Ex parte Taylor

Board of Patent Appeals and Interferences

Feb 19, 1998

08146498 (B.P.A.I. Feb. 19, 1998)

Application for patent filed November 1, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JEFFREY L. TAYLOR
_____________
Appeal No. 96-1726
Application 08/146,4981
______________
ON BRIEF
_______________
Before COHEN, ABRAMS and STAAB, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
Appeal No. 96-1726
Application 08/146,498
2
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 11. These claims constitute all of the claims in the
application.
Appellant’s invention pertains to a surgical gown. An
understanding of the invention can be derived from a reading of
exemplary claim 1, a copy of which appears in the “APPENDIX” of
appellant’s brief.
As evidence of obviousness, the examiner has applied
the patents listed below:
Tames 3,011,172 Dec. 5, 1961
Krzewinski 3,868,728 Mar. 4, 1975
Schwarze et al. (Schwarze) 4,736,467 Apr. 12, 1988
Holt 5,271,100 Dec. 21, 1993
(filed Aug. 27, 1992)
The following rejections are before us for review.
Claims 1 through 3, 7, 8, 10, and 11 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Tames in view of
Holt and Schwarze.
Claims 4 through 6, 9, and 10 stand rejected under
35 U.S.C. § 103 as being unpatentable over Tames in view of Holt
Appeal No. 96-1726
Application 08/146,498
In our evaluation of the applied patents, we have2
considered all of the disclosure thereof for what it would have
fairly taught one of ordinary skill in the art. See In re Boe,
355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966). Additionally,
this panel of the board has taken into account not only the
specific teachings, but also the inferences which one skilled in
the art would reasonably have been expected to draw from the
(continued...)
3
and Schwarze, as applied to claims 1 and 7 above, further in view
of Krzewinski.
The full text of the examiner's rejections and response
to the argument presented by appellant appears in the answer
(Paper No. 14), while the complete statement of appellant’s
argument can be found in the brief (Paper No. 13).
Based upon appellant’s grouping of claims (brief,
page 5), we focus our attention below upon independent claims 1
and 7, with respective dependent claims 2 through 6 and 8
through 11 standing or falling therewith.

OPINION
In reaching our conclusion on the obviousness issues
raised in this appeal, this panel of the board has carefully
considered appellant’s specification and claims, the applied
patents, and the respective viewpoints of appellant and the2
Appeal No. 96-1726
Application 08/146,498
(...continued)2
disclosure. See In re Preda, 401 F.2d 825, 826, 159 USPQ 342,
344 (CCPA 1968).
4
examiner. As a consequence of our review, we make the
determinations which follow.
We reverse the examiner’s rejections of appellant’s
claims under 35 U.S.C. § 103.
At the outset, we note that each of claims 1 and 7
addresses a surgical gown that requires, inter alia, three
particular layers, i.e., an outer layer of a liquid repellant,
moisture vapor transmitting material, an inner layer of
breathable material, and an intermediate layer of liquid proof
material interposed between the outer and inner layers. As is
evident from appellant’s specification (pages 7 through 9), the
material of each of the layers was known at the time of the
present invention.
In rejecting the claimed three layer surgical gown, the
examiner proposes to modify the two layer surgical gown of Tames
based upon the teachings of the three layer gowns of Holt and
Schwarze. The surgical gown of Tames (Figures 1 and 4) is
characterized by a front panel (outer layer) 15 of any suitable
Appeal No. 96-1726
Application 08/146,498
5
lightweight material, such as linen, cotton, or synthetic fabric,
and a flexible sheet (inner layer) 20 of lightweight, moisture-
proof, electrically conductive material underlying the major part
of the upper portion of the front panel 15.
Considering now the teaching of three layer surgical
gowns in the Holt and Schwarze patents, we find that, while
they each rely upon three layers to form the gown, a combination
and association of different layers in each patent forms the
resulting three layer surgical gowns. More specifically, the
surgical gown of Holt (Figure 4) includes an intermediate barrier
layer (polypropylene) 22 with an outer layer of fluid absorbent
nonwoven material 20 and an inner fluid absorbent nonwoven
material layer 24 to absorb surgeon perspiration. As to the
surgical gown of Schwarze (Figure 2), it includes an inner
(intermediate) layer 24 formed of polyester/cotton blend, either
woven or knit, which has been treated with an effective amount of
bacteriostatic silyl quaternary amine ammonium compound, with the
intermediate layer 24 being surrounded by two outer (inner and
outer) layers 22 of untreated (no antimicrobial material), thin,
tightly woven, fine denier, breathable polyester fabric providing
Appeal No. 96-1726
Application 08/146,498
6
a comfortable surface that readily transmits moisture vapor, is
highly water resistant and is comfortable for the wearer.
We, of course, fully appreciate the examiner’s point
of view as regards the asserted obviousness of the claimed sur-
gical gown. However, the basic difficulty that this panel of
the board has with the rejection of claims 1 and 7 is that the
selective modification of the surgical gown of Tames to yield
appellant’s claimed gown can only be accomplished on the basis
of the references when knowledge of appellant’s own invention is
relied upon, i.e., reliance upon impermissible hindsight.
Tames gives examples of the material for the front
panel (outer layer) 15, but otherwise the patentee gives no
instruction as to what qualities this layer should possess
relative to the underlying moisture-proof, electrically con-
ductive material of flexible sheet 20. On the other hand, the
outer gown layer of Holt is absorbent, while the outer gown layer
of Schwarze readily transmits moisture vapor and is highly water
resistant. But for appellant’s own teaching, we do not perceive
any clear suggestion from the combined teachings that would have
been derived by one of ordinary skill in the art to selectively
modify the front panel of the surgical gown of Tames by forming
it from a liquid repellant, moisture vapor transmitting material.
Appeal No. 96-1726
Application 08/146,498
7
For the above reason, we cannot support the rejection of appel-
lant’s claims 1 and 7 under 35 U.S.C. § 103 and the dependent
claims which stand therewith. The Krzewinski reference does not
overcome the deficiency in the evidence of obviousness discussed
above.
In summary, this panel of the board has:
reversed the rejection of claims 1 through 3, 7, 8, 10,
and 11 under 35 U.S.C. § 103 as being unpatentable over Tames in
view of Holt and Schwarze; and
reversed the rejection of claims 4 through 6, 9, and 10
under 35 U.S.C. § 103 as being unpatentable over Tames in view of
Holt, Schwarze, and Krzewinski.
The decision of the examiner is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
Appeal No. 96-1726
Application 08/146,498
8
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Appeal No. 96-1726
Application 08/146,498
9
Frost & Jacobs
2500 PNC Center
201 East Fifth Street
Cincinnati, OH 45202