Ex Parte Novick

Patent Trials and Appeals BoardJun 3, 2019

14682790 - (D) (P.T.A.B. Jun. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/682,790 04/09/2015 23460 7590 06/05/2019 LEYDIG VOIT & MA YER, LTD TWO PRUDENTIAL PLAZA, SUITE 4900 180 NORTH STETSON A VENUE CHICAGO, IL 60601-6731 FIRST NAMED INVENTOR Walter R. Novick 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. 284887 1018 EXAMINER HICKS, VICTORIA J ART UNIT PAPER NUMBER 3786 NOTIFICATION DATE DELIVERY MODE 06/05/2019 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): Chgpatent@leydig.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte WALTERR. NOVICK Appeal2018-009015 Application 14/682,790 1 Technology Center 3700 Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and BRADLEY B. BAY AT, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. Â§ 134(a), Appellant appeals from the Examiner's rejection of claims 1-18. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. According to Appellant, the invention "generally relates to devices, apparatuses[,] and equipment ... configured to be wrapped around a body 1 According to Appellant, the real party in interest is "the inventor, Walter R. Novick." Appeal Br. 1. Appeal2018-009015 Application 14/682,790 extremity, such as an arm or leg, to offer a degree of support, comfort[,] and/or protection in the vicinity of a joint." Spec. ,r 2. Below, we reproduce claim 1, the only independent claim on appeal, as illustrative of the appealed claims. 1. A joint protection device fix comfortably protecting a knee of a wearer while in a resting position, the joint protection device comprising: an interior device cover structure comprising a fabric sheet incorporating a ceramic fiber phase change material and having a moisture wicking property, wherein during use the interior device cover structure faces toward the knee of the wearer; an exterior device cover structure comprising unbroken loop fabric, wherein the exterior device cover structure and the interior device cover structure are joined along edges to form a pocket; a wrap for securing the joint protection device against a leg of the wearer; and at least one heat dissipating protective pad occupying the pocket such that while the joint protection device is secured against the knee of the wearer, the heat dissipating protective pad covers a substantial majority of the knee, but capable of extending less than a full knee circumference when fastened to the knee, to provide protection against forces exerted by external objects on the substantial majority of the knee while providing an opening for direct exposure to air, wherein the at least one heat dissipating protective pad occupying the pocket is configured to extend over a front and both sides of the knee of the wearer, such that the joint protection device may provide protection for the front and both sides of the knee. 2 Appeal2018-009015 Application 14/682,790 REJECTIONS AND PRIOR ART The Examiner rejects the claims as follows: I. Claims 1, 2, and 10-16 under 35 U.S.C. Â§ 103 as unpatentable over Brown (US 2012/0227150 Al, pub. Sept. 13, 2012), Mondal, "Phase change materials for smart textiles," Applied Thermal Engineering, Vol. 28, pp. 1536-1550 (2008), and Darlington, "Stretch fabrics for hook and loop applications," Innovation in Textiles (May 11, 2012) (retrieved from http://www. innovationintextiles. com/ stretch-fabrics- for-hook- and-loop-aoolications ); II. Claims 3, 5, and 6 under 35 U.S.C. Â§ 103 as unpatentable over Brown, Mondal, Darlington, and Srour et al. (US 6,199,234 B 1, iss. Mar. 13, 2001) (hereinafter "Srour"); III. Claims 4 and 9 under 35 U.S.C. Â§ 103 as unpatentable over Brown, Mondal, Darlington, and Dugan (US 7,975,634 Bl, iss. July 12, 2011); IV. Claim 8 under 35 U.S.C. Â§ 103 as unpatentable over Brown, Mondal, Darlington, Dugan, and Srour; V. Claim 17 under 35 U.S.C. Â§ 103 as unpatentable over Brown, Mondal, Darlington, and Paulos et al. (US 2011/0275970 Al, pub. Nov. 10, 2011) (hereinafter "Paulos"); and VI. Claims 7 and 18 under 35 U.S.C. Â§ 103 as unpatentable over Brown, Mondal, Darlington, and Chen (US 6,279,160 Bl, iss. Aug. 28, 2001 ). 