Ex Parte MunzelDownload PDFPatent Trial and Appeal BoardNov 7, 201712714804 (P.T.A.B. Nov. 7, 2017) Copy Citation 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. 12/714,804 03/01/2010 Jon Munzel MUN-100US 7522 13173 7590 11/09/2017 Rlne Filament T aw EXAMINER 700 E. Maple Road Suite 450 HICKS, VICTORIA J Birmingham, MI 48009 ART UNIT PAPER NUMBER 3772 NOTIFICATION DATE DELIVERY MODE 11/09/2017 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): ag @bluefil amentlaw.com ap @bluefil amentlaw.com patentdocketing@bluefilamentlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JON MUNZEL Appeal 2016-003837 Application 12/714,804 Technology Center 3700 Before THOMAS F. SMEGAL NATHAN A. ENGELS, and ERIC C. JESCHKE, Administrative Patent Judges. SMEGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Jon Munzel (Appellant)1 seeks our review under 35U.S.C. § 134 of the Examiner’s rejections2 under 35 U.S.C. § 112, second paragraph, of claims 1,3, 6—9, and 11—16 as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention; and under 35 U.S.C. § 103(a), of claims 1,3,6, 9, and 11— 16 as unpatentable over Woods (US 1,898,233, iss. Feb. 21, 1933), Patnode (US 5,143,091, iss. Sept. 1, 1992), Annett (US 6,244,268 Bl, iss. June 12, 2001), and Baynes (US 6,966,320 Bl, iss. Nov. 22 2005); of claim 7 as unpatentable over Woods, Patnode, Annett, Baynes, and Gavette (US 1 Appellant self-identifies as the real party in interest. Appeal Br. 1. 2 Appeal is taken from the adverse decision of the Examiner as set forth in the Final Office Action, dated June 4, 2015 (“Final Act.”). Appeal 2016-003837 Application 12/714,804 6,923,186 B2, iss. Aug. 2, 2005); and of claim 8 as unpatentable over Woods, Patnode, Annett, Baynes, and Gallob (US 1,545,093, iss. July 7, 1925).3 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER Claim 1, the sole independent claim, illustrates the claimed subject matter and is reproduced below with disputed limitations emphasized. 1. A shower curtain comprising: a polymeric sheet surrounding an aperture and having securements along a polymer sheet edge to facilitate suspension of said polymeric sheet from a generally horizontal shower curtain rod; an elastomeric ribbon attached to said polymeric sheet to at least partially cover the aperture to define a portal adjustably sized with a thinned region or printed indicia designating cut lines to enlarge the size of the portal to pass an injured limb through the portal and is adapted to be tensioned against a user proximal limb relative to a distal injury of the injured limb to form a seal to retain circulation in the injured limb; a first flap attached to a first side of said polymeric sheet along a flap edge and having a slit or cutout, said flap extends beyond the portal and said slit or cutout extending towards and not overlapping the portal, said first flap overlying the portal, the first flap on a side of said polymeric sheet intended to be exposed to a shower spray; and wherein the slit or cutout adapted to facilitate the draping of said first flap over a user proximal portion of the injured limb to effectively form a shield preventing water spray from a shower from contacting said seal of the shower curtain between 3 Claims 2 and 17—20 have been canceled. Claims 4, 5, and 10 are withdrawn. Final Act. 2. 2 Appeal 2016-003837 Application 12/714,804 said elastomeric ribbon and the user proximal portion of the injured limb.4 ANALYSIS Indefiniteness of Claims 1, 3, 6—9, and 11—16 We are not persuaded that the Examiner erred in finding claim 1 “indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor . . . regards as the invention,” in reciting “the limitation ‘said seal of the shower curtain between said elastomeric ribbon and the user proximal portion of the injured limb’ in lines 17-18 of the claim.” Final Act. 2—3. (emphasis added). As the Examiner explains, “[tjhere is insufficient antecedent basis for this limitation in the claim.” Id. at 3. A “satisfactory response” to an indefmiteness rejection “can take the form of a modification of the language identified as unclear, a separate definition of the unclear language, or, in an appropriate case, a persuasive explanation for the record of why the language at issue is not actually unclear.”/^? re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014). However, Appellant makes no reference to the Examiner’s rejection under 35 U.S.C. § 112, second paragraph. See generally Appeal Br. 4—17. In the Reply Brief, Appellant for the first time contends that “reference to the inventive ‘shower curtain’ per the claim preamble fails to render the claim indefinite.” Reply Br. 8. However, Appellant’s argument 4 In that the Amendment in Response to Final Office Action, dated September 4, 2015 was not entered, a correct copy of claim 1 on Appeal is found in the Amendment filed May 18, 2015, rather than in APPENDIX A to the Appeal Brief, as stated by Appellant at page 8 of the Reply Brief. 