PRO EQUINE GROUP, INC.

Patent Trials and Appeals BoardOct 28, 2020

15225295 - (D) (P.T.A.B. Oct. 28, 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. 15/225,295 08/01/2016 Stephen Coder 3717699-00055 1663 24573 7590 10/28/2020 K&L Gates LLP-Chicago P.O. Box 1135 Chicago, IL 60690 EXAMINER TSANG, LISA L ART UNIT PAPER NUMBER 3642 NOTIFICATION DATE DELIVERY MODE 10/28/2020 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): USpatentmail@klgates.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEPHEN CODER Appeal 2020-001444 Application 15/225,295 Technology Center 3600 Before DANIEL S. SONG, CHARLES N. GREENHUT, and LEE L. STEPINA, Administrative Patent Judges. SONG, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1–20. 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(a). The Appellant identifies the real party in interest as Pro Equine Group, Inc. Appeal Br. 1. Appeal 2020-001444 Application 15/225,295 2 CLAIMED SUBJECT MATTER The claims are directed to equine support boot with v-shaped sling strap. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An equine support boot comprising: a base portion configured to wrap around a fetlock joint of a leg so a front section of the base portion is disposed on a front portion of the leg; at least one upper strap configured to secure the base portion around the leg above the fetlock joint with the front section disposed on the front portion of the leg; and a v-shaped sling strap attached to a top section of the base portion at an attachment point, the attachment point being above the fetlock joint when the v-shaped sling strap is secured to the leg, the v-shaped sling strap including two extensions extending from the attachment point, the two extensions configured to extend under opposite sides of the fetlock joint while remaining above a hoof, for releasable attachment to the base portion or the at least one upper strap on the front portion of the leg, the two extensions pulling the fetlock joint toward the attachment point to apply an upward force on the leg, thus decreasing a tensile stress in a localized area between a palmar or plantar aspect of a proximal pastern and a ventral portion of a proximal sesamoid bone when the v-shaped sling strap is releasably attached to the front section. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Baker US 3,506,000 Apr. 14, 1970 Boyd US 5,107,827 Apr. 28, 1992 Heid US 8,443,763 B2 May 21, 2013 Appeal 2020-001444 Application 15/225,295 3 REJECTIONS 1. Claims 1–15 and 20 are rejected under 35 U.S.C. § 103 as unpatentable over Heid in view of Baker. Final Act. 3. 2. Claims 16–19 are rejected under 35 U.S.C. § 103 as unpatentable over Heid, Baker, and Boyd. Final Act. 9. OPINION Rejection 1: Claims 1–15 and 20 As to independent claim 1, the Examiner finds that Heid discloses an equine support boot substantially as claimed, but fails to disclose “a v- shaped sling strap attached to a top section of the base portion.” Final Act. 3–4. The Examiner finds that Baker discloses a similar support comprising a v-shaped (see figure 4) sling strap (25, 26) attached to a top section of the base portion (see figure 2) at an attachment point (see id. and figure 4), the v-shaped sling strap including two extensions (25, 26 are extensions) extending from the attachment point (see id.), the two extensions configured to extend under opposite sides of a foot for releasable attachment to the support (see id.), the two extensions applying an upward force on the leg. Final Act. 4. Based on these findings, the Examiner concludes that it would have been obvious to a person of ordinary skill in the art to modify the sling straps of Heid to instead be a v-shaped sling strap attached to a top section of the base portion, as taught by Baker, in order to provide more compression and cooperating support of the fetlock joint, and to further provide an increased upward force on the fetlock joint. The modification of Heid with Baker would result in the attachment point being above the fetlock joint when the v-shaped sling strap is secured to the leg, the two extensions pulling the fetlock joint toward the attachment point. Appeal 2020-001444 Application 15/225,295 4 Final Act. 4 (citing Heid Figs. 3, 4; Baker Figs. 1, 2). The Appellant initially argues that the Examiner’s decision to make the rejection final is improper in view of the amendments in its Request for Continued Examination. Appeal Br. 4–5. However, the Examiner’s decision to make the rejection final is a petitionable matter and not an appealable matter that can be decided by the Board. See MPEP § 706.07(c) (“Any question as to prematureness of a final rejection should be raised, if at all, while the application is still pending before the primary examiner. This is purely a question of practice, wholly distinct from the tenability of the rejection. It may therefore not be advanced as a ground for appeal, or made the basis of complaint before the Patent Trial and Appeal Board. It is reviewable by petition under 37 CFR 1.181. See MPEP § 1002.02(c)[1][3].”); see also Ans. 3 (“Appellant should have filed a petition to determine whether finality was proper.”). The Appellant also argues that Baker is non-analogous art “because the anatomies of humans and horses are markedly different. . . . human feet do not have fetlock joints and hoofs, both of which are affirmatively recited by the independent claims.” Appeal Br. 6; see also Reply Br. 2 (“the ankle supports in Baker are not structurally similar to the claimed ‘equine support boots,’ specifically because human ankle supports could not be used to support a fetlock joint.”). For these reasons, the Appellant argues that Baker is also not reasonably pertinent to the problem of supporting equine joints. Appeal Br. 7; Reply Br. 2–3. We are not persuaded by the Appellant’s arguments, and agree with the Examiner that Baker is reasonably pertinent to “the specific problem being solved by the inventor [which] is