Ex Parte Kutsch

Patent Trial and Appeal Board

Dec 13, 2017

13475174 (P.T.A.B. Dec. 13, 2017)

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.
13/475,174 05/18/2012 John Henry Kutsch BPMDL0049JK (10483U) 8615
27939 7590 12/13/2017
Philip H. Burrus, IV
Burrus Intellectual Property Law Group LLC
222 12th Street NE
Suite 1803
Atlanta, GA 30309
EXAMINER
BOSWORTH, KAMI A
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
12/13/2017 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 JOHN HENRY KUTSCH
Appeal 2017-003101
Application 13/475,1741
Technology Center 3700
Before PHILIP J. HOFFMANN, BRADLEY B. BAYAT, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of
claims 1—10, 12—16, and 21—23. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
According to Appellant, the invention relates “to a window dressing
suitable for use in catheter and intravenous insertion procedures.” Spec. 12.
1 According to Appellant, “[t]he real party in interest is Medline Industries,
Inc.” Br. 2.
Appeal 2017-003101
Application 13/475,174
Claim 1 is the only independent claim on appeal. Below, we reproduce
claim 1 as illustrative of the appealed claims.
1. A window dressing, comprising:
a top layer defining a window;
a backing layer coupled to the top layer and spanning the
window;
a plurality of adhesive islands disposed about a perimeter
of the top layer, each adhesive islands having a first adhesion
coefficient associated therewith; and
an adhesive layer disposed about the plurality of adhesive
islands, the adhesive layer having a second adhesion coefficient
associated therewith that is less than the first adhesion
coefficient.
REJECTIONS AND PRIOR ART
The Examiner rejects claims 1, 2, 4, 5, 9, 10, 13, and 21—23 under
35 U.S.C. § 102(b) as anticipated by Worthley (US 2004/0077984 Al, pub.
Apr. 22, 2004).
The Examiner rejects claims 1, 2, 4—7, 9, 10, 12—14, and 21—23 under
35 U.S.C. § 103(a) as unpatentable over Worthley.
The Examiner rejects claim 3 under 35 U.S.C. § 103(a) as
unpatentable over Worthley and Blatchford (US 6,461,467 B2, iss. Oct. 8,
2002).
The Examiner rejects claims 7 and 8 under 35 U.S.C. § 103(a) as
unpatentable over Worthley and Propp (US 2010/0198161 Al, pub. Aug. 5,
2010) (“Propp ’161”).
The Examiner rejects claims 14 and 15 under 35 U.S.C. § 103(a) as
unpatentable over Worthley and Propp (US 2008/0132821 Al, pub. June 5,
2008) (“Propp ’821”).
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Application 13/475,174
The Examiner rejects claim 16 under 35 U.S.C. § 103(a) as
unpatentable over Worthley and Roman (US 2006/0211994 Al, pub.
Sept. 21,2006).
ANALYSIS
Anticipation rejection of claims E 2, 4, 5, 9, 10, 13, and 21—23, based
on Worthley
As set forth above, independent claim 1 recites
a plurality of adhesive islands disposed about a perimeter
of the top layer, each adhesive islands having a first adhesion
coefficient associated therewith; and
an adhesive layer disposed about the plurality of adhesive
islands, the adhesive layer having a second adhesion coefficient
associated therewith that is less than the first adhesion
coefficient.
Br., Claims App. Appellant argues that the Examiner’s rejection is
erroneous because Worthley’s adhesive layer 14 is not disposed “about”
adhesive layer 16. Br. 10-16. More specifically, Appellant argues that
based on the ordinary definitions of the terms “about” and “island,” and the
broadest reasonable interpretation of the claim in view of Appellant’s
Specification, the claim requires that the adhesive layer surrounds the
plurality of adhesive islands. See, e.g., id. at 13—14. Appellant further
argues that each of Worthley’s Figures 1A and IB show that “adhesive [16]
is disposed on the bottom of a foam layer, while . . . adhesive [14] is
disposed on the toy of the foam layer T such that adhesive layer 14 does not
surround adhesive layer 16. Id. at 14. Conversely, the Examiner does not
dispute that adhesive layer 14 is on a different side of a foam layer than
adhesive layer 16, but instead determines that “the only definition of the
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Application 13/475,174
term ‘about’ that is supported by [Appellant’s] drawings is ‘in the vicinity
of or ‘near[,]’ and[, thus,] one of ordinary skill. . ., when viewing
[Worthley’s] Fig 1A, would consider adhesives 14 and 16 to be ‘in the
vicinity of’ or ‘near’ each other.” Answer 7. Based on our review, the
Examiner does not support adequately the finding that Worthley discloses an
adhesive layer disposed about the plurality of adhesive islands, as claimed.
Initially, we note that although the Examiner determines that “the only
definition of the term ‘about’ that is supported by [Appellant’s] drawings is
‘in the vicinity of or ‘near’” (Answer 7), the Examiner does not explain why
this is the only definition that is supported by Appellant’s drawings.
Further, the Examiner does not make any determination as to what definition
of “about” is supported by Appellant’s Specification, and does not address
Appellant’s argument that the Specification’s paragraphs 24, 25, 37, and 62—
64 support another definition. See, e.g., Br. 13—14. Conversely, based on
our review of these portions of the Specification, we agree with Appellant
that when the claims are read in view of the Specification, the broadest
reasonable interpretation of the claim is that the adhesive islands are islands
by virtue of being surrounded by the adhesive layer. See, e.g., id. The
Examiner does not demonstrate that Worthley discloses such an
arrangement.
Thus, based on the foregoing, we do not sustain the anticipation
rejection of claim 1. We also do not sustain the anticipation rejection of
claims 2, 4, 5, 9, 10, 13, and 21—23 that depend from claim 1.
Obviousness rejection of claims E 2, 4, 5, 9, 10, 13, and 21—23, based
on Worthley
The Examiner’s obviousness rejection of claims 1, 2, 4, 5, 9, 10, 13,
and 21—23 relies on a finding that Worthley discloses an adhesive layer
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Application 13/475,174
disposed about the plurality of adhesive islands, as claimed. Inasmuch as
the Examiner does not demonstrate that Worthley discloses such an
arrangement, we do not sustain the obviousness rejection.
Obviousness rejection of claims 3, 7, 8, and 14—16, based on
Worthley and either Blatchford, Propp ’161, Propp ’821, or Roman
The Examiner’s obviousness rejections of claims 3, 7, 8, and 14—16
each rely on a finding that Worthley discloses an adhesive layer disposed
about the plurality of adhesive islands, as claimed. Inasmuch as the
Examiner does not demonstrate that Worthley discloses such an
arrangement, and does not demonstrate that any other reference remedies
this deficiency, we do not sustain the obviousness rejections of these claims.
DECISION
We REVERSE the Examiner’s anticipation and obviousness
rejections of claims 1—10, 12—16, and 21—23.
REVERSED
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