Bryan Kilbey et al.

Patent Trials and Appeals Board

Nov 30, 2020

2020002218 (P.T.A.B. Nov. 30, 2020)

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.
14/866,057 09/25/2015 Bryan E. Kilbey 21472-31313 7515
38642 7590 11/30/2020
WILEY HORTON
215 SOUTH MONROE STREET
2ND FLOOR
TALLAHASSEE, FL 32301
EXAMINER
TSANG, LISA L
ART UNIT PAPER NUMBER
3642
MAIL DATE DELIVERY MODE
11/30/2020 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 BRYAN E. KILBEY and JULIE WILLIAMS
____________

Appeal 2020-002218
Application 14/866,057
Technology Center 3600
____________

Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
SEAN P. O’HANLON, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–9 and 11–19.2 We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real parties in interest as
“Bryan E. Kilbey and Julie Garella.” Appeal Br. 1.
2 Claims 10 and 20 are cancelled. See Amendment (Dec. 7, 2018).
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THE CLAIMED SUBJECT MATTER
Claims 1 and 11 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A therapeutic device application wrap for an animal’s
hoof, wherein said hoof includes a coronary band, a hoof wall
having anterior, left lateral, right lateral, and posterior portions,
and a hoof sole, comprising:
a. a sole configured to cover substantially all of said hoof
sole;
b. a first retention panel, including:
i. an inward facing surface covered in hook and
loop fastener material,
ii. an outward facing surface,
iii. a lower portion connected to said sole, and
iv. an upward portion that is free;
c. said first retention panel being configured to wrap
around said hoof wall and extend upwards to at least said
coronary band;
d. a second retention panel, including:
i. an inward facing surface covered in hook and
loop fastener material,
ii. an outward facing surface,
iii. a lower portion connected to said sole, and
iv. an upward portion that is free;
e. said second retention panel being configured to wrap
around said hoof wall and extend upwards to at least said
coronary band;
f. a third retention panel, including:
i. an inward facing surface covered in hook and
loop fastener material,
ii. an outward facing surface,
iii. a lower portion connected to said sole, and
iv. an upward portion that is free;
g. said third retention panel being configured to wrap
around said hoof wall and extend upwards to at least said
coronary band;
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h. a first therapeutic device including a panel with hook
and loop fastener material configured to attach to said hook and
loop fastener material on said inward facing surface of said first
retention panel whereby said first therapeutic device can be
selectively attached to said first retention panel;
i. said first retention panel, said second retention panel,
and said third retention panel being configured to join together
in a first continuously connected loop surrounding said hoof,
with said first therapeutic device being secured inside said first
continuously connected loop, with said continuously connected
loop and said first therapeutic device being retained against said
hoof;
j. a first elastic wrap panel attached to said sole and
extending upward therefrom, said first elastic wrap panel
having:
i. a left lateral side with a left attachment panel,
and
ii. a right lateral side with a right attachment panel,
iii. said first elastic wrap panel being configured to
stretch around said first continuously connected loop of
retention panels and secure to said first continuously
connected loop of retention panels, thereby providing an
inward compressive force on said first continuously
connected loop of retention panels and said first
therapeutic device therein; and
k. a second elastic wrap panel attached to said sole and
extending upward therefrom, said second elastic wrap panel
having:
i. a left lateral side with a left attachment panel,
and
ii. a right lateral side with a right attachment panel,
iii. said second elastic wrap panel being configured
to stretch around said first elastic wrap panel and attach
to said first elastic wrap panel, thereby forming a second
continuously connected loop providing additional inward
compressive force on said first continuously connected
loop of retention panels and said first therapeutic device
therein.

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EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Detty US 5,871,458 Feb. 16, 1999
Tilghman US 8,664,466 B2 Mar. 04, 2014
Ruetenik US 9,055,732 B1 June 16, 2015

THE REJECTIONS
I. Claims 11–19 stand rejected under 35 U.S.C. § 112(b) as being
indefinite. Final Act. 2.
II. Claims 1–9 and 11–19 stand rejected under 35 U.S.C. § 103 as
unpatentable over Tilghman, Ruetenik, and Detty. Id. at 3–16.

