Ex Parte Dow

Patent Trials and Appeals BoardFeb 1, 2019

13346670 - (D) (P.T.A.B. Feb. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/346,670 01/09/2012 7590 Alfred F. Hoyte, Esq. 7734 16th Street NW Washington, DC 20012 02/01/2019 FIRST NAMED INVENTOR Rebecca A. Dow 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. RD52706C.UP A 1400 EXAMINER SMITH, KAITLYN ELIZABETH ART UNIT PAPER NUMBER 3794 MAIL DATE DELIVERY MODE 02/01/2019 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 REBECCA A. DOW 1 Appeal 2018-001378 Application 13/346,670 Technology Center 3700 Before DANIEL S. SONG, MICHAEL L. HOELTER, and BRETT C. MARTIN, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. Â§ 134(a), from the Examiner's final rejection of claims 10-18, which constitute all the claims pending in this application. Br. 1. We have jurisdiction under 35 U.S.C. Â§ 6(b ). For the reasons explained below, we do not find error in the Examiner's rejections of these claims. Accordingly, we AFFIRM the Examiner's rejections. 1 "The real part in interest is the applicant: Rebecca A Dow." Br. 1. We thus proceed on the basis that, for purposes of this appeal, Rebecca A. Dow is the "Appellant." Appeal 2018-001378 Application 13/346,670 CLAIMED SUBJECT MATTER The disclosed subject matter "concerns therapeutic thermal treatment devices." Spec. 1:12. Claims 10 and 15 are independent. Claim 10 is illustrative of the claims on appeal and is reproduced below. 10. A thermal wrap for positioning about a user's head compnsmg: said wrap having a pair of opposing side portions, each of said side portions having inner and outer sheets, said side portions selectively connected by at least a pair of spaced co- extensive connecting straps, the connecting straps connecting top ends of the side portions; said wrap including a chin strap portion connected to lower edges of said side portions; each of said side portions including a pocket having a predetermined width for receiving a pack of thermal treatment material of a standard size, said pack being of a standard size and having laterally spaced edge regions; one of said side portions having a pair of co-extensive spaced strips of hook and loop type fastening material positioned on the outer sheet in overlapping relation to said pocket to form a primary treatment side of said wrap, the spacing of said strips corresponding to the spacing of the edge regions of said pack of thermal treatment material; said straps engageable with said strips of hook and loop material to secure the wrap in position about the user's head and secure said primary treatment side in position proximate a target position on said user's face. REFERENCES RELIED ON BY THE EXAMINER Hill et al. US 5,148,804 Sept. 22, 1992 Smith US 5,188,103 Feb. 23, 1993 Allen US 5,507,794 Apr. 16, 1996 Bass US 6,585,673 B 1 July 1, 2003 Nozik et al. US 2004/0186539 Al Sept. 23, 2004 2 Appeal 2018-001378 Application 13/346,670 THE REJECTIONS ON APPEAL 2 Claims 10, 13, 15, and 17 are rejected under pre-AIA 35 U.S.C. Â§ 103(a) as unpatentable over Hill and Bass. Claim 11 is rejected under pre-AIA 35 U.S.C. Â§ 103(a) as unpatentable over Hill, Bass, and Allen. Claims 12 and 16 are rejected under pre-Al A 35 U.S.C. Â§ 103(a) as unpatentable over Hill, Bass, and Nozik. Claims 14 and 18 are rejected underpre-AIA 35 U.S.C. Â§ 103(a) as unpatentable over Hill, Bass, and Smith. ANALYSIS The rejection of claims 10, 13, 15, and 17 as unpatentable over Hill and Bass Appellant presents arguments for independent claim 10 and, separately, for independent claim 15. See Br. 3-5. We select claims 10 and 15 for review, with the remaining dependent claims (i.e., claims 13 and 17), standing or falling therewith. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). Claim 10 Claim 10 recites "a pocket having a predetermined width for receiving a pack of thermal treatment material of a standard size." The Examiner relies on Hill for such teachings. See Final Act. 4; see also Hill 2:6-9; 3:28- 29; 8: 18-20 ("Each set of gel packs 60, 70, and 80 includes two standard size gel packs each manufactured to fit closely into pocket 30. "). Claim 10 2 Regarding claim amendments made after the Final Office Action, the Examiner states, "[t]hese amendments resolve the claim objections and 35 U.S.C. [Â§] 112(b) rejection as set forth in the Final Office Action dated 23 July 2013." Advisory Action dated May 12, 2016. 