Ex Parte Nierle et al

Patent Trial and Appeal Board

Jun 19, 2018

14241166 (P.T.A.B. Jun. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/241,166 06/16/2014
13897 7590 06/21/2018
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
FIRST NAMED INVENTOR
Jens Nierle
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.
3321-P50102 1056
EXAMINER
VANHORN, ABIGAIL LOUISE
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
06/21/2018 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):
mail@Abel-IP.com
hmuensterer@abel-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JENS NIERLE, KARL-HEINZ WOELLER,
MAXI ZIER, and GERD MUELLER 1
Appeal2017-006649
Application 14/241, 166
Technology Center 1600
Before JEFFREY N. FRED MAN, ELIZABETH A. LA VIER, and
RYAN H. FLAX, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge FLAX.
Opinion dissenting-in-part filed by Administrative Patent Judge LA VIER.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision under 35 U.S.C. § 134(a) involving claims directed
to a self-adhesive dressing. The Examiner's rejections of claims 42---63
under 35 U.S.C. § 103(a) are appealed. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part.
1 The Real Party in Interest is identified as "Beiersdorf AG." Appeal Br. 3.
Appeal2017-006649
Application 14/241, 166
STATEMENT OF THE CASE
Independent claim 42 is representative and is reproduced below:
42. A self-adhesive dressing, wherein the dressing comprises
a support that is stretchable and reboundable in only one
direction with a stretchability of from 110 % to 200 %, and an
adhesive composition comprising one or more active substances,
the adhesive composition being present on the support on only a
part of the area thereof and in the form of one or more stripes
and/or waves running crossways to a stretchable direction of the
support.
Appeal Brief 18 (Claims App'x). Independent claim 53 differs in that it
requires that the claimed adhesive take the form of one or more waves and
independent claim 60 differs in that the dressing comprises holes. Id. at 19,
20.
The following rejections are on appeal:
Claims 42--47, 50-54, and 57-59 stand rejected under 35 U.S.C.
§ I03(a) over Lin,2 Himmelsbach, 3 Riemer, 4 Kase, 5 and Crawford. 6 Final
Action 2-3.
Claims 42-63 (focused on claims 48, 49, 55, 56, and 60-63) stand
rejected under 35 U.S.C. § I03(a) over Lin, Himmelsbach, Riemer, Kase,
Crawford, and Creighton. 7 Id. at 8.
2 US 2009/0182256 Al (pub. July 16, 2009) ("Lin").
3 US 6,488,958 B 1 (issued Dec. 3, 2002) ("Himmelsbach").
4 US 2006/0269500 Al (pub. Nov. 30, 2006) ("Riemer").
5 US 5,861,348 (issued Jan. 19, 1999) ("Kase").
6 Stephanie Crawford, How Kinesio Tape Works, HowSTUFFWORKS (May 9,
2011 ), http://science.howstuffworks.com/kinesiology-tape.htm/printable
(last visited May 3, 2016) ("Crawford").
7 US 2010/0312160 Al (pub. Dec. 9, 2010) ("Creighton").
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Application 14/241, 166
DISCUSSION
"[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting aprimafacie case ofunpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Only those arguments made by Appellants in the Appeal Brief and properly
presented in the Reply Brief have been considered in this Decision.
Arguments not so presented in the Briefs are waived. See 37 C.F.R.
§ 41.3 7 ( c )( 1 )(iv) (2015); see also Ex parte Borden, 93 USPQ2d 14 73, 14 7 4
(BP AI 2010) (informative) ("Any bases for asserting error, whether factual
or legal, that are not raised in the principal brief are waived.").
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "[T]he analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ." Id. at
418. "In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed purpose of the
patentee controls. What matters is the objective reach of the claim. If the
claim extends to what is obvious, it is invalid under§ 103." Id. at 419.
The Examiner determined the rejected claims would have been
obvious over the Lin-Himmelsbach-Reimer-Kase-Crawford prior art
combination and, in the case of claims 48, 49, 55, 56, and 60-63, also
adding Creighton to the combination. Final Action 2-12; Answer 2-8.
Except as otherwise indicated below, we discern no error in the Examiner's
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Application 14/241, 166
determinations and we adopt the Examiner's findings of fact as set forth in
the Final Action and Answer. See Final Action 2-12; Answer 2-8.
Appellants largely focus their arguments on the Kase reference ( or
other references individually). "Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references. . . . [ A reference] must be read,
not in isolation, but for what it fairly teaches in combination with the prior
art as a whole." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
To the extent Appellants' arguments ignore the combination of prior art,
they are not persuasive.