3 Appeal 2016-003837 Application 12/714,804 is not responsive to an argument newly raised in the Examiner’s Answer. Appellant did not set forth this argument in a timely manner prior to filing of the Reply Brief to permit the Examiner an opportunity to fully respond. See 37 C.F.R. § 41.41(b)(2) (2014) (“Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner’s answer . . . will not be considered by the Board for purposes of the present appeal, unless good cause is shown.”). Thus, we do not consider this argument. For the foregoing reason, we sustain the Examiner’s decision rejecting claims 1,3, 6—9, and 11—16 as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention. Obviousness of Claims 1, 3, 6, 9, and 11—16 over Woods, Patnode, Annett, and Baynes; of claim 7 over Woods, Patnode, Annett, Baynes, and Gavette; and of claim 8 as unpatentable over Woods, Patnode, Annett, Baynes, and Gallob Appellant presents certain arguments asserting the patentability of claims 1,3,6, 9, and 11—16 as a group. Because Appellant also purportedly argues claims 3,12, and 15 separately (Appeal Br. 14—15; Reply Br. 2—3), the analysis of the arguments directed at this group overall determines the outcome for claims 1, 3, 9, 11, 13, 14, and 16.5 We select claim 1 as the representative claim for this group, and the remaining claims in this group 5 To the extent that Appellant’s reference to additional elements recited in dependent claims 3, 12, and 15 constitute separate arguments for patentability of these claims, we address them infra. 4 Appeal 2016-003837 Application 12/714,804 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). Appellant submits that claims 7 and 8 stand or fall with claim 1, and does not present separate arguments for these claims, which are subject to different rejections. See Appeal Br. 4.6 Thus, the outcome as to claims 1,3, 7—9, 11, 13, 14, and 16 turns on the analysis as to independent claim 1. Regarding claim 1, the Examiner relies on Woods for teaching, inter alia, a shower curtain formed of a waterproof sheet (curtain 10) with at least one aperture (portal) 16 and a first flap 17 “adapted to overlay a proximal portion of an injured limb to effectively form a shield preventing water spray from a shower (6) from contacting a seal adapted to be formed around the injured limb and the proximal portion of the injured limb that is insufficient to protect the injured limb (the portion of the injured limb that is exposed to water) from water from the water spray (produced by shower 6).” Final Act. 3^4 (citing Woods, Figs. 1 and 2). While observing that “Woods does not teach the [waterproof] sheet being made of a polymeric material, the portal being adjustably sized with a thinned region or printed indicia designating cut lines to enlarge the size of the portal, or an elastomeric ribbon attached to said sheet to at least partially cover the aperture to define a portal adjustably sized to receive a limb,” the Examiner first determines that Patnode “teaches in Figure 2, column 2, lines 49-54 and column 6, lines 38-41 [,] an analogous device in which the sheet is made of a polymeric material,” reasoning that “[t]he devices of Woods and 6 We note being admonished by our reviewing court that “applicant can waive appeal of [any] ground of rejection.” Hyatt v. Dudas, 551 F. 3d 1307, 1314 (Fed. Cir. 2008). 5 Appeal 2016-003837 Application 12/714,804 [Patnode] are analogous inasmuch as they are both barrier materials.” Id. at 4. From the foregoing, the Examiner reasons that it would have been obvious “to modify the sheet taught by Woods to be made of a polymeric material as taught by [Patnode] because this element is known to be a totally fluid impervious material.” Id. (citing Patnode, col. 6,11. 38-41). Furthermore, the Examiner explains that because “the device of Woods is designed to prevent shower water from scattering and escaping from the sheet. . ., such a modification would enhance the ability of the device of Woods to contain shower fluid.” Id. (citing Woods, col. 1,1. 48—col. 2,1. 2). The Examiner also finds that Patnode teaches an analogous device with an elastomeric ribbon (26) attached to said sheet (22) to at least partially cover an aperture (24) to define a portal (28) adjustably sized (via the stretchable, and therefore adjustable, elastomeric ribbon material) to pass an injured limb through the portal (28) and is adapted to be tensioned against a user proximal limb relative to a distal injury of the injured limb to form a seal, said seal being insufficient to prevent water passing through said seal to wet the distal injury (inasmuch as any water passed through the seal would wet the distal injury). Id. at 5. The Examiner reasons that it would have been obvious to modify the aperture and sheet taught by Woods as modified by Patnode [] with the elastomeric ribbon attached to said sheet to at least partially cover the aperture to define a portal adjustable sized to receive a limb as taught by Patnode [] because this element [elastomeric ribbon] is known to conform to the skin of the patient and form an effective seal to isolate the limb.” Id. (citing Patnode, col. 1,11. 