Ex Parte Welch

Patent Trial and Appeal Board

Mar 29, 2017

12777642 (P.T.A.B. Mar. 29, 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.
12/777,642 05/11/2010 Jo Ann Welch 86438-102/KRS 4783
23529 7590 03/31/2017
A OF ^ COMPANY TN C EXAMINER
2157 Henderson Highway CARREIRO, CAITLIN ANN
WINNIPEG, MB R2G1P9
CANADA ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
03/31/2017 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):
u spto @ adeco .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JO ANN WELCH
Appeal 2015-004267
Application 12/777,642
Technology Center 3700
Before CHARLES N. GREENHUT, JILL D. HILL, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
2, 4, and 7—16. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
CLAIMED SUBJECT MATTER
The claims are directed to a bandage pulling tool and related methods
of use. Claims 1,11, and 13 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A bandage pulling tool for aiding in wrapping of a bandage
around a body portion of an injured party, the tool comprising
Appeal 2015-004267
Application 12/777,642
a resiliently flexible strip of material defining first and
second opposing ends of the tool that are spaced apart along a
longitudinal axis of the strip of material,
the strip of material having a length that extends along the
longitudinal axis, a width that is lesser than the length, a
thickness that is lesser than the width, and
a first hole passing through the thickness of the strip of
material proximate the first end of the tool,
whereby an end of the bandage can be passed through the
first hole for temporary securing of the bandage to the tool to
enable passing of the first end of the tool, and the end of the
bandage secured thereto, behind the body portion of the injured
party from one side thereof to another in order to position ends
of the bandage on opposite sides of [the] in[j]ured party for
subsequent closing of the bandage around the body portion
thereof.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
US 2,559,160
US 4,012,799
US 6,694,779 B1
GB 2,424,828 A
Jacob
Rutherford
Dreger
Quickmire
July 3, 1951
Mar. 22, 1977
Feb. 24, 2004
Oct. 11,2006
Deluxe Oak Hardwood Transfer Board, http://www.allegromedical.com/
hospital-discharge-favorites-c5000/deluxe-oak-hardwood-transfer-board-
pl89172.html (archived Oct. 20, 2007) (hereinafter “AllegroMedical”).
Read, Top 10 Fashion Trends of the 80’s, Hilary Magazine, retrieved from
http://www.hilary.com/fashion/quickie-80sfashion.html (retrieved Nov. 3,
2011) (hereinafter “Read”).
80s t-shirt clip, retrieved from http://www.ebay.com, il6.ebayimg.com/
05/i/001/40/d7/9eld_12.JPG (retrieved Nov. 3, 2011) (hereinafter “80s t-
shirt clip”).
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Application 12/777,642
REJECTIONS
Claims 1, 2, 4, and 7—9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over AllegroMedical and Rutherford.
Claims 1, 2, 4, and 7—9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Quickmire and Rutherford.
Claim 10 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over AllegroMedical or Quickmire, and Rutherford, Dreger, 80 ’s t-shirt clip
and Read.
Claims 11 and 13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over AllegroMedical, Rutherford and Jacob.
Claims 12 and 14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over AllegroMedical, Rutherford, Jacob, Dreger, 80 ’s t-shirt
clip, and Read.
Claims 15 and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over AllegroMedical, Rutherford, and Jacob.
OPINION
Claims 1, 2, 4, and 7—10
The Examiner finds that the transfer boards disclosed in
AllegroMedical and Quickmire are “capable of use as a bandage pulling
tool” and disclose all of the features of claim 1 except being “made from a
‘resiliently flexible’ strip of material.” Non-Final Act 3—4, 6. For this
feature of claim 1, the Examiner relies on the transfer board of Rutherford
which is made from plastic which the Examiner states “is known to be a
resiliently flexible material.” Id. at 4, 6.
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Application 12/777,642
Both Appellant and the Examiner acknowledge that the purpose of the
transfer boards of the prior art references is to transfer “an individual. . .
from one area (i.e. a bed) to another (i.e. a wheelchair) using the transfer
board.” Non-Final Act. 3; see also Appeal Br. 5. Appellant further
explains:
One end of the board is inserted beneath the patient’s legs and
the underlying seating surface of one article (for example, a
wheelchair seat), and the other end of the board is placed atop
the other article, for example a bed mattress. The patient, for
example with the aid of an assistant, can slide or shuffle along
the board in a seated position to safely transfer from one article
to the other, whereby the support of the patient[’s] weight by the
transfer board reduces the risk of a hazardous fall compared to
other transfer methods ....
Appeal Br. 4.
Appellant argues that transfer boards are not “resiliently flexible” and
that:
there is no motivation to modify AllegroMedical[’s] transfer
board] to use resiliently flexible material, as this would render
the transfer board entirely unsuitable for its purpose. As outlined
above, patient transfer boards are used to form a supportive
bridge between two articles so that the patient can slide over the
board with at least a portion of their body weight safely
supported by same. To replace the rigid Oak structure of
AllegroMedicaTs board with a flexible material would render the
board incapable of holding the patient up during this transfer
between the two articles, as the flexible material would yield
under the patient's body weight, allowing the patient to sink
down or fall to the ground between the two articles under the
sagging of the flexible material beneath the body weight.
Appeal Br. 5.
Appellant further argues that “the Examiner’s statement that plastic ‘is
known to be a resiliently flexible material’ is an imprecise generalized
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Application 12/777,642
statement, that while true of some plastics, is clearly untrue of others, for
example rigid thermoset plastics.” Appeal Br. 5. It is further argued that
“[njowhere does Rutherford teach or suggest that the plastic proposed for
manufacture of the sled boards is ‘resilient’ or ‘flexible’. To the contrary,
the other material examples proposed by Rutherford demonstrate a clear and
intentional use of non-resilient, rigid materials, particularly ‘stainless steel,
fibre glass, MASONITE.’” Id. (citing Rutherford, col. 3:46-48).
The Examiner responds that: “[pjlastics are inherently flexible and
resilient at least to some small degree” and that “the claims are broad enough
to include even a very rigid or brittle plastic material which only has a very
miniscule amount of flexibility before fracture.” Ans. 18.
The United States Patent and Trademark Office gives claims 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. See In re Am. Acad, of Sci. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). The Specification describes the “bandage pulling
tool” as being manufactured of a “plastic material” that “may have a degree
of flexibility and resiliency to allow it to keep its default substantially linear
shape while being able to fit into [emergency responders] jump bags of
varying sizes.” Spec. 9,11. 13—16. Claim 1 does not require the bandage
pulling tool to be made of plastic, but does require that “tool compris[e] a
resiliently flexible strip of material.”
We determine that the Examiner’s interpretation of “resiliently
flexible” that would extend to a transfer board designed to support a
person’s weight that is “very rigid or brittle plastic material which only has a
very miniscule amount of flexibility before fracture,” is not reasonable in
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Application 12/777,642
this context. Although, as the Examiner points out, there may be varying
degrees of flexibility, the Specification, as quoted above, adequately informs
one skilled in the art as to the “standard for measuring that degree so that
one of ordinary skill in the art would understand what is claimed when the
claim is read in light of the specification.” Seattle Box Co., v. Indus. Crating
& Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984).
The Examiner also argues that Rutherford teaches that transfer boards
and sleds can be made from fabric which is “resiliently flexible” and “is
capable of supporting the weight of a patient and can be used to transfer a
patient.” Ans. 19 (citing Rutherford col. 2:29, 46-48, 59—62).
We agree with Appellant that the Examiner has not shown that
Rutherford’s fabric drawsheet 18 and loop 22 teach or suggest that the
transfer board or sled can be made of fabric. Appeal Br. 6. Though these
fabric materials can be used to assist in moving the patient, they do not
replace the rigid transfer board or sled that is used to support the patient’s
weight. Id. (citing Rutherford col. 1:17—20, col. 2:51—58).
For these reasons we do not sustain the rejections of claim 1, or of
claims 2, 4, and 7—10 which depend from claim 1.
Claims 11—16
Independent claim 11 is directed to “[a] method of preparing a
bandage for wrapping around a body portion of an injured party.” In
rejecting claim 11 the Examiner finds that the transfer board of
AllegroMedical is “capable of’ being used in the manner claimed. Non-
Final Act. 9—11. Further, the Examiner finds:
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It would have been obvious to one having ordinary skill in the
art, at the time of the invention, to use the device of
Allegromedical to wrap a bandage around a body portion of an
injured party, as taught in Jacob, since the device of
Allegromedical is capable of being passed behind the body
portion of an injured party in the same manner that an individual
is transferred from one area (i.e. a bed) to another (i.e. a
wheelchair) using the transfer board and doing so allows for
treatment of a patient without requiring excessive amounts of
shifting or movement of the patient’s body (i.e. it is not necessary
to roll the patient on to their side).
Non-Final Act. 11.
This reasoning is insufficient for at least two reasons. We first note
that Jacob provides no teachings related to bandages, and in fact none of the
cited prior art relate to bandages. Though the fact that none of the prior art
relate to bandages is not of itself fatal, the Examiner’s finding that Jacob
teaches to “wrap a bandage around a body portion of an injured party” is
unsupported. Further, the fact that “Allegromedical is capable of’ being
used in certain ways is not evidence that the claimed method is obvious. If a
prior art device, in its normal and usual operation, would necessarily
perform the method claimed, then the method claimed will be considered to
be unpatentable over the prior art device. In re King, 801 F.2d 1324, 1326-7
(Fed. Cir. 1986). However, the steps of a process patent are not necessarily
taught or suggested by an apparatus which might have been adapted to carry
out those steps. Although an apparatus claim may be unpatentable over a
prior device of like construction that is “capable of’ performing the same
function; it is otherwise with a process claim. The mere possession of an
apparatus does not teach or suggest all the possible processes to which it
may be adapted. See Carnegie Steel Co v. Cambria Iron Co 185 U.S. 403,
424—25 (1902). Thus, the Examiner has not shown by a preponderance of
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the evidence that the method of claim 11 is obvious over AllegroMedical,
Rutherford and Jacob.
The Examiner relies on the same faulty logic in rejecting method
claim 13 directed to “[a] method of wrapping a bandage around a body
portion of an injured party.” Non-Final Act. 11—14.
For these reasons we do not sustain the rejection of claims 11 or 13, or
of the rejections of dependent claims 12 and 14—16.
DECISION
The Examiner’s rejections of claims 1, 2, 4, and 7—16 are reversed.
REVERSED
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