Ex Parte Sotereanos et al

Patent Trial and Appeal Board

Jun 30, 2017

13158248 (P.T.A.B. Jun. 30, 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.
13/158,248 06/10/2011 Dean G. Sotereanos 7670 - 154855 8958
28289 7590 07/05/2017
THE WEBB LAW FIRM, P.C.
ONE GATEWAY CENTER
420 FT. DUQUESNE BLVD, SUITE 1200
PITTSBURGH, PA 15222
EXAMINER
CARREIRO, CAITLIN ANN
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
07/05/2017 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):
patents @ webblaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEAN G. SOTEREANOS, DARRELL SERETTI,
JAMES GRANT, and JOSHUA CORDLE
Appeal 2015-007824
Application 13/158,248
Technology Center 3700
Before EDWARD A. BROWN, JAMES P. CALVE, and
LEE L. STEPINA, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Dean G. Sotereanos et al. (Appellants)1 appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision rejecting claims 1—16. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Elizur Corporation is identified as the real party in interest. Appeal Br. 3.
Appeal 2015-007824
Application 13/158,248
CLAIMED SUBJECT MATTER
Appellants’ disclosure “relates to orthotic devices and methods for
assisting in the support of limbs and joints of users.” Spec. 12.
Claims 1, 10, 14, and 16 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter.
1. An orthosis assembly for supporting at least one of a
shoulder, arm, wrist and hand of a user comprising:
a sling comprising attached inner and outer portions,
wherein said inner and outer portions are configured to be
detached and reattached;
a wrist/hand orthosis supported by said sling, said
wrist/hand orthosis supporting a first strap configured to attach
to one of the wrist and the arm of the user; and
a second strap connected to said sling and configured to
support said sling.
Appeal Br. 19 (Claims App.).
REJECTIONS
Claims 1—9, 14, and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hargrave (US 2006/0258966 Al, published Nov. 16,
2006), Burkhead (US 5,334,132, issued Aug. 2, 1994), and Ford (US
4,214,579, issued July 29, 1980).
Claims 10-13 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Hargrave and Miller (US 2008/0119770 Al, published May 22, 2008).
Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Hargrave, Miller, and Burkhead.
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Application 13/158,248
ANALYSIS
Claims 1—9, 14, and 15 over Hargrave, Burkhead, and Ford
Claims 1 and 4—9
The Examiner finds that Hargrave discloses a sling 100 and a strap
104 connected to sling 100, but does not disclose a wrist/hand orthosis
supported by sling 100. Final Act. 3 (citing Hargrave, Fig. 1). The
Examiner finds that Burkhead discloses a wrist/hand orthosis 46 supported
by a sling configured to attach to the wrist or arm of the user. Id. at 4 (citing
Burkhead, Fig. 2). The Examiner concludes that it would have been obvious
to modify Hargrave with Burkhead’s wrist/hand orthosis to provide more
support to a user’s wrist and hand. Id.
The Examiner relies on Ford to teach a device including both a strap
connected to a sling to support the sling (“end loop 32 attached to band 30”)
and a strap on a wrist/hand orthosis (loop 34 positioned about splint 12).
Final Act. 4 (citing Ford, Figs. 1, 2).
Appellants contest the Examiner’s finding that Burkhead’s splint 46
corresponds to the claimed “wrist/hand orthosis.” Appeal Br. 10.
Appellants contend that splint 46 is merely slidable into pocket 44 to provide
an additional passive support underneath a user’s wrist {id.), and the purpose
of splint 46 is “simply a stay for ‘keeping the patient’s hand in a neutral
position, typically at night when the patient is sleeping, so that the wrist is
not stressed’” {id. at 11 (citing Burkhead, col. 3,11. 43—48)). Appellants
assert that “the claimed invention specifically requires the support of the
WHO [wrist/hand orthosis] when the user is active and accomplishing the
purpose of supported movement outside of the sling.” Id.
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Application 13/158,248
The Examiner responds that this argument is drawn to the function of
the claimed invention (Ans. 14) and such functional limitations are not
claimed {id. at 15). We agree. Claim 1 does not specify that the wrist/hand
orthosis provides support when the user is “active,” or accomplishes “the
purpose of supported movement outside of the sling.” Limitations that do
not appear in the claims cannot be relied upon for patentability. In re Self,
671 F.2d 1344, 1348 (CCPA 1982).
Appellants also assert that the Examiner’s interpretation of wrist/hand
orthosis is unreasonable. Appeal Br. 11. Appellants contend that the plain
meaning of wrist/hand orthosis, as informed by the Specification, is:
the WHO (15) completely supports the wrist and/or forearm of a
user to the end of the hand by attaching to the wrist or forearm
of the user regardless of the position/orientation of the user’s arm
inside or outside of the sling. See [Spec.] 1 [0039], FIGS. 1, 3
(shown below). More specifically, the WHO (15) attaches to the
wrist via wrist strap 18 and the forearm via strap 17.
