Wesley Cox

Patent Trials and Appeals Board

Sep 10, 2019

14444733 - (D) (P.T.A.B. Sep. 10, 2019)

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.
14/444,733 07/28/2014 WESLEY COX 95908-9.4 9601
97242 7590 09/10/2019
Kutak Rock LLP
2300 Main Street, Suite 800
Kansas City, MO 64108
EXAMINER
RODRIQUEZ, KARI KRISTIN
ART UNIT PAPER NUMBER
3786
NOTIFICATION DATE DELIVERY MODE
09/10/2019 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):
patents@kutakrock.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte WESLEY COX1
__________________

Appeal 2017-011538
Application 14/444,733
Technology Center 3700
____________________

Before JAMES P. CALVE, MICHELLE R. OSINSKI, and
GEORGE R. HOSKINS, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Final Office
Action rejecting claims 1–18. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Mr. Cox and Xtreme Orthopedics, LLC are identified as the real parties in
interest. Appeal Br. 2.
Appeal 2017-011538
Application 14/444,733

2
CLAIMED SUBJECT MATTER
Claims 1, 11, and 16 are independent. Claim 1 is reproduced below.
1. A therapeutic pressure strap for applying pressure to
muscles of a limb, said pressure strap comprising:
an elongated flexible band for encircling the limb;
first and second adjustable cooperative fasteners for
adjustably fastening said band about the limb, with
said first fastener proximate a first end of said
band and said second fastener proximate a second
end of said band; and
a plurality of elongated pressure members attached to
said band and positioned between said first and
second fasteners,
wherein a longitudinal axis of one or more of said
plurality of elongated pressure members is
positioned parallel to a longitudinal axis of said
band,
wherein said band includes a plurality of pockets for
retaining said pressure members,
wherein said band defines a channel between adjacent
pockets,
wherein said pockets are adapted to be oriented
substantially perpendicular to a longitudinal axis of
the limb during use whereby pressure members
within said pockets are adapted to create discrete
lines of pressure across the muscles of the limb.
REJECTIONS
Claims 1–9 and 11–18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Puyana (US 4,243,028, issued Jan. 6, 1981) and Cantrell
(US 5,591,121, issued Jan. 7, 1997).
Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Puyana, Cantrell, and Gauvry (US 6,402,712 B1, issued June 11, 2002).
Claims 1–18 are rejected on the ground of non-statutory double
patenting over claims 1–18 of U.S. Patent No. 8,821,425 B2 and Cantrell.
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Application 14/444,733

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ANALYSIS
Claims 1–9 and 11–18 Rejected Over Puyana and Cantrell
Appellant argues the rejection of claim 1 and asserts that independent
claims 11 and 16 are allowable for the same reasons. See Appeal Br. 5–8.
We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Puyana discloses a therapeutic pressure strap
as recited in claim 1 including an elongated flexible band 12, fasteners 16,
22, with plural elongated pressure members 30 retained in a single pocket 28
and adapted to be oriented substantially perpendicular to a longitudinal axis
of a limb in use. Final Act. 3–4. The Examiner finds that Cantrell teaches a
limb restraint with adjacent pockets 42 separated by a channel 34. Id. at 4.
The Examiner determines that it would have been obvious to provide Puyana
with a plurality of adjacent, spaced pockets as taught by Cantrell to allow the
elongated pressure members to be removed and replaced individually on the
band and to permit air to flow between the limb and strap. Id.; Ans. 11.
Appellant argues that Cantrell teaches a hook and loop fastened seam
to permit easy removal and replacement of cylindrical rigid reinforcing rods
28 so “the motivation is for the inclusion of a hook and loop seam, not the
inclusion of a plurality of pockets.” Appeal Br. 7; Reply Br. 2. Appellant
argues that combining Cantrell’s hook and loop seam with Puyana’s pocket
does not motivate a user to modify the pocket of Puyana into two discrete
pockets separated by a gap because Puyana teaches a single pocket for
receiving and confining a pair of adjacently positioned cylindrical resilient
members. Appeal Br. 7. Appellant also argues that Puyana’s single pocket
of adjacently positioned resilient members teaches away from locating each
resilient member in its own pocket separated by a gap. Id. at 7–8.
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Application 14/444,733

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The issue is whether there is motivation to combine the prior art in the
manner indicated by the Examiner. In this regard, the patent laws provide:
(a) A patent may not be obtained though the invention is not
identically disclosed or described as set forth in section 102, if
the differences between the subject matter sought to be patented
and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to
a person having ordinary skill in the art to which said subject
matter pertains.

