Ex Parte McKnight et al

Patent Trial and Appeal Board

Jun 14, 2018

14177351 (P.T.A.B. Jun. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/177,351 02/11/2014
22827 7590 06/18/2018
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
FIRST NAMED INVENTOR
Wanda C. McKnight
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.
SAM-312-CON2 3204
EXAMINER
SAFA VI, MICHAEL
ART UNIT PAPER NUMBER
3631
NOTIFICATION DATE DELIVERY MODE
06/18/2018 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):
USDOCKETING@DORITY-MANNING.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WANDA C. McKNIGHT, RICHARD W. RABURN,
RUSSELL J. WESTON, and JOSEPH A. BENEDICT 1
Appeal2017-009584
Application 14/177,351
Technology Center 3600
Before MICHAEL L. HOELTER, JAMES P. CAL VE, and
ANTHONY KNIGHT, Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Office
Action rejecting claims 25-51. Br. 3-16. Claims 1-24 and 52-70 are
cancelled. Id. at 17, 21. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Span-America Medical Systems, Inc. is identified as the real party in
interest and also is the applicant pursuant to 37 C.F.R. § 1.46. See Br. 1.
Appeal2017-009584
Application 14/177,351
CLAIMED SUBJECT MATTER
Claims 25 and 39 are independent. Claim 25 is reproduced below.
25. A multi-layer interface between a patient and an
associated support surface, for the prevention and treatment of
decubitus ulcers, said interface comprising:
a first layer of material, adjacent a patient interface;
a second layer of material, adjacent and beneath said first layer
of material, and
an air flow control system;
wherein said first layer of material is vapor-permeable, said
second layer comprises a non-crushable, three-dimensional material,
and said air flow control system provides forced air flow relative to
said second layer, so that moisture vapor and heat travels away from a
patient's body through said first layer and enters said second layer, to
be carried away from the patient therein by such forced air flow, so as
to provide an aid in reducing moisture and heat near the patient's
body.
Br. 17 (Claims App'x).
REJECTI0NS 2
Claims 25-51 are rejected under 35 U.S.C. § 112, first paragraph, for
failing to comply with the written description requirement.
Claims 25, 28, 31, 33, 34, 37, and 38 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Biggie (US 5,926,884, iss. July 27, 1999).
Claims 25-31, 33, 34, 37--48, and 50 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Wilkerson (US 5,882,349, iss. Mar. 16, 1999).
Claim 35 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Maier (US 6,223,369 Bl, iss. May 1, 2001) and Biggie.
2 The Examiner withdrew the rejection of claims 25-51 for non-statutory
double patenting over claims 10-13 of U.S. Patent No. 6,782,574 based on
Appellants' filing a terminal disclaimer that was approved on Sept. 16, 2016.
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Appeal2017-009584
Application 14/177,351
Claim 36 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Maier, Biggie, and Wilkinson (US 5,699,570, iss. Dec. 23, 1997).
Claim 32 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Biggie and Pearce (US 5,881,409, iss. Mar. 16, 1999).
ANALYSIS
Claims 25-51
Rejected For Lack Of Written Description
Appellants argue claims 25-51 as a group. See Br. 3-10. We select
claim 25 as representative, with claims 26-51 standing or falling with claim
25. 37 C.F.R. § 4I.37(c)(l)(iv).
The issue for our determination is whether Appellants' disclosure of a
species of an air flow control system that "provides forced air flow through
said second layer" (as was once recited in original claim 25) supports the
present claim to a genus of the air flow control system that "provides forced
air flow relative to said second layer" as is presently recited in independent
claim 25. 3 Br. 17 (Claims App'x) ( emphasis added); see Final Act. 3.
As the Examiner points out, original independent claim 25 recited
"said air flow control system provides forced air flow through said second
layer." Ans. 3 ( emphasis added). The Examiner also is correct in finding
that presently-recited claim 25 "defines a broader limitation of air flow that
had not been set forth within the originally filed disclosure" and therefore
"[ s ]uch broader limitation of air flow would go beyond the originally
disclosed 'air flow through"' the second layer. Id.
3 Independent claim 39 recites "an air flow control system providing a
continuous stream of air relative to said middle layer." Br. 19 (Claims
App'x).