3 Appeal 2018-001378 Application 13/346,670 also recites fastening strips and "the spacing of said strips corresponding to the spacing of the edge regions of said pack of thermal treatment material" in order to "secure said primary treatment side in position." The Examiner relies on Bass for the location of the fastening strips. See Final Act. 5; Ans. 2. Bass explicitly teaches placing fastening strips with respect to opposite edges of a pocket. See Bass 6:7-12 and Fig. 1. The Examiner states that it would have been obvious "to have substituted the unitary strip of Hill with the two coextensive strips of Bass in order to help prevent riding, roping and folding over when used as taught by Bass (Col. 9, lines 63---65)." Final Act. 5; Ans. 2. In short, the Examiner is combining Bass's teaching of placing fastening strips along the outer edges of a pocket, to Hill's teaching of a pocket sized such that standard gel packs "fit closely into [the] pocket." See supra. This edge placement of Bass's strips on Hill's pockets reasonably "correspond[ s] to the spacing of the edge regions of said pack of thermal treatment material" as recited. Thus, it is concluded the Examiner has met the threshold requirement for presenting a prima facie case of obviousness. 3 Appellant first contends that "Hill does not disclose the strap positioning and tensioning arrangement" (Br. 3) but the Examiner relied on Hill in combination with Bass for such teachings, not Hill alone. See Final Act. 5; Ans. 2. Appellant also contends that "Hill discloses relatively wide 3 The PTO satisfies its initial procedural burden of establishing a prima facie rejection by adequately explaining the shortcomings it perceives so that the applicant is properly notified and able to respond. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). "When a prima facie case of obviousness is made, the burden then shifts to the applicant to come forward with evidence and/or argument supporting patentability. In re Glaug, 283 F.3d 1335, 1338 (Fed. Cir. 2002)." In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014). 4 Appeal 2018-001378 Application 13/346,670 straps" (Br. 3) but claim 10 is silent as to the width of the straps. Appellant further contends that, as regarding the recited chin strap, Hill's "chin strap is as wide as the side pockets that store the gel pack" (Br. 4), but again, claim 10 is silent as to the width of the chin strap. Appellant argues, "[t]his combination of chin and side straps is simply not shown or disclosed by Hill" (Br. 4), but the Examiner's rejection regarding the side straps is not based on Hill alone, nor is the Examiner's rejection based on anticipation under 35 U.S.C. Â§ 102. Appellant states that the Examiner is "engaged in impermissible hindsight" (Br. 4) but does not identify that which might have been gleaned only from Appellant's disclosure (and which is not taught or suggested by either Hill or Bass). See also Ans. 3. When addressing "Bass ( or for that matter Hill)," Appellant contends that Bass "does not show any structure for applying tension to a narrow centralized portion of the pocket and thermal pack." Br. 4. Even presuming Appellant is arguing the combination of Hill and Bass, and not Bass alone, Appellant is mis-construing claim 10. Claim 10 is silent as to "applying tension to a narrow centralized portion of the pocket and thermal pack" and thus Appellant is arguing a feature not claimed. See Ans. 3. Accordingly, and based on the record presented, we are not persuaded the Examiner erred in rejecting independent claim 10, or dependent claim 13, as being obvious over Hill and Bass. Claim 15 Claim 15 differs slightly from claim 10 above in that claim 15 simply recites "a pocket for receiving a pack of thermal treatment material." Again, the Examiner relies on Hill for such teachings. See Final Act. 6. Regarding strap positioning, claim 15 recites straps that "overlap[] the edge regions of 5 Appeal 2018-001378 Application 13/346,670 said thermal pack" to "apply lateral tension [] to the edge regions of said pack of thermal treatment material." As above, the Examiner relies on Bass for strap positioning and expresses the same rationale for combining Hill and Bass. See Final Act. 6-7; Ans. 4. Appellant argues, "Hill does not discuss straps applying pressure only to edge regions of the gel pack" (Br. 4) but the Examiner relied on Hill in combination with Bass, for teaching straps that apply pressure to the gel pack's edge regions, not Hill alone. 4 See Final Act. 6-7; Ans. 4. Regarding Appellant's contention that "Bass (or for that matter Hill) does not show any structure for applying tension to a narrow centralized portion of the pocket and thermal pack" (Br. 4), this is a mis-reading of the relevant limitation of claim 15. Claim 15 does not recite "applying tension to a narrow centralized portion of the pocket." Instead, claim 15 recites "said chin strap portion centrally positioned to apply lengthwise tension to" the pocket-containing side portions. Appellant does not explain how Hill's corresponding "chin strap (32)" is not "centrally positioned" as claimed, nor does Appellant explain how this middle portion 32 fails to "apply lengthwise tension to" the adjoining pockets 30. Final Act. 6 (referencing Hill Figs. 1 and 1 OD). Appellant also argues that, as regarding the chin strap, Hill does not discuss "a chin strap applying tension only to a central part of the wrap as specifically recited in claim 15." Br. 4. However, the Examiner responds stating, "applying tension to only a central part of the wrap ... is not recited in the rejected claim." Ans. 4; see also supra. Appellant further argues that 4 Regarding Appellant's assertion of "only," we note that claim 15 does not employ this term and is not so preclusive. 