2020005884 (P.T.A.B. May. 25, 2021)

3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals BoardMay 25, 2021

2020005884 (P.T.A.B. May. 25, 2021)

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. 14/767,765 08/13/2015 GUIDO HITSCHMANN 71495US006 6036 32692 7590 05/25/2021 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 EXAMINER BAKER, ADAM D ART UNIT PAPER NUMBER 3786 NOTIFICATION DATE DELIVERY MODE 05/25/2021 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GUIDO HITSCHMANN Appeal 2020-005884 Application 14/767,765 Technology Center 3700 ____________ Before JOHN C. KERINS, EDWARD A. BROWN and BRETT C. MARTIN, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 4, 19, and 59–62. Claims 5, 7, 20, 23–25, 27, 36, and 41 are withdrawn, and claims 2, 3, 6, 8–18, 21, 22, 26, 28–35, 37–40, and 42–58 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE, and enter a NEW GROUND OF REJECTION under 37 C.F.R. § 41.50(b). 1 The term “Appellant” is used herein to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as 3M Company and its affiliate 3M Innovative Properties Company, both of St. Paul, Minnesota. Appeal Br. 2. Appeal 2020-005884 Application 14/767,765 2 THE CLAIMED SUBJECT MATTER Appellant’s invention relates to a compression device for a portion of a user’s limb. Claim 1 is illustrative, and is reproduced below with additional formatting added, as well as certain language particularly at issue on appeal being italicized: 1. A compression device for applying compression to a limb of a user comprising a sleeve for substantially covering a portion of the limb of a user, wherein the sleeve has an outer surface, an inner surface, an upper edge, a lower edge and two lateral side edges, wherein in the transverse direction from the first lateral side edge to the second lateral side edge the sleeve comprises a first lateral side region, a central region and a second lateral side region, wherein the second lateral edge region of the sleeve is provided with a plurality of rings in series between the upper and lower edges of the sleeve, each ring being releasably or fixedly attached by a strap extending between the sleeve and the ring in substantially the transverse direction of the sleeve, at least a portion of said strap being expandable in at least the transverse direction forming an expandable portion, wherein said expandable portion comprises an outer layer of material and an inner layer of material, the inner layer of material is fixedly attached to the sleeve at a first end of the inner layer of material and removably attached to the sleeve at a second end of the inner layer of material and the outer layer of material is fixedly attached to the first end of the inner layer of material and fixedly attached to the second end of the inner layer of material, the inner layer of material having elasticity in at least the transverse direction and the outer layer being inelastic, when the expandable portion is in its non- expanded state there is exteriorly a loop of material rising Appeal 2020-005884 Application 14/767,765 3 outwardly by the outer layer of material and when, in use under the provision of tension in the transverse direction of the sleeve, the expandable portion expands in the transverse direction and the loop of the outer layer of material flattens; wherein the device further comprises a plurality of strip- shaped mechanical fastening tabs, wherein a single tab is provided for each ring, each tab comprising a proximal end portion and a distal end portion being connected by an inner tab portion, wherein said proximal end portion is releasably or fixedly attached to the first lateral edge region of sleeve such that the tab is located opposite to a ring and extends in substantially the transverse direction of the sleeve, with its distal end portion positioned away from the central portion of the sleeve, wherein each tab has a first major surface located towards the outer surface of the sleeve and a second major surface located away from the outer surface of the sleeve, wherein the second major surface at the distal end portion of the tab comprises one part of a mechanical fastening system and said second major surface at the proximal end portion of the tab comprise the complementary part of the mechanical fastening system; and wherein the tabs and rings are configured and arranged such that, in use, the tabs are passed through the rings, turned back on themselves such that the first lateral side edge of the sleeve is drawn towards the rings and then fastened so that the sleeve is tightened and restrained about the limb of the user; wherein the device further comprises a tongue affixed to the inner surface at the second lateral edge region beyond the second lateral edge and underlies the rings, wherein the tongue comprises elongate stiffeners, such that, in use the rings will be located between the elongate stiffeners. Appeal 2020-005884 Application 14/767,765 4 THE REJECTIONS The Examiner rejects: (i) claims 1, 19, and 59–62 under 35 U.S.C. § 103(a) as being unpatentable over Harroff (US 3,935,858, issued Feb. 3, 1976) in view of Hannula (US 7,810,359 B2, issued Oct. 12, 2010) and Lewis (US 3,298,365, issued Jan. 17, 1967); and (ii) claim 4 under 35 U.S.C. § 103(a) as being unpatentable over Harroff in view of Hannula, Lewis, and Kellogg (US 7,767,874 B2, issued Aug. 3, 2010). ANALYSIS Claims 1, 19, and 59–62--35 U.S.C. § 