Ex Parte Mills

Patent Trial and Appeal Board

Aug 21, 2017

13673323 (P.T.A.B. Aug. 21, 2017)

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.
13/673,323 11/09/2012 Brett W. Mills 0029-001US2 1051
16404 7590
Leber IP Law
4 Laurel Rd.
Lynnfield, MA 01940
EXAMINER
ALKER, KATHLEEN IWASAKI
ART UNIT PAPER NUMBER
3643
NOTIFICATION DATE DELIVERY MODE
08/23/2017 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):
celia@leberiplaw.com
admin @ leberiplaw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRETT W. MILLS
Appeal 2015-003798
Application 13/673,323
Technology Center 3600
Before JAMES P. CALVE, WILLIAM A. CAPP, and
SEAN P. O’HANLON, Administrative Patent Judges.
CALVE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Final Action
rejecting claims 21—26, 28—37, and 41^42. Appeal Br. 1. Claim 38-40 have
been withdrawn. Id. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2015-003798
Application 13/673,323
CLAIMED SUBJECT MATTER
Claims 21, 37, 41, and 42 are independent. Claim 21 is reproduced
below.
21. A device comprising:
a fabric body configured to wrap around an object and
having two ends,
a pair of receiving elements disposed on the fabric body,
and
a removable fabric strap configured to be threaded
through the receiving elements, the fabric strap including, on
one surface, a first portion having hook fasteners and a second
portion having loop fasteners, and, on an opposite surface, a
portion having loop fasteners,
wherein the portions of hook and loop fasteners are
disposed relative to each other such that, when the strap is
threaded through the receiving elements and folded about the
receiving elements in thirds forming three layers of the strap,
substantially all of the loop fasteners are engaged by the hook
fasteners and both of the receiving elements are releasably
captured between the layers formed by folding the strap, and
wherein the receiving elements are disposed on the fabric
body and the fabric strap is configured such that when the
fabric strap is folded about the receiving elements in thirds the
two ends of the fabric body touch or overlap one another.
REJECTIONS
Claims 21—26 and 28—37 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Struntz (US 4,566,207, iss. Jan. 28, 1986).
Claim 41 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Keller (US 756,792, iss. Apr. 5, 1904) (“Keller ’792”) in view of Ruetenik
(US 7,445,051 B2, iss. Nov. 4, 2008) and Struntz.
Claim 42 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Keller (US 1,479,000, iss. Jan. 1, 1924) (“Keller ’000”) and Struntz.
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Appeal 2015-003798
Application 13/673,323
ANALYSIS
Claims 21—26 and 28—37
as unpatentable over Struntz
The Examiner found that Struntz discloses a device with the features
recited in independent claims 21 and 37, except a body made of fabric with a
strap dimensioned so the ends of the body touch or overlap when the fabric
strap is folded in thirds about the receiving elements. Final Act. 2—3, 7—8.
The Examiner determined it would have been obvious to modify the fabric
strap of Struntz to have a shorter length so that when the strap is folded
about the receiving elements in thirds, the ends of the fabric body are pulled
together to touch or overlap and thereby produce a tight fit on a small foot.
Id. at 4, 8—9. The Examiner found that the only difference between the prior
art and claims 21 and 37 was the claimed relative dimensions and a device
having the claimed relative dimensions would not perform differently than
the prior art device. Id. The Examiner also reasoned that the claimed device
therefore was not patentably distinct from the prior art device as a result. Id.
Appellant argues that Struntz does not teach a strap that is configured
to have the ends of the shoe body touch or overlap one other when the strap
is folded in thirds. Appeal Br. 5—6. Appellant argues that the positioning of
the claimed receiving elements and length of the strap define where the ends
of the fabric body are relative to each other when the strap is folded in a tri­
fold position and this positioning of the ends is important to the protection of
a wrapped object, such as a horse’s leg or hoof, without using a tongue. Id.
at 6. Appellant further argues that a skilled artisan would not have been
motivated to provide a shorter strap on Struntz for a tighter fit when Struntz
teaches that the strap already provides a tight fit for the shoe. Id. at 6—7.
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Appeal 2015-003798
Application 13/673,323
The Examiner’s reason for modifying the fabric strap of Struntz to
have a shorter length so the two ends of the fabric body are pulled together
to touch or overlap one another and provide a tight fit on a small foot when
the strap is folded (Final Act. 8) is not supported by a rational underpinning.