59—62). 6 Appeal 2016-003837 Application 12/714,804 The Examiner also explains that “[s]uch a modification [of Woods] would prevent leakage of shower fluid through the aperture when a limb is placed therethrough.”7 Id. While first flap 17 of Woods “can be positioned over the user proximal portion of the injured limb to effectively form a shield preventing water spray from a shower from contacting said seal of the shower curtain between said ribbon and the user proximal portion of the injured limb,” the Examiner observes that “Woods and Patnode [] do not teach the first flap having a slit or cutout, wherein the slit, the portal being adjustably sized with a thinned region, or printed indicia designating cut lines to enlarge the size of the portal or cutout is adapted to facilitate the draping of said first flap over the user proximal portion of the injured limb.” Id. at 5—6. However, the Examiner determines that Annett [] teaches in Figure 1 and [0007] of the Detailed Description an analogous device with the first flap (54) having a slit or cutout (66), said slit or cutout (66) extending towards and not overlapping the portal (the center of the roll illustrated in Figure 1), wherein the slit or cutout (66) is adapted to facilitate the draping of said first flap (54) over the user proximal portion of the injured limb. Id. at 6. From the foregoing, the Examiner reasons that it would have been obvious to modify the first flap taught by Woods as modified by Patnode [] to have a slit or cutout, said slit or cutout extending towards and not overlapping the portal, wherein the slit or cutout is adapted to facilitate the draping of said first flap over the user 7 See also Woods, column 1, lines 10-13 (disclosing flexible openings “adapted to yieldingly close upon the members introduced and afford a seal against outward escape of the shower”). 7 Appeal 2016-003837 Application 12/714,804 proximal portion of the injured limb as taught by Annett [] because this element is known to provide a finger hold for the device. Id. (citing Annett, 17). Although acknowledging that “Woods, Patnode [] and Annett [] do not teach the portal being adjustably sized with a thinned region or printed indicia designating cut lines to enlarge the size of the portal,” the Examiner finds that “Baynes teaches in Figure 5, column 1, lines 20-24 and column 2, lines 42-45 an analogous device wherein the portal (the hole formed through window 16 when the center section 18 is removed) is adjustably sized with a thinned region (perforation lines 20),” and “with printed indicia (perforation lines 20) designating cut lines to enlarge the size of the portal.” Id. at 7. The Examiner also determines that “perforation line (20) is formed of a line of perforations, and thus a line of cuts, and therefore, indicates the presence of a cut line (a line formed of cuts)” that “can be considered indicia inasmuch as the perforation lines (20) are distinctive marks,” and “can be considered printed indicia inasmuch as the perforation lines (20) are impressed, and thus printed, in and on the ribbon (16).” Id. From the foregoing, the Examiner reasons that it would have been obvious “to modify the portal taught by Woods as modified by Patnode [] and Annett [] to be adjustably sized with a thinned region or printed indicia designating cut lines to enlarge the size of the portal as taught by Baynes because this element enables portions of the ribbon to be selectively removed so that the size of the portal may be selectively varied,” to “enable the size of the portal to be varied and customized to accommodate limbs of individuals of different sizes.” Id. at 7—8 (citing Baynes, col. 1,11. 20-24; col. 2,11. 42-45). 8 Appeal 2016-003837 Application 12/714,804 In taking issue with the Examiner’s findings and conclusions, Appellant first reproduces verbatim the Examiner’s entire final rejection of claim 1. See Appeal Br. 5—7. Rather than identifying specific error in the Examiner’s rejections, Appellant generally contends, first, that “[n]oprima facie case of obviousness is established as to produce the claimed structure with the recited interaction [of] the flap having a slit or cutout and the portal to keep a casted limb dry without cutting off blood circulation to the limb,” and, second, that “[t]he Annett, Baker, Baynes and Gavette references do not qualify as prior art under 35 U.S.C. § 103 because they are not analogous to the invention being claimed.” Id. at 8. Regarding the first contention, Appellant also asserts that there must be some motivation found in the prior art or general knowledge in the art to limit the quality of the seal around a limb passed through a portal in a shower curtain to retain circulation in the limb while preventing the wetting of such a limb through the claimed design of a flap partially overlapping this portal per claim 1. Id. at 11; see also