Appellants argue that "KASE does not suggest the use of cloth for
Kinesio taping but merely mentions in passing that the tape disclosed therein
can be used as Kinesio taping for chiropractic remedies" and that "KASE
clearly fails to teach or suggest replacing the removable protective adhesive
tape structure with easily tearing-off feature of LIN by Kinesio taping."
Appeal Br. 7.
This argument is not persuasive. Kase is cited for its teaching that a
stretchable support element can be a thread. Final Action 5---6. The fact that
Kase discloses a tape that is elastic and has adhesive patterns similar to those
described in Appellants' Specification and that may be used for purposes
similar to those described in Appellants' Specification merely serves to add
support to the Examiner's determination of obviousness. The degree of
Kase' s focus on using its disclosed tape for therapeutic purposes is not
determinative here; it does disclose such a use, which is sufficient.
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Application 14/241, 166
Appellants argue that because Lin discloses tape that is easily tom
( e.g., tom to a useful length), somehow this implies that Lin's disclosed
adhesive must be kept to some minimum amount and so the more robust
adhesive patterns disclosed by Kase are not compatible with Lin's tape.
Appeal Br. 7-8; see also id. at 9 (arguing Kase's disclosed adhesive patterns
similar to those described in Appellants' Specification are not relevant).
This argument is not persuasive. There is no indication in Lin that its
adhesive should be minimized to any degree. There is no apparent reason
why the adhesive of Kase could not be combined with the tape of Lin; both
references teach adhesive patterns with gaps between the adhesive stripes.
Although the adhesive patterns of Kase are very similar to those disclosed in
Appellants' Specification and illustrated by its figures, the rejection does not
rely on such patterns, as wave-patterned adhesive is taught not only in Kase,
but in other cited prior art as well (see Himmelsbach and Creighton);
therefore, Appellants' respective arguments are not persuasive. The
adhesive bands disclosed by Lin are transverse or crossways to the
stretchability direction of Lin's tape and, therefore, render the respective
claim element obvious. The wave-like adhesive patterns of Kase merely add
further support to the obviousness rationale.
Appellants argue "the meandering strips of KASE extend along the
stretchable direction (length) of the tape," and so cannot render the
otherwise-oriented adhesive and stretchable support elements of the claims
obvious. Appeal Br. 8-9.
This argument is not persuasive. The relationship between Kase' s
threads and adhesive to its disclosed stretchability is not determinative here,
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Application 14/241, 166
as the claimed orientation is taught and suggested by Lin. However, Kase' s
disclosed adhesive wave-pattern (Kase Fig. 1) comports with the description
in Appellants' Specification, which explains that so long as some or most of
the adhesive wave pattern is oriented crossways to the stretching direction, it
falls within the scope of the respective claim limitation. Spec. 19:28-20:7,
Fig. 1 C. In any event, Lin teaches and suggests a stretchable support
structure and crossways-oriented adhesive bands, which, knowing that wavy
adhesive can be substituted for straight lines of adhesive based on other prior
art of the combination, renders the respective claimed subject matter
obvious.
Appellants separately argue the patentability of independent claim 53
and its dependent claims. See Appeal Br. 10-13. However, these arguments
are in large part the same as those set forth more generally and as to claim
42 specifically, and have been addressed above. These reiterated arguments
are similarly not persuasive as applied to claim 53.
Additionally, claim 53 recites that the adhesive is provided as "one or
more waves running crossways to a stretchable direction of the support," and
Appellants argue that there would be no reason to replace the straight
adhesive bands of Lin with the wave-shaped adhesive of Kase.
This argument is not persuasive. On the one hand, providing adhesive
as straight lines or as wavy lines amounts to little more than selection from
known prior art alternatives. Such a design for tape adhesive is taught and
suggested by Himmelsbach (3:37-59 (adhesive printed in "patterns such as
matrices, stripes and zigzag lines")), as well as by Kase (Fig. 1) and
Creighton (Fig. 28). On the other hand, the prior art teaches and suggests
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Application 14/241, 166
functional advantages from providing adhesive as wavy lines, e.g., improved
air and water vapor permeability (Himmelsbach 3:37-59; Kase 5:29-35;
Creighton ,r 171) and allowing the adhesive to better function with the
elasticity of the tape (Kase 1:59---67, 5:35-38). Therefore, both straight
and/or wavy adhesive bands would have been obvious in view of the prior
art combination. See KSR, 550 U.S. at 421 ("When there is a design need or
market pressure to solve a problem and there are a finite number of
identified, predictable solutions, a person of ordinary skill has good reason
to pursue the known options within his or her technical grasp.").
Appellants also separately argue claim 43 as patentable over the prior
art combination cited by the Examiner. Appeal Br. 13. Appellants renew
their argument relating to the claimed wave pattern of adhesive of claim 53.
