Ex Parte Whitely

Patent Trial and Appeal Board

Mar 21, 2017

12668616 (P.T.A.B. Mar. 21, 2017)

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.
12/668,616 01/11/2010 Jeffrey Thomas Whitely 8131-45 (P2437US00) 7396
22150 7590 03/23/2017
F. CHAU & ASSOCIATES, LLC
130 WOODBURY ROAD
WOODBURY, NY 11797
EXAMINER
AVIGAN, ADAM JOSEPH
ART UNIT PAPER NUMBER
3739
NOTIFICATION DATE DELIVERY MODE
03/23/2017 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@chauiplaw.com
garramone @ chauiplaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY THOMAS WHITELY
Appeal 2015-005426
Application 12/668,616
Technology Center 3700
Before CHARLES N. GREENHUT, LISA M. GUIJT, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant, Jeffrey Thomas Whitely,1 appeals under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 21—34 and 41—47. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies Rapid Aid Corp. as the real party in interest.
Appeal Br. 1.
Appeal 2015-005426
Application 12/668,616
THE CLAIMED SUBJECT MATTER
The claims are directed to thermotherapeutic pads. Spec. 1:3. Claims
21, 34, and 44 are the independent claims. Claim 21, reproduced below, is
illustrative of the claimed subject matter:
21. A thermotherapeutic pad comprising:
a pack portion comprising two layers sealed together to
form a closed envelope composed of a fluid-tight material,
wherein the pack portion further comprising thermally active
material contained within the closed envelope; and
a flexible flap, for wrapping a body part, affixed to the
pack portion, wherein a portion of the flap is sealed between the
two layers of the closed envelope at a side of the closed envelope,
the flap comprising a fastener, whereby the pack portion can be
placed against the body part and the flap wrapped around the
body part and fastened to the pack portion or to the flap to
maintain the pack portion in position against the body part.
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Salem US 4,092,982 June 6, 1978
Schooley US 4,381,025 Apr. 26, 1983
Cheney US 5,534,020 July 9, 1996
Dvoretzky US 5,534,021 July 9, 1996
Tsuchiya US 6,500,201 B1 Dec. 31,2002
Smith US 7,022,093 B2 Apr. 4, 2006
REJECTIONS
The Examiner made the following rejections:
1. Claims 21—24, 26, 27, 31, and 41 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Dvoretzky and Smith.
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Application 12/668,616
2. Claims 28—30, 32, and 33 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Dvoretzky, Smith, and Cheney.
3. Claims 25, 44, 45, and 47 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Dvoretzky, Smith, and Salem.
4. Claim 42 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dvoretzky, Smith, and Schooley.
5. Claims 34 and 43 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dvoretzky, Smith, Cheney, and Salem.
6. Claim 46 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dvoretzky, Smith, Salem, and Schooley.
Appellant seeks our review of these rejections.
ANALYSIS
Appellant argues claims 21—34 and 41—47 as a group. Appeal Br. 7—
12. We select claim 21 as the representative claim, and claims 22—34 and
41—47 stand or fall with claim 21. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Dvoretzky discloses all of the limitations of
claim 21, but does not disclose (1) an envelope made of fluid-tight material
and (2) a portion of the flap that is sealed between two layers of the closed
envelope. Final Act. 2—4, 10—12. The Examiner determines that a fluid-
tight material is a well-known and obvious design choice, and that Smith
discloses a flap that is sealed between two layers of the closed envelope. Id.
Regarding the first limitation, the Examiner maintains that “an
envelope made of a fluid-tight material,” even if not explicitly taught by
Dvoretzky, would have been obvious to one of ordinary skill to construct
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Application 12/668,616
because one of Dvoretzky’s exemplary “[ejxothermic pad[s are] disclosed as
containing water”2 so that
one of ordinary skill in the art would be highly motivated to
construct the exothermic pad of a water tight material in order to
prevent the water from escaping into the environment over time
and since it is generally considered to be within the skill of a
worker in the art to select a known material on the basis of its
suitability for the intended use as a matter of obvious design
choice.3
Final Act. 3—4, 10-11 (citing Dvoretsky 3:62); see also Ans. 3^4.
In response to the Examiner’s reasoning, Appellant contends that
Dvoretzky’s envelope must be air-permeable and water-tight, and the
“record does not contain evidence of [an air-permeable and water-tight]
membrane nor does the record contain evidence as to whether such a
membrane would be within the knowledge of one of ordinary skill in the
art.” Appeal Br. 9.
However, in view of the Examiner’s evidence from Tsuchiya that
“air-permeable water-impermeable materials were well known in the art”
(Ans. 4—5 (citing Tsuchiya 5:56) (“water-impermeable outer layer sheet 4”)),
Appellant concedes that fluid-tight materials are known (Reply Br. 6), but
2 Dvoretzky discloses that exothermic pads comprise “chemicals which
will react exothermically to generate heat in the presence of oxygen.
Although any desired chemicals can be employed, exothermic pads typically
contain moxa or a mixture of iron powder, activated charcoal, wood fibers,
water, and salt.” Dvoretzky 3:55—62 (emphasis added).
3 Appellant’s assertion that Dvoretzky provides evidence that “wood
fibers . . . trap the water in Dvoretzky’s pad” does not identity support in
Dvoretzky, and appears to be unsupported attorney argument. Appeal Br. 9;