3 Appeal2018-009015 Application 14/682,790 ANALYSIS Re;ection I As set forth above, independent claim 1 recites, in relevant part, that "the at least one heat dissipating protective pad occupying the pocket is configured to extend over a front and both sides of the knee of the wearer." Appeal Br., Claims App. (Claim 1). The Examiner relies on Brown's pad 24 to disclose the claimed protective pad, determining that "pad 24 occupying a pocket between substrate 14 and sleeve 12, extending over an area substantially greater than or equal to the underlying knee cap of the user, [is] capable of providing flexibility and compression to protect anterior and lateral portions of a user's knee." Answer 4 (citing Brown i-fl9, Figs. 2, 3)2; see also Answer 25. Appellant argues that the Examiner's rejection is in error, because "the only padded surface in Brown is the front surface," which means that Brown fails to provide "multidirectional (three-sided) protection." Appeal Br. 6; see also Reply Br. 5---6 ("the [F]inal Office [A]ction does not demonstrate how Brown's pad could 'extend over a front and both sides of the knee of the wearer"'). Brown's Figures 2 and 3 show dimensionless, generally rectangular- shaped pads, but do not indicate the pads' widths relative to the widths of users' knees. Brown Figs. 2, 3. Brown discloses that "pad 24 is disposed on substrate 14 of sleeve 12[,] and has an area substantially greater than or equal to the area of a knee cap of the user." Id. ,r 19. Based on these portions of Brown, the Examiner determines that "Brown[' s pad 24] is 2 Although the Examiner purports to cite Brown's paragraph "0048" (see Final Action 4--5; see Answer 4), Brown includes only thirty-two (32) numbered paragraphs. 4 Appeal2018-009015 Application 14/682,790 capable of being flexed to cover both sides of the knee when positioned thereon." Answer 25. Although Brown does disclose that pad 24 is "substantially greater than or equal to the area of a knee cap of the user" (Brown ,r 19), this does not teach a protective pad, as specifically recited in claim 1. First, just because Brown's pad 24 "has an area substantially greater than ... the area of a knee cap of the user" (id.), this does not mean that pad 24 is, in fact, "capable of being flexed to cover both sides of the knee" (Answer 25). Further, the Federal Circuit has held that when a claim recites an element that is "configured to" achieve a function, the claim requires that the specific element is not only "capable of' performing the recited function, but is also specifically designed to accomplish the function that is claimed. See Aspex Eyewear, Inc. v. Marchan Eyewear, Inc., 672 F.3d. 1335, 1349 (Fed. Cir. 2012) (The court indicated that claim language "configured to" is construed more narrowly than "capable of," and held that where claim language is construed consistent with "configured to," the claim language requires that the structure must be "designed or configured to accomplish the specified objective, not simply that [it] can be made to serve that purpose."). Therefore, even assuming arguendo that the Examiner correctly states that "Brown is capable of being flexed to cover both sides of the knee when positioned thereon" (Answer 25 (italics added)), the Examiner does not establish that Brown is designed to cover both sides of the knee. Thus, based on the foregoing, we do not sustain the Examiner's obviousness rejection of independent claim 1. Further, we do not sustain the Examiner's rejection of claims 2 and 10-16 that depend from claim 1, for the same reasons we do not sustain claim 1 's rejection. 5 Appeal2018-009015 Application 14/682,790 Reiections II-VI Claims 3-9, 17, and 18 depend from claim 1, the rejection of which we do not sustain. In the Examiner's obviousness rejections of claims 3-9, 17, and 18, the Examiner does not rely on any other reference to disclose something capable of remedying the above-discussed deficiency in claim 1 's rejection. Thus, we do not sustain any of the rejections of claims 3-9, 17, and 18. DECISION We REVERSE the Examiner's obviousness rejections of claims 1-18. REVERSED 6