Ex Parte Scholz

Patent Trial and Appeal Board

Jun 20, 2016

12936273 (P.T.A.B. Jun. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/936,273 01/05/2011
32692 7590 06/22/2016
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
Matthew T. Scholz
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.
63894US007 1355
EXAMINER
MENSH, ANDREW J
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
06/22/2016 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW T. SCHOLZ
Appeal2014-006930
Application 12/936,273 1
Technology Center 3700
Before JOHN C. KERINS, STEP AN ST AI CO VICI, and LEE L. STEPINA,
Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Matthew T. Scholz (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner's final decision rejecting claims 24, 25, and 27-37.2
We have jurisdiction under 35 U.S.C. § 6(b).
According to Appellant, the real parties in interest are 3M Company
(formerly known as Minnesota Mining and Manufacturing Company) and its
affiliate 3M Innovative Properties Company. Appeal Br. 3 (filed July 24,
2013).
2 Claims 1-23, 26, 38, and 39 are canceled. Id. at 22, 25. Although
independent claim 38 was finally rejected, in view of Appellant's
cancellation of claim 38 in the After-Final Amendment filed on Jan. 22,
Appeal2014-006930
Application 12/936,273
We REVERSE.
survnvIARY OF DECISION
INVENTION
Appellant's invention relates to medical dressings for "deliver[ing]
negative pressure wound therapy." Spec. 1, 11. 5---6.
Claims 24 and 35 are independent. Claim 24 is illustrative of the
claimed invention and reads as follows:
24. A medical dressing comprising:
a backing comprising an interior surface and an external
surface;
adhesive on at least a portion of the interior surface,
wherein the adhesive extends around a perimeter of the interior
surface of the backing to adhere the medical dressing to a
subject over a wound;
a normally-closed valve attached to the backing over an
opening formed through the backing, wherein fluid flow
through the opening is controlled by the normally-closed valve,
and wherein a dead volume between the normally-closed valve
and the backing is 10 mm3 or less;
wherein, when the medical dressing is attached
over the wound, the medical dressing defines a sealed
environment over the wound, and further wherein
application of a vacuum to the external surface of the
backing over the normally-closed valve opens the
normally-closed valve such that fluid within the sealed
environment can be removed through the opening in the
backing,
and wherein the normally-closed valve is flexible and
comprises at least a flexible base layer that is attached to the
backing and a flexible flap layer that is attached to the flexible
base layer.
2014, concurrently with the Reply Brief, the rejection of claim 38 is not
before the Board. See 37 C.F.R. § 41.33(b)(l).
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Appeal2014-006930
Application 12/936,273
THE REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 24, 25, 32, 33, and 35-37 under 35
USC§ 103(a), as being unpatentable over Kauth (US 2008/0033377 Al,
pub. Feb. 7, 2008) and Newrones (US 2006/0228057 Al, pub. Oct. 12,
2006).
II. The Examiner rejected claims 27-30 and 34 under 35 USC§ 103(a)
as being unpatentable over Kauth, Newrones, and Webster (US 4,541,426,
iss. Sept. 17, 1985).
III. The Examiner rejected claim 31 under 35 USC§ 103(a) as being
unpatentable over Kauth, Newrones, and Rosati (US 2004/0260253 Al, pub.
Dec. 23, 2004).
ANALYSIS
Rejection I
The Examiner finds that Kauth discloses most of the limitations of
independent claims 24 and 35 including "a medical dressing (10) ...
[having] a backing ... a normally-closed valve (14) attached to the backing
over an opening (12a) formed through the backing," but that Kauth fails to
disclose that "the normally-closed valve is flexible and comprises at least a
flexible base layer that is attached to the backing and a flexible flap layer
that is attached to the flexible base layer." Final Act. 5---6 (citing Kauth i-fi-17,
65, 67, 77; Figs. 1- 3). Nonetheless, the Examiner finds that Newrones
discloses an evacuatable container having a flexible normally closed flap
valve 20 including at least a flexible base layer 28, attached to backing 12,
and a flexible flap layer 30 attached to the flexible base layer 28. Id. at 6
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Appeal2014-006930
Application 12/936,273
(citing Newrones i1i126, 53; abstract; Figs. 2A, 2B). The Examiner
concludes that:
It would have been obvious to one having ordinary skill in
the art at the time the invention was made to replace the
normally-closed valve disclosed by Kauth with the normally-
closed flexible flap valve which includes a flexible base layer
and is capable of being pulled into the open position by applying
vacuum pressure as disclosed by Newrones in Figures 2A, 2B,
and 3A, in order to allow the valve flap to move between the
closed position and the open position in the intended manner as
suggested by Newrones in paragraph [0053] and easily evacuate
the air/fluid from the underside of the valve as suggested by
