Ex Parte GomezDownload PDFPatent Trial and Appeal BoardMay 17, 201310696258 (P.T.A.B. May. 17, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte REBECCA GOMEZ __________ Appeal 2011-008228 Application 10/696,258 Technology Center 3700 __________ Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and SHERIDAN K. SNEDDEN, Administrative Patent Judges. SNEDDEN, Administrative Patent Judge. DECISION ON APPEAL This appeal under 35 U.S.C. § 134 involves claims 1, 8-13, 15, 18, 20, and 25-28. The Examiner entered rejections under 35 U.S.C. § 112, first paragraph, and 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2011-008228 Application 10/696,258 2 STATEMENT OF THE CASE Appellant’s invention relates to an apparatus for treating hemorrhoids (Specification, Abstract). Claims 13-15, 19, 21, 27, 33-36, and 38-44 are on appeal. Claim 13 is representative and reads as follows: 13. Apparatus for relieving discomfort caused by swollen tissue ailments comprising: a strip of material having first and second ends, wherein: said strip of material is substantially planar, said strip of material is crescent shaped, said strip of material includes a length and a width, wherein the length is at least twice as long as the width, said strip of material having one side that includes an adhesive applied at least to said first and second ends, and said strip and said adhesive are operable to be applied to a person’s body and to separate said swollen tissue from non- swollen tissue when applied. The claims stand rejected as follows: I. Claims 13-15, 19, 21, 27, 33-36, and 38-44 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Rosenberg.1 II. Claims 13-15, 19, 21, 27, 33-36, and 38-44 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. 1 Rosenberg, “The Dilemma of Pilonidal Disease: Reverse Bandaging for Cure of the Reluctant Pilonidal Wound,” 20(4) DIS. COL. & RECT. 290-291 (1977). Appeal 2011-008228 Application 10/696,258 3 I. OBVIOUSNESS Issue The Examiner rejected claims 13-15, 19, 21, 27, 33-36, and 38-44 under 35 U.S.C. § 103(a) as being unpatentable over Rosenberg. The issue with regard to this rejection is: Does the evidence of record support the Examiner’s conclusion that “[i]t would have been obvious to the artisan of ordinary skill to configure the device of Rosenberg in a crescent shape, since this is not critical; is well within the scope of one having ordinary skill in the art; provides no unexpected result; and would allow the device to more closely conform to the body of the user, and to lift the tissue at a particular angle” (Ans. 4)? Analysis To establish a prima facie case of obviousness, the Examiner bears the initial burden of either demonstrating that the applied references suggest the claimed combination or articulating a persuasive rationale as to why the artisan would have found the claimed invention to have been obvious in light of the teachings of the references. In re Oetiker, 977 F.2d 1443 (Fed. Cir. 1992). As argued by Appellant, the evidence of record supports the finding that “Rosenberg fails to show or suggest the unique shape and structure of appellant’s claimed invention, such as a strip of material that is ‘crescent shaped’” (App. Br. 25). This fact is not disputed by the Examiner. Rather, the Examiner reasons that the Specification does not present the recited “crescent shape” as a critical feature. However, we find this rationale to be inadequate at least because it fails to explain why a person of ordinary skill in the art would have been directed to the selection of a Appeal 2011-008228 Application 10/696,258 4 crescent shape. See Oetiker, 977 F.2d at 1447. (“There must be some reason, suggestion, or motivation found in the prior art whereby a person of ordinary skill in the field of the invention would make the substitutions required. That knowledge cannot come from the applicants’ disclosure of the invention itself.”). Conclusion of Law The preponderance of evidence on the record does not support the Examiner’s conclusion of obviousness. II. WRITTEN DESCRIPTION Issue The issue presented with regard to this rejection is: Does the evidence of record support the Examiner’s finding that the Specification does not support the claim limitation of a strip of material that “includes a length and a width, wherein the length is at least twice as long as the width”? (See e.g., Ans. 4). Analysis Appellant contends that support for this element of the claim can be found in the Specification at Figure 3 where “tape 30 is illustrated as having a length that is at least twice or at least three times as long as its width” (App. Br. 26). We are not persuaded. Appellant’s arguments do not direct us to any textual description of the original Specification to support such precise proportions. Arguments based on measurements obtained from patent drawings are regarded as having little value where the patent does not disclose that the drawings are to scale and absent any disclosure related to Appeal 2011-008228 Application 10/696,258 5 quantitative values. Hockerson-Halberstadt, Inc. v. Avia Group International, Inc., 222 F.3d 951 (Fed.Cir. 2000) (“[P]atent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.”) and In re Wright, 569 F.2d 1124, 1127 (CCPA 1977) (“Absent any written description in the specification of quantitative values, arguments based on measurement of a drawing are of little value.”). See also, Nystrom v. TREX Co., Inc., 424 F.3d 1136 (Fed. Cir. 2005). For the same reasons, we find that Appellant’s claim amendments adding the language “wherein the length is at least twice as long as the width” introduces new matter into the claims (App. Br. 28). Additionally, we point out that ordinarily an objection, such as that set forth by the Examiner in this case, is reviewable by petition under 37 C.F.R. § 1.181, while a rejection is appealable. However, when the issue of new matter presented is the subject of both an objection and a rejection, the issue is appealable. Manual of Patent Examining Procedure (MPEP) § 2163.06, II. Review of New Matter Objections and/or Rejections. See also MPEP § 608.04(c) (“where the alleged new matter is introduced into or affects the claims, thus necessitating their rejection on this ground, the question becomes an applicable one, and should not be considered on petition even though that new matter has been introduced into the specification also.”). Since the objection to the length limitation turns on the same issues as the written description rejection of the claims under 35 U.S.C. § 112, first paragraph, as is the case here, our decision with respect to the written Appeal 2011-008228 Application 10/696,258 6 description rejection likewise is dispositive as to the corresponding objection. However, we do not reach the Examiner’s objection regarding the question of new matter added to the Specification regarding the rubber separation knobs or their location (App. Br. 27) as the proposed amendments to the Specification are not also subject to a rejection and therefore not properly before this panel. See MPEP § 1002.02(c)(3)(c); In re Hengehold, 440 F.2d 1395, 1403-04 (CCPA 1971) (stating that there are many kinds of decisions made by examiners that are not appealable to the Board when they are not directly connected with the merits of issues involving rejections of claims, and holding that “the kind of adverse decisions of examiners which are reviewable by the board must be those which relate, at least indirectly, to matters involving the rejection of claims”). Conclusion of Law The preponderance of evidence of record supports the Examiner’s finding that the Specification does not support the claim limitation “wherein the length is at least twice as long as the width.” SUMMARY We reverse the rejection of claims 13-15, 19, 21, 27, 33-36, and 38-44 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Rosenberg. We affirm the rejection of claims 13-15, 19, 21, 27, 33-36, and 38-44 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Appeal 2011-008228 Application 10/696,258 7 TIME PERIOD FOR RESPONSE 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 lp Copy with citationCopy as parenthetical citation