OPINION
Rejection I – Indefiniteness
Independent claim 11 recites, in relevant part, “hook-and-loop-type
loop material.” Appeal Br. 37 (Claims App.). The Examiner determines
that this limitation renders the claim indefinite “because it is unclear as to
what would be considered within the metes and bounds of a ‘hook-and-loop-
type’ material, [and,] specifically[,] what material would be of the same type
as hook and loop.” Final Act. 2. In the Answer, the Examiner takes the
position that “‘[h]ook-and-loop type material’ is more broad than ‘hook-and-
loop material,’ but Appellants’ application as originally filed does not
indicate what materials, beyond hook and loop material, would be included
in the term ‘hook-and-loop type material.’” Ans. 9.
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Appellant argues that the identified claim language does not render
the claim indefinite and points to the description in the Specification of
“loop material” on the inward facing surface of the three retention panels
being configured to engage with “hook panels” on the therapeutic packs.
Appeal Br. 31 (citing Spec. 14). We agree with Appellant that the scope of
the identified claim language is sufficiently clear so as not to render the
claim indefinite.
We note that claim 11 more precisely recites “hook-and-loop-type
loop material,” as well as “a hook panel configured to attach to said [hook-
and-loop type] loop material.” Appeal Br. 37–38 (Claims App.) (emphasis
added). One of ordinary skill in the art would understand that “hook and
loop” denotes a well-known type of material that encompasses loop material
having loops designed to engage with hooks on hook material, as well as
hook material having hooks designed to engage with loops on loop material.
All such loop materials are “hook-and-loop-type” loop materials, and all
such hook materials are “hook-and-loop-type” hook materials. The
recitation in the claim of “hook-and-loop-type loop material” specifies the
loop material, rather than the hook material. Thus, the inclusion of the word
“type” in this context does not broaden the scope of “hook-and-loop” and
does not render the scope of claim 11 unclear.
For these reasons, we do not sustain the rejection of claim 11, and its
dependent claims 12–19, under 35 U.S.C. § 112(b) as being indefinite.

