Ex parte GRIFKA

Board of Patent Appeals and Interferences

Mar 11, 1998

08052737 (B.P.A.I. Mar. 11, 1998)

Application for patent filed April 27, 1993.1
Paper No. 7 erroneously states that claims 1 through 20 are2
finally rejected. The Examiner’s Answer (Paper No. 18) is
correct, however.
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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 JOACHIM GRIFKA
__________
Appeal No. 96-2454
Application No. 08/052,7371
__________
HEARD: March 2, 1998
__________
Before CALVERT, ABRAMS and McQUADE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner finally
rejecting claims 1 through 6 and 8 through 20, which constitute
all of the claims of record in the application. 2
Appeal No. 96-2454
Application No. 08/052,737
A rejection under 35 U.S.C. § 112, second paragraph, was3
overcome by an amendment subsequent to the final rejection
(Examiner’s Answer, page 1).
2
The appellant's invention is directed to a knee joint
orthosis. The subject matter before us on appeal is illustrated
by reference to claim 1, which can be found in an appendix to the
Appellant’s Supplemental Reply Brief.
THE REJECTION
Claims 1 through 6 and 8 through 20 stand rejected under 35
U.S.C. § 112, first paragraph.3
The rejection is explained in the Examiner's Answers.
The opposing viewpoints of the appellant are set forth in
the Briefs.
OPINION
The examiner has raised two issues with regard to the
specification, which result in the rejection of the claims under
the first paragraph of Section 112. The first of these is with
regard to the recitation in independent claim 19 and dependent
claim 20 (which depends from claim 1) of the limitation that “an
elastic device permanently limits movement of the joint splint in
Appeal No. 96-2454
Application No. 08/052,737
3
a direction of its shortening.” As we understand the examiner’s
position, it is that this device is not described in the
specification in such a manner as to enable one to make and use
the invention. The appellant, of course, argues that such is not
the case, and he points out various reasons why one of ordinary
skill in the art would have had no trouble making and using the
invention. We find ourselves in agreement with the appellant.
Beginning on page 7 of the appellant’s specification there
is a description of telescopic tubes 13 and 14, which concludes
on page 8 with the explanation that the telescopic parts of the
rigid joint splints can be connected to each other by means of an
inner elastic lining or a stretch stop. It is our opinion that
one of ordinary skill in the art would have understood from this
explanation that it is within the scope of the appellant’s
invention to attach the two tubes together by means of an elastic
element which stretches when the elements are moved apart and
which functions to limit the extent of such movement. The
requirement of Section 112 is that the disclosure must be
sufficiently complete to enable one of ordinary skill in the art
to make the invention without undue experimentation; every detail
need not be set forth if the skill in the art is such that the
disclosure enables one to make the invention. See In re Gaubert,
Appeal No. 96-2454
Application No. 08/052,737
4
524 F.2d 1222, 1226, 187 USPQ 664, 667 (CCPA 1975). We are of
the view that such is the case here, for in addition to the inner
elastic element specifically mentioned in the text, from our
perspective other arrangements, such as elastic means external of
the telescopic tubes, would have been apparent to the artisan.
The second issue raised by the examiner is that there is no
support in the specification for the requirement in claim 1 that
each joint splint be coupled at its lower end to the lower leg
part “via a lower pivotal point.” While we agree with the
examiner that the written description is lacking an explicit
statement that this is the case, we are persuaded by the
appellant’s arguments that such would have been apparent to one
of ordinary skill in the art. We arrive at this conclusion by
applying the principles of geometry. Given that the point of
rotation of the lower leg about the wearer’s knee is beneath and
forward of the point of rotation of the joint splints, in order
for the joint splints to move rearwardly behind the knee when the
knee is bent they must telescopically shorten and must pivot with
respect to both of the parts to which they are attached. It is
impossible to have such knee movement if the lower attachment
point does not allow the rigid joint splints to pivot with
respect to the lower leg part, and one of ordinary skill would
Appeal No. 96-2454
Application No. 08/052,737
5
have recognized this as a requirement in order for the device to
function in the intended manner. Such a double pivoting
attachment, which is necessary in this type of device, is
graphically illustrated in Figure 4 of the Brooks patent, cited
by the appellant in the Information Disclosure Statement (Paper
No. 2).
The rejection is not sustained.
The decision of the examiner is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge)
)
)
)
NEAL E. ABRAMS ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge)
Appeal No. 96-2454
Application No. 08/052,737
6
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