Ex Parte DunlopDownload PDFPatent Trial and Appeal BoardMar 27, 201713454300 (P.T.A.B. Mar. 27, 2017) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/454,300 04/24/2012 Colin DUNLOP GRIHAC P44AUSD1 3872 20210 7590 03/29/2017 DAVIS & BUJOLD, P.L.L.C. 112 PLEASANT STREET CONCORD, NH 03301 EXAMINER SMITH, KAITLYN ELIZABETH ART UNIT PAPER NUMBER 3739 NOTIFICATION DATE DELIVERY MODE 03/29/2017 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): patent @ nhpat. com tclark@nhpat.com mbuj old @ nhpat. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte COLIN DUNLOP Appeal 2015-007095 Application 13/454,300 Technology Center 3700 Before MICHELLE R. OSINSKI, JILL D. HILL, and PAUL J. KORNICZKY, Administrative Patent Judges. KORNICZKY, Administrative Patent Judge. DECISION ON APPEAL § 134 from the We have STATEMENT OF THE CASE Appellant, Colin Dunlop, appeals under 35 U.S.C. Examiner’s decision rejecting claims 15—23 and 25—32.1 jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. i Claims 1—14 and 24 are cancelled. Br. 1. Appeal 2015-007095 Application 13/454,300 THE CLAIMED SUBJECT MATTER The claims are directed to a patient warming blanket. Claims 15, 20, and 25 are the independent claims. Claim 15, reproduced below, is illustrative of the claimed subject matter: 15. A surgical warming blanket arranged for use during surgery on a patient and comprising at least two layers capable of forming a hollow air space between the two layers for receiving warmed air from a heating unit, the two layers and air space being arranged in operation to form a substantially tubular arrangement at least partially surrounding a patient receiving space, whereby when warm air is passed into the air space the warm air is delivered to the patient receiving space via the blanket, to maintain warm air throughout the patient receiving space, the patient receiving space being arranged to receive the patient’s body and allowing direct access to the patient’s body for surgery without disturbing the blanket, and wherein one of the two layers of the blanket has a portion of its surface formed of porous material so that the warmed air is delivered to the patient receiving space by diffusing over the entire surface of the porous material at a first low velocity so that the air has the effect of solely and evenly warming the patient without forming higher velocity streams of air. In rejecting the claims on appeal, the Examiner relied upon the following prior art: REFERENCES Hagopian Berke Irani Tomic-Edgar Shigezawa US 5,963,997 Oct. 12, 1999 US 5,165,400 Nov. 24, 1992 US 5,405,370 Apr. 11, 1995 US 6,277,144 B1 Aug. 21, 2001 US 6,440,157 B1 Aug. 27, 2002 2 Appeal 2015-007095 Application 13/454,300 REJECTIONS The Examiner made the following rejections: 1. Claims 15—23 and 25—32 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. 2. Claims 15—23 and 25—32 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. 3. Claims 15—19, 26, and 27 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Berke, Tomic-Edgar, and Irani. 4. Claim 20-23 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Berke, Tomic-Edgar, Irani, and Hagopian. 5. Claims 25 and 28—32 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Berke, Tomic-Edgar, Irani, and Shigezawa. Appellant seeks our review of these rejections. ANALYSIS Rejections 1—2: The Rejections of Claims 15—23 and 25—32 For Failing the Written Description Requirement and as Being Indefinite Claim Terms: First Low, First Lower, and Higher Velocity With respect to the written description rejection regarding the “first low velocity” (claim 15) and “first low velocity” (claim 25) limitations, the Examiner finds that claims 15—19 and 25—32 do not comply with the written description requirement because the Specification discloses “low velocity” but not a “first low velocity” and “first lower velocity.” Final Act. 5. Appellant argues that “the terms ‘first low velocity’ and ‘first lower velocity’ would be well understood to have been disclosed from the context 3 Appeal 2015-007095 Application 13/454,300 of ‘relatively low velocity’ and ‘relatively high velocity’ in the [Specification.” Br. 4. The Specification describes low and lower velocity air: The pervious material is adjacent to, in use, a patient receiving treatment. Delivering heat spread over the surface of the porous material advantageously has the effect of evenly warming the patient without forming relatively high velocity streams of air (as in the prior art blanket where the air is delivered via discreet [sic] holes). Animals, therefore, and in particular small animals, are not at risk of being cooled by relatively high velocity air streams. In one embodiment, a substantial proportion of the surface of the one layer is of porous material. Preferably, a majority of the surface of the one layer is of porous material. In operation, warm area is advantageously delivered at relatively low velocity over the proportion of the surface of the one layer. Br. 9 (citing Spec. 117). The Specification also states, “delivery of air from an air hole, so that the air is moving relatively rapidly can cause the patient to chill, as the air takes away more heat from the surface of the patient than it delivers.” Br. 5 (citing Spec. 110). We agree with Appellant that a person of ordinary skill in the art would understand that the Specification describes “low velocity” air and “lower velocity” air. The Examiner does not cite any legal authority that requires the Specification to use the exact terminology recited in the claims. With respect to the indefmiteness rejection regarding the “first low velocity” (claim 15), “first lower velocity” (claim 25), and “higher velocity” (claims 15 and 25) limitations, the Examiner states that claims 15—23 and 25—32 are indefinite because 4 Appeal 2015-007095 Application 13/454,300 [t]he terms “low velocity” and “higher velocity” in claim 15 [and claim 252] are relative terms which render the claim[s] indefinite. The terms “low” and “higher” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Final Act. 6; see Ans. 2—3 (regarding claim 25 limitations). In response, Appellant argues that a person skilled in the art would understand that terminology in light of the claims and the specification, “higher velocity” is the velocity at which the stream of air would cause a small animal patient to be cooled due to the removing of more heat from the small animal patient than is being supplied to that small animal patient. Br. 5. Appellant does not offer a definition for “low velocity” air. In light of the usage of the terms in the claims and Specification, a broadest reasonable interpretation of: (1) “low/lower velocity” air stream is an air velocity from the blanket which warms the patient, and (2) “higher velocity” air stream is an air velocity from the blanket which cools the patient. See, e.g., Spec. ]Hf 10, 13, 17. Thus, we are persuaded by Appellant that one of ordinary skill in the art would understand what is being claimed as to the low/lower velocity and higher velocity air streams, as called for in independent claims 15 and 25. 2 Explaining that the second reference to claim 15 on page 5 of the Final Action was a typographical error, and should refer to claim 25 which also contains the terms “low velocity” and “higher velocity,” the Examiner corrected the rejection to refer to claims 15 and 25. Ans. 2. Appellant does not contest the Examiner’s explanation. 5 Appeal 2015-007095 Application 13/454,300 We do not sustain the rejection of claims 15—23 and 25—32 under 35 U.S.C. § 112 regarding the “low velocity,” “lower velocity,” and “higher velocity” limitations. Claim Term: Solely Independent claims 15 and 25 recite “the air has the effect of solely and evenly warming the patient.” The Examiner finds that claims 15—19 and 25—32 do not comply with the written description requirement because There is no disclosure of “solely” warming the patient [in the Specification], The only disclosure is to evenly[,] not solely[,] warming [the patient]. Solely is defined as without anything or anyone else involved. There is not disclosure of a structure that would allow for the exclusion of warming anything or anyone else. Final Act. 5; see Ans. 3^4. Appellant effectively concedes that the term “solely” is not explicitly used in the Specification, but argues that the term is “inherently” disclosed in the Specification. Br. 6. According to Appellant, “as used in the claims, ‘solely’ relates back to the ‘air’ that is being applied to heat only the patient. An examination of the specification shows that the patient is, in fact, depicted as being heated solely by air.” Br. 6. Appellant argues that the “patient is heated solely by air and not, as in the prior art, with a blanket or other covering.” Id. n. 3. Appellant cites to a portion of the Specification which states: Preferably, the blanket is designed not to cover the animal patient, but instead to provide a patient receiving area in which 6 Appeal 2015-007095 Application 13/454,300 the patient lies surrounded at least on three sides by a tube formed by the blanket when air is pumped into the air space. Br. 6—7 (citing Spec. 118). We agree with Appellant that, at least in this “preferred” embodiment, a blanket does not cover the patient so that only the warm air, or as Appellant argues — solely the warm air, can heat the patient. Whether the claims exclude a patient covered by the blanket is an issue that is not before us. A skilled artisan reading the original disclosure would understand that, at the time of filing, Appellant was in possession of an invention in which the warm air alone warms the patient, and, accordingly, was in possession of an invention in which the warm air solely warms the patient in accordance with one interpretation of this claim limitation. Thus, the rejection of claims 15—19 and 25—32 as failing to comply with the written description requirement is not sustained. With respect to the indefiniteness rejection, the Examiner finds that claims 15, 20 and 25 are indefinite because “it is unclear how applicant would ‘solely’ warm the patient” and “[sjolely is defined as without anything or anyone else involved. It is unclear what would allow for the exclusion of warming anything or anyone else.” Final Act. 6. In response, Appellant essentially repeats the argument presented above for the written description requirement. See Br. 9—10. We understand that the Examiner reads the limitation as the “air has the effect of warming ‘solely/only’ the patient and ‘evenly’ warming the patient,” and Appellant reads the limitation as “solely/only” the air has the effect of evenly warming the patient. Because both interpretations are plausible in light of the Specification, the claim is indefinite. In re Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential) (“if a claim is amenable 7 Appeal 2015-007095 Application 13/454,300 to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35U.S.C. § 112, second paragraph, as indefinite.”). Thus, the rejection of claims 15—23 and 25—32 as being indefinite is sustained. Rejections 3—5: The Rejection of Claims 15—23 and 25—32 Appellant argues independent claims 15, 20, and 25 as a group. Appeal Br. 11—18. We select claim 15 as the representative claim, and claims 20 and 25 stand or fall with claim 15. 