Ex Parte Temple

Patent Trial and Appeal Board

Nov 28, 2016

12471895 (P.T.A.B. Nov. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/471,895 0512612009
7590 11/28/2016
Gifford, Krass, Sprinkle, Anderson & Citkowski,
P.C.
2701 Troy Center Drive, Suite 330
Post Office Box 7021
Troy, MI 48007-7021
FIRST NAMED INVENTOR
John Temple
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.
MMC-10903/29 6687
EXAMINER
KASZTEJNA, MATTHEW JOHN
ART UNIT PAPER NUMBER
3779
MAILDATE DELIVERY MODE
11/28/2016 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 JOHN TEMPLE
Appeal2013-007412
Application 12/471,895
Technology Center 3700
Before EDWARD A. BROWN, JILL D. HILL, and
LEE L. STEPINA, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEivIENT OF THE CASE
John Temple (Appellant) 1 appeals under 35 U.S.C. § 134(a) from the
Examiner's decision rejecting claims 1-8. We heard oral argument on
November 17, 2016. We have jurisdiction under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We AFFIRM and enter NEW GROUNDS OF REJECTION.
INVENTION
Claim 1 is the sole independent claim, and reads:
1. A system for warming an endoscope, laparoscope, or other
such instrument to minimize fogging, comprising:
1 John Temple is identified as the real party in interest. Appeal Br. 1.
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Application 12/471,895
a flexible pad having a length, a width and a periphery for
wrapping around the instrument;
the pad including a plurality of separate chambers defined
through partitions;
each of the separate chambers including an activation disc
and a mixture of water and sodium acetate to generate heat
through an exothermic reaction initiated through manual
manipulation of the disc for that chamber.
Appeal Br. 6 (Claims App.).
REJECTIONS
Claims 1---6 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Andrassy (US 3,463,161, issued Aug. 26, 1969) and Wang (US 5,205,278,
issued Apr. 27, 1993).
Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Andrassy, Wang, and Manker (US 4,872,442, issued Oct. 10, 1989).
Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Andrassy, Wang, and Gauthier (US 5,295,964, issued Mar. 22, 1994).
ANALYSIS
Obviousness of claims 1-6 over Andrassy and Wang
Claims 1 and 2
As to claim 1, the Examiner finds Andrassy discloses a temperature
maintaining device comprising a flexible pad including separate chambers
10, but does not disclose that "each of the separate chambers includ[es] an
activation disc and a mixture of water and sodium acetate to generate heat
through an exothermic reaction initiated through manual manipulation of the
disc for that chamber." Final Act. 2 (citing Wang Fig. 1 ). The Examiner
finds Wang teaches a chemical bag warmer including a bag filled with
sodium acetate solution provided with a metal activation disc to produce
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heat. Id. (citing Wang Abstract, Fig. 1 ). The Examiner concludes it would
have been obvious to include an activation disc and a sodium acetate
solution in each chamber of Andrassy, as taught by Wang. Id. at 3. The
Examiner explains the modification of Andrassy does not remove the
existing emulsion solution, but merely combines a heating source with the
invention of Andrassy. Ans. 5 (citing Andrassy col. 4, 11. 46-53).
Andrassy teaches heat retaining pads in which a portion of the water
may be replaced by paraffin or higher melting hydrocarbon material. See
Andrassy col. 3, 11. 66-70. Example V of Andrassy describes a composition
for use in heating pads. Id. at col. 4, 11. 39--51. Wang discloses a chemical
bag warmer containing a sodium acetate solution and a metal, disc-shaped
triggering member used to cause the solution to crystallize and generate
heat. See Wang col. 3, 11. 3-22, Fig. 1.
Appellant contends that Andrassy "simply states that a particular
composition 'is particularly suitable in heating pads'-not that it would be
obvious to bond the device of Andrassy to the device of Wang, if in fact
that's what the Examiner means." Reply Br. 2 (citing Andrassy col. 4, 11.
46-53).
We agree with Appellant. The Examiner does not explain adequately
how Andrassy would be modified to combine Wang's heating source with
its existing emulsion solution. For example, the Examiner does not explain
how the different solutions of Andrassy and Wang would be physically
combined with each other, or, if not combined, kept separated from each
other in each of the separate chambers of the pad.
