Ex Parte Dunlop

Patent Trial and Appeal Board

Mar 27, 2017

13454300 (P.T.A.B. Mar. 27, 2017)

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
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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
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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
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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.
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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
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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
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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
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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
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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
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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
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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
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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
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