Ex Parte Weaver et al

Patent Trial and Appeal Board

Jul 24, 2013

10409308 (P.T.A.B. Jul. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD

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Ex parte EDWARD LEONARD WEAVER, II and SHERRY ANN HINDS
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Appeal 2011-002814
Application 10/409,308
Technology Center 3700
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Before STEFAN STAICOVICI, JOHN W. MORRISON, and
HYUN J. JUNG, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Edward Leonard Weaver, II and Sherry Ann Hinds (Appellants)
appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting under
35 U.S.C. § 102(b) claims 18-28 as anticipated by Kline (US 5,649,900, iss.
Jul. 22, 1997) and under 35 U.S.C. § 103(a) claims 29-51 and 53 as
unpatentable over Gaylord (US 5,928,172, iss. Jul. 27, 1999) and claim 52 as
unpatentable over Gaylord and Wiesemann (US 5,728,059, iss. Mar. 17,
1998). Claims 1-17 have been allowed by the Examiner. Final Rejection,
mailed July 10, 2006, at 4. We have jurisdiction over this appeal under 35
U.S.C. § 6(b).

INVENTION
Appellants’ invention relates “to an orthopedic device for stabilizing
the thumb.” Spec. 1, para. [0002] and figs. 3 and 4.
Claim 18 is representative of the claimed invention and reads as
follows:
18. An orthopedic device for stabilizing a thumb
of a wearer relative to the wearer's wrist and hand,
said thumb stabilizer comprising:
a) a sleeve including at least one sheet of
material defining a wrist portion for extending at
least partially over the wearer’s wrist, a hand
portion for extending at least partially over the
wearer’s hand, and a thumb portion for extending
over at least two sides of the thumb; and
b) at least two stays wherein one of the stays
is adapted to be coupled to the thumb and hand
portions of the sleeve on one of the sides of the
thumb and wherein another one of the stays is
adapted to be coupled to the thumb and hand
portions of the sleeve on another side of the thumb.
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SUMMARY OF DECISION
We REVERSE.

ANALYSIS
The anticipation rejection
Appellants argue that Kline fails to teach “a sleeve including at least
one sheet of material with a thumb portion for extending over sides of the
thumb and stays adapted to be coupled to opposite sides of the thumb,” as
called for by independent claim 18. Reply Br. 1.
In response, the Examiner takes the position that:
Once the user inserts his/her thumb through the opening and
folds the wrap around portion 4, around the thumb, one stay (of
the three stays 30) would be under the thumb and another one
[of] the stays 30 would be on top of the thumb. Thus, providing
two stays adapted to be coupled to opposite sides of the thumb.
Ans. 4.
We do not agree with the Examiner’s position because like Appellants
we find that Kline specifically teaches that stays 30 have a wrist-engaging
section 32 and a palm-engaging section 34. Reply Br. 2; see also Kline, col.
3, ll. 24-25 and fig. 3a. As such, because “stays (30) are configured to be
positioned along the wearer’s wrist and palm,” we agree with Appellants
that, “if the wearer inserts his or her hand through the thumb opening (6) . . .
there is simply no way for the stays (30) to extend along the thumb, as the
distal ends [34] of the stays [30] would be within the wearer’s palm.” Reply
Br. 2-3; see also Kline, fig. 1. Thus, for the foregoing reasons, we do not
sustain the rejection of claims 18-28 under 35 U.S.C. § 102(b) as anticipated
by Kline.

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The obviousness rejections
Claims 29-51 and 53
Appellants argue that Gaylord fails to disclose a sheet including “an
extended element configured to extend distally along at least past a proximal
joint of . . . the thumb,” as called for by independent claim 29. App. Br. 6.
Appellants further argue that Gaylord fails to disclose “a portion of the sheet
[that] is configured to extend along a substantial portion of the thumb . . . at
least to a distal joint of the thumb,” as called for by independent claim 45.
Reply Br. 4.
The Examiner found that Gaylord discloses “a sheet 25 that includes
an extended portion (the portion of 25 that extends above and to the left of
reference number 29 in fig. 2).” Final Rejection at 3. According to the
Examiner, because the extended portion is attached to thumb straps 31, 35
which “[are] shown extending [in Figure 4 of Kline] . . . to the second joint
of the thumb,” the extended portion extends “at least past a proximal joint,”
as per claim 29. Ans. 5. The Examiner also concludes that, “[i]t would have
been obvious to one having ordinary skill in the art at the time that the
invention was made that the extended portion could be fabricated to extend
beyond at least a portion of a proximal joint.” Final Rejection at 3.
Although we appreciate the Examiner’s position that Figure 4 of
Gaylord shows an extended portion extending to the second joint of the
thumb, we do not agree that Gaylord’s extended portion extends “along1 at
least past a proximal joint . . . of the thumb” (as per claim 29) or “along a

1 An ordinary and customary meaning of the term “along” is “in a line
parallel with the length or direction of.” Merriam-Webster’s Collegiate
Dictionary (10th Ed. 1997).
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substantial portion of the thumb . . . at least to a distal joint of the thumb” (as
per claim 45). Emphasis added. Gaylord’s extended portion does not
extend in a line parallel with the thumb and “at least past a proximal joint of
. . . the thumb,” as per claim 29, or “at least to a distal joint of the thumb,” as
per claim 45. We agree with Appellants that because thumb strap 31
“extends between the thumb and index finger and partially along the base of
the thumb,” Gaylord fails to disclose, “an extended element configured to
extend distally along at least past a proximal joint of . . . the thumb,” as
called for by independent claim 29. Likewise, for the same reasons, Gaylord
fails to disclose “a portion of the sheet [that] is configured to extend along a
substantial portion of the thumb . . . at least to a distal joint of the thumb,” as
called for by independent claim 45. See e.g., Gaylord, fig. 1.
Lastly, we note that the Examiner has failed to provide any articulated
reasoning with rational underpinnings as to why it would have been obvious
to modify the extended portion of Gaylord’s sheet 25 to extend beyond at
least a portion of a proximal joint of the thumb. See In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness") (cited with approval in KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 418 (2007)).
Hence, for the foregoing reasons, we do not sustain the rejection of
independent claims 29 and 45, and their respective dependent claims 30-44,
46-51, and 53 under 35 U.S.C. § 103(a) as unpatentable over Gaylord. See
In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988).

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Claim 52
The Examiner used the teachings of Wiesemann “to provide slits in
the pockets to insert and remove the stays.” Ans. 6; see also Final Rejection,
at 3-4. The teachings of Wiesemann do not remedy the deficiencies of
Gaylord as described supra. Accordingly, we likewise do not sustain the
rejection of claim 52 under 35 U.S.C. § 103(a) as unpatentable over Gaylord
and Wiesemann.

SUMMARY
The Examiner’s decision to reject claims 18-53 is reversed.

REVERSED

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