Ex parte ELTING et al.

Board of Patent Appeals and Interferences

Mar 19, 1998

08203789 (B.P.A.I. Mar. 19, 1998)

Application for patent filed March 1, 1994. 1
While the examiner has approved entry of the amendment2
after final rejection (Paper No. 10, filed September 12, 1995),
we note that this amendment has not been clerically entered.
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journal and (2) is not binding precedent of the Board.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. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JAMES J. ELTING
and
VINCENT N. TOSCANO
____________
Appeal No. 97-2226
Application No. 08/203,7891
____________
ON BRIEF
____________
Before ABRAMS, NASE, and CRAWFORD, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's rejection
of claims 1 through 3, 10, 11, 22, 30 and 31, which are all of
the claims pending in this application.2
Appeal No. 97-2226
Application No. 08/203,789
We REVERSE and enter new rejections pursuant to 37 CFR
§ 1.196(b).
Appeal No. 97-2226 Page 3
Application No. 08/203,789
BACKGROUND
The appellants' invention relates to a surgical garment. An
understanding of the invention can be derived from a reading of
exemplary claims 1 and 22, which appear in the appendix to the
appellants' brief.
The prior art references of record relied upon by the
examiner as evidence of obviousness under 35 U.S.C. § 103 are:
Thompson 1,489,046 Apr. 1, 1924
Boettcher 2,374,643 May 1, 1945
Kephart et al. 2,504,534 Apr. 18, 1950
(Kephart)
Schuessler 2,735,283 Feb. 21, 1956
Spriggs 4,622,699 Nov. 18, 1986
Dye et al. 5,097,535 Mar. 24, 1992
(Dye)
Mucci et al. 5,222,258 June 29, 1993
(Mucci)
The appealed claims stand rejected under 35 U.S.C. § 103 as
set forth in the examiner's answer (Paper No. 16, mailed August
14, 1996) as follows:
a) claims 1 and 10 as being unpatentable over Boettcher in
view of Dye, Kephart, Mucci and Schuessler;
Appeal No. 97-2226 Page 4
Application No. 08/203,789
We are unable to locate a copy of Gershman in the3
application filewrapper. Additionally, we are unable to find
Gershman cited on any of the Notices of References Cited (Form
PTO-892) or the Information Disclosure Statements (Form PTO-1449)
of record in the application file. Accordingly, we are unable to
consider the teachings of Gershman. However, since the examiner
relied upon Gershman for only a teaching of Velcro and we are®
reversing the rejections made by the examiner for other reasons
as explained infra, we see no need to remand this application to
the examiner to provide a copy of Gershman.
Id.4
b) claims 2 and 3 as being unpatentable over Boettcher in
view of Dye, Kephart as applied to claim 1 and further in view of
Spriggs;
c) claim 11 as being unpatentable over Boettcher in view of
Gershman ;3
d) claims 30 and 31 as being unpatentable over Boettcher in
view of Dye as applied to claim 1 and further in view of
Thompson; and
e) claim 22 as being unpatentable over Boettcher in view of
Dye, Kephart Mucci and Gershman.4
Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellants regarding the § 103 rejections,
we make reference to the examiner's answer for the examiner's
complete reasoning in support of the rejections, and to the
Appeal No. 97-2226 Page 5
Application No. 08/203,789
appellants' brief (Paper No. 15, filed February 15, 1996) and
reply brief (Paper No. 17, filed October 21, 1996) for the
appellants' arguments thereagainst.
Appeal No. 97-2226 Page 6
Application No. 08/203,789
For consistency with the original disclosure which5
disclosed only a single opening 16 in the hood piece 18, the
phrase "closable openings" in claim 1, paragraph b, and claim 22,
paragraph b, has been treated in this decision as having been
replaced by the phrase "a closeable opening." The appellants
should amend claims 1 and 22 accordingly.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the
determinations which follow.
Initially we note that the appellants' argument that the
examiner's answer set forth new grounds of rejections relates to
a petitionable matter and not to an appealable matter. See
Manual of Patent Examining Procedure (MPEP) §§ 1002 and 1201.
Accordingly, we cannot review this issue raised by the appellants
on pages 1-2 of the reply brief.
The two independent claims (i.e., claims 1 and 22) on5
appeal each recite that the form-fitting surgical garment
Appeal No. 97-2226 Page 7
Application No. 08/203,789
includes "two separate bottom pieces for covering lower
extremities of the patient."
All the rejections set forth by the examiner rely on Dye for
the suggestion of modifying Boettcher "to include a bottom piece
with openings" (answer, p. 3).
The appellants argue (brief, p. 7) that they claim a garment
which includes, inter alia, "two bottom pieces which are
separate, not unitary (See specification, page 8, lines 13-15)."
The appellants then contrast this claimed feature with Dye's
pants 14 which "consists of two leg portions interconnected to
one another by means of a lower torso portion integral with each
leg portion."
The examiner responded (answer, pp. 7-8) to this argument by
stating that
[a]pplicant is arguing more limiting than what has been
claimed. The claims do not recite the bottom pieces of two
non-connected pieces. Conventionally, speaking when one
speaks of a bottom piece was shown the same include two
separate pieces joined by a seam. Applicant's arguments,
are therefore moot because the terms "non-connected bottom
pieces" are not in the claim.
Appeal No. 97-2226 Page 8
