Ex Parte Locke et al

Patent Trial and Appeal Board

Nov 28, 2018

13894217 (P.T.A.B. Nov. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/894,217 05/14/2013 Christopher Brian Locke
60402 7590 11/30/2018
KINETIC CONCEPTS, INC.
c/o Harness Dickey & Pierce
5445 Corporate Drive
Suite 200
Troy, MI 48098
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
VAC.0889Dl 5565
EXAMINER
TREYGER, IL YA Y
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
11/30/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
dgodzisz@hdp.com
troymailroom@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER BRIAN LOCKE and
TIMOTHY MARK ROBINSON 1
Appeal 2018-001144
Application 13/894,217
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 6 and 8-18. 2 We have jurisdiction over the appeal
under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 KCI Licensing, Inc., a subsidiary of Kinetic Concepts, Inc, ("Appellant")
is the Applicant as provided in 37 C.F.R. § 1.46 and is identified as the real
party in interest. Appeal Br. 2.
2 Claim 7 is cancelled, and claims 1-5 and 19-24 are withdrawn from
consideration. Appeal Br. 12, 14 (Claims App.). The Examiner indicates
that claims 13, 14, 25, and 26 are objected to as being dependent upon a
Appeal 2018-001144
Application 13/894,217
THE CLAIMED SUBJECT MATTER
Claim 6, the sole independent claim on appeal, is reproduced below
and is representative of the claimed subject matter on appeal.
6. A method for treating a wound, comprising:
securing a contracting element formed in an extended
position to an epidermis such that the contracting element spans
at least a portion of the wound, wherein the contracting element
is configured to move from the extended position to a contracted
position in response to being activated; and
activating the contracting element to move the contracting
element to the contracted position and generate a closing force
on the wound.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
De Muth us 2,012,755 August 27, 1935
Argenta us 5,636,643 June 10, 1997
Aicher US 2010/0049151 Al Feb.25,2010
Serafica US 7,709,021 B2 May 4, 2010
Collins English Dictionary- Complete and Unabridged (2003),
available at http://www.thefreedictionary.com/magnetostriction. 3
rejected base claim, but would be allowable if rewritten in independent form
including all of the limitations of the base claim and any intervening claims
(Final Act. 11 ), but includes claims 13 and 14 in the rejections under
35 U.S.C. § 112 (id. at 4--5). The Examiner indicates that claims 27-33 are
allowable. Final Act. 11.
3 A screen capture of this webpage (showing a date of May 18, 2012) was
entered into the record of the instant application on November 25, 2014.
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Application 13/894,217
REJECTIONS 4
I. Claims 6 and 8-18 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite. Final Act. 4--5.
II. Claims 6 and 8-18 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement. Id. at 4.
III. Claims 6, 11, 12, and 15 stand rejected under 35 U.S.C. § 102(b) as
anticipated by De Muth, or, in the alternative, under§ 103(a) as
unpatentable over De Muth. Id. at 5-8.
IV. Claims 8 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over De Muth and Aicher. Id. at 9.
V. Claims 9 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over De Muth and Serafica. Id. at 9-10.
VI. Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over De Muth and Collins English Dictionary. Id. at 10.
VII. Claim 18 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over De Muth and Argenta. Id. at 11.
OPINION
Rejection I
Claim 6 recites, in relevant part, "securing a contracting element
formed in an extended position." Appeal Br. 11 (Claims App.). The
Examiner determines that this language renders the claim indefinite because
4 The Examiner's statements of Rejection I and Rejection II incorrectly
include cancelled claim 7. Final Act. 4. \Ve treat this inclusion as an
inadvertent and harmless error, and we omit claim 7 from the rejections.
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Application 13/894,217
it is unclear whether the term "formed means manufactured[,] ... extended
during use, or extended before use." Final Act. 5. According to the
Examiner, "the metes and bounds of such [a] term are not readily
ascertainable." Id. We disagree with the Examiner that inclusion of the
term "formed" renders the claim language indefinite. Although the
limitation is broad in that it could mean that the contracting element is
manufactured to be in an extended position or is extended during or before
use, merely that a claim is broad does not mean that it is indefinite. See In re
Johnson, 558 F.2d 1008, 1016 n.17 (CCPA 1977); In re Miller, 441 F.2d
689,693 (CCPA 1971); In re Gardner, 427 F.2d 786, 788 (CCPA 1970).