Nonetheless, we sustain the rejection of claims 1 and 2 over the
combination of Andrassy and Wang, albeit for different reasons. Figure 2 of
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Wang shows sodium acetate solution 3 and triggering member 4 disposed in
a chamber of bag 2. Bag 2 can be considered a "flexible pad," as claimed.
Wang does not disclose that bag 2 is "for warming an endoscope,
laproscope, or other such instrument to minimize fogging," as recited in the
preamble of claim 1. However, this limitation recites an intended use of the
"system." It does not appear to impose any structural difference on the
system.
Claim 1 recites that the flexible pad is "for wrapping around the
instrument." This limitation recites a function of the pad, but does not
appear to further limit the shape and/or size of the pad. Wang does not
appear to disclose that bag 2 is used "for wrapping around" "an endoscope,
laproscope, or other such instrument." Even if Wang does not explicitly
disclose this use of the disclosed structure, "[i]t is well settled that the
recitation of a new intended use for an old product does not make a claim to
that old product patentable." In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir.
1997). Wang's bag is described as "a soft PVC, P.P. or P.U bag." Wang,
col. 3, 11. 6-7. Further, Wang places its triggering member within the bag,
and a user triggers a heat-generating crystallization reaction by applying
pressure to the trigger member in this location. Id. at col. 3, 11. 8-27. Thus,
Wang's bag is flexible. We find Wang's bag 2 is capable of providing the
claimed function of the flexible pad, as the claim recites no limitation on the
size of the instrument.
Wang does not disclose that bag 2 "include[ es] a plurality of separate
chambers defined through partitions," and "each of the separate chambers
includ[ es] an activation disc and a mixture of water and sodium acetate to
generate heat through an exothermic reaction initiated through manual
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Application 12/471,895
manipulation of the disc for that chamber," as claimed. However, it would
have been obvious to one of ordinary skill in the art to modify Wang's bag 2
to include these limitations. Wang discloses that the bag is sealed. Wang
col. 4, 11. 8-12. It would have been obvious to provide two or more separate
chambers through partitions in the modified bag. This could be achieved by
forming a seal extending parallel to opposed sides of bag 2, at a location
between the opposed sides shown in Figure 1. In this regard, Andrassy
discloses lines 4, 6 defining compartments in the pad for containing a
composition used for heating purposes. The sealed regions would form
partitions between the chambers, or bags, making plural separate chambers
in Wang an obvious variant.
Alternatively, two or more bags 2 shown in Figure 1 of Wang could
be combined with each other, effectively duplicating bag 2 and producing a
bag defining a plurality of separate chambers. The separate chambers would
be defined by partitions between adjacent bags. Although Wang does not
disclose a plurality of separate chambers, "[i] is well settled that the mere
duplication of parts has no patentable significance unless a new and
unexpected result is produced. In re Harza, 274 F.2d 669, 671 (CCPA
1960). Appellant has not established any unexpected result associated with
the claimed system. Modifying Wang's bag 2 to include two or more
separate chambers, each including an activation disc and sodium acetate
mixture, would allow selective activation and heating of each chamber, and
would provide the expected advantage of permitting a user to selectively
control heating of an object by the bag.
We therefore exercise our discretion under 37 C.F.R. § 41.50(b) and
designate our affirmance of the rejection of claim 1 and dependent claim 2,
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Application 12/471,895
which Appellant does not separately argue, over Andrassy and Wang as a
new ground the rejection under 35 U.S.C. § 103(a).
Claims 3-6
Claims 3-6 each depend from claim 1, and require at least some of the
partitions to establish fold lines in the pad. Appeal Br. 6 (Claims App.). As
discussed above, the modified bag of Wang would include partitions
defining two or more separate chambers. The bag would be foldable along
at least some of the partitions, allowing it to conform to an object to be
heated by the bag. Accordingly, the partitions would provide "fold lines," as
claimed. We also note that Figure 2 of Andrassy shows a cap 20 applied to a
user's head, and Figure 3 shows pads applied to a user's shoulder at 26,
elbow at 28, and wrist at 30. These figures show that Andrassy's pads have
the capability of being flexed or folded along lines.
Regarding the orientation of the partitions, we conclude that it would
have been obvious to one of ordinary skill in the art to form the partitions in
the modified bag of Wang such that either "at least some of the partitions
establish lengthwise fold lines in the pad" (claim 4 ), or "at least some of the
partitions establish widthwise fold lines in the pad" (claim 5). The
direction(s) of the fold lines in the modified bag would allow the bag to be
folded, for example, for storage purposes, as well as to conform to objects
having different and/or complex shapes.
