Ex parte CARTMELL et al.

Board of Patent Appeals and Interferences

Aug 13, 1998

08456166 (B.P.A.I. Aug. 13, 1998)

Application for patent filed May 31, 1995. According1
to appellants, the application is a division of Application
08/144,003, filed November 1, 1993, now U.S. Patent No.
5,695,456, issued December 9, 1997, which is a continuation-
in-part of Application 07/862,456, filed April 2, 1992, now
U.S. Patent No. 5,429,589, issued July 4, 1995.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte JAMES V. CARTMELL, WAYNE R. STURTEVANT
and MICHAEL L. WOLF
________________
Appeal No. 97-1029
Application 08/456,1661
________________
ON BRIEF
________________
Before McCANDLISH, Senior Administrative Patent Judge, STAAB
and McQUADE, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 97-1029
Application 08/456,166
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James V. Cartmell et al. appeal from the final rejection
of claims 25 through 30, all of the claims pending in the
application. As the result of an amendment subsequent to
final rejection, the examiner has withdrawn all rejections of
claim 26 and this claim now stands objected to as depending
from a rejected base claim. Thus, only the standing
rejections of claims 25 and 27 through 30 remain for review.
The invention relates to “a wound packing in the form of
a flexible spirally-cut layer capable of absorbing wound
exudate” (specification, page 1). Claim 25 is illustrative
and reads as follows:
25. A wound packing comprising:
a flexible wound packing material capable of absorbing
wound exudate, said flexible material being in the form of a
substantially flat, coiled, spirally-cut layer impregnated
with a hydrogel material.
The references relied upon by the examiner as evidence of
anticipation and obviousness are:
Romaine 4,377,160 Mar. 22, 1983
Koide et al. (Koide) 5,395,305 Mar. 7, 1995
(filed Aug. 16, 1991)
The claims on appeal stand rejected as follows:
a) claim 27 under 35 U.S.C. § 112, second paragraph, as
Appeal No. 97-1029
Application 08/456,166
In the final rejection, claim 27 also was rejected2
under 35 U.S.C. § 102(b) as being anticipated by Romaine. The
examiner has since withdrawn this rejection in view of the
amendment of parent claim 26 subsequent to final rejection.
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failing to particularly point out and distinctly claim the
subject matter the appellants regard as the invention;
b) claims 25, 28 and 29 under 35 U.S.C. § 102(b) as being
anticipated by Romaine; and 2
c) claim 30 under 35 U.S.C. § 103 as being unpatentable
over Romaine in view of Koide.
Reference is made to the appellants’ main and reply
briefs (Paper Nos. 10 and 11½) and to the examiner’s main and
supplemental answers (Paper Nos. 11 and 13) for the respective
positions of the appellants and the examiner with regard to
the merits of these inventions.
The 35 U.S.C. § 112, second paragraph, rejection rests on
the examiner’s determination that claim 27 is indefinite
because the term “the outer surface” which appears therein
lacks a proper antecedent basis (see pages 4, 6 and 7 in the
main answer). The appellants, stating that they “are willing
to amend claim 27 to provide proper antecedent basis by
Appeal No. 97-1029
Application 08/456,166
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reciting that the wound packing has outer surfaces” (reply
brief, page 2), appear to acquiesce to the examiner’s
position. Accordingly, we shall sustain the standing 35
U.S.C. § 112, second paragraph, rejection of claim 27.
We shall not sustain, however, the standing 35 U.S.C.
§ 102(b) rejection of claims 25, 28 and 29 as being
anticipated by Romaine, or the standing 35 U.S.C. § 103
rejection of claim 30 as being unpatentable over Romaine in
view of Koide.
Romaine discloses a “compression bandage adapted to be
wrapped around a selected portion of the human or animal body,
for minimizing swelling caused by a sprain, contusion or
bruise” (column 1, lines 6 through 9). The bandage 10 is an
elongate, flat, pliant strip of flexible, open-cell, synthetic
resin foam 11 impregnated with a high water content gel 12.
As explained by Romaine,
[t]he thickness of the strip is ordinarily in the
range of about 3/16 to about 5/16 inch, preferably
about ¼ inch. The width of the strip is selected so
that the body part can be completely wrapped by
making only a few turns of the bandage around the
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Application 08/456,166
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body part. Thus, for wrapping the extremities of
the human body, such as the hand or foot, the width
of the bandage is from about 1 inch to about 3
inches, preferably about 2 inches. The length of
the bandage is selected so as to be effective to
wrap the entire area of the human or animal body
part to which the bandage is to be applied. For
example, the length of the bandage can be from about
2 to about 6 feet, with a length of about 4 feet
being preferred for most practical uses [column 3,
lines 28 through 41].
Romaine indicates that this bandage is “packageable in a small
and compact form because it can be spirally rolled for
storage” (column 1, lines 57 through 59).
Claims 25, 29 and 30, the three independent claims on
appeal, recite a wound packing comprising, inter alia, a
flexible wound packing material “in the form of a
substantially flat, coiled, spirally-cut layer.” The
examiner’s determination that the Romaine bandage when
spirally rolled for storage meets this limitation (see pages
5, 7 and 8 in the main answer) is not well taken. Although
the Romaine bandage as so rolled arguably would be coiled, it
still would not be a substantially flat, spirally cut layer as
claimed. The examiner’s finding to the contrary is unsound
because it is predicated on an unreasonable interpretation of
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Application 08/456,166
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the claim limitation at issue, particularly when such is
interpreted, as it must be, in light of the underlying
specification (see pages 8 and 9). Moreover, there is nothing
in the Romaine disclosure which would have suggested modifying
the compression wrap bandage disclosed therein to take the
form of a “substantially flat, coiled, spirally-cut layer.”
Since Koide does not cure this deficiency in Romaine with
respect to the subject matter recited in independent claims
25, 29 and 30, the standing prior art rejections of these
claims, and of claim 28 which depends from claim 25, must
fall.
The following rejection is entered pursuant to 37 CFR
§ 1.196(b).
Claim 26, and claim 27 which depends therefrom, are
rejected under 35 U.S.C. § 112, first paragraph, as being
based on a specification which fails to comply with the
written description requirement of this section of the
statute.
The test for determining compliance with the written
description requirement is whether the disclosure of the
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Application 08/456,166
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application as originally filed reasonably conveys to the
artisan that the inventor had possession at that time of the
later claimed subject matter, rather than the presence or
absence of literal support in the specification for the claim
language. In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089,
1096 (Fed. Cir. 1983). In the present case, there is no basis
in the appellants’ originally filed disclosure for the
recitation in claim 26 that the hydrogel impregnated in the
wound packing material “is devoid of water.” To the contrary,
the original disclosure indicates that this hydrogel, even
when dehydrated, contains at least a small degree of water
(see, for example, specification pages 4, 13, 15 and 16).
Thus, the disclosure of the instant application
packing comprising a hydrogel which is devoid of water as is
now recited in claims 26 and 27.
In summary:
a) the decision of the examiner to reject claims 25 and
27 through 30 is affirmed with respect to claim 27 and
reversed with respect to claims 25 and 28 through 30; and
Appeal No. 97-1029
Application 08/456,166
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b) a new rejection of claims 26 and 27 is entered
pursuant to 37 CFR § 1.196(b).
In addition to affirming the examiner’s rejection of one
or more claims, this decision contains a new ground of
rejection pursuant to 37 CFR § 1.196(b)(amended effective Dec.
1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197
(Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63,
122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides, “A new
ground of rejection shall not be considered final for purposes
of judicial review.”
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for
rehearing within two months from the date of the
original decision . . . .
37 CFR § 1.196(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 proceedings (37
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Application 08/456,166
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CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Should the appellants elect to prosecute further before
the Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in
order to preserve the right to seek review under 35 U.S.C. §§
141 or 145 with respect to the affirmed rejection, the
effective date of the affirmance is deferred until conclusion
of the prosecution before the examiner unless, as a mere
incident to the limited prosecution, the affirmed rejection is
overcome.
If the appellants elect prosecution before the examiner
and this does not result in allowance of the application,
abandonment or a second appeal, this case should be returned
to the Board of Patent Appeals and Interferences for final
action on the affirmed
rejection, including any timely request for reconsideration
Appeal No. 97-1029
Application 08/456,166
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thereof.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART; 37 CFR § 1.196(b)
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
)
)
LAWRENCE J. STAAB )BOARD OF PATENT
Administrative Patent Judge )APPEALS AND
)INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 97-1029
Application 08/456,166
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