Rejection II – Obviousness based on Tilghman, Ruetenik, and Detty
In contesting this rejection, Appellant presents arguments for
independent claim 1 (Appeal Br. 25–31), relies on the same arguments for
independent claim 11 (id. at 31), and does not separately argue dependent
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claims 2–9 and 12–19. We select claim 1 as representative, and claims 2–9
and 11–19 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Tilghman discloses a therapeutic wrap for an
animal hoof having most of the limitations recited in claim 1 (see Final Act.
3–6), including, in relevant part, “a sole (84) configured to cover some of the
hoof sole (see figure 15)” (id. at 3). The Examiner also finds that Tilghman
discloses, in relevant part, first, second, and third retention panels (86a and
86b together, 86d, and 86e, respectively) that are “configured to join
together in a first continuously connected loop surrounding the hoof,” and
a first wrap panel (86c) . . . configured to stretch around the first
continuously connected loop of retention panels (see [figures 15
and 16], noting that 86f is attached to 86c and on the outside of
86a, 86b, 86d, 86e to form outermost layers of the wrap in
figure 16), thereby providing an inward compressive force on
the first continuously connected loop of retention panels.
Id. at 4–6. The Examiner finds that
Tilghman does not disclose that the sole is configured to
cover substantially all of the hoof sole, a first therapeutic device
configured to attach to the inward facing surface of the first
retention panel, the three retention panels being configured with
the first therapeutic device secured inside the first continuously
connected loop, or the wrap panels being elastic.
Id. at 6. However, the Examiner finds that Ruetenik teaches a therapeutic
wrap for an animal hoof that includes “a sole (106) configured to cover
substantially all of the hoof sole.” Id. (citing Ruetenik, Fig. 2). The
Examiner determines that it would have been obvious “to modify the sole of
Tilghman be configured to cover substantially all of the hoof sole, in order
to provide stability to the boot and prevent it from moving around on the
hoof when the horse walks.” Id. at 7 (citing Ruetenik, col. 9, ll. 22–53).
The Examiner also finds that Detty
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teaches that it is well-known in the art for the wrap to have a
first therapeutic device (24A; see column 4, lines 11–14 and
39–47) including a panel (84, 86) with hook and loop fastener
material (see column 6, line 66 to column 7, line 15) configured
to attach (via 84, 86, 88, 90) to hook and loop fastener material
(88, 90; see id.) on an inward facing surface of a first retention
panel (22; see figures 3 and 6), whereby the first therapeutic
device can be selectively attached to the first retention panel
(see id. and column 6, line 66 to column 7, line 15); wherein the
wrap forms a continuously connected loop (see, e.g., figure 2)
with the first therapeutic device being retained against the hoof.
See id and Abstract. Detty further teaches that the wrap is made
of neoprene rubber, which is an elastic material. See column 3,
lines 55–58.
Final Act. 7. The Examiner determines that it would have been obvious to
modify the wrap of Tilghman and Ruetenik
to comprise a first therapeutic device including a panel with
hook and loop fastener material configured to attach to the hook
and loop fastener material on the inward facing surface of the
first retention panel whereby the first therapeutic device can be
selectively attached to the first retention panel with the first
therapeutic device being retained against the hoof, as taught by
Detty, in order to treat a specific ailment of the hoof.
Id. at 7–8. The Examiner also determines that it would have been obvious
“to replace the ballistic nylon of Tilghman with the neoprene rubber of
Detty, in order to provide insulation for the therapeutic device.” Id. at 8
(citing Detty, col. 3, l. 55–col. 4, l. 7).
Appellant argues that claim 1 would not have been obvious because it
recites a combination of elements that “offers significant advantages that are
neither taught nor suggested by the prior art.” Appeal Br. 25; see also id. at
30 (asserting that the claim “represents structural advantages that are simply
not suggested in the prior art”). In particular, Appellant asserts that the
claimed structure “(1) creates a stable uncompressed configuration, and
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(2) allows the user to use both hands to stretch and apply the first and second
elastic wrap panels recited in subparagraphs (j) and (k).” Reply Br. 1; see
also Appeal Br. 28–29 (making similar arguments). Appellant also asserts
that neither of Tilghman and Ruetenik “suggests the advisability of a
compression layer.” Appeal Br. 30. This line of argument is not
persuasive. As an initial matter, Appellant’s argument regarding the prior
art’s purported lack of a stable uncompressed configuration or a structure
that allows a user to use both hands to apply the elastic wrap panels is not
commensurate with the scope of claim 1, which does not require these
features. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (noting that it is
well established that limitations not appearing in the claims cannot be relied
upon for patentability); see also Ans. 4 (“[C]laim 1 [does not] . . . recite[]
either any stable uncompressed configuration, or a user being able to employ
both hands.”).
Moreover, although the Examiner’s stated reasoning for combining
reference teachings is not based on the same advantages asserted by
Appellant (i.e., providing a stable uncompressed configuration, and allowing
a user to use two hands to stretch the first and second wrap panels), one of
ordinary skill in the art may be prompted to do what the inventor has done,
but for a different purpose or to solve a different problem. It is not
necessary that the prior art suggest the modification to achieve the same
advantage or result discovered by an applicant. See, e.g., In re Kemps, 97
F.3d 1427, 1430 (Fed. Cir. 1996) (citing In re Dillon, 919 F.2d 688, 693
(Fed. Cir. 1990) (en banc) (“Although the motivation to combine here differs
from that of the applicant, the motivation in the prior art to combine the
references does not have to be identical to that of the applicant to establish
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obviousness.”)). Here, the Examiner reasons that (i) modifying Tilghman’s
sole to cover substantially all of the hoof sole would “provide stability to the
boot and prevent it from moving around on the hoof when the horse walks”;
(ii) modifying Tilghman to add therapeutic devices with hook and loop
material would facilitate “treat[ing] a specific ailment of the hoof”; and
(iii) replacing Tilghman’s ballistic nylon with neoprene rubber would
“provide insulation for the therapeutic device.” See Final Act. 6–8 (citing
Ruetenik, 9:22–53; Detty, 3:55–4:7).
Appellant argues that “[n]othing in Tilghman suggests combining
Detty with Tilghman.” Appeal Br. 30. We are not persuaded by this
argument because it appears to insist on an explicit teaching, suggestion, or
motivation in the cited references for the Examiner’s proposed modifications
of Tilghman, whereas such an argument has been foreclosed by the Supreme
Court. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415, 419 (2007) (stating
that a rigid insistence on teaching, suggestion, or motivation is incompatible
with its precedent concerning obviousness). Rather, the Court requires that
we look to whether the Examiner has provided “some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with
approval in KSR, 550 U.S. at 418). Here, the Examiner articulates adequate
reasoning based on rational underpinnings as to why it would have been
obvious to modify Tilghman’s hoof wrap to include the sole covering
substantially all of the hoof sole, therapeutic devices with hook and loop
material for attaching to retention panels, and elastic material for the wrap
panels. See Final Act. 6–8. Appellant’s argument does not specifically
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address the Examiner’s reasoning set forth in the rejection or explain why
the reasoning is deficient.
Appellant argues that Tilghman “does not suggest any feature
providing inward compression. Tilghman is simply a bandage configured to
wrap around a hoof where the layers are required for the disparate ‘lobes’ to
actually cover the hoof.” Appeal Br. 30. This argument does not apprise us
of error. As discussed above, the Examiner finds that that Tilghman
discloses a first wrap panel (lobe 86c) configured to stretch around the
retention panels and provide inward compressive force. Final Act. 5–6. The
Examiner explains that, in Tilghman, “the additional layer provided by 86c
being wrapped over the loop of retention panels provides inward
compressive force, at least because folding inwardly and wrapping an
additional layer over the loop provides additional inward pressure and
weight directed inwardly.” Ans. 8 (citing Tilghman, Figs. 15, 16). In this
regard, Appellant does not specifically address the particular finding as to
the disclosure of Tilghman set forth by the Examiner, nor offer any evidence
or persuasive technical reasoning that identifies a deficiency in the
Examiner’s position. Moreover, the Examiner reasons that replacing
Tilghman’s ballistic nylon with neoprene rubber would “provide[] excellent
insulative and elastic properties appropriate for use with the therapeutic
device.” Final Act. 17 (citing Detty, 3:55–4:7); Detty, 3:67–4:3 (stating that
“[a]nother advantage of neoprene or other similar materials for the brace is
that since such materials can stretch virtually omnidirectionally, the brace
when wrapped about the ankle will apply a uniform compression thereto.”).
Appellant argues “that Detty does not in fact disclose the retention of
a therapeutic device against a hoof. Detty discloses the retention of a
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therapeutic device against a horse’s fetlock.” Reply Br. 2. Appellant asserts
that
Detty depends upon the fact that the fetlock has a larger
circumference than the anatomy above it and below it. A
compressive brace can be placed in this position and it will not
tend to migrate out of position. This is not true of a horse’s
hoof. If anything, Detty teaches away from the combination
proposed.
Id. We are unpersuaded by this line of argument because it attacks Detty
individually, rather than the combination of reference teachings relied on by
the Examiner in the rejection. See In re Keller, 642 F.2d 413, 425 (CCPA
1981) (one cannot show nonobviousness by attacking references
individually when the rejection is based on a combination of the references).
As discussed above, the Examiner relies on Tilghman for disclosing a
therapeutic wrap for an animal’s hoof. Final Act. 3. The Examiner relies on
Detty only for teaching therapeutic devices having hook and loop fastener
material (i.e., treatment inserts 24A–24C) and the use of an elastic material
(i.e., neoprene rubber) for wrap panels. Id. at 7 (citing Detty, 3:55–58;
4:11–14, 4:39–47, 6:66–7:15). The Examiner’s use of Detty only for its
teaching of therapeutic devices and elastic material, and not for its particular
structure or use with a horse’s fetlock, is appropriate in that all of the
features of the secondary reference need not be bodily incorporated into the
primary reference (see Keller, 642 F.2d at 425) and an artisan is not required
to blindly follow the teaching of one prior art reference over the other
without the exercise of independent judgment (Lear Siegler Inc. v. Aeroquip
Corp., 733 F.2d 881, 889 (Fed. Cir. 1984)). Thus, Appellant’s argument
against Detty individually does not apprise us of error in the Examiner’s
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determination that the disputed limitation is rendered obvious by the
combination of reference teachings presented in the rejection.
Moreover, in order to “teach away,” a reference must “criticize,
discredit, or otherwise discourage the solution claimed.” In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004). Here, Appellant does not identify, nor do
we find, any disclosure in Detty that criticizes, discredits, or otherwise
discourages the use of therapeutic devices and elastic wrap with a
therapeutic wrap for a hoof, such as that of Tilghman. The fact that Detty’s
disclosure is directed to a brace for a horse’s fetlock does not constitute a
teaching away from the Examiner’s proposal to modify Tilghman’s hoof
wrap to include Detty’s therapeutic devices (i.e., treatment inserts 24A–C)
and elastic material (i.e., neoprene rubber). See Final Act. 7.
For the above reasons, Appellant does not apprise us of error in the
Examiner’s conclusion of obviousness with respect to claim 1. Accordingly,
we sustain the rejection of claim 1, and claims 2–9 and 11–19 falling
therewith, under 35 U.S.C. § 103 as unpatentable over Tilghman, Ruetenik,
and Detty.

CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
11–19 112(b) Indefiniteness 11–19
1–9, 11–19 103 Tilghman,
Ruetenik, Detty
1–9, 11–19
Overall
Outcome
1–9, 11–19
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED