Ex Parte Latour

Patent Trial and Appeal BoardMar 28, 2019

14447416 (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/447,416 07/30/2014 21003 7590 04/01/2019 BAKER BOTTS L.L.P. 30 ROCKEFELLER PLAZA 44THFLOOR NEW YORK, NY 10112-4498 FIRST NAMED INVENTOR Debra Ann Latour 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. 006910.5949 3125 EXAMINER WATKINS, MARCIAL YNN ART UNIT PAPER NUMBER 3774 NOTIFICATION DATE DELIVERY MODE 04/01/2019 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): DLNYDOCKET@BAKERBOTTS.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DEBRA ANN LATOUR Appeal 2018-007793 Application 14/447,416 1 Technology Center 3700 Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and PHILIP J. HOFFMANN, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. Â§ 134(a), the Appellant appeals from the Examiner's decision rejecting claims 1--4, 6-13, and 16-18. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 "The real party in interest is Shriners Hospital for Children." Appeal Br. 2. Appeal2018-007793 Application 14/447,416 STATEMENT OF THE CASE Claimed Subject Matter Claim 1, the sole independent claim, is representative of the subject matter on appeal and is reproduced below. 1. An anchoring system comprising: (i) a fastener including a base defining a plane and a first clasp-engaging member protruding perpendicularly from the plane of the base to define an axis of rotation and having an outwardly-extending flange, the fastener further including an adhesive suitable to secure the base directly to skin of a wearer, and (ii) a clasp having a first end configured to engage and rotate about the axis of rotation defined by the first clasp- engaging member and a second end configured to engage a cable of a prosthetic or orthotic device, wherein the fastener and clasp are configured to facilitate manual operation of the cable of the prosthetic or orthotic device when the clasp is engaged with the fastener, the adhesive having a sufficient strength to remain adhered to the skin during manual operation of the prosthetic or orthotic device. Rejections2 I. Claims 1, 3, 4, 7-13, and 16-18 are rejected under pre-AIA 35 U.S.C. Â§ 103(a) as unpatentable over Mazur (US 4,011,637, iss. Mar. 15, 1977), Oswald (US 1,153,334, iss. Sept. 14, 1915), and Schottenfels (US 2,079,426, iss. May 4, 1937). II. Claim 2 is rejected under pre-AIA 35 U.S.C. Â§ 103(a) as unpatentable over Mazur, Oswald, Schottenfels, and Hodge (US 2,260,778, iss. Oct. 28, 1941). 2 The Examiner has withdrawn the rejection of claims 1--4, 6-13, and 16-18 under 35 U.S.C. Â§ 112 (pre-AIA), second paragraph. Ans. 2. 2 Appeal2018-007793 Application 14/447,416 III. Claim 6 is rejected under pre-AIA 35 U.S.C. Â§ I03(a) as unpatentable over Mazur, Oswald, Schottenfels, and Davis (US 2003/0073378 Al, pub. Apr. 17, 2003). IV. Claims 1--4, 6-13, and 16-18 are rejected on the ground ofnon- statutory double patenting as being unpatentable over claims 1-14 of Latour (US 8,323,355 B2, iss. Dec. 4, 2012) and Mazur. ANALYSIS Re} ections 1-111 The Examiner's rejection of independent claim 1 relies on Mazur's teaching of a fastener. Final Act. 5. The Examiner finds that Mazur's fastener fails to "include[e] an adhesive substantially as claimed." Id. at 6. Claim 1, as it relates to an adhesive, recites "the fastener further including an adhesive suitable to secure the base directly to skin of a wearer," and "the adhesive having a sufficient strength to remain adhered to the skin during manual operation of the prosthetic or orthotic device." Appeal Br., Claims App. The Examiner turns to Schottenfels to teach an adhesive as claimed. Final Act. 6-7. The Examiner concludes: [I]t would have been obvious to one of ordinary skill in the art . . . to try modifying the device of Mazur by including the adhesive means to the base thereof, as taught by Schottenfels, in order to use the anchoring system of Mazur in any application that would avoid discomfort, negatively affect blood circulation, cause numbness or other troubles, as taught and/or suggested by Oswald, with predictable results and a reasonable expectation of success. 3 Appeal2018-007793 Application 14/447,416 Id. at 7. Accordingly, the Examiner's rejection relies on Oswald only as support for the reason for modifying Mazur' s fastener to have an adhesive. See id. at 6 (citing Oswald 1:13-18). The Appellant argues that the Examiner's rejection of independent claim 1 fails to include an adequate reason for modifying Mazur' s "easily deta[]chable fastener ... with the means to prevent nether garment slipping of Schottenfels." Appeal Br. 16. The Appellant argues that "Oswald suggests that the means to prevent nether garment slipping of Schottenfels would not be an adequate way of supporting a clasp and strap fastener because it is not 'connecting it with the fabric' of the wearer's clothes." Id. at 16-17; see id. at 8, 15 (citing Oswald 1:12-13). The Appellant's argument is persuasive. In response, the Examiner explains: Mazur expressly states it is applicable to any detachable anchor systems (e.g., col. 1, lines 8-9). Oswald expressly teaches a known need for strapless attachment to a user in detachable anchor systems (pg. 1, col. 1, lines 13-18). Schottenfels expressly teaches a known selectable solution of using adhesives to the problem of attaching a detachable anchor system to a user selectable with predictable results and a reasonable expectation of success. Ans. 9. However, the Examiner's response overestimates the breadth of Oswald's teachings. The Examiner's rejection seeks to apply an adhesive, as taught by Schottenfels, on the base of Mazur' s fastener, on the basis of a teaching from Oswald. However, Oswald's teaching addresses a problem not solved by the use of an adhesive on the skin of a wearer. See Appeal Br. 8, 15-17. Accordingly, we determine that the Examiner's reasoning is based impermissible hindsight. 4 Appeal2018-007793 Application 14/447,416 Thus, we do not sustain the Examiner's rejection of independent claim 1 and dependent claims 3, 4, 7-13, and 16-18 as unpatentable over Mazur, Oswald, and Schottenfels. The remaining rejections, based on Mazur, Oswald, and Schottenfels in combination with Hodge or Davis, rely on the same deficiency as discussed above. The deficiency is not cured by the additional findings and reasoning of the remaining rejections. Thus, we do not sustain the rejections of: dependent claim 2 as unpatentable over Mazur, Oswald, Schottenfels, and Hodge; and dependent claim 6 as unpatentable over Mazur, Oswald, Schottenfels, and Davis. Re} ection IV In the Appeal Brief and the Reply Brief, the Appellant does not address the obviousness-type double patenting rejection. 3 Thus, we summarily sustain the Examiner's rejection of claims 1--4, 6-13, and 16-18. DECISION We REVERSE the Examiner's decision rejecting claims 1--4, 6-13, and 16-18 under pre-AIA 35 U.S.C. Â§ 103(a). We SUMMARILY AFFIRM the Examiner's decision rejecting claims 1--4, 6-13, and 16-18 on the ground of non-statutory double patenting as being unpatentable over claims 1-14 of Latour and Mazur. 3 In an Amendment and Response to Final Office Action (filed Oct. 9, 2017; hereinafter "Amendment"), the Appellant acknowledged the obviousness- type double patenting rejection and "reserve[d] the opportunity to file a Terminal Disclaimer." Amendment 12-13. 5 Appeal2018-007793 Application 14/447,416 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 6