Ex Parte Cox

Patent Trials and Appeals Board

Dec 4, 2018

14022998 - (D) (P.T.A.B. Dec. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/022,998 09/10/2013
97242 7590 12/07/2018
Kutak Rock LLP
2300 Main Street, Suite 800
Kansas City, MO 64108
FIRST NAMED INVENTOR
Wesley Cox
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.
95908-3.1 8592
EXAMINER
TSAI, MICHAEL JASPER
ART UNIT PAPER NUMBER
3785
NOTIFICATION DATE DELIVERY MODE
12/07/2018 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):
patents@kutakrock.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WESLEY COX
Appeal2018-004034
Application 14/022,998 1
Technology Center 3700
Before LINDA E. HORNER, MICHAEL L. HOELTER, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's rejections of claims 1-20. Final Office Action (November 17,
2016) ("Final Act."). We have jurisdiction under 35 U.S.C. § 6(b).
The Examiner rejected the claims as unpatentable over a combination
of the prior art. Appellant contests the Examiner's reasons for combining
1 Wesley Cox ("Appellant") identifies himself and Xtreme Orthopedics,
LLC, as the real parties in interest. Appeal Brief (August 16, 2017)
("Appeal Br."), at 2.
Appeal2018-004034
Application 14/022,998
the prior art in the manner claimed. As explained below, the Examiner has
supported the determination of obviousness with adequate evidence and
reasoning based on rational underpinnings. Thus, we AFFIRM.
CLAIMED SUBJECT MATTER
Claims 1, 12, and 18 are the independent claims. Claim 1 is
illustrative of the subject matter on appeal and is reproduced below.
1. A therapeutic pressure band for applying pressure to
a limb, said pressure band comprising:
a plurality of flexible straps for encircling the limb;
a connecting material extending between each adjacent strap
to secure said straps together;
adjustable cooperative fasteners proximate ends of said
straps for adjustably fastening said straps about the limb; and
a plurality of elongated pressure members attached to said
band and positioned between said adjustable cooperative fasteners,
wherein each flexible strap includes one elongated pressure
member attached thereto,
wherein adjacent pressure members are separated by a
distance and adapted to be oriented substantially perpendicular to a
longitudinal axis of the limb during use whereby each pressure
member is operable to create a discrete line of pressure across the
limb, and
wherein each strap is constructed primarily from inelastic or
relatively inelastic material.
Appeal Br. 11 (Claims Appendix).
Tillander
Decanto
Tanaka
Gauvry
Waldon, Sr. ("Waldon")
EVIDENCE
us 4,066,084
us 5,470,304
us 5,893,871
US 6,402,712 Bl
US 8,523,793 Bl
2
Jan.3, 1978
Nov. 28, 1995
Apr. 13, 1999
June 11, 2002
Sept. 3, 2013
Appeal2018-004034
Application 14/022,998
REJECTIONS
The Final Office Action includes the following rejections:
1. Claims 1, 5-7, 9, 10, 12, and 14-16 are rejected under 35 U.S.C.
§ 103 as unpatentable over Tanaka, Waldon, and Decanto. 2
2. Claims 2-4, 8, and 13 are rejected under 35 U.S.C. § 103 as
unpatentable over Tanaka, Waldon, Decanto, and Gauvry.
3. Claims 11 and 17 are rejected under 35 U.S.C. § 103 as
unpatentable over Tanaka, Waldon, Decanto, and Tillander.
4. Claim 18 is rejected under 35 U.S.C. § 103 as unpatentable over
Tanaka and Waldon.
5. Claims 19 and 20 are rejected under 35 U.S.C. § 103 as
unpatentable over Tanaka, Waldon, and Decanto.
ANALYSIS
Our analysis focuses on the rejection of claim 1. 3 The Examiner
found that Tanaka discloses a therapeutic pressure band comprising
elongated pressure members attached to the band. Final Act. 2 ( citing
2 Appellant argues claims 1 and 12 as a group, and does not present separate
arguments for the dependent claims subject to the first ground of rejection.
We select claim 1 as representative of this group. 37 C.F.R.
§ 4I.37(c)(l)(iv).
3 Appellant does not present any arguments for the dependent claims subject
to the second and third grounds of rejection apart from the arguments
presented in support of claim 1. Appellant also relies on the same arguments
presented in support of independent claims 1 and 12 as the basis for
patentability of independent claim 18 over the fourth ground of rejection.
Appellant does not present any additional arguments for the dependent
claims subject to the fifth ground of rejection. Thus, the outcome of the
appeal as to all five grounds of rejection turns on our analysis of the
Examiner's rejection of claim 1.
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Appeal2018-004034
Application 14/022,998
Tanaka, Fig. 5, col. 5, 11. 5-20). The Examiner proposed to modify Tanaka
to add a plurality of flexible straps and adjustable cooperative fasteners, as
taught by Wal don, and to further modify the material of the straps to be
inelastic or relatively inelastic, as taught by Decanto. Id. at 3-4. The
Examiner explained that one having ordinary skill in the art would have
