Ex Parte RE35940 et al

Board of Patent Appeals and Interferences

Jan 26, 2012

90010604 (B.P.A.I. Jan. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/010,604 07/17/2009 RE35940 17VP-150771 1862
30764 7590 01/26/2012
SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
12275 EL CAMINO REAL, SUITE 200
SAN DIEGO, CA 92130
EXAMINER
WILLIAMS, CATHERINE SERKE
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
01/26/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BioCybernetics Inc.,
Appellant and Patent Owner
____________

Appeal 2012-002424
Reexamination Control 90/010,604
Patent RE 35,940
Technology Center 3900
____________

Before SALLY GARDNER LANE, RICHARD M. LEBOVITZ, and
DEBORAH KATZ Administrative Patent Judges.

KATZ, Administrative Patent Judge

DECISION ON APPEAL
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United States Patent RE 35,940

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BioCybernetics, Inc.
1
(“Appellant”) appeals the final rejection of
claims 16, 19, and 21-24 of U.S. Reissue Patent 35,940 (“the ‘940 patent”).
(App. Br. 2.) Claims 1-15 of the ‘940 patent were not subject to
reexamination and the Examiner confirmed the patentability of claims 17,
18, and 20. (App. Br. 2; Ans. 2.) We have jurisdiction under 35 U.S.C.
§§ 134(b) and 306.
We affirm.
This proceeding arose from a request for ex parte reexamination, filed
by a third party on July 17, 2009 of the ‘940 patent, which issued to Thomas
J. Heinz, Thomas A. Walker, and Eric D. Plambeck on October 27, 1998.
The ‘940 patent was based on reissue application 08/604,381, filed
February 21, 1996, of U.S. Patent No. 5,346,461, which issued
September 13, 1994.
U.S. Patent No. 6,213,986 (“the ‘986 patent”) is related to the
‘940 patent. Previously, the Examiner’s decision to reject claims 1 and 34 of
the ‘986 patent was affirmed by a panel of Administrative Patent Judges.
(See Decision on Appeal in Appeal 2011-006722, issued on July 13, 2011.)
We have not been informed of any other concurrent or prior
proceedings that would impact our decision.

1
BioCybernetics, International Inc. is the real party in interest and the
current owner of the patent under reexamination. (App. Br. 1.)
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Rejections
The Examiner rejected claim 24 under 35 U.S.C. § 112, first
paragraph, for a lack of written description. (Ans. 4-5.)
The Examiner also maintained rejections based on the prior art,
relying on the following U.S. patents.
Number Name Date
232,420 Smith September 21, 1880
386,642 Mann July 24, 1888
629,900 Fosburgh August 1, 1899
772,926 Colton ‘926 October 25, 1904
1,393,188 Whiteman October 11, 1921
2,100,964 Kendrick November 30, 1937
2,793,368 Nouel May 28, 1957
3,570,480 Stubbs March 16, 1971
3,920,008 Lehman November 18, 1975
571,749 Colton ‘749 November 24, 1986
601,446 Mestler March 29, 1989

The Examiner made the following rejections over the prior art:
 Claim 16 under 35 U.S.C. § 103(a) over Nouel or Kendrick, in
view of any one of Smith, Mann, Colton ‘749, Mestler,
Fosburgh, Colton ‘926, or Whitman (Ans. 5-8);
 Claim 19 under 35 U.S.C. § 103(a) over either Nouel or
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Kendrick in view of Smith, Mann, Colton ‘749, Mestler,
Fosburgh, Colton ‘926, or Whitman, and also either Stubbs or
Lehman (Ans. 8-9);
 Claim 21 under 35 U.S.C. § 103(a) over Nouel or Kendrick in
view of Fosburgh (Ans. 9-10);
 Claim 22 under 35 U.S.C. § 103(a) over Nouel or Kendrick in
view of Mestler (Ans. 10-11);
 Claim 23 under 35 U.S.C. § 103(a) over Nouel or Kendrick in
view of Mestler and Smith (Ans. 11-12); and
 Claim 24 under 35 U.S.C. § 103(a) over Nouel or Kendrick in
view of Smith (Ans. 12-13).

