Nilsson, Carianne

Patent Trials and Appeals BoardNov 24, 2020

2019003277 (P.T.A.B. Nov. 24, 2020)

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. 13/502,470 04/17/2012 Carianne Nilsson 13302.0038U1 1775 23859 7590 11/24/2020 Ballard Spahr LLP SUITE 1600 999 PEACHTREE STREET ATLANTA, GA 30309-4421 EXAMINER KLEIN, BENJAMIN JACOB ART UNIT PAPER NUMBER 3781 NOTIFICATION DATE DELIVERY MODE 11/24/2020 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): USpatentmail@ballardspahr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CARIANNE NILSSON Appeal 2019-003277 Application 13/502,470 Technology Center 3700 Before LINDA E. HORNER, CHARLES N. GREENHUT, and JILL D. HILL, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–13. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as MÖLNLYCKE HEALTH CARE AB. Appeal Br. 2. Appeal 2019-003277 Application 13/502,470 2 BACKGROUND Independent claims 1 and 12 are pending. Independent claim 1, reproduced below, illustrates the claimed invention. 1. An article for use in wound treatment, wherein the article is colored in a chosen color, wherein the chosen color is green, wherein the green colored article hides the color of synthetic blood when synthetic blood is present in the article, and wherein the chosen color in dry state has: a lightness factor L* along the black-white axis of between 20-55 according to Test Method T-397, a chromatic coordinate a* along the red-green axis of between -45 to -20 according to Test Method T-397, and a chromatic coordinate b * along the yellow-blue axis of between -4.0 to -1.0 according to Test Method T-397. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Benecke US 2003/0135174 A1 July 17, 2003 Weston US 2005/0261642 A1 Nov. 24, 2005 Peng (as translated) CN001138486A Dec. 25, 1996 REJECTIONS I. Claims 1–11 and 13 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Peng and Benecke. Final Act. 7. II. Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Weston, Peng, and Benecke. Final Act. 10. Appeal 2019-003277 Application 13/502,470 3 OPINION Rejection I – Claims 1–11 and 13 The Examiner finds that Peng discloses a wound treatment article that is green in its dry state and “hides the color of blood (and is therefore also interpreted to hide the color of synthetic blood).” Final Act. 7. The Examiner also finds that Peng discloses the criticality of selecting an article color that “allows for identification of the article in a wound, and also turns dark or black in the presence of blood eliminating the patient’s fear of their blood.” Id. at 7–8 (citing Peng Abstract, ¶ 2). The Examiner recognizes that Peng does not disclose Test Method T-397, or the claimed L*, a*, and b* values, but finds that Benecke discloses absorbent articles with blood masking properties, and wherein “L*, a*, and b*, are result effective variables in color masking and in the visual interpretation of color by the user.” Id. at 8 (citing Benecke ¶¶ 61–66). The Examiner further finds that Benecke discloses blue and green colors that “are effective at hiding the blood.” Id. (citing Benecke Table 2, Figs. 12–13, ¶ 74). The Examiner concludes that it would have been obvious to “optimize the [known] result effective variables; L*, a*, and b* . . . to produce a device with optimum color for masking the color of blood and to provide for the identification of the article in the wound of a patient as desired by Peng.” Id. at 8‒9 (quoting In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.”)). Appellant contends that: (1) “there is no reasonable expectation of success that a green colored gauze sample can mask/hide the color of synthetic blood, much less a reasonable expectation of success that the green Appeal 2019-003277 Application 13/502,470 4 color recited in claims 1 and 12 can mask/hide the color of synthetic blood;” (2) “Benecke teaches away from modifying the L *, a*, and b* chromatic coordinates of the green colors in Peng to be within the chromatic coordinates recited in claims 1 and 12;” and (3) “It is superior and unexpected that the green article recited in claim 1 or the green wound filler recited in claim 12 can mask/hide the color of synthetic blood.” Appeal Br. 7 (emphases omitted). We address each argument in turn below. (1) Reasonable Expectation of Success The basis for Appellant’s argument that there is no reasonable expectation of success that Peng’s green colored gauze can hide blood, is based on Appellant’s contention that the “green color[ed] gauze samples in Peng are inoperable for masking/hiding the color of synthetic blood.” Appeal Br. 9–10 (emphasis omitted). To support the contention that Peng’s green colored gauze samples are inoperable, Appellant provides tests results from what Appellant alleges to be Peng’s green gauze samples with synthetic blood applied thereto. Id. at 10–11.2 Appellant’s proffered test results are addressed in a Declaration of Kevin Biller, filed February 1, 2018 (hereinafter “Biller Dec.”), which is discussed by Appellant and the Examiner in this appeal. Initially, we note that Kevin Biller’s Declaration states that, because “[s]ome of the specific chemicals listed in Peng used to develop [its green gauze samples] are no longer commercially available or can only be 2 Appellant also argues that “Peng actually did not test whether the gauze samples with green the colors, in fact, masked/hid the red color of synthetic blood,” but no evidentiary basis for this argument is provided. Appeal Br. 10. Appeal 2019-003277 Application 13/502,470 5 obtained in large bulk, which is not economically feasible, . . . comparable chemicals were used to reproduce the green and blue color Nos. 1-3 in Peng.” Biller Dec. ¶ 11. According to Mr. Biller, “[t]hese comparable chemicals produce the identical green and blue colors as the green and blue color Nos. 1-3 in Peng.” Id. While the same blue dye listed in Peng was used in the testing, the yellow dye used in testing differed from that of Peng, because Peng’s yellow dye was not economically feasible to use. Id. ¶ 12. Additionally, certain other chemicals used in Peng to prepare its green gauze samples were not available for testing and other “recommended” chemicals were used. Id. ¶ 12, App. B, App. C. Regarding masking ability of dyed samples, the test results provided in Kevin Biller’s Declaration indicate that “none of the reproduced green color [samples] have masking properties for the color of synthetic blood.” Id. ¶ 16, App. B, App. C. This failure of the reproduced Peng green samples to mask blood forms the basis for Appellant’s assertion that Peng is inoperable, which forms the basis for Appellant’s contention (1) that there is no reasonable expectation of success that Peng’s green samples can mask/hide the color of synthetic blood. Appeal Br. 7. To this proffered evidence of Peng’s inoperability, the Examiner responds, inter alia, that the economic feasibility of purchasing . . . dye has no bearing on the scientific accuracy of the testing. Appellant’s choice to purchase a substitute chemical on economic grounds is an unreasonable compromise when attempting to accurately reproduce a sample. . . . Simply, the economics of reproduction; and for that matter the commercial availability/feasibility; are not relevant to the accuracy of reproduction. The only relevant factor in the fidelity of the Appeal 2019-003277 Application 13/502,470 6 reproduction is how faithfully each and every step was followed, and component used. Ans. 7. According to the Examiner, Peng’s process uses “no less than 3 dyes (Vat Blue 66, Vat blue 6, and Vat Yellow 46), and 6 additional process chemicals (DEKOL SN-S, TRILON TB, SETAMOL WS, PERAGAL P, LUDIGOL, and sodium hydrosulfite),” and “the reproduced samples of Peng use at most 2 of the 9 chemicals disclosed by Peng,” such that “any assertion by Appellant that the reproduced samples are faithful to those disclosed by Peng is not demonstrated with any evidence or declared with sufficient expertise.” Ans. 7–8. We agree. A prior art reference is presumed operable until applicant provides facts rebutting the presumption of operability. In re Sasse, 629 F.2d 675, 681 (CCPA 1980). Appellant’s attempt to overcome the presumption of operability using testing that reproduces samples of Peng with, at most, 2 of the 9 chemicals disclosed by Peng, is simply insufficient to overcome the presumption of operability. Appellant’s contention that a skilled artisan would have “no reasonable expectation of success” is based on establishing that Peng’s green samples are inoperable. Because the testing was insufficient to overcome the presumed operability of Peng’s green samples, Appellant’s argument of “no reasonable expectation of success” is not persuasive. (2) Teaching Away As stated above, the Examiner relies on Benecke for its teaching that “the L, a*, b* color space is used to describe the color of articles,” and that “non-saturated blue, non-saturated green, and saturated green articles (See Appeal 2019-003277 Application 13/502,470 7 Figs. 12 and 13) are effective to mask the color change of the article when exposed to menstrual blood and fluid.” Final Act. 3. Further, the Examiner reasons that a skilled artisan, considering the teaching of Benecke regarding the effect of each of the characteristics L*, a* and b* on the human eye’s perception of colors, including blood and the hiding thereof, would have found it obvious to optimize the green color of Peng’s article “to maximize the color masking ability of the article.” Id. Appellant argues that Benecke teaches away from modifying the L*, a*, and b* chromatic coordinates of the green colors in Peng to be within the claimed chromatic coordinates. Appeal Br. 7. According to Appellant, Benecke’s goal of hiding blood by minimizing ΔE teaches away from hiding blood by making it visible as a dark color that differs from the color of blood. See id. Appellant’s teaching away argument is not persuasive. It is Peng that the Examiner finds teaches hiding blood by making it visible as a dark color that differs from the color of blood. Benecke is relied on only for its disclosure of the effect of each of the characteristics L*, a*, and b* on the human eye and on ΔE (i.e., the perception of blood). Benecke’s disclosure of one alternative for hiding blood by minimizing ΔE does not constitute a teaching away from Peng’s and the claimed invention’s alternative of hiding blood by making it visible as a dark color that differs from the color of blood, because Benecke’s disclosure does not “criticize, discredit, or otherwise discourage” the claimed method of hiding blood. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Indeed, Benecke’s teachings regarding the effect of each of the characteristics L*, a*, and b* on the human eye and on ΔE (i.e., the perception of blood) would have instructed a Appeal 2019-003277 Application 13/502,470 8 skilled artisan on optimizing the green color of Peng’s article to achieve Peng’s goal of having the blood absorbed by its green gauze appear as a dark color to eliminating patient fear and ease recovery of the gauze after operating. See Final Act. 3; Peng Abstract. For this reason, we are not persuaded that Benecke teaches away from the Examiner’s proposed combination of references. (3) Unexpected Results Based on the test results from recreating Peng’s green samples, as set forth in Kevin Biller’s Declaration, Appellant argues that the green article recited in claim 1 provides unexpected masking/hiding of blood. See Appeal Br. 21. According to Appellant, unexpected results can be established by comparing the claimed invention with the closest prior art which is commensurate in scope with the claims, and the testing results set forth in Kevin Biller’s Declaration compare the green article recited in claim 1 with “the green article disclosed in Peng, which is the closest prior art.” Id. Appellant contends that, because Peng’s green samples are “completely inoperable for masking/hiding the color of synthetic blood,” the synthetic blood hiding properties of the claimed invention are unexpected results. See id. Because this argument is based on the testing results set forth in Kevin Biller’s Declaration, which we determined above are insufficient to establish inoperability of Peng’s green samples, we are likewise not persuaded that Appellant has established unexpected results, and the Examiner’s obviousness rejection has not been overcome. Appeal 2019-003277 Application 13/502,470 9 Conclusion For the reasons set forth above, we sustain Rejection I. Rejection II – Claim 12 Claim 12 recites a green wound filler with the same chromatic coordinates as recited in claim 1. Appeal Br. 28 (Claims App.). Appellant argues that “claim 12 is non-obvious over Weston, Peng and Benecke . . . for the same reasons claim 1-11 and 13 are non-obvious.” Id. at 25. For the reasons set forth above in Rejection I, we sustain Rejection II. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–11, 13 103(a) Peng, Benecke 1–11, 13 12 103(a) Weston, Peng, Benecke 12 Overall Outcome 1–13 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED