Ex Parte Eckstein

Patent Trial and Appeal BoardJun 17, 2014

12223531 (P.T.A.B. Jun. 17, 2014)

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. 12/223,531 08/01/2008 Axel Eckstein 1703 1895US 9780 29894 7590 06/17/2014 DREISS, FUHLENDORF, STEIMLE & BECKER POSTFACH 10 37 62 D-70032 STUTTGART, GERMANY EXAMINER HICKS, VICTORIA J ART UNIT PAPER NUMBER 3772 MAIL DATE DELIVERY MODE 06/17/2014 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 AXEL ECKSTEIN ____________ Appeal 2012-011417 Application 12/223,531 Technology Center 3700 ____________ Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and JAMES A. WORTH, Administrative Patent Judges. WORTH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 15, 18-29, and 31 which constitute all the claims pending in this application. 1, 2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We refer to the Appeal Brief (filed Apr. 19, 2012, hereinafter “App. Br.”), the Reply Brief (filed Aug. 2, 2012, hereinafter “Reply Br.”), the Final Rejection (mailed Nov. 23, 2011), and the Answer (mailed June 5, 2012 hereinafter “Ans.”) for the respective positions of Appellant and the Examiner. 2 The real party in interest identified by Appellant is Paul Hartmann AG of Heidenheim, Germany. App. Br. 3. Appeal 2012-011417 Application 12/223,531 2 Introduction Appellant’s disclosure relates to a polymer film and an application system for handling of the polymer film. Spec. 1. The film can be used for coverage of a wound, for coverage of an incision site for an operation, or for fixing cannulas and catheters in place. Id. Claim 31 is illustrative and reads as follows: 31. A film structure comprising: a polymer film having a polymer film thickness, said polymer film having a polymer film lower side and a polymer film upper side separated from said polymer film lower side by said polymer film thickness; at least one support film having a support film thickness, said at least one support film having a support film lower side disposed on said polymer film upper side, said at least one support film also having a support film upper side separated from said support film lower side by said support film thickness; at least one gripping strip having a gripping strip thickness, said at least one gripping strip having a gripping strip lower side and a gripping strip upper side separated from said gripping strip lower side by said gripping strip thickness; a first adhesive area disposed between and connecting together said gripping strip lower side and said support film upper side, said first adhesive area thereby completely remaining on said support film upper side in response to removal of said at least one gripping strip, said first adhesive area thereby being structured to permit direct adhesive attachment of said at least one support film to a document file, said at least one support film and said at least one gripping strip thereby constituting parts of an application system disposed at said upper side of said polymer film for facilitating handling of the film structure. App. Br., Claims App’x. Appeal 2012-011417 Application 12/223,531 3 Prior Art Relied Upon Wick EP 0401949 A2 Dec. 12, 1990 Ward US 4,753,232 June 28, 1988 Schultz US 5,960,795 Oct. 5, 1999 Gilbert US 5,052,381 Oct. 1, 1991 Rejections On Appeal The Examiner maintains, and the Appellant appeals, the following rejections: 1) Claims 15, 18, 19, 24-28, and 31 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Wick and Ward. 2) Claims 20-23 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Wick, Ward and Schultz. 3) Claim 29 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Wick, Ward and Gilbert. ANALYSIS In the Examiner’s Answer, the Examiner withdrew the previous grounds of rejection for independent claims 15 and 31 (Ans. 14) and issued new grounds of rejection for these claims. Id. As such, the arguments in the Appeal Brief are not responsive to the new grounds of rejection. We therefore consider Appellant’s arguments as they are presented in the Reply Brief, pages 4-19. Independent claim 31 The Examiner finds that Wick contains all of the limitations of claim 31, except for the first adhesive area disposed between and connecting together said at least one gripping strip lower side and said support film upper side. Ans. 6-7. The Examiner finds that the end of the support film Appeal 2012-011417 Application 12/223,531 4 (32c) of Wick constitutes a gripping strip. Ans. 6. The Examiner finds that Ward teaches a device at column 9, lines 33-48, and Figures 1 and 2 with a first adhesive area (8) disposed between and connecting together said at least one gripping strip (6) lower side and said support film (3) upper side. Ans. 6-7. The Examiner concludes that it would have been obvious to modify the gripping strip of Wick in the manner described by Ward such that the adhesive area (29b) extends along the length of the gripping strip to provide a first adhesive area disposed between the gripping strip and the support film. Ans. 7. Appellant argues that Wick teaches away from the modification suggested by the Examiner because Wick explicitly teaches that these end areas (32c) and (32d) should remain free of adhesive. Reply Br. 8; see also Wick, Fig. 5 (identifying (32d) as the end of layer (32a)). Appellant further argues that the modification suggested by the Examiner is directly contrary to the intended purpose of the Wick disclosure because adhesive would prevent or impair straightforward removal of the support film. Id. Although Wick describes embodiments that are free of adhesive on the end portions 32c and 32d, Wick 6, ll. 2-5; 7, ll. 33-45, Wick describes that there is an exception to this. Id. at 7, ll. 33. Specifically, Wick describes that “a small amount of adhesive can be placed between the overlapping portions 34’ of the carrier portions 32a’ and 32b’” in order to create a seal. Id. at 10, ll. 51-52. The presence of the embodiment using adhesive to effectuate a seal is thus evidence that the use of adhesive on the overlapping ends is not inconsistent with the purpose of Wick, and there is no teaching away from the use of adhesive for this purpose. Appeal 2012-011417 Application 12/223,531 5 Appellant further asserts that neither Wick nor Ward propose a gripping strip structure which is attached to a support film by means of an adhesive in such a manner that the adhesive remains on the support film upper side in response to the removal of the gripping strip. Reply Br. 8. As to Wick, Appellant observes that items (32a) and (32b) are a support film that appears to be made from the same material, and argues that it is unclear whether the adhesive force would allow the adhesive to remain on the upper support surface of support film (32a). Id. at 10. The Examiner finds that Figure 5 of Wick teaches that adhesive (29b) remains on support film when support film is removed from the polymer film layer. Ans. 6-7. We determine that the Examiner’s finding is supported by a preponderance of the evidence, and we agree that adhesive remains on the support film. Appellant argues that it is unclear how the adhesive will behave when it is between two pieces of support film (as opposed to being between support film and polymer film). Reply Br. 9-10. We find that Appellant has not provided evidence that no adhesive will remain on the support film upper surface after the two support layers are separated. We therefore affirm the Examiner’s rejection of claim 31 under 35 U.S.C. § 103(a). Independent claim 15 and its dependent claims The Examiner’s rejection of claim 15 is similar to the rejection of claim 31. The Examiner finds that Wick contains all of the elements of claim 15, except for the first adhesive area connecting the gripping strip to the support film and the second adhesive area connecting the cover means to Appeal 2012-011417 Application 12/223,531 6 the support film. Ans. 5. The Examiner concludes that in view of Ward,3 it would have been obvious to modify Wick to extend the adhesive area (29b) between support film (32a) and gripping strip (32c). Id. The Examiner concludes that this modification would result in the portion of support film (32a) below the gripping strip functioning as a cover means, and that a second adhesive area (29b) would remain on the support film upper side in response to removal of said cover means. Id. Appellant argues that the extension of the adhesive region contradicts the teachings of Wick, is inconsistent with the purpose of Wick, and further that it is not clear from Wick that the adhesive (29b) would stay attached to 32a. Reply Br. 14-15. We disagree for the same reasons as for claim 31. Appellant raises three further arguments with respect to claim 15. Appellant argues that the Examiner erred by mapping the support film and the cover means onto the same structure (32a). Reply Br. 18. Appellant’s disagreement with the Examiner is that the cover means is continuous with the support film on the same side of the device. Two different claim terms can be satisfied by the same structure unless the claim requires that the structures be different. Linear Technology Corp. v. International Trade Comm'n, 566 F.3d 1049, 1054-55 (Fed. Cir. 2009). Appellant has not identified such a requirement in the language of claim 15. Moreover, under the broadest reasonable interpretation standard of claim construction applicable to this review, it is permissible for the two claim terms to apply to the same structure. See In re Baxter Intern., Inc., 678 F.3d at 1361. 3 The Examiner relies on the same description of Ward for claim 15 as for claim 31, i.e., Ward, column 9, lines 33-48 and Figures 1 and 2. Ans. 5. However, the Examiner identified the support film as layer (5) of Ward for purposes of claim 15 and layer (3) of Ward for claim 31. Id. at 5, 7. Appeal 2012-011417 Application 12/223,531 7 Appellant further argues that the Examiner erred in identifying item (32a) as the cover means because, according to Appellant, the claims require that the cover means be situated above the second adhesive area. Reply Br. 18. According to Appellant, the cover means must be disposed above the second adhesive area in order for the second adhesive area to remain on the support film upper side when the cover means is removed. Ans. 18. With the Examiner’s modification of Wick, the cover means would be below the second adhesive area which would connect support film (32a) to the gripping strip (32c). Id. at 5. Turning to the claim language, claim 15 does not on its face contain a requirement that the cover means is “above” the second adhesive area. Rather, as Appellant acknowledges, the requirement in claim 15 is simply that the “second adhesive area completely remains on said support film upper side in response to removal of said cover means.” As discussed directly above, the cover means and the support film can be satisfied by the same structure, i.e., layer (32a) can serve as a cover means as well as support film. Both the cover means and the support film are disposed on the second adhesive area. According to the Examiner, in Wick as modified by Ward, there would be adhesive (29b) between layer (32a), identified as the cover means, and layer (32c), identified as the gripping strip. Id. The Examiner finds that adhesive does remain on the support film upper layer, when layers (32a) and (32c) are separated. Id. The claim requirements are thereby satisfied. Finally, Appellant argues that for claim 15, the Examiner has identified the support film with layer (5) of Ward, which in Figure 2 does not directly contact the adhesive layer (8) because it is separated by layer (7). Appellant argues that the only reasonable interpretation of the claim Appeal 2012-011417 Application 12/223,531 8 language “first adhesive area disposed between and connecting together said gripping strip lower side and said support film upper side” is that the first adhesive area directly contacts the support film. Reply Br. 16-17. We disagree. Nothing in the claim language or specification precludes the existence of other structures that are also connected together. The adhesive would still be disposed between the gripping strip and the support film. The claim requirement of the first adhesive area being disposed between and connecting the gripping strip and the support film is therefore satisfied. Thus, we are not persuaded by Appellant’s arguments that the Examiner’s determination as to the combination of Wick and Ward would be inconsistent with the language of claim 15. We therefore affirm the Examiner’s rejection of claim 15 under 35 U.S.C. § 103(a). Because Appellant only argues the Examiner’s rejections of claims 18-29 on the basis of his arguments relating to independent claim 15, we affirm the Examiner’s rejections of claims 18-29 under 35 U.S.C. § 103(a). CONCLUSION On the record before us, we conclude that the Appellant has not shown that the Examiner erred in rejecting claims 15, 18-29, and 31 under 35 U.S.C. § 103(a). DECISION The decision of the Examiner to reject claims 15, 18-29, and 31 is affirmed. Appeal 2012-011417 Application 12/223,531 9 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Tkl/pgc