Ex Parte Hedberg

Patent Trial and Appeal Board

May 31, 2017

12252001 (P.T.A.B. May. 31, 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.
12/252,001 10/15/2008 Mary Lucia Leone Hedberg 99990-0190001 6597
26161 7590 06/02/2017
FISH & RICHARDSON P.C. (BO)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
MILLER, CHRISTOPHER E
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
06/02/2017 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARY LUCIA LEONE HEDBERG
Appeal 2016-000516
Application 12/252,001
Technology Center 3700
Before JILL D. HILL, NATHAN A. ENGELS, and PAUL J. KORNICZKY,
Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a non-final rejection
of claims 1—10, 12—15, and 18—24. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Appeal 2016-000516
Application 12/252,001
ILLUSTRATIVE CLAIM
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A self-contained appliance for passive therapy of arthritis
discomfort in a bone joint, comprising:
a bone joint encompassing element comprising a sleeve­
shaped body defining an inner volume having apertures at
opposite ends such that the inner volume of the body is exposed
to an external environment through the apertures, the body
comprising
an outer shell comprising a moisture impermeable
and water vapor impermeable barrier material, and
an inner liner comprising a moisture permeable
material and defining a therapy region about one or more
bone joints, the inner liner and the outer shell defining one
or more open compartments among one or more layers of
the outer shell or one or more layers of the inner liner or
between a layer of the outer shell and a layer of the inner
liner,
a desiccative agent disposed within the therapy region and
placed within the one or more compartments, the desiccative
agent comprising a material that adsorbs water vapor to reduce
humidity in the therapy region, and
two or more closure elements configured to seal each of
the apertures so that the therapy region is isolated from moisture
and from water vapor of the external environment.
THE REJECTIONS
Claims 1—9, 12—15, and 18—24 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable in view of Satkowiak (US 2006/0276734 Al;
Dec. 7, 2006), Parker (US 2008/0168593 Al; July 17, 2008), Carstens (US
2007/0106356 Al; May 10, 2007), and Shouse et al. (US 5,542,191; Aug. 6,
1996).
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Appeal 2016-000516
Application 12/252,001
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of Satkowiak, Parker, Carstens, Shouse, and Delao (US
5,592,953; Jan. 14, 1997).
ANALYSIS
Among other findings, the Examiner finds that Satkowiak discloses a
waterproof sheath for protecting a cast on an injured person’s limb, and
Parker discloses a glove having an inner liner containing a desiccative agent
to absorb moisture. Non-final Act. 3—5. The Examiner reasons that
modifying the outer shell of Satkowiak to include an inner liner and a
desiccative agent would have been a combination of known elements
yielding a predictable result of removing moisture (e.g., sweat) from a
person’s skin. Ans. 19—20; see also Non-final Act. 5.
Appellant argues Satkowiak’s limb protector is designed solely to
create a barrier to external moisture for the purpose of allowing a wearer to
bathe without getting the person’s cast wet. Br. 6 (citing Satkowiak 127).
According to Appellant, a person of ordinary skill in the art would have had
no reason to modify Satkowiak to include a desiccant agent and the
Examiner’s modification would have required impermissible hindsight
reconstruction to pick and choose elements from Satkowiak, Parker,
Carstens, and Shouse. Br. 7 (citing In re Fine, 837 F.2d 1071, 1075 (Fed.
Cir. 1988)). Appellant additionally argues Satkowiak is not capable of
performing the function “to reduce humidity in the therapy region” as
claimed. Br. 8 (citing Haberman v. Gerber Prods. Co., 236 Fed. Appx. 592
(Fed. Cir. 2007) (unpublished)).
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Appeal 2016-000516
Application 12/252,001
The Examiner responds to Appellant’s arguments, explaining that
Satkowiak discloses the importance of keeping a cast dry, as moisture can
soften a cast and promote bacterial infection. Ans. 18—19 (citing Satkowiak
14 (“Because casts can soften if they become wet and because this moisture
can promote bacterial infection, most orthopedists give their patients strict
instructions to keep their casts dry at all times.”). Further, the Examiner
states that Satkowiak ideally prevents external moisture from contacting an
injured person’s limb, but determines that it still would have been
advantageous to include a desiccant agent with Satkowiak’s sheath to
remove existing moisture from within the limb protector in addition to
preventing additional moisture from contacting the limb protector. Ans. 19—
20. Appellant did not respond to the findings and reasoning in the
Examiner’s Answer.
As the Examiner finds, Satkowiak discloses the importance of keeping
a cast dry, and we agree with the Examiner that a person of ordinary skill
would have recognized that combining Satkowiak with an inner layer
containing a desiccative agent would have yielded the predictable result of
reducing moisture and humidity in a person’s therapy region. See Ans. 18—
19; Non-final Act. 4—5. Appellant’s additional argument that Satkowiak, by
itself, is not capable of reducing humidity in a therapy region (see Br. 7—8)
fails to substantively address the Examiner’s findings regarding the
combined teachings of the prior art and is, therefore, unpersuasive. See In re
Keller, 642 F.2d 413, 426 (CCPA 1981) (“one cannot show non-obviousness
by attacking references individually where ... the rejections are based on
combinations of references”).
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Appeal 2016-000516
Application 12/252,001
Accordingly, having considered the Examiner’s rejections in light of
each of Appellant’s arguments and the evidence of record, we agree with the
Examiner’s findings and the Examiner’s conclusion that claim 1 would have
been obvious in view of the combined teachings of the prior art. We adopt
as our own the Examiner’s findings, conclusions, and reasoning, and we
sustain the rejection of claim 1, as well as the rejections of claims 2—9, 12—
15, and 18—24 for which Appellant relies on the arguments advanced for
claim 1. See Br. 8—9 (stating that independent claims 15 and 23 are
patentable “for the same reasons described above with respect to claim 1”
and that each of dependent claims 2—10, 12—14, 18—22, and 24 “is patentable
for at least the same reasons that the claim on which it depends is
patentable”); see also Cite 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
For the above reasons, we affirm the Examiner’s rejection of claims
1-9, 12-15, and 18-24.
No time period for taking any subsequent action in connection with
this appeal maybe extended. 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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