Ex parte ANDREA et al.

Board of Patent Appeals and Interferences

Jul 20, 1998

08394067 (B.P.A.I. Jul. 20, 1998)

Application for patent filed February 24, 1995. Accord-1
ing to appellants, the application is a continuation of Appli-
cation 08/174,236, filed December 28, 1993, abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 32
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MARTIN ANDREA
and
CHRISTIAN ANDREA
_____________
Appeal No. 97-2734
Application 08/394,0671
______________
ON BRIEF
_______________
Appeal No. 97-2734
Application 08/394,067
2
Before COHEN, FRANKFORT and McQUADE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's
final rejection of claim 12, and from the examiner's refusal
to allow claims 1 through 4, 8, 9, 10 and 11 as amended subse-
quent to the final rejection in a paper filed August 5, 1996
(Paper No. 22). Claims 5 through 7, the only other claims
pending in the application, stand allowed.
Appellants' invention relates to an orthopedic
crutch which includes a handgrip that is movably mounted in a
vertical direction and includes spring biasing to provide
dynamic support to the user and improve the comfort level to
the user during use of the crutch. Figures 1, 2 and 5 through
10 of the application show the details of appellants' movable
handgrip and supporting structure. Claims 1 and 12 are repre-
sentative of the subject matter on appeal and a copy of those
Appeal No. 97-2734
Application 08/394,067
3
claims, as they appear in the Appendix to appellants' brief,
is attached to this decision.
The prior art references of record relied upon by
the examiner in rejecting the appealed claims are:
Stein 4,476,885 Oct. 16, 1984
Hansen et al. (Hansen) 4,753,259 June 28, 1988
Acosta, Sr. (Acosta) 4,763,680 Aug. 16, 1988
Greatwood 5,101,846 Apr. 7, 1992
Claims 1 through 4 and 8 through 11 stand rejected
under 35 U.S.C. § 112, first paragraph, as being based on a
specification which, as originally filed, does not provide
support for the invention as now claimed. According to the
examiner,
[t]he original specification does not
disclose “a dynamic support” . . . as is
now claimed in claim 1 [and also in inde-
pendent claims 10 and 11] or “means for
dynamically supporting . . .” as in
claim 4 (final rejection, page 2).
Claims 1 through 4 and 8 through 11 stand addition-
ally rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and
Appeal No. 97-2734
Application 08/394,067
4
distinctly claim that which appellants regard as their inven-
tion. In the examiner's view (answer, page 4), the terms
"dynamically" and "dynamic" are unclear "because the term
'dynamic' was found to be vague and confusing as to its mean-
ing." The examiner goes on to urge that "[i]t is unclear
whether the recited term refers to 'movement' or
'energy/forces'."
In addition to the foregoing rejections, the
appealed claims stand rejected under 35 U.S.C. § 103 as
follows:
a) claims 1 through 4, 8, 9 and 12 as being
unpatentable over Stein in view of Acosta;
b) claim 10 as being unpatentable over Stein in view
of Acosta as applied to claim 1 above, and further in view of
Hansen; and
Appeal No. 97-2734
Application 08/394,067
5
c) claim 11 as being unpatentable over Stein in view
of Acosta as applied to claim 1 above, and further in view of
Greatwood.
Rather than reiterate the examiner's full statement
of the above-noted rejections and the conflicting viewpoints
advanced by the examiner and appellants regarding those
rejections, we make reference to the final rejection (Paper
No. 20, mailed March 5, 1996) and to the examiner's answer
(Paper No. 29, mailed February 19, 1997) for the examiner's
complete reasoning in support of the rejections, and to
appellants' brief (Paper No. 28, filed December 6, 1996) for
appellants' arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have
given careful consideration to appellants' specification and
Appeal No. 97-2734
Application 08/394,067
6
claims, to the applied prior art references, and to the
respective positions articulated by appellants and the
examiner. As a consequence of our review, we have made the
determinations which follow.
We turn first to the examiner's rejection of
appealed claims 1 through 4 and 8 through 11 under 35 U.S.C. §
112, first paragraph, which rejection we understand to be
based upon the written description requirement of the first
paragraph of § 112. In general, the test for determining
compliance with the written description requirement of § 112
is whether the disclosure of the application as originally
filed reasonably conveys to the artisan that the inventor had
possession at that time of the later claimed subject matter,
rather than the presence or absence of literal support in the
specification for the claim language under consideration.