Id. at 11—12.
The Examiner responds that this contention also is drawn to
limitations not recited in claim 1. Ans. 14—15. We agree. Claim 1 does not
recite that the wrist/hand orthosis “completely supports the wrist and/or
forearm of a user to the end of the hand” or “by attaching to the wrist or
forearm of the user regardless of the position/orientation of the user’s arm
inside or outside of the sling.” Rather, claim 1 requires the wrist/hand
orthosis to be supported by the sling and to “support[] a first strap
configured to attach to one of the wrist and the arm of the user.” Hence,
Appellants’ contention is not commensurate with the scope of claim 1, and,
thus, cannot be relied on for patentability. See Self, 671 F.2d at 1348.
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Appeal 2015-007824
Application 13/158,248
To the extent it is Appellants’ position that the claimed “wrist/hand
orthosis” should be construed as having the structure of the wrist/hand
orthosis 15 shown in Figures 1 and 3, we decline to adopt this construction
because “a particular embodiment appearing in the written description may
not be read into a claim when the claim language is broader than the
embodiment.” See SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d
870, 875 (Fed. Cir. 2004).
The Examiner indicates that “an ‘orthosis’ is commonly understood to
be simply a brace that provides support and this term is often used
interchangeably in the art with other terms such as splint, sling, support,
stay, brace, etc.” Ans. 15. This interpretation of “orthosis” encompasses
Burkhead’s splint. We are not persuaded that this interpretation is
unreasonable.
Appellants also contend that dependent claim 2 distinctly claims
stays/splints 21, 22 “in addition to” wrist/hand orthosis. Appeal Br. 12—13.
Claim 2 recites that “said wrist/hand orthosis further comprises an
upper stay . . . and a lower stay in pivotal communication with said upper
stay.” Appeal Br. 19 (Claims App. (emphasis added)). Claim 2 does not
recite “splints.” According to the doctrine of claim differentiation “‘the
presence of a dependent claim that adds a particular limitation raises a
presumption that the limitation in question is not found in the independent
claim.’” Bancorp Servs. L.L.C. v. Sun Life Assurance Co. of Can. (U.S.),
687 F.3d 1266, 1275 (Fed. Cir. 2012). Claim 1 is sufficiently broad to
encompass the limitations of claim 2. Reciting a lower stay and an upper
stay in claim 2 raises the presumption that these elements are not required in
claim 1. That is, the wrist/hand orthosis in claim 1 may, or may not,
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Application 13/158,248
comprise the elements of claim 2. We are not persuaded that recitation of
upper and lower stays in claim 2 means that the wrist/hand orthosis in claim
1 cannot be construed to read on a splint.
As noted by the Examiner, Appellants do not apprise us of error in
either the Examiner’s findings or reasoning with regard to Hargrave or Ford.
Ans. 13—14; Final Act. 3^4.
Accordingly, we sustain the rejection of claim 1, and claims 4—9
which depend from claim 1 and are not separately argued, as unpatentable
over Hargrave, Burkhead, and Ford.
Claims 2 and 3
The Examiner finds that Burkhead discloses an upper stay 18b and a
lower stay 36 pivotally connected at 38. Final Act. 5 (citing Burkhead, Fig.
2).
Appellants dispute the Examiner’s findings. Appeal Br. 13.
Particularly, Appellants contend that the Examiner has not explained why
the end 18B of strap 18, wrist strap 36, and ring 38 are elements of a
wrist/hand orthosis, as required by claim 2. Reply Br. 3. Appellants
contend that these elements are not part of splint 46 found by the Examiner
to correspond to the claimed wrist/hand orthosis. Id. at 4.
We are persuaded that Burkhead’s splint 46 does not comprise
elements 18B, 36, and 38. Accordingly, we do not sustain the rejection of
claim 2, and claim 3 depending therefrom, as unpatentable over Hargrave,
Burkhead, and Ford.
