Ex Parte Chua

Patent Trial and Appeal Board

Jan 25, 2019

13489811 (P.T.A.B. Jan. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/489,811 06/06/2012
27939 7590 01/25/2019
Philip H. Burrus, IV
Burrus Intellectual Property Law Group LLC
222 12th Street NE
Suite 1803
Atlanta, GA 30309
FIRST NAMED INVENTOR
Mark Spencer G. Chua
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.
BPMDL0051MC (10492U) 5669
EXAMINER
NGUYEN,CAMTUTRAN
ART UNIT PAPER NUMBER
3786
MAIL DATE DELIVERY MODE
01/25/2019 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 PATENT TRIAL AND APPEAL BOARD
Ex parte MARK SPENCER G. CHUA
Appeal2018-000737
Application 13/489,811 1
Technology Center 3700
Before JENNIFERD. BAHR, STEFAN STAICOVICI, and
LEE L. STEPINA, Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE-
Mark Spencer G. Chua ("Appellant") appeals under 35 U.S.C. § 134(a) from
the Examiner's decision in the Non-Final Office Action (dated Feb. 16, 2017,
hereinafter "Non-Final Act.") rejecting claims 1-15, 18, and 19.2 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We REVERSE.
1 Medline Industries, Inc. is identified as the real party in interest in Appellant's
Appeal Brief ( filed July 1 7, 2017, hereinafter "Appeal Br."). Appeal Br. 2.
2 Claims 16, 17, and 20 are cancelled. See Appeal Br. 28.
Appeal2018-000737
Application 13/489,811
INVENTION
Appellant's invention is related "to a patient positioner suitable for use
during surgery." Spec. para. 2.
Claims 1 and 18 are independent, are illustrative of the claimed invention,
and read as follows:
1. A patient positioner, compnsmg:
a central portion;
a pair of shoulder restraints extending distally from a first side
of the central portion, each shoulder restraint terminating at an
attachment area comprising a fastener;
a pair of fasteners, each being complementary to the fastener,
each disposed along the first side, and further disposed along a second
and third side of the central portion, respectively; and
a plurality of securement straps configured to attach the patient
positioner to a procedure table and extending distally from the second
side and the third side of the central portion, respectively;
wherein the central portion defines a patient warming sensor
insertion aperture.
18. A method of positioning a patient, comprising:
passing a patient warming sensor through an aperture in a
patient positioner and attaching the patient warming sensor to a
patient's backside;
placing the patient positioner along the patient's backside;
folding a first shoulder restraint about a patient's first shoulder;
wrapping a first attachment area extending from the first
shoulder restraint about a first edge of the patient positioner to attach
it to a side of the patient positioner facing away from the
patient's backside;
folding a second shoulder restraint about a patient's second
shoulder; and
wrapping a second attachment area extending from the second
shoulder restraint about a second edge of the patient positioner to
attach it to the side of the patient positioner facing away from the
patient's backside.
2
Appeal2018-000737
Application 13/489,811
REJECTIONS
I. The Examiner rejects claims 1, 2, 7, 11, 12, and 14 under 35 U.S.C. § I03(a)
as being unpatentable over White, Sr. (US 6,053,580, iss. Apr. 25, 2000,
hereinafter "White) and Wootan (US 4,742,821, iss. May 10, 1988).
II. The Examiner rejects claims 3---6 under 3 5 U.S. C. § 1 0 3 (a) as being
unpatentable over White, Wootan, and Van Pelt (US 3,297,026, iss. Jan. 10,
1967).
III. The Examiner rejects claims 8-10 under 35 U.S.C. § I03(a) as being
unpatentable over White, Wootan, and Cooley (US 2005/0236002 Al, pub.
Oct. 27, 2005).
IV. The Examiner rejects claim 13 under 35 U.S.C. § I03(a) as being
unpatentable over White, Wootan, and Long (US 2,845,314, iss. July 29,
1958).
V. The Examiner rejects claim 15 under 35 U.S.C. § I03(a) as being
unpatentable over White, Wootan, and Yellen et al. (US 4,068,314, iss. Jan.
17, 1978, hereinafter "Yellen").
VI. The Examiner rejects claims 18 and 19 under 35 U.S.C. § I03(a) as being
unpatentable over White, Wootan, and Patel (US 4,331,161, iss. May 25,
1982).
ANALYSIS
Rejection I
The Examiner finds that White discloses, in the embodiment of Figures 7
and 8, a patient positioner including, inter alia, a central portion 4, 6, a pair of
fasteners 9, and a plurality of securement straps 36. Non-Final Act. 2-3.
