Ex Parte MOORE

Board of Patent Appeals and Interferences

Nov 16, 2010

11162808 (B.P.A.I. Nov. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MAX E. MOORE
____________

Appeal 2009-007964
Application 11/162,808
Technology Center 3600
____________

Before LINDA E. HORNER, WILLIAM F. PATE, III, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown in the PTOL-90A cover letter attached to this decision.

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Application 11/162,808

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STATEMENT OF THE CASE
Max E. Moore (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision finally rejecting:
(1) claims 1-4, 6, 7, and 9 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement
requirement (Ans. 3);2 and
(2) claims 1-4 and 6-9 under 35 U.S.C. § 103(a) as
unpatentable over Bloedau (U.S. Patent No. 5,938,629, issued
Aug. 17, 1999) and Kilbey (U.S. Patent No. 5,814,000, issued
Sep. 29, 1998) (Ans. 5).

Appellant cancelled claim 5. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The Invention
The claims on appeal relate to a ratchet hinge used in knee or elbow
braces for limiting the range of motion or locking control of the limb.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A ratchet hinge for an orthosis comprising:
a first strut pivotably connected between a pair of plates,
each plate having a plurality of ratchets on an outer periphery;
and
a locking slot adjacent the ratchets on the outer periphery
of each plate;
a second strut connected to the plates;
a locking assembly disposed within the first strut; and
the locking assembly having a spring loaded locking pin
that engages both plates to selectively position the hinge;

2 Although the Examiner only listed claims 1, 7, and 9 in the 35 U.S.C.
§ 112, first paragraph, enablement rejection on page 3 of the Examiner’s
Answer, we have listed claims 1-4, 6, 7, and 9 since dependent claims 2, 3,
4, and 6 contain the subject matter of claim 1 which the Examiner has
concluded is not enabled by the original disclosure.
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wherein the hinge has three positions, a locked position
where the locking pin is received in the locking slot of each plate
such that motion is restricted in both directions, a ratcheting
position where the locking pin engages the ratchets of each plate
such that motion is restricted to one direction, and a free position
where the locking pin is free from engagement with the ratchets
and the locking slot of each plate such that motion is unrestricted
in both directions.

