Ex Parte Miros et al

Patent Trial and Appeal Board

Sep 27, 2017

12903138 (P.T.A.B. Sep. 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.
12/903,138 10/12/2010 Robert H.J. Miros 11185-701.300 3336
66854 7590 09/29/2017
SHAY TtT FNN T T P
EXAMINER
2755 CAMPUS DRIVE LEWIS, KIM M
SUITE 210
SAN MATEO, CA 94403 ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
09/29/2017 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):
info@ shayglenn.com
shayglenn_pair @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT H. J. MIROS and
CHARLOTTE HUTTER-BROCK1
Appeal 2017-000164
Application 12/903,138
Technology Center 3700
Before BRADLEY W. BAUMEISTER, MICHAEL M. BARRY, and
MICHAEL J. ENGLE, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1,21, and 25—27. App. Br. 3—7.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants list CoolSystems, Inc. as the real party in interest. App. Br. 2.
2 Rather than repeat the Examiner’s positions and Appellants’ arguments in
their entirety, we refer to the following documents for their respective
details: the Final Action mailed November 20, 2014 (“Final Act.”); the
Appeal Brief filed October 20, 2015 (“App. Br.”); the Examiner’s Answer
mailed July 28, 2016 (“Ans.”); and the Reply Brief filed September 28, 2016
(“Reply Br.”).
Appeal 2017-000164
Application 12/903,138
STATEMENT OF THE CASE
Appellants describe the present invention as follows:
A flexible joint wrap [(e.g., for a knee)] includes a heat
exchange bladder, which provides fluid circulation and
compression to a joint. The joint wrap includes upper and lower
sections for attachment above and below a joint. The bladder has
an opening at a center section which provides flexibility of the
bladder. The heat exchange bladder may be enclosed in a
removable cover designed to conform to the shape of the bladder.
The cover and bladder are formed with an opening in alignment
with the joint to provide flexibility to the wrap. The cover may
be formed of a fluid repellant inner lining to prevent fluid from
the joint from soiling the bladder. The cover may further
comprise a nylon loop outer surface to allow the upper and lower
sections to be easily attached and adjusted.
Abstract.
Independent claim 1—reproduced below with the disputed language
emphasized and formatting added for clarity—is illustrative of the appealed
claims:
1. A flexible joint wrap comprising:
a heat exchange bladder comprising:
an upper bladder section having two wings;
a lower bladder section having two wings;
a center body bladder section having a first opening,
wherein the first opening in the center body bladder
section comprises a first slit from the upper bladder section
to the lower bladder section and a second slit oriented
perpendicular to the first slit, wherein the first slit divides
the center body bladder section into a first fluid flow path
and a second fluid flow path, the first fluid flow path
configured to allowfluidflow in an opposite direction than
the second fluid flow path; and
a hose coupling assembly attached to the bladder.
2
Appeal 2017-000164
Application 12/903,138
Claims 1,21, and 25—27 stand rejected under 35 U.S.C. § 112,11
(pre-AIA), as failing to comply with the written description requirement.
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
FINDINGS AND CONTENTIONS
The Examiner finds that “the recitation ‘the first fluid flow path
configured to allow fluid flow in an opposite direction than the second fluid
flow path’ was not originally presented in the specification, and thereby
invokes new matter.” Final Act. 3. The Examiner elaborates further in the
Answer,
fluid flow around the bladder is dependent upon how the fluid
inlet and outlet lines are connected to the manifold (56). While
Appellant only provides instances where the first slit (58) divides
the center body bladder section (60) into a first fluid flow path
and a second fluid flow path such that the first fluid flow path is
configured to allow fluid flow in an opposing direction than the
second fluid flow path, another instance exists. The manifold
may be positioned such that fluid flow, in what Appellant terms
the first fluid flow path and the second fluid flow path, are in the
same direction. . . .
Appellant’s failure to specifically describe the first and
second flow paths in the original specification . . . renders the
subject matter . . . new matter. . . . [Wjhile one having ordinary
skill in the art can speculate as to the possible flow patterns of a
first fluid flow path and a second fluid flow path, it is not clear
from the specification that the first fluid flow path is “configured
to”, which is synonymous with “designed to”, allow fluid flow
in and opposite direction than the second fluid flow path, since
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Appeal 2017-000164
Application 12/903,138
directional flow of the fluid is ultimately determined by
placement of the manifold. Even upon the viewing of paras.
[0029-0031 ] and FIG. 4B, as suggested by Appellant, one having
ordinary skill in the art cannot conclude the directional flow of
the fluid within the bladder absent an express teaching of such.
Additionally, the Office wishes to additionally point out that the
gaps in the wavy lines will also alter directional flow of the fluid.
Ans. 4—6.
Appellants assert
the fluid flow path in the bladder is defined by the perimeter of