Application No. 08/203,789
It is axiomatic that, in proceedings before the PTO, claims
in an application are to be given their broadest reasonable
interpretation consistent with the specification, and that claim
language should be read in light of the specification as it would
be interpreted by one of ordinary skill in the art. In re Sneed,
710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983).
The appellants' specification (page 8, lines 13-14) states
that "[t]he bottom pieces may be attached together, or preferably
may be detached from one another."
The American Heritage Dictionary, Second College Edition,
(1982) defines "separate" as "set apart from others; detached
. . . existing as an entity; independent."
It is our determination that the broadest reasonable
interpretation consistent with the specification of the claimed
phrase two "separate" bottom pieces for covering lower
extremities of the patient is that the two bottom pieces exist as
independent entities. When claims 1 and 22 are given this
interpretation, it is clear to us that the prior art as applied
by the examiner would not have suggested two "separate" bottom
Appeal No. 97-2226 Page 9
Application No. 08/203,789
The test for obviousness is what the combined teachings of6
the references would have suggested to one of ordinary skill in
the art. See In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089,
1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981).
pieces for covering lower extremities of the patient since Dye
teaches only a single bottom piece for covering the lower
extremities of the patient.
Since all the limitations of independent claims 1 and 22 are
not suggested by the applied prior art, we cannot sustain the
examiner's rejection of appealed claims 1 and 22, or claims 2, 3,
10, 11, 30 and 31 which depend therefrom, under 35 U.S.C. § 103.
New grounds of rejection
Under the provisions of 37 CFR § 1.196(b), we enter the
following new grounds of rejection.
Claims 1, 10, 11 and 30 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Thompson in view of Dye and6
Boettcher.
Thompson discloses a sectional garment for use upon persons
who have sustained an injury or upon whom operations are to be or
Appeal No. 97-2226 Page 10
Application No. 08/203,789
have been performed. As shown in Figures 1, the sectional
garment includes a garment in the form of an undershirt,
comprising, a back section 10, front sections 11 and 12, and
sleeve sections 13. Any suitable fastening devices, such as
buttons, hooks and eyes, or snap-fasteners, are used to secure
the sections together. As shown in Figure 1, the sections
provide openings along the anterior midline, the left lateral
line and the right lateral line. As shown in Figure 3, each
sleeve section 13 can be formed in two sections 17 and 18, thus
providing openings along the left forearm and the right forearm.
Additionally, Thompson discloses that his sectional garment may
be in the form of pajamas by including leg sections constructed
in the same manner as the arm sections. Thus, the leg sections
include two separate upper leg sections 19 and two separate lower
leg sections 21. As shown in Figure 5, the closable openings in
the leg sections are provided along the right lateral line of the
left leg portions and along the left lateral line of the right
leg portions.
Dye discloses a garment which resembles pajamas and includes
a shirt 12 and pants 14. The shirt 12 has openable sleeves and
the pants 14 have openable legs. The sleeves and legs are
Appeal No. 97-2226 Page 11
Application No. 08/203,789
openable for the entire length thereof so some or all of the
wearer's limbs and body can be exposed for providing health care
to that wearer. The legs and arms can be closed by suitable
fastener means to cover the wearer so the garment can be both
aesthetically pleasing, warm and yet still provide access to the
patient for the purposes of providing health care. Dye teaches
that the preferred form of the fastener means is hook-and-loop
fasteners, such as Velcro , however, other forms of fastener®
means, such as snaps, buttons, or zippers can be used. As shown
in Figure 2, a plurality of buttons 32 are fixed to one side of
the shirt front section and are engaged with the other portion
via button holes to close the shirt about the wearer. Dye
teaches at column 1, lines 44-48, that many patients find
traditional hospital gowns, "not only displeasurable, but
physically uncomfortable, especially if the environmental
temperature in the room is lower than they are comfortable
with." Dye teaches that her garment will keep a patient warm and
that the shirt and pants can be made of any suitable material.
Boettcher discloses a patient's gown. The gown is so
constructed that it can be readily put on and removed from the
patient while in bed, while at the same time providing slits,
Appeal No. 97-2226 Page 12
Application No. 08/203,789
arranged at certain positions, so that the patient can be
properly examined and injections made, as desired. As shown in
Figure 1, in addition to the gown a hood 15 can be provided. As
shown in Figures 1-3, the hood and gown are provided with
openings 3, 9, 10, 11 and 19 which are closable by zippers.
Lastly, Boettcher teaches that his gown and hood are particularly
adapted for use in the care of patients in oxygen tents wherein
such patients are sometimes exposed to temperatures below 65°F.
After the scope and content of the prior art are determined,