A mere change in the size of a component may be an obvious modification if
the claimed size or configuration does not perform differently than the prior
art configuration, as the Examiner recognizes. See id. at 8—9.
Appellant’s receiving elements (rings 1, 2) are disposed on the fabric
body and the fabric strap is folded in thirds so that the two ends of the fabric
body touch or overlap one another, as claimed. Appellant discloses that this
configuration affects how the replaceable securing member (strap 22) exerts
securing forces on protective body portion 24 and also allows a user to apply
an effective securing force to the protective body member when it is secured
to a horse’s body part. Spec. Tflf 15—16, Figs. 1, 3—5.
Struntz discloses a strap that replaces conventional shoe laces to hold
a shoe tightly to the foot when it is pulled tightly. Struntz, 1:5—7, 2:45—57.
To use the fastener, one simply draws the ends tight and
applies finger pressure to the upper free end 100 thereby
securing all three layers together at the center in the space
between the edges of the opening 82 of the shoe.
Id. at 4:34—38 (emphasis added), Fig. 4.
Struntz’s strap is configured to secure a shoe to a foot by folding the
strap into three layers (like the claimed strap), but the layers are secured to
one another with hook and loop fasteners in opening 82, which is between
edges 84, 86 of the shoe fabric (unlike the claimed strap). Therefore, we are
not persuaded that a skilled artisan would have been motivated to modify the
length of the strap of Struntz’s shoe to pull edges 84, 86 together as claimed.
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Appeal 2015-003798
Application 13/673,323
The Examiner’s proposed modification would render Struntz’s shoe
unsuitable for its intended purpose of securing the shoe to a person’s foot.
Pulling edges 84, 86 together to touch or overlap, as claimed, would close
opening 82 and prevent the three layers of strap 96 from being secured to
one another, as Struntz requires. This is so whether upper strap 92 is used
with eyelets 74 or lower strap 93 is used with elongated rings 110 because
both configurations require all of the three layers of the straps to be secured
in opening 82 formed between edges 84, 86. Pulling edges 84, 86 together
to touch or overlap as the Examiner proposes (Ans. 3—5; Final Act. 4) would
eliminate open space 82 between eyelets 74 and elongated rings 110 where
the three layers of upper strap 92 or lower strap 93 must be secured together,
as Struntz requires. Struntz, 4:34—64. Pulling edges 84, 86 together would
thus preclude the three layers of upper and lower straps 92, 93 from being
secured to one another, as there would not be any area between eyelets 74 or
elongated rings 110 in which the strap could overlap. See In re Gordon, 733
F.2d 900, 902 (Fed. Cir. 1984) (a proposed modification that renders the
prior art inoperable for its intended purpose teaches away from a proposed
modification); see also In re ICON Health and Fitness, Inc., 496 F.3d 1374,
1381 (Fed. Cir. 2007) (“a reference may teach away from a use when that
use would render the result inoperable.”) (citation omitted). Furthermore,
we are persuaded that the Examiner’s suggestion to move eyelets 110 further
away from each other to create area in which lower strap 93 could overlap
when side edges 84, 86 are in contact (Ans. 4—5) is based on impermissible
hindsight because, as correctly noted by Appellant (Reply Br. 2; Appeal Br.
6—7), Struntz’s shoe already provides for a tight fit with its configuration as
disclosed in Figure 4 (see, e.g., Struntz 2:50-53).
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Appeal 2015-003798
Application 13/673,323
The Examiner also proposes to move elongated rings 110 apart so the
edges touch or overlap to provide more adjustability and a tight fit on small
feet. Ans. 4—5. We are not persuaded that moving rings 110 apart provides
greater adjustability when Struntz teaches that the straps are pulled tightly
across the opening for a tight fit. Struntz, 2:45—65, Figs. 1—6. The opening
limits the degree of adjustability and degree to whether the side edges can be
pulled together, as discussed above. Nor are we persuaded that a skilled
artisan would have been motivated to pull the shoe edges together to touch
or overlap to provide a tighter fit when Struntz teaches that the shoe already
provides a tight fit that can be tightened to a desired degree when the straps
are tightened across the opening. Id. at 2:50-53, 3:45—53, 5:19-27.