103(a)--Harroff/Hannula/Lewis As seen in the italicized language of claim 1 above, the claim requires the presence of a strap having an expandable portion, the inner layer of which is fixedly attached to the sleeve at a first end and removably attached to the sleeve at a second end. The Examiner finds that Harroff discloses an inner layer of an expandable portion of a strap in the form of a strap portion having inner and outer layers that retain ring 38. The Examiner finds that, as shown in Figure 5 of Harroff, the inner layer “is shown to be fixedly attached to sleeve 10 via hook and loop 36/24.” Final Act. 3; see also Ans. 8. The Examiner’s initial finding as to inner layer 34 being removably attached to the sleeve is that this term is interpreted as meaning the inner layer can either be in contact or not in contact with the sleeve. Final Act. 2, 3. Appellant argues that neither Harroff, Hannula, Lewis, nor any combination thereof disclose an expandable portion having an elastic inner Appeal 2020-005884 Application 14/767,765 5 layer of material that is fixedly attached to a sleeve at a first end and removably attached to the sleeve at a second end. Appeal Br. 5–6. In response, the Examiner rephrases the findings somewhat, stating that, in Harroff, “[t]he end[s] of the straps attached to the ring 38 are shown removabl[y] attached to the sleeve as they are able to be placed into contact with the sleeve and to be removed from contact,” and “the end[s] of the strap loops that [are] directly connected to the stays are fixedly attached to a sleeve 10 via the hook and loop system 36/24 (Fig. 5).” Ans. 8–9. The Examiner further takes the position that there is no clear definition in Appellant’s Specification of either “removably attached,” or “fixedly attached,” and relies on Merriam-Webster dictionary definitions for these terms. 2 Ans. 9. We agree with Appellant that the Examiner has not adequately shown that an inner layer of an expandable strap portion is fixedly attached to a sleeve at a first end and removably attached to the sleeve at a second end, given what we now understand to be the Examiner’s interpretation of the term “removably attached.” Figure 5 of Harroff, as annotated by us to 2 The Examiner relies on “connected or joined to something” for attached; “to move by lifting, pushing aside, or taking away or off” for removable; and “securely placed or fastened” for fixed. Ans. 9. Appeal 2020-005884 Application 14/767,765 6 illustrate our understanding of the Examiner’s position, is presented below: Depicted above is an annotated version of Figure 5 of Harroff, which is a fragmentary cross-sectional view of the Harroff immobilizer. Harroff 1:51– 52. As we understand the Examiner’s position, the entire assembly underlying the sleeve 10, including stay 30, corresponds to the claimed expandable portion of a strap, and the portions shown in green (first end) and blue (second end) boxes above are inner layers, in terms of their being adjacent to sleeve 10. See, e.g., Ans. 9 (“inner layer interpreted to be the layer . . . that is adjacent to the sleeve”). With this being the interpretation of the first and second ends of the inner layer of the expandable portion of a strap, the second end is not “removably attached” to the strap under any reasonable interpretation of that term. Looking to the Examiner’s proffered definition of “attached,” noted above, the term requires that the inner layer be connected or joined to the strap. Causing the inner layer to “be in contact,” with the strap, as the Examiner puts it, does not result in a connection or joining, or attaching, of the components. The Examiner’s interpretation of the term “removably attached” in the context of the construction of the Harroff device is unreasonably broad, and the Examiner has not shown how the Harroff Appeal 2020-005884 Application 14/767,765 7 device discloses this claim limitation under any reasonable interpretation thereof. Although it appears that Appellant understood the Examiner’s interpretation differently, believing that the Examiner was relying on only the leftmost loop or strap of material retaining the ring as the claimed expandable portion of the strap, Appellant is nonetheless correct in asserting that “one of skill in the art [would not] determine that the straps themselves are attached to the sleeve.” Reply Br. 2. Accordingly, the rejection of claim 1 as being unpatentable over Harroff, Hannula, and Lewis is not sustained. Claims 19 and 59–61 depend from claim 1, and the rejection is not sustained as to those claims, either. Claim 62 is a method claim that expressly invokes the structure of the compression device of claim 1, and therefore the rejection is also not sustained as to that claim. Claim 4--U.S.C. § 103(a)--Harroff/Hannula/Lewis/Kellogg The Examiner does not rely on Kellogg in any manner that cures the deficiency noted above with respect to the combination of Harroff, Hannula, and Lewis as applied to claim 1. Accordingly, the rejection of claim 4 as being unpatentable over Harroff, Hannula, Lewis, and Kellogg is not sustained. NEW GROUND OF REJECTION Claims 1, 4, 19, and 59–62--35 U.S.C. § 112, first paragraph, written description Claims 1, 4, 19, and 59–62 are rejected under the first paragraph of 35 U.S.C. § 112, as failing to comply with the written description rejection. This is a New Ground of Rejection pursuant to 37 C.F.R. § 41.50(b). Appeal 