35 U.S.C. § 103(a) (pre-AIA); see Realtime Data, LLC v. Iancu, 912 F.3d
1368, 1372 (Fed. Cir. 2019) (internal citations omitted); In re Nuvasive, Inc.,
842 F.3d 1376, 1382 (Fed. Cir. 2016) (“Our precedent dictates that the
PTAB must make a finding of a motivation to combine when it is disputed.”
and the “analysis should be made explicit”) (internal citations omitted).
“[M]otivation to combine can be found explicitly or implicitly in the
prior art references themselves, in market forces, in design incentives, or in
‘any need or problem known in the field of endeavor at the time of invention
and addressed by the patent.’” Arctic Cat Inc. v. Bombardier Recreational
Prods. Inc., 876 F.3d 1350, 1359 (Fed. Cir. 2017) (quoting KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 420–21 (2007)); Plantronics, Inc. v. Aliph, Inc.,
724 F.3d 1343, 1354 (Fed. Cir. 2013) (“[M]otivation to combine may be
found explicitly or implicitly in market forces; design incentives; the
‘interrelated teachings of multiple patents’; ‘any need or problem known in
the field of endeavor at the time of invention and addressed by the patent’;
and the background knowledge, creativity, and common sense of the person
of ordinary skill.”) (internal citation omitted). Analysis should be explicit
with a rational underpinning to support the conclusion of obviousness. KSR,
550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
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We find that the Examiner’s reason for modifying Puyana to place the
individual pressure members 30 in separate pockets with a channel between
the pockets, as claimed, based on the teachings of Cantrell, is supported by
rational underpinnings. The Examiner correctly finds that Cantrell teaches
to place individual elongated pressure members 46 in separate pockets 42
that are separated by a space to allow air flow between the supported limb
and the limb splint 44, and to allow easy removal of the individual members
for washing and/or replacement via a hook and loop fastened seam 40. Final
Act. 4 (citing Cantrell, 4:16–19, 4:62–67); Ans. 11–13 (citing same).
These findings are supported by the express teachings of Cantrell to
this effect. Specifically, Cantrell teaches that the parallel foam reinforcing
cylinders 46 are placed in pockets with spaces between them “to allow for
air flow between the limb and limb splint 44 or 36.” Cantrell, 4:16–19. The
individual rigid reinforcing rods 28 and foam reinforcements 30 also can be
removed from each pocket 42 for washing or replacement. Id. at 4:62–67.
“[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” KSR, 550 U.S. at 417. Furthermore,
[A]n implicit motivation to combine exists not only when a
suggestion may be gleaned from the prior art as a whole, but
when the “improvement” is technology-independent and the
combination of references results in a product or process that is
more desirable, for example because it is stronger, cheaper,
cleaner, faster, lighter, smaller, more durable, or more efficient.

DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1368 (Fed. Cir. 2006).
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The Examiner reasons that modifying Puyana to place each resilient
member 30 into a separate pocket would allow the resilient members to be
replaced more easily, i.e., each resilient member would retain its original
position even if another resilient member was removed to facilitate the ease
of replacement, and a skilled artisan could interchange the hollow or solid
pressure members as Puyana contemplates. Ans. 11. Puyana teaches to use
reinforcing members that are cylindrical or other shapes, and solid or hollow
to provide the desired flexibility and pressure. Puyana, 2:51–3:11.
The Examiner finds that using spaced pockets in Puyana would allow
air flow between a limb and the strap to improve a user’s comfort and reduce
sweating. Ans. 11 (citing Cantrell, 4:16–19, 4:62–67). Because Puyana’s
device is used to treat tennis elbow (Puyana, 1:10–64), such air flow would
improve the comfort of a user wearing Puyana’s device and ease removal of
Puyana’s reinforcing resilient members 30 for cleaning. Cantrell, 4:16–67.
Cantrell’s teachings and the desire of artisans to improve devices and
make them better and more efficient provide rational underpinnings for these
proposed modifications of Puyana. In re Ethicon, Inc., 844 F.3d 1344, 1351
(Fed. Cir. 2017) (normal desire of artisans to improve what already is known
can provide the motivation); DyStar, 464 F.3d at 1368 (improve efficiency);
In re Berg, 320 F.3d 1310, 1315 (Fed. Cir. 2003) (“As persons of scientific
competence in the fields in which they work, examiners and administrative
patent judges on the Board are responsible for making findings, informed by
their scientific knowledge, as to the meaning of prior art references to
persons of ordinary skill in the art and the motivation those references would
provide to such persons. Absent legal error or contrary factual evidence,
those findings can establish a prima facie case of obviousness.”).
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Appellant’s arguments do not apprise us of error in the Examiner’s
findings or determination of obviousness. Indeed, Appellant recognizes that
Cantrell teaches the use of separate pockets with a reclosable hook and loop
seam to facilitate the ease of removal of individual reinforcing members for
washing or replacement. Appeal Br. 7; Reply Br. 2; Cantrell, 4:62–67.
Appellant’s attorney argument that a skilled artisan would use only a
reclosable hook and loop seam with Puyana’s single pocket (Appeal Br. 7) is
not persuasive because separate pockets provide an air gap for user comfort
and ease the removal and/or replacement of reinforcing members. Ans. 11.
Cantrell’s teachings improve Puyana’s device to treat tennis elbow and to
facilitate the use of different pressure members to adjust the flexibility and
pressure of the device. The improvements are consistent with Puyana’s
teaching of a device to treat tennis elbow with adjustable flexibility and
pressure via replaceable members. See Puyana, 2:1–6, 2:45–61, 3:3–11.
Appellant’s argument that Puyana’s use of a single pocket to hold a
pair of cylindrical members teaches away from Cantrell’s teaching to use
separate pockets for each member (Appeal Br. 7–8) is not persuasive. The
prior art’s mere disclosure of more than one alternative does not teach away
from any of the alternatives absent a disclosure that criticizes, discredits, or
otherwise discourages the claimed solution. Ans. 12 (quoting In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004)). Appellant does not identify any such
negative teachings in Puyana, nor any teaching that separate pockets will not
improve the flexibility and comfort of Puyana’s device. Cf. In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994) (“[A] reference will teach away if it suggests
that the line of development flowing from the reference’s disclosure is
unlikely to be productive of the result sought by the applicant.”); Ans. 12.
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Appellant further argues that Cantrell teaches longitudinal support
members that run parallel to the length of the limb rather than encircling the
limb and would not have been obvious to combine with Puyana. Appeal Br.
7. This argument amounts to an individual attack on the references because
the Examiner finds that Puyana teaches a therapeutic strap with pockets that
are substantially perpendicular to a longitudinal axis of a limb as claimed.
Final Act. 3–4; Ans. 10. We agree with the Examiner’s determination that
the benefits that Cantrell teaches for using separate, spaced pockets to hold
resilient pressure members would improve Puyana’s device with predictable
results. Furthermore, Appellant provides no argument or evidence that the
benefits taught by Cantrell for using separate, spaced pockets are limited to
straps that are oriented longitudinally, or are inapplicable to straps that are
oriented substantially laterally to a limb, as in Puyana and as claimed.
The articulation of reasons supported by rational underpinnings for
the proposed combination also addresses Appellant’s hindsight argument.
Reply Br. 2; see In re Cree, Inc., 818 F.3d 694, 702 n.3 (Fed. Cir. 2016)
(holding that an argument of “impermissible hindsight” was answered by
showing that the proffered combination was a predictable use of prior art
elements according to their established functions). Arguing that the “Office
has failed to provide a motivation to combine Cantrell with Puyana” (Reply
Br. 2) also is not persuasive. See 37 C.F.R. § 41.37(c)(1)(iv); In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011) (approving of the Board’s practice to
require an applicant to identify the alleged error in the examiner’s rejection).
Thus, we sustain the rejection of claim 1, and claims 2–9 and 11–18,
which fall therewith.

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Application 14/444,733

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Claim 10 Rejected Over Puyana, Cantrell, and Gauvry
Appellant does not present argument for this rejection. See Appeal
Br. 5–8. Thus, we sustain this rejection. See 37 C.F.R. § 41.37(c)(1)(iv).
Claims 1–18 Rejected For Non-Statutory Double Patenting
Appellant does not present argument for this rejection. See Appeal
Br. 5–8. Thus, we sustain this rejection. See 37 C.F.R. § 41.37(c)(1)(iv).
DECISION
We affirm the prior art rejections of claims 1–18.
We affirm the double patenting rejection of claims 1–18.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED