Ex Parte Allen

Patent Trial and Appeal BoardAug 29, 2018

12188931 (P.T.A.B. Aug. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/188,931 08/08/2008 82566 7590 08/31/2018 Nixon Peabody LLP 70 West Madison, Suite 3500 Chicago, IL 60602 FIRST NAMED INVENTOR Fred L. Allen 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. 213 786-000SOOUSPT 5949 EXAMINER HICKS, VICTORIA J ART UNIT PAPER NUMBER 3772 NOTIFICATION DATE DELIVERY MODE 08/31/2018 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): docketingchicago@nixonpeabody.com ipairlink@nixonpeabody.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRED L. ALLEN1 Appeal2017-010464 Application 12/188,931 Technology Center 3700 Before: JAMES P. CALVE, BENJAMIN D. M. WOOD, and MICHELLE R. OSINSKI, Administrative Patent Judges. WOOD, Administrative Patent Judge. DECISION ON APPEAL 1 Appellant states that the real part in interest is Medline Industries, Inc. App. Br. 3. Appeal2017-010464 Application 12/188,931 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134 from a rejection of claims 1- 4 and 6-10. Claims 5 and 11-20 have been canceled. App. Br. 4. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm-in-part. THE INVENTION The claims are directed to "a medical drape system having a tearing feature for easy and clean removal of the drape from a patient." Spec. ,r 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A medical drape having a tool-less removal feature, the medical drape comprising: a drape material having a top side and a back side, the back side capable of being positioned in contact with a patient when the medical drape is in use, the drape material having at least one exterior edge; a drape cut having a starting point at the at least one exterior edge, the drape cut extending completely through a thickness of the drape material such that two adjoining cut edges are completely severed from one another to permit easy separation of the two adjoining cut edges; an adhesive tape strip positioned along an entire length of the drape cut, the adhesive tape strip adhered to and overlapping at least a portion of the drape material on both sides of the drape cut to initially secure the two adjoining cut edges to each other to eliminate violation of a sterile field, the adhesive tape strip including a bridging area adjacent the drape cut and a separated area formed above the bridging area between a first strip side and a second strip side, the bridging area securing the adjoining cut edges of the drape material and having a smaller thickness than the adhesive tape strip; and 2 Appeal2017-010464 Application 12/188,931 a scoreline formed partially through a thickness of the adhesive tape strip and extending along a length of the adhesive tape strip to permit easy tearing of the adhesive tape strip for separation of the two adjoining cut edges, wherein the scoreline is generally centrally positioned along a width of the adhesive tape strip. REFERENCES Marshall Rubenstein us 5,109,873 us 5,417,225 May 5, 1992 May 23, 1995 Nov. 12, 2009 Carrez US 2009/0277460 Al REJECTIONS Claim 9 is rejected under 35 U.S.C. Â§ 112 (pre-AIA), first paragraph, as failing to comply with the written-description requirement. Claims 1--4 and 6-10 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Rubenstein, Marshall, and Carrez. ANALYSIS Claim 9-Written-Description Rejection under 35 USCÂ§ 112, First Paragraph Claim 9 depends from claim 1 and additionally recites "wherein the drape material includes one or more of ... an absorbent wood pulp material." The Examiner finds that the Specification does not describe using "an absorbent wood pulp material," but "only teaches that the base fabrics used in the main drape material may include 'absorbent Airlaid material."' Final Act. 3 ( citing Spec. ,r 25). Appellant responds that "one of skill in the art would understand 'airlaid' material to be a wood pulp material." App. Br. 21 (citing http://www.inda.org/air-laid.html (Ex. G to the Appeal Brief)). 3 Appeal2017-010464 Application 12/188,931 The Examiner disagrees, stating in the Answer that "Airlaid ... is not necessarily formed from wood pulp and therefore, Appellant's specification teaching of an 'absorbent Airlaid material' is not sufficient to provide support for the claimed 'absorbent wood pulp material."' Ans. 17-18. We agree with the Examiner. The Specification teaches that the "base fabrics used in the main drape material 102 may include absorbent Airlaid." Spec. ,r 25. According to Appellant's evidence, "Air laid nonwoven" refers to "[ a ]n air laid web that has been bonded by one or more techniques to provide fabric integrity." App. Br. 21 (citing to Ex. G.) This definition does not refer to wood pulp. In contrast, "air laid pulp" is defined as follows: An air laid nonwoven that is produced with fluff, wood pulp. The web can be bonded with resin and/or thermal plastic resins dispersed within the pulp. Id. The implication is that the term "air laid," without the "pulp" modifier, refers to a nonwoven material that may or may not comprise wood pulp. Therefore, the Specification's reference to "absorbent air laid" is not adequate description for "absorbent wood pulp materials." Accordingly, we sustain this rejection. Claims 1-4 and 6-10-Rejected as Unpatentable over Rubenstein, Marshall, and Carrez The Examiner finds that Rubenstein's radiation-attenuating material 10 corresponds to the claimed drape material, Rubenstein' s opening 20 corresponds to the claimed drape cut, and Rubenstein's flap 25 corresponds to the claimed adhesive tape strip. Final Act. 3 ( citing Rubenstein 3 :34--41 ); see Rubenstein, Fig. 1. The Examiner acknowledges, however, that Rubenstein does not teach the "scoreline formed partially through a thickness of the adhesive tape strip and extending along a length of the 4 Appeal2017-010464 Application 12/188,931 adhesive tape strip to permit easy tearing of the adhesive tape strip for separation of the two adjoining cut edges." Final Act. 3--4 ( citing Rubenstein 3 :38--41 ). For that limitation, the Examiner relies on Marshall. Id. at 4 (citing Marshall 2:13-16, 2:67-3:3, Figs. 3, 4). According to the Examiner, Marshall teaches "an analogous device with a scoreline (score lines 22, 24) formed partially through a thickness of material ( 18) and extending along a length of the material to permit easy tearing of the material (18)." Id. The Examiner determines that it would have been obvious to place a scoreline along the length of Rubenstein's flap because "this element is known to enable the integrity of the sterile field created by the drape to be preserved while enabling one to easily sever the scoreline." Id. at 4--5. Appellant argues, inter alia, that "no person of skill in the art would be motivated to make the modifications proposed by the Examiner" because "[a]dding scorelines into Rubenstein's releasable flap would likely compromise the integrity of Rubenstein's radiation shield and result in exposure of patients to electromagnetic radiation." App. Br. 13. In response to the Examiner's assertion that Rubenstein's tape strip "is still able to prevent the passage of radiation" because the scoreline is only "partially through its thickness," Ans. 16, Appellant provides evidence that "modifying the thickness of a strip of radiation-attenuating material affects the shielding capacity of the material." Reply Br. 6-7 ( citing RSSC Radiation Protection, Chapter 3, page 3-6, Ex. 1 to Reply Br.). Rubenstein teaches a radiation shield that protects medical personnel performing surgical procedures that use X-ray radiation from a "significant" source of radiation exposure-radiation that is "scattered through and from 5 Appeal2017-010464 Application 12/188,931 the patient" to whom the radiation is directed-and that can be quickly removed from the patient in an emergency. Rubenstein 1: 14--29, 2:3-7. Rubenstein teaches that the flap portion of the shield, in particular, is in place to "afford[] maximum [radiation] protection to attending personnel." Id. at 2:24--29 (emphasis added). Appellant has proffered undisputed evidence that scoring Rubenstein's flap and thereby reducing its thickness would compromise its ability to shield medical personnel from radiation. See Reply Br., Ex. 1. We are not persuaded that one of ordinary skill in the art would have compromised the shielding capability of the specific feature intended to "maxim[ize ]" radiation protection. While it is true that "a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine," Medichem v. Rolabo, 437 F.3d 1157, 1165 (Fed. Cir. 2006), we are not persuaded that there would be any advantage in scoring the flap that would have justified the reduction in shielding capacity. Rubenstein' s flap is already "releasable to uncover and open aperture 15 to the periphery of layer 10," Rubenstein 3:40-43, and the Examiner does not allege that adding a scoreline would have made the flap any more releasable. Because the Examiner's proposed modification would be contrary to an express goal of Rubenstein's flap, and potentially compromise the safety of medical personnel, without providing any benefit, we are not persuaded that the Examiner's articulated reason for combining Rubenstein with Marshall has a rational underpinning. See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,418 (2007) (holding that "rejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated 6 Appeal2017-010464 Application 12/188,931 reasoning with some rational underpinning to support the legal conclusion of obviousness."') (quoting In re Kahn, 441 F.3d 977,988 (Fed. Cir. 2006)). Because we are not persuaded that the Examiner has provided an adequate reason to combine Rubenstein and Marshall, we do not sustain the Examiner's rejection of claims 1--4 and 6-10 as unpatentable over Rubenstein, Marshall, and Carrez. DECISION For the above reasons, we affirm the Examiner's rejection of claim 9 under 35 U.S.C. Â§ 112(a) for failing to satisfy the written-description requirement, and reverse the Examiner's rejection of claims 1--4 and 6-10 under 35 U.S.C. Â§ 103(a) as unpatentable over Rubenstein, Marshall, and Carrez. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED-IN-PART 7