Ex Parte Smith et al

Board of Patent Appeals and Interferences

Jun 20, 2012

10844690 (B.P.A.I. Jun. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/844,690 05/13/2004 Shane C. Smith 15788-0019 6926
3490 7590 06/20/2012
DOUGLAS T. JOHNSON
MILLER & MARTIN
1000 VOLUNTEER BUILDING
832 GEORGIA AVENUE
CHATTANOOGA, TN 37402-2289
EXAMINER
AL-AWADI, DANAH J
ART UNIT PAPER NUMBER
1615
MAIL DATE DELIVERY MODE
06/20/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SHANE C. SMITH, JOSEPH CZERWINSKI, MIKE DAVIES,
DON MOAK, and BLAIR RAMEY
____________

Appeal 2011-004444
Application 10/844,690
Technology Center 1600
____________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
STEPHEN WALSH, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL

This appeal under 35 U.S.C. § 134 involves claims 12-19, 37, 40-43,
45, and 62-74 (App. Br. 2; Reply Br. 2). We have jurisdiction under 35
U.S.C. § 6(b).
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STATEMENT OF THE CASE
The claims are directed to a sleeve. Claim 12
1
is representative and is
reproduced in the “Claims Appendix” of Appellants’ Brief.

Claim 12 stands rejected under 35 U.S.C. § 102(e) as being
anticipated by Ingram.
2

Claims 12, 13, 16, 17, 62-64, 66-70, and 72-74 stand rejected under
35 U.S.C. § 103(a) as unpatentable over the combination of Ingram and
Dictionary.
3

Claims 12 and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Ingram and Leeper.
4

Claims 12-14, 37, 62, 65, and 71 stand rejected under 35 U.S.C. §
103(a) as unpatentable over the combination of Ingram, Leeper, and Domb.
5

Claims 12-14, 37, and 40-42 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Ingram, Leeper, and Derrieu.
6

Claims 12-14, 41, and 43 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Ingram, Leeper, Derrieu, and Braun.
7

We reverse.

1
Claims 13-19, 37, 40-43, 45, and 62-74 depend directly or indirectly from
claim 12.
2
Ingram et al., US 2003/0135171 A1, published July 17, 2003.
3
Chambers 21
st
Century Dictionary,
http://www.xreferplus.com/entry.jsp?xrefid=1211369&secid=.-
&hh=13/25/2008, accessed March 26, 2008.

4
Leeper, US 4,435,180, issued March 6, 1984.

5
Domb et al., US 5,227,165, issued July 13, 1993.

6
Derrieu et al., US 6,500,446 B1, issued December 31, 2002.

7
Braun et al., WO 96/14840, published May 23, 1996.

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Application 10/844,690

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Anticipation:
ISSUE
Does the preponderance of evidence on this record support
Examiner’s finding that Ingram teaches Appellants’ claimed invention?
FACTUAL FINDINGS (FF)
FF 1. Appellants’ Fig. 1 and Fig. 3b are reproduced below:

“Figure 1 is a top plan view of a sleeve according to the present invention
with patch area adapted to receive a topical analgesic preparation in the
form” (Spec. 5: ¶[00016]). Figure 3b illustrates “application of the sleeve to
the wrist” (id. at ¶ [00018]).
FF 2. Appellants’
[S]leeve 10 comprises an interior side . . .; an exterior side 12;
first and second welts 13a, 13b forming first and second end
sections; first and second transition areas 14a, 14b interior of
the end sections; and a body 20 having a therapeutic section
such as patch 15 . . . containing the active ingredients located
on the interior side . . . of the sleeve 10. In a preferred use, the
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sleeve 10 essentially defines a lumen, having a wall formed of a
flexible and elastic material with a patch area 15 that holds the
micro-encapsulated topical analgesic.

(Id. at 8: ¶ [00027].)
FF 3. Ingram’s Figure 1 and Figure 2 are reproduced below:

“FIG. 1 is a frontal view of the therapeutic sleeve of [Ingram’s] . . .
invention” (Ingram 1: ¶ [0006]). “FIG. 2 is a cross-section of a therapeutic
sleeve for single modality” (id. at ¶ [0007]).
FF 4. Ingram’s device
[F]eatur[es] an outer (shell) covering (2) and inner (shell)
covering (4) which are joined to form a sleeve and a
containment area (3) into which is permanently sealed an
intrinsic therapy source for the preferred modality. There is an
opening (1) thru which a portion of the body may be placed.

(Id. at ¶ [0010]; see generally Ans. 3 and 12-13.)
ANALYSIS
Appellants’ claim 12 requires, inter alia, a sleeve having an interior
side and an opposite exterior side, wherein a therapeutic section is present on
the interior side of the sleeve to provide “effective contact between the
therapeutic section and the human extremity” (Claim 12; see also FF 1-2).
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Ingram fails to teach a device, wherein a therapeutic section is present on the
interior side of the sleeve as defined by Appellants’ claimed invention (see
FF 3-4). To the contrary, Ingram’s therapeutic section is located between an
inner and outer (shell) covering (FF 4; Reply Br. 4 (“Ingram teaches placing
therapeutic material in between inner and outer shell layers”); see also App.
Br. 7-8; Cf. FF 2).
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support
Examiner’s finding that Ingram teaches Appellants’ claimed invention. The
rejection of claim 12 under 35 U.S.C. § 102(e) as being anticipated by
Ingram is reversed.

Obviousness:

The combination of Ingram and Dictionary:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 5. Examiner relies on Ingram as set forth above (FF 3-4).
FF 6. Examiner finds that while Ingram fails to suggest Appellants’
claimed “compression range,” a person of ordinary skill in this art would
have been able “to determine suitable compression force through routine or
manipulative experimentation” (Ans. 4).
FF 7. Examiner relies on Dictionary to suggest that “[k]nitted fabrics are
composed of interlocking loops of yarn” (id.).
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ANALYSIS
Examiner failed to establish that Dictionary makes up for the
deficiency in Ingram set forth above.
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support a
conclusion of obviousness.
The rejection of claims 12, 13, 16, 17, 62-64, 66-70, and 72-74 under
35 U.S.C. § 103(a) as unpatentable over the combination of Ingram and
Dictionary is reversed.

The combination of Ingram and Leeper, with or without Domb, Derrieu, and
Braun:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 8. Examiner relies on Ingram as set forth above (FF 3-4).
FF 9. Examiner relies on Leeper to suggest “a transdermal therapeutic
system . . . [in the form of] a sleeve or glove surrounding body extremities
and compris[ing] an active agent loaded elastomer that stretches around the
body extremity creating a compressive force” (Ans. 6; see also id. at 16-18).
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FF 10. Leeper’s FIG. 1 is reproduced below:

“FIG. 1 is a perspective view of one embodiment of [Leeper’s] . . .
invention” (Leeper, col. 2, ll. 46-47).
FF 11. Leeper’s FIG. 1 illustrates
[T]he simplest embodiment of . . . [Leeper’s] invention . . . . A
transdermal therapeutic system (TTS) 10, according to . . .
[Leeper’s] invention comprises body member surrounding
means which in this embodiment is a contiguous elastic band
formed from a monolithic elastomeric matrix 1 having an active
agent 2 (shown by dots which represent active agent depots in
the form of small particles of active agent, liquid droplets of
active agent; solid, liquid or gelled active agent containing
compositions; or active agent containing microcapsules, for
example) dispersed therethrough.

(Id. at ll. 58-68.)
FF 12. Examiner relies on Domb to suggest “a local anesthetic encapsulated
in lipospheres” (Ans. 7).
FF 13. Examiner relies on Derrieu to suggest “compositions comprising a
cationic polymer and an active molecule contained in a micro or
nanoparticle vector for soothing the skin” (id. at 9).
FF 14. Examiner relies on Braun to suggest “the use of menthol esters,
specifically menthyl lactate for topical pain relief” (id. at 10).
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ANALYSIS
Based on the combination of Ingram and Leeper Examiner concludes
that, at the time of Appellants’ claimed invention, it would have been prima
facie obvious to a person of ordinary skill in this art “to make a sleeve
comprising a thumbhole cavity” (Ans. 6). However, as Appellants point out,
“[a]lthough Leeper does disclose a tubular transdermal therapeutic system in
Figure 1, the products of Leeper are manufactured to include an active agent
within the elastic matrix forming the device” (App. Br. 10). We agree. In
sum, Examiner failed to establish an evidentiary basis on this record to
support a conclusion that the combination of Ingram and Leeper suggests a
sleeve having an interior side and an opposite exterior side, wherein a
therapeutic section is present on the interior side of the sleeve as required by
Appellants’ claimed invention (see FF 1-2; Claim 12; Cf. FF 8-11).
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Obviousness requires
more than a mere showing that the prior art includes separate references
covering each separate limitation in a claim under examination. KSR Int'l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Rather, obviousness requires
the additional showing that a person of ordinary skill at the time of the
invention would have selected and combined those prior art elements in the
normal course of research and development to yield the claimed invention.
Id. at 421.
Examiner failed to establish an evidentiary basis on this record to
suggest that Domb, Derrieu, or the combination of Derrieu and Braun make
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up for the foregoing deficiencies in the combination of Ingram and Leeper
(see FF 12-14).
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support a
conclusion of obviousness.
The rejection of claims 12 and 15 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Ingram and Leeper is reversed.
The rejection of claims 12-14, 37, 62, 65, and 71 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Ingram, Leeper, and Domb
is reversed.
The rejection of claims 12-14, 37, and 40-42 under 35 U.S.C. § 103(a)
as unpatentable over the combination of Ingram, Leeper, and Derrieu is
reversed.
The rejection of claims 12-14, 41, and 43 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Ingram, Leeper, Derrieu, and Braun is
reversed.

REVERSED

cdc