We find no deficiency in the Examiner's interpretation, discussed in the
context of Rejection III, that "the process of extending the [ contracting]
element is a process of forming the [ contracting] element." Final Act. 7.
This interpretation is consistent with Appellant's Specification, which
describes that "contracting elements 118 may be coupled to the sealing drape
116 in a stretched position or may be moved to a stretched position as the
wound-closing dressing 110 is being applied." Spec. ,r 28 (emphasis added).
For these reasons, we do not sustain the rejection of claims 6 and 8-18
under 35 U.S.C. § 112, second paragraph, as indefinite.
Rejection II
The Examiner finds that "[ t ]he limitation 'the contracting element
formed in an extended position' ... is not supported by the instant
Specification." Final Act. 4. Appellant argues that support for the claim
limitation at issue can be found in paragraphs 28 and 30 of the Specification.
Appeal Br. 4--5. According to Appellant, "the [S]pecification describes in
detail several possible example materials of the contracting element, as well
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as how each of these example materials may contract from an initial,
extended state to a contracted state." Id. at 5.
We agree with Appellant that the Specification provides support for
the limitation in question sufficient to satisfy the written description
requirement of 35 U.S.C. § 112, first paragraph. In particular, the
Specification describes that "[e]ach contracting element 118 is configured to
contract when activated in order to generate a closing force." Spec. il 28.
The Specification describes that "contracting element 118 is configured to
move from an extended position to a contracted position ( or free position)
upon full activation." Id. ,r 30. "For example, each contracting element 118
may be formed from cellulose whereby moisture causes the contracting
element 118 to contract." Id. In this regard, the disclosure provided in the
Specification would reasonably convey to one having ordinary skill in the
art, as of the filing date, that Appellant possessed the subject matter of "a
contracting element formed in an extended position," as recited in claim 6.
See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) (en bane).
Accordingly, we do not sustain the Examiner's rejection of claims 6
and 8-18 under 35 U.S.C. § 112, first paragraph, as failing to comply with
the written description requirement.
Rejections III, IV, VI, and VII
The Examiner finds that De Muth teaches all of the limitations of
independent claim 6, including, in relevant part,
securing a contracting element 3 (fig. 1) in an extended
position to an epidermis such that the contracting element 3 (fig.
1) spans at least a portion of the wound, wherein the contracting
element is configured to contract from the extended position to a
contracted position (col. 1, lines 28-33; col. 2, lines 3-12; fig. 1);
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De Muth specifically states that the bandage is "suitably
stretched" across the wound (see col.2, lines 5-6), which reads
for an expanded position in which the contracting element is
applied.
Final Act. 5-6. The Examiner explains that, "since the process of extending
the [ contracting] element is a process of forming the [ contracting] element,
the contracting element is interpreted as being formed in an extended
position." Id. at 7.
Appellant argues that De Muth does not teach that the contracting
element is extended prior to being applied. Appeal Br. 5-7. In particular,
Appellant asserts that claim 6 "implicitly requires that the contracting
element be extended before it is secured to an epidermis, thus eliminating
the need to further extend the material prior to securing it to the wound site
and reducing the risk of additional trauma to the wound." Id. at 6.
Appellant argues that, "rather than being secured in an extended position, as
recited in claim 6, De Muth clearly teaches that the elastic strips are
stretched after the adhesive plasters are secured." Id. at 6-7.
As an initial matter, claim 6 only recites, in relevant part, "securing a
contracting element formed in an extended position." Appeal Br. 12 (Claims
App.). The claim does not recite that the contracting element is extended
before it is secured, and Appellant does not persuasively explain why the
claim would implicitly require this feature. Id. at 6. Appellant's argument is
thus unpersuasive because it is not commensurate with the scope of claim 6,
which does not require that the contracting element is formed in an extended
position before the securing step. See In re Self, 671 F.2d 1344, 1348
(CCP A 1982) (noting that it is well established that limitations not appearing
in the claims cannot be relied upon for patentability). Moreover, Appellant's
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Application 13/894,217
argument is unpersuasive because it is factually incorrect. De Muth teaches
that, "[i]n applying the bandage it is laid onto the skin and one of the
adhesive plasters 1 is secured thereto, the bandage is then suitably stretched
across the wound and the other adhesive is secured in position." De Muth,
col. 2, 11. 3-7. In other words, De Muth teaches that the bandage elastic
strips are extended prior to securing them to the skin (i.e., in between
securing each of the first and second adhesive plasters), not after the plasters
are secured, as asserted by Appellant. Appeal Br. 6-7.