the bladder and the interior fences, both shown as wavy lines [in
FIG. 4B, for example], and the first slit 58. The fluid flow around
the bladder can proceed in a generally clockwise manner, or
counterclockwise manner, depending on how the fluid inlet and
outlet lines are connected to the manifold 56. . . . A person of
ordinary skill in the art, when considering FIG. 4B and
paragraphs [0029]—[0031] of the specification, would be able to
determine the fluid flow pattern generated by the illustrated
design. Furthermore, determining the flow pattern from the
figures and the description of the bladder in the specification is
relatively predictable and not unduly complex.
App. Br. 4-5.
Appellants also respond to the hypothetical flow diagram that the
Examiner proposes in the Answer for the FIG. 4B embodiment (see Ans. 5)
wherein the Examiner depicts the fluid flowing in the same direction on
opposite sides of slit 58. More specifically, Appellants call the Examiner’s
proposed potential flow paths “nonsensical.” Reply Br. 2. According to
Appellants,
For such a flow path [as proposed by the Examiner] to develop,
the manifold 56 would need to have two fluid inlet ports and no
fluid outlet ports. Under this configuration, as the bladder is
filled with fluid simultaneously from both fluid inlet ports, the
two fluid flow paths are both in the same direction, at least until
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Appeal 2017-000164
Application 12/903,138
the bladder is completely filled with fluid. When the bladder is
completely filled, flow stops.
Id.
ANALYSIS
“[T]he level of detail required to satisfy the written description
requirement varies depending on the nature and scope of the claims and on
the complexity and predictability of the relevant technology.” Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc). Factors include “the existing knowledge in the particular field, the
extent and content of the prior art, the maturity of the science or technology,
and the predictability of the aspect at issue.” Id. (quotation omitted). Here,
we agree with Appellants that the technology is “relatively predictable and
not unduly complex.” App. Br. 5.
Appellants’ Specification explains that the present invention is
directed to an “articulated joint wrap that provides fluid circulation and
compression.” Spec. 111. Appellants’ Specification further discusses the
hose coupling assembly 56 that enables fluid circulation, as follows:
The lower portion of the cover 34 includes a padded extension
90 having an opening 92 for receiving the hose coupling
assembly 56 of the bladder 32.
Spec. 135.
FIGS. 7(A)-7(E) illustrate the attachment of the knee wrap to a
user’s leg. As shown in FIG. 7(A), the center slot is placed over
a user’s patella, with the knee slightly bent. Preferably, the hose
coupling assembly 56 is oriented towards the user’s foot to
minimize distraction from the control unit hoses. However, the
knee wrap of the present invention may be configured to attach
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Application 12/903,138
the control unit hoses at a user’s thigh, or other suitable location,
as desired.
Spec. 138.
This discussion, coupled with the originally filed drawings (see, e.g.,
FIG. 4(B)), render it reasonably clear that in order for fluid to circulate
through the bladder, as opposed to merely fill and drain from the bladder, the
disclosed hose coupling assembly necessarily includes an inlet and a
separate outlet. The unlabeled bladder-passage dividers of FIG. 4(B) further
reasonably indicate that the bladder has one overall continuous passage
extending from the hose coupling inlet to the hose coupling outlet.
As such, FIG. 4(B) depicts with reasonable clarity that, in use, fluid
will pass through the bladder in exactly one of two directions—clockwise or
counterclockwise. In either situation, the fluid flow on opposite sides of the
slit 58 necessarily will flow in opposite directions. The Examiner’s
assertion to the contrary is unsupported. The Examiner has not sufficiently
explained, as was alleged in the Examiner’s Answer, how fluid can flow into
both sides of the hose coupling assembly, and yet still circulate rather than
balloon.3 See Reply Br. 2—3.
For the foregoing reasons, Appellants have persuaded us of error in
the written-description rejection of independent claim 1. Accordingly, we
do not sustain the rejection of that claim, or of claims 21 and 25—27, which
also require fluid to flow on opposite sides of the slit in opposite directions.4
3 To be sure, FIG. 4(B) depicts additional dividers in the bladder’s upper and
lower sections that allow fluids to take alternate local paths in those regions.
But that fact does not affect the direction of flow past the slit 58.
4 We note for completeness that Appellants’ Specification incorporates by
reference the disclosure of Elkins (US 6,695,872 B2; issued Feb. 24, 2004)
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Application 12/903,138
DECISION
The Examiner’s decision rejecting claims 1,21, and 25—27 is
reversed.
REVERSED
for teaching the construction of a “heat exchange bladder [that] provides
both fluid circulation (i.e., cooling) and compression.” Spec. 129.
Although we do not rely on Elkins for reaching our conclusion that the
disputed claim language possesses adequate written description in the
originally filed Specification, Elkins further corroborates this finding.
7