been led to add Waldon's straps and fasteners to "allow the user to adjust
tension of the attachment of the support body to the user's body." Id. at 3.
The Examiner also explained that one having ordinary skill in the art would
have been led to use Decanto' s inelastic material for the straps because
"inelastic straps are well known in the art for application of pressure to a
patient's limb." Id. at 4.
Appellant argues that the Examiner erred in the proposed modification
of Tanaka to include inelastic straps because Tanaka teaches away from this
modification. Appeal Br. 8. Appellant asserts that Tanaka teaches that
each of the elements is elastic. Id. (citing portions of Tanaka's disclosure
describing the first, third, fourth, fifth, and sixth embodiments). Appellant
does not address or acknowledge in its arguments Tanaka's second
embodiment, which includes a wrist band having a band body "formed of
band cloth having no elasticity" and having fasteners sewn on each end of
the band body to attach the band body to the user's wrist. Tanaka, col. 4,
11. 13-19, 24-28, Fig. 4. Similar to the other embodiments disclosed in
Tanaka, this second embodiment includes projection 2 including ribs on the
inside surface of the band body to provide an acupressure effect when the
wrist band is fitted around the user's wrist. Id. at col. 4, 11. 19-23, 27-30.
Thus, Tanaka teaches an alternate embodiment that does not rely on the
elasticity of the band body to attach the band to the user's limb. Rather than
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Appeal2018-004034
Application 14/022,998
discouraging the use of an inelastic material to form its band, Tanaka
suggests that the acupressure effect of its band can be achieved using an
inelastic band with fastening elements. Id. Based on our consideration of
Tanaka in its entirety, we find that Tanaka does not teach away from the
proposed modification of Tanaka's Figure 5 embodiment to use inelastic or
relatively inelastic straps.
Appellant further argues that the rejection is improper because the
Examiner failed to provide adequate motivation for the proposed
modification of Tanaka to use Waldon's flexible straps and cooperative
fasteners. Appeal Br. 8-9. Appellant argues that adding straps to Tanaka
would change the principle of operation achieved by the "excellent
elasticity" of Tanaka's cylindrical band body because the pressure in the
modified band would be "controlled, and potentially created, by the
adjustment of the straps, not the elasticity of the material." Id. at 9. The
proposed modification provides an alternate means to create the acupressure,
but it does not eliminate the ability of the band to achieve this acupressure
effect. Further, as discussed above, Tanaka suggests an alternate
embodiment that uses straps and cooperative fasteners in place of a
cylindrical band body to effect the acupressure. Tanaka, Fig. 4, col. 4,
11. 19-3 0. Thus, we disagree with Appellant's argument that modifying
Tanaka's band, as embodied in Figure 5 of Tanaka, to use Waldon's straps
and fasteners would change the principle of operation.
Appellant further argues the Examiner's rejection is deficient because
the Examiner does not provide evidence of "an obvious benefit to modifying
the Tanaka device to include straps" and the Examiner instead has resorted
to "impermissible hindsight reasoning." Id. at 9. The Examiner, in
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Application 14/022,998
response, explains that the benefit of the proposed modification would allow
a user "to more finely adjust the tension of the attachment" and provide
more control of the compression pressure. Ans. 12. The Examiner's
reasoning is based on rational underpinnings and is supported by the
evidence of record. For example, Waldon teaches that by using three straps,
each having cooperative hook and loop fasteners, a user can adjust the length
of the straps and the tension of the attachment of the support body to a user's
knee. Waldon, col. 2, 11. 63-65. The size of a user's limb will vary widely
between different users, and the ability to adjust the pressure applied by
Tanaka's band to accommodate users having different size limbs is a benefit
provided by the proposed modification. See, e.g., Waldon, col. 2, 11. 12-13
("The apparatus is easily adjustably fitted to a wide range of knee sizes.").
For these reasons, we find that the Examiner provided adequate evidence
and reasoning based on rational underpinnings to support the determination
of obviousness of claim 1. Claims 5-7, 9, 10, 12, and 14-16 fall with claim
1. For these same reasons, Appellant's arguments do not apprise us of error
in the rejections of claims 2-4, 8, 11, 13, and 17-20.
DECISION
The decision of the Examiner rejecting claims 1-20 is affirmed.
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)(l )(iv).
AFFIRMED
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