Ex Parte Berndt et al

Patent Trial and Appeal BoardApr 24, 2018

10466374 (P.T.A.B. Apr. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 10/466,374 11/18/2003 20151 7590 04/26/2018 HENRY M FEIEREISEN, LLC HENRY M FEIEREISEN 708 THIRD A VENUE SUITE 1501 NEW YORK, NY 10017 FIRST NAMED INVENTOR Erik Berndt 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. BERNDT-2 9698 EXAMINER JACKSON, BRANDON LEE ART UNIT PAPER NUMBER NOTIFICATION DATE DELIVERY MODE 04/26/2018 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): INFO@FEIEREISENLLC.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ERIK BERNDT and JURGEN STEFFES Appeal2016-004418 Application 10/466,374 Technology Center 3700 Before JENNIFER D. BAHR, WILLIAM A. CAPP, and LEE L. STEPINA, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. Â§ 134(a) of the final rejection of claims 1, 2, 7-10, 13-18, 23-26, and 28. 1 We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. 1 Appellants identify Prevor International as the real party in interest. Appeal Br. 2. Appeal2016-004418 Application 10/466,374 THE INVENTION Appellants' invention relates to wound dressings. Spec. ,r 1. Claim 1, reproduced below with paragraph indentation added, is illustrative of the subject matter on appeal. 1. A wound dressing suitable for being adhered to an injured skin comprising: no more than one layer, wherein the layer is a textile planar structure with a first main direction of extension and with at least one further main direction of extension, wherein the textile planar structure is a knit fabric constructed in a single layer and having a row of stitches and a row of stitch wales, said first main direction of extension extending along said row of stitches and said further main direction extending along said row of stitch wales, and wherein said knit fabric comprises more than 70% of silk and is free of elastomeric fibers, and wherein the extension properties of said first main direction of extension and said further main direction of extension vary from each other less than 80%, and wherein the knit fabric exhibits in the first and further main direction of extension a tissue stretching Â£ in the range of from 100% to 300%. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Schueler Davies Lengyel Valentine Cueman Edwards GB 741,659 us 2,823,444 us 4,671,266 us 5,447,505 us 5,823,978 US 6,627,785 Bl 2 Dec. 7, 1955 Feb. 18, 1958 June 9, 1987 Sept. 5, 1995 Oct. 20, 1998 Sept. 30, 2003 Appeal2016-004418 Application 10/466,374 The following rejections are before us for review: 1. Claims 1, 2, 14, 17, 18, and 28 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Davies, Cueman, and Lengyel. 2. Claims 7-10 and 23-26 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Davies, Cueman, Lengyel, and Valentine. 3. Claim 13 is rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Davies, Cueman, Lengyel, and Edwards. 4. Claim 15 and 16 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Davies, Cueman, and Schueler. Claim 1 OPINION Unpatentability of Claims 1, 2, 14, 17, 18, and 28 over Davies, Cueman, and Lengyel The Examiner finds that Davies discloses the invention except for a knit fabric constructed of a row of stitches, a row of stitch wales, silk, and adhesive. Final Action 5. The Examiner relies on Cueman as disclosing a knit fabric made of silk and free of elastic material. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to modify the Davies fabric so as to be a knit fabric of silk as taught by Cueman. Id. According to the Examiner, a person of ordinary skill in the art would have done this because silk is an alternative to cotton and Cueman teaches knitting is the preferred manner of combining silk fabrics. Id. The Examiner relies on Lengyel as teaching a bandage with an adhesive layer and concludes that it would have been obvious to modify 3 Appeal2016-004418 Application 10/466,374 the Davies bandage with an adhesive on the inner surface to better secure the bandage to the user. Id. Appellants traverse the Examiner's rejection by arguing, among other things, that the cited references do not teach a wound dressing. Appeal Br. 7-8. Appellants construe "wound dressing" as a fabric that is placed directly on a wound. Id. at 8. In contrast, according to Appellants, Davies only holds wound dressings in place but is not itself placed on the wound and, therefore, is not a "wound dressing." Appellants point out that Cueman is directed to an orthopedic casting material. Id. at 9. Appellants argue that a person of ordinary skill in the art would not be motivated to look at Cueman to modify Davies. Id. at 10. 