Ex Parte Netsner et al

Patent Trial and Appeal BoardOct 21, 2016

12522984 (P.T.A.B. Oct. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/522,984 08/19/2009 23859 7590 10/25/2016 Ballard Spahr LLP SUITE 1000 999 PEACHTREE STREET ATLANTA, GA 30309-3915 FIRST NAMED INVENTOR Bengt N etsner 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 13302.0016Ul 4892 EXAMINER CARREIRO, CAITLIN ANN ART UNIT PAPER NUMBER 3772 NOTIFICATION DATE DELIVERY MODE 10/25/2016 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): USpatentmail@ballardspahr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BENGT NETSNER and CAMILLA JOHANSSON Appeal2014-009708 Application 12/522,984 Technology Center 3700 Before JOHN C. KERINS, FREDERICK C. LANEY, and SEAN P. O'HANLON, Administrative Patent Judges. O'HANLON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Bengt Netsner and Camilla Johansson (Appellants)1 appeal under 35 U.S.C. Â§ 134 from the Examiner's September 27, 2013 Final decision ("Final Act.") rejecting claims 1-7 and 9-13.2 We have jurisdiction over this appeal under 35 U.S.C. Â§ 6(b). 1 According to Appellants, the real party in interest is MOLNLYCKE HEAL TH CARE AB. App. Br. 1. 2 Claim 8 is canceled. Id. at 11 (Claims Appendix). Appeal2014-009708 Application 12/522,984 We REVERSE. SUMMARY OF DECISION SUMMARY OF INVENTION Appellants' claimed invention is directed to "an elongated, strip-like film bandage, comprising a plastic film, which on ... one side is coated with a skin-friendly adhesive, a protective layer detachably fixed to the adhesive coating, and a stiffening layer ... detachably fixed to the plastic film on the opposite side to the adhesive coating." Spec. 1: 5-9. Claim 1, reproduced below from page 10 (Claims Appendix) of the Appeal Brief, is the sole independent claim and is illustrative of the claimed subject matter: 1. An elongated, strip-like film bandage, comprising: a continuous plastic film, a continuous skin-friendly adhesive coating on one side of the plastic film, a continuous protective layer detachably fixed to the adhesive coating, and a stiffening layer detachably fixed to the plastic film on a side opposite to the adhesive coating, wherein the bandage is bellows-folded into a stack, such that each of the plastic film, the skin-friendly adhesive coating, and the protective layer is bellows-folded to form a continuous bandage. REJECTIONS Claims 1--4 are rejected under 35 U.S.C. Â§ 102(b) as being anticipated by Pellegrino (US 5,358,140, iss. Oct. 25, 1994). Claims 5 and 6 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Pellegrino and Greenwoll (US 2,292,995, iss. Aug. 11, 1942). 2 Appeal2014-009708 Application 12/522,984 Claims 7 and 9-11 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Pellegrino and Hack (US 6,096,942, iss. Aug. 1, 2000). Claims 12 and 13 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Pellegrino, Greenwoll, and Hack. ANALYSIS Anticipation Rejection The Examiner finds that Pellegrino discloses all of the elements of independent claim 1, including a stiffening layer (wrapping material 26)3 detachably fixed to a plastic film (backing 21 ). Final Act. 2. Appellants traverse the rejection, arguing, inter alia, that "Pellegrino ... does not teach a 'stiffening layer detachably fixed to the plastic film on a side opposite to the adhesive coating'" because Pellegrino's wrapping material 26 merely envelopes backing 21, but is not detachably fixed to backing 21. App. Br. 6. The Examiner answers that "because the wrapping material must be removed in order to use the bandage ... , it is inherent that it is 'detached' from the other components of the bandage in order to accomplish this task." Ans. 9. Appellants reply that the Examiner's findings are flawed because, inter alia, the Examiner "disregards the precise claim language, which recites that Appellants' stiffening layer is detachably 'fixed' to the plastic film, not merely 'detachable."' Reply Br. 9-10. "A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." Verdegaal Bros. v. Union Oil Co. of Cal., 814 F .2d 628, 631 (Fed. Cir. 1987). "[T]he prior art reference-in order to anticipate under 35 3 Parentheticals refer to the terminology of Pellegrino. 3 Appeal2014-009708 Application 12/522,984 U.S.C. Â§ 102-must not only disclose all elements of the claim within the four comers of the document, but must also disclose those elements 'arranged as in the claim.'" Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). We are persuaded by Appellants' arguments that the Examiner has failed to satisfy these requirements. Pellegrino discloses that "each adhesive bandage 20 is contained in a separate sterile compartment 25 formed by wrapping material 26" and that "[ w ]rapping material 26 is used to envelop bandages 20." Pellegrino 3: 18- 23 (emphases added). However, there is no disclosure in Pellegrino that the bandages are fixed to the wrapping material. To the contrary, Pellegrino's bandages are loosely contained within pockets formed by the wrapping material such that they can easily be removed from the wrapping material. See id. at 4:64---67 (discussing that Pellegrino allows for one-handed use, but "both hands likely are needed for a brief moment to remove bandage 20 from the detached portion of wrapping material 26"). Accordingly, we reverse the rejection of claim 1, as well as its dependent claims 2--4, as being anticipated by Pellegrino. Obviousness Rejections Neither Greenwoll nor Hack is relied upon by the Examiner in any manner that would remedy the deficiency noted above with respect to Pellegrino. Therefore, the rejections of claims 5-7 and 9-13 are similarly reversed. 4 Appeal2014-009708 Application 12/522,984 DECISION The Examiner's decision to reject claims 1-7 and 9-13 is reversed. REVERSED 5