, 2003 REJECTIONS The Examiner made the following rejections: Claims 1 and 3-7 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Loafman; Claim 2 stands rejected under 35 U.S.C. §103(a) as being unpatentable over Loafman and McDevitt; and Claims 8 and 9 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Loafman and Albertsson. ANALYSIS Obviousness over Loafman Addressing claim 1, the Examiner determines “the palm pad is made of a soft, flexible, resilient cushioning (made of 1/16 to 1/18 inch thickness) material (leather), which has a sufficient density to protect the palm area it over lies.” Ans 3. This is the only finding related to the flexibility or bendability of the proposed combination. The Appellant argues counters: Loafman's bowling aid does not meet the requirement of claim 1 that the digit pad be formed of a material which is soft, flexible and resilient and, therefore, [sic does not satisfy the claim Appeal 2011-003414 Application 12/287,121 4 requirement:] wherein neither the palm pad nor digit band formed of this material significantly interferes with the bending or use of the affected digit or hand. To the contrary, Loafman's bowling aid is formed of a combination of materials which is stiff and substantially inflexible for the intended purpose of splinting the little finger so as to resist its flexing or curling. App. Br. 8. We find Appellant’s argument to be persuasive. Even if it were obvious to size the device of Loafman as proposed, the Examiner erred by failing to make a finding that addresses the limitation that “neither the palm pad nor the digit band significantly interferes with the bending or use of the affected digit or hand” as required by claim 1. The proposed combination includes the stiff bracing element 22 having a rib 26 which would interfere with bending of the effected digit at the MCP joint. As such, we do not sustain the rejection of claims 1 and 3-7. Obviousness over Loafman and McDevitt Addressing claim 2, none of the Examiner’s findings address the deficiencies to the rejection of the underlying claim 1. Therefore, we do not sustain the rejection of claim 2. Obviousness over Loafman and Albertsson Addressing claims 8-9, the Examiner’s findings address an alternate flexible material for the leather digit pad of Loafman, but fail to address the stiffness of the bracing element 22 or its rib 26. Therefore, these findings do not overcome the deficiencies of the rejection of the underlying claim 1. As such, we do not sustain the rejection of claims 8 and 9. Appeal 2011-003414 Application 12/287,121 5 DECISION For the above reasons, the Examiner’s rejection of claims 1-9 is reversed. REVERSED Klh Copy with citationCopy as parenthetical citation