Ex Parte Tennican et al

Patent Trials and Appeals Board

Mar 20, 2019

13757423 - (D) (P.T.A.B. Mar. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/757,423 02/01/2013
29150 7590 03/22/2019
LEE & HA YES, P.C.
601 W. RIVERSIDE A VENUE
SUITE 1400
SPOKANE, WA 99201
FIRST NAMED INVENTOR
Patrick 0. Tennican
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.
H014-0010US 1365
EXAMINER
HAWTHORNE, OPHELIA AL THEA
ART UNIT PAPER NUMBER
3786
NOTIFICATION DATE DELIVERY MODE
03/22/2019 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):
lhpto@leehayes.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte PATRICK 0. TENNICAN and L. MYLES PHIPPS 1
Appeal2018-004088
Application 13/757,423
Technology Center 3700
Before JENNIFER D. BAHR, BENJAMIN D. M. WOOD, and
MICHELLE R. OSINSKI, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-3 and 5-20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 H yprotek, Inc. (Appellant) is the applicant as provided in 3 7 C.F .R. § 1.46
and is identified as the real party in interest. Appeal Br. 3.
Appeal2018-004088
Application 13/757,423
THE CLAIMED SUBJECT MATTER
Appellant's disclosed invention is directed to "medical applicators and
patches designed to reduce and/or prevent infections." Spec. ,r 9. Claims 1,
8, and 15 are independent, and claim 1, reproduced below with pertinent
language italicized for emphasis, is representative of the claimed subject
matter.
1. A medical patch for creating or maintaining an area of human
issue [sic] free of one or more contaminants comprising:
an adhesive fixed to a perimeter of an impermeable
backing, the impermeable backing including one or more
removable windows, wherein each of the one or more removable
windows are removable to expose one or more access sites on
the area;
a permeable layer coupled to the impermeable backing
interior to the adhesive; and
an antimicrobial agent located within the permeable layer,
the antimicrobial agent comprising at least one or more of water,
hydrogen peroxide, a chelator, or an alcohol.
Appeal Br. 17, 18, 20 (Claims App.).
REJECTIONS
I. Claims 1-3, 5-10, 12, and 14 stand rejected under
35 U.S.C. § I03(a) as unpatentable over Boyde (US 7,118,545 B2,
issued Oct. 10, 2006) and Propp (US 8,486,004 B 1, issued July 16,
2013, as evidenced by Budnick (US 4,188,234, issued Feb. 12,
1980)).
II. Claims 11 and 13 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Boyde, Propp, and Brugger (US 2011/0295207
Al, published Dec. 1, 2011).
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Application 13/757,423
III. Claims 15 and 17-20 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Boyde, Propp (as evidenced by Budnick), and
Utterberg (US 2010/0076362 Al, published Mar. 25, 2010).
IV. Claim 16 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Boyde, Propp (as evidenced by Budnick), Utterberg, and
Brugger. 2
DISCUSSION
The sole issue raised in this appeal is whether the Examiner erred in
finding that Boyde' s flap 14 is a removable window as recited in each of
claims 1, 8, and 15. See Appeal Br. 8-15; Reply Br. 2--4; Ans. 2, 8 (citing
Boyde, Figs. 1, 2). Citing a dictionary definition of "removable,"
presumably as derived from "remove," meaning "to move from a place or
position occupied," the Examiner posits that Boyde' s disclosure of flap 14
being "selectively movable from a closed position covering opening 26 to an
open position" in which "opening 26 is uncovered" satisfies the limitation in
claims 1, 8, and 15 of "one or more removable windows, wherein each of the
one or more removable windows are removable to expose one or more
2 In the Final Action (dated May 19, 2017), the Examiner rejected claim 16
under 35 U.S.C. § I03(a) as unpatentable over "Gisselberg" and Brugger.
Final Act. 10. However, in the Answer, the Examiner states that the
reference to Gisselberg in the Final Action was unintentional, and clarifies
that it was the Examiner's intention to rely on the references cited in
rejecting claim 15 in view of Brugger. See Ans. 12-13; see id. at 10
(rejecting claim 10 based on "Boyde/Propp/Utterberg ... and further in view
of Brugger") (boldface omitted). Appellant recognized the Examiner's error
in the Final Action and, thus, is not prejudiced thereby. See Appeal Br. 14--
15 ( contemplating that the Examiner intended to cite the references cited in
the rejection of claim 15, from which claim 16 depends).