Thus, we do not sustain the rejection of claims 21—26 and 28—37.
Claim 41 as unpatentable over
Keller ’792 in view of Ruetenik and Struntz
The Examiner found that Keller ’792 teaches a frustoconical-shaped
hoof boot, as recited in independent claim 41, but lacks a fabric body and
removable strap that is folded about the receiving elements so the two ends
of the fabric body touch or overlap. Final Act. 9—10. The Examiner found
that Ruetenik teaches a hoof boot with a fabric body, and Struntz teaches a
shoe with the receiving elements and removable fabric strap. Id. at 10—11.
The Examiner determined that it would have been an obvious, simple
substitution of the fastening mechanism of Struntz for that of Keller ’792 for
predictable results. Id. at 11. The Examiner reasoned that it would have
been an obvious change in size to shorten the fabric strap of Keller ’792 to
pull the fabric body together so the ends touch or overlap when the strap is
folded in thirds to produce a tight fit on a small hoof. Id. at 12.
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Appeal 2015-003798
Application 13/673,323
Appellant argues that claim 41 includes all of the relevant limitations
of claim 21 and therefore is patentable for the same reasons because neither
Keller ’792 nor Ruetenik cures the deficiencies of Struntz discussed above.
Appeal Br. 7—8. Appellant also argues that a skilled artisan would have used
the hook and loop carrying straps 115, 116 of Ruetenik, which is for a horse
boot, rather than Struntz’s foldable strap, which is for a shoe. Id. at 8.
For the reasons discussed above for claims 21 and 37, we find that a
skilled artisan would not have been motivated to modify the horse boot of
Keller ’792 to include the folded strap of Struntz as a simple substitution for
predictable results (Final Act. 11) because the proposed modification would
have rendered Keller ’792 inoperable for its intended use of securing a boot
to a horse’s hoof. The Examiner has not explained sufficiently how placing
Struntz’s folded strap, which secures the three layers together in an opening
between the edges of shoe fabric that are pulled together, would be a simple
substitution on the horse boot of Keller ’792, which already has overlapping
edges at the buckle, and thus lacks an opening between the edges where the
three layers of Struntz’s strap can be secured together as Struntz requires.
Thus, we do not sustain the rejection of claim 41.
Claim 42 as unpatentable
over Keller ’000 and Struntz
The Examiner found that Keller ’000 teaches a protective leg wrap for
a horse as recited in independent claim 42, but lacks a removable fabric strap
with hook and loop fasteners and receiving elements disposed on the body
with the fabric strap configured to cause the two ends of the fabric body to
touch or overlap one another when the fabric strap is folded in thirds about
the receiving elements, but Struntz teaches this feature. Final Act. 12—14.
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Appeal 2015-003798
Application 13/673,323
The Examiner determined it would have been obvious to substitute the
fastening mechanism of Struntz for that of Keller ’000 (strap and buckle) as
a simple substitution for predictable results and to modify the strap to have a
length that pulls the ends of the fabric body together so they touch or overlap
one another to produce a tight fit on a small leg. Id. at 14—15.
Appellant argues that claim 42 includes all the limitations of claim 21
and is patentable for the same reasons because Keller ’000 does not cure the
deficiencies in Struntz. Appeal Br. 9. Appellant argues that a skilled artisan
would not modify Keller ’000 with the shoe strap of Struntz. Id.
For the reasons discussed above for claims 21 and 37, we find that a
skilled artisan would not have been motivated to modify the tendon boot of
Keller ’000 to include the folded strap of Struntz as a simple substitution for
predictable results (Final Act. 14) because the proposed modification would
have rendered Keller ’000 inoperable for its intended use of securing a boot
to a horse’s leg. The Examiner has not explained sufficiently how placing
Struntz’s folded strap, which secures the three layers together in an opening
between the edges of shoe fabric that are pulled together, would be a simple
substitution on Keller ’000’s tendon bandage boot, which already wraps
completely around a horse’s leg without leaving any opening for Struntz’s
three strap layers to be secured together as Struntz requires. Keller ’000,
Figs. 1—5. Thus, we do not sustain the rejection of claim 42.
DECISION
We reverse the rejections of claims 21—26, 28—37, and 41^42.
REVERSED
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