Further, it is also well settled that the content of the
drawings may be considered in determining compliance with the
written description requirement. See Wang Lab. Inc. v.
Toshiba Corp., 993 F.2d 858, 865, 26 USPQ2d 1767, 1774 (Fed.
Appeal No. 97-2734
Application 08/394,067
7
Cir. 1993); Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64,
19 USPQ2d 1111, 1117 (Fed. Cir. 1991); see also In re Kaslow,
707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983).
In this particular instance, after considering
appellants' disclosure as a whole and recognizing that the
claimed subject matter does not need to be described in haec
verba in the specification in order for the specification to
satisfy the written description requirement, it is our opinion
that the originally filed specification provides clear support
for the invention as now claimed. We are in substantial
agreement with appellants' argument, found on page 7 of the
brief, that the recitation in claims 1, 10 and 11 relating to
the "dynamic support" limitation and the "means for
dynamically supporting" of claim 4, each find support in the
originally filed specification and drawings of the
application. As can be readily perceived from appellants'
specification at pages 1, 2, 5 and 7, among others, the
handgrip of the crutch therein is expressly disclosed as being
movably mounted in a vertical direction and to include spring
Appeal No. 97-2734
Application 08/394,067
8
biasing to provide "dynamic support" to the user. At page 5
of the specification, it is explained that
[i]n operation, as weight is shifted to the
crutches 15, the handgrip 24 moves
downwardly against a biasing force to
provide dynamic
support to the user at the handgrip 24. As
the user shifts his weight away from the
crutches 15, the handgrip 24 is biased
upwardly.
Accordingly, we find clear antecedent basis and
support for the language of claims 1, 4, 10 and 11 on appeal
in appellants' specification as originally filed and will
therefore not sustain the examiner's rejection of these
claims, or the claims which depend therefrom, under 35 U.S.C.
§ 112, first paragraph.
Turning next to the examiner's rejection of claims 1
through 4 and 8 through 11 under 35 U.S.C. § 112, second
paragraph, after reviewing appellants' specification and
claims as noted above, and appellants' arguments on pages 7
Appeal No. 97-2734
Application 08/394,067
9
through 9 of their brief, it is our opinion that the scope and
content of the subject matter embraced by appellants' claims
on appeal is reasonably clear and definite, and fulfills the
requirement of 35 U.S.C. § 112, second paragraph, that they
provide those who would endeavor, in future enterprise, to
approach the area circumscribed by the claims, with the
adequate notice demanded by
due process of law, so that they may more readily and
accurately determine the boundaries of protection involved and
evaluate the
possibility of infringement and dominance. See In re Hammack,
427 F.2d 1378, 1382, 166 USPQ 204, 208 (CCPA 1970). Given the
clear description on pages 5 and 7 of appellants'
specification concerning the operation of the movable handgrip
therein and the nature of the dynamic support it provides, we
are unable to agree with the examiner that the term "dynamic"
is in any way "vague and confusing as to its meaning" (answer,
page 4). Therefore, we will not sustain the examiner's
Appeal No. 97-2734
Application 08/394,067
10
rejection of appellants' claims 1 through 4 and 8 through 11
under 35 U.S.C. § 112, second paragraph.
We next look to the examiner's prior art rejections
of the appealed claims, turning first to the rejection of
claims 1 through 4, 8, 9 and 12 under 35 U.S.C. § 103 as being
unpatentable over Stein in view of Acosta. Independent claim
1 on appeal defines an orthopedic crutch which comprises a
pair of vertical supports (e.g., 26); an upper cross-member
(e.g., 17) rigidly connected to said vertical supports at an
upper end forming an armpit support; a vertical support leg
(e.g., 16), rigidly
connected relative to the lower ends of the vertical supports;
a handgrip (e.g., 24), and
means for movably supporting said
handgrip relative to said vertical support
leg and said armpit support to enable said
handgrip to move in a vertical direction
generally parallel to said vertical
supports while said orthopedic crutch is in
use; and
Appeal No. 97-2734
Application 08/394,067
11
means for biasing said supporting means
to provide a dynamic support for said
handgrip while said orthopedic crutches
[sic] is in use.