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Appeal2017-009584
Application 14/177,351
In this regard, Appellants disclose mattresses and mattress coverlets
that prevent, reduce, and/or treat decubitis ulcers, known as pressure sores or
bed sores. Spec. ,r 2. These sores and ulcers afflict bedridden and immobile
patients when pressure of the patient's skin against a support surface causes
blood and oxygen flow to cease to the extent that skin dies and ulcers form.
Id. ,r 3. Skin maceration also may result from exposure of the patient's skin
to excessive moisture and heat. Id. Appellants' mattress includes air cells to
redistribute a patient's weight, thereby reducing pressure sores, and a low air
loss system to remove moisture vapor and heat at the patient-bed boundary,
thereby preventing skin maceration, keeping wounds dry, and promoting
healing. Id. ,r,r 4--5. The claimed air flow control system is directed to the
latter feature for preventing skin maceration. See id. ,r,r 11, 13-15; Br. 2.
Appellants' Figure 5, reproduced below, illustrates this configuration.
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Figure 5 is a section view of mattress 100 and inflatable air cells 32-
36 enclosed within coverlet 200 comprising first layer 46, second layer 48,
and air flow 50 from external control air flow system 300. Spec. ,r,r 53-60.
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Appeal2017-009584
Application 14/177,351
The upper first layer 46 comprises a vapor permeable material that
allows moisture-vapor and heat from a patient's body, which is disposed on
first layer 46, to pass through to the middle, second layer 48. Id. ,r 53. The
middle, second layer 48 includes a "non-crush three-dimensional fabric" that
is vapor and air permeable. Id. The Specification discloses further that:
It is through this middle layer 48 of the mattress coverlet 200
that the low air loss feature of the present invention forces air,
which aids in removing the warm moist air generated by the
patient. An exemplary depiction of the direction of airflow
through the mattress coverlet 200 is indicated by exemplary
airflow 50.
Id. The bottom, third layer 52 is waterproof and vapor impermeable to
retain the warm moist air transmitted from the patient to second layer 48
"within the second layer 48 so it can be removed by the low air loss airflow
(as indicated in FIG. 5 by exemplary air flow 50)." Id. ,r 54.
Appellants disclose a further object of their invention as providing a
mattress coverlet "including a three-dimensional non-crush fabric to allow
for the airflow of such a low air loss feature to flow under load." Id. ,r 15.
Therefore, the three-dimensional, non-crush middle layer 48 through which
air flows 50 addresses a problem in prior art systems, which fail to support a
patient's weight resulting in billowing and air flow through the mattress and
coverlet "rather than [air] flowing underneath the patent to aid in controlling
moisture and heat." Id. ,r 11.
The Specification thus discloses the claimed air flow control system
interface as designed to direct forced air through a middle, second layer 48
in order to remove moisture and heat that passes from a patient through the
upper, first layer 46 to the inner/middle second layer 48.
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Appeal2017-009584
Application 14/177,351
Thus, the only embodiment of an air flow control system disclosed by
Appellants is one that directs forced air flow through a second or middle
layer, e.g., in Figures 5 (layer 48) and 11 (middle layers 49 and 53). Further,
the Specification makes clear that coverlet 200 is designed to allow vapor
and heat from a patient resting upon upper first layer 46 to pass through first
layer 46 to middle, non-crush layer 48 and to be retained therein by bottom,
vapor impermeable third layer 52. Id. ,r,r 53-54, Fig. 5.
We find no disclosure that Appellants conceived of or contemplated
an air flow control system that forces air in a direction or location other than
through middle layer 48. Nonetheless, Appellants amended original claim
25 to recite "forced air flow relative to said second layer." We agree with
the Examiner that the limitation "forced air flow relative to said second
layer" has a broader meaning than "forced air flow through said second
layer." See, e.g., Ans. 3--4. We interpret the term "relative to" to mean
"having some relation or connection to." This meaning is consistent with an
ordinary meaning of "relative" which includes "a thing having a relation to
or connection with or necessary dependence on another thing." Merriam-
W ebster.com, definition of "relative" at http://www.merriam-webster.com/
dictionary /relative (last viewed June 7, 2018).
Thus, air flow "relative to" said second layer means not only air flow
through the second layer, but also air flow across the second layer, partially
within the second layer, outside the second layer, and around or adjacent the
second layer. The scope of "relative to" is broader than "through." Indeed,
the term "relative to" is a relative term. The Specification lacks a definition
of other guidance for a skilled artisan to narrow the scope of "relative to"
beyond its ordinary, broad meaning.
