Ex Parte Karpowicz et al

Board of Patent Appeals and Interferences

Mar 16, 2012

12342238 (B.P.A.I. Mar. 16, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOHN KARPOWICZ, CHRISTOPHER L. RADL,
KEVIN P. KLOCEK, and JOHN R. BOEHRINGER
____________________

Appeal 2011-007868
Application 12/342,238
Technology Center 3700
____________________

Before: STEFAN STAICOVICI, GAY ANN SPAHN, and
WILLIAM V. SAINDON, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-007868
Application 12/342,238
2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1, 2, 5-7, 10-13, 20, 23-26, and 32-38. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
Claim 1, reproduced below with added emphasis, is illustrative of the
claimed subject matter.
1. A tube attachment patch having an adhesive material around
its perimeter for attaching the patch in a substantially air-tight
seal to a portion of a top surface of a thin film primary wound
cover in a vacuum-assisted wound dressing, the primary wound
cover forming a substantially air-tight seal over the wound, the
patch being a thin flexible film having the adhesive material
directly thereon, the patch being substantially smaller in
overall size than that of the primary wound cover; and
a vacuum tube fixed to the patch, the vacuum tube having
a ported portion that can be oriented on the primary wound
cover near an opening in the primary wound cover to allow
vacuum pressure to be communicated to the wound.

The Examiner relies upon the following prior art references:
Cartmell
Karami
Henley
US 5,106,629
US 5,167,613
US 6,458,109 B1
Apr. 21, 1992
Dec. 1, 1992
Oct. 1, 2002
Hunt US 2004/0030304 A1 Feb. 12, 2004

The Examiner makes the following rejections under 35 U.S.C.
§ 103(a):
I. Claims 1, 2, 5, 7, 10-13, 20, 24-26, and 32 over Henley and Karami.
II. Claims 6, 23, and 33 over Karami, Henley, and Hunt.
III. Claims 34-38 Henley, Karami, Hunt, and Cartmell.

Appeal 2011-007868
Application 12/342,238
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OPINION1
The Examiner found that Henley teaches a tube attachment patch
attached to a wound cover substantially as claimed, but without disclosing
that the patch is substantially smaller than the wound cover. Ans. 4. The
Examiner found that Karami teaches a patch substantially smaller than a
wound cover and concluded it would have been obvious to size the patch of
Henley to be smaller, as taught by Karami, in order to facilitate proper
placement and separation of the secondary dressing (patch). Ans. 4-5 (citing
Karami, fig 5 and col. 7, ll. 37-39); Ans. 10 (finding Karami’s patch similar
in size-relative-to-wound-cover as the patch depicted in figure 2 of
Appellants’ disclosure); see also Reply Br. 5 (explicitly not disputing the
reason to combine).
Appellants argue claims 1, 2, 5, 7, 10-13, 20, 24-26, and 32 as a group
(App. Br. 9); we select claim 1 as representative. Appellants argue that
Karami does not teach a patch substantially smaller than the primary wound
cover. App. Br. 9-10; Reply Br. 5. The Examiner counters that the
secondary dressing 30 in Karami is smaller than the primary cover 10, thus

1 Contrary to Appellants’ arguments in the Appeal Brief (pp. 7-8), the
Examiner made no rejection under 35 U.S.C. § 112 for us to review. Accord
Ans. 10. Notwithstanding Appellants’ reliance on the drawings to show the
particular sizes of things not described in the Specification (see App. Br. 7-
8), we decline to enter a new ground of rejection under § 112, first
paragraph, for lack of written description at this time. See Hockerson-
Halberstadt, Inc. v. Avia Group Int'l, 222 F.3d 951, 956 (Fed. Cir. 2000) (“it
is well established that patent 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”). Our decision in this matter
is based on our affirmance of the art rejections and should not be construed
that such a rejection would not be appropriate, in the event of further
prosecution.
Appeal 2011-007868
Application 12/342,238
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satisfying the claim limitation, especially in comparison to Appellants’
figure 2. Ans. 9-10. Accordingly, the issue raised in this appeal is whether
figure 5 of Karami depicts a patch “substantially smaller” than a wound
cover in light of Appellants’ assertion (App. Br. 7) that figure 2 depicts a
patch “substantially smaller” than a wound cover.
When a word of degree, such as the term “substantially,” is used in a
claim, we look to the specification to determine whether the specification
provides some standard for measuring that degree. See Seattle Box Co., Inc.
v. Indus. Crating & Pkg., Inc., 731 F.2d 818, 826 (Fed. Cir. 1984).
However, the written portion of the Specification does not describe the patch
as substantially smaller than the wound cover. Apparently recognizing this,
Appellants point to figure 2 for support that patch 10 is substantially smaller
than wound cover 14. 2 See, e.g., App. Br. 7-8. Appellants allege that the
“description” (apparently, figure 2) “‘reasonably discloses and suggests to
one of ordinary skill in the art’ … that the patch may be substantially
smaller.” App. Br. 8.
We find a great similarity in proportion between the patches and
wound covers of figure 2 of the Specification and figure 5 of Karami.
Accordingly, Appellants’ argument that figure 2 of the Specification depicts
a patch substantially smaller than a wound cover but that figure 5 of Karami
does not is not persuasive. Instead, if, as Appellants allege (App. Br. 8),
figure 2 “‘reasonably discloses and suggests to one of ordinary skill in the
art’ … that the patch may be substantially smaller,” then we conclude one of
ordinary skill in the art would make the same conclusion with respect to

2 Appellants point to figure 2 of US 7,485,112 B2, issued Feb. 3, 2009. The
present application on appeal is a continuation of the application from US
7,485,112 B2.
Appeal 2011-007868
Application 12/342,238
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figure 5 of Karami, given the similarity in proportions. As such, we do not
consider persuasive Appellants’ argument that Karami’s patch is not
substantially smaller than a wound cover but the patch of Appellants’ figure
2 is substantially smaller.
Appellants next argue that Henley and/or Karami do not teach or
suggest particular advantages, including the benefit of having a tube not
running under the edge of a wound cover. App. Br. 10. However, the prior
art need not teach or suggest the advantages of the claimed invention. See
Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985), aff'd mem., 795 F.2d 1017
(Fed. Cir. 1986) (holding that the recognition of another advantage flowing
naturally from following the suggestion of the prior art cannot be the basis
for patentability when the difference would otherwise be obvious); see also
In re Wiseman, 596 F.2d 1019, 1023 (CCPA 1979) (mere recognition of an
inherent property in the prior art does not render patentable a known
structure). Accordingly, Appellants’ argument is unpersuasive.
In view of Appellants’ arguments, we are not apprised of error in the
Examiner’s rejection of claim 1, or of claims 2, 5, 7, 10-13, 20, 24-26, and
32, which fall with claim 1. Appellants rely on the unpersuasive arguments
set forth above with respect to the Examiner’s rejections of claims 6, 23, and
33-38. App. Br. 12. For the same reasons as discussed supra, we are also
not apprised of error in the Examiner’s rejection of claims 6, 23, and 33-38.

Appeal 2011-007868
Application 12/342,238
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DECISION
For the above reasons, we affirm the Examiner’s decision regarding
claims 1, 2, 5-7, 10-13, 20, 23-26, and 32-38. No time period for taking any
subsequent action in connection with this appeal may be extended under 37
C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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