3
Appeal2018-000737
Application 13/489,811
However, the Examiner finds that White's embodiment of Figures 7 and 8 "lacks a
pair of shoulder restraints," as called for by independent claim 1. Nonetheless, the
Examiner notes that White discloses in the embodiment of Figures 1--4 "a pair of
shoulder restraints (15) extending distally from a first side (16) of the central
portion ( 4, 6), each shoulder restraint (15) terminating at an attachment area (3)
comprising a fastener (5)." Id. at 3 (emphasis added); see also White, Fig. 1. The
Examiner further finds that White's "Figure 2 further illustrates the pair fasteners
(9), each being complementary to the fasteners (5), each disposed along the side
(16)." Id. at 3. Thus, the Examiner concludes that
[I]t would have been obvious to modify the patient positioner in
Figures 7-8 such that it includes a pair of shoulder restraints ( 15),
taught by the embodiment of Figures 1-4, as ... pair of fasteners (9),
each being complimentary to the fasteners ( 5) as shown in Figure 2, as
such features restrain patient's shoulders relative to the central portion
( 4, 6) during a supine position, which renders the combination a
Trendelenburg positioner.
Id. at 4.
As shown below, Appellant provides an annotated Figure 7 of White, which,
according to Appellant, illustrates the Examiner's modified positioner of White:
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Appeal2018-000737
Application 13/489,811
Appellant's annotated Figure 7 of White illustrates fasteners 9 disposed
adjacent first, second, and third side of the restraint and "obvious" shoulder straps
(straps 15 from White's Figures 1--4) disposed adjacent a fourth side of the
restraint. See Appeal Br. 20.
Thus, Appellant argues that in the Examiner's modified positioner of White
"straps extend[] from, and complimentary fasteners [are] disposed adjacent to,
opposite sides of a restraint." Id. at 21. In contrast, according to Appellant, claim
1 requires that "straps extend[] from, and complimentary fasteners [are] disposed
adjacent to, a common side of a positioner." Id.
In response, the Examiner takes the position that although "[A]ppellant's
originally-filed [S Jpecification has not defined [ the term] along," "Appellant's
Figure 5 illustrates [the] claimed limitations [ of a] pair of fasteners (214, 215)
along the first edge." Examiner Answer (dated Oct. 3, 2017, hereinafter "Ans.") at
5
Appeal2018-000737
Application 13/489,811
13-14. Illustrated below is the Examiner's annotated Figure 5 of Appellant's
Drawings showing a "first edge:"
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l ,t i elge
The Examiner's annotated Figure 5 of Appellant's Drawings shows fasteners
214, 215 located along what the Examiner determines to be a first edge. See id. at
14. According to the Examiner, the "location of the fasteners 214, 215 along the
first edge is interpreted to be less than the first edge." Id. at 13-14.
It is not clear whether the Examiner interprets the claimed "first side" as the
"first edge" illustrated above in the Examiner's annotated Figure 5 of Appellant's
Drawings. Nonetheless, even assuming arguendo that such is the case, we do not
agree that such an interpretation is reasonable in light of Appellant's Specification
and explicit claim language. The claimed "first side" in independent claim 1 is
defined as a "side of the central portion" from which "a pair of shoulder restraints
extend[] distally" and where "a pair of fasteners ... [are] disposed along" it. See
Appeal Br. 26 (Claims App.). Hence, in Appellant's Figures 1 and 2, the claimed
"first side" is a boundary of central portion 102 that is located near concave
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Appeal2018-000737
Application 13/489,811
curvature 142. 3 Such a location satisfies all requirements of the claimed "first
side," namely, that it is a "side of the central portion [102]," "a pair of shoulder
restraints [105, 106] extend[] distally" from it, and "a pair of fasteners [214,215] .
. . [are] disposed along" it. Accordingly, we do not agree with the Examiner's
position that the claimed "first side" is the "first edge" illustrated above in the
Examiner's annotated Figure 5 of Appellant's Drawings.
We also do not agree with the Examiner's finding that White's bottom edge
16 constitutes the claimed "first side" (see Non-Final Act. 3) because shoulder
restraints 15 in the Examiner's modified positioner of White overlap, that is,
extend over, bottom edge 16, and, thus, do not extend distally from bottom edge
16. 4 See White, Fig. 2. Rather, shoulder restraints 15 extend distally from top
edge 14, and, hence, bottom edge 16 is not the starting point of shoulder restraints
15. Jd.,Fig.1.
As such, White fails to disclose "a pair of shoulder restraints extending
distally from a first side of the central portion" and "a pair of fasteners ... each
disposed along the first side," as called for by independent claim 1. The
Examiner's use of the Wootan disclosure does not remedy the deficiency of the
Examiner's modification of White discussed supra. See Non-Final Act. 4.
Accordingly, for the foregoing reasons, we do not sustain the rejection under
35 U.S.C. § 103(a) of claims 1, 2, 7, 11, 12, and 14 as unpatentable over White and
Wootan.
3 Appellant's Specification refers to index number 107 as the "first side," but we
could not find it illustrated in any of Appellant's drawings. See Spec. para. 29.
4 An ordinary and customary meaning of the term "from" is "a function word to
indicate ... a starting point in measuring." See https://www.merriam-
webster.com/dictionary/from (last visited January 16, 2019).
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Appeal2018-000737
Application 13/489,811
Rejections 11-V
The Examiner's use of the Van Pelt, Cooley, Long, and Yellen disclosures
does not remedy the deficiency of the White and Wootan combination discussed
supra. See Non-Final Act. 6-10. Therefore, for the reasons discussed above, we
also do not sustain the rejections under 35 U.S.C. § 103(a) of claims 3---6, 8-10, 13,
and 15.
Re} ection VI
The Examiner finds that White discloses the placing, folding and wrapping
steps of the above noted independent claim 18. See Non-Final Act. 10-11.
Appellant argues that White's "shoulder straps [15] attach to a surface facing
away from the front side, not the backside [ of the patient] as set forth in ... claim
18," and illustrated below in White's annotated Figure 3. Appeal Br. 23.
Appellant's annotated Figure 3 of White shows shoulder straps 15 attached to a
surface facing away from the patient's front side.
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Appeal2018-000737
Application 13/489,811
The Examiner responds that because "attachment areas (3, 5) attach[] to
outer side (13) of portion (6) ... outer side (13) faces away from patient's
backside." Ans. 15. According to the Examiner, because "inner side (11) of
portion ( 6) [is] on [ the same] side [ 4] contacting patient's backside and outer side
(13) of portion (6) [is] on opposite side of inner side (11) ... means that the outer
side (13) faces away from patient's backside." Id. (citing White, Figs. 1, 2).
"While the Board must give the terms their broadest reasonable construction,
the construction cannot be divorced from the specification and the record
evidence." In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011). Here, we do not
agree with the Examiner's interpretation of White's outside surface 13 of front
portion 6 as "facing away from the patient's backside." Such an interpretation of
the phrase "facing away from the patient's backside" is inconsistent with
Appellant's Specification, which differentiates between a back (rear) side of the
patient positioner, which contacts a patient's back (see Appellant's Figure 5) and a
front side of the patient positioner, which contacts a patient's front (see Appellant's
Figure 4). See also Spec. paras. 12, 13.
Furthermore, we appreciate the Examiner's position that White's inside
surface 11 is on the same side (surface) as back portion 4 that contacts a patient's
back; however, inside surface 11 is also on the same side (surface) as front portion
6 that ultimately contacts a patient's front. Compare White, Fig. 1 with Fig. 2. 5
5 The term "side" appears to be used differently in claim 18 than in claim 1. In
particular, claim 18 appears to use the term "side" to denote a face or surface,
rather than a boundary of a portion of an element or surface, as in claim 1.
Terminology should be used consistently throughout the specification and claims
of a patent application. Thus, Appellant should consider amending the application,
and the claims in particular, to avoid the inconsistent use of the term "side."
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Appeal2018-000737
Application 13/489,811
As such, in contrast to claim 18, which requires first and second attachment areas
attached to a side of the patient positioner facing away from the patient's backside
(see Appeal Br. 28), White's shoulder straps 15 face away from the front side of
the patient as they are attached to outside surface 13 of front portion 6. See White,
Fig. 2.
Hence, Appellant is correct that White fails to disclose attaching first and
second attachment straps "to a side of the patient positioner facing away from the
patient's backside," as called for by independent claim 18. The Examiner's use of
the Wootan and Patel disclosures does not remedy the deficiency of White
discussed supra. See Non-Final Act. 11-12.
Accordingly, for the foregoing reasons, we do not sustain the rejection under
35 U.S.C. § 103(a) of claims 18 and 19 as unpatentable over White, Wootan, and
Patel.
SUMMARY
The Examiner's decision to reject claims 1-15, 18, and 19 under 35 U.S.C.
§ 103(a) is reversed.
REVERSED
10