Ex Parte REN et al

Patent Trial and Appeal Board

Nov 10, 2016

13197313 (P.T.A.B. Nov. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/197,313 08/03/2011
58249 7590 11/15/2016
COOLEYLLP
ATTN: Patent Group
1299 Pennsylvania Avenue, NW
Suite 700
Washington, DC 20004
FIRST NAMED INVENTOR
XingQuan (Peter) REN
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
ATTORNEY DOCKET NO.
MDLN-006/01 US
312701-2023
CONFIRMATION NO.
5524
EXAMINER
TATESURE, VINCENT
ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
11/15/2016 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):
zpatdcdocketing@cooley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XINGQUAN REN, JIM O'BRIAN, and TOM PISTELLA
Appeal2015-004644
Application 13/197,313
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 10 through 201. We have jurisdiction under 35 U.S.C.
§ 6(b).
STATEMENT OF THE CASE
Appellants' invention is generally directed to a dye-free medical towel
comprising an absorbent cotton cloth. App. Br. 7.
1 Claims 1-9 stand withdrawn from consideration. Final Office Action
entered September 20, 2013 ("Final Act."), 2.
Appeal2015-004644
Application 13/197,313
Claim 10 illustrates the subject matter on appeal and is reproduced
below:
10. A dye free medical towel, comprising:
a cotton absorbent cloth having:
a reflectance percentage value of greater than about
25 and less than about 75, between about 360 nm and about 750
nm,
a whiteness value of less than about 50% WI-CIE,
an absorbency rate of greater than about 2
millimeters per second; and
a lint release less than 700,000 particles of 0.5
micron size or greater.
App. Br. 16, Claims Appendix.
Appellants (see generally App. Br.) request review of the Examiner's
final rejection of claims 10-20 under 35 U.S.C. § 102(a) or§ 102(e) as
anticipated by Kapik et al. (US 2009/0270824 Al, published October 29,
2009, hereinafter "Kapik"), or alternatively under 35 U.S.C. § 103(a) as
unpatentable over Kapik.
OPINION
After review of the respective positions provided by Appellants and
the Examiner, we REVERSE the Examiner's rejection of claims 10-20
under 35 U.S.C. § 102(a) or§ 102(e), or alternatively under 35 U.S.C.
§ 103(a). We add the following. 2
2 For the purposes of this appeal, we select claim 10, the broadest claim on
appeal, as representative, and decide the propriety of the rejection based on
this claim alone.
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Appeal2015-004644
Application 13/197,313
The critical issue on appeal is whether the Examiner has established
that the surgical towel disclosed in Kapik would inherently have a whiteness
value and a reflectance percentage within the respective ranges recited in
claim 10. In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995) ("[t]he inherent
teaching of a prior art reference, a question of fact, arises both in the context
of anticipation and obviousness.")
The Examiner finds that Kapik discloses a dye-free, pigment-free
surgical towel made of absorbent cotton cloth that has a lint release of less
than 500 for particles 0.5 micron or greater in size. Final Act. 2. The
Examiner determines that because Kapik's dye-free, pigment-free cotton
cloth has substantially the same structure and chemical composition as the
medical towel recited in claim 10, Kapik' s surgical towel would inherently
have a whiteness value and a reflectance percentage as recited in claim 10.
Final Act. 3. On this record, however, the Examiner has not established that
the surgical towel disclosed in Kapik would necessarily or inherently have a
whiteness value of less than about 50% WI-CIE, and a reflectance
percentage value of greater than about 25 and less than about 7 5 at between
about 360 nm and about 750 nm as recited in claim 10.3
Appellants' Specification explains that the procedure used to produce
the claimed medical towel eliminates bleaching and dyeing, and consolidates
degreasing and washing into one step under high-temperature/high-pressure.
Spec. i-fi-123-24. Appellants' Specification further explains that this
manufacturing process that does not involve bleaching reduces the lint levels
in the towel, increases the towel's absorbency, retains the natural color of
3 An inherent characteristic must be inevitable. In re Oelrich, 666 F .2d 578,
581(CCPA1981).
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Appeal2015-004644
Application 13/197,313
the cotton, and results in favorable glare characteristics (reflectance) under
operating room lighting conditions. Spec. i-fi-122, 25, and 31.
Kapik does not explain how its disclosed surgical towel is produced,
and thus Kapik does not disclose whether or not the surgical towel is treated
with bleach or is subjected to degreasing and washing in one step under
high-temperature/high-pressure. As Appellants point out (App. Br. 11
referring to Spec. i123), one of ordinary skill in the art would have
reasonably understood that the process used to produce a medical or surgical
towel, including conducting degreasing and washing in one step under high-
temperature/high-pressure without bleaching, affects the whiteness and
reflectance of the towel. The Examiner fails to account for Kapik' s lack of
disclosure of how the surgical towel is produced and processed, including
Kapik's failure to indicate whether or not degreasing and washing is carried
out in one step under high-temperature/high-pressure without bleaching. In
other words, because Kapik does not disclose that the surgical towel is
produced by the same or substantially similar process as the claimed medical
towel, the Examiner does not show that Kapik's surgical towel will
necessarily or inherently have the same or substantially similar whiteness
and reflectance values as the claimed towel. In re Spada, 911 F.2d 705, 708
(Fed. Cir. 1990) (explaining that it was reasonable for the PTO to infer that
Smith teaches the claimed polymers because the PTO shows "the
polymerization by both Smith [(prior art)] and Spada [(Appellant)] of
identical monomers, employing the same or similar polymerization
h . ") tee mques .... In other words, the Examiner does not supply sufficient
evidence to establish that Kapik's dye-free, pigment-free surgical towel
necessarily or inherently has a whiteness value and reflectance percentage as
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Appeal2015-004644
Application 13/197,313
recited in claim 10. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)
("Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set of
circumstances is not sufficient.")
Therefore, we do not sustain the Examiner's rejection of claims 10-20
under 35 U.S.C. § 102(a) or§ 102(e). Although the Examiner alternatively
rejects claims 10-20 as obvious over Kapik, the Examiner fails to provide
any explanation or reasoning as to why Kapik's disclosures would have
rendered claim 10 obvious. Accordingly, we also reverse the Examiner's
rejection of claims 10-20 under 35 U.S.C. § 103(a).
DECISION
For the reasons set forth above, the decision of the Examiner to reject
claims 10-20 is reversed.
REVERSED
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