2 In response, the Examiner insists that the prior art meets all of the claim limitations. Ans. 10. The Examiner, however, does not respond to Appellants' contention that, because Cueman is directed to an orthopedic casting material, a person of ordinary skill in the art would not look to the fabric component of Cueman to modify Davies. See generally Ans. Davies is directed to a bandaging material that is useful for "holding dressings in place on the body." Davies, col. 1, 11. 15-18. The bandage is an elongated strip of fabric composed of kinked threads of cotton or rayon in open mesh woven structure. Id. col. 1, 11. 32-34. Cueman is directed to an orthopedic casting material. Cueman, Abstract. Cueman explains that: 2 "The fact that Cueman names silk as an alternative to cellulose like cotton or rayon therefore does not provide a sufficient motivation for a person with skill in the art to modify Davies with the teaching of Cueman. Since the fabric in Cueman is for a different purpose than the fabric of Davies the person of ordinary skill in the art of wound dressing would not be motivated to look to Cueman at all." Appeal Br. 10. 4 Appeal2016-004418 Application 10/466,374 Orthopedic casts are used for the treatment of bone fractures or other conditions requiring immobilization of a body member. These casts are generally formed from a strip of fabric or "scrim" material coated with a substance which hardens into a rigid structure after the strip has been wrapped around the body member. Id. col. 1, 11. 11-16. Cueman further explains that: The present invention is an optimized low modulus fiber which is reacted with a resinous material to produce a cast, the strength of the resulting cast being equal to or greater than a cast made from fabric containing a high modulus fiber. Id. col. 3, 11. 28-32 (emphasis added). While Cueman does employ a knit fabric, including a fabric knit from silk, the fabric forms a substrate that is used to receive and absorb a resin which eventually hardens to form an orthopedic cast. Id. col. 6, 1. 2---col. 7, 1. 38. The mere fact that the prior art may be modified in the manner suggested by the Examiner does not necessarily make the modification obvious. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992). In the instant case, we are not persuaded that a person of ordinary skill in the art would have derived a teaching from Cueman's orthopedic cast patent that a knit silk fabric, intended as a substrate for a resin impregnated cast, could be used to form a wound dressing that is suitable for adherence to injured skin tissue. It appears to us that the Examiner arbitrarily selected the silk knit fabric component of Cueman' s cast in a hindsight reconstruction of Appellants' claimed wound dressing. However, we "cannot use hindsight reconstruction to pick and choose among isolated disclosures in the prior art to deprecate the claimed invention." In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988). We do not sustain the Examiner's unpatentability rejection of claim 1. 5 Appeal2016-004418 Application 10/466,374 Claims 2, 14, 17, and 18 These claims depend from claim 1. Claims App. The Examiner's rejection of these claims suffers from the same infirmity that was identified above with respect to claim 1. Thus, for essentially the same reason expressed above in connection with claim 1, we do not sustain the rejection of claims 2, 14, 17, and 18. Claim 28 Claim 28 is an independent claim. Claims App. In rejecting claim 28, the Examiner relies on the same erroneous findings of fact that we previously identified with respect to the rejection of claim 1. For essentially the same reasons, we do not sustain the rejection of claim 28. Unpatentability of Claims 7-10, 13, 15, 16, and 23-26 over Combinations Based on Davies and Cueman Claims 7-10, 13, 15, 16, and 23-26 depend, directly or indirectly, from claim 1. Claims App. The Examiner's rejection of these claims relies on the same findings of fact concerning the teachings of Davies and Cueman that we fully considered and found to be erroneous in connection with the rejection of claim 1. Such deficiencies are not cured by the Examiner's reliance on additional references. Accordingly, we do not sustain the rejection of claims 7-10, 13, 15, 16, and 23-26 for essentially the same reasons detailed above with respect to the rejection of claim 1. DECISION The decision of the Examiner to reject claims 1, 2, 7-10, 13-18, 23- 26, and 28 is reversed. REVERSED 6