2021002295 (P.T.A.B. Sep. 29, 2021)

Daniel Godfrey

Patent Trials and Appeals BoardSep 29, 2021

2021002295 (P.T.A.B. Sep. 29, 2021)

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. 15/490,818 04/18/2017 Daniel H. Godfrey Caldera.301 5174 88172 7590 09/29/2021 Mohr Intellectual Property Law Solutions, P.C. 111 SW 5th Avenue Suite 3150 Portland, OR 97204 EXAMINER NGUYEN, SON T ART UNIT PAPER NUMBER 3643 NOTIFICATION DATE DELIVERY MODE 09/29/2021 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): docketing@mohriplaw.com joey@mohriplaw.com ray@mohriplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DANIEL H. GODFREY ____________ Appeal 2021-002295 Application 15/490,818 Technology Center 3600 ____________ Before JOHN C. KERINS, MICHELLE R. OSINSKI, and BRANDON J. WARNER, Administrative Patent Judges. WARNER, 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 1–8 and 14–20. Appeal Br. 1. Claims 9–11 and 13 have been withdrawn. Id. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to the “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as the inventor, Daniel Godfrey. Appeal Br. 1. Appeal 2021-002295 Application 15/490,818 2 CLAIMED SUBJECT MATTER Appellant’s disclosed invention relates to “a therapy device that allows for the effective pinpoint covering of an injury on the animal and securely holds that covering in place over that injury without causing undue discomfort to the animal and without being easily removed or displaced by the animal.” Spec. ¶ 6. Claim 1, reproduced below with emphasis added, is the sole independent claim appealed and is representative of the subject matter on appeal. 1. An animal therapy device comprising: a base portion sized to cover a first hip portion of the animal; a first strap secured to a bottom side of the base portion that is detachably securable to an opposing bottom side of the base portion; a covering portion sized to cover an injured second hip portion of the animal, the covering portion having a neutral position in which the covering portion is substantially planar and an engaged position in which the covering portion operably conforms around the injured second hip portion of the animal, wherein the second hip portion is on the opposite side of the animal relative to the first hip portion of the animal; a second strap secured to a bottom side of the covering portion that is detachably securable to an opposing bottom side of the covering portion; and an elongated member secured to a top of the base portion and secured to a top of the covering portion, wherein the elongated member extends from the top of the base portion to the top of the covering portion, wherein the first strap is capable of encircling a first rear leg of the animal below the first hip portion and is secured to the opposing bottom side of the base portion, Appeal 2021-002295 Application 15/490,818 3 wherein the second strap is capable of encircling a second rear leg of the animal below the second hip portion and is secured to the opposing bottom side of the covering portion, wherein the elongated member is capable of laying on a back of the animal, and wherein the first strap, the second strap and the elongated member cooperatively act together so that the base portion is operably capable of holding the covering portion in place over the injured second hip portion of the animal. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Hartman US 2004/0244725 A1 Dec. 9, 2004 Spatt US 2005/0034686 A1 Feb. 17, 2005 McDevitt Larson2 US 2008/0177210 A1 July 24, 2008 Rivera-Brutto3 US 2012/0247399 A1 Oct. 4, 2012 Falconio-West4 US 2014/0107546 A1 Apr. 17, 2014 2 The Examiner and Appellant refer to this reference as “McDevitt” throughout; we adopt the same herein. 3 The Examiner and Appellant refer to this reference as “Rivera” throughout; we adopt the same herein. 4 The Examiner and Appellant refer to this reference as “Falconio” throughout; we adopt the same herein. Appeal 2021-002295 Application 15/490,818 4 REJECTIONS The following rejections are before us for review: I. Claims 1–5, 8, 18, and 19 stand rejected under 35 U.S.C. § 103 as being unpatentable over Hartman and Rivera. Non-Final Act. 3–6. II. Claims 6 and 7 stand rejected under 35 U.S.C. § 103 as being unpatentable over Hartman, Rivera, and McDevitt. Id. at 6–7. III. Claim 14 stands rejected under 35 U.S.C. § 103 as being unpatentable over Hartman, Rivera, and Spatt. Id. at 7–8. IV. Claim 15 stands rejected under 35 U.S.C. § 103 as being unpatentable over Hartman, Rivera, Spatt, and Falconio. Id. at 8. V. Claims 16 and 20 stand rejected under 35 U.S.C. § 103 as being unpatentable over Hartman, Rivera, McDevitt, and Spatt. Id. at 8–10. VI. Claim 17 stands rejected under 35 U.S.C. § 103 as being unpatentable over Hartman, Rivera, McDevitt, Spatt, and Falconio. Id. at 10–11. ANALYSIS Rejection I – Claims 1–5, 8, 18, and 19 as unpatentable over Hartman and Rivera Appellant presents argument against the rejection of independent claim 