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Appeal2017-009584
Application 14/177,351
It is well-settled that "the fact that the specification describes only a
single embodiment, standing alone, is insufficient to limit otherwise broad
claim language." Howmedica Osteonics Corp. v. Wright Med. Tech., Inc.,
540 F.3d 1337, 1345 (Fed.Cir.2008). Absent a lexicographic definition or
disclaimer, we have no basis for doing so, particularly under a broadest
reasonable interpretation. See B.E. Tech. L.L. C. v. Sony Mobile Commc 'ns
(USA) Inc., 657 F. App'x 982, 988 (Fed. Cir. 2016) (non-precedential)
(citing Phillips v. AWH Corp., 415 F.3d 1303, 1316 1323 (Fed. Cir. 2005)
(en bane)); In re SP Controls, Inc., 453 F. App'x 990, 994 (Fed. Cir. 2011)
(citing In re Bigio, 381 F.3d 1320, 1324--25 (Fed. Cir. 2004)). We find no
basis for ignoring the plain, ordinary meaning of this limitation, particularly
where claim 25 originally recited air flow through said second layer and
then was amended to recite the air flow relative to the second layer.
The specification provides an adequate written description when it
"reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date" of the patent.
Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
( en bane). "[T]he test requires an objective inquiry into the four comers of
the specification from the perspective of a person of ordinary skill in the art .
. . . [to] show that the inventor actually invented the invention claimed." Id.
Adequate written description means that, in the specification,
the applicant must "convey with reasonable clarity to those
skilled in the art that, as of the filing date sought, he or she was
in possession of the [ claimed] invention." . . . . When no such
description can be found in the specification, the only thing the
PTO can reasonably be expected to do is to point out its
nonexistence.
Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007).
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Appeal2017-009584
Application 14/177,351
Appellants do not identify any support in their original disclosure for
a broader meaning. Br. 3-10. Appellants cite paragraphs 22, 23, 53, 54, and
63 as supporting this feature. See id. at 2-3. However, these paragraphs
describe air flow through an inner layer of the coverlet (Spec. ,r 22), through
the second layer (id. ,r 23) through middle layer 48 (i-f 53), within the second
layer 48 (i-f 54), and through air exhaust ports 60 in first layer 46 of mattress
coverlet 200 (i-f 63). Br. 7-8 (discussing Spec. ,r 63). Appellants disclose an
embodiment in Figure 11 that provides air flow 50 through middle layer 49
of coverlet 200 and middle layer 53 of mattress topper 400. Spec. ,r,r 71-72.
Appellants' argument that their Specification provides support for air
flow in different directions in a mattress coverlet (Br. 5-7) does not explain
or identify where a written description is provided for air flow "relative to
said second layer," i.e., in any location other than through said second layer.
Appellants' disclosure of a single species of air flow control system in
which forced air flows entirely within and through a second/middle layer is
not sufficient to provide a written description of a broader genus of air flow
system in which air flows "relative to" the second layer so the air does not
have to flow entirely or even partially through or within the second layer.
See Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159-60 (Fed. Cir. 1998) (the
disclosure of two species of cup shape did not support claim to generic cup
shape); In re Curtis, 354 F.3d 1347, 1352-53 (Fed. Cir. 2004) (disclosure of
only a single species (MCW) as suitable to adhere to PTFE for dental floss
did not convey that inventors considered any other material); Bilstad v.
Wakalopulos, 386 F.3d 1116, 1125 (Fed. Cir. 2004) (disclosure of more
species is necessary where a skilled artisan would not recognize other
members of the genus performing similarly to the disclosed species).
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Appeal2017-009584
Application 14/177,351
Accordingly, we sustain the rejection of claims 25-51 for lack of an
adequate written description of the phrase "air flow relative to said second
layer."
Prior Art Rejections
Because we sustain the rejection of all claims 25-51 on appeal under
35 U.S.C. § 112, first paragraph, for lack of an adequate written description,
we do not address the Examiner's alternative grounds of rejection of the
claims under 35 U.S.C. § 102 and§ 103. See 37 C.F.R. § 4I.50(a)(l). We
do not believe it is necessary to address the novelty or obviousness of claims
that contain a limitation that is not described in the Specification. See In re
Smith, 2008 WL 4998624, at *4 (BP AI, Nov. 24, 2008).
DECISION
We affirm the rejection of claims 25-51 for lack of written
description.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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