Ex Parte Chua et al

Patent Trial and Appeal BoardJul 24, 2018

13273170 (P.T.A.B. Jul. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/273, 170 10/13/2011 27939 7590 07/24/2018 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. BPMDL0044MC (10401U) 5580 EXAMINER CARREIRO, CAITLIN ANN ART UNIT PAPER NUMBER 3772 MAIL DATE DELIVERY MODE 07/24/2018 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, PETERS. NICHOL, and MICHAEL P. LAYNE Appeal2017-010835 Application 13/273, 170 Technology Center 3700 Before STEFAN STAICOVICI, LEE L. STEPINA, and ARTHUR M. PESLAK, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Mark Spencer G. Chua et al. ("Appellants") 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision in the Non-Final Action (entered Oct. 5, 2 0 16, hereinafter "Non-Final Act.") rejecting claims 14--16 and 21-3 3. 2 We have jurisdiction under 35 U.S.C. Â§ 6(b). SUMMARY OF DECISION We REVERSE. 1 Appellants' Appeal Brief (filed Mar. 22, 2017, hereinafter "Appeal Br.") identifies the real party in interest as Medline Industries, Inc. Appeal Br. 2. 2 Claims 1-13 and 17-20 are cancelled. Appeal Br. 2-3. Appeal2017-010835 Application 13/273, 170 INVENTION Appellants' invention relates to a drape for equipment having non- planar contours, such as magnetic resonance imaging equipment. Spec. para. 1. Sole independent claim 14, reproduced below, is representative of the claimed invention and reads as follows: 14. A method of manufacturing a drape, comprising: configuring a sterile drape with accordion folds to form two abutting elongated accordion fold stacks linked by a bottom section; wrapping the sterile drape with a drape wrapping layer to form a wrapped drape; and folding the wrapped drape with one or more book folds to form a folded drape. REJECTIONS I. The Examiner rejects claims 14, 21-24 3, 26, and 29-32 under 35 U.S.C. Â§ 103(a) as unpatentable over Arco (US 4,627,427, iss. Dec. 9, 1986) and McAllester (US 4,397,309, iss. Aug. 9, 1983). II. The Examiner rejects claims 15, 16, 25, 27, 28, and 33 under 35 U.S.C. Â§ 103(a) as unpatentable over Arco, McAllester, and Wall (US 3,025,957, iss. Mar. 20, 1962). 3 Although claim 25 is included in the heading of Rejection I (see Non-Final Act. 3), claim 25 is not discussed in the body of Rejection I, but is discussed in the body of Rejection II. Thus, we understand the Examiner's inclusion of claim 25 in the heading of Rejection I to be a mere typographical error. 2 Appeal2017-010835 Application 13/273, 170 ANALYSIS The Examiner finds that Arco discloses most of the features of independent claim 14, but relies on McAllester to disclose "wrapping the sterile drape with a drape wrapping layer to form a wrapped drape." Non- Final Act. 3--4; see also Arco, Figs. 3, 4; McAllester, Figs. 2, 6. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art to wrap the sterile drape of Arco with a drape wrapping layer, as taught by McAllester, "in order to provide for easy unwrapping and unfolding of the drape without contaminating portions of the drape which are desired to remain sterile during an operation." Non-Final Act. 5. Appellants argue that McAllester does not wrap "abutting elongated accordion fold stacks with a wrap layer to form a wrapped drape." Appeal Br. 19. According to Appellants, McAllester does not disclose wrapping but rather, discloses tucking flaps 51 and 52 into the interior of the stack. Id. at 20; see also Reply Br. 9. Appellants assert that the plain meaning of the term "wrapping" is to "cover or enclose ( someone or something) in paper or soft material," and that McAllester' s flaps 51, 52 do not cover or enclose anything, because "the accordion folds and base member of the assembly are fully exposed." Appeal Br. 20 ( citing New Oxford American Dictionary, electronic version 2.2.1(194) 2005-2012). The Examiner responds that the claims do not require that "the wrapping layer fully enclose or envelope the entire drape," and the Examiner declines to read such a limitation into the claims. Examiner's Answer 11-12 (entered June 29, 2017, hereinafter "Ans."). We appreciate the Examiner's position that wrapping need not necessarily "fully enclose" an article. Ans. 11. However, although a 3 Appeal2017-010835 Application 13/273, 170 general-usage dictionary can be helpful in understanding claim language, a general dictionary "cannot overcome art-specific evidence of the meaning of a claim term." Phillips v. AWH Corp., 415 F.3d 1303, 1318, 1322 (Fed. Cir. 2005) ( citations and internal quotations omitted). Here, in the art of surgical drape manufacturing, a person of ordinary skill in the art would understand that an article should be fully enclosed to maintain sterility. See e.g., Wall, col. 2, 11. 13-18. Accordingly, we agree with Appellants' ordinary and customary meaning of the term "wrapping" to mean "to enclose," that is, "to close in: SURROUND."4" See Appeal Br. 20. We also agree with Appellants that the proffered definition is consistent with Appellants' Specification, which describes a drape "wrapped within a drape wrapping layer" that "can be unfolded to reveal a sterile drape portion." Spec. para. 31; see also Appeal Br. 20. This is shown in Appellants' Figures 5 and 6 which depict drape 600 fully enclosed (wrapped) within drape wrapping layer 209 such that drape 600 is not visible in Figure 5, but becomes visible in Figure 6 when drape wrapping layer 209 is unwrapped. Spec. para 42. Hence, a person of ordinary skill in the art would readily understand that the term "wrapping" as used in claim 14 and consistent with Appellants' Specification means to "fully enclose" or "envelope" the entire drape in order to maintain its sterility. By contrast, as Appellants correctly note, "in McAllester, nothing is wrapped." Appeal Br. 20 ( emphasis omitted). More specifically, McAllester' s flaps 51, 52 "only cover a portion of the top surface of the drape on the edges of the folds" such that "the accordion folds and base 4 See https://www.merriam-webster.com/dictionary/enclose (last visited July 20, 2017). 4 Appeal2017-010835 Application 13/273, 170 member of the assembly are fully exposed." Appeal Br. 20 (emphasis omitted); see also McAllester, col. 4, 11. 22-31; Fig. 2. Therefore, because the folding pattern of McAllester' s drape includes exposed portions, that is, "exposed fold edges" (see McAllester, col. 4, 11. 36-37), McAllester fails to disclose "wrapping the sterile drape with a drape wrapping layer to form a wrapped drape," as called for by independent claim 14. Accordingly, for the foregoing reasons, we do not sustain the rejection of claims 14, 21-24, 26, and 29-32 under 35 U.S.C. Â§ 103(a) as unpatentable over Arco and McAllester. Rejection II The Examiner's use of Wall's disclosure does not remedy the deficiency of the rejection based upon Arco and McAllester discussed supra. See Non-Final Act. 6-7. Accordingly, for the same reasons discussed above, we also do not sustain the rejection under 35 U.S.C. Â§ 103(a) of claims 15, 16, 25, 27, 28, and 33 as unpatentable over Arco, McAllester, and Wall. DECISION The Examiner's decision to reject claims 14--16 and 21-33 under 35 U.S.C. Â§ 103(a) is reversed. REVERSED 5