DeRoyal Industries, Inc.

Patent Trials and Appeals BoardMar 9, 2021

2020001716 (P.T.A.B. Mar. 9, 2021)

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. 14/133,933 12/19/2013 Michael D. Modglin 68514.US 6133 408 7590 03/09/2021 LUEDEKA NEELY GROUP, P.C. P O BOX 1871 KNOXVILLE, TN 37901 EXAMINER LEE, MICHELLE J ART UNIT PAPER NUMBER 3786 NOTIFICATION DATE DELIVERY MODE 03/09/2021 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): LNG.PATENT@gmail.com docketing@luedeka.com eofficeaction@appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MICHAEL D. MODGLIN, KAREN M. CLEMENTS, CHARLES J. FRENCH III, SARAH O. DAVIS, MICHAEL R. GALANTE, and GREGORY S. HODGE ____________ Appeal 2020-001716 Application 14/133,933 Technology Center 3700 ____________ Before JENNIFER D. BAHR, LISA M. GUIJT, and ALYSSA A. FINAMORE, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134(a) of the rejection of claims 1, 2, 5, 6, and 9–11. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies DeRoyal Industries, Inc. as the real party in interest. Appeal Br. 2. Appeal 2020-001716 Application 14/133,933 2 THE INVENTION Appellant’s invention relates to “adjustable circumferential length lumbar sacral braces.” Spec. ¶ 2. Sole independent claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. An adjustable length brace, comprising: an adjustable length elongate and flexible one-piece body encircling portion made of a soft fabric and having opposite first and second free ends each having a length, the first free end being folded to adjust the length of the first free end and the second free end being folded to adjust the length of the second free end to enable adjustment of the length of the one-piece body encircling portion; and first and second end portions, each having a length shorter than the one-piece body encircling portion, the first end portion being releasably attachable to the folded first free end of the one- piece body encircling portion and the second end portion being releasably attachable to the folded second free end of the one- piece body encircling portion, the first and second end portions being connectable to one another. THE REJECTIONS2 The Examiner relies upon the following as evidence in support of the rejections: NAME REFERENCE DATE Heinze US 5,690,609 Nov. 25, 1997 Garth US 2009/0192425 A1 July 30, 2009 2 The Examiner’s objections to the claims due to informalities are not before us on appeal; rather, the Examiner’s objections are reviewable by petition. Final Act. 2. See 37 C.F.R. § 1.181; MPEP §§ 1002, 1201. Appeal 2020-001716 Application 14/133,933 3 The following rejections are before us for review: I. Claims 1, 2, 9, and 11 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Heinze. II. Claims 1, 5, 6, 10, and 11 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Garth. OPINION Rejection I Regarding independent claim 1, the Examiner finds that Heinze discloses a one-piece body encircling portion (i.e., outer belt 60) having opposite first and second free ends (i.e., “the first free end being the end portion of the belt 60 emerging from the slot 91 to the very left end of the belt 60, and the second free end being the end portion of the belt 60 emerging from the slot 92 to the very end of the belt 60”), as claimed. Final Act. 3 (citing Heinze 7:32–63, Figs. 4). The Examiner also finds that Heinze discloses first and second end portions (i.e., “the first end portion being the left half of inner belt 50 and the left abdominal pad 20, and the second end portion being the right half of inner belt 50 and the right abdominal pad 30”), and that Heinze’s first and second end portions each (i) have a length shorter than the encircling portion; (ii) are releasably attachable to the folded first and second free ends; and (iii) are connectable to one another; as claimed. Id. at 3–4 (citing Heinze, Fig. 4). Appellant argues that the Examiner’s interpretation of the claimed “end portions” is “overly broad” and “unreasonable,” and does not account for the “numerous structural limitations” defining an end portion and recited in claim 1. Appeal Br. 10, 12; Reply Br. 2. Appellant submits that “inner Appeal 2020-001716 Application 14/133,933 4 belt 50 with support pad 20 and support pad 30 of Heinz are structurally and functionally different from the claimed end portions.” Appeal Br. 11. Appellant recites a portion of claim 1, and concludes that “Heinze fails to anticipate claim 1.” Id. at 10–12. Appellant does not explain why the claimed “end portions” fail to read on Heinze’s support pad 20 and inner belt 50, and support pad 30 and inner belt 50, or how the claimed “end portions” are structurally distinguishable from Heinze’s support pad 20 and inner belt 50, and support pad 30 and inner belt 50. Appellant also does not specify which of the additional claim limitations that modify the structure of the claimed end portions are missing from Heinze’s support pad 20 and inner belt 50, and support pad 30 and inner belt 50. See Ans. 9 (“Appellant fails to specifically point out how Heinze’s end portions are structurally and functionally different from the claimed end portions, and which limitations have not been met by Heinze’s device.”). Notably, Heinze’s support pad 20 and inner belt 50, and support pad 30 and inner belt 50, as depicted in Figure 4, each (in combination) appear to have a length shorter than outer belt 60, each are releasably attachable to the folded first and second free ends as found by the Examiner supra via apertures in support pads 20, 30 that receive folded free ends 61, 62; and each are connectable to the other via fastener elements 72, 73; as claimed. To the extent Appellant is arguing that Heinze’s support pad 20 and inner belt 50, and support pad 30 and inner belt 50 provide a different function as compared to Appellant’s end portions 14, 16, claims directed to an apparatus, as here, must be distinguished from the prior art in terms of structure rather than function. See In re Schreiber, 128 F.3d 1473, 1477–78 Appeal 2020-001716 Application 14/133,933 5 (Fed. Cir. 1997); see also Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990) (holding “apparatus claims cover what a device is, not what a device does”). Accordingly, we sustain the Examiner’s rejection of independent claim 1 under 35 U.S.C. § 102(b) as being anticipated by Heinze. Appellant chose not to present arguments for the patentability of claims 2, 9, and 11 apart from the arguments presented for independent claim 1, and therefore, for essentially the same reasons set forth supra, we also sustain the Examiner’s rejection of claims 2, 9, and 11 under 35 U.S.C. § 102(b) as being anticipated by Heinze. Appeal Br. 12. Rejection II The Examiner finds, inter alia, that Garth discloses a one-piece body encircling portion (i.e., left side piece 130, right side piece 140), as claimed, because “the left and right bands form[] a one-piece body . . . when wrapped around the body . . . and attached to each other via fasteners 160/170.” Final Act. 5 (citing Garth ¶¶ 27, 35, Figs. 1, 4). The Examiner determines that “the claim language also does not exclude the body encircling portion from being one-piece when the components are attached to each other.” Ans. 10. Appellant argues, inter alia, that Garth’s left and right side pieces 130, 140 “fail to provide the required one-piece body encircling portion”; rather, Garth’s side pieces 130, 140 “are separate pieces.” Appeal Br. 14 (citing Garth, Fig. 1). Appellant submits that interpreting Garths’ side pieces 130, 140 as a one-piece body “when the Garth brace is installed,” is “an unreasonable claim construction and a strained reference interpretation that is inconsistent with the reach of the claimed subject matter.” Id. at 14–15. Appeal 2020-001716 Application 14/133,933 6 Claim 1 recites, in relevant part (emphasis added): “an adjustable length elongate and flexible one-piece body encircling portion made of a soft fabric and having opposite first and second free ends each having a length.” The Specification and claims as originally filed do not use the claim term “one-piece.” Notably, Figure 6 of the Specification depicts a single, continuous member 18, and the Specification discloses that “[t]o adjust the effective length of each of the end portions 18a and 18b, each of the end portions 18a and 18b may be folded or cut such as at a selected one of lines 18c.” Spec. ¶ 27. In view of the Specification, we construe the claim term “one-piece” (adjective) to have its ordinary meaning: “consisting of or made in a single undivided piece.”3 https://www.merriam- webster.com/dictionary/one-piece (last visited February 22, 2021); see Appendix. Garth discloses, with reference to Figure 1, that “hook portion 112 of left side piece 130 threads through a slot 116 of back piece 150,” and that “hook portion 112 then folds back over a loop portion 114 of left side piece 130 which then mates with loop portion 114 to form a hook and loop fastener.” Garth ¶ 27. Garth also discloses that right side piece 140 functions in a similar way. Id. ¶ 30. As depicted in Figure 1 of Garth, body brace 100 is thus constructed from three separate, connected pieces, which are not a single undivided piece: left side piece 130, back piece 150, and right side piece 140. Therefore, a preponderance of the evidence fails to 3 “[I]n determining the ordinary and customary meaning of the claim term as viewed by a person of ordinary skill in the art, it is appropriate to consult a general dictionary definition of the word for guidance.” Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1322−23 (Fed. Cir. 2005) (en banc)). Appeal 2020-001716 Application 14/133,933 7 support the Examiner’s finding that Garth discloses a one-piece body encircling portion, as claimed. For a prior art reference to anticipate a claim, it must disclose all of the limitations of the claim, “arranged or combined in the same way as in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008). Accordingly, we do not sustain the Examiner’s rejection of claim 1 and claims 5, 6, 10, and 11 depending therefrom, under 35 U.S.C. § 102(b) as being anticipated by Garth. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 9, 11 102(b) Heinze 1, 2, 9, 11 1, 5, 6, 10 102(b) Garth 1, 5, 6, 10 Overall Outcome 1, 2, 9, 11 5, 6, 10 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED IN PART