Appeal Br. 12. However, the argument that a motivation must be found in the prior art is foreclosed by KSR International Co. v. Teleflex Inc., 550 U.S. 398, 402 (2007), in which the Court rejected the rigid requirement of a teaching, suggestion, or motivation to combine known elements in order to show obviousness. Id. at 415. Thus, “if 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.” Id. at 417. Furthermore, as the Examiner explains, “the features upon which [Appellant] relies (i.e., limiting the quality of the seal around a limb passed 9 Appeal 2016-003837 Application 12/714,804 through a portal in a shower curtain) are not recited in the rejected claim(s).” Ans. 18 (emphasis omitted). We agree that Appellant’s contention is unavailing as it is not commensurate with the scope of claim 1, which is not limited by the quality of the seal around a limb passed through a portal in a shower curtain, but merely recites a “an elastomeric ribbon ... to form a seal to retain circulation in the injured limb.”8 As we are instructed by our reviewing court, “limitations are not to be read into the claims from the [Specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citing In reZletz, 893 F.2d 319, 321 (Fed. Cir. 1989)). Without specifically referring to any prior art cited by the Examiner, Appellant also contends that “the Examiner has resorted to deconstructing the claimed invention in isolated components and through improper hindsight construction combined references disclosing individual aspects of the claimed invention.” Appeal Br. 11. However, we are not persuaded that the combination of Woods, Patnode, Annett, and Baynes impermissibly uses the disclosure of the present patent application as a guide. In particular, Appellant has not identified any knowledge that the Examiner relied upon that was not otherwise within the level of ordinary skill at the time of the invention. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971); see also Radix Corp. v. Samuels, 13 USPQ2d 1689, 1693 (D.D.C. 1989) (“[A]ny obviousness inquiry necessarily involves some hindsight.”). Appellant continues by contending [njone of Woods, Patnode[,] Annett [], or Baynes, each alone, or in combination is submitted to teach the subject matter of claim 1 in current form that includes a portal that is adjusted through a thinned region or printed indicia used to adjust portal tension 8 See supra n.4. 10 Appeal 2016-003837 Application 12/714,804 against a cast limb to retain circulation with a limb inserted therethrough. Appeal Br. 12. Appellant also contends that the prior art does not teach the [portal tension] being insufficient to preclude the limb from becoming wet when showering yet affords the benefit of retaining blood circulation to the distal injured portion; with a slit or cutout flap that drapes over the proximal portion of the limb to protect the seal and thereby prevent water leaking through the seal to wet the casted or injured limb. Id. Appellant concludes that because the claimed invention of claim 1 provides this balanced approach of an adjustable seal that allows limb circulation, yet by itself is inadequate coupled with a slit or cutout containing flap to protect the seal from overhead shower spray that otherwise would compromise the seal, it is respectfully submitted that this synergistic interaction renders pending claim 1 allowable over the prior art of record. Id. at 13. However, we agree with the Examiner that “the seal formed by the device of Patnode [] is capable of functioning to retain circulation in the injured limb as claimed,” and adopt the additional findings and reasoning of the Examiner set forth at pages 5—6 of the Final Action and pages 19—20 of the Answer. As to the second argument set forth above, Appellant contends that the “Annett, Baker, Baynes and Gavette references do not qualify as prior art under 35 U.S.C. § 103 because they are not analogous to the invention of claim 1.” Appeal Br. 15. Our reviewing court has provided two criteria useful in finding whether art is analogous: “(1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the 11 Appeal 2016-003837 Application 12/714,804 reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1351 (Fed. Cir. 2010); see also In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). Appellant argues that “the pending claims are directed to a shower curtain — a durable consumer product hanging in a vertical orientation[—] are not in the same field of endeavor as [a] disposable surgical drape for horizontal draping around a surgical field of the prior art,” concluding that “[n]one of these prior art references is submitted to meet either prong of the test for analogous prior art.” Id. at 16—17. One determines whether a prior art reference is within the same field of endeavor as the subject matter of a claim by comparing the structure and function of the subject matter recited in the claim to that of the subject matter disclosed in the reference. In re Bigio, 381 F.3d 1320, 