6 Appeal 2018-001378 Application 13/346,670 the claimed "type of tensioning system is not disclosed or in any way suggested by Hill" (Br. 4) but, as explained above, the tensioning system is based on a combination of Hill and Bass, not Hill alone. In effect, Appellant appears to be arguing the art individually and is not responding to the Examiner's rejection. Accordingly, and based on the record presented, we are not persuaded the Examiner erred in rejecting independent claim 15, or dependent claim 17, as being obvious over Hill and Bass. The rejection of claim 11 as unpatentable over Hill, Bass, and Allen Appellant does not dispute separately, the Examiner's rejection of claim 11 in view of Hill, Bass, and Allen. See Appeal Brief generally. Accordingly, we summarily sustain the Examiner's rejection of this claim. The rejection of claims 12 and 16 as unpatentable over Hill, Bass, and Nozik Claims 12 and 16 both recite, "said chin strap portion is about one half the width of said side pockets." The Examiner relies on Nozik for disclosing "a holder (title) that includes a contoured section (26) which the width may be narrowed ([0025])." Final Act. 8; see also Ans. 5. In the Examiner's Answer, the Examiner reiterates that Nozik is not relied on for "specifically teach[ing] the dimension of a width of about half the pocket." Ans. 6. Instead, N ozik "is being used to teach that the sizing of the narrowed portion would be selected according to the application of the device." Ans. 6; see also Final Act. 8 ("[ t ]he specific characteristics of the contoured section ... are based on the proposed application for the holder ([0025])." The Examiner concludes that it would have been obvious "to have included the 7 Appeal 2018-001378 Application 13/346,670 narrowed portion of a dimension specific to the application of the device." Final Act. 9; see also Ans. 5. Appellant does not challenge the Examiner's reasoning, but instead contends, "[t]he Nozik chin strap cannot apply tension centrally." Br. 5. Nozik is not relied on for applying tension centrally, but instead for disclosing a chin strap of varying width. Final Act. 8; Ans. 5. Appellant also contends, "[ w ]hether the tapered portion eventually tapers to a width about half the width of the side pocket is unclear." Br. 5. However, as expressed above, the Examiner is not relying on Nozik for disclosing a specific dimension that "is about one half the width of said side pockets" as recited; instead, the Examiner is relying on Nozik to teach that the width "would be selected according to the application of the device." See supra. Appellant does not explain how the Examiner's rationale is incorrect, or that N ozik fails to disclose varying the width of the chin strap such that the recited width would not have been obvious. See Nozik ,r 25 ("width W may be narrowed"). Accordingly, and based on the record presented, we sustain the Examiner's rejection of claims 12 and 16 as being obvious over Hill, Bass, and Nozik. The rejection of claims 14 and 18 as unpatentable over Hill, Bass, and Smith Both claims 14 and 18 include the limitation, "wherein said chin strap portion includes a permanently attached strap and a releasably attached strap." The Examiner relies on Hill for teaching the former (permanently attached) strap and on Smith for teaching the latter (releasably attached) strap. See Final Act. 9; Ans. 6. The Examiner reasons that it would have 8 Appeal 2018-001378 Application 13/346,670 been obvious "to have utilized the anchor strap of Smith with the device of Hill in order to assist in maintaining the position of the main band on the face as taught by Smith." Final Act. 9 (referencing Smith Fig. 3). Appellant contends, "[ n Jone of the drawings of Smith show the anchor straps used to supplement the tensioning of the main elastic band." Br. 6. However, this argument is not based on any language appearing in these claims, and Smith was not cited for supplemental tensioning of the main band, but instead for teaching a releasable strap to maintain the position of the main band. See supra. Appellant also argues "that there is no motivation to combine Smith with Hill and Bass" but Appellant does not dispute the Examiner's express reason to use Smith's strap "to assist in maintaining the position of the main band." Final Act. 9. Accordingly, and based on the record presented, we sustain the Examiner's rejection of claims 14 and 18 as being unpatentable over Hill, Bass, and Smith. DECISION The Examiner's art rejections of claims 10-18 under 35 U.S.C. Â§ 103(a) are affirmed. 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 9