Newrones in the abstract, and paragraph [0037].
Id. at 7.
Appellant argues that "the rationale used by the Office to explain the
motivation for a skilled person to make the proposed modification of the
Kauth wound dressing with the label structure ofNewrones is unfounded,"
because Kauth' s valve already includes "a flexible valve member that
controls the flow of fluids out of the wound in a one-way direction," and as
such, "it is reasonable to conclude that the valve member 64 of Kauth is
capable of performing any function that the flap layer 20 is capable of
performing." Appeal Br. 16. Thus, according to Appellant, the Examiner's
combination "of the teachings ofNewrones with the teachings of Kauth can
only occur through the use of impermissible hindsight." Id. at 17.
We agree with Appellant that the Examiner has not adequately
explained why it would have been obvious to replace Kauth' s valve 14 with
Newrones' valve 20, because Kauth's valve 14 already opens and closes in
the intended manner. The reason proffered by the Examiner to replace the
normally-closed valve disclosed by Kauth with the normally-closed flexible
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Appeal2014-006930
Application 12/936,273
flap valve ofNewrones, namely, to "easily evacuate [] air/fluid," appears to
already be adequately performed by Kauth's valve assembly 14. Kauth
specifically discloses that valve assembly 14 "permits air or other fluids to
move through ... bandage [ 1 OJ in one direction, as to escape from a body
cavity, but prevents fluids from moving in the other direction, as in entering
the wound." Kauth, Abstract. The Examiner has not provided any findings
that Kauth recognized a problem with evacuating air or other fluids from the
underside ofKauth's dressing 10. Hence, without a persuasive articulated
reasoning based on rational underpinnings for modifying the reference as
proposed, the Examiner's rejection appears to be the result of hindsight
analysis. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
In the Answer, the Examiner modifies the rejection and takes the
position that flexible valve member 64 of Kauth is "no longer being
modified," because "the flexible valve member is being interpreted as the
flexible flap layer of the present invention." Ans. 15. Rather, the Examiner
is now modifying base layer 22 of Kauth to be flexible based on the
teachings ofNewrones, "in order to provide the normally-closed valve with
a bit of flexibility so that the base and flap layer are free to flex along with
the backing layer during use, and to provide patient comfort." Id. at 15-16.
Despite the Examiner modifying the rejection in the Answer to
replace base layer 22 of Kauth with the flexible base layer ofNewrones, we
find the Examiner's modified rejection insufficient to explain what would
have prompted a person having ordinary skill in the art to replace only the
rigid base layer of Kauth with the flexible base layer ofNewrones while
maintaining rigid valve cover 24. See id. at 15. The reasoning proffered by
the Examiner, namely, "to provide the normally-closed valve with a bit of
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Appeal2014-006930
Application 12/936,273
flexibility so that the base and flap layer are free to flex along with the
backing layer during use, and to provide patient comfort" does not support
the conclusion of obviousness because the Examiner does not adequately
explain how a flexible base connected to a rigid cover would allow the base
and flap layer to flex. 3 Nor does the Examiner adequately explain why a
person of ordinary skill in the art would indiscriminately select to modify
only valve base 22 of Kauth's valve body 26 and would not also modify
valve cover 24, which also forms valve body 26. See Kauth i-f 69.
Moreover, the Examiner has not provided any findings that Kauth
recognized a problem with patient discomfort. For these reasons, the
Examiner's modified rejection also does not support a conclusion of
obviousness.
Accordingly, for the foregoing reason, we do not sustain the rejection
of claims 24, 25, 32, 33, and 35-37 under 35 USC§ 103(a) as being
unpatentable over Kauth and Newrones.
Rejections II and III
The Examiner does not rely on the teachings of either Webster or
Rosati in any manner that would remedy the deficiencies in the rejection
based on Kauth and Newrones as described supra. See Final Act. 9-13.
Accordingly, for the same reasons as discussed above, we do not sustain the
rejections under 35 U.S.C. § 103(a) of claims 27-30 and 34 as unpatentable
3 We note that the purpose of Kauth is to move away from a flexible
valve in order to avoid the drawbacks of such valves. See Kauth i-f 1 O; see
also Appeal Br. 8-10; Reply Br. 3--4.
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Appeal2014-006930
Application 12/936,273
over Kauth, Newrones, and Webster, and of claim 31 as unpatentable over
Kauth, N ewrones, and Rosati.
SUMMARY
The decision of the Examiner to reject claims 24, 25, and 27-37 is
reversed.
REVERSED
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