HEYL, Dieter

Patent Trials and Appeals Board

Nov 3, 2020

2020002416 (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