1326 (Fed. Cir. 2004). Furthermore, the Supreme Court’s decision in KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007), directs us to construe the scope of analogous art broadly, stating that “familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 402. We agree with the Examiner that “the devices of the prior art are in the field of [Appellant’s] endeavor (barrier materials),” as they “are drape 12 Appeal 2016-003837 Application 12/714,804 materials that, similarly to Appellant’s invention, function to provide a barrier to protect a user’s anatomy (from water, liquid, etc.).”9 Ans. 22. In the Reply Brief, Appellant for the first time contends that “the length of the intervening time between the publication dates of the cited prior art and the claimed invention are also an objective indicator of nonobviousness.” Reply Br. 7. However, Appellant’s argument is not responsive to an argument newly raised in the Examiner’s Answer. Appellant did not set forth this argument in a timely manner prior to filing of the Reply Brief to permit the Examiner an opportunity to fully respond. See 37 C.F.R. § 41.41(b)(2) (“Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner’s answer . . . will not be considered by the Board for purposes of the present appeal, unless good cause is shown.”). Furthermore, “[t]he mere age of the references is not persuasive of the unobviousness of the combination of their teachings, absent evidence that, notwithstanding knowledge of the references, the art tried and failed to solve the problem.” In re Wright, 569 F.2d 1124, 1127 (CCPA 1977).Thus, we consider this newly presented argument to be without merit. Regarding claim 3, Appellant misreads the Examiner’s rejection in contending that “the inclusion of the elastic ribbon in Woods with an elastic ribbon per Patnode [] and Annett [] implicitly implies the replacement of the draw band 15 of Woods.” Appeal Br. 14. The Examiner’s rejection of 9 We note that Appellant’s Specification even acknowledges that the prior art surgery drapes are in the field of Appellant’s endeavor, disclosing the “inventive drape being used in surgery.” Specification, 116,11. 11—14. 13 Appeal 2016-003837 Application 12/714,804 claim 1 (and dependent claim 3) is based on the first flap 17, not the head flap 12. See Final Act. 3^4. Thus, Appellant’s contention is without merit. Regarding claim 12, Appellant contends that “to construe the head passage 11 [of Wood] as a handle as this structure in usage cannot afford user support and indeed a handle would detract from arm movement to facilitate washing per Woods.” Appeal Br. 14. However, the Examiner explains that “[t]he head passage (11) of Woods can be considered a handle inasmuch as it is a structure having an opening configured to be gripped with the hand,” and “[s]ince Appellant has not provided a special definition of handle in the specification, the examiner must give the term handle its broadest reasonable interpretation in light of the specification and therefore, any structure that is able to be gripped with the hand can be considered to be a handle.” Ans. 20—21. We determine the scope of the claims in a patent application upon giving claims “their broadest reasonable interpretation consistent with the specification” and “in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). “Construing claims broadly during prosecution is not unfair to the applicant. . . because the applicant has the opportunity to amend the claims to obtain more precise claim coverage.” Id. We agree with the Examiner that “any structure extending from the drape of Woods that is able to be gripped with the hand could be considered to be a handle since Appellant has not recited any additional structural features that would distinguish the claimed handle from that of the prior art.” Ans. 21. 14 Appeal 2016-003837 Application 12/714,804 Regarding claim 15, Appellant contends that “there is no teaching of record of an opening adapted to create a closed loop in which an injured limb (arm exits via the shower curtain and the hand of that limb is brought back into shower area[)].” Appeal Br. 15. However, Appellant’s contention is unavailing as it is not commensurate with the scope of claim 15, which is not limited to “an opening adapted to create a closed loop,” but merely recites an opening “adapted to receive a user’s hand of an injured limb.” Appeal Br. 21, Claims App. As we are instructed by our reviewing court, “limitations are not to be read into the claims from the [Specification.” In re Van Geuns, 988 F.2d at 1184. Based on the foregoing, we sustain the Examiner’s rejections of claims 1,3,6, 9, and 11—16 over Woods, Patnode, Annett, and Baynes; of claim 7 over Woods, Patnode, Annett, Baynes, and Gavette; and of claim 8 as unpatentable over Woods, Patnode, Annett, Baynes, and Gallob. DECISION We AFFIRM the Examiner’s rejections. 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)(l)(iv). AFFIRMED 15 Copy with citationCopy as parenthetical citation