Ex Parte Dow

Patent Trial and Appeal Board

Feb 1, 2019

13346670 (P.T.A.B. Feb. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/346,670 01/09/2012
7590
Alfred F. Hoyte, Esq.
7734 16th Street NW
Washington, DC 20012
02/01/2019
FIRST NAMED INVENTOR
Rebecca A. Dow
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
RD52706C.UP A 1400
EXAMINER
SMITH, KAITLYN ELIZABETH
ART UNIT PAPER NUMBER
3794
MAIL DATE DELIVERY MODE
02/01/2019 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 REBECCA A. DOW 1
Appeal 2018-001378
Application 13/346,670
Technology Center 3700
Before DANIEL S. SONG, MICHAEL L. HOELTER, and
BRETT C. MARTIN, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's final rejection of claims 10-18, which constitute all the claims
pending in this application. Br. 1. We have jurisdiction under 35 U.S.C.
§ 6(b ). For the reasons explained below, we do not find error in the
Examiner's rejections of these claims. Accordingly, we AFFIRM the
Examiner's rejections.
1 "The real part in interest is the applicant: Rebecca A Dow." Br. 1. We
thus proceed on the basis that, for purposes of this appeal, Rebecca A. Dow
is the "Appellant."
Appeal 2018-001378
Application 13/346,670
CLAIMED SUBJECT MATTER
The disclosed subject matter "concerns therapeutic thermal treatment
devices." Spec. 1:12. Claims 10 and 15 are independent. Claim 10 is
illustrative of the claims on appeal and is reproduced below.
10. A thermal wrap for positioning about a user's head
compnsmg:
said wrap having a pair of opposing side portions, each of
said side portions having inner and outer sheets, said side
portions selectively connected by at least a pair of spaced co-
extensive connecting straps, the connecting straps connecting top
ends of the side portions;
said wrap including a chin strap portion connected to
lower edges of said side portions;
each of said side portions including a pocket having a
predetermined width for receiving a pack of thermal treatment
material of a standard size, said pack being of a standard size and
having laterally spaced edge regions;
one of said side portions having a pair of co-extensive
spaced strips of hook and loop type fastening material positioned
on the outer sheet in overlapping relation to said pocket to form
a primary treatment side of said wrap, the spacing of said strips
corresponding to the spacing of the edge regions of said pack of
thermal treatment material;
said straps engageable with said strips of hook and loop
material to secure the wrap in position about the user's head and
secure said primary treatment side in position proximate a target
position on said user's face.
REFERENCES RELIED ON BY THE EXAMINER
Hill et al. US 5,148,804 Sept. 22, 1992
Smith US 5,188,103 Feb. 23, 1993
Allen US 5,507,794 Apr. 16, 1996
Bass US 6,585,673 B 1 July 1, 2003
Nozik et al. US 2004/0186539 Al Sept. 23, 2004
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Application 13/346,670
THE REJECTIONS ON APPEAL 2
Claims 10, 13, 15, and 17 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Hill and Bass.
Claim 11 is rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Hill, Bass, and Allen.
Claims 12 and 16 are rejected under pre-Al A 35 U.S.C. § 103(a) as
unpatentable over Hill, Bass, and Nozik.
Claims 14 and 18 are rejected underpre-AIA 35 U.S.C. § 103(a) as
unpatentable over Hill, Bass, and Smith.
ANALYSIS
The rejection of claims 10, 13, 15, and 17
as unpatentable over Hill and Bass
Appellant presents arguments for independent claim 10 and,
separately, for independent claim 15. See Br. 3-5. We select claims 10 and
15 for review, with the remaining dependent claims (i.e., claims 13 and 17),
standing or falling therewith. See 37 C.F.R. § 4I.37(c)(l)(iv).
Claim 10
Claim 10 recites "a pocket having a predetermined width for receiving
a pack of thermal treatment material of a standard size." The Examiner
relies on Hill for such teachings. See Final Act. 4; see also Hill 2:6-9; 3:28-
29; 8: 18-20 ("Each set of gel packs 60, 70, and 80 includes two standard
size gel packs each manufactured to fit closely into pocket 30. "). Claim 10
2 Regarding claim amendments made after the Final Office Action, the
Examiner states, "[t]hese amendments resolve the claim objections and 35
U.S.C. [§] 112(b) rejection as set forth in the Final Office Action dated 23
July 2013." Advisory Action dated May 12, 2016.
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Application 13/346,670
also recites fastening strips and "the spacing of said strips corresponding to
the spacing of the edge regions of said pack of thermal treatment material"
in order to "secure said primary treatment side in position." The Examiner
relies on Bass for the location of the fastening strips. See Final Act. 5; Ans.
2. Bass explicitly teaches placing fastening strips with respect to opposite
edges of a pocket. See Bass 6:7-12 and Fig. 1. The Examiner states that it
would have been obvious "to have substituted the unitary strip of Hill with
the two coextensive strips of Bass in order to help prevent riding, roping and
folding over when used as taught by Bass (Col. 9, lines 63---65)." Final Act.
5; Ans. 2. In short, the Examiner is combining Bass's teaching of placing
fastening strips along the outer edges of a pocket, to Hill's teaching of a
pocket sized such that standard gel packs "fit closely into [the] pocket." See
supra. This edge placement of Bass's strips on Hill's pockets reasonably
"correspond[ s] to the spacing of the edge regions of said pack of thermal
treatment material" as recited. Thus, it is concluded the Examiner has met
the threshold requirement for presenting a prima facie case of obviousness. 3
Appellant first contends that "Hill does not disclose the strap
positioning and tensioning arrangement" (Br. 3) but the Examiner relied on
Hill in combination with Bass for such teachings, not Hill alone. See Final
Act. 5; Ans. 2. Appellant also contends that "Hill discloses relatively wide
3 The PTO satisfies its initial procedural burden of establishing a prima facie
rejection by adequately explaining the shortcomings it perceives so that the
applicant is properly notified and able to respond. See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011). "When a prima facie case of obviousness is
made, the burden then shifts to the applicant to come forward with evidence
and/or argument supporting patentability. In re Glaug, 283 F.3d 1335, 1338
(Fed. Cir. 2002)." In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014).
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Application 13/346,670
straps" (Br. 3) but claim 10 is silent as to the width of the straps. Appellant
further contends that, as regarding the recited chin strap, Hill's "chin strap is
as wide as the side pockets that store the gel pack" (Br. 4), but again, claim
10 is silent as to the width of the chin strap. Appellant argues, "[t]his
combination of chin and side straps is simply not shown or disclosed by
Hill" (Br. 4), but the Examiner's rejection regarding the side straps is not
based on Hill alone, nor is the Examiner's rejection based on anticipation
under 35 U.S.C. § 102. Appellant states that the Examiner is "engaged in
impermissible hindsight" (Br. 4) but does not identify that which might have
been gleaned only from Appellant's disclosure (and which is not taught or
suggested by either Hill or Bass). See also Ans. 3.
When addressing "Bass ( or for that matter Hill)," Appellant contends
that Bass "does not show any structure for applying tension to a narrow
centralized portion of the pocket and thermal pack." Br. 4. Even presuming
Appellant is arguing the combination of Hill and Bass, and not Bass alone,
Appellant is mis-construing claim 10. Claim 10 is silent as to "applying
tension to a narrow centralized portion of the pocket and thermal pack" and
thus Appellant is arguing a feature not claimed. See Ans. 3.
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 10, or dependent claim
13, as being obvious over Hill and Bass.
Claim 15
Claim 15 differs slightly from claim 10 above in that claim 15 simply
recites "a pocket for receiving a pack of thermal treatment material." Again,
the Examiner relies on Hill for such teachings. See Final Act. 6. Regarding
strap positioning, claim 15 recites straps that "overlap[] the edge regions of
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said thermal pack" to "apply lateral tension [] to the edge regions of said
pack of thermal treatment material." As above, the Examiner relies on Bass
for strap positioning and expresses the same rationale for combining Hill and
Bass. See Final Act. 6-7; Ans. 4.
Appellant argues, "Hill does not discuss straps applying pressure only
to edge regions of the gel pack" (Br. 4) but the Examiner relied on Hill in
combination with Bass, for teaching straps that apply pressure to the gel
pack's edge regions, not Hill alone. 4 See Final Act. 6-7; Ans. 4. Regarding
Appellant's contention that "Bass (or for that matter Hill) does not show any
structure for applying tension to a narrow centralized portion of the pocket
and thermal pack" (Br. 4), this is a mis-reading of the relevant limitation of
claim 15. Claim 15 does not recite "applying tension to a narrow centralized
portion of the pocket." Instead, claim 15 recites "said chin strap portion
centrally positioned to apply lengthwise tension to" the pocket-containing
side portions. Appellant does not explain how Hill's corresponding "chin
strap (32)" is not "centrally positioned" as claimed, nor does Appellant
explain how this middle portion 32 fails to "apply lengthwise tension to" the
adjoining pockets 30. Final Act. 6 (referencing Hill Figs. 1 and 1 OD).
Appellant also argues that, as regarding the chin strap, Hill does not
discuss "a chin strap applying tension only to a central part of the wrap as
specifically recited in claim 15." Br. 4. However, the Examiner responds
stating, "applying tension to only a central part of the wrap ... is not recited
in the rejected claim." Ans. 4; see also supra. Appellant further argues that
4 Regarding Appellant's assertion of "only," we note that claim 15 does not
employ this term and is not so preclusive.
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the claimed "type of tensioning system is not disclosed or in any way
suggested by Hill" (Br. 4) but, as explained above, the tensioning system is
based on a combination of Hill and Bass, not Hill alone. In effect, Appellant
appears to be arguing the art individually and is not responding to the
Examiner's rejection.
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 15, or dependent claim
17, as being obvious over Hill and Bass.
The rejection of claim 11
as unpatentable over Hill, Bass, and Allen
Appellant does not dispute separately, the Examiner's rejection of
claim 11 in view of Hill, Bass, and Allen. See Appeal Brief generally.
Accordingly, we summarily sustain the Examiner's rejection of this claim.
The rejection of claims 12 and 16
as unpatentable over Hill, Bass, and Nozik
Claims 12 and 16 both recite, "said chin strap portion is about one half
the width of said side pockets." The Examiner relies on Nozik for disclosing
"a holder (title) that includes a contoured section (26) which the width may
be narrowed ([0025])." Final Act. 8; see also Ans. 5. In the Examiner's
Answer, the Examiner reiterates that Nozik is not relied on for "specifically
teach[ing] the dimension of a width of about half the pocket." Ans. 6.
Instead, N ozik "is being used to teach that the sizing of the narrowed portion
would be selected according to the application of the device." Ans. 6; see
also Final Act. 8 ("[ t ]he specific characteristics of the contoured section ...
are based on the proposed application for the holder ([0025])." The
Examiner concludes that it would have been obvious "to have included the
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Application 13/346,670
narrowed portion of a dimension specific to the application of the device."
Final Act. 9; see also Ans. 5.
Appellant does not challenge the Examiner's reasoning, but instead
contends, "[t]he Nozik chin strap cannot apply tension centrally." Br. 5.
Nozik is not relied on for applying tension centrally, but instead for
disclosing a chin strap of varying width. Final Act. 8; Ans. 5. Appellant
also contends, "[ w ]hether the tapered portion eventually tapers to a width
about half the width of the side pocket is unclear." Br. 5. However, as
expressed above, the Examiner is not relying on Nozik for disclosing a
specific dimension that "is about one half the width of said side pockets" as
recited; instead, the Examiner is relying on Nozik to teach that the width
"would be selected according to the application of the device." See supra.
Appellant does not explain how the Examiner's rationale is incorrect, or that
N ozik fails to disclose varying the width of the chin strap such that the
recited width would not have been obvious. See Nozik ,r 25 ("width W may
be narrowed").
Accordingly, and based on the record presented, we sustain the
Examiner's rejection of claims 12 and 16 as being obvious over Hill, Bass,
and Nozik.
The rejection of claims 14 and 18
as unpatentable over Hill, Bass, and Smith
Both claims 14 and 18 include the limitation, "wherein said chin strap
portion includes a permanently attached strap and a releasably attached
strap." The Examiner relies on Hill for teaching the former (permanently
attached) strap and on Smith for teaching the latter (releasably attached)
strap. See Final Act. 9; Ans. 6. The Examiner reasons that it would have
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Application 13/346,670
been obvious "to have utilized the anchor strap of Smith with the device of
Hill in order to assist in maintaining the position of the main band on the
face as taught by Smith." Final Act. 9 (referencing Smith Fig. 3).
Appellant contends, "[ n Jone of the drawings of Smith show the
anchor straps used to supplement the tensioning of the main elastic band."
Br. 6. However, this argument is not based on any language appearing in
these claims, and Smith was not cited for supplemental tensioning of the
main band, but instead for teaching a releasable strap to maintain the
position of the main band. See supra. Appellant also argues "that there is
no motivation to combine Smith with Hill and Bass" but Appellant does not
dispute the Examiner's express reason to use Smith's strap "to assist in
maintaining the position of the main band." Final Act. 9.
Accordingly, and based on the record presented, we sustain the
Examiner's rejection of claims 14 and 18 as being unpatentable over Hill,
Bass, and Smith.
DECISION
The Examiner's art rejections of claims 10-18 under 35 U.S.C.
§ 103(a) are 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)(l )(iv).
AFFIRMED
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