DISCUSSION
Issues
The determinative issues in this appeal are:
(1) Did the Examiner err in concluding that claims 1-4, 6, 7, and 9
contain subject matter that is not enabled by the Specification under 35
U.S.C § 112, first paragraph?
(2) Did the Examiner err in concluding that it would have been
obvious to one of ordinary skill in the art to rearrange the parts of Bloedau
by placing either one or both of the plates 44, 44A on the side or sides,
respectively, of the hinge sections 22, 22 composing the first strut 16 in
order for the first strut 16 to be “pivotably connected between a pair of
plates” as recited in claims 1-4 and 6-9?
Analysis
Issue 1 – Enablement
Appellant contends that according to the Manual of Patent Examining
Procedure (MPEP) § 2164.04, the Examiner must establish a reasonable
basis to question the enablement provided for the claimed invention in order
to sustain an enablement rejection under 35 U.S.C. § 112, first paragraph.
App. Br. 4. Appellant also contends that In re Wright, 999 F.2d 1557, 1561-
1562 (Fed. Cir. 1993), establishes that the Examiner must provide evidence
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or technical reasoning to support an enablement rejection. Id. Appellant
also contends that the Examiner’s concern with respect to the shape or
contour of ratchets 28 is unfounded since Figures 1-6 of the present
invention clearly show that ratchets are angular and regularly spaced and at
paragraph [24], the Specification clearly states that the rectangular end 52 of
locking pin 44 engages ratchets along their angular, sloped notches. App.
Br. 5. Appellant also contends that one of ordinary skill in the art would
understand that “unless sufficient force were applied by ratchets 28 to
overcome the bias of locking pin 44, the engagement between locking pin 44
and ratchets 28 would only permit rotation in one direction.” Id. More
particularly, Appellant contends that it is clear from Figure 5 that by rotating
the first strut 12 in the direction of the arrow, sufficient responsive force is
applied on the terminal edge of end 52 to overcome the bias of locking pin
44 to thereby allow end 52 to climb the angular slope of the next ratchet
while preventing opposite rotation. Id. Appellant also contends that ratchets
are old and well known in the art and although the ratchets are small in the
drawings, there is enough disclosure in the drawings and textual description
in paragraphs 23-25 to enable one of ordinary skill in the art to make and use
the invention. Reply Br. 2. Appellant also contends that the Examiner’s
statement with respect to the spring on the locking pin appearing to allow
movement of the strut in both directions has no foundation and is contrary to
the disclosures of Figure 5 and paragraph 24. Reply Br. 3.
The Examiner’s position is that “it is unclear how the locking pin (44)
cannot move in both directions in the position shown in Figure 5.” Ans. 4.
More particularly, the Examiner posits that there is insufficient structural
detail specific to the shape or contour of the ratchets 28 that would enable
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one to comprehend how the motion of each of the plates is restricted in one
direction. Id. The Examiner also posits that Figure 5 appears to show that
the locking pin 44 would act like a wedge or an abutment to one of the
ratchets, thus not allowing rotation of the first strut 12 relative to the second
strut 14 in the arrow direction. Id. It is the Examiner’s position that since
the locking pin is spring loaded, one of ordinary skill in the art would think
that the locking pin 44 would allow for movement of the first strut 14 in both
directions while in the position shown in Figure 5. Id.
To evaluate whether a disclosure would require undue
experimentation and therefore, would not be enabled, the Federal Circuit has
adopted the following factors to be considered:
(1) The quantity of experimentation needed to make or use the
invention based on the content of the disclosure;
(2) The amount of direction or guidance presented;
(3) The existence of working examples;
(4) The nature of the invention;
(5) The state of the prior art;
(6) The relative skill of those in the art;
(7) The level of predictability in the art; and
(8) The breadth of the claims.
See In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
The Examiner does not appear to have considered any of the above-
listed Wands’ factors in reaching the decision that the claims are not
enabled. Thus, the Examiner has failed to provide a reasonable explanation
as to why the scope of protection provided by claims 1-4, 6, 7, and 9 is not
adequately enabled by Appellant’s original disclosure. In particular, the
Examiner has failed to sufficiently show why the Appellant’s disclosure
would require undue experimentation in order to make and/or use the
claimed invention since the above-noted Wands’ factors have not been
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considered. The Examiner’s failure to address the Wands’ factors is
dispositive. We cannot agree with the Examiner’s conclusion that claims 1,
7, and 8 are not enabled by the original disclosure under 35 U.S.C. § 112,
first paragraph.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 1-4, 6, 7, and 9 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the enablement requirement.
Issue 2 – Obviousness
Appellant contends that neither Bloedau nor Kilbey discloses the
recitations of “a locking assembly disposed within the first strut; and the
locking assembly having a spring loaded locking pin that engages both
plates to selectively position the hinge” as specifically recited at lines 7-9 of
each of independent claims 1, 7, and 8. App. Br. 7.
The Examiner’s position is that Bloedau substantially discloses the
invention as claimed, except that Bloedau fails to disclose that the first strut
16 is pivotably connected between the plates 44, 44A. Ans. 5. The
Examiner concludes that “it would have been obvious to one having
ordinary skill in the art at the time the invention was made to have placed
one of the plates on the other side of the first strut, since it has been held that
rearranging parts of an invention involves only routine skill in the art.” Ans.
5-6. The Examiner posits that rearranging the parts of Bloedau is an obvious
modification that would allow Bloedau’s invention to continue to function
and operate in a manner similar to Appellant’s claimed structure. Ans. 6.
Bloedau discloses an adjustable hinge structure. Title. The hinge
structure includes upper hinge element 16 and lower hinge element 20. Figs.
4A and 5A. A pin 18 extends through upper hinge element 16 and keeper
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screw 18A is threaded into one end of pin 18 to secure the upper hinge
element 16 to the lower hinge element 20. Col. 2, ll. 4-7. The upper hinge
element 16 includes upper hinge sections 22 each of which have first sockets
28 with apertures 30 therein. Col. 2, ll. 8-11. A keeper block 32 is slidably
mounted within the first sockets 28 in each of the hinge sections 22. Col. 2,
ll. 11-12. The keeper block has downwardly extending teeth 33 thereon.
Col. 2, ll. 12-13. An inner socket 38 is located in each of the hinge sections
22 and the inner sockets 38 have centered apertures 40 to receive pin 18.
Col. 2, ll. 19-21. Also mounted on pin 18 are washers 42 and ratchet rings
44, 44A, and the ratchet rings 44, 44A have a segment in the periphery
thereof which have a plurality of ratchet teeth 46. Col. 2, ll. 21-25. The
lower hinge element 20 has a pin 48 which extends through arcuate slots
46A, 46B in ratchet rings 44, 44A, respectively. Col. 2, ll. 26-29. The
ratchet teeth 46 on the ratchet rings 44, 44A mate with the ratchet teeth 33
on the keeper block 32. Col. 2, ll. 61-63. The rotational position of rings
44, 44A can be staggered to create an effective generic slot 49 with ends
49A, 49B. Col. 2, ll. 29-31. A cam element 34 is rotatably mounted on the
hinge structure for slidably moving the keeper block 32 into locking
engagement with the ratchet teeth 46 to lock the first and second hinge
elements 16, 20 together and to move the keeper block 32 out of engagement
with the ratchet teeth 46 to unlock the first and second hinge elements 16, 20
for pivotal movement with respect to each other. Col. 4, ll. 3-9.
We disagree with the Examiner that Bloedau’s invention would
function similarly to Appellant’s claimed structure if either one or both of
the plates 44, 44A were rearranged to be on the outside of the hinge sections
22, 22 comprising the first strut 16. The Examiner’s proposed
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rearrangement of Bloedau would require major modifications to the lock
assembly (keeper block 32). Referring to the exploded view in Figure 3 of
Bloedau, the plates 44 and 44A are shown as being within two hinge
sections 22, 22 which comprise the first strut 16. Bloedau’s plates 44, 44A
have ratchet teeth 46 which are meant to mate with ratchet teeth 33 on the
lock assembly (keeper block 32). If only one of the plates 44, 44A is
rearranged so as to be on the outside of one of the hinge sections 22 of the
first strut 16 as suggested by the Examiner, then the first strut 16 will still
not be between the plates as required by the claims.
Alternatively, if both of Bloedau’s plates 44, 44A are rearranged so as
to be on the outside of both hinge sections 22, 22 of the first strut 16, then
the first strut 16 would indeed be between the plates 44, 44A. However, a
rearrangement of Bloedau’s plates 44, 44A so that both are on the outside of
the hinge sections 22, 22 of the first strut 16 would require modification of
the lock assembly (keeper block 32) in order for the ratchet teeth 33 of the
lock assembly (keeper block 32) to continue to mate with the ratchet teeth 46
on both of the plates 44, 44A which have been rearranged to be located on
the outside of the hinge sections 22, 22. Even if the lock assembly (keeper
block 32) could somehow be divided so that ratchet teeth 33 could mate with
the ratchet teeth 46 on both plates 44, 44A rearranged to be located on the
outside of the hinge sections 22, 22 of the first strut 16, it is clear that the
lock assembly (keeper block 32) would have to be relocated to the outside of
the first strut 16 for mating of the ratchet teeth 33 with the ratchet teeth 46 of
the plates 44, 44A. Thus, the lock assembly (keeper block 32) would no
longer meet the claim recitations of being disposed within the first strut.
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In view of the foregoing, we cannot sustain the Examiner’s rejection
of claims 1-4 and 6-9 under 35 U.S.C. § 103(a) as unpatentable over
Bloedau and Kilbey.
CONCLUSIONS
The Examiner erred in concluding that claims 1-4, 6, 7, and 9 contain
subject matter that is not enabled by the specification under 35 U.S.C. § 112,
first paragraph.
The Examiner erred in concluding that it would have been obvious to
one of ordinary skill in the art to rearrange the parts of Bloedau by placing
either one or both of the plates 44, 44A on the side or sides, respectively, of
the hinge sections 22, 22 comprising the first strut 16 in order for the first
strut 16 to be “pivotably connected between a pair of plates” as recited in
claims 1-4 and 6-9.
DECISION
We reverse the Examiner’s rejection of claims 1-4, 6, 7, and 9 under
35 U.S.C. § 112, first paragraph, for lack of enablement and the Examiner’s
rejection of claims 1-4 and 6-9 under 35 U.S.C. § 103(a) as unpatentable
over Bloedau and Kilbey.

REVERSED

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