37 C.F.R. § 41.37(c)(l)(iv). Appellant does not present separate arguments for the patentability of dependent claims 16—19, 21—23, and 26—32. Id. Accordingly, the dependent claims stand or fall with the independent claims from which they depend. With respect to claim 15, the Examiner finds that the combination of Berke and Tomic-Edgar disclose all of the limitations of claim 15 except for warmed air that is delivered to the patient receiving space by diffusing over the entire surface of the porous material at a first low velocity so as to have the effect of evenly warming the patient without forming higher velocity streams of air. Final Act. 7—8. The Examiner finds that this missing limitation is taught by Irani which discloses air blanket 10 that comprises barrier layer 14 and heat transfer layer 28 that are joined together to form a chamber adapted for the reception of warm air where the air from the chamber penetrates and uniformly diffuses through the heat transfer layer to gently impinge upon the treated patient. Id. at 8 (citing Irani, Abstract, 3:56—5:19). The Examiner determines that it would have been obvious to substitute Irani’s porous material for Berke and Tomic-Edgar’s porous 8 Appeal 2015-007095 Application 13/454,300 material as Irani teaches that using such a material allows for gentle impinging of the heated air substantially over the entire surface of the blanket. Id. (citing Irani 3:56—63); see also Ans. 5—6. Appellant argues that the Examiner’s rejection is erroneous for several reasons. First, Appellant contends that a combination of Berke, Tomic- Edger, and Irani would not result in a blanket that is able to maintain warm air throughout the patient receiving space because Irani’s material does “not allow for a sufficient volume of air to be diffused into the patient receiving space to achieve even and uniform warming of the patient,” and it “is highly unlikely the patient would be warmed significantly at all” “because the heat transfer layer 28 of Irani ’370 is arranged to capture and retain heat.” Appeal Br. 12—13; see also Br. 14 (“if the [Irani] heat transfer layer 28 was substituted for [Berke and Tomic-Edgar’s] material with air holes punched in them . . ., [the combination] would not operate to adequately to heat a patient within the patient receiving space”). Appellant states, “to maintain the animal/human patient at temperatures between 38°C and 46°C, requires delivery to the patient receiving space of something like 300—500 liters per minute of warm air,” and Irani’s heat transfer layer “would not be capable of handling such a high volume of air without eventually rupturing. This is because it is a complex and relatively thick layer of material.” Id. at 13. Appellant’s argument is unpersuasive. Appellant’s argument is an unsupported attorney argument which does not identify any factual support for its assertions in the Specification, Declaration of Professor Christina Dart, or other evidence of record. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (lawyer arguments and conclusory statements which are unsupported by factual 9 Appeal 2015-007095 Application 13/454,300 evidence are entitled to little probative value). Moreover, as the Examiner correctly notes, the features identified by Appellant are not recited in claim 1 so that Appellant’s argument is not commensurate with the scope of the claims. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (stating limitations not appearing in the claims cannot be relied upon for patentability). Finally, Irani’s blanket warms patients and treats hypothermia, and does not disclose any problems with inadequate air flow volume. Second, Appellant contends that there is a “fundamental difference” between Irani’s heated air blanket “which is arranged to cover a patient,” and Berke, Tomic-Edgar, and the claimed invention’s blankets which “are arranged to provide air into an open patient receiving space” (Br. 12—13), and that Irani and the claimed invention address different problems (id. at 12). Contrary to Appellant’s argument, Berke, Tomic-Edgar, Irani, and the claimed invention are analogous prior art because they address the same problem — providing sufficient heated air to warm a patient and treat hypothermia. Compare Irani, Abstract (To treat hypothermia, “[a]ir from the envelope or chamber penetrates and uniformly diffuses through the heat transfer layer to gently impinge upon the treated patient.”) and Spec. 10, 16; K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012) (to be analogous art, “the reference must be reasonably pertinent to the particular problem with which the inventor is involved”). Moreover, the Examiner’s rejection does not propose using Irani’s blanket to cover a patient. It proposes using Irani’s porous material to replace Berke and Tomic-Edgar’s porous material, which would distribute air into Berke and Tomic-Edgar’s patient receiving space. Appellant does not address the 10 Appeal 2015-007095 Application 13/454,300 rejection as articulated by the Examiner, and, thus, does not show error by the Examiner. Third, Appellant argues that the combination of Berke, Tomic-Edgar, and Irani would not be obvious to a person skilled in the art because a “combination of features from three different documents is required.” Br. 14. However, the criterion for obviousness “is not the number of references, but what they would have meant to a person of ordinary skill in the field of the invention.” In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991). Fourth, Appellant argues that a “combination [of Berke, Tomic-Edgar, and Irani] would only be made in hindsight with knowledge of the present invention.” Br. 14. The Examiner, however, determines that it would have been obvious to substitute Irani’s porous material for Berke and Tomic- Edgar’s porous material as Irani teaches that using such a material allows for gentle impinging of the heated air substantially over the entire surface of the blanket. Final Act. 8 (citing Irani 3:56—63); see also Ans. 5—6. The Examiner’s articulated reasoning is supported by explicit teachings in the cited prior art (e.g., Irani, 3:56—63). Appellant does not identify any knowledge relied upon by the Examiner that was gleaned only from the Appellant’s disclosure and that was not otherwise within the level of ordinary skill at the time of the invention, thereby obviating the Appellant’s assertion of hindsight. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Thus, Appellant does not apprise us of error. Fifth, Appellant argues that the combination of Berke, Tomic-Edgar, and Irani would not be obvious to a person skilled in the art because Irani’s blanket has a “totally different method of operation” than Berke and Tomic- Edgar’s blanket. Br. 14. As discussed above, all three blankets are designed 11 Appeal 2015-007095 Application 13/454,300 to provide sufficient heated air to warm a patient and treat hypothermia. In addition, the Examiner’s rejection does not propose using Irani’s blanket to cover a patient. It proposes using Irani’s porous material to replace Berke’s and Tomic-Edgar’s porous material, which would not adversely affect Berke’s and Tomic-Edgar’s patient receiving space. Appellant does not address the rejection as articulated by the Examiner, and, thus, does not show error by the Examiner. Moreover, simply that there are differences between two references is insufficient to establish that a prima facie case of obviousness is not possible. See In re Beattie, 974 F.2d 1309, 1312—13 (Fed. Cir. 1992). Sixth, Appellant argues that Professor Dart’s declaration demonstrates the “inventiveness of the present application.” Br. 15. However, Professor Dart’s declaration does not address any of the prior art of record or the Examiner’s rejections. Professor Dart does not testily that any of the products addressed in her declaration bear any relationship to any of the prior art of record or the pending claims, and Appellant’s assertions to the contrary are unsupported attorney argument. In re Geisler, 116F.3dat 1471 (attorney argument cannot take the place of evidence). Appellant’s assertion that blankets manufactured by Darvall Warm Air Heating, Advanced Anaesthesia Specialists are made in accordance with the “present application” is unsupported attorney argument. Id. Moreover, Appellant presents no nexus between these blankets and any of the pending claims. Appellant’s argument that the claimed invention is inventive because “no one had achieved the present invention until the Appellant made his invention in 2002” is also unsupported attorney argument. Id.', Br. 16. Appellant’s arguments are unpersuasive. Although we give weight to the 12 Appeal 2015-007095 Application 13/454,300 evidence offered by Appellant in an effort to prove unexpected results, we conclude that the Examiner’s evidence of obviousness outweighs Appellant’s evidence of nonobviousness. See In re Fenton, 451 F.2d 640, 643 (CCPA 1971) (the court balanced the Patent Office’s case against the strength of appellant’s objective evidence of non-obviousness); see also Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (“given the strength of the prima facie obviousness showing, the evidence on secondary considerations was inadequate to overcome a final conclusion that [the claimed subject matter] would have been obvious.”). Finally, Appellant argues that Hagopian and Shigezawa do not remedy the deficiencies of Berke, Tomic-Edgar, and Irani. Br. 18. As discussed above, we do not find any deficiencies in Berke, Tomic-Edgar, and Irani. Appellant’s argument is unpersuasive. For the above reasons, the rejection of claim 15 is sustained. Claims 16—23 and 25—32 fall with claim 15. DECISION For the above reasons, the Examiner’s rejection of claims 15—23 and 25—32 under 35 U.S.C. § 112, first paragraph, is REVERSED. The Examiner’s rejection of claims 15—23 and 25—32 under 35 U.S.C. § 112, second paragraph, as being indefinite is AFFIRMED. The Examiner’s rejections of claims 15—23 and 25—32 under 35 U.S.C. § 103(a) is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 13 Copy with citationCopy as parenthetical citation