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Application 13/757,423
access sites on the area." Advisory Act. 2; Appeal Br. 17, 18, 20 (Claims
App.).
Appellant disputes the Examiner's finding. Appeal Br. 8. Appellant
points out that Boyde discloses that flap 14 is attached to frame 12 at one
side so as to be resealable in a waterproof manner that avoids having to
replace bandages frequently. Id. at 8-9; see Boyde 1 :66-2:6 (setting forth
objectives of the invention, including providing a wound dressing that
"eliminates or reduces the damage and/or irritation caused to the skin from
constant replacement of the wound dressing"); id. 2: 16-23 ( disclosing "a
flap having a plurality of edges" and being "attached to the frame via a
corresponding edge of the flap and the frame"); id. 4: 16-22 ( describing flap
14 attached to frame 12 "via a corresponding edge of flap 14 and frame 12"
such that "flap 14 may pivot along crease 34 defined by edge 30d and edge
26d to allow flap 14 to be selectively movable from a closed position
covering opening 26 to an open position" in which "opening 26 is
uncovered") (boldface omitted). Appellant argues that "[t]here is simply no
support" in Boyde "indicating that the flap should or could be completely
removed because the underlying idea of Boyde is to provide a means of
quickly resealing the flap to minimize risk of infection and reduce the need
to change the bandage as often due to the potential discomfort." Appeal
Br. 9.
Appellant argues that, "even if the plain language definition of
'removable' from one source could lead the Examiner to potentially include
a mere movement of an object from a position without complete removal
thereof, such an interpretation is" inconsistent with the manner in which
"removable" is used in Appellant's Specification. Id. at 10-11. Appellant
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Application 13/757,423
contends that a person having ordinary skill in the art would understand
from the Specification's description of "removable windows" that
"correspond with one or more incision and/or penetration sites," and that
may be peeled away by a user, that "removable windows" are "windows
[that] are completely separable by peeling away from the patch," not
"merely moved from a place, as asserted by the Examiner." Appeal Br. 11
(citing Spec. ,r 25). Thus, according to Appellant, Boyde's flap, which stays
attached and is "not completely removable," but, rather, is "only temporarily
movable" and could interfere with surgical tools at the incision/penetration
sites by flapping back into the sites where the tools are being used, is not a
removable window as recited in claims 1, 8, and 15. Id.
Appellant also asserts that "the text of Boyde shows that those skilled
in the art have a clear understanding of the distinction between 'removable'
and 'movable."' Id. at 9. In particular, Appellant points out that "Boyde
uses the term 'removable' (or a version thereof) five times," all in the sense
of "complete separation of one thing ( e.g., adhesive or dressing) from
another thing (e.g., a patient's skin)." Id. at 9-10 (citing Boyde 1: 19--42;
3:49-57; id., claim 3). By contrast, Appellant adds, Boyde never uses the
term "removable" with respect to flap 14. Id. at 10; see Boyde 4:16-22
( describing flap 14 as "selectively movable").
The Examiner responds that Appellant's claims 1, 8, and 15 do not
recite that the window is completely removable, and suggests that
Appellant's arguments attempt to read limitations from the Specification into
the claims. Ans. 12. Moreover, the Examiner finds that, even assuming a
completely removable window were recited in claims 1, 8, and 15, Boyde's
flap 14 is completely removable, in that crease 34 allows flap 14 to be
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Application 13/757,423
completely removed. Id. According to the Examiner, when in the closed
position, Boyde's flap 14 (made of transparent material) forms a window,
and, "when removed from the closed position to the open position, the
window disappears, [and,] as such[,] is completely removable." Id.
When claim terminology is construed in patent applications in the
United States Patent and Trademark Office, claims are to be given their
broadest reasonable interpretation consistent with the specification, reading
claim language in light of the specification as it would be interpreted by one
of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004).
