Ex Parte Bolla

Patent Trial and Appeal Board

Jul 9, 2018

13583867 (P.T.A.B. Jul. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/583,867 10/12/2012
42419 7590 07/09/2018
PAULEY ERICKSON & KOTTIS
2800 WEST HIGGINS ROAD
SUITE 365
HOFFMAN ESTATES, IL 60169
FIRST NAMED INVENTOR
Kalman Bolla
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.
RP-180 8419
EXAMINER
NGUYEN,CAMTUTRAN
ART UNIT PAPER NUMBER
3772
MAIL DATE DELIVERY MODE
07/09/2018 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 KALMAN BOLLA
Appeal2017-008906
Application 13/583,867
Technology Center 3700
Before CHARLES N. GREENHUT, LISA M. GUIJT, and
FREDERICK C. LANEY, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1-9. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal2017-008906
Application 13/583,867
CLAIMED SUBJECT MATTER
The claims are directed to a palmar thumb and thumb saddle joint
splint. Spec. 1. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A palmar thumb and thumb saddle joint splint (10) for
fastening to a hand, comprising:
a first splint part ( 11) for receiving a thumb and
comprising a shell part, which is intrinsically stiff but plastically
deformable manually and into which the thumb can be laid;
a hand edge part (12) connected firmly to the first splint
part (11 ), the hand edge part (12) intrinsically stiff but plastically
deformable manually and, when the splint is in place, is adapted
to curve around an edge of the hand that is opposite the thumb,
wherein the first splint part (11) and the hand edge part (12) form
a support surface that has an open top to receive the hand; and
a fastening means ( 14, 15) for fastening the first splint part
( 11) to the hand including first and second immobilizing strips
(14, 15) which are intrinsically stiff but plastically deformable
manually,
the first immobilizing strip ( 14) extending from the hand
edge part (12) to the first splint part (11) and over the open top,
wherein the first immobilizing strip (14) is adapted to extend
across a back of the hand, and
the second immobilizing strip ( 15) extending from the
hand edge part (12) to the first splint part (11) and over the open
top, wherein the second immobilizing strip ( 15) is adapted to
extend across the back of the hand and between the thumb and
index finger of the hand to the first splint part ( 11 ).
REJECTIONS
Claims 1, 3, and 6 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Primiano (U.S. Pat. 4,524,464; issued June 25, 1985),
Sackett (U.S. Pat. 5,787,896; issued Aug. 4, 1998), Ruuska (U.S. Pat.
3,124,127; issued Mar. 10, 1964), and Oguri (WO 2010/137193; published
Feb. 12, 2010).
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Appeal2017-008906
Application 13/583,867
Claims 2, 4, 5, and 8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Primiano, Sackett, Ruuska, Oguri, and Smith (U.S. Pat.
4,658,441; issued Apr. 21, 1987).
Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Primiano, Sackett, Ruuska, Oguri in view of Purr (U.S. Pat. 5,188,356).
Claim 9 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Primiano, Sackett, Ruuska, Oguri, and Bolla (WO 97 /22312).
OPINION
The Examiner's rejections are all predicated on interpreting a
structure adapted for the "back of the hand" to include a prior art structure of
Primiano designed and adapted to fit on the palm. To support this position
the Examiner reasons that it is reasonable to construe the "back of the hand"
as the palm of the hand. Ans. 3.
"[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be
afforded by the written description contained in the applicant's
specification." In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
"' [R ]eading a claim in light of the specification,' to thereby interpret
limitations explicitly recited in the claim, is a quite different thing from
'reading limitations of the specification into a claim,' to thereby narrow the
scope of the claim by implicitly adding disclosed limitations which have no
express basis in the claim." In re Prater, 415 F.2d 1393, 1404---05, (CCPA
1969). Although the PTO must give claims their broadest reasonable
interpretation, this interpretation must be consistent with the one that those
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Appeal2017-008906
Application 13/583,867
skilled in the art would reach. In re Cortright, 165 F.3d 1353, 1358 (Fed.
Cir. 1999). "Prior art references may be 'indicative of what all those skilled
in the art generally believe a certain term means ... [ and] can often help to
demonstrate how a disputed term is used by those skilled in the art.'
Accordingly, the PTO's interpretation of claim terms should not be so broad
that it conflicts with the meaning given to identical terms in other patents
from analogous art." Id. (Citations omitted).
Appellant's Specification expressly contrasts the back of the hand and
the palm. Reply. Br. 3 ( citing Spec. 3). Further, Primiano also indicates that,
with respect to the hand, back and dorsum are synonymous. Reply. Br. 3
( quoting Primiano col. 5, 11. 17-21 ). The Examiner, on the other hand, does
not provide any evidence in support of the Examiner's proposed
construction of "back of the hand" as including the palm. Thus, on the
record before us, the weight of evidence suggests that the Examiner relied on
an unreasonably broad claim interpretation as a basis to formulate the
rejections before us for review. Accordingly, the Examiner's rejections
cannot be sustained on the basis set forth by the Examiner.
DECISION
The Examiner's rejections are reversed.
REVERSED
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