Ex Parte Julian et al

Patent Trials and Appeals BoardJan 11, 2019

14406793 - (D) (P.T.A.B. Jan. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/406,793 12/10/2014 32692 7590 01/15/2019 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 FIRST NAMED INVENTOR Dominic J. Julian 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 69935US011 4981 EXAMINER ORKIN, ALEXANDER J ART UNIT PAPER NUMBER 3771 NOTIFICATION DATE DELIVERY MODE 01/15/2019 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DOMINIC J. JULIAN and JEREMY J. JACOBS 1 Appeal2018-000680 Application 14/406, 793 Technology Center 3700 Before JAMES P. CALVE, BRETT C. MARTIN, and MICHELLE R. OSINSKI, Administrative Patent Judges. CAL VE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134(a) from the Office Action rejecting claims 1-21. Appeal Br. 2. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 3M Company and 3M Innovative Properties Company are identified as the real parties in interest (see Appeal Br. 1) and 3M Innovative Properties Company is the Applicant pursuant to 37 C.F.R. Â§ 1.46. Appeal2018-000680 Application 14/406,793 CLAIMED SUBJECT MATTER Claims 1, 13, and 21 are independent. Claim 1 is reproduced below. 1. A pressure pad for transferring pressure to an anatomical structure, the pad comprising a base; an interior support comprising a rigid material proximate to the base; a body comprising a soft material projecting outwardly from the base and at least partially enveloping the interior support; a protrusion extending outwardly from the body, at least one geometric feature of the protrusion corresponds to at least one geometric feature of the interior support. Appeal Br. 10 (Claims App.). REJECTI0NS 2 Claims 1, 6-10, 12-18, 20, and 21 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Weaver, II (US 6,755,800 B2, iss. June 29, 2004) ("Weaver") and Nyi (US 7,637,883 B2, iss. Dec. 29, 2009). Claims 2--4 and 19 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Weaver, Nyi, and Babaev (US 7,740,645 B2, iss. June 22, 2010). Claim 5 is rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Weaver, Nyi, and Szlema (US 6,149,616, iss. Nov. 21, 2000). 2 The parties both assert that claims 1-21 stand rejected, but neither party identifies a prior art rejection of claim 11. See Final Act. Summary, 2---6; Appeal Br. 4--9. This disparity is mooted by our decision to reverse the rejection of independent claim 1 from which claim 11 depends. 2 Appeal2018-000680 Application 14/406,793 ANALYSIS Claims 1, 6--10, 12-18, 20, and 21 Unpatentable over Weaver and Nyi The claimed pressure pads are used in orthopedic devices that apply direct pressure to anatomy like tendons to protect healthy or injured joints and to promote healing of certain injuries. Spec. 1: 1-9. Known pads are made from rigid or soft materials. Id. at 1:9-11. Rigid materials contribute to discomfort because the pads do not conform to anatomical contours and can be uncomfortable to wear. Id. at 1: 14--16. Soft materials cause the pads to compress more easily and distribute forces over a larger area decreasing the direct force applied to an anatomical feature so additional force must be provided by a strap or pressure device that reduces comfort. Id. at 1: 16-20. The claimed pressure pad uses a dual density pad with an outer layer body made of a soft material at least partially enveloping an interior support made of a rigid material that floats in the soft, compressible body material. Id. at 3:31--4: 18. The interior support provides increased localized pressure while the soft, flexible outer body and protrusion conform to anatomical structures to distribute pressure forces for increased comfort. Id. at 5:3-11. The Examiner finds that Weaver discloses a pressure pad as recited in independent claims 1, 13, and 21, comprising a pad base 11, a body (raised portion 12) made of a soft material projecting outwardly from base 11, and a protrusion 13 extending outwardly from body 12 and corresponding to an interior support, but Weaver lacks a rigid interior support. Final Act. 3; Ans. 3. The Examiner finds that Nyi discloses a similar device having an interior support (pressure transmitting member 18) that is a rigid member housed in pockets or pouches of elastic main body 12. Final Act. 3; Ans. 3--4. 