We affirm the rejection of claims 3---6 as unpatentable over Andrassy
and Wang, and designate our affirmance as a new ground the rejection.
Obviousness of claim 7 over Andrassy, Wang, and Manker
Claim 7 recites that "each activation disc is made of perforated
stainless steel." Appeal Br. 7 (Claims App.). Although Wang discloses that
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triggering member 4 is made of metal, Wang does not specify that the metal
is stainless steel.
The Examiner finds Manker teaches use of an activator in the form of
a stainless steel disc for initiating a reaction in a heat pack. Final Act. 4--5
(citing Manker col. 5, 11. 20-37). Manker discloses that the aqueous salt
solution in which a crystallization reaction is activated or initiated can
contain sodium acetate in water. See Manker col. 6, 11. 54--62. In view of
this teaching, we conclude that it would have been obvious to make Wang's
triggering member 4 of stainless steel to initiate or activate a crystallization
reaction in Wang's sodium acetate solution 3. Such a modification would
have been merely a combination of prior art elements according to known
methods to yield predictable results. One of ordinary skill could have
implemented the stainless steel material taught by Manker in the bag of
Wang just as Manker does in its own device, and the material would merely
perform the same function it already does in Manker's device, and Wang's
metal triggering member 4 does in its device. Accordingly, we affirm the
rejection of claim 7 as unpatentable over Andrassy, Wang, and Manker, and
designate our affirmance as a new ground the rejection.
Obviousness of claim 8 over Andrassy, Wang, and Gauthier
Claim 8 depends from claim 1 and recites "further including one or
more pieces of tape or other tabs to secure one edge of the pad to another
once wrapped around an instrument to be warmed." Appeal Br. 7 (Claims
App.). Appellant's Specification describes "fasteners such as hook-and-loop
tabs." Spec. ,-r 33.
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The Examiner finds that Gauthier teaches this limitation. Final Act. 5
(citing Gauthier col. 2, 11. 24--33). Gauthier discloses the use of suitable
fasteners, such as hook-and-pile fasteners, for securing a heat pack.
See Gauthier col. 2, 11. 30-33.
In Andrassy, Figure 2 shows strap 24 provided on cap 20, and Figure
3 depicts a fastening element provided on a pad covering elbow 28. See also
Andrassy col. 5, 11. 56-65. In view of these teachings in Gauthier and
Andrassy, we conclude that it would have been obvious to one of ordinary
skill in the art to modify Wang to include one or more tabs, such as hook-
and-loop tabs, to secure one edge of the pad to another edge once the pad is
wrapped around an object to be warmed. This modification would allow the
modified bag of Wang to be retained on an object to provide effective
heating. The recitation of "an instrument" in claim 8 is an intended use of
the pad. We find Wang's modified pad would be capable of being wrapped
around such an instrument to be warmed, as the claims do not recite any
limitation on the size of the instrument. Accordingly, we affirm the
rejection of claim 8 as unpatentable over Andrassy, Wang, and Gauthier, and
designate our affirmance as a new ground the rejection.
DECISION
The Examiner's decision rejecting claims 1-6 under 35 U.S.C.
§ 103(a) as unpatentable over Andrassy and Wang is affirmed and
designated as a NEW GROUND OF REJECTION.
The Examiner's decision rejecting claim 7 under 35 U.S.C. § 103(a)
as unpatentable over Andrassy, Wang, and Manker is affirmed and
designated as a NEW GROUND OF REJECTION.
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The Examiner's decision rejecting claim 8 under 35 U.S.C. § 103(a)
as unpatentable over Andrassy, Wang, and Gauthier is affirmed and
designated as a NEW GROUND OF REJECTION.
FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, [Appellant], within
two months from the date of the decision, must exercise one of the following
two options with respect to the new ground[ s] of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded
to the examiner. The new ground[ s] of rejection [are]
binding upon the Examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground[s] of
rejection designated in this decision. Should the examiner
reject the claims, [Appellant] may again appeal to the Board
pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of
rejection and state with particularity the points believed to
have been misapprehended or overlooked in entering the
new ground of rejection and also state all other grounds
upon which rehearing is sought.
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Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)
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