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Appeal 2015-007824
Application 13/158,248
Claims 14 and 15
Appellants rely on the same arguments for claim 14 as for claim 1.
Appeal Br. 10-14.
Accordingly, we sustain the rejection of claims 14 and 15 as
unpatentable over Hargrave, Burkhead, and Ford for the same reasons as for
claim 1.
Claims 10—13 over Hargrave and Miller
The Examiner finds that Miller discloses, inter alia, a first member
configured to attach to a sling (i.e., portion of sling above 42 and 52). Final
Act. 10 (citing Miller, Fig. 1).
Appellants contend that Miller’s “first member” (i.e., shoulder strap
30) does not attach to the sling (i.e., pouch 20). Appeal Br. 14.
The Examiner responds that the “first member” in Miller is not
shoulder strap 30. Ans. 17. The Examiner also states that the “first
member” is inherently part of the sling. Id.
The Examiner’s explanation as to the identity of Miller’s “first
member” is unclear. The “area of the sling above elements 42 and 52”
shown in Figure 1 corresponds to encircling strap 30 having front-facing
portion 32 and back-facing portion 34. See also Miller 116. Consequently,
it is unclear what “area” above elements 42 and 52 the Examiner considers
to correspond to the claimed first member. Also, claim 10 requires the first
member to be “configured to attach to a sling.” As such, the first member
and sling are different elements in claim 1. Even if Miller’s first member “is
part of the sling,” as the Examiner determines, it is not apparent how the first
member is “configured to attach to a sling,” that is, to attach to itself.
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Accordingly, the Examiner has not established that Miller discloses the
claimed first member by a preponderance of the evidence.
As the Examiner has not established that the proposed combination
would result in an orthosis comprising all limitations recited in claim 10, we
do not sustain the rejection of claim 10, and claims 11—13 depending
therefrom, as unpatentable over Hargrave and Miller.
Claim 16 over Hargrave, Miller, and Burkhead
Method claim 16 recites, inter alia, “positioning the arm, wrist and
hand of a user into a wrist/arm orthosis positioned within said sling,” and
“securing the arm, wrist and hand of the user to said wrist/arm orthosis.”
Appeal Br. 21—22 (Claims App.).
The Examiner finds that Burkhead discloses the claimed “positioning”
and “securing” steps. Final Act. 13. Particularly, the Examiner finds that
Figure 2 of Burkhead shows that an arm, wrist, and hand of a user “are
positioned onto split 46 and splint 46 is positioned into the sling 10,” and
that the arm, wrist and hand are secured in sling 10 on splint 46. Id.
(emphasis added).
Appellants contend that Burkhead’s splint 46 “does not wholly teach
the arm, wrist, and hand being positioned ‘into’ or ‘secured to’ such
wrist/arm orthosis.” Appeal Br. 17.
Appellants’ contention regarding positioning the arm, wrist, and hand
into the wrist/arm orthosis is persuasive. Claim 16 requires “a wrist/hand
orthosis positioned within said sling,” meaning that the wrist/hand orthosis
and sling are different elements in claim 16. Claim 16 further requires a
user’s arm, wrist, or hand to be positioned “into a wrist/hand orthosis” and
“securing the arm, wrist and hand of the user to said wrist/arm orthosis.”
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Application 13/158,248
Although Burkhead’s splint 46 is positioned within sling 10, the Examiner
has not established by a preponderance of the evidence that Miller discloses
positioning a user’s arm, wrist, or hand into a wrist/arm orthosis that is
positioned within sling 10, or securing the user’s arm, wrist, or hand to the
wrist/arm orthosis. Instead, the Examiner finds that Burkhead discloses
securing a user’s arm, wrist, and hand in sling 10 on splint 46. Final Act. 13.
As the Examiner has not established that the proposed combination
would result in a method comprising all limitations recited in claim 16, we
do not sustain the rejection of claim 16 as unpatentable over Hargrave,
Miller, and Burkhead.
DECISION
We affirm the rejection of claims 1, 4—9, 14, and 15, and reverse the
rejection of claims 2 and 3, under 35 U.S.C. § 103(a) as unpatentable over
Hargrave, Burkhead, and Ford.
We reverse the rejection of claims 10-13 under 35 U.S.C. § 103(a) as
unpatentable over Hargrave and Miller.
We reverse the rejection of claim 16 under 35 U.S.C. § 103(a) as
unpatentable over Hargrave, Miller, and Burkhead.
No time period for taking any subsequent action in connection with
this appeal maybe extended according to 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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