Ex Parte Gomez

Patent Trial and Appeal Board

May 17, 2013

10696258 (P.T.A.B. May. 17, 2013)

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