2020-005884 Application 14/767,765 8 Independent claim 1 includes the limitation: the inner layer of material [of the expandable portion of the strap] is fixedly attached to the sleeve at a first end of the inner layer of material and removably attached to the sleeve at a second end of the inner layer of material … Appeal Br. 10–11 (Claims Appendix). Appellant’s Specification and drawings do not evidence that, at the time the application was originally filed, Appellant was in possession of an invention that included an expandable portion with an inner layer of material fixedly attached to the sleeve at a first end and removably attached to the sleeve at a second end, as claimed. New or amended claims that introduce elements or limitations not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967 (CCPA 1971). The purpose of the written description requirement is to prevent an applicant from later asserting that he invented that which he did not; the applicant for a patent is therefore required ‘to recount his invention in such detail that his future claims can be determined to be encompassed within his original creation.” Amgen Inc. v. Hoechst Marion Roussel Inc., 314 F.3d 1313, 1330 (Fed. Cir. 2003) (citing Vas Cath Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). While there is no in haec verba requirement, newly added claim limitations must be supported in the specification through express, implicit, or inherent disclosure. The fundamental factual inquiry is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. See, e.g., Vas-Cath, Inc., 935 F.2d at 1563–64. Appeal 2020-005884 Application 14/767,765 9 Appellant, in the course of prosecution, elected the embodiment of the invention as illustrated in Figures 4 and 5, and it is to that embodiment that claim 1 is drawn. See Amendment and Response to Election of Species, dated Nov. 27, 2017. Paragraph 56 of Appellant’s Specification, which describes the strap construction appearing in those figures, discloses generally that “[t]he present exemplary compression device differs from first exemplary embodiment in that the rings (16) together with their straps (17) are releasably attachable to the sleeve (1), in particular to the second lateral edge region (15).” Spec. ¶ 56. That same paragraph notes that, “[m]oreover in addition to the expandable, loop-comprising strap portion (21), the strap (17) includes a proximal end portion (31), wherein the inner major surface (34) (i.e. that surface facing the outer surface of the sleeve and opposite to the outwardly facing surface of the strap which includes the loop (20)) at the proximal end portion of the strap is provided with hook, stem and/or cup- shaped fasteners (strap fasteners) (37).” Id. The Specification somewhat more specifically states that: Accordingly the inner surface (34) at the proximal end portion (31) of the strap may be then releasably attached to the outer surface (3) at second lateral edge region (15) of sleeve (1). Spec. ¶ 56. As can be seen from the above passages and in Figures 4 and 5, the inner layer of the expandable portion is shown as being fixedly attached to the outer layer of the expandable portion at first and second ends. Concerning any attachment to the sleeve, the inner layer is shown as being in contact with loop material 38 of the sleeve, but nowhere in Figures 4 and 5, nor in the text of the Specification describing those figures, is there Appeal 2020-005884 Application 14/767,765 10 disclosure that the inner layer is both fixedly attached to the sleeve at a first end and removably attached to the sleeve at a second end. When the claim language at issue was initially introduced into claim 1, Appellant averred that support for the language is found in Figures 1 and 2, and at page 10, line 26, to page 11, line 6 of the Specification. See Amendment and Response Under 37 C.F.R. § 1.111, dated August 9, 2019. Not only do these portions of the disclosure relate to an unelected species, they also do not evidence possession of a construction in which an inner layer of an expandable strap portion is fixedly attached to the sleeve at one end, and removably attached at the other end. Figure 2 shows the inner layer 19 fixedly attached to a sleeve 3 at a first end with stitching, however, the second end is not shown as being removably attached to the sleeve at a second end. The Specification is additionally devoid of any disclosure of a removable attachment of the inner layer to the sleeve at a second end of the inner layer. For the above reasons, claim 1, and claims 4, 19, and 59–62, are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. DECISION The rejections of claims 1, 4, 19, and 59–62 under 35 U.S.C. § 103(a) as being unpatentable are reversed. Claims 1, 4, 19, and 59–62 are rejected, in a new ground of rejection, under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Appeal 2020-005884 Application 14/767,765 11 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s) /Basis Affirmed Reversed New Ground 1, 19, 59– 62 103(a) Harroff, Hannula, Lewis 1, 19, 59– 62 4 103(a) Harroff, Hannula, Lewis, Kellogg 4 1, 19, 59– 62 112, first paragraph Written Description 1, 4, 19, 59–62 Overall Outcome 1, 4, 19, 59–62 1, 4, 19, 59–62 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: Appeal 2020-005884 Application 14/767,765 12 (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. REVERSED; 37 C.F.R. § 41.50(b)