In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (lawyer arguments and
conclusory statements which are unsupported by factual evidence are
entitled to little probative value).
4
Appeal 2015-005426
Application 12/668,616
argues that Tsuchiya “teaches away” from the Examiner’s combination (id.
at 8), and supports Appellant’s “argument that water-tight (water-
impermeable) material is incompatible with the envelope of Dvoretzky” (id.
at 6). According to Appellant,
Tsuchiya clearly teaches that sheet 5 cannot be water-
impermeable, in col. 6, lines 20—23, reproduced here:
The air-permeable sheet 5 needs to be made air-permeable
to a degree sufficient to allow the heat generators 3 to
generate heat satisfactorily, and thus the air-permeable
sheet 5 cannot be made water-impermeable.
Reply Br. 7. Appellant argues that
Tsuchiya and Dvoretzky[’s] iron powder-based mixtures need
sufficient oxygen flow to operate. . . . Modifying Dvoretzky’s
envelope to prevent water from escaping, as suggested by the
Examiner, would render Dvoretzky’s pad unfit for its intended
purpose of providing a functioning exothermic reaction. This is
because oxygen flow to the iron powder mixture would be
insufficient, as taught by Tsuchiya.
Id. at 8.
Appellant’s arguments are not persuasive. The Examiner’s citation
refers to Tsuchiya’s “outer layer 4” as the air-permeable, water-impermeable
material, not inner “sheet 5” which is air- and water-permeable. Referring to
Figure 5, Tsuchiya’s heater contains two layers:
an outer layer cap 40 comprising an air-permeable and water-
impermeable outer layer sheet 4 on the outer surface of the air-
permeable sheet 5 of the cap 20 in the heater . . .
The outer layer sheet 4 is an air-permeable and water-
impermeable sheet which produces a water resistance and a heat
retaining property.
Tsuchiya 5:55—65. Contrary to Appellant’s argument, Tsuchiya achieves
adequate oxygen flow for a chemical reaction using the two layers — air-
5
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Application 12/668,616
permeable, water-impermeable outer layer sheet 4 and air- and water-
permeable sheet 5. Tsuchiya does not disclose any problems with oxygen
flow to the chemical mixture when using the water-impermeable sheet 4.
Because Tsuchiya does not criticize, discredit, or otherwise discourage the
use of a fluid-tight material (e.g., water-impermeable sheet 4) for
Dvoretzky’s water-containing exothermic pads, Tsuchiya does not teach
away from the Examiner’s combination of Dvoretzky and Smith, or
Dvoretzky’s intended purpose. See In re Fulton, 391 F.3d 1195, 1199-1201
(Fed. Cir. 2004) (To teach away, a reference’s disclosure must “criticize,
discredit or otherwise discourage the solution claimed.”). Moreover,
Tsuchiya is evidence that air-permeable, water-impermeable materials were
well known in the art, at the time of the invention, as relied on by the
Examiner, and thus, we are not persuaded by Appellant that Examiner’s
reasoning lacks factual support.”
Regarding the second limitation — a flap that is sealed between two
layers of the closed envelope, the Examiner finds that Dvoretzky discloses
sealing a chemical mixture within an envelope (Ans. 6), and Smith discloses
a flap (e.g., straps 315) that is sealed between two layers (e.g., panels 306,
307) of the closed envelope. Final Act. 3, 11—12; Ans. 5—7. The Examiner
also determines that
[sjince both Dvoretzky and Smith teach different means of
attaching straps to a main body of a thermal pad, it would have
been obvious ... to substitute one known means of attaching
straps to a main body of a thermal pad for the other in order to
achieve the predictable result of attaching straps to a main body
of a thermal pad.
Final Act. 3.
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Appellant contends that “sealing” means “fluid tight and sufficient to
contain a chemical mixture.” Reply Br. 9. Appellant argues that
claims 21, 34, and 44 already require the flap to be “affixed” to
pack portion. The flap being “sealed” to the envelope of the pack
portion further limits the affixing of the flap. Hence, based on a
plain reading of the claim language, sealing must be more than
mere affixing.
Appeal Br. 11. Using this definition, Appellant contends that “a seal is
different from mere attachment and is different from the stitching suggested
by Smith.”4 Id. at 10.
As the Examiner correctly notes, “even if Appellant’s definition were
accepted,” Dvoretzky, as discussed above, teaches sealing a chemical
mixture within a fluid-tight envelope. Ans. 6. In addition, Appellant does
not address the Examiner’s determination that it would have been obvious
and predictable to substitute Smith’s strap for Dvoretzky’s strap to achieve a
flap sealed between two layers of an envelope (Final Act. 3), and, thus does
not show error by the Examiner.
For the reasons discussed above, the rejection of claim 21 is sustained.
Claims 22—34 and 41—47 fall with claim 21.
4 Regarding Appellant’s assertion that Smith’s straps 315 are “stitched”
between panels 306, 307, Appellant does not identify support in Smith for
such an assertion, which appears to be unsupported attorney argument
entitled to little probative weight. In re De Blauwe, 736 F.2d at 705. Smith
discloses that “main body 305 can include and inner and outer panel 306,
307, the ends of which sandwich and connect the respective ends of the
straps 315.” Smith 10:10—13.
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Application 12/668,616
DECISION
For the above reasons, the Examiner’s rejections of claims 21—34 and
41—47 are AFFIRMED.
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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