Ex Parte G. Linnane et al

Patent Trial and Appeal Board

Oct 31, 2012

11255051 (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.
11/255,051 10/20/2005 Patrick G. Linnane CV0362 NP 4837
26079 7590 11/01/2012
CONVATEC INC.
100 HEADQUARTERS PARK DRIVE
SKILLMAN, NJ 08558
EXAMINER
MATTER, KRISTEN CLARETTE
ART UNIT PAPER NUMBER
3778
MAIL DATE DELIVERY MODE
11/01/2012 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 PATRICK G. LINNANE, IAN S. TABRON, ARSENIO
FERNANDEZ, ANDERS L. BOSTROM, PETER L. HANSEN, and
MUHAMMAD SALIM MIRZA
____________

Appeal 2010-009768
Application 11/255,051
Technology Center 3700
____________

Before JOHN C. KERINS, MICHAEL C. ASTORINO, and JEREMY M.
PLENZLER, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1-11, 13, and 14. Claim 12 has been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Appellants’ claimed invention relates to a compression device for a
limb. Claims 1, 13, and 14 are independent. Claim 1, reproduced below, is
illustrative:
1. A compression device for a limb comprising:
a sleeve adapted to surround the limb, the sleeve
comprising an inelastic layer and
a cell constructed from an inner part joined to an
outer part by one or more side walls so that the cell has a
box-like configuration, the inner part being adapted to
conform to the shape of the limb when the cell is inflated
to provide an even pressure to the limb.

THE REJECTIONS
Appellants seek review of the following rejections:
1. Claims 1, 3, 5-10, 13, and 14 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Miller (US 2,531,074; iss. Nov. 21, 1950) and Rutt
(US 6,592,534 B1; iss. Jul. 15, 2003);
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2. Claims 2, 4, and 11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Miller, Rutt, and McWhorter (US 5,263,473; iss. Nov. 23,
1993); and
3. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable over
Miller, Rutt, and Rothman (US 2002/0007132 A1; pub. Jan. 17, 2002).

OPINION
Appellants argue claims 1, 3, 5-10, 13, and 14 as a group. See Br. 3-7.
We select independent claim 1 as the representative claim. Claims 3, 5-10,
13, and 14 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii)
(2011).
The Examiner determined that Miller discloses a cell that is “adapted
to conform to the shape of the limb when the cell is inflated in order to
provide even pressure to the limb or to present a continuous surface of
contact (see Figures 1 and 4).” Ans. 4. The Examiner acknowledges that
Miller “is silent as to the material [of the sleeve] specifically being inelastic”
and instead cites Rutt as “disclos[ing] another compression device for
surrounding a limb that comprises an elastic inflatable cell attached to an
inelastic sleeve member.” Id. The Examiner concludes that:
it would have been obvious to one of ordinary skill in the art at
the time the invention was made to have made the sleeve of
Miller from an inelastic material as taught by Rutt in order to
ensure a sufficient amount of controlled pressure was being
applied to the limb for treatment.
Id.
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Appellants contend that “there is nothing in Miller that would lead
one of ordinary skill to suppose that the Miller device provides compression
to the limb.” Br. 4. We disagree. Instead, as explained by the Examiner,
“since Miller discloses application of different pressures to help treat
circulatory ailments, the device clearly is able to apply compression to the
limb.” Ans. 7. Further, the “compression device” of claim 1 is defined in
terms of the application of pressure by “provid[ing] an even pressure to the
limb.” Appellants’ contention does not persuasively explain how the
Examiner’s finding is incorrect because Appellants have not explained why
the application of pressure in Miller does not provide compression.
Appellants further contend that “[t]he device of Rutt does not relate to
the treatment of a limb” and as a result, “there is no motivation to look to
Rutt for hints on how to make the device of Miller work better.” Br. 6.
Appellants argue:
Rutt gives no indication that there is any benefit to be had from
using an inelastic sleeve. While it is true that Rutt’s foot cuff
has an inelastic sleeve, no advantage is attached to it. There is
therefore no motivation to cherry pick this feature from the foot
cuff of Rutt and apply it to a completely different massage
device of Miller in the hope of achieving even pressure to the
limb.
Id. In response, the Examiner explains that “[b]oth Miller and Rutt are for
applying compression to a limb for treatment of circulatory ailments” and
“[m]aterials that are able to perform the function of compression/massage in
a foot cuff would predictably be able to perform the function of compression
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in a massage device such as the one disclosed by Miller.” Ans. 7. We
agree.
Appellants’ argument directed to an alleged lack of motivation to
modify Miller based on the disclosure of Rutt is foreclosed by KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398 (2007), in which the Court rejected the rigid
requirement of a teaching, suggestion or motivation to combine known
elements in order to show obviousness. KSR Int’l Co., 550 U.S. at 415.
Rather, rejections based on obviousness must be supported by “some
articulated reasoning with some rational underpinning” to combine known
elements in the manner required by the claim. Id. at 418 (citing In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)). The Examiner has provided the
requisite rationale, stating that the sleeve of Miller would be made from an
inelastic material “in order to ensure a sufficient amount of controlled
pressure was being applied to the limb for treatment.” Ans. 4. Aside from
the arguments directed to a lack of motivation, Appellants’ have failed to
provide any reasoning why one skilled in the art would not incorporate an
inelastic sleeve into the device of Miller.
Appellants further argue that it is unclear whether “the inner part of
the cell is adapted to conform to the shape of the limb when the cell is
inflated to provide an even pressure to the limb” because “the device of
Miller is not shown in an inflated state.” Br. 5. In response, the Examiner
explains that “the combination of Miller with Rutt (and, examiner argues,
Miller alone) would produce the claimed invention of box-like cells that are
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inflated to conform to the shape of a limb via use of an inelastic outer
sleeve.” Ans. 8. We agree.
Claim 1 does not recite the extent of cell contact along the limb when
defining cell conformity or application of pressure. Miller, as modified by
the Examiner, provides a cell that would conform to the shape of the limb (to
at least some degree) when inflated. The portion of the cell conforming to
the limb would provide an even pressure on the limb. Therefore, we do not
find Appellants’ arguments persuasive.
For these reasons, we sustain the rejection of claims 1, 3, 5-10, 13,
and 14 under 35 U.S.C. §103(a) as being unpatentable over Miller and Rutt.
Claims 2, 4, 7, and 11 depend from claim 1. The arguments directed to
claims 2, 4, 7, and 11 contend that the McWhorter and Rothman references
do not overcome the alleged deficiencies in the combination of Miller and
Rutt. See Br. 7. We are not persuaded that the combination has such alleged
deficiencies, as per the analysis above. Therefore, we sustain the rejection
of claims 2, 4, and 11 under 35 U.S.C. §103(a) as being unpatentable over
Miller, Rutt, and McWhorter and the rejection of claim 7 under 35 U.S.C.
§103(a) as being unpatentable over Miller, Rutt, and Rothman.

DECISION
We AFFIRM the rejection of claims 1, 3, 5-10, 13, and 14 under 35
U.S.C. §103(a) as being unpatentable over Miller and Rutt.
We AFFIRM the rejection of claims 2, 4, and 11 under 35 U.S.C.
§103(a) as being unpatentable over Miller, Rutt, and McWhorter.
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We AFFIRM the rejection of claim 7 under 35 U.S.C. §103(a) as
being unpatentable over Miller, Rutt, and Rothman.
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)(1)(iv).

AFFIRMED

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