the differences between the prior art and the claims at issue are
to be ascertained. Graham v. John Deere Co., 383 U.S. 1, 17-18,
148 USPQ 459, 467 (1966).
Based on our analysis and review of Thompson and claims 1,
10, 11 and 30, it is our opinion that the only differences are
the limitations that the garment include (1) a hood piece for
covering the head and neck of the patient and having a closable
opening therein along an anterior neck line; and (2) closable
openings in the leg sections provided along the left lateral line
of the left leg portions and along the right lateral line of the
right leg portions.
Appeal No. 97-2226 Page 13
Application No. 08/203,789
Terms in a claim under examination are to be given their7
broadest reasonable interpretation consistent with the
specification, and that claim language should be read in light of
the specification as it would be interpreted by one of ordinary
skill in the art. See In re Sneed, 710 F.2d 1544, 1548, 218 USPQ
385, 388 (Fed. Cir. 1983).
We agree with the appellants' argument (reply brief, pp. 9-
10) that the recitation "form-fitting" in the preamble of claim 1
must be given weight. However, the recitation "form-fitting"
reads on the garments disclosed by Thompson, Dye and Boettcher. 7
Based upon the combined teachings of Thompson, Dye and
Boettcher, it is our opinion that it would have been obvious to
one of ordinary skill in the art at the time of the appellants'
invention to have (1) provided Thompson's garment with a hood
piece for covering the head and neck of the patient as suggested
and taught by Boettcher's hood 15 for the self evident advantage
of protecting the head and neck of the patient from low
temperatures and drafts, (2) modified the leg sections of
Thompson to provide openings along the left lateral line of the
left leg portions and along the right lateral line of the right
leg portions as suggested and taught by Dye, and (3) provided a
closable opening along an anterior neck line of the hood piece to
permit access to the front portion of the neck of the wearer in
Appeal No. 97-2226 Page 14
Application No. 08/203,789
view of the overall teachings of the applied prior art which
suggests providing closable openings at wherever a need might
arise.
Claims 2, 3, 22 and 31 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Thompson in view of Dye and
Boettcher as applied above with respect to claim 1 and further in
view of Spriggs.
In addition to the differences set forth above with respect
to claims 1, 10, 11 and 30, it is our opinion, based on our
analysis and review of Thompson, that the only additional
difference is the limitation that the garment be made of a fabric
selected from the group consisting of polypropylene; a water-
proof, breathable fabric; an insulating, water absorbent fabric;
silk; wool; cotton; rayon and polyester (claim 2) or from
polypropylene (claims 3, 22 and 31).
Spriggs discloses a hospital gown 10. Spriggs teaches that
the gown may be made of any of the materials heretofore well
known to the art for hospital gown use. Spriggs discloses
(column 3, line 64, to column 4, line 6) that
Appeal No. 97-2226 Page 15
Application No. 08/203,789
useful materials for fabrication of the gown include
continuously extruded, synthetic material or composites of
such materials, particularly in continuous sheet form prior
to fabrication; woven natural fiber or synthetic fiber
materials, including woven cloth and other woven fabric-like
material constructed from cotton, cotton blended with
synthetics (such as polyester, nylon, polypropylene and the
like), and polyester, nylon, polypropylene or other
synthetics; and non-woven natural fiber or synthetic fiber
materials.
Based upon the combined teachings of Thompson, Dye,
Boettcher and Spriggs, it is our opinion that it would have been
further obvious to one of ordinary skill in the art at the time
of the appellants' invention to make the modified garment of
Thompson from polypropylene as suggested and taught by Spriggs
especially since Thompson is silent as to the material from
which her garment is made.
CONCLUSION
To summarize, the decision of the examiner to reject claims
1 through 3, 10, 11, 22, 30 and 31 under 35 U.S.C. § 103 is
reversed and a new rejection of claims 1 through 3, 10, 11, 22,
30 and 31 under 35 U.S.C. § 103 has been added pursuant to
provisions of 37 CFR § 1.196(b)
Appeal No. 97-2226 Page 16
Application No. 08/203,789
This decision contains new grounds of rejection pursuant to
37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final rule
notice, 62 Fed. Reg. 53131, 53197 (Oct. 10, 1997), 1203 Off. Gaz.
Pat. Office 63, 122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides
that, "A new ground of rejection shall not be considered final
for purposes of judicial review."

37 CFR § 1.196(b) also provides that the appellants, 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 (§ 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. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
Appeal No. 97-2226 Page 17
Application No. 08/203,789
REVERSED; 37 CFR § 1.196(b)
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 97-2226 Page 18
Application No. 08/203,789
BRENDA L. SPEER
BRADEN FRINDT & STINAR LLC
102 NORTH CASCADE AVENUE, SUITE 350
POST OFFICE BOX 1435
COLORADO SPRINGS, CO 80903-1435
APPEAL NO. 97-2226 - JUDGE NASE
APPLICATION NO. 08/203,789
APJ NASE
APJ ABRAMS
APJ CRAWFORD
DECISION: REVERSED;
37 CFR § 1.196(b)
Prepared By: Delores A. Lowe
DRAFT TYPED: 12 Mar 98
FINAL TYPED: