Ex Parte van Oudenallen et al

Patent Trial and Appeal Board

Aug 14, 2017

13220383 (P.T.A.B. Aug. 14, 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.
13/220,383 08/29/2011 Robertus Gerardus van Oudenallen RYM-4851-128 1667
23117 7590 08/16/2017
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
HOEY, ALISSA L
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
08/16/2017 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERTUS GERARDUS VAN OUDENALLEN and
BEREND JAN TEUNISSEN
Appeal 2016-001178
Application 13/220,3 831
Technology Center 3700
Before LINDA E. HORNER, STEFAN STAICOVICI, and
ANTHONY KNIGHT, Administrative Patent Judges.
KNIGHT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35U.S.C. § 134(a) from the Examiner’s final
decision rejecting claims 9-24. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is The Surgical Company
International B.V. App. Br. 3.
Appeal 2016-001178
Application 13/220,383
CLAIMED SUBJECT MATTER
The claims are directed to a system for warming the body of a human.
“More particularly, this invention pertains to passive warming and active
warming before, during, and after surgery or other medical procedures.”
Spec. ]|3. Claims 9, 23, and 24 are independent. Claim 9, reproduced
below, is illustrative of the claimed subject matter:
9. An apparatus for providing temperature control of a
patient, said apparatus comprising:
a first sheet defining a thorax portion and a pair of sleeves,
said first sheet having an inside surface that is proximate the
patient when the patient is wearing said first sheet;
a second sheet having a periphery attached to said first
sheet with an air tight seal, said first sheet and said second sheet
defining a first chamber between said second sheet and a portion
of said first sheet proximate said second sheet, said second sheet
being air impermeable, said portion of said first sheet being air
permeable, said first and second sheets defining an upper body
portion;
a first inlet defined by a passage in said first sheet into said
first chamber, said first inlet configured to connect with an air
hose;
a third sheet having an inside surface that is proximate the
patient when the patient is wearing said third sheet;
a fourth sheet having a periphery attached to said third
sheet with an air tight seal, said third sheet and said fourth sheet
defining a second chamber between said fourth sheet and a
portion of said third sheet proximate said fourth sheet, said fourth
sheet being air impermeable, said portion of said third sheet
being air permeable, said third and fourth sheets defining a lower
body portion which is configured to wrap completely around the
legs of the patient when the patient is wearing said lower body
portion;
a second inlet defined by a passage in said third sheet into
said second chamber, said second inlet configured to connect
with said air hose; and
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a connector releasably joining a bottom of said upper body
portion and a top of said lower body portion.
App. Br. 30-31, Claim Appendix.
EVIDENCE RELIED ON BY THE EXAMINER
Clark
Thompson
Poettgen
Anderson
Van Oudenallen
US 818,351
US 1,489,046
US 4,945,924
US 2008/0177361 A1
US 2013/0231723 A1
Apr. 17, 1906
Apr. 1, 1924
Aug. 7, 1990
July 24, 2008
Sept. 5, 2013
REJECTIONS
The Examiner made the following rejections:
1. Claims 9-20 stand provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 9-20 of copending application 13/819,498 (“the ’498 application”).2
2. Claims 9, 21-24 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
3. Claims 9-13, 15, 16, 19, and 20-24 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Anderson and Clark.
4. Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Anderson, Clark, and Thompson.
5. Claims 17 and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Anderson, Clark, Thompson, and Poettgen.
OPINION
2 Van Oudenallen, US 2013/0231723 A1 is a copy of the ‘498 application as
originally filed.
3
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Rejection 1 — The rejection of claims 9—20 under
nonstatutory obviousness-type double patenting
In the Final Action, the rejection of claims 9-20 is based upon
provisional obviousness-type double patenting over claims 9-20 of the ’498
application. Appellants have not contested this provisional rejection.3
Further, according to USPTO records, claims 9-20 of the ‘498 application
were withdrawn without traverse on August 25, 2016. Given the provisional
nature of the rejection and the status of the claims in the ‘498 application, we
exercise our discretion and decline to rule on this rejection. See Ex parte
Moncla, 95 USPQ2d 1884 (BPAI 2010)(precedential). We leave this issue
for the Examiner to consider should further prosecution occur in the
application on appeal.
Rejection 2 — The rejection of claims 9 and 21—24 under
35 U.S.C. § 112, first paragraph
A. The Examiner’s Position
The Examiner in making the rejection of claims 9 and 21-24 under 35
U.S.C. § 112, first paragraph, finds that the claims do not to comply with
the written description requirement. For claim 9, the Examiner writes,
“[tjhere is no support in the specification for the third and fourth sheet[s]
being ‘configured to wrap completely around the legs of the patient when
the patient is wearing said lower body portion.’” Final Act. 6^7. The
Examiner finds for claims 21 and 22, that “[tjhere is no support in the
specification for ‘a fifth sheet attached to the lower body portion and
configured to cover the patient’s feet.’” Id. at 6 ^ 8. With respect to claim
3 Appellants contend, however, that the application on appeal is the earlier
filed application, and, as such, if the claims are found allowable, the
Examiner should withdraw the double patenting rejection. App. Br. 10 n.l.
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23, the Examiner states that “[tjhere is no support in the originally filed
disclosure for the third and fourth sheets being ‘configured to wrap
completely around the legs of the patient between the patient’s knees and
ankles when the patient is wearing said lower body portion and said
sleeves.’” Id. 7 ^ 9. The basis for the rejection of claim 24 is similar to that
as stated for claims 21 and 22. Id. at 7 ^ 10.4
B. Appellants’ Position
Appellants argue that the Specification provides support for the
disputed terms in the description of the invention or in the drawings. App.
Br. 10-16. Appellants argue that there is no “in haec verba” requirement as
to the claimed subject matter being supported by the specification. Id. at 10.
Appellants point to paragraphs 111 and 113 and also to Figures 1 and 3-5
for support of the disputed language of claim 9. Id. at 11. Specifically,
Appellants argue that “[pjaragraph [00111] states ‘[t]he lower body portion
1504 includes an outer sheet 1702 and an inner sheet 1704.’ . . . Paragraph
[00113] states that ‘[t]he outer sheet 1702 has a width sufficient to wrap
around the lower body of the patient 102.’” Id. Appellants also point to
Figures 1, 3-5 and 15 as “[illustrating] a lower portion that is completely
around the patient’s legs.” Id.
Again, Appellants argue for claims 21 and 22, that there is no “in haec
4 Corresponding objections to the Specification as failing to provide proper
antecedent basis for the claimed subject matter are made by the Examiner.
Id. at 7 ^ 12-8 15. The objections to the Specification are petitionable, not
appealable, and we decline to address them in this opinion. See MPEP
§ 1002.02(c)(4) (enumerating that petitions relating to objections are
petitionable); Ex Parte Frye, 94 USPQ2d 1072, 1078 (BPAI
2010)(precedential) (“The Board will not ordinarily hear a question that
should be decided by the Director on petition.”).
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verba” requirement as to the claimed subject matter. Id. at 12. Appellants
point to paragraphs 49, 56, and 102 of the Specification and Figures 4, 5 and
9-14 for support of the disputed claim language in this instance. See id.
(“Paragraph [0056] states that ‘[t]he drape 106 extends distally from the hem
116 of the leg portion 112 to beyond the patient’s feet.’”) See also id. at 12-
13 (“Paragraph [0049] also describes that the drape 106 and the leg portion
112 can include the same material. Paragraph [00102] explains that the
lower body portion 1504 is made from inner and outer sheets 1602, 1604.”)
With respect to the rejection of claim 23, Appellants’ arguments are
similar to the arguments advanced for claim 9. Id. at 14-15. Further, with
respect to claim 24, Appellants’ arguments in support of claim 24 mirror the
arguments for claims 21 and 22. Id. at 16.
C. Examiner’s Answer
In response to Appellants’ arguments, the Examiner states that the
Specification only uses the word “completely” at one point and not in
reference to the third and fourth sheet, and the drawings do not illustrate the
ankles and feet being completely covered. Ans. 2-3 ^ 2(A) and 4 2(C).
Further, the Examiner states that the Specification does not describe a “fifth
sheet.” Id. at 3 ^ 2(B). Finally, the Examiner states that “it is unclear if a
drape is inherently an ‘attached fifth sheet.’” Id. at 4 2(D).
D. Appellants’ Reply Brief
In the Reply Brief, Appellants respond that “[t]he error in the
Examiner’s Answer lies in failing to interpret the claims in light of and
consistent with the written description.” Reply Br. 2. Appellants argue,
“Claim 9 does not recite completely around the entirety of the legs as
suggested by the Examiner’s Answer, nor does claim 9 recite that the foot
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and ankle are completely surrounded by the third and fourth sheets as
alleged by the Examiner’s Answer.” Id. (italics added). Appellants rely
upon similar arguments for claims 21-24. Id. at 3—4. Further, Appellants
allege that the Examiner has failed to address their argument. Id. at 4.
E. Discussion
Ordinarily an objection is petitionable to the Director and a rejection
is appealable to the Board. When the issue of new matter presented is the
subject of both an objection and a rejection, the issue is appealable. Manual
of Patent Examining Procedure (MPEP) § 2163.06 II. Review of New
Matter Objections and/or Rejections (9th Ed. Rev. 7, Nov. 2015)). See also
MPEP § 608.04(c); 35 U.S.C. § 134(a); 37 C.F.R. § 1.181(a)(1).
We agree with the Examiner that the words and phrases used by
Appellants are not explicitly recited in the original Specification; however,
the description requirement does not demand that the specification recite the
claimed invention in haec verba. Ariad Pharms., Inc. v. Eli Lilly and Co.,
598 F.3d 1336, 1352 (Fed. Cir. 2010) (enbanc).
“Written description” support for the language of the claims may be
contained in the drawings. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1565 (Fed. Cir. 1991). We agree with Appellant as to where support can be
found for the disputed limitations and reference Appellants’ arguments
repeated above.
For the reasons provided in Appellants’ briefs, the Examiner has not
established that the claims lack adequate written description. Thus the
rejection of claims 9 and 21-24 as failing to comply with the written
description requirement of 35 U.S.C. § 112, first paragraph is not sustained.
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Rejection 3 — The rejection of claims 9 13, 15, 16, 19, and 20—24
under 35 U.S.C. §103 (a) as being unpatentable over Anderson, and Clark.
In contesting the rejection of claims 9-13, 15, 16, 19, and 20-24 as
unpatentable over Anderson, and Clark, Appellants do not present any
separate arguments for patentability of claims 11-13, 15, 19, and 20 apart
from their dependency from claim 9. Appeal Br. 16-20. We select claim 9
as representative of this group, and claims 11-13, 15, 19, and 20 stand or fall
with claim 9. See 37 C.F.R. § 41.37(c)(l)(iv). Claims 10, 16 and 21-24 are
argued separately and treated as such below.
A. The Examiner’s Position as to Claim 9
The Examiner finds in the Final Action that Anderson teaches all of
the limitations of claim 9 including “third and fourth sheets defining a lower
body portion which is configured to wrap completely around the legs of the
patient when the patient is wearing said lower body garment.” Final Act. 10.
(Examiner finding that the lower body portion below the sleeves has
fasteners that can close to encircle the patient’s legs) (citing Anderson 47).
With respect to the limitation that the third and fourth sheet wrap completely
around the legs of a patient, the Examiner stated that the manner in which an
apparatus is intended to be used does not differentiate the claimed invention,
and cited to Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987). Further, the
Examiner pointed to Clark to teach a patient gown with separable upper and
lower body sections to allow easy access to the patient and upper body while
still allowing for upper and lower body temperature control sections.
B. The Appellants’ Position
Appellants argue that Anderson discloses a single garment with a
single internal warming device. App. Br. 17. Further, Appellants argue that
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Anderson teaches against the garment having a length sufficient to cover the
shins or ankles of a patient. Id. at 17-18. Further, Appellants argue that the
two warming chambers in Anderson, “are not themselves separable from
each other.” Id. at 18. In addition, Appellants argue that Clark’s connectors
“are intended for releasably joining two anterior panels of a clinical garment,
and not for releasably joining two independent garments, never mind two
heated air chambers.” Id. Appellants argue that Anderson does not teach a
garment having upper and lower portions. Id. Further, Appellants contend
that the Examiner’s interpretation of the references is “inconsistent with the
specification [and thus] is unreasonable.” Id. at 19. In Appellants’ view,
having the claimed upper and lower portions to the garment allows for
separately heating body portions without restricting patient mobility or
access. Id. Furthermore, Appellants contend that Anderson in contrast,
requires that the garment be rolled back on itself during surgery to cover or
expose either the upper or lower body of a patient. Id. at 20.
