Ex Parte Horvath

Patent Trial and Appeal Board

Sep 29, 2017

12586224 (P.T.A.B. Sep. 29, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
090601P 3883
EXAMINER
HICKS, VICTORIA J
ART UNIT PAPER NUMBER
3772
MAIL DATE DELIVERY MODE
12/586,224 09/18/2009
7590 09/29/2017
ATLO, Stanton E. Collier, Esq.
PO Box 11
Holyoke, MA 01040
Peter Horvath
09/29/2017 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 PETER HORVATH
Appeal 2015-006092
Application 12/586,224
Technology Center 3700
Before SUSAN L. C. MITCHELL, BRANDON J. WARNER, and
ANTHONY KNIGHT, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Peter Horvath (“Appellant”) appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 1, 5—9, 11, and 12. Appeal Br. 5.
Claims 2—4, 10, and 13 have been canceled, claims 14—20 have been allowed
by the Examiner, and claims 21—26 have been withdrawn. Id. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2015-006092
Application 12/586,224
CLAIMED SUBJECT MATTER
Appellant’s disclosed invention “relates generally to medical systems
for use in the treatment of injuries, and, in particular, relates to a device for
treating joint injuries.” Spec. 1 5. Claim 1, reproduced below with
emphasis and an additional line break added for clarity, is the sole
independent claim appealed and is representative of the subject matter on
appeal.
1. A portable resetting device (100) for a reduction of a
shoulder dislocation adapted for a patient with the shoulder
dislocation being seated upon a chair, the portable resetting
device (100) comprising:
an underarm support (102), said underarm support (102)
being adjustable in height;
a traction structure (112) for transmitting mechanical
forces to an injured arm of the shoulder dislocation, said
traction structure (112) having an arm-holding plate (126)
translatably mounted thereto;
a lower support (114) having the arm-holding plate (136)
thereon, and the underarm support (102) mounted thereon; and
an auxiliary arm support adjustably mounted to said
lower support (114).
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Taylor US 5,417,643 May 23, 1995
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Appeal 2015-006092
Application 12/586,224
REJECTION
The following rejection is before us for review: Claims 1, 5—9, 11,
and 12 stand rejected under 35 U.S.C. § 102(b) as anticipated by Taylor.
Final Act. 2-4.
ANALYSIS
Independent claim 1 recites, in relevant part, a resetting device (100)
for the reduction of a shoulder dislocation, where the device includes “a
traction structure (112) for transmitting mechanical forces to an injured arm
of the shoulder dislocation, said traction structure (112) having an arm­
holding plate (136) translatably mounted thereto.” See Appeal Br., Claims
App. (emphasis added). Appellant argues that Taylor, as relied on in the
rejection, does not disclose such a plate that is “translatably mounted” to a
traction structure, asserting that the Examiner’s reliance on Taylor’s plate 31
being “rotatably mounted” to structure 30 is insufficient to anticipate the
claims. See Appeal Br. 11—13; Reply Br. 3, 5. After careful consideration
of the arguments and evidence before us, we agree with Appellant on this
claim interpretation point.
In rejecting the claims, the Examiner relies on Taylor’s “traction
structure (20, 30) having an arm-holding plate (31) translatably (rotatably)
mounted thereto,” as disclosing the disputed limitation quoted above. Final
Act. 3 (citing Taylor, Figs. 1—3). In doing so, the Examiner construes
“translate” broadly as meaning “to change from one place to another,” such
that “Taylor’s teaching of rotation of the holding plate (31) is sufficient to
teach translation of the holding plate (31), since rotation is a type of
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Appeal 2015-006092
Application 12/586,224
movement from one place to another,” functionally equating translation and
rotation. Ans. 6.
However, Appellant argues that the recitation that the arm-holding
plate be “translatably mounted” to the traction structure, as the term would
be understood by one of ordinary skill in the art in view of the Specification,
requires a linear translating movement that facilitates reduction of a shoulder
dislocation in a way that rotational movement would not. See Reply Br. 3.
We observe that, although some other elements of Appellant’s device are
described as being mounted for rotational (or pivotal) movement, the arm­
holding plate is not.1 See Spec. 140 (disclosing that “arm-holding plate 136
is translatably mounted to the lower support 114 and moves along a pair of
slides 140); Fig. IE (depicting linear slides 140); see also Fig. 1A (depicting
movement of arm-holding plate 136 in linear traction force direction 132).
Although the Examiner is correct that the term “translate” may be broad in
the abstract (see Ans. 6), claim terms are not read in a vacuum, and the
Examiner has not directed us to any disclosure in the Specification that
would support such a broad interpretation in the present case.
Here, from the Specification—in light of which the claim terms must
be interpreted—we agree with Appellant that one of ordinary skill in the art
would not understand “translatable” movement/mounting to be equivalent to
“rotatable” movement/mounting in the context of the claims, and the
Examiner has not adequately explained a reasoned basis to consider the
terms as equivalents. In brief, Appellant persuasively asserts that the
1 See, e.g., Spec. Tflf 39-43 (describing various elements other than the
arm-holding plate as being “rotatably attached” or “pivotally mounted” to
associated structures).
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Appeal 2015-006092
Application 12/586,224
Examiner has misconstrued the scope of the claims and, in doing so, has not
established a finding supported by a preponderance of the evidence that
Taylor discloses a traction structure with an arm-holding plate that is
“translatably mounted” thereto, as recited in the claims.
Accordingly, based on the record before us—because an anticipation
rejection requires a finding in a single reference of each and every limitation
as set forth in the claims—we do not sustain the rejection of claims 1, 5—9,
11, and 12 under 35 U.S.C. § 102(b) as anticipated by Taylor.
DECISION
We REVERSE the Examiner’s rejection of claims 1, 5—9, 11, and 12
under 35 U.S.C. § 102(b) as anticipated by Taylor.
REVERSED
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