3 Appeal2018-000680 Application 14/406,793 The Examiner determines it would have been obvious to use the rigid interior support ofNyi in the pressure pad of Weaver to transmit a focused pressure to the area of interest. Final Act. 3. The Examiner reasons that Weaver uses raised portion 12 and protrusion 13 to apply both localized and distributed pressure, and Nyi's rigid member 18 will help to apply focused pressure. Ans. 3. Appellants argue that neither Weaver nor Nyi teaches a pressure pad made of different materials, and the Examiner fails to explain where Weaver teaches a separate interior support at least partially enveloped by a body of a soft material. Appeal Br. 5-6. Appellants argue that the force transmitting members 32 ofNyi are made of a single material and attached or adhered to a flexible main body 12 that is wrapped around the hand of a wearer and the flexible main body is not part of the pressure pad. Id. at 6. Because Weaver teaches a pressure pad made of a soft, compressible material and Nyi teaches a pressure pad made of a rigid or semi-rigid material, Appellants argue there is no motivation to combine their teachings and include Nyi's rigid pressure pads 32 in a portion of Weaver's compressible pressure pads. Reply Br. 3. The Examiner is correct that Weaver teaches to make base 11 of semi- rigid material and raised portion 12 and protrusion 13 of a soft foam or other compressible material such as a gel, a thin or viscous liquid, or gas. Weaver, 2:37--42. However, both raised portion 12 and protrusion 13 are made of the same soft, compressible material. The Examiner does not identify a separate "interior support" contained in raised portion 12 or protrusion 13. See Final Act. 3; Ans. 3. If the Examiner treats some undefined part of raised portion 12 as an interior support, such an "interior support" still comprises the same material as raised portion 12 and protrusion 13. 4 Appeal2018-000680 Application 14/406,793 Like Weaver, Nyi teaches a pressure pad comprising base 34 with raised projections 36-40. Nyi, 8:63-9: 10, Figs. 8, 9. Nyi also teaches a simpler pressure pad in the form of disc-like 14 and tubular 16, 18 force transmitting members. Id. at 7:30-8:28, Fig. 7. Nyi teaches to make these pressure transmitting members from a rigid or semi-rigid material to impart focused pressure onto tendons of interest when they are fastened to elastic main body 12 that wraps around a wearer's hand. Id. at 9:18-39. Nyi also teaches that the pressure transmitting members can be adhesively bonded to an inner surface of main body 12, housed in pockets/pouches of main body 12, or attached to main body by hook and loop fasteners. Id. at 9:63-10:10. Thus, Weaver and Nyi teach prior art pressure pads that are made of the same material----either a soft, compressible material or a rigid material. Neither reference provides a teaching or suggestion to make a pressure pad of both types of material with a rigid interior support partially enclosed in a soft outer body having a protrusion. The main elastic body 12 ofNyi is not part of pressure pads 14--20, 32. It wraps around the wrist of a wearer and positions the pressure transmitting members at the desired anatomy feature. Even if main elastic body 12 is considered part of a pressure pad, the Examiner has not explained why a skilled artisan would have placed a rigid interior support ofNyi inside the soft, compressible raised portion 12 of Weaver's pressure pad, rather than placing Weaver's entire pressure pad 11, 12, 13 inside the elastic body as Nyi does. Because Weaver provides no teaching of a separate interior support, and both references teach pressure pads with raised protrusions/projections made of the same material as the body of the pressure pad, the Examiner's reasoning is not supported by a rational underpinning. 5 Appeal2018-000680 Application 14/406,793 Accordingly, we do not sustain the rejection of independent claims 1, 13, and 21, or their respective dependent claims 6-10, 12, 14--18, and 20. Claims 2-5 and 19 Unpatentable over Weaver, Nyi, and Babaev/Szlema The Examiner's reliance on Babaev and Szlema to teach features of dependent claims 2-5 and 19 (see Final Act. 5---6) does not cure the deficiencies of Weaver and Nyi as to claims 1 and 13 from which these claims depend. Thus, we do not sustain the rejections of claims 2-5 and 19. DECISION We reverse the rejections of claims 1-21. REVERSED 6