IN RE: JEFF H. VERHOEF, Appellant
from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in No. 13/328, 201.
E. Loop, Loop Intellectual Property Law PLLC, Seattle, WA,
argued for appellant.
Meredith Hope Schoenfeld, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, argued
for appellee Andrei Iancu. Also represented by Nathan K.
Kelley, Thomas W. Krause, Brian Racilla.
Newman, Mayer, and Lourie, Circuit Judges.
LOURIE, CIRCUIT JUDGE.
VerHoef ("VerHoef") appeals from the decision of
the Patent Trial and Appeal Board (the "Board")
affirming the examiner's rejection of all claims of
VerHoef's pending application 13/328, 201 (the
"'201 application") as unpatentable under 35
U.S.C. § 102(f) (2006). Ex parte VerHoef, No.
2015-005270, 2017 WL 745052 (P.T.A.B. Feb. 23, 2017)
("Decision"). Because the Board correctly
concluded that VerHoef did not solely invent the claimed
subject matter of the '201 application on which he
claimed sole inventorship, we affirm.
filed the '201 application, generally relating to a dog
mobility device, at the U.S. Patent and Trademark Office
("the PTO"), naming himself the sole inventor. The
only question on appeal is whether VerHoef "himself
invent[ed] the subject matter sought to be patented, "
as required by § 102(f).
response to the examiner's initial rejection of the
'201 application under § 102(f), VerHoef submitted
an affidavit describing the origins and conception of the
claimed invention. We summarize the affidavit here in
dog Reilly developed difficulty walking after undergoing
surgery. VerHoef Aff. ¶ 3; J.A. 122. Reilly would drag
his hind paw and put weight on his paw's knuckles, called
"knuckling." Id. Consequently, VerHoef met
with a veterinarian, Dr. Alycia Lamb ("Lamb"), to
begin rehabilitative therapy for Reilly. Id.
results using an underwater treadmill were disappointing and
appeared to exacerbate the knuckling problem. Id.
¶ 5. Lamb then suggested trying a commercially available
harness that would provide support to the hind leg.
Id. The harness similarly did not fix the knuckling
problem. Id. ¶ 6; J.A. 122. Consequently,
VerHoef constructed a homemade harness modeled on the
commercial one, but this yielded similar results.
Id. ¶¶ 7-8; J.A. 123. VerHoef then
recognized that the harness would work better if connected to
the dog's toes. Id. ¶ 8.
mentioning this idea to Lamb during a therapy session, the
following discussion occurred:
I said to Dr. Lamb, "There has to be a way to connect
the cord to the toes." At the end of our appointment,
Dr. Lamb suggested that a strap configured in a figure
'8' that fit around the toes and wrapped around the
lower part of the leg, above the paw, might be something to
consider. In response, I said that I would try to figure
out a way to make that work."
Id. (emphasis added). VerHoef then implemented
Lamb's figure eight idea, and, after further adjustments,
had a working device that reduced the knuckling problem.
Id. ¶¶ 9-10, 17-18; J.A. 123-25.
contacted a patent attorney who then filed a patent
application directed to the homemade dog harness listing both
VerHoef and Lamb as joint inventors. Id. ¶ 28;
J.A. 126. The application included a single independent claim
that expressly ...