For the above reasons, Appellant fails to apprise us of error in the
Examiner's finding that De Muth anticipates the subject matter of claim 6.
Having determined that the rejection is sustainable on the basis of
anticipation by De Muth, we need not consider in depth the Examiner's
altemati ve basis ( obviousness) for the rejection. It is well settled that
"anticipation is the epitome of obviousness." In re McDaniel, 293 F.3d
1379, 1385 (Fed. Cir. 2002) (quoting Connell v. Sears Roebuck & Co., 722
F.2d 1542, 1548 (Fed. Cir. 1983)); In re Fracalossi, 681 F.2d 792, 794
(CCPA 1982). Accordingly, we sustain the rejection of claim 6, and its
dependent claims 11, 12, and 15, for which Appellant relies on the same
arguments (Appeal Br. 8) under 35 U.S.C. § 102(b) as anticipated by
De Muth, or, in the alternative, under§ 103(a) as unpatentable over
De Muth.
In contesting the rejections of dependent claims 8, 10, 17, and 18
under 35 U.S.C. § 103 (Rejections IV, VI, and VII), Appellant relies on the
arguments presented for patentability of independent claim 6. Id. For the
reasons discussed above, Appellant's arguments do not apprise us of error in
the rejection of claim 6, and likewise do not apprise us of error with respect
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to the rejections of claims 8, 10, 17, and 18. Accordingly, we sustain the
rejections under 35 U.S.C. § 103 of: claims 8 and 17 as unpatentable over
De Muth and Aicher; claim 10 as unpatentable over De Muth and Collins
English Dictionary; and claim 18 as unpatentable over De Muth and
Argenta.
Rejection V
Claim 9
In this rejection of claim 9, which depends from independent claim 6,
the Examiner acknowledges that De Muth does not explicitly disclose that
the contracting element is activated by moisture. Final Act. 9. However, the
Examiner finds that "Serafica teaches a wound dressing (Abstract, line 1)
made of cellulose ( col. 4, lines 40-41) that contracts being moistured, as
defined by the Applicant (Spec., page 2, [0030], lines 6-7)." Id. at 10. The
Examiner determines that it would have been obvious "to make the
contracting elements of De Muth of ... cellulose, as taught by Serafica in
order to promote granulations." Id.
Appellant argues that "the Examiner has presented no evidence that
the reference discloses or teaches a contracting element that is activated by
moisture and subsequently contracts." Appeal Br. 8. According to
Appellant, the Examiner uses "Appellant's disclosure as a roadmap for
attempting to reconstruct the claimed invention from the prior art ... in
direct violation of the prohibition against hindsight bias." Id. This argument
does not identify error in the Examiner's rejection presented. Here, the
Examiner relies on Serafica for teaching that it is known to make wound
dressings out of cellulose, and proposes modifying the contracting element
of De Muth's bandage to be made of cellulose for a reason explicitly set
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Application 13/894,217
forth in Serafica. Final Act. 10. The Examiner cites to Appellant's
Specification simply to support the Examiner's finding that cellulose is a
material that would be activated by moisture, rather than to support the
desirability of using a material that would be activated by moisture. See
Spec. ,r 30 ( describing that "contracting element 118 may be formed from
cellulose whereby moisture causes the contracting element 118 to contract").
In this regard, Appellant has not argued that knowledge regarding the
properties of cellulose was not within the level of ordinary skill in the art at
the time of the invention and could be gleaned only from Appellant's
disclosure. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) ("Any
judgment on obviousness is in a sense necessarily a reconstruction based
upon hindsight reasoning, but so long as it takes into account only
knowledge which was within the level of ordinary skill at the time the
claimed invention was made and does not include knowledge gleaned only
from applicant's disclosure, such a reconstruction is proper."). Thus,
Appellant's assertion that the Examiner relied on impermissible hindsight is
unpersuasive. Appeal Br. 8.
Appellant also argues that "the Examiner has failed to offer any
reason why" the claim would have been obvious over the cited references.