Claims 16, 19, 22, and 23
Appellant argues for the patentability of claims 16, 19, 22, and 23
together, raising the same issues. (See App. Br. 4.) We focus on claim 16 in
our analysis, but our reasoning applies to the rejections of claims 19, 22, and
23, as well.
Claim 16 of the ‘940 patent recites:
A back brace apparatus comprising:

a brace body adapted to be wrapped around the trunk of a
patient, said brace body comprising two separate segments;

means at the end of each brace segment for allowing the
two ends to be detachably connected together around the
patient's trunk;
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a cable operatively connected to said two segments; and

a set of pulleys mounted on each brace segment with the
cable running through a pulley on each segment in alteration,
shortening of the cable pulling the two segments together and
tightening the brace apparatus with the aid of a mechanical
advantage dependent upon the number of pulleys mounted on
each brace segment.

(App. Br. 14, Claims App’x.)
Figure 1 of the ‘968 patent is reproduced below.

Figure 1 depicts a planar view of a back brace (10) with a body of two
segments (11a and 11b) having hook and loop fastener fabric (18) for
securing the two free ends together after the brace is wrapped around the
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patient’s trunk. Figure 1 also depicts a cable (12) that runs through pulleys
(15). (‘940 patent, col. 2, ll. 44-65.)
Figure 1 of Nouel is reproduced below.

Figure 1 depicts a surgical corset (10) with two segments (panels 11 and 12)
in a juxtaposed relationship and a means, hooks 60 and eyes 26, for securing
the ends of the two segments together. (Nouel, col. 1, ll. 56-61, and col. 2,
ll. 55-59.) Figure 1 of Nouel also depicts cables (laces 69 and 70) connected
to segments 11 and 12. (Nouel, col. 3, ll. 3-8.)
Nouel does not teach a set of pulleys mounted on each segment of the
corset.
Figure 2 of Kendrick is reproduced below.
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Figure 2 depicts a surgical belt with two segments (2 and 3) and a cable
system (16) connecting the segments and being capable of drawing the
segments together when tightened. (Kendrick, p. 2, left col., ll. 3-6.)
Kendrick teaches that the two segments are closed with the hooks and loops
of buckles. (Kendrick, p. 1, right col. 2, ll. 7-10.)
Kendrick does not teach a set of pulleys mounted on the segments of
the corset or surgical belt.
Smith (ll. 5-23), Mann (ll. 25-34; Fig. 1), Colton ‘749 (ll. 67-70;
Fig. 1), Mestler (ll. 39-52; Figs. 1-3), Fosburgh (ll. 42-54; Fig. 1),
Colton ‘926 (ll. 65-74; Figs. 1 and 3), and Whiteman (ll. 37-55; Figs. 1
and 2) each teach a garment with a cord that passes over pulleys to draw the
edges of the garment together when the cord is pulled. (Ans. 6-7.)
The Examiner concluded that those of skill in the art would have
considered it obvious to have modified the braces taught in either Nouel or
Kendrick with the pulley systems taught in Smith, Mann, Colton ‘749,
Mestler, Fosburgh, Colton ‘926, or Whiteman because of the advantages,
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such as being a strong and durable fastening arrangement and avoiding the
wear and chafing to which laces are subjected when they pass through
traditional eyelets. (See Ans. 7-8; Smith, ll. 37-43.)
Appellant argues that Nouel and Kendrick fail to teach several aspects
of the claimed back brace. Specifically, Appellant argues that Nouel teaches
pulling the segments of the brace together using buckles, not by shortening a
cable, as claimed, and that neither Nouel nor Kendrick teaches using the
mechanical advantage of a number of eyelets or apertures in each segment,
as claimed (App. Br. 5). Though Nouel and Kendrick do not teach these
elements, Smith, Mann, Colton ‘749, Mestler, Fosburgh, Colton ‘926, and
Whiteman teach pulley systems that achieve the claimed limitations. “Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.” In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellant also argues the eyelets and apertures of Nouel and Kendrick
could not have been merely replaced with pulleys, but that the braces would
have had to have been completely redesigned. (App. Br. 6; Reply Br. 2.)
Appellant argues further that such changes would have been substantial and
non-obvious, requiring a different design and relacing that would make it
harder to don and doff the braces. (Id.) For example, Appellant argues that
the eyelets in Nouel and Kendrick are oriented horizontally while the pulleys
of the other prior art are oriented vertically. (App. Br. 7-8.)
Appellant also argues that the double fly and double flap edge
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arrangements taught in the other prior art would be incompatible with the
braces of Nouel and Kendrick and that the stitching taught in Kendrick
would be problematic. (App. Br. 7-8.) According to Appellant, these
differences amount to a teaching away from using a pulley system with the
braces of Nouel or Kendrick. (App. Br. 6-7 and 8; Reply Br. 2.)
Appellant does not direct us to, and we do not find, a teaching in
either Nouel or Kendrick that indicates a pulley system would be
incompatible or that otherwise would have discouraged one in the art from
using a pulley system with the disclosed braces. “Under the proper legal
standard, a reference will teach away when it suggests that the developments
flowing from its disclosures are unlikely to produce the objective of the
applicant's invention.” Syntex LLC v. Apotex, Inc. 407 F.3d 1371, 1380 (Fed.
Cir. 2005). The Examiner concluded that it would have been obvious to
replace the entire cable pulley arrangement/system of the secondary
references for the eyelets and apertures of Nouel and Kendrick. (Ans. 15-
17.) Appellant does not direct us to sufficient evidence or reason that such a
change would have been beyond the skill of those in the art or would have
made the claimed brace unlikely to result. Accordingly, we are not
persuaded that any of the prior art teaches away from the claimed brace.
Furthermore, we are not persuaded that it would have been
unobvious to replace the laces of Nouel and Kendrick with a pulley system
because of the degree of modifications that would have to be done to braces.
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
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structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.

In re Keller, 642 F.2d 413, 425 (C.C.P.A. 1981). Appellant has not
persuaded us that the suggestion of a pulley system and the advantages
taught in Smith would not have made it obvious to use such a system in a
back brace.
Claim 21
Claim 21 recites:
The back brace apparatus as set forth in claim 16,
wherein the set of pulleys is detachably mounted on each brace
segment.

(App. Br. 14, Claims App’x.) The Examiner rejected claim 21 as being
obvious under 35 U.S.C. § 103(a) over Nouel or Kendrick and also
Fosburgh. (Ans. 9-10.) Fosburgh teaches a pulley-block that has slots
enlarged at one end to permit the passage of the entire pulley through it, thus
removing it from the block. (Fosburgh, p. 1, l. 102, through p. 2, ll. 1-16;
Figs. 5 and 6; see Ans. 18.) Figure 5 of Fosburgh is reproduced below.
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Figure 5 depicts the enlarged head of a pulley (b
2
) which fits into slot D of
the mounting block. (Fosburgh, p. 1, .l. 102, through p. 2, ll. 1-16.)
Appellant argues that the pulleys of Fosburgh are not detachable because
they are secured by rivets and are described as being prevented from passing
out of the slots once they are secured to the material of the brace (depicted as
the dashed line). (App. Br. 10; Reply Br. 4-5.)
We are not persuaded by Appellant’s arguments. Fosburgh indicates
that the pulley-block and mounting blocks may be secured with rivets (see
Fosburgh, p. 1, ll. 75-87; Figure 2), but also provides embodiments, such as
in Figure 5, wherein the pulley-block can be removed through slot D
(compare Fosburgh, Fig. 5 with Fig. 2, which depicts rivet heads on the
mounting block). Accordingly, we are not persuaded that a “detachably
mounted” set of pulleys would not have been obvious. (See Ans. 18-19.)
Claim 24
Claim 24 recites:
The back brace apparatus of claim 16, wherein:
the cable has a pair of cable end portions; and one of the
pair of cable end portions is anchored to one of the two brace
segments.
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(App. Br. 14, Claims App’x.)
The Examiner rejected claim 24 under 35 U.S.C. § 103(a) over either
Nouel or Kendrick and also Smith. (Ans. 12-13.) Figure 1 of Smith is
reproduced below.

