Ex Parte Daneshvar

Patent Trial and Appeal Board

Oct 31, 2012

11704635 (P.T.A.B. Oct. 31, 2012)

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.
11/704,635 02/09/2007 Yousef Daneshvar 1618
7590 10/31/2012
Yousef Daneshvar, MD. FACC
3425 LonePine Rd
West Bloomfield, MI 48323
EXAMINER
BROWN, MICHAEL A
ART UNIT PAPER NUMBER
3772
MAIL DATE DELIVERY MODE
10/31/2012 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 YOUSEF DANESHVAR
__________

Appeal 2010-010160
Application 11/704,635
Technology Center 3700
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and
FRANCISCO C. PRATS, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for anticipation. We have jurisdiction under 35 U.S.C. § 6(b).
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STATEMENT OF CASE
Representative claims 1, 7, and 13 follow. The remaining claims can
be found in the Appendix to the Brief.
1. A wrap for compressively wrapping a portion of a living body, the
wrap comprising:
a length of relatively stretchable material forming at least a portion of
the length of a strap and having an outer face for facing away from a
compressively wrapped portion of a living body and an inner face for facing
toward a compressively wrapped portion of a living body;
the inner face of the relatively stretchable material possessing a loop-
type fastening characteristic capable of detachably/re-attachably attaching to
hook-type fastener material;
and at least one piece of hook-type fastener material disposed on the
strap at a location that provides for the inner face of the relatively stretchable
material to directly detachably/re-attachably attach to the at least one piece
of hook-type fastener by surface-to-surface contact after the strap has
encircled the portion of the living body.

7. A wrap for compressively wrapping a portion of a living body, the
wrap comprising:
a strap
A) that has lengthwise opposite ends,
B) that is relatively stretchable along its length for compressively
wrapping a portion of a living body,
C) that has an outer face for facing away from a compressively
wrapped portion of a living body and an inner face for facing toward a
compressively wrapped portion of a living body;
D) that along a first lengthwise segment comprises stretchable
material that presents, as the outer face, a loop-type fastening characteristic
capable of detachably/re-attachably directly attaching to hook-type fastener
material; and
E) that along a second lengthwise segment comprises stretchable
material that presents, as the inner face, a loop-type fastening characteristic
capable of detachably/re-attachably directly attaching to hook-type fastener
material.

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13. A wrap system for compressively wrapping a limb of a living
person, the wrap system comprising:
an elastic garment sleeve having an open end into which an end of a
limb can be inserted to allow the sleeve to be pulled over the limb to a
position that elastically girdles the limb;
at least one strap for compressively wrapping the limb;
one attachment means for attaching one lengthwise end of the strap to
the sleeve;
the strap comprising a length of relatively stretchable material that has
an outer face for facing away from a compressively wrapped limb and an
inner face for facing toward a compressively wrapped limb; and
another attachment means for attaching an opposite lengthwise end of
the strap to either a prior convolution of the strap that is compressively
wrapping the limb or to the elastic garment after the strap has compressively
wrapped the limb.

Cited References

Shaw US 4,215,687 Aug. 5, 1980

Grounds of Rejection
Claims 1-27 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Shaw.
FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Answer at pages 3-
6. The following facts are highlighted.

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1. Figures 1 and 1A of the Specification are reproduced below.

Figures 1 and 1A show double sided wrap having an inside and
outside. ATM1-B is loop material, ATM2-B is hook material,
ADH is adhesive. STR-S is a strap made of stretchable Lycra ™
which functions as a loop fastener means (Spec. 20).

2. Figures 1-3 of Shaw are reproduced below.
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Figures 1-3 show a two-sided wrap (band). Elements 14 and 18
are hook surfaces. Element 13 is a nap (loop) surface. The band
10 may be stretchable (col. 3, ll. 36-41.)
3. Shaw states at col. 3, ll. 35-41, that
The band itself may be made of interlocking fabric material, such as
Velcro or Scotchmate material. If a stretchable band were used, the
interlocking fabric would not be applied continuously along the entire
outer surface of the band because the nap material is not stretchable.

Thus, the nap or loop surface of the stretchable band of Shaw is not
stretchable.

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Discussion
ISSUE
The Examiner concludes that Shaw anticipates the compressive wrap
as claimed because
Shaw discloses in figures 1-6 a wrap comprising a length
of relative stretchable material forming at least a portion of the
length of a strap 10 (the strap can be stretchable, col. 3, lines
38-41), having an outer face (at 13), facing away from the
compressively wrapped body portion, an inner face (the
opposite face from 13), hook and loop material (13, 14 and 18),
multiple pieces of hook and loop (13, 18), attached to the outer
surface, located lengthwise on the strap, hook and loop 14 on
the inside, and another piece of hook and 1oop 14, located on
the end, a non-stretchable support (a second strap), an
additional relatively stretchable strap (another strap that can be
stretchable) and a ring (formed by 11, that a finger can be
inserted into). The hook and loop material on the stretchable
strap will be noncontinuous (col. 3, lines 38-42), making it
multiple. The material of the strap can be non-stretchable or
stretchable. The hook and loop material is located on the inside
and outside of the stretchable and non-stretchable material.

(Ans. 3-4.)

Appellant argues with respect to claim 1 that:
1. “Shaw (4,215,687) lacks any relatively stretchable material having
a surface that detachably/re-attachably attaches by direct surface-
to-surface contact with at least one piece of hook-type fastener on
the strap after the strap has encircled the portion of the living
body.” (App. Br. 9-10.)

2. “It is clear that the Shaw strap is secured solely by ‘pressing the
hook patches 14 against the underlying nap surfaces 13 of the
band.’ Col. 3, line 41, says that the material for making attachment
is not stretchable.” (Id. at 10.)

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3. “Shaw contains no teaching of that uncovered material having a
characteristic that allows it to directly detachably/re-attachably
attach to a piece of hook-type fastener by surface-to-surface
contact after the band has encircled the limb.” (Id.)

The issue is: Does Shaw teach a wrap wherein “the inner face of the
relatively stretchable material possesses a loop-type fastening characteristic
capable of detachably/re-attachably attaching to hook-type fastener
material,” and “to directly detachably/re-attachably attach to the at least one
piece of hook-type fastener by surface-to-surface contact,” as claimed?

PRINCIPLES OF LAW
In order for a prior art reference to serve as an anticipatory reference,
it must disclose every limitation of the claimed invention, either explicitly or
inherently. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). To
anticipate, every element and limitation of the claimed invention must be
found in a single prior art reference, arranged as in the claim. Karsten Mfg.
Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001).

ANALYSIS
We do not find that the Examiner has provided evidence to support a
prima facie case of anticipation with respect to claim 1. Claim 1 requires a
wrap wherein “the inner face of the relatively stretchable material possesses
a loop-type fastening characteristic capable of detachably/re-attachably
attaching to hook-type fastener material.
Shaw discloses that the nap material (e.g. Velcro) of the band is not
stretchable. (FF3.) If a stretchable band were used as the band in Shaw, the
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interlocking fabric (loop or nap material) would not be applied continuously
along the entire outer surface of the band because the nap material is not
stretchable. Therefore, Shaw does not disclose a wrap wherein “the inner
face of the relatively stretchable material possesses a loop-type fastening
characteristic capable of detachably/re-attachably attaching to hook-type
fastener material,” as claimed.
The loop areas of Shaw are not stretchable as it is the stretchable
material (for example Lycra ™) of the claimed wrap which itself functions
as a loop fastener means (Spec. 20). Furthermore, the claimed wrap has at
least one piece of hook-type fastener material disposed on the strap at a
location that provides for the inner face of the relatively stretchable material
to directly detachably/re-attachably attach to the at least one piece of
hook-type fastener by surface-to-surface contact after the strap has
encircled the portion of the living body. The stretchable strap of Shaw has
intervening non-stretchable loop material, so it would not directly
detachably/re-attachably attach to the at least one piece of hook-type
fastener by surface-to-surface contact after the strap has encircled the
portion of the living body. The rejection of claim 1 and its dependent
claims is reversed.

Claim 7
Appellant provides separate argument for claim 7 in the Brief at page
12. Claim 7 recites in relevant part a wrap for compressively wrapping the
human body having first and second lengthwise segments, as follows:
a strap
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B) that is relatively stretchable along its length for compressively
wrapping a portion of a living body,
D) that along a first lengthwise segment comprises stretchable
material that presents, as the outer face, a loop-type fastening characteristic
capable of detachably/reattachably directly attaching to hook-type fastener
material; and
E) that along a second lengthwise segment comprises stretchable
material that presents, as the inner face, a loop-type fastening characteristic
capable of detachably/reattachably directly attaching to hook-type fastener
material.

Claim 7 is relatively stretchable along its length. Shaw discloses a
band with stretchable portions and non-stretchable portions. (Col. 3, ll. 36-
41.) Thus, the band of Shaw is not stretchable along its length, as claimed.
Appellant argues that “[t]he plain meaning of [claim elements] D) and
E) is that it is the stretchable material itself that possesses these specific
fastening characteristics in respective first and second lengthwise segments.
The reference patent doesn't disclose any stretchable material, much less
stretchable material as recited by D) and E).” (App. Br. 12.) We agree with
Appellant, and conclude that the Examiner has failed to provide sufficient
evidence in Shaw of the first and second lengthwise elements as claimed.
The rejection of claim 7, and its dependent claims 8-12 is reversed.
Claim 13 requires an “elastic garment sleeve” that “elastically girdles
the limb.” Appellant references Application Figs 7 and 8 and the stretchable
hose described therein as support for this claim. (Appeal Brief, 5-6; Spec.
22-24.) Appellant argues that Shaw does not disclose a sleeve, as claimed.
(App. Br. 13.) We are not persuaded. We agree with the Examiner that
Figure 5 of Shaw discloses a sleeve. (Ans. 5.) The rejection of claim 13 is
affirmed for the reasons of record. While the claims must be read consistent
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with the Specification, we are careful not to read embodiments from the
specification into the claims. See Sjolund v. Musland, 847 F.2d 1573, 1582
(Fed. Cir. 1988) (“[W]hile it is true that claims are to be interpreted in light
of the specification . . . , it does not follow that limitations from the
specification may be read into the claims. . . . It is the claims that measure
the invention.”). We agree with the Examiner that the multistrap wrap of
Fig. 5 of Shaw constitutes an “elastic garment sleeve,” as recited in claim
13. Appellant has not persuasively established that the Examiner’s
interpretation of the claim language is not consistent with the Specification.
The anticipation rejection of claim 13 is affirmed.
Appellant argues that Shaw does not disclose the additional
limitations of claims 14-20, which depend from claim 13 (Appeal Br. 13-
14). The Examiner did not specifically address these claims or Appellant’s
arguments regarding them. We are therefore compelled to reverse the
rejection of claims 14-20. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992) (“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.”).
CONCLUSION OF LAW
The anticipation rejection of claims 1-12 and 14-27 is reversed. The
anticipation rejection of claim 13 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

cdc