C. The Examiner’s Answer
The Examiner states that “the ‘configured to’ language only requires
the ability to perform” and Anderson teaches a garment that is capable of
wrapping completely around the legs of a patient. Ans. 5 and 6. Finally, the
Examiner states that simultaneously using the upper and lower body portions
for heating is not claimed and is thus moot. Id. at 8.
D. Appellants’ Reply Brief
Appellants take issue with the Examiner’s statement that teachings of
Anderson show that the garment is capable of completely wrapping around a
patient’s legs because in Appellants’ view, this is “an allegation that if the
wrong sized garment is used, or if a correctly sized garment is worn
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incorrectly, the result might be that claim 9 reads on such an improper use.”
Reply Br. 5-6. Appellants also argue that the “claims must be given their
broadest reasonable interpretation in light of the specification.” Id. at 6.
Appellants contend the Specification describes upper and lower body
portions when they are worn by a person where the garment is sized
correctly, and, thus, the Examiner’s reading of upper body portion and lower
body portion is inconsistent with the Specification. Id. Finally, Appellants
argue that even though claims may not contain a feature, an argument made
in support of that feature pertaining to properties that result from the claims
is not moot. An evaluation must be made of the unclaimed feature because
“[secondary considerations are not moot.” Id. at 7.
E. Discussion
Appellants’ arguments have been considered and they do not apprise
us of error in the Examiner’s rejection. Appellants’ arguments as to
independent garments having independently controllable air chambers are
not commensurate with the scope of the claims, when interpreted in light of
the Specification. These features argued by Appellants are not contained
within claim 9. Appellants’ characterization that the prior art does not
contain the unclaimed features of “independently controllable air
chamber[s]” and “two independent garments” does not apprise us of error in
the Examiner’s rejection. Although the Examiner states on page 8 of the
Answer that the limitation independently controllable air chambers is moot,
it may be more apt to say that the argument is not relevant because
independently controllable air chambers are not a claim limitation. See In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (Although the claims are
interpreted in light of the specification, limitations from the specification are
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not read into the claims.). Thus Appellants’ argument does not apprise us of
error in the Examiner’s rejection.
Further, Appellants’ arguments attacking the references individually
do not address the Examiner’s modification of the garment of Anderson with
the connector of Clark such that Anderson’s garment, as modified, contains
independently separable upper and lower body portions. Appellants do not
assert error in the reasoning provided by the Examiner. Instead, Appellants
argue the references separately. In arguing the references separately,
Appellants do not take into account the particular rejection made by the
Examiner and the totality of the teachings. See In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d413, 425 (CCPA
1981)) (“Non-obviousness cannot be established by attacking the references
individually where the rejection is based upon the teachings of a
combination of references.”).
Furthermore, Appellants’ arguments about the length of Anderson’s
garment are not commensurate with the scope of claim 9. Claim 9 does not
specify that the garment is of sufficient length to cover the shins and knees
of a patient. Without the limitation being claimed, it will not be read in from
the specification. See infra In re Van Geuns, 988 F.2d at 1184. Also, we
disagree with Appellants’ characterization of Anderson as teaching away
from the claimed length. A reference teaches away from a claimed
invention if “a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.” In re
Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (citing In re Gurley, 27 F.3d
551, 553 (Fed. Cir. 1994)). Anderson discusses garment length in paragraph
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55 and notes disadvantages that arise from having a garment with a hem
made to reach the lower shins or ankles of a wearer; however, claim 9 recites
the lower body portion is “configured to wrap completely around the legs of
the patient.” We interpret this to be a circumferential limitation that does
not require the lower body portion to extend fully from the upper thigh to the
ankle. Compare claim 9 with claim 23 (which specifically recites the lower
body portion “is configured to wrap completely around the legs of the
patient between the patient’s knees and ankles'''’) (emphasis added). Thus,
claim 9 encompasses a lower body portion that wraps around the
circumference of the legs of a patient. Furthermore, Appellants’ argument
with respect to paragraph 56 of Anderson is not commensurate with the
scope of claim 9. Appellants’ argument does not apprise us of error in the
Examiner’s rejection.
For the reasons set forth above, we sustain the rejection of
independent claim 9 as unpatentable over the combined teachings of
Anderson and Clark as relied upon by the Examiner. Claims 11-13, 15, 19,
and 20 fall with claim 9. See 37 C.F.R. § 41.37(c)(l)(iv).
F. Claims 10, 16, and 21—24
Claim 10 — Appellants argue that Anderson does not teach the claim
limitations. Specifically, Appellants argue that Anderson does not teach the
“upper body portion is proximate a pelvis of the patient when the patient is
wearing the upper body portion.” App. Br. 10-11, Reply Br. 9. The
Examiner, in rejecting claim 10, states that Anderson teaches that a patient
can wear the garment with the upper portion proximate to the pelvis and
references Figures 3 and 4 of Anderson. Final Act. 10-11. Further in the
Examiner’s Answer, the Examiner states that “[a] garment when placed on
[a patient lying on] a table has upper and lower body portions, which can be
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placed at any desired location on the user’s body as desired and seen in Fig.
4 of Anderson.” Ans. 7. We agree with the Examiner’s findings as to
Anderson and the reading of the language of claim 10. In particular, claim
10 does not specify that the patient must be wearing the sleeves on the
patient’s arms in order to be “wearing said upper body portion” as recited in
claim 10. For example, as shown in Figure 4 of Anderson, the patient is
wearing the upper body portion about his waist in a rolled down manner
such that the bottom of the upper body portion is proximate a pelvis of the
patient, as called for in claim 10. Thus, Appellants do not apprise us of error
in the Examiner’s rejection.
Claim 16 — This claim recites a “plurality of connections between
[the] third sheet and [the] fourth sheet. . . whereby [the] third sheet is
constrained to expand . . . from [the] fourth sheet.” Appellants argue that the
plurality of connections are not shown in the art and that the whereby clause
must be considered. App. Br. 26-27. The Examiner argues that the
whereby clause is functional language that does not define any structure and
thus does not distinguish over the prior art, citing to In re Mason, 244 F.2d
733 (CCPA 1957). Ans. 10. We disagree with the Examiner’s claim
interpretation. Claim 16 positively recites a plurality of connections and
further recites that the connections are distributed so that the third sheet
expands a limited distance from the fourth sheet when the chamber is
inflated. The Examiner has failed to provide an adequate showing of where
this structural limitation of the plurality of connections is found in either
Anderson or Clark. Accordingly, because all of the limitations are not
shown to be contained in the references cited, this rejection will not be
sustained.
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Claims 21 and 22 — Claim 21 is separately argued by Appellants.
App. Br. 28 (incorporating by reference the arguments presented for claim
24). Claim 21 depends from claim 9 and recites “a fifth sheet attached to the
lower body portion and configured to cover the patient’s feet.” To the extent
Appellants rely on the arguments raised with respect to claim 9, for the
reasons discussed above, these arguments do not apprise us of error in the
Examiner’s rejection of claim 21.
As to the additional limitation of claim 21, the Examiner finds that
Anderson teaches a fifth sheet and references Figure 4 item D (the drape)
and paragraph 68 of Anderson. Appellants argue that the garment of
Anderson would not be operable in the position shown in Figure 4 because
the whole garment would have to be rolled back on itself and thus the ports
and the air chambers would not be usable. App. Br. 24. The Examiner
addresses this point in the Answer at page 6. (“Using the teaching of Clark
to provide a removable upper and lower section would allow for a doctor to
remove the upper front section from the lower section, so as to, avoid the
rolled/bunched-up material round the patient’s body during surgery that
could interfere with the procedure.”). It is, thus, the combination of
Anderson and Clark that the Examiner looks to satisfy this claim limitation.
Appellants have not addressed the combination of Anderson and Clark in
this regard. Accordingly, Appellants have not apprised us of error in the
Examiner’s rejection of claim 21. Additionally, claim 22 depends from
claim 21, and falls with claim 21 because Appellants have not set forth
separate arguments for claim 22. The rejections of claims 21 and 22 are
sustained.
Claim 23 — Appellants rely on the arguments presented for claim 9 as
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applicable to independent claim 23, and also state that claim 23 recites the
garment is wrapped “completely around the legs of the patient between the
patient’s knees and ankles when the patient is wearing said lower body
portion and said sleeves.” App. Br. 21. Specifically, Appellants argue that
the underlined limitations, in the above quotation, are not disclosed by
Anderson when the garment covers the patient’s knees and ankles. The
Examiner references Figure 4 of Anderson in the Final Action as teaching
that sleeves can be worn around the torso of the patient and, thus, the
manner in which the garment is worn would not differentiate in an apparatus
claim. Final Act. 13-14. We agree with the Examiner. Appellants’claim
23 is a broad recitation that includes the garment and sleeves being worn at
the torso, as shown in Figure 4 of Anderson. Accordingly, Appellants have
not apprised us of error in the Examiner’s rejection.
Claim 24 — Appellants arguments with respect to claim 24 are the
same as those advanced for claims 21 and 22. App. Br. 28. As set forth
above, the arguments do not apprise us of error in the Examiner’s rejection.
Accordingly, the rejection of claim 24 is sustained.
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Rejection 4—The rejection of claim 14
under 35 U.S.C. § 103(a) as unpatentable over
Anderson, Clark, and Thompson
Appellants have not provided an additional argument for dependent
claim 14. Accordingly, for the reasons discussed above with regard to the
rejection of claim 9, this rejection is likewise summarily sustained.
Rejection 5— The rejection of claims 17 and 18
under 35 U.S.C. § 103(a) as unpatentable over
Anderson, Clark, and Poettgen
Claim 17 — Appellants argue that “none of Poettgen, Anderson or
Clark teach that the heat reflective material should be provided on the
sleeves and on an anterior portion of the upper body as opposed to the rest of
the garment.” App. Br. 27. Appellants argue that the Examiner has not
provided an explanation why it would have been obvious to combine the
teachings of the references in the manner claimed. App. Br. 27 and Reply
Br. 10. The Examiner sets forth motivation for the combination and thus
provides a reason why it would be obvious to combine the references. See
Ans. 11. (“The heat reflective material as taught by Poettgen provided on the
inflatable connective apparatuses of Anderson would provide an additional
layer that reduces the rate of heat loss in the patient.”). We further agree
with the Examiner’s finding that application of Poettgen’s heat reflective
material “to the area of Anderson that has the inflatable connective
apparatuses” would “creat[e] a heat reflective material on the sleeves and
anterior portions.” Ans. 11. Accordingly, Appellants do not apprise us of
error in the Examiner’s rejection.
Claim 18 — Appellants argue that “Anderson only discloses that the
surface 86 has ‘a higher average permeability’ (paragraph [0051]), which
refers only to the passage of heated air through the surface and makes no
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disclosure about the transfer of heat in general terms.” App. Br. 28.
Anderson, as relied upon by the Examiner, discloses a sheet 86 that is not
heat reflective. Final Act. 17. It is the reference of Poettgen that the
Examiner relies upon to teach a heat reflective material. Combining the heat
reflective material taught by Poettgen in the manner set forth in rejection of
claim 17 with the teachings of Anderson and Clark would create a “heat
reflective material. . . [within] a garment that reduces the rate of heat loss in
the patient.” Final Act. 17.
For these reasons, we sustain the rejection of claims 17 and 18.
DECISION
We decline to review the Examiner’s decision to provisionally reject
claims 9-20 on the ground of nonstatutory obviousness-type double
patenting.
The Examiner’s decision to reject claims 9 and 21-24 under 35 U.S.C.
§ 112, 1st paragraph is reversed. The Examiner’s decision to reject claims 9-
14, 15, 17-19, and 20-24 under 35 U.S.C. § 103 is affirmed.
The Examiner’s decision to reject claim 16 under 35 U.S.C. § 103 is
reversed.
AFFIRMED-IN-PART
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