Figure 1 depicts a garment with a series of friction rollers or pulleys and a
cord (F). (Smith, ll. 18-27.)
Appellant argues that it is not clear that the top portion of the cable is
fixed to the garment in Smith. (App. Br. 12.) Appellant also argues that
Smith teaches away from a fixed cable end because it teaches pulling either
end of the cable to bring the garment edges together. (Id., citing Smith,
ll. 20-33.) The purpose of the cord (F) in Smith is to bring the edges of the
garment together. (See Smith, ll. 18-23: “A cord or cords passing around the
rollers from side to side moves over the rollers almost without friction and
admits of the edges of the garment being brought closely together by a single
pull upon either end.”) If, as Appellant argues, the top portion of the cord
depicted in Smith is not attached, pulling on it would not bring the garment
edges together, but, instead, would pull the cord out of the pulleys. (See
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Ans. 20.) Appellant argues that it is possible the user would hold the top
portion of the cord and that the other figures of Smith show cable ends that
are not anchored at either end. (Reply Br. 5-6.) However, Appellant did not
provide sufficient evidence that such configuration is necessarily taught by
the patent or that the skilled worker would have recognized it as such. To
the contrary, the Examiner’s finding that Figure 1 shows an anchored cable
is reasonable based on the logic that the end F is used to pull the edges of the
garment together, and that the figure fails to depict the other end as free.
The Examiner also rejected claim 24 under 35 U.S.C. § 112, first
paragraph, for a lack of written description. (Ans. 4-5.) The Examiner
found that the term “anchored” in claim 24 is not supported by the
specification because the term was interpreted as meaning fixed or attached
and it implies a structural anchor. (Ans. 4-5.)
Appellant cites to the specification at column 2, lines 65-67,
column 3, lines 13-14, and Figures 1 and 2 element 17 for support for the
term “anchored” in claim 24. (App. Br. 11.) According to Appellant, the
term does not refer to a structural anchor. (Id.)
Figure 2 of the ‘940 patent is reproduced below.
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Figure 2 depicts part of the means for tightening the base of Figure 1,
wherein the cable 12 is attached on fixed point 17 of plate 13a. (‘940 patent
col. 3, ll. 6-15.) Cable 12 is reeled in or out to determine its length and to
tighten or loosen the brace. (‘940 patent , col. 3. ll. 13-15.)
Appellant’s claim 24 does not recite a “structural anchor,” but uses the
term “anchor” to describe one of the pair of cable end portions. Thus, we
agree with Appellant that claim 24 does not require a structural anchor.
We also agree that column 3, lines 13-15, support the term “anchored” in
claim 24 by describing a cable (12) attached to a fixed post (17).
Accordingly, the term “anchored” in Appellant’s claim 24 is supported
by a written description in the ‘940 patent specification.
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DECISION
For the reasons given,
the rejection of claim 16 under 35 U.S.C. § 103(a) over Nouel or
Kendrick, in view of any one of Smith, Mann, Colton ‘749, Mestler,
Fosburgh, Colton ‘926, or Whitman is AFFIRMED;
the rejection of claim 19 under 35 U.S.C. § 103(a) over either Nouel
or Kendrick in view of Smith, Mann, Colton ‘749, Mestler, Fosburgh,
Colton ‘926, or Whitman, and also either Stubbs or Lehman is AFFIRMED;
the rejection of claim 21 under 35 U.S.C. § 103(a) over Nouel or
Kendrick in view of Fosburgh is AFFIRMED;
the rejection of claim 22 under 35 U.S.C. § 103(a) over Nouel or
Kendrick in view of Mestler is AFFIRMED;
the rejection of claim 23 under 35 U.S.C. § 103(a) over Nouel or
Kendrick in view of Mestler and Smith is AFFIRMED;
the rejection of claim 24 under 35 U.S.C. § 103(a) over Nouel or
Kendrick in view of Smith is AFFIRMED; and
the rejection of claim 24 under 35 U.S.C. § 112, first paragraph, for a
lack of written description is REVERSED.

Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

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AFFIRMED
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