Ex Parte WelchDownload PDFPatent Trial and Appeal BoardMar 29, 201712777642 (P.T.A.B. Mar. 29, 2017) Copy Citation 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”). 2 Appeal 2015-004267 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. 3 Appeal 2015-004267 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 4 Appeal 2015-004267 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 5 Appeal 2015-004267 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: 6 Appeal 2015-004267 Application 12/777,642 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 7 Appeal 2015-004267 Application 12/777,642 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 8 Copy with citationCopy as parenthetical citation