Ex Parte Brown

Patent Trial and Appeal BoardDec 21, 2016

12852940 (P.T.A.B. Dec. 21, 2016)

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. 3512.002 4867 EXAMINER JACKSON, BRANDON LEE ART UNIT PAPER NUMBER 3772 MAIL DATE DELIVERY MODE 12/852,940 08/09/2010 40842 7590 B. CRAIG KILLOUGH P. O. DRAWER H CHARLESTON, SC 29402 12/21/2016 Adam C. Brown 12/21/2016 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 ADAM C. BROWN Appeal 2015-003398 Application 12/852,940 Technology Center 3700 Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Adam C. Brown (Appellant) appeals under 35 U.S.C. § 134(a) from the Examiner’s non-final decision rejecting claims 1—4.1 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellant’s invention relates to “an arch strap for the treatment of foot pain.” Spec. para. 1. i Claims 5—7 have been canceled. Br. 10 (Claims App.) Appeal 2015-003398 Application 12/852,940 Claim 1, the sole independent claim, is representative of the claimed invention and reads as follows: 1. An arch strap for the treatment of pain in the heel of a wearer’s foot due to plantar faciitis, posterior tibial tendonitis and capsulitis consisting of: a first portion shaped and sized to fit only under the arch beneath a wearer’s foot, along the lateral portion of said wearer’s foot from the fifth metatarsal head to the heel of said first portion extending upwardly along each side of said wearer’s foot; an elongated elastic strip having a first end attached to one side of said first portion and extending around the wearer’s heel to a second end of said elongated elastic strip positioned at the other side of said wearer’s foot where said second end is attached to said other side of said first portion; said first portion being held in place on said wearer’s arch by an adhesive. THE REJECTION The Examiner has rejected claims 1—4 under 35 U.S.C. § 102(b) as being anticipated by Naimer (US 6,573,419 B2, issued June 3, 2003). ANALYSIS Claim 1 recites, in part, “a second end of said elongated elastic strip positioned at the other side of said wearer’s foot where said second end is attached to said other side of said first portion.” Br. 10 (Claims App.). The Examiner finds that elongated elastic strip 12 of Naimer has “a second end that is fully capable of being attached to a second end of the pad 2 Appeal 2015-003398 Application 12/852,940 (first portion 14) after the strip (12) is wrapped about a body part.” Non-Final Act. 3. Appellant asserts that Naimer does not suggest that strip 12 is attached to first portion 14 because “the compressive dressing (strip 12) of Naimer is held in place by adhering to itself.” Br. 7. The Examiner responds that there is “no structural differences between the claimed invention and the Naimer device (10),” and that the device of Naimer includes “an elastic strip (12) that is fully capable of be[ing] wrapped around the user’s heel and adhered to the distal end of the first portion (14).” Ans. 4. Naimer discloses that “[a] portion 22 of strip 12 which is not covered by absorbent pad 14 is adapted to directly contact a side of strip 12 opposite of absorbent pad 14 or a back side of strip 12 ... to self-adhere. i.e., to adhere to itself.” Naimer, col. 6,11. 19-24. As such, we agree with Appellant (see Br. 7) that the strip of Naimer, used as designed, is at odds with the explicit claim language affirmatively requiring that “said second end is attached to said other side of said first portion.” Moreover, even if we were to accept that the claim requires only that the second strip be capable of being so attached, because an end of the pad would provide a relatively small attachment area, the Examiner does not adequately explain how the strip of Naimer is capable of being attached thereto, given that the strip of Naimer is designed to exert a compressive force sufficient to hold the strip in place for a period of time, and provide a large, continuous contact area. See id., col. 6,11. 12-16 and 11. 26-29. 3 Appeal 2015-003398 Application 12/852,940 Accordingly, for the foregoing reasons, we do not sustain the rejection of claims 1—4 under 35 U.S.C. § 102(b) as anticipated by Naimer. DECISION The rejection of claims 1—4 under 35 U.S.C. § 102(b) as anticipated by Naimer is reversed. REVERSED 4