Ex parte BZOCH

Board of Patent Appeals and Interferences

Feb 19, 1998

08538554 (B.P.A.I. Feb. 19, 1998)

Application for patent filed October 3, 1995.1
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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journal and (2) is not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte JAN J. BZOCH
________________
Appeal No. 97-0737
Application 08/538,5541
________________
ON BRIEF
________________
Before McCANDLISH, Senior Administrative Patent Judge, ABRAMS and
McQUADE, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 1 and 3
through 12, all of the claims pending in the application.
The invention relates to “a patient hip guard intended to
protect the user against breaking of a hip should the user
accidentally fall” (specification, page 1). Claim 1 is
Appeal No. 97-0737
Application 08/538,554
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illustrative and reads as follows:
1. A patient hip guard, comprising:
a) a first hip pad and a second hip pad, each hip pad
including a cover defining an internal chamber containing a
resilient pad having a relieved region sized and configured in
correspondence to a shape of a femoral head of a user’s hip and
adapted to overlie a femoral head of a user’s hip when placed
adjacent thereto;
b) a first strap devoid of a hard object attached between
said hip pads and being adjustable in length whereby a spacing
between said hip pads may be adjusted;
c) a second strap devoid of a hard object attached between
said hip pads and being adjustable in length to accommodate to
waists of differing sizes; and
d) a rigid pad within the internal chamber engaging a face
of a respective resilient pad opposite the relieved region.
The references relied upon by the examiner as evidence of
obviousness are:
Flick 835,219 Nov. 6, 1906
Wortberg 4,573,216 Mar. 4, 1986
Valtakari 5,105,473 Apr. 21, 1992
Rice 5,431,623 Jul. 11, 1995
The claims on appeal stand rejected under 35 U.S.C. § 103 as
follows:
a) claims 1, 10 and 11 as being unpatentable over Flick in
view of Wortberg and Valtakari; and
b) claims 3 through 9 and 12 as being unpatentable over
Flick in view of Wortberg and Valtakari, and further in view of
Rice.
Appeal No. 97-0737
Application 08/538,554
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Reference is made to the appellant’s brief (Paper No. 9) and
to the examiner’s answer (Paper No. 10) for the respective
positions of the appellant and the examiner with regard to the
propriety of this rejection.
Flick discloses a device for protecting the hips of baseball
players when they slide into a base. The device includes a belt
1 having buckles 2 and 6 in the front and back, and pads 3
secured to the belt so as to hang down over the hips and thighs
of a user. Each of the pads 3 consists of layers of felt
enclosing an inner pad 4 of hair or sea-moss disposed to overlie
the hip bone. When a player slides into a base, “the first shock
of striking on the hip-bone is taken on the inner pad 4, thus
protecting the point of the hip-bone, and as the player slides
along the several layers of the pad 3 crumple or slip upon each
other, and thus prevent injury” (page 1, lines 66 through 71).
The examiner concedes that the device disclosed by Flick
fails to meet the limitations in independent claims 1 and 12
requiring the claimed hip guard to include (1) resilient pads
having relieved regions sized and configured in correspondence to
the shape of the femoral heads of a user’s hips and (2) rigid
pads engaging the faces of the resilient pads opposite the
relieved regions (see page 4 in the answer). In this regard,
Appeal No. 97-0737
Application 08/538,554
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Flick’s inner pads 4, which correspond to the claimed resilient
pads, do not have such relieved regions and are not associated
with any rigid pads.
Wortberg discloses an impact dissipator particularly
designed for use as a hip guard. The back of the dissipator
carries an adhesive layer intended to adhere to the skin of the
user and includes a concave recess 2 shaped to accommodate the
greater trochanter so as to facilitate proper alignment and
fastening of the dissipator (see column 3, lines 19 through 24).
Valtakari discloses an athletic outfit (trousers and/or a
coat) having pockets at various locations, including the hip
areas, for receiving protective pads. The pads may be relatively
lightweight sheets of elastic material for absorbing shocks or
heavier duty constructions wherein the sheets are attached to
protective cups made of a material which is highly resistant to
blows and rubbing (see column 4, lines 10 through 15).
According to the examiner, it would have been obvious to one
having ordinary skill in the art at the time the invention was
made “to provide a relieved portion in the pad of Flick as taught
by Wortberg in order to facilitate attachment of the hip pad to a
wearer” (answer, page 4) and “to add a rigid plastic layer to the
outside of pad (4) of Flick as taught by Valtakari in order to
Appeal No. 97-0737
Application 08/538,554
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resist blows and rubbing” (answer, page 4).
Given the disparate natures of the various hip protectors
respectively disclosed by Flick, Wortberg and Valtakari, however,
the appellant’s position that the foregoing combination of these
references constitutes an impermissible hindsight reconstruction
of the claimed invention is well taken. More particularly,
modifying the pads of Flick in the manner advanced by the
examiner apparently would render them incapable of crumpling as
intended by Flick to prevent injury during a player’s slide.
There is nothing in the combined teachings of the references
which would have suggested this result as being desirable. In
this light, it is evident that the examiner has used the claimed
invention as an instruction manual to selectively piece together
isolated disclosures in the prior art to support a conclusion of
obviousness. Furthermore, Rice’s disclosure of a knee
hyperextension orthotic device having hook and loop straps to
secure it to a wearer’s leg does not cure this fundamental flaw
in the basic Flick, Wortberg and Valtakari combination.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 103 rejection of independent claim 1, and of dependent claims
10 and 11, as being unpatentable over Flick in view of Wortberg
and Valtakari or the standing 35 U.S.C. § 103 rejection of
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Application 08/538,554
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independent claim 12, and dependent claims 3 through 9, as being
unpatentable over Flick in view of Wortberg and Valtakari, and
further in view of Rice.
The decision of the examiner is reversed.
REVERSED
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
)
)
NEAL E. ABRAMS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 97-0737
Application 08/538,554
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Herbert W. Larson
7381 114th Ave. N #406
Largo, FL 34663