Mary Braun. Leibold

Patent Trials and Appeals BoardJun 9, 2020

2019002576 (P.T.A.B. Jun. 9, 2020)

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. 13/092,426 04/22/2011 Mary Braun Leibold MABLP0101USA 6535 7590 06/09/2020 Jonathan A. Platt Renner, Otto, Boisselle & Sklar, LLP 19th Floor 1621 Euclid Ave. Cleveland, OH 44115 EXAMINER HICKS, VICTORIA J ART UNIT PAPER NUMBER 3786 MAIL DATE DELIVERY MODE 06/09/2020 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARY BRAUN LEIBOLD Appeal 2019-002576 Application 13/092,426 Technology Center 3700 Before MICHAEL L. HOELTER, BRETT C. MARTIN, and LEE L. STEPINA, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–4, 9, 10, 12, 14–20, and 24–27. Claims 5–8 were withdrawn and claims 11, 13, and 21–23 were canceled during prosecution. Appeal Br. 50–53. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Mary Braun Leibold. Appeal Br. 2. Appeal 2019-002576 Application 13/092,426 2 CLAIMED SUBJECT MATTER The claims are directed “to a support for the ligaments and tendons of a joint.” Spec. ¶ 2. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An animal joint support for a horse's leg, comprising: an elastic sleeve including: a top end around a top opening; a bottom end around a bottom opening; and a central portion connecting the top end and the bottom end; wherein the bottom end includes a reduced elastic strength region around the bottom opening, the reduced elastic strength region having a lower elastic strength than the central portion; wherein the central portion has a constant diameter; and wherein the central portion has a length that is at least 75% of an overall length of the elastic sleeve. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Bulley Cropper Witzel US 4,926,851 US 5,735,807 US 5,769,809 May 22, 1990 Apr. 7, 1998 June 23, 1998 Schlomski Petterson US 2010/0106070 A1 US 2010/0154366 A1 Apr. 29, 2010 June 24, 2010 REJECTIONS Claims 1, 2, 9, 12, 14, 15, 19, and 24–26 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Petterson and Witzel. Ans. 3. Claims 3, 4, 10, and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Petterson, Witzel, and Schlomski. Ans. 10. Claims 16–18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Petterson, Witzel, and Bulley. Ans. 15. Appeal 2019-002576 Application 13/092,426 3 Claim 27 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Petterson, Witzel, and Cropper. Ans. 18. OPINION Obviousness All of the Examiner’s rejections rely on the combination of Petterson and Witzel, either alone or in combination with other references. According to the Examiner, Petterson teaches all of the elements of claim 1 except for “wherein the bottom end includes a reduced elastic strength region around the bottom opening, the reduced elastic strength region having a lower elastic strength than the central portion.” Ans. 3. The Examiner then relies on Witzel for teaching this feature. Ans. 4. Appellant argues, inter alia, that Petterson teaches a lower cuff 18 that expands to pass over the horse’s hoof, but then contracts again to tightly fit pastern 42 so as to prevent main body 16 from slipping over walls 38, toe 36, and heel 40. Reply Br. 7 (citing Petterson ¶¶ 10 and 25–27). Appellant further argues that the Examiner’s combination would “have an impact on the ability of the central portion of Petterson to bunch together since the lower cuff 18, by being less elastic than the loosely fit central portion 16, would no longer be able to hold the sock 10 in place or prevent the bunched together main body 16 portion from slipping downward.” Id. We agree with Appellant that the Examiner’s modification would, thus, render Petterson’s horse sock inoperative for its intended purpose. Petterson’s central portion already has little to zero compression as it is meant to bunch loosely around the leg, and a less elastic lower cuff (as recited) would result in a sock that drapes down over the entire leg and hoof such that it would no longer sit properly on the horse’s leg. Because all of the rejections rely on Appeal 2019-002576 Application 13/092,426 4 this improper combination, we do not sustain any of the Examiner’s obviousness rejections. We further note that the Examiner’s handling of the Leibold Declaration is in error. The Examiner merely makes a conclusory statement that the Declaration fails to provide evidence that the combination is not reasonable without providing any analysis of the contents thereof. Ans. 24. The Declaration itself is the evidence and we agree with Appellant that “[t]he Examiner has not explained why this evidence is insufficient.” Reply Br. 8. CONCLUSION The Examiner’s rejections are REVERSED. More specifically, DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 9, 12, 14, 15, 19, 24–26 103 Petterson, Witzel 1, 2, 9, 12, 14, 15, 19, 24–26 3, 4, 10, 20 103 Petterson, Witzel, Schlomski 3, 4, 10, 20 16–18 103 Petterson, Witzel, Bulley 16–18 27 103 Petterson, Witzel, Cropper 27 Overall Outcome 1–4, 9, 10, 12, 14–20, 24–27 REVERSED