an equine support wrap being held in place and supporting a joint.” Ans. 4, citing Spec. ¶¶ 5–6. As the Examiner Appeal 2020-001444 Application 15/225,295 5 explains, “[i]ssues reasonably pertinent to the problem being solved by the inventor would include, for example, supporting joints or bones of other animals, and techniques and structures for holding a support wrap in place around a joint or bone.” Ans. 4–5. Moreover, as the Examiner further explains, “[s]imilar to Appellant’s invention, Baker is directed to a support wrap intended to be secured around a cylindrical object––in both instances a limb or bone––to provide support against stresses.” Ans. 5. The Appellant also argues that even if Baker is analogous art, neither Heid nor Baker teaches or suggests the recited v-shaped sling strap attached at an attachment point above the fetlock joint, wherein the two extensions are configured to extend under opposite sides of the fetlock joint while remaining above a hoof, and apply an upward force on the leg as claimed. Appeal Br. 5–6, 8; see also Reply Br. 3. In that regard, the Appellant argues that it “is not merely claiming a ‘v-shaped sling strap;’ rather, Appellant is claiming ‘a v-shaped sling strap attached . . . at an attachment point . . . above the fetlock joint.’” Appeal Br. 8; see also Reply Br. 6. Thus, according to the Appellant, “[b]ecause Baker is directed to a human foot, its v-shaped sling strap cannot extend under opposite sides of the fetlock joint as claimed,” and “does not teach or suggest that ‘the v-shaped sling strap including two extensions . . . remain[s] above a hoof’” as claimed. Appeal Br. 8; see also Reply Br. 5–6. The Examiner responds that the claims merely require the two extensions “configured to” extend under opposite sides of the fetlock joint while remaining above a hoof. As such, the prior art need only be configured to perform the function, and Appellant’s argument that Baker cannot extend under opposite sides of the fetlock joint, is not germane to the claim limitations at issue. Appeal 2020-001444 Application 15/225,295 6 Ans. 6. However, the Examiner’s response is not entirely clear because if the prior art “need only be configured to perform the function” of extending under opposite sides of the fetlock joint while remaining above a hoof, then whether or not Baker is configured to, or is capable of, performing this function is germane to the propriety of the rejection. The Examiner further responds that “[r]egardless, Heid as modified by Baker expressly discloses the two extensions configured to extend under opposite sides of the fetlock joint while remaining above a hoof,” and when modified by Baker, the support boot of Heid would have “the two extensions extending under opposite sides of the fetlock joint while remaining above a hoof,” such modification being desirable for the reasons articulated in the Final Office Action. Ans. 6–7; see also id. at 7–8. The Examiner appears to be correct that modifying the equine support boot of Heid in the manner suggested to use a v-shaped sling strap attached to the top section of the base portion would result in the support boot claimed. However, the basis for modifying Heid in the manner suggested is unclear. In particular, as the Appellant points out, “Baker, which is directed to human anatomy, cannot teach or suggest the claimed feature as it recites structural limitations that are specific to equine anatomy.” Appeal Br. 9. It is not readily apparent how Baker’s disclosure of a v-shaped sling strap that extends and wraps around the sole of a human teaches or suggests applicability to a fetlock joint, which is above the sole (i.e., hoof) of the horse, or mounting of the v-shaped sling strap on the top section of the base portion of Heid’s equine support boot such that the two extensions are configured to extend under opposite sides of the fetlock joint while remaining above a hoof. Appeal 2020-001444 Application 15/225,295 7 Moreover, also undermining the Examiner’s articulated reasoning for modifying Heid with the v-shaped strap of Baker is the fact that the first and second straps 104, 106 of Heid appear to already provide the support to the fetlock joint articulated and relied upon by the Examiner. Heid, col. 5, ll. 5– 9; Figs. 2–4; see also id., col. 4, 47–63. Although the Examiner asserts that the v-shaped sling strap of Baker would create “a greater vertical compression to provide upward, angled support,” the basis for this assertion is not entirely clear, especially when the disclosure of Heid is considered. Ans. 8; Heid, col. 5, ll. 5–9; Fig. 4 (showing angle “A” of strap 104 and similar angle of strap 106); compare Heid, Fig. 4 with Baker Fig. 1 (similar angling of straps 25, 26). Thus, the Examiner’s articulated reasoning for the suggested modification to Heid in view of Baker, and the Examiner’s conclusion of obviousness, appears to be based upon improper hindsight reconstruction. Reply Br. 3. Accordingly, we reverse the Examiner’s rejection of claim 1 and claims 2–15 that ultimately depend therefrom. The Appellant relies on the same arguments in support of patentability of independent claim 20, which is substantially similar to claim 1. Thus, we reverse this rejection of claim 20 as well. Rejection 2: Claims 16–19 The Appellant relies on the same arguments submitted relative to Rejection 1 in support of patentability of claims 16–19, arguing that Boyd does not remedy the deficiencies of the combination of Heid and Baker. Appeal Br. 9. Indeed, the Examiner relied upon Boyd merely for disclosing extensions having “a widened portion.” Final Act. 11. Thus, the rejection of Appeal 2020-001444 Application 15/225,295 8 independent claim 16, and claims 17–19 that depend therefrom, is reversed as well. CONCLUSION The Examiner’s rejections are reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–15, 20 103 Heid, Baker 1–15, 20 16–19 103 Heid, Baker, Boyd 16–19 Overall Outcome 1–20 REVERSED