Ex Parte Modglin

Patent Trial and Appeal BoardMar 29, 2018

13768060 (P.T.A.B. Mar. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/768,060 02/15/2013 Michael D. Modglin 408 7590 04/02/2018 LUEDEKA NEELY GROUP, P.C. P 0 BOX 1871 KNOXVILLE, TN 37901 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. 67858.US 9285 EXAMINER NGUYEN,CAMTUTRAN ART UNIT PAPER NUMBER 3772 NOTIFICATION DATE DELIVERY MODE 04/02/2018 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): docketing@luedeka.com LNG.PA TENT@gmail.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 Appeal2017-007701 Application 13/768,060 Technology Center 3700 Before WILLIAM A. CAPP, RICHARD H. MARSCHALL, and SEAN P. O'HANLON, Administrative Patent Judges. MARSCHALL, Administrative Patent Judge. DECISION ON APPEAL Appellant 1 seeks our review under 35 U.S.C. Â§ 134(a) of the Examiner's final decision rejecting claims 1-9. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 The Appellant is the Applicant, DeRoyal Industries, Inc., which the Appeal Brief identifies as the real party in interest. Appeal Br. 2. Appeal2017-007701 Application 13/768,060 THE CLAIMED SUBJECT MATTER Appellant's claimed subject matter relates "to the field of orthopedic bracing." Spec. i-f 2. Claims 1, 7, and 9 are independent. Claim 1 is reproduced below and is illustrative of the claimed subject matter. 1. A brace for application to a body joint to maintain the joint in a substantially static position, the brace comprising: a substantially rigid brace member that substantially maintains its shape absent application of a substantial bending force and provides biomechanical support, stabilization and/or immobilization to the body joint to maintain the joint in a first substantially static position with virtually no range of motion; and a tensioning system connected to the brace member and including a tensionable member and a tensioning member each operatively associated with the brace member, wherein, the tensioning member is operable to adjustably impart tension to the tensionable member for applying a force to the brace member for adjusting the angulation of the brace as a function of the tension applied to the tensionable member to maintain the joint in a second and different substantially static position with virtually no range of motion and corresponding to the adjustment of the angulation of the brace. Appeal Br. 14 (Claims App.). THE REJECTIONS Appellant seeks review of the following rejections: 1. Claims 1--4 and 6-8 under 35 U.S.C. Â§ 102(b) as anticipated by Bodenschatz (US 2006/0173391 Al, pub. Aug. 3, 2006). 2. Claim 5 under 35 U.S.C. Â§ 103(a) as unpatentable over Bodenschatz and Alleyne (US 7,654,972 B2, iss. Feb. 2, 2010). 2 Appeal2017-007701 Application 13/768,060 3. Claim 9 under 35 U.S.C. Â§ 103(a) as unpatentable over Bodenschatz and Joseph (US 2008/0319362 Al, pub. Dec. 25, 2008). ANALYSIS Anticipation Claim 1 requires "a substantially rigid brace member that substantially maintains its shape absent application of a substantial bending force." Appeal Br. 14 (Claims App.). The Examiner found that "Bodenschatz's brace member ( 1, 4) is of plastic material (paragraph 0021 ), which material maintains its shape in [the] absen[ce] of application of tension (or any substantially bending force)." Final Act. 2; see also id. at 4. The Examiner found that "[t]here is nothing about the plastic material that prevents the substantially rigid brace member from maintaining its shape upon no bending force applied to it in the first substantially static position." Ans. 2. Appellant argues that "Bodenschatz requires at least two brace members and tensioning members with a tightening device." Appeal Br. 11. Appellant contends that "[i]n the unloaded or untensioned state, the Bodens[ c ]hatz device cannot and does not maintain its shape or provid[ e] biomechanical support." Id. Consequently, Appellant argues that Bodenschatz does not disclose the claimed "substantially rigid brace member that substantially maintains its shape absent application of a substantial bending force" because it cannot maintain its shape or provide support in an untensioned state. Id. 3 Appeal2017-007701 Application 13/768,060 We agree with Appellant. The Examiner relies on Bodenschatz's first section 1 and a middle section 4 as disclosing the claimed "brace member." Final Act. 2, 4; Bodenschatz i-f 46, Fig. 1. The Examiner found that the sections disclose the claimed "substantially rigid brace" because the sections are made of rigid plastic. See id. at 2; Ans. 4. That finding, however, does not address whether the two sections, when connected by tensioning elements 5 as shown in Bodenschatz's Figure 1, disclose the "substantially rigid brace" limitation. See Bodenschatz i-f 46, Fig. 1. The fact that the two sections 1, 4 are rigid in isolation does not address whether Bodenschatz discloses a "substantially rigid brace" containing the two elements in combination, which is the basis for the Examiner's rejection. Final Act. 2, 4. The Examiner did not find that either section, standing alone, constitutes the claimed brace, and therefore cannot rely on the rigid properties of the sections in isolation to meet the claim requirements. See id. As a result, the Examiner did not explain adequately how the two sections, when connected via tensioning elements 5 as depicted in Bodenschatz, disclose the claimed "substantially rigid brace member that substantially maintains its shape absent application of a substantial bending force." Based on the foregoing, we do not sustain the rejection of claim 1 or claims 2--4 and 6 that depend from claim 1 as anticipated by Bodenschatz. Independent claim 7 contains the same relevant limitations as claim 1. See Appeal Br. 12, 15 (Claims App.). Accordingly, we do not sustain the rejection of claim 7, or claim 8 that depends from claim 7, as anticipated for the same reasons as claim 1. 4 Appeal2017-007701 Application 13/768,060 Obviousness The Examiner's rejections of claims 5 and 9 do not address the deficiencies discussed above regarding the Examiner's finding that Bodenschatz discloses the claimed "substantially rigid brace member." See Final Act. 6-8. Accordingly, we do not sustain the rejections of claims 5 and 9 under 35 U.S.C. Â§ 103(a) for the same reasons discussed above in the anticipation analysis of claim 1. DECISION We reverse the decision of the Examiner to reject claims 1-9. REVERSED 5