As discussed above, Appellant does not dispute, and appears to
concede, that the definition of the term "removable" (i.e., capable of being
moved from a place or position occupied) provided by the Examiner is the
plain language definition of this term. Appeal Br. 10. However, Appellant
submits that Appellant's Specification would lead one of ordinary skill in the
art to construe "removable windows" as recited in claims 1, 8, and 15 as
"windows [that] are completely separable by peeling away from the patch."
Appeal Br. 11 (citing Spec. ,r 25). For the reasons that follow, Appellant's
Specification does not clearly convey that the term "removable" is used in
the present application in a manner different from its established plain
language definition.
Appellant's Specification discloses "one or more removable windows
108." Spec. ,r 25. The Specification also discloses that "[a]t the time of
incision and/or penetration, a user may peel or otherwise remove the one or
more windows to expose the site" and that, "[f]or example, as illustrated in
FIG. lB, a user may peel away the three removable windows 108 which may
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correspond to the three incision or penetration sites for a common
arthroscopic knee surgery." Id. Figure lB of the present application is
reproduced below.
FIG.18
Figure lB depicts an adhesive side/underside view of adhesive patch
100, with adhesive material 104 shown in light gray shading and permeable
layer 106 shown in darker gray shading with generally elliptically shaped
interruptions in the darker gray shading to represent openings in permeable
layer 106. Figure lB also includes lead lines from reference numeral 108 to
dashed lines adjacent each of the openings, following generally the shape of
half of the periphery of one of the openings, but offset from the opening
along the major axis of the generally elliptical opening. Spec. ,r,r 6, 23.
The Specification identifies elements 108 as "removable windows."
Id. ,r 25. We understand the dashed lines in Figure lB to represent the
windows being peeled away from, but still attached to, either permeable
layer 106 or impermeable layer 102. Although one reading paragraph 25 of
Appellant's Specification in conjunction with Figure lB might contemplate
the possibility that Figure lB depicts the peeling away of removable
windows 108 prior to completion of the peeling away, and, thus, might
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Application 13/757,423
envision that windows 108 can ultimately be fully detached from the patch
(i.e., from permeable layer 106 or impermeable layer 102), neither Figure lB
nor the description of Figure lB is clear in this regard. One of ordinary skill
in the art might also reasonably interpret Figure lB as showing windows 108
at the completion of the process of peeling them away or removing them so
as to uncover the openings in permeable layer 106 to provide access to the
three incision or penetration sites. Moreover, the Specification describes
removal by peeling away as exemplary only, and leaves open the possibility
of "otherwise remov[ing]" the windows. Spec. ,r 25.
Appellant does not direct our attention to, nor do we find on our own,
any disclosure of completely and/or permanently detaching the windows
from the patch or any concern about the windows interfering with surgical
tools if the windows were not so detached. In other words, Appellant's
Specification and Figure lB do not clearly convey to a person having
ordinary skill in the art that "removable windows" are required to be
completely detachable from the patch.
Thus, the Examiner's construction of "removable" as capable of being
moved from a place or position occupied is consistent with the disclosure in
Appellant's Specification and, as such, is the broadest reasonable
construction. Further, the Examiner's position that Boyde's flap 14 is a
"removable" window that is "removable to expose one or more access sites
on the area," as recited in claims 1, 8, and 15, by virtue of it being capable of
being moved, by pivoting about crease 34, from a closed position covering
opening 26 to an open position uncovering (i.e., exposing) opening 26, is
reasonable and is consistent with the disclosure in Appellant's Specification
and Figure 1 B.
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We have carefully considered the instances of Boyde's use of
"removal " "removing " "removable " and "movable" alluded to by
' ' '
Appellant (Appeal Br. 9-10), but we are not persuaded that they evidence a
clear understanding among those skilled in the art of a distinction between
the term "removable" and the selectively movable flap 14 disclosed by
Boyde.
For the above reasons, the Examiner did not err in finding that
Boyde's flap 14 is a removable window as recited in each of claims 1, 8, and
15. Thus, Appellant fails to apprise us of error in the rejections of claims 1-
3 and 5-20 under 35 U.S.C. § 103(a), which we, thus, sustain.
DECISION
The Examiner's decision rejecting claims 1-3 and 5-20 is
AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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