1, and does not set forth any additional substantive arguments for the other claims subject to Rejection I. See Appeal Br. 4–12. We select claim 1 as representative of the issues that Appellant presents in the appeal of this Appeal 2021-002295 Application 15/490,818 5 rejection, with remaining claims 2–5, 8, 18, and 19 standing or falling therewith. See 37 C.F.R. § 41.37(c)(1)(iv). The Examiner determined that a combination of teachings from Hartman and Rivera renders obvious the subject matter of claim 1. Non-Final Act. 3–5. In brief, the Examiner relied on Hartman for teaching a device with most of the recited features, including a connection member (albeit not specifically an elongated member or strap) secured to a base portion and a covering portion (id. at 3–4), and turned to Rivera for teaching a similar device with an elongated member (back or rump straps) secured to a base portion and a covering portion (id. at 4). The Examiner reasoned that it would have been an obvious substitution of functional equivalents to use Rivera’s elongated member(s) in place of Hartman’s connection member, with the substitution yielding predictable results. Id. at 4–5 (citing KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739–40 (2007)). Appellant argues that Rivera lacks sufficient disclosure for teaching an elongated member as claimed. See Appeal Br. 6–9. In particular, Appellant contends that it is unclear whether Rivera’s elongated member (back or rump straps 148, 150) is secured directly to the identified base portion and covering portion, suggesting instead that Rivera’s straps are only secured indirectly to the base portion and covering portion (via connecting member 20). See id. at 7–9; see also id. at 10–11; Reply Br. 2–7 (making same point). Appellant’s contention is unavailing for multiple reasons. First, it misapprehends the rejection presented. As the Examiner explains, the rejection considers Rivera’s element 20 (which Appellant asserts to be a problematic “intermediate” connecting member) to be “part of” the Appeal 2021-002295 Application 15/490,818 6 identified base portion (to which the elongated member is secured). Ans. 3–4 (citing Rivera, Fig. 5); see also Non-Final Act. 4 (explaining the same finding from Rivera). Second, it relies on an untenable claim interpretation of the recited phrase “secured to” (when relating the elongated member to the base portion and the covering portion) to mean “secured directly to” (without any intermediate element). But such a “direct” connection is not required by the plain language of the claim. See Appeal Br., Claims App. Thus, we agree with the Examiner’s explanation that elements can be directly or indirectly secured to one another, even via an intermediate element, and remain encompassed by the claim. See Ans. 4. Further, it appears that an “indirect” connection must be encompassed by the claim here in order to capture Appellant’s disclosed embodiment—from a review of Appellant’s Figure 2, for example, elongated member 36 is only indirectly secured to covering portion 34 (via fastening and adjustment structure 60). In sum, after careful consideration of the record before us, and for the foregoing reasons, Appellant’s argument does not apprise us of error in the Examiner’s factual findings from Hartman and Rivera, which are supported by a preponderance of the evidence, or in the Examiner’s reasonable conclusion of obviousness, which is rationally articulated based on prior art teachings. Accordingly, we sustain the Examiner’s rejection of independent claim 1, and claims 2–5, 8, 18, and 19 falling therewith, under 35 U.S.C. § 103 as being unpatentable over Hartman and Rivera. Appeal 2021-002295 Application 15/490,818 7 Rejections II–VI – Claims 6, 7, 14–17, and 20 as unpatentable over Hartman and Rivera, with one or more of McDevitt, Spatt, and Falconio With respect to the rejections of claims 6, 7, 14–17, and 20, which depend directly or indirectly from independent claim 1, Appellant does not set forth any additional substantive arguments separate from those discussed supra with respect to Rejection I. See Appeal Br. 4–11. For the same reasons that Appellant’s arguments do not apprise us of error in Rejection I, these arguments likewise do not apprise us of error in Rejections II–VI. Accordingly, for the foregoing reasons, we sustain the rejections of claims 6, 7, 14–17, and 20 under 35 U.S.C. § 103. DECISION We AFFIRM the Examiner’s decision rejecting claims 1–8 and 14–20 under 35 U.S.C. § 103, as set forth above. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). Appeal 2021-002295 Application 15/490,818 8 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–5, 8, 18, 19 103 Hartman, Rivera 1–5, 8, 18, 19 6, 7 103 Hartman, Rivera, McDevitt 6, 7 14 103 Hartman, Rivera, Spatt 14 15 103 Hartman, Rivera, Spatt, Falconio 15 16, 20 103 Hartman, Rivera, McDevitt, Spatt 16, 20 17 103 Hartman, Rivera, McDevitt, Spatt, Falconio 17 Overall Outcome 1–8, 14–20 AFFIRMED