Id. at 9. According to Appellant, "any such discussion of granulation by
Serafica is related to the high moisture donation ability of the microbial
cellulose, and not related to contracting elements." Id. We are not
persuaded by this argument because it does not persuasively explain why the
Examiner's articulated reasoning lacks rational underpinnings. See In re
Kahn, 441 F.3d 977,988 (Fed. Cir. 2006) (cited with approval in KSR Int'!
Co. v. Teleflex Inc., 550 U.S. 398,415,418 (2007)) (requiring that we look
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Application 13/894,217
to whether the Examiner has provided ''some articulated reasoning with
some rational underpinning to suppmi the legal conclusion of obviousness").
Even if Serafica does not discuss that granulation is related to contracting
elements, the reason to modify a reference may often prompt a person of
ordinary skill in the art to do what the inventor has done, but for a different
purpose or to solve a different problem; it is not necessary that the prior art
suggest the modification to achieve the same advantage or result discovered
by an applicant. See, e.g., Kahn, 441 F.3d at 987; In re Kemps, 97 F.3d
1427, 1430 (Fed. Cir. 1996) (citing In re Dillon, 919 F.2d 688, 693 (Fed.
Cir. 1990) ( en bane) ("Although the motivation to combine here differs from
that of the applicant, the motivation in the prior art to combine the references
does not have to be identical to that of the applicant to establish
obviousness.")).
For the foregoing reasons, Appellant does not apprise us of error in
the Examiner's conclusion that the subject matter of claim 9 would have
been obvious. Accordingly, we sustain the rejection of claim 9 under
35 U.S.C. § 103(a) as unpatentable over De Muth and Serafica.
Claim 16
Claim 16, which depends from claim 6, recites that "the contracting
element comprises a material stretched from a free length to a stretched
length and dried and wherein the contracting element is activated by
moisture." Appeal Br. 13 (Claims App.). The Examiner finds that
De Muth's contracting element, as modified to be made of Serafica's
cellulose, meets this limitation because, "in order to be contracted by
moisture[,] the element necessarily has to be dried being in a stretched
state." Final Act. 10 (emphasis added). However, this speculative position
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is not supported by any evidence of record. The Examiner does not point to,
nor do we discern, any disclosure in De lviuth or Serafica that the contracting
element necessarizy has to be dried in a stretched state in order to contract
when activated by moisture.
The Patent Office has the initial duty of supplying the factual basis for
its rejection. It may not ... resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies" in the cited references. In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967); see In re GPAC, Inc., 57 F.3d
1573, 1582 (Fed. Cir. 1995). Here, the Examiner fails to supply the requisite
factual basis for the rejection by improperly relying on a speculative finding
that the contracting element necessarily has to be dried at a stretched length
in order to contract when activated by moisture.
Accordingly, for the above reason, we find that the Examiner erred in
concluding that the combination of De Muth or Serafica renders obvious the
subject matter of claim 16. We do not sustain the rejection of claim 16
under 35 U.S.C. § 103(a) as unpatentable over De Muth and Serafica.
DECISION
The Examiner's decision to reject claims 6 and 8-18 under 35 U.S.C.
§ 112, second paragraph, as indefinite is REVERSED.
The Examiner's decision to reject claims 6 and 8-18 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement is REVERSED.
The Examiner's decision to reject claims 6, 11, 12, and 15 under
35 U.S.C. § 102(b) as anticipated by De Muth, or, in the alternative, under
§ 103(a) as unpatentable over De Muth is AFFIRMED.
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The Examiner's decision to reject claims 8 and 17 under 35 U.S.C.
§ 103(a) as unpatentable over De Muth and Aicher is AFFIRMED.
The Examiner's decision to reject claims 9 and 16 under 35 U.S.C.
§ 103(a) as unpatentable over De Muth and Serafica is AFFIRMED as to
claim 9, and REVERSED as to claim 16.
The Examiner's decision to reject claim 10 under 35 U.S.C. § 103(a)
as unpatentable over De Muth and Collins English Dictionary is
AFFIRMED.
The Examiner's decision to reject claim 18 under 35 U.S.C. § 103(a)
as unpatentable over De Muth and Argenta is AFFIRMED.
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)(l )(iv).
AFFIRMED-IN-PART
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