Id. This argument is unpersuasive, as discussed above.
Appellants also separately argue claims 44 and 54 as patentable.
Appeal Br. 13. These claims recite that "the [adhesive] waves have an
amplitude of greater than 20 mm in height." Appellants argue that the
Examiner's rationale that adapting body-tape to the size of the body part to
which it will be applied would render such a limitation merely a routinely
optimizable variable amounts to mere speculation is not supported by
evidence. Id. Appellants argue "nothing in KASE teaches or suggests that
the amplitude of the meandering stripes of adhesive is a result-effective
variable in need of optimization." Id. at 14.
The Examiner responds that, based on Kase and Lin, there are clear
reasons why one of ordinary skill in the art would manipulate the amount of
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Application 14/241, 166
adhesive, e.g., the size of the tape requires it- larger tape requires more
adhesive. Answer 6-7. The Examiner explains that
Optimization of parameters is a routine practice that would be
obvious for a person of ordinary skill in the art to employ and
reasonably would expect success. It would have been obvious to
one of ordinary skill in the art at the time of the invention to
engage in routine experimentation to determine optimal or
workable ranges that produce expected results.
Id. at 7.
We conclude that the Examiner has the better position. Appellants'
Specification states only the following as a reason to set the amplitude of a
wave-shaped adhesive to at least 20 mm (2 cm):
If a wave-like adhesive composition application is intended, then
it is advantageous if the wave coating has an amplitude greater
than 20 mm in height. These higher amplitude values compared
with the prior art (e.g. DE 10012582 Al) are advantageous for
the intended use according to the invention since they lead to
greater movements of the skin.
Spec. 20:23-27. This statement provides essentially no specific reason for
the claimed optimizing of the adhesive wave pattern's amplitude. Further,
this statement admits that the prior art taught that the amplitude of an
adhesive wave pattern would have been a variable considered by the skilled
artisan. Therefore, as the Examiner has determined, larger tape dimensions
to accommodate larger user physiology would require more adhesive by way
of either a greater number of adhesive waves or larger adhesive waves ( or
both), and optimizing the amplitude of such waves would go hand-in-hand
with such tape dimension optimization.
Regarding claims 49 and 55, which recite "the one or more [adhesive]
stripes and/or waves comprise broken stripes and/or waves," Appellants
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Application 14/241, 166
argue the Examiner misinterpreted Creighton's paragraph 172 as disclosing
such subject matter because the paragraph does not relate to adhesive, but to
padding material. Appeal Br. 14--15.
Whether or not the Examiner correctly interpreted paragraph 172 of
Creighton, the reference does not teach a broken adhesive stripe or wave.
The Examiner points to the adhesive patterns disclosed by Creighton at Fig.
2 8, specifically 2 809 or 2 811, as within the scope of "broken," as claimed.
Answer 7. This is not a reasonable interpretation of the claim term
"broken." "[A] claim must be read in view of the specification of which it is
a part." Renishaw PLC v. Marposs Societa per Azioni, 158 F.3d 1243, 1248
(Fed. Cir. 1998). Here, the term broken is not expressly defined in the
Specification nor is there evidence presented of an ordinary meaning for the
term in the context of the claims. The dictionary definition for the term
invokes discontinuity and interruption. 8 Looking to the Specification, we
see examples of "broken" stripes/waves at Figures 1 D and 1 G and, perhaps,
at Figure 3. These figures show discontinuous lines of adhesive, and we
interpret the claim consistently with this disclosure in the Specification. A
patterned adhesive is not the same as an adhesive patterned in a broken
stripe/wave. Creighton's Fig. 28, relied upon by the Examiner for such,
does not show a broken stripe or wave.
When a prima facie case of obviousness has not been established, the
rejection must be reversed. In re Fine, 837 F.2d 1071, 1075 (Fed. Cir.
8 Merriam-Webster Dictionary, broken, https://www.merriam-
webster.com/dictionary/broken, visited June 13, 2018 ("e: discontinuous,
interrupted") ( capitalization omitted).
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1988); see also In re Oetiker, 977 F.2d at 1445 (the burden is on the
Examiner to make a prima facie case). Therefore, we reverse the
obviousness rejection as to claims 49 and 55.
Regarding claims 48, 56, and 60-63, which recite "holes" as a part of
the claimed dressing, Appellants argue that the tape disclosed by Lin is more
breathable than the material disclosed by Creighton, and so there would be
no reason to provide holes to improve the breathability of the tape of Lin.
Appeal Br. 16.
Appellants' argument is not persuasive. As an initial matter, we note
that Lin discloses its tape "is made of a continual enrolled flat porous non-
woven fabric." Lin ,r 35 (emphasis added). Therefore, the tape, i.e., the
dressing, of Lin has holes. Moreover, as the Examiner states, "breathability
isn't the only reason Creighton suggests the use of holes. Creighton also
states that the holes affect skin surface pressures and comfort with joint
range of motion. Both of those would be applicable to the tape of Lin."
Answer 7-8.
For the reasons set forth above, we affirm the Examiner's obviousness
rejections, except as to claims 49 and 55.
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Application 14/241, 166
SUMMARY
The rejection of claims 42--47, 50-54, and 57-59 under 35 U.S.C.
§ 103(a) over Lin, Himmelsbach, Riemer, Kase, and Crawford is affirmed.
The rejection of claims 42--48, 50-54, and 56-63 under 35 U.S.C.
§ 103(a) over Lin, Himmelsbach, Riemer, Kase, Crawford, and Creighton is
affirmed. It is reversed as to claims 49 and 55.
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-IN-PART
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Application 14/241, 166
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JENS NIERLE, KARL-HEINZ WOELLER,
MAXI ZIER, and GERD MUELLER
Appeal2017-006649
Application 14/241, 166
Technology Center 1600
Before JEFFREY N. FREDMAN, ELIZABETH A. LA VIER, and
RYAN H. FLAX, Administrative Patent Judges.
LA VIER, Administrative Patent Judge, dissenting-in-part.
I respectfully dissent from the reversal of the Examiner's rejection of
claims 49 and 55.
In my view, whether paragraph 172 of Creighton and its
accompanying Figure 28 is germane to the rejection of claims 49 and 55 is
somewhat beside the point. This is because the Examiner also relies on
paragraph 171 of Creighton in rejecting these claims, specifically for the
proposition that "[t]he adhesive may be solid or applied in a matrix or other
geometric patter[ n] to improve breathability as is known in the art." Final
Action 9 (citing Creighton, 171).
This passage of Creighton states in full:
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Application 14/241, 166
The material may in some embodiments have a tape backing to
adhere to the skin. The chosen adhesive may be sprayed on the
material at time of use or may come with peel and stick type
backing. The adhesive may be solid or applied in a matrix or
other geometric pattern to improve breathability, as is known in
the art. The adhesive may be thermally activated.
Creighton ,r 1 71 ( emphasis added).
In my view, the disclosure in paragraph 171 of Creighton is sufficient
to support a prima facie case that it would have been obvious to apply an
adhesive in whatever geometric pattern the ordinarily skilled artisan might
have found appropriate to achieve improved breathability. This includes the
claimed broken stripe and/or wave patterns. Appellants do not address
paragraph 171 of Creighton in reference to claims 49 and 55 in their briefs,
except to acknowledge that "the adhesive is addressed in paragraph [0171]."
Appeal Br. 15. Indeed it is. Accordingly, the Examiner's reliance on
paragraph 1 71 of Creighton stands unchallenged.
Notably, it is the majority, not Appellants, that identifies "Figures ID
and IG and, perhaps ... Figure 3" (Maj. Op. 9) in the Specification as
exemplary of the claimed broken stripe/wave patterns. Appellants do not
discuss claims 49 or 55 specifically in their "Summary of Claimed Subject
Matter" (see Appeal Br. 3--4), nor do Appellants identify specific support for
these claims elsewhere in their Appeal or Reply Briefs. And the word
"broken" does not appear in the application as originally filed, except in an
unrelated description of fat metabolism (see Spec. 1 ). There is no particular
discussion of Figures 1 D or 1 G in the Specification; the general discussion
of Figure 1 simply explains that "the adhesive masses are applied in a
specific orientation which additionally enhances the mechanical effect of the
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Application 14/241, 166
dressing," and offers straight and wavy lines as examples (id. at 19; see also
id. at 22). No mention is made of the apparently discontinuous nature of the
adhesive patterns shown in Figures ID and IG. The Specification's
discussion of Figure 3 (see id. at 20) is likewise silent on this topic (which in
my view is not surprising, given that the only arguable break in the adhesive
line shown in Figure 3 appears to be the result of overlaying a diagram
number).
I do not mean to suggest a lack of written description for "broken"
stripes or waves of adhesives, as I agree with the majority to the extent that
such patterns are evident from Figures 1 D and 1 G alone ( and, it seems,
Figure IE). Rather, I point out all of this to demonstrate that there is no
evidence in the record that the inventors found anything unexpected,
unpredictable, or otherwise non-obvious ( or even worth discussing) about
selecting "broken" stripes and/or waves over other geometric patterns.
As I discern no reversible error in the Examiner's rejection of claims
49 and 55, but I otherwise agree with my colleagues' assessment of the
merits of this case, I would affirm the appealed rejections in their entirety.
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