Maxime Bureau et al.

Patent Trials and Appeals Board

Jul 16, 2019

13520102 - (D) (P.T.A.B. Jul. 16, 2019)

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.
13/520,102 08/09/2012 Maxime Bureau 2043-011 3792
96056 7590 07/16/2019
Florek & Endres PLLC
1156 Avenue of the Americas
Suite 600
New York, NY 10036
EXAMINER
NGUYEN, CAMTU TRAN
ART UNIT PAPER NUMBER
3786
MAIL DATE DELIVERY MODE
07/16/2019 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 MAXIME BUREAU, JE HYUNG JUNG,
and THIERRY KELLER
____________

Appeal 2018-008885
Application 13/520,102
Technology Center 3700
____________

Before MICHAEL L. HOELTER, JAMES P. CALVE, and
WILLIAM A. CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the non-final
rejection of claims 1–11. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2018-008885
Application 13/520,102
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THE INVENTION
Appellants’ invention relates to medical devices such as casts and
splints. Spec. 1. Claim 1, reproduced below with paragraph indentation
added, is illustrative of the subject matter on appeal.
1. A body fitting element with negative pressure controlled
stiffness for immobilizing an external body member, extremity
or part, the body fitting element comprising
a gas tight envelope,
a plurality of layers fitted in the envelope and a valve
adapted to evacuate the interior of the envelope,
wherein the layers comprise a core made of a textile of
polyethylene terephthalate fibers and a first cover layer at both
sides of the core made of a polyurethane, and
wherein the body fitting element generally conforms to a
part of the exterior of a body.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:

The following rejections are before us for review:
1. Claims 1–4 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bonadio and Vitaris.
2. Claims 5 and 6 rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bonadio, Vitaris, and Crawley.
Larson
Ender
Bosman
Beane
Crawley
Rugfelt
Bonadio
Vitaris
US 3,701,349
US 4,549,537
US 4,848,364
US 5,906,577
US 5,948,707
US 2003/0139694 Al
US 6,796,940 B2
US 2009/0234309 Al
Oct. 31, 1972
Oct. 29, 1985
July 18, 1989
May 25, 1999
Sept. 7, 1999
July 24, 2003
Sept. 28, 2004
Sept. 17, 2009
Appeal 2018-008885
Application 13/520,102
3
3. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Bonadio, Vitaris, and Bosman.
4. Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Bonadio, Vitaris, and Beane.
5. Claim 9 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Bonadio, Vitaris, and Ender.
6. Claim 1 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Rugfelt, Bonadio, and Vitaris.
7. Claims 10 and 11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rugfelt, Bonadio, Vitaris, and Larson.
OPINION
Unpatentability of Claims 1–4
over Bonadio and Vitaris
Claim 1
The Examiner finds that Bonadio discloses the invention substantially
as claimed except for using polyethylene terephthalate (“PET”) fibers, for
which the Examiner relies on Vitaris. Non-Final Action 3–4. The Examiner
concludes that it would have been obvious to a person of ordinary skill in the
art at the time the invention was made to modify Bonadio by using PET
fibers as taught by Vitaris, to achieve the claimed invention. Id. at 4.
According to the Examiner, a person of ordinary skill in the art would have
done this to provide suitable stiffness. Id.
In traversing the rejection, Appellants note that Bonadio lacks a core
of PET fibers and Vitaris lacks PET fibers that are coated with polyurethane.
Appeal Br. 8. Appellants also note that Vitaris lacks a gas tight envelope
enclosing a multilayer configuration. Id. Appellants’ arguments in this
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regard merely repeat the findings of fact in the Examiner’s rejection and,
taken by themselves, are not indicative of Examiner error. See In re Merck
& Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (explaining that non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Appellants next challenge the combinability of the Examiner’s cited
references. Appeal Br. 8. Appellants point out that Vitaris is directed to a
wound dressing and uses PET fibers because they resist moisture. Id. at 9.
Appellants argue that Vitaris’s PET mesh is flexible in multiple directions.
Id. Appellants argue that Vitaris is not related to achieving rigidity and
immobilization by compressing a number of layers. Id.
In response, the Examiner finds that Bonadio, when modified by
Vitaris, is “capable of” immobilization. Ans. 12. However, this finding
begs the question of whether a person of ordinary skill in the art would have
been motivated to so modify Bonadio in the first instance.
The Examiner next states that a person of ordinary skill in the art
would have been motivated to use PET in the core of Bonadio, because PET
fiber material is known to be lubricious and, therefore, would facilitate
Bonadio’s device being fitted to a curved body surface prior to application
of negative pressure. Id. However, we are not persuaded that such is an
adequate rationale to support the rejection, particularly in light of the fact
that coating PET fiber materials with polyurethane would tend to negate the
lubricious nature of PET fibers..
It may be true that a skilled artisan need not be motivated to combine
the prior art for the same reason contemplated by the inventor. In re Kahn,
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441 F.3d 977, 990 (Fed. Cir. 2006). However, the instant invention does
more than combine layers of PET and polyurethane with negative pressure.
The claimed invention combines the various elements in such a way as to
achieved “controlled stiffness.” Claims App., claim 1; Spec. 4. “To that
purpose, an important issue is to have a high stiffness ratio between the soft
and hard states.” Spec. 5. To achieve this objective, Appellants use PET
core materials with a thickness of about 200 μm. Spec. 5. The PET is
coated on both sides with a first cover layer of thin, high friction coefficient
material with a thickness of about 10 μm. Id. “When a negative pressure is
applied, the laminated sheets (4) are compressed together and deformed, so
that the high friction coefficient surfaces (4b) of the first layer are in contact
with one another and the stiffness is high.” Spec. 6.
Bonadio is directed to a retainer to retain viscera displaced from an
internal body area during surgery. Bonadio, Abstract. Bonadio features a
sandwich-type structure comprising as few as two sheets of material
enclosed in envelope 2. Bonadio, col. 3, ll. 1–2. The sheets of material are
either of elastic material 10 or of inelastic material 11. Id. col. 3, ll. 2–4.
The elastic sheets are preferably open cell foam materials such as
polyurethane foam. Id. col. 3, ll. 9–10. The inelastic sheets 11 are
preferably closed cell material such as polystyrene. Id. col. 3, ll. 13–14.
The sheets are “malleable” and arranged in face to face relation within
envelope 2. Id. col. 3, ll. 17–18. Prior to evacuation, the sheets are free to
slide over one another so that the device can be conformed to a desired
shape. Id. col. 3, ll. 19–21. Envelope 2 is then evacuated such that
sheets 10, 11 are restrained from sliding relative to one another so that the
unit is retained in a desired form. Id. col. 3, ll. 21–25. Although the foam
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sheets may not slide after evacuation, there is no teaching that Bonadio’s
relatively thick foam loses its malleable qualities upon evacuation. See
generally Id.
Essentially, Bonadio is a retainer for an internal body cavity and
Vitaris is a wound dressing. The references, taken together, do not support a
view that a skilled artisan would have combined their teachings to achieve a
relatively stiff orthoses, such as a splint for a broken arm or leg. In our
view, it is unlikely that a person of ordinary skill in the art would have
replaced the relatively thick, malleable polyurethane foam and/or
polystyrene materials of Bonadio with PET fiber core materials coated with
a thin layer of high coefficient of friction material to achieve the desired
stiffness.
Whether a person of ordinary skill would have been motivated to
modify the teachings of a reference is a question of fact. WBIP, LLC v.
Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016). The mere fact that the
prior art may be modified in the manner suggested by the Examiner does not
necessarily make the modification obvious. In re Fritch, 972 F.2d 1260,
1266 (Fed. Cir. 1992). In an obviousness analysis, “one must have a
motivation to combine accompanied by a reasonable expectation of
achieving what is claimed in the patent-at-issue.” Intelligent Bio-Sys., Inc. v.
Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016). Motivation
to combine refers to “a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007). A reasonable expectation of success, on the other hand,
addresses whether a person of ordinary skill in the art would have
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understood that the proposed combination or modification would have been
reasonably likely to be successful. See, e.g., UCB, Inc. v. Ac-cord
Healthcare, Inc., 890 F.3d 1313, 1325–26 (Fed. Cir. 2018).
Here, the Examiner provides no evidence or persuasive technical
reasoning that a person of ordinary skill in the art, armed with the teachings
of Bonadio and Vitaris, would have had a reasonable expectation of
successfully achieving a device with the stiffness properties of Appellants’
invention. This follows, among other things, from the Examiner’s failure to
account for the thickness of the various materials in the proposed
combination.
In view of the foregoing, we do not sustain the unpatentability
rejection of claim 1.
Claims 2–4
These claims depend directly or indirectly, from claim 1. Claims
App. The Examiner’s rejection of these claims suffers from the same
infirmity that was identified above with respect to claim 1. Thus, for
essentially the same reason expressed above in connection with claim 1, we
do not sustain the rejection of claims 2–4.
Unpatentability of Claims 5–9
over Combinations Based on Bonadio and Vitaris
These claims depend directly or indirectly, from claim 1. Claims
App. The Examiner rejects each of these claims over Bonadio and Vitaris in
combination with other references. Non-Final Action 5–9. The rejections of
these claims suffers from the same infirmity that was identified above with
respect to claim 1, which infirmity is not cured by the Examiner’s reliance
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on other references. Thus, for essentially the same reason expressed above
in connection with claim 1, we do not sustain the rejection of claims 5–9.
Unpatentability of Claim 1
over Rugfelt, Bonadio, and Vitaris
The Examiner finds that Rugfelt teaches the invention substantially as
claimed except for using polyurethane coated PET core fibers, for which the
Examiner relies on Bonadio and Vitaris. Non-Final Action 9–10. For
reasons previously discussed in connection with the rejection of claim 1 over
Bonadio and Vitaris, a person of ordinary skill in the art would not have
been motivated to combine Bonadio and Vitaris to achieve a plurality of
core layers comprising a textile of PET fibers covered on both sides by
polyurethane. Consequently, we do not sustain the Examiner’s
unpatentability rejection of claim 1 over Rugfelt, Bonadio, and Vitaris.
Unpatentability of Claims 10 and 11
over Rugfelt, Bonadio, Vitaris, and Larson
Claims 10 and 11 depend, directly or indirectly, from claim 1. Claims
App. The rejection of these claims suffers from the same infirmity that was
identified above with respect to the rejection of claim 1 over Rugfelt,
Bonadio, and Vitaris, which infirmity is not cured by the Examiner’s
reliance on Larson. Thus, for essentially the same reason expressed above in
connection with the rejection of claim 1 over Rugfelt, Bonadio, and Vitaris,
we do not sustain the rejection of claims 10 and 11 over Rugfelt, Bonadio,
Vitaris, and Larson.
DECISION
The decision of the Examiner to reject claims 1–11 is REVERSED.
REVERSED