In somewhat different terms, independent claim 12 on
appeal defines an orthopedic crutch which comprises a pair of
vertical supports (e.g., 26); an upper cross-member (e.g., 17)
rigidly connected to said vertical supports at an upper end
forming an armpit support; a support leg (e.g., 16), rigidly
connected intermediate the opposing ends of the vertical
supports; a handgrip (e.g., 24); and
means for dynamically supporting said
handgrip while said orthopedic crutch is
in use to provide a movable support for
both upward and downward movement of said
handgrip.
In the examiner's view the crutch of Stein includes
a handgrip as defined in appellants' claims 1 and 12, with the
structure seen best in Figure 3 and 4 of Stein being
responsive to the "means" clauses of claims 1 and 12.
However, we share appellants' view that Stein's crutch
Appeal No. 97-2734
Application 08/394,067
12
includes a handgrip which is static while the crutch is in use
by a patient, i.e., a handgrip
which is not movable in a vertical direction while the crutch
is in use and which does not include "means for biasing said
supporting means to provide a dynamic support for said
handgrip while said orthopedic crutches [sic, crutch] is in
use" (emphasis added) as required in claim 1, and claims 10
and 11, on appeal. Nor does the crutch of Stein include "means
for dynamically supporting said handgrip while said orthopedic
crutch is in use to provide a movable support for both upward
and downward movement of said handgrip" (emphasis added) as
set forth in independent claim 12 on appeal. Although the
position of the handgrip of Stein is adjustable upwardly or
downwardly when the pins (12a) are released from the tubular
members (14, 16), the handgrip is then locked in its
adjusted position by re-registration of the pins (12a) with
the apertures (50) of the tubular members (14, 16) to ready
the crutch for use. See, e.g., column 4, lines 18-26, of
Stein. Thus, even if it would have been obvious to one of
ordinary skill in the art to provide the crutch of
Appeal No. 97-2734
Application 08/394,067
13
Stein with an adjustable support leg (36) like that of Acosta,
the resulting crutch would still not be the same as that set
forth in appellants' claims 1 through 4, 8, 9 and 12 on
appeal. Accordingly, the examiner's rejection of claims 1
through 4, 8, 9 and 12 under 35 U.S.C. § 103 as being
unpatentable over Stein in view of Acosta will not be
sustained.
We have also reviewed the patents to Hansen and
Greatwood applied by the examiner in the § 103 rejections of
claims 10 and 11, respectively. However, we find nothing in
either of these references which would supply that which we
have noted above to be lacking in the crutch of the Stein
patent. Accordingly, the examiner's rejections of claims 10
and 11 on appeal under 35 U.S.C. § 103 will likewise not be
sustained.
To summarize our decision, we note that the
examiner's rejections of claims 1 through 4 and 8 through 11
Appeal No. 97-2734
Application 08/394,067
14
under 35 U.S.C. § 112, first paragraph, and under 35 U.S.C. §
112, second paragraph, have not been sustained; and that the
examiner's rejections of the appealed claims under 35 U.S.C.
103 relying on Stein
as the basic reference (rejections a through c above) have
also not been sustained.
The decision of the examiner is, accordingly,
reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Appeal No. 97-2734
Application 08/394,067
15
Administrative Patent Judge )
INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 97-2734
Application 08/394,067
16
John S. Paniaguas
Fitch Even Tabin & Flannery
135 South LaSalle Street
Suite 900
Chicago, IL 60603-4277
Appeal No. 97-2734
Application 08/394,067
- A1 -
APPENDIX
1. An orthopedic crutch comprising:
a pair of vertical supports;
an upper cross-member, rigidly connected to said
vertical supports at an upper end forming an armpit support;
a vertical support leg, rigidly connected relative
to a lower end of said pair of said vertical supports,
opposite said upper end;
a handgrip;
means for movably supporting said handgrip relative
to said vertical support leg and said armpit support to enable
said handgrip to move in a vertical direction generally
parallel to said vertical supports while said orthopedic
crutch is in use; and
means for biasing said supporting means to provide a
dynamic support for said handgrip while said orthopedic
crutches is in use.
12. An orthopedic crutch comprising:
a pair of vertical supports;
an upper cross-member, rigidly connected to said
vertical supports at an upper end forming an armpit support;
a support leg, rigidly connected, intermediate the
opposing end of said support;
a handgrip; and
means for dynamically supporting said handgrip while
said orthopedic crutch is in use to provide a movable support
for both upward and downward movement of said handgrip.