Ex Parte Robertson et al

Patent Trial and Appeal Board

Dec 19, 2012

11057727 (P.T.A.B. Dec. 19, 2012)

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.
11/057,727 02/14/2005 Matthew A. Robertson 60021390-0002 6287
7590 12/19/2012
Charles Livingston
1804 Hickory St.
St. Louis, MO 63104
EXAMINER
YU, JUSTINE ROMANG
ART UNIT PAPER NUMBER
3771
MAIL DATE DELIVERY MODE
12/19/2012 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 MATTHEW A. ROBERTSON and
JAMES E. AHERN
__________

Appeal 2011-000143
Application 11/057,727
Technology Center 3700
__________

Before ERIC GRIMES, JACQUELINE WRIGHT BONILLA, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

BONILLA, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims directed to
an apparatus used to scratch the skin beneath a covering, such as a cast or
bandage. The Examiner has rejected the claims as anticipated and obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
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STATEMENT OF THE CASE
The Specification describes an apparatus “for scratching beneath a
covering,” such as a cast, splint, or bandage (Spec. 1).
Claims 8-12, 35, and 36 are on appeal. Claim 35, the only
independent claim, is representative and reads as follows (emphasis added):
35. Apparatus for scratching beneath a covering, said apparatus
comprising:
an elongate body sized to be at least partially received between
the covering and skin covered by the covering;
a plurality of protrusions extending outwardly from the body
for scratching an outer surface of the covered skin, wherein the
plurality of protrusions are arranged sequentially along a
longitudinal axis extending through a length of the body such that the
protrusions are spaced apart from each other along the length of the
body.
Claims 35, 36, and 8-11 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Hayday (U.S. Patent No. 4,667,659, issued May 26, 1987).
Claim 12 stands rejected under 35 U.S.C. § 103(a) as obvious over Hayday.
I.
Findings of Fact
1. Figures 1, 3, and 11 in the instant Specification show the following:
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Figure 3
Figure 1 of the Specification depicts a cut-away view of an apparatus (20)
for scratching beneath a covering (24), where the apparatus is partially
received beneath the covering. (Spec. 3.) Figure 3 shows a side elevation of
the apparatus shown in Figure 1, including protrusions (28). (Id.) Figure 11
provides a detailed view of protrusions 28 that each extend outward from the
body 22. (See e.g., Spec. 8.)
2. Figures 1-3 in Hayday show the following:
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Figure 1 depicts a perspective view of a “skin massaging device” that
relieves itching (Hayday, col. 3, ll. 10-11, 57-60). Figure 2 presents a
sectional view along line II-II of Figure 1 (id. at l. 12). Figure 3 depicts
perspective view showing a use of the device (id. at ll. 13-14).
3. As disclosed in Hayday, “[o]ne surface 12 of the strip 10 carries a
plurality of randomly spaced, outwardly-extending protrusions 16 and the
other surface 14 has a plurality of rounded indentations therein, with the
remaining areas of the outer surface 14 being smooth” (id. at ll. 22-27).
Analysis
The claim language at issue recites protrusions “arranged sequentially
along a longitudinal axis extending through a length of the body such that
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the protrusions are spaced apart from each other along the length of the
body” (claim 35) (emphasis added). Appellants argue that Hayday does not
describe this element (App. Br. 10). Appellants note that “Hayday describes
a strip 10 having a plurality of ‘randomly spaced, outwardly extending’
protrusions 16” (id. (citing Hayday, col. 3, ll. 23-25; see also FF 3)).
Appellants assert that a “random arrangement along the length of a strip is
not the same as a sequential arrangement along the length of a strip” (id.)
Appellants also argue that “protrusions that overlap along the length
of a strip are not spaced apart along the length of the strip, as is claimed” (id.
at 11). Appellants state that “if the protrusions 16 were spaced apart along
the length of the strip, the perpendicular cross section of Figure 2 of Hayday
would only intersect one of the protrusions 16” (id.).
Appellants’ arguments do not persuade us that the Examiner has
erred in finding claim 35 anticipated by Hayday. “[D]uring examination
proceedings, claims are given their broadest reasonable interpretation
consistent with the specification.” In re Hyatt, 211 F.3d 1367, 1372 (Fed.
Cir. 2000). The instant Specification refers to the term “sequentially” only
once, where it states:
Although the protrusions 28 may be arranged in any suitable
configuration (e.g., side by side or staggered) without departing from
the scope of the present invention, in the embodiment illustrated in
Figs. 1-4, 11, 12, 13, and 18, the protrusions 28 are arranged
sequentially along the longitudinal axis 36 of the body 22.
(Spec. 9.) Such disclosure does not indicate that “sequentially along”
excludes protrusions that are randomly spaced along a length of a body. At
most, this disclosure also describes protrusions that are arranged “side by
side,” i.e., perpendicular to the length of the body, or “staggered,” e.g.,
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reeling “from side to side” or arranged “in any of various zigzags,
alternations, or overlappings of position.”1 This disclosure does not define
“sequentially” as narrowly as Appellants assert.
The ordinary meaning of “sequential” means “arranged in a
sequence,” i.e. in a “continuous or connected series,” or “coming one after
another in spatial or temporal succession.”2 Such a definition is consistent
with the Specification and what is shown in drawings in the Specification,
such as Figures 1, 3, and 11 (FF 1).
As found by the Examiner, Hayday discloses protrusions that are
arranged sequentially along the longitudinal axis of the length of the strip
(Ans. 3). In Figure 1 of Hayday, for example, protrusions come one after
another along the length of the strip at a given longitudinal axis, even if the
distance between each protrusion is not the exactly the same as they go
along the strip (FF 2). Thus, Hayday discloses a relevant apparatus having
protrusions that are “arranged sequentially” as recited in claim 35. (See,
Ans. 3.)
The Specification does not define the phrase “spaced apart.” As such,
the Specification does not indicate that “spaced apart from each other”
means that any and all protrusions must be spaced in such a way so that a

1 See, e.g., Merriam-Webster Dictionary, http://www.merriam-
webster.com/dictionary/staggered (defining “stagger”) (last visited Dec. 14,
2012).
2 See, e.g., Merriam-Webster Dictionary, http://www.merriam-
webster.com/dictionary/sequential (defining “sequential”);
http://www.merriam-webster.com/dictionary/sequence (defining
“sequence”); http://www.merriam-webster.com/dictionary/serial (defining
“serial”) (all last visited Dec. 14, 2014).
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given perpendicular cross section of a strip intersects only one protrusion.
Moreover, claim 35 itself is not limited in this fashion—claim 35 recites an
apparatus comprising a plurality of protrusions arranged as recited. Even if
certain perpendicular cross sections of Hayday’s apparatus as shown in
Figure 1, such as the cross section shown in Figure 2 (FF 2), intersect more
than one protrusion, that does not mean no protrusions in Hayday’s device
are “arranged sequentially … such that the protrusions are spaced apart from
each other along the length” of the strip (claim 35).
Regarding dependent claims 8-11 and 36, Appellants argue that these
claims “further recite subject matter that is not anticipated nor rendered
obvious by the cited references” without providing additional argument or
evidence (App. Br. 12). Thus, for the same reasons discussed above,
Appellants’ arguments do not persuade us that the Examiner has erred in
finding claims 8-11 and 36 anticipated by Hayday.
II.
Regarding the rejection of dependent claim 12 as obvious over
Hayday, Appellants argue that this claim “further recites subject matter that
is not anticipated nor rendered obvious by the cited references,” without
providing additional argument or evidence (id.). Thus, for the same reasons
discussed in the section above, Appellants’ arguments do not persuade us
that the Examiner has erred in concluding that claim 12 is obvious over
Hayday.
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SUMMARY
We affirm the rejection of claims 35, 36, and 8-11 under 35 U.S.C.
§ 102(b) as anticipated by Hayday, as well as the rejection of claim 12 under
35 U.S.C. § 103(a) as obvious over Hayday.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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