15100829 - (D) (P.T.A.B. Nov. 3, 2020)

HEYL, Dieter

Patent Trials and Appeals BoardNov 3, 2020

15100829 - (D) (P.T.A.B. Nov. 3, 2020)

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. 15/100,829 06/01/2016 Dieter Heyl LBP-PT272 (26814) 2716 3624 7590 11/03/2020 Volpe Koenig 30 SOUTH 17TH STREET, 18TH FLOOR PHILADELPHIA, PA 19103 EXAMINER STUART, COLIN W ART UNIT PAPER NUMBER 3785 NOTIFICATION DATE DELIVERY MODE 11/03/2020 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): eoffice@volpe-koenig.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DIETER HEYL ____________ Appeal 2020-002416 Application 15/100,829 Technology Center 3700 ____________ Before BIBHU R. MOHANTY, BRADLEY B. BAYAT, and MATTHEW S. MEYERS, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–3 and 9–14. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as the individual inventor, Dieter Heyl. (Appeal Br. 3). Appeal 2020-002416 Application 15/100,829 2 CLAIMED SUBJECT MATTER The Appellant’s claimed invention relates to a therapeutic device to stretch the carpal tunnel of the human hand (Spec., para. 1). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A treatment device for stretching a carpal tunnel (2) of the human hand (1), the treatment device comprising: two adhesive elements (3) which are suitable for coming into contact with human skin and are adapted to be adhesively bonded, laterally with respect to the carpal tunnel (2), respectively on thenar and hypothenar eminences of a human hand (1) to be treated, and an expansion mechanism (4) that detachably engages on the two adhesive elements (3) and transmits a laterally directed expansion force on the adhesive elements (3) that is adapted to be transmitted targetedly and directly onto the eminences, laterally with respect to the carpal tunnel (2). THE REJECTIONS The following rejections are before us for review: 1. Claims 1–3, 9, and 10 are rejected under 35 U.S.C. § 103 as unpatentable over Morgan Jr. (US 6,315,748 B1, Nov. 13, 2001) and Dray (US 5,921,949, July 13, 1999). 2. Claims 11–13 are rejected under 35 U.S.C. § 103 as unpatentable over Morgan Jr., Dray, and Phillips (US 5,376,066, Dec. 27, 1994). 3. Claim 14 is rejected under 35 U.S.C. § 103 as unpatentable over Morgan Jr., Dray, Phillips, and Porrata (US 6,146,347, Nov. 14, 2000). Appeal 2020-002416 Application 15/100,829 3 FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence.2 ANALYSIS Rejection under 35 U.S.C. § 103 The Appellant argues that the rejection of claim 1 is improper because the cited references fail to disclose argued claimed limitations, and also that the references have been improperly combined (App. Br. 7–11). In contrast, the Examiner has determined that the rejection of record is proper (Final Act. 2, 3, 5, 6, Ans. 3, 4, 6–9). We agree with the Examiner. Morgan Jr. at column 4, lines 37–65 discloses an apparatus for treating carpal tunnel syndrome that includes straps (14, 16, and 18), which have an adhesive backing 28 and are pulled to apply tension to the hand. Dray at column 5, lines 44–63 discloses a carpal tunnel wrist support device which includes compression elements 41, 42 which have hook material 48 to engage the loop material 40 on the inside surface of the strap 34 and which can be placed at varying distances to accommodate different wrist circumferences. The Appellant first argues that Morgan fails to teach the disclosure of an “expansion mechanism detachably engaged on the two adhesive elements” (App. Br. 9). However, the rejection of record cites to Dray as disclosing reversible quick-release fasteners to teach the elements that are 2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2020-002416 Application 15/100,829 4 detachably engaged in the rejection (Ans. 4). The Appellant also argues that Dray fails to disclose the use of an adhesive as claimed, but in contrast the rejection cites to Morgan Jr. to disclose this element (Ans. 4). Here, the Appellant’s arguments attack references individually, when the rejection is over a combination of references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“one cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references”). Here, both the above argued missing claim limitations are found in the cited prior art combination of references. The Appellant also argues that references have been improperly combined as the teachings of Morgan Jr. and Dray operate on different principles (App. Br. 11). However, the rejection of record only relies on Dray to disclose the teaching of the detachable elements, and not attachment of the device to the wrist portion for carpal tunnel treatment. In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007) the Court stated that when considering obviousness that “the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR at 418. Here, the modification of the device of Morgan Jr. to have the straps be modified to have detachable elements as disclosed by Dray would have been an obvious, predictable modification of familiar elements to provide detachably engaged straps to provide adjustability of the straps and the ability to remove the straps easily if needed. For these above reasons, the rejection of claim 1 is sustained. The Appellant has provided essentially the same arguments for the remaining claims and the rejection of these claims is sustained as well. Appeal 2020-002416 Application 15/100,829 5 CONCLUSIONS OF LAW We conclude that Appellant has not shown that the Examiner erred in rejecting the claims as listed in the Rejections section above. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 9, 10 103 Morgan Jr., Dray 1–3, 9, 10 11–13 103 Morgan Jr., Dray, Phillips 11–13 14 103 Morgan Jr., Dray, Phillips, Porrata 14 Overall Outcome 1–3, 9–14 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED