Ex Parte Chua

Patent Trial and Appeal Board

Mar 6, 2017

12537961 (P.T.A.B. Mar. 6, 2017)

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.
12/537,961 08/07/2009 Mark Spencer G. Chua BPMDL0010MC (10074U) 6427
27939 7590 03/06/2017
Philip H. Burrus, IV
Burrus Intellectual Property Law Group LLC
222 12th Street NE
Suite 1803
Atlanta, GA 30309
EXAMINER
HARRIS, RAYMOND EUGENE
ART UNIT PAPER NUMBER
3772
MAIL DATE DELIVERY MODE
03/06/2017 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 MARK SPENCER G. CHUA
Appeal 2014-000154
Application 12/537,961
Technology Center 3700
Before LINDA E. HORNER, EDWARD A. BROWN, and JILL D. HILL,
Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Mark Spencer G. Chua (Appellant)1 seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision, as set forth in the Final Office Action,
dated November 21, 2012 (“Final Act.”), as modified in the Examiner’s
Answer, dated July 16, 2013 (“Ans.”), rejecting claims 1, 3-6, 8-15, 17, 18,
and 20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellant identifies Medline Industries, Inc. as the real party in interest.
Br. 2.
Appeal 2014-000154
Application 12/537,961
CLAIMED SUBJECT MATTER
Appellant’s claimed subject matter relates to “a surgical stockinette
that can be applied to body appendages during medical procedures, and
more particularly to a surgical stockinette that is easily expanded due to its
folded construction.” Spec., para. 1. Claims 1, 13, 17, and 20 are
independent. Claim 1 is representative of the subject matter on appeal and is
reproduced below.
1. An expandable surgical stockinette, comprising:
a closed end; and
an open end for receiving an appendage of a patient, the
open end and closed being separated by a length of material;
wherein the length of material is folded with an accordion
fold so as to be expandable by pulling the open end away from
the closed end, thereby unfolding the length of material;
wherein an opening is formed by folding the length of the
material so as to extend back over itself towards the closed end
so as to form a cuff extending from the open end toward the
closed end;
wherein the cuff extends across the accordion fold.
REJECTIONS
The Final Action, as modified by the Examiner’s Answer, includes the
following grounds of rejection:
1. Claims 1, 3-6, 8-11, and 20 under 35 U.S.C. § 102(b) as
anticipated by Patience (US 3,707,964, issued January 2, 1973).
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2. Claim 12 under 35 U.S.C. § 103(a) as unpatentable over Small
(US 3,968,792, issued July 13, 1976) and Auerbach
(US 2004/0103904 Al, published June 3, 2004).2
3. Claims 13-15 under 35 U.S.C. § 103(a) as unpatentable over
Patience, McDonniel (US 6,536,636 Bl, issued March 25, 2003)
and Comstock (US 5,985,395, issued November 16, 1999).
4. Claims 17 and 18 under 35 U.S.C. § 103(a) as unpatentable over
Patience and Auerbach.3
ANALYSIS
First Ground of Rejection
The Examiner finds that Patience discloses an expandable surgical
stockinette as called for in independent claims 1 and 20, including cuff 15
that “extends across the accordion fold.” Final Act. 2-3, 5. Appellant
contends that “Patience fails to teach a cuff that extends across an accordion
fold.” Br. 14 (emphasis omitted). Appellant asserts that “extends across”
means a cuff that “covers” and “completely encloses the accordion fold.”
Id. (referencing annotated version of Appellant’s Fig. 7). Appellant argues
that Patience’s folds 11, 12, 13, and 14 “are not covered by any cuff. . .
because all [the] folds can clearly be seen.” Id. at 15 (referencing annotated
2 In the Examiner’s Answer, the Examiner withdraws the rejection of claims
1, 3-6, 8-11 and 20 under 35 U.S.C. § 102(b) as anticipated by Small.
Ans. 3.
3 The Examiner mistakenly includes claim 19 in this ground of rejection.
Final Act. 12. Claim 19 is canceled. Final Act. 2.
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Application 12/537,961
version of Patience’s Fig. 1) (emphasis omitted). Appellant further notes
that Patience’s cuff “is formed prior to the formation of the accordion fold”
and thus “the cuff cannot ‘extend across the accordion fold.’” Id. (emphasis
omitted).
The Examiner disputes Appellant’s proposed interpretation of
“extends across” and responds that “the definition of extend is ‘to stretch’ or
‘to stretch out’ and does not require the cuff to completely enclose the
accordion fold, nor does it require the folds to not be seen.” Ans. 4
(Examiner stating that “the features which the appellant relies upon are not
recited in the rejected claims”).
We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but 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).
The Specification describes, with respect to Figure 7, cuff 760
“extends over” fold 706:
Turning now to FIG. 7, illustrated therein is a stockinette
700 having a cuff 760 that extends over the fold 706 in the length
of material 705. By having the cuff 760 extend over the fold 706,
which may be either of an accordion fold or a twist fold, the cuff
760 helps to maintain the integrity of the fold 706 during storage
and transport. In this illustrative embodiment, the cuff 760 can
be formed by simply folding down a portion 761 of the length of
material 705 so as to cover and secure the fold 706.
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Application 12/537,961
Spec., para. 44 (emphasis added).
The Specification uses the phrase “extend across” with reference to
the embodiment of Figure 6. Specifically, the Specification states:
The cuff 660 extends back over the length of material 605 from
the opening 662 towards the closed end 604, as the portion 661
of the length of material is atop the remainder of the length of
material 605. The portion 661 of the length of material can pass
atop the fold 606, or it may stop short of the fold 606. For
example, where the cuff 660 is created with a simple fold, the
cuff 660 may extend across the fold 606. Where the cuff 660 is
created with a rolled fold or stacked fold, the cuff 660 can extend
across the fold 606 or stop before the fold 606.
Spec., para. 42.
An ordinary meaning of “across” is “from one side to the opposite
side of.” Merriam-Webster On-Line Dictionary, https://www.merriam-
webster.com/dictionary/across, definition la, last accessed March 2, 2017.
By contrast, ordinary meanings of “over” include “above” and “so as to
cover the whole surface.” Merriam-Webster On-Line Dictionary,
https://www.merriam-webster.com/dictionary/over, definitions 3a and 3b,
last accessed March 2, 2017.
In discussing the embodiment of Figure 7, in which cuff 760
completely covers accordion fold 706, the Specification uses the phrase
“extends over” to describe how cuff 760 covers and secures fold 706. This
comports with the ordinary meaning of “over” as covering the whole
surface. By contrast, in discussing the embodiment of Figure 6, in which
cuff 660 is “formed by folding a portion 661 of the length of material 605
adjacent to the open end 603 back across the length of material 605 in a
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simple fold,” the Specification describes that cuff 660 “may extend across
the fold 606.” Spec, paras. 41, 42. In this context, “extend across” can be
understood to not require cuff 660 to completely cover or enclose fold 606,
but to call for cuff 660 to merely span some portion of fold 606, e.g., pass
atop a portion of fold 606 as opposed to stopping short of fold 606.
Although the embodiment disclosed in Figure 7 of Appellant’s
Specification may differ from the article disclosed in Patience, “the name of
the game is the claim.” In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir.
1998). Appellant chose to use the phrase “extends across,” rather than
“completely covers” or “extends over,” in claims 1 and 20 to describe the
position of the claimed cuff relative to the accordion fold. In light of the
different usage of “extend across” versus “extend over” in Appellant’s
Specification, we find the Examiner’s interpretation of “extends across” in
claims 1 and 20 to not require the cuff to completely enclose the accordion
fold is reasonable and comports with the broadest reasonable interpretation
in view of the Specification. Thus, we interpret “the cuff extends across the
accordion fold” in claims 1 and 20 to require only that the cuff spans or
passes atop a portion of the accordion fold. Based on this interpretation, we
now turn to the disclosure in Patience.
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Figure 1 of Patience is reproduced below.
IF I G.
Figure 1 illustrates a surgical drape in folded form having an enlarged
cuff exposed on the top panel with the hands of a nurse shown in position
schematically. Patience, col. 3,11. 37-39. Folded surgical drape 10 includes
enlarged cuff 15, which spans from one side to the other of folds 30, 31, and
32 formed between panels 11, 12, 13, and 14. See also Patience, Figs. 4, 7-
10 (showing formation of cuff 15 and folding of panels 12, 13, and 14).
Because cuff 15 spans from one side to the other of the folded material when
in the folded condition shown in Figure 1, we agree with the Examiner’s
finding that Patience discloses a cuff that extends across the accordion fold,
as called for in claims 1 and 20. Had Appellant wished to more narrowly
confine the claims to the embodiment of Figure 7, Appellant could have
used language that comports with the description of Figure 7 in Appellant’s
Specification.
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For these reasons, Appellant has not demonstrated error in the
rejection of independent claims 1 and 20 under 35 U.S.C. § 102(b) as
anticipated by Patience. Appellant does not present any additional
arguments for dependent claims 3-6 and 8-11. Br. 12-16. Thus, these
dependent claims fall with claim 1, from which they depend. 37 C.F.R.
§ 41.37(c)(l)(iv).
Second Ground of Rejection
In the Examiner’s Answer, the Examiner withdraws the rejection of
claim 1 under 35 U.S.C. § 102(b) as anticipated by Small. Ans. 3. The
Examiner, however, does not withdraw the rejection of dependent claim 12
under 35 U.S.C. § 103(a) as unpatentable over Small and Auerbach. Ans.,
passim. Appellant does not present separate arguments against this ground
of rejection in the Brief, apparently relying on the argument presented
against the rejection of independent claim 1. Br., passim; see also id. at 16-
18 (arguing that Small does not anticipate because it does not disclose an
accordion fold). We surmise from the withdrawal of the anticipation
rejection that the Examiner finds the argument presented against the
rejection of claim 1 based on Small to be persuasive. The Examiner does
not rely on Auerbach to cure the noted deficiency in Small. Final Act. 10
(Examiner proposing to modify “the stockinette of Small to comprise at least
one of the first and second layers being liquid impervious ... as taught by
Auerbach et al.”). As such, we reverse the rejection of claim 12 under
35 U.S.C. § 103(a) as unpatentable over Small and Auerbach.
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Third Ground of Rejection
Independent claim 13 is directed to a method of manufacturing a
folded surgical stockinette and comprises a step of “applying an additional
accordion fold to a cuff.” Br. 24 (Claims App.). The Examiner finds that
Patience is “silent as to applying an additional accordion fold to the cuff.”
Final Act. 11. The Examiner relies on Comstock as disclosing “a similar
method of manufacturing a surgical stockinette . . . wherein an accordion
fold is applied to a cuff (drape 400 is fan folded[,] i.e. accordion folded[,] to
form stacks 406 and 408 on respective sides [and] then rolled to form a cuff,
Col. 10, Ins. 56-64, Figure 24). . . .” Id.
Appellant argues that “FIG. 24 [of Comstock] makes it clear that a
rolled fold has folds disposed at the interior of the rolled fold. There is no
cuff shown.” Br. 21. We agree with Appellant that the cited embodiment of
Comstock does not show a cuff having an accordion fold. Rather, the
surgical drape of the embodiment of Figure 24 has ends that are folded with
accordion folds and then rolled. Comstock, col. 10,11. 56-64. These rolled
ends do not form cuffs. For this reason, we do not sustain the rejection of
independent claim 13 and its dependent claims 14 and 15 under 35 U.S.C.
§ 103(a) as unpatentable over Patience, McDonniel, and Comstock.
Fourth Ground of Rejection
Independent claim 17 is directed to a method of applying a surgical
stockinette to a patient comprising a step of “at least partially unfolding the
cuff, thereby exposing the accordion fold.” Br. 25 (Claims App.).
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The Examiner relies on Patience to disclose the step of partially
unfolding the cuff to expose the accordion fold. Final Act. 12. In particular,
the Examiner explains that “the cuff 15 is partially unfolded by the nurse
placing his/her hands into it and thereby extending the folded surgical drape
and therefore exposing the accordion fold which lay below the cuff 15 which
is on the front panel 11.” Id. (citing Patience, col. 3,11. 51-64).
Appellant relies on the same arguments presented for claims 1 and 20,
arguing that “Patience’s cuff fails to extend across an accordion fold” and
thus, “Patience cannot expose an accordion fold by unfolding the cuff.”
Br. 21 (arguing that “Patience’s accordion fold is always visible”). For
reasons similar to those discussed above with regard to the first ground of
rejection, Appellant’s argument is not persuasive because it is not
commensurate with the scope of the claim language.
The ordinary meaning of “expose” is “to cause to be visible or open to
view.” Merriam-Webster On-Line Dictionary, https://www.merriam-
webster.com/dictionary/expose, definition 3, last accessed March 2, 2017.
The Examiner’s finding that cuff 15 of Patience’s surgical drape is unfolded
to expose the accordion fold is supported by the preponderance of the
evidence. For example, in addition to the portion cited by the Examiner,
Patience further discloses that a nurse inserts her hands in receiving pocket
16 formed by cuff 15 and uses opposed lateral spreading movement of the
hands to open the folded drape, which results in the bottom edge portion of
its opening drooping away from the top edge portion, as shown in Figure 2.
Patience, col. 5,11. 26-37, Figs. 1,2. In other words, the opposed lateral
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spreading movement of the nurse’s hands causes cuff 15 to partially unfold
about vertical fold lines 28 and 29, thereby opening to view the accordion
fold along the vertical axis of the drape. Id.
For these reasons, Appellant has not demonstrated error in the
rejection of independent claim 17 under 35 U.S.C. § 103(a) as unpatentable
over Patience and Auerbach. Appellant does not present any additional
arguments for dependent claim 18. Br. 21. Thus, this dependent claim falls
with claim 17, from which it depends. 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
The decision of the Examiner to reject claims 1, 3-6, 8-11, 17, 18,
and 20 is AFFIRMED.
The decision of the Examiner to reject claims 12-15 is REVERSED.
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-IN-PART
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