Ex Parte Smith et alDownload PDFPatent Trials and Appeals BoardJun 18, 201914537781 - (D) (P.T.A.B. Jun. 18, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/537,781 11/10/2014 95508 7590 OneLLP 4000 MacArthur Blvd. East Tower, Suite 500 Newport Beach, CA 92660 06/20/2019 FIRST NAMED INVENTOR David W. Smith 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. Q30.003.Cl 7184 EXAMINER MILLER, CHRISTOPHER E ART UNIT PAPER NUMBER 3785 NOTIFICATION DATE DELIVERY MODE 06/20/2019 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 onellpdocketing@onellp.com P AIRgroup@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, and CHAD MICHAEL LEEDER Appeal 2017-005891 1 Application 14/537,781 2 Technology Center 3700 Before MICHAEL C. ASTORINO, KENNETH G. SCHOPPER, and BRADLEY B. BAY AT, Administrative Patent Judges. BAY AT, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the decision rejecting claims 1-20, which are the only claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on May 30, 2019. We REVERSE. 1 Our Decision references Appellants' Appeal Brief ("Appeal Br.," filed Oct. 12, 2016), Reply Brief ("Reply Br.," filed Feb. 28, 2017), the Examiner's Answer ("Ans.," mailed Dec. 29, 2016) and Final Office Action ("Final Act.," mailed Nov. 4, 2015). 2 Appellants identify "Q30 SPORTS SCIENCE, LLC" as the real party in interest. Appeal Br. 1. Appeal2017-005891 Application 14/537,781 STATEMENT OF THE CASE Claimed Subject Matter Appellants' claimed invention is related to a system "for reducing the effects of exposure to concussive events." Spec. ,-J 2. Claim 1 is the sole independent claim on appeal and recites: 1. A system comprising: (a) a pair of devices, wherein each device has an appropriate size and shape to restrict blood flow egressing from the head of a subject when the devices are placed against the neck of the subject; and (b) a shirt comprising an integral collar, wherein the collar (i) comprises an elastic material, (ii) is adapted to receive the devices, and (iii) in combination with the devices, is adapted to apply a compressive pressure of about 5 mm Hg to about 70 mm Hg to a pair of neck veins when the collar is fitted to the neck of the subject. Appeal Br. 18, Claims App. Rejections3 Claims 1-5, 7-12, 14, and 15 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Smith et al., US 2012/0197290 Al, pub. Aug. 2, 2012 ("Smith"), Summers, US 5,978,965, iss. Nov. 9, 1999, and Sellier, US 2007/0033696 Al, pub. Feb. 15, 2007. Claim 6 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Smith, Summers, Sellier, and Wexler, US 6,238,413 Bl, iss. May 29, 2001. 3 "The rejection of claim 11 under 35 U.S.C. [§] l 12(d) has been withdrawn." Ans. 10. 2 Appeal2017-005891 Application 14/537,781 Claim 13 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Smith, Summers, Sellier, and Di Lustro, US 2008/0021498 Al, pub. Jan. 24, 2008. Claims 16, 17, 19, and 20 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Smith, Summers, Sellier, and Williams US 4,343,303, iss. Aug. 10, 1982. Claim 18 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Smith, Summers, Sellier, Williams, and Saighman, US 2,271,927, iss. Feb 3, 1942. ANALYSIS We are persuaded by Appellants' argument that the combination of Smith, Summers, and Sellier, as proposed by the Examiner, does not render obvious the claimed invention. Appeal Br. 9. In rejecting independent claim 1 as unpatentable over Smith, Summers, and Sellier, the Examiner found Smith discloses limitation (a) and (b )(iii) but not limitations (b )(i) and (b )(ii) because "Smith is silent regarding the system including a shirt comprising an integral collar, and the collar comprising an elastic material." Final Act. 3. Instead, the Examiner found "Summers teaches a shirt (garment 20, Fig. 1) comprising an integral collar (neck area 30, Fig. 1) for carrying protrusions (pads 22, Figs. 1-2) to apply pressure to the neck of a subject." Id. at 4. The Examiner determined that it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify Smith's collar with a shirt as taught by Summers because this is a simple substitution of one known wearable article (shirt with integral collar) for another known wearable article ( collar) with the expected result that the protrusions will still be held in the neck 3 Appeal2017-005891 Application 14/537,781 area and will therefore perform equally well in applying compression to the jugular veins of the user. Id. Further, the Examiner found that "[t]he modified Smith/Summers system is silent regarding the collar comprising elastic material." Id. To cure that deficiency of limitation (b )(i), the Examiner found: Id. Sellier teaches a compression garment (Figs. 8-9) which uses elastic compression associated with protuberances on the inner side of the garment ... [ and determined that] it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the collar of Smith/Summers to include an elastic material as taught by Sellier in order to use elastic compression to hold the protuberances against the skin. vVe are not persuaded that a skilled artisan would have been motivated to substitute Sununers's garment 20 with an integral collar for Smith's compression device co Har as a simple substitution of known art-recognized components with predictable results. \Ve agree that Summers teaches a gannent 20 with pads 22 across the back co Har of neck area 30, ,vhich are "designed to provide muscle :massage and relaxation of the wearer of garment 20." Summers 4: 11-22, Fig. 1. vVe also agree that Smith teaches a compression device with "prot1uding regions to be aligned with the internal jugufar veins to preforentiaHy compress these veins as the collar is tightened." Smith~[ 27. However, the fact that these structures both include protuberances that apply pressure to different areas of the neck does not necessarily support a finding that one of ordinary skill in the art could have substituted these different structures for one another as a simple substitution, as the Examiner proposes. To rely on simple substitution as a rationale supporting an obviousness rejection, the prior art must support a 4 Appeal2017-005891 Application 14/537,781 finding to substitute one knovvn element for another, and the results of the substitution and functions of the combination would have been predictable. See MPEP § 2143(I)(B). Despite the similarity between the structures in Smith and Summers, the Examiner has not established that one of ordinary skrn would have been motivated to substitute one cmnponent for another because each of these elements were known in the art to perform a different function. Therefore, we are not persuaded by the Examiner's reasoning that a skilled artisan would have been motivated to substitute Summers's "wearable article (shirt with integral collar) for [Smith's] known wearable article ( collar)" as a simple substitution. Final Act. 4. In addition, we find the Examiner's reliance on Sellier, which would require further modification to the Smith/Summers system, ostensibly negates the Examiner's rationale because that additional modification would necessarily require more than a simple substitution of one known element for another to obtain predictable results. Accordingly, we do not sustain the rejection of independent claim 1. For the same reasons, we also do not sustain the rejection of dependent claims 2-20. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims are nonobvious if the independent claims from which they depend are nonobvious"). DECISION The rejection of claims 1-20 under 35 U.S.C. § 103(a) is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation