Yousef Daneshvar

Patent Trials and Appeals BoardSep 16, 2020

11704635 - (D) (P.T.A.B. Sep. 16, 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. 11/704,635 02/09/2007 Yousef Daneshvar 1618 12937 7590 09/16/2020 Yousef Daneshvar, MD FACC. 3425 Lone Pine Rd. West Bloomfield, MI 48323 EXAMINER LEE, MICHELLE J ART UNIT PAPER NUMBER 3786 MAIL DATE DELIVERY MODE 09/16/2020 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YOUSEF DANESHVAR1 Appeal 2020-001797 Application 11/704,635 Technology Center 3700 Before ERIC B. GRIMES, RICHARD M. LEBOVITZ, and FRANCISCO C. PRATS, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to therapeutic wrap systems, which have been rejected as anticipated, obvious, and directed to patent-ineligible subject matter. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellant identifies the real party in interest as American Medical Corporation. Identification of Real Party-In-Interest, filed January 29, 2020. We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appeal 2020-001797 Application 11/704,635 2 STATEMENT OF THE CASE Appellant’s Specification states that the “invention is related to an improved version of the wound wrapping and support means for use in a living body. Wrapping a limb and application of compression to a limb is important in conditions such as control of varicose veins, limb swelling,” etc. Spec. 1. [A] strap means will be attached to a support means of various forms such as stable hook means, hose means, or a panty hose that has zones of hook fastener attachment means on or between these two units so that the strap means will wrap around the limb on oblique fashion while moving up and being pulled. Id. Claims 1–5, 8, 10, 11, 14–24, 28, 29, 37, and 38 are on appeal. Claims 1, 15, and 23, reproduced below (with limitations of intervening claims), are illustrative: 1. A wrap for encircling and compressively wrapping a portion of a living body, the wrap comprising: a relatively non-stretchable support; a strap having a length extending from one lengthwise end, which is attached to the support, to an opposite lengthwise end; the one lengthwise end being attached to the support by hook-type attachment material detachably/re-attachably attaching to loop-type attachment material; a length of relatively stretchable material forming at least a portion of the length of the strap and having an outer face for facing away from the portion of a living body when the wrap is encircling and compressively wrapping the portion of the living body and an inner face for facing toward the portion of the living body when the wrap is encircling and compressively wrapping the portion of the living body; Appeal 2020-001797 Application 11/704,635 3 the inner face of the relatively stretchable material possessing a loop-type fastening characteristic capable of detachably/re-attachably attaching to hook-type fastener material; and at least one piece of hook-type fastener material disposed on the outer face of the relatively stretchable material of the strap at a location that provides for the inner face of the relatively stretchable material to directly detachably/re- attachably attach to the at least one piece of hook-type fastener material by surface-to-surface contact after the strap has encircled the portion of the living body. 15. A wrap system for encircling and compressively wrapping a limb of a living person, the wrap system comprising: an elastic garment sleeve having an open end into which an end of the limb can be inserted to allow the sleeve to be pulled over the limb to a position that elastically girdles the limb; at least one strap for compressively wrapping the limb, the at least one strap having lengthwise opposite ends; hook-type attachment material for attaching one lengthwise end of the strap to the sleeve; the strap comprising a length of relatively stretchable material that has an outer face for facing away from the limb when the wrap system is encircling and compressively wrapping the limb and an inner face for facing toward the limb when the wrap system is encircling and compressively wrapping the limb, the strap length being long enough to encircle the limb; and hook-type attachment material disposed on the inner face of the strap for attaching the lengthwise end of the strap opposite the one lengthwise end of the strap to one of a prior convolution of the strap and the elastic garment sleeve when the strap is compressively wrapping the limb, further including at least one strip of relatively non-stretchable material disposed Appeal 2020-001797 Application 11/704,635 4 lengthwise on the sleeve to prevent lengthwise stretching of the sleeve at the location of the strip. 23. [A wrap as set forth in Claim 1 wherein the relatively non-stretchable support contains hook-type fastener material on an outer face thereof, and at the one lengthwise end of the strap, the inner face of the relatively stretchable material attaches to the hook-type fastener material on the outer face of the support on an attachable/detachable basis, wherein the outer face of the support also contains loop- type fastener material, and the strap comprises hook-type fastener material at one or more locations along the length of the strap in the direction away from the one lengthwise end for enabling the strap to attach to the loop-type fastener material on the outer face of the support,] wherein the relatively non-stretchable support has a long dimension in the direction of the length of the portion of the living body around which when the strap is encircling the portion of the living body. The claims stand rejected as follows: Claims 23 and 24 under 35 U.S.C. § 101 as being directed to or encompassing a human organism (Ans. 32); Claim 15 under 35 U.S.C. § 102(b) as anticipated by DeMarco3 (Ans. 4); Claims 1, 2, 8, 10, 11, 14, 16, 17, 19–21, 28, 29, 37, and 38 under 35 U.S.C. § 103(a) as obvious based on DeMarco and Smithers4 (Ans. 5); 2 The Examiner also cites the America Invents Act (AIA) § 33(a) but the effective filing date of the instant application is no later than February 9, 2007, and therefore the AIA does not apply to the instant claims. 3 DeMarco, US 4,353,362, issued Oct. 12, 1982. 4 Smithers et al., US 3,480,012, issued Nov. 25, 1969. Appeal 2020-001797 Application 11/704,635 5 Claims 3–5 under 35 U.S.C. § 103(a) as obvious based on DeMarco, Smithers, and Malamed5 (Ans. 19); Claim 18 under 35 U.S.C. § 103(a) as obvious based on DeMarco, Smithers, and Jewell6 (Ans. 20); Claims 22 and 23 under 35 U.S.C. § 103(a) as obvious based on DeMarco, Smithers, and Lipshaw7 (Ans. 23); and Claim 24 under 35 U.S.C. § 103(a) as obvious based on DeMarco, Smithers, Lipshaw, and Binder8 (Ans. 24). OPINION Eligibility Claims 23 and 24 stand rejected on the basis that they are “directed to or encompass[] a human organism.” Ans. 3. The Examiner reasons that claim 23 “positively claims the portion of the living body in line 4.” Id. As we understand it, the Examiner refers to the claim language reading “the portion of the living body” in claim 23. Claim 24 is rejected because it depends from claim 23. Id. Appellant argues that “Claim 23 needs some clarification but as it presently stands, the intent is obviously not to claim a portion of a living body, as expressed by the phrase ‘when the strap is encircling the portion of the living body. (underlining for emphasis).’” Reply Br. 2. We agree with Appellant that claim 23 is not directed to a human being or a portion of one. Rather, claim 23, by virtue of its dependence on 5 Malamed, US 4,672,722, issued June 16, 1987. 6 Jewell et al., US 2006/0282938 A1, published Dec. 21, 2006. 7 Lipshaw et al., US 2005/0192524 A1, published Sept. 1, 2005. 8 Binder et al., US 7,297,128 B2, issued Nov. 20, 2007. Appeal 2020-001797 Application 11/704,635 6 claim 1, is directed to a “wrap for encircling and compressively wrapping a portion of a living body,” and adds the limitation that the claimed wrap—when it is in the configuration of encircling a portion of a living body—includes a support with a long dimension in the direction of the length of that portion of the living body. The rejection of claims 23 and 24 under 35 U.S.C. § 101 is reversed. Anticipation Claim 15 stands rejected as anticipated by DeMarco. Claim 15 is directed to a wrap system comprising “an elastic garment sleeve having an open end into which an end of the limb can be inserted to allow the sleeve to be pulled over the limb to a position that elastically girdles the limb” and at least one strap made of relatively stretchable material with hook-type attachment material disposed at specified locations. The Examiner finds that “DeMarco discloses a wrap system 10” meeting all of the limitations of claim 15. Ans. 4. The Examiner finds that pad 12 of DeMarco’s system meets the limitations of the “elastic garment sleeve” recited in claim 15 because “the pad 12 forms a sleeve around the limb when worn and is capable of being pulled over the limb.” Id. The Examiner also finds that DeMarco describes “the pad 12 [as] being made from resilient material, where resilient is defined by thefreedictionary.com as ‘capable of regaining its original shape or position after bending, stretching, compression, or other deformation; elastic’.” Id. Appellant argues that “one of ordinary skill would not recognize DeMarco’s self-entitled ‘Knee Brace’ as ‘an elastic garment sleeve having an open end into which an end of a limb can be inserted to allow the sleeve to be pulled over the limb to a position that elastically girdles the limb.’” Appeal 2020-001797 Application 11/704,635 7 Appeal Br. 18. Appellant points out that “DeMarco does not use the word ‘sleeve’ when describing element 12; rather, he refers to element 12 as a ‘pad’,” and “[w]hen not being worn . . . , the pad has the generally planar shape shown in [DeMarco’s] Figs. 1 and 2.” Id. We agree with Appellant that the rejection of claim 15 for anticipation is based on an unreasonably broad claim interpretation. [A]s an initial matter, the PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). The ordinary meaning of “sleeve,” in the context of a garment, is “the part of a garment that covers the arm, varying in form and length but commonly tubular.”9 Appellant identifies the Specification’s Figure 6 as showing the recited “elastic garment sleeve.” Appeal Br. 7. With respect to claim 14, which recites the same limitation, Appellant identifies Figures 6, 6A, 7, and 8 as showing “an elastic garment sleeve.” Id. at 6. These figures do not use the word “sleeve,” but show “Stretch Panty Hose,” “Elastic Hose,” “Elastic Panty Hose,” and “Stretch Hose,” respectively. These designations refer to the same component in the figures. See Spec. 21–23. Thus, we understand the “elastic garment sleeve” recited in claim 15 to refer to an element like that shown in Figures 6 through 8, which show garments, which are described as elastic (or stretchy), that include parts through which a user’s limb can be inserted and which can be pulled over 9 dictionary.com/browse/sleeve, last accessed September 4, 2020. Appeal 2020-001797 Application 11/704,635 8 the limb to girdle (encircle10) the limb. We conclude that the broadest reasonable interpretation of the “elastic garment sleeve” recited in claim 15 requires a garment part that allows the end of a limb to be inserted, and that can be pulled over the limb to encircle the limb. DeMarco’s Figure 1 is reproduced below: Figure 1 shows “a front view of a knee brace embodying [DeMarco’s] invention.” DeMarco 2:44–45. DeMarco’s Figure 4 is reproduced below: 10 See dictionary.com/browse/girdle (“to encompass; enclose; encircle”), last accessed September 4, 2020. Appeal 2020-001797 Application 11/704,635 9 Figure 4 “is a perspective view of the knee brace as partly applied.” Id. at 2:49–50. DeMarco states that “pad 12 . . . is generally trapezoidal in outline, having opposite sides 20 and 22 and being of a width w therebetween to envelope at least most, but preferably not all, of a knee when applied thereto with its sides 20, 22 foremost.” DeMarco 2:60–64. DeMarco’s pad 12 is thus shown and described as being trapezoidal (i.e., flat), and even as applied does not form a tubular element that encircles the knee. Rather, the sides 20 and 22 of pad 12 do not meet so as to envelope the entire knee, but leave a gap between them over the kneecap. DeMarco 2:63–64; Fig. 4. We therefore agree with Appellant that the Examiner has not shown that DeMarco discloses a wrap system comprising “an elastic garment sleeve having an open end into which an end of the limb can be inserted to allow the sleeve to be pulled over the limb to a position that elastically girdles the limb,” as required by claim 15. We reverse the rejection of claim 15 under 35 U.S.C. § 102(b) based on DeMarco. Obviousness: DeMarco and Smithers Claims 1, 2, 8, 10, 11, 14, 16, 17, 19–21, 28, 29, 37, and 38 stand rejected as obvious based on DeMarco and Smithers. The Examiner finds that, “[r]egarding claim 1, DeMarco discloses a wrap 10 . . . comprising: a relatively non-stretchable support 12 . . . [and] a strap 18.” Ans. 5. The Examiner also finds that strap 18 includes “one lengthwise end, which is attached to the support 12 . . . by hook-type attachment material detachably/re-attachably attaching to loop-type attachment material.” Id. (citing DeMarco 3:42–58, Fig. 2). Appeal 2020-001797 Application 11/704,635 10 The Examiner finds that DeMarco does not teach that its wrap includes relatively stretchable material having loop-type fastening material on the inner face and hook-type fastener material on the outer face, but finds that Smithers teaches this limitation. Id. at 6–7. The Examiner concludes that it would have been obvious to combine the references because “such a configuration can be used on differently sized body parts.” Id. at 7. Appellant argues, among other things, that “DeMarco is completely silent on, and contains no specific illustration of, how tapes 18 attach to pad 12 before the knee brace is applied to the knee.” Appeal Br. 20. Appellant argues that “hook material pieces 40 are mounted on the outer face of DeMarco’s pad 12, but those pieces 40 serve to attach to loop material pieces 42 on tapes 18 only during the wrapping process, and not on the non- wrapped condition of the wrap which the Claims describe.” Id. We agree with Appellant that the Examiner has not shown that the cited references teach or would have made obvious a wrap comprising a relatively non-stretchable support and a strap having “one lengthwise end . . . attached to the support by hook-type attachment material detachably/re- attachably attaching to loop-type attachment material,” as required by claim 1. DeMarco states that its knee brace “has as its major elements a pad 12 with stay assemblies 14, quick-fasteners 16 and tapes 18.” DeMarco 2:57– 59, Fig. 1. DeMarco states that “[t]he tapes 18 . . . are suitably secured to the pad 12 and extend from the opposite sides 20 and 22 thereof.” Id. at 3:59– 61. However, DeMarco does not describe how the tapes (or straps) are secured to the pad. Appeal 2020-001797 Application 11/704,635 11 As evidence that DeMarco’s knee brace includes a strap that is attached at one lengthwise end to the support (pad), the Examiner cites DeMarco’s following disclosure: The quick-fasteners 16 number two in this instance each being of preferred Velcro type and providing two characteristic hook and loop companion parts 40 and 42, of which the hook parts 40 are in this instance secured to the outer ply 26 of the pad 12 on opposite sides of the same (FIG. 1), while the loop parts 42 are suitably secured to the respective tapes 18 next to the pad 12 and on the sides thereof which in their prescribed wind on the applied brace lie next to the latter (FIG. 2). Thus, in placing the pad 12 on a knee in correct location thereon in FIG. 4, it is merely necessary for initial and sufficiently secure hold of the pad on the knee to start winding the tapes 18 on the braced knee for a mere fraction a turn, i.e., just sufficiently to bring the loop fastener parts 42 on the tapes into overlap with their companion parts 40 so that these fastener parts 40, 42 interlock on their mere engagement, as will be readily understood. DeMarco 3:42–58. This passage describes the function of hook-type fastener 40 and loop- type fastener 42 (not shown in Figure 1 but located on the opposite side of the part of the tapes designated 16) when the knee brace is placed on the knee. Specifically, the middle of the pad is placed behind the knee and the sides 20, 22 are wrapped around the sides of the knee, as shown in Figure 4. Then each strap 18 is stretched across the front of the knee, so that each loop-type fastener 42 contacts the corresponding hook-type fastener 40 and holds pad 12 in place while the rest of the tapes 18 are wrapped around the leg above and below the knee. See DeMarco, Fig. 5. The passage cited by the Examiner thus does not describe how the lengthwise end of DeMarco’s tape (corresponding to the strap in claim 1) is secured to its pad (corresponding to the support in claim 1), and therefore Appeal 2020-001797 Application 11/704,635 12 does not provide evidence that DeMarco discloses a wrap that includes a strap having “one lengthwise end being attached to the support by hook-type attachment material detachably/re-attachably attaching to loop-type attachment material,” as required by claim 1. The Examiner has not pointed to any disclosure in Smithers of this limitation. Because the Examiner has not shown that the cited references would have made obvious a product meeting all of the limitations of claim 1, we reverse the rejection of that claim, and dependent claims 2, 21, 28, 29, 37, and 38, under 35 U.S.C. § 103(a) based on DeMarco and Smithers. The other independent claims subject to this rejection are claims 8, 14, 16, 19, and 20. Claim 8 recites a wrap comprising a support and a strap “that has lengthwise opposite ends, one of which is attached to the support,” and “one piece of hook-type fastener material which is disposed on the inner face of [a] first lengthwise segment at the one lengthwise end of the strap and which attaches the strap to the support.” Appeal Br. 28 (Claims Appendix). Claims 14, 16, and 20 recite a wrap system comprising an elastic garment sleeve and a strap, with “hook-type attachment material for attaching one lengthwise end of the strap to the sleeve.” Id. at 30, 31, 34. Claim 19 similarly recites a wrap system comprising an elastic garment sleeve and multiple straps, with “hook-type attachment material for attaching one lengthwise end of each strap to the sleeve.” Id. at 33–34. Thus, each of the other independent claims, like claim 1, requires one lengthwise end of a strap (or straps) to be attached to a support or an elastic garment sleeve via hook-and-loop attachment materials. As discussed above with reference to claim 1, the Examiner has not shown that either DeMarco or Smithers teach this limitation or that their combined teachings would have Appeal 2020-001797 Application 11/704,635 13 suggested it to a skilled artisan. We therefore reverse the rejection of claims 8, 14, 16, 19, and 20, and dependent claims 10, 11, and 17, under 35 U.S.C. § 103(a) based on DeMarco and Smithers. Obviousness: DeMarco, Smithers, and Malamed, Jewell, Lipshaw, or Binder Claims 3–5, 18, and 22–24 stand rejected as obvious based on DeMarco, Smithers, and Malamed, Jewell, Lipshaw, or Lipshaw and Binder. The rejections of claims 3–5 and 22–24 rely on the rejection of claim 1 based on DeMarco and Smithers, and the Examiner cites Malamed, Lipshaw, or Lipshaw and Binder only to meet the limitations of the dependent claims. Ans. 19, 23–24. These rejections are therefore reversed for the reasons discussed above with respect to claim 1. With regard to independent claim 18, the Examiner finds that “DeMarco discloses a wrap system 10 . . . comprising: an elastic garment sleeve 12 . . . ; at least one strap 18 . . . ; [and] hook-type attachment material 40 for attaching one lengthwise end of the strap 18 to the sleeve 12 (fig. 2 and col. 3, lines 42–58).” Ans. 20–21. As discussed above with respect to claim 1, however, the hook-type attachment material 40 of DeMarco’s knee brace does not attach the lengthwise end of strap 18 to pad 12. Rather, it attaches to the area of loop- type attachment material 42 on strap 18 when the knee brace is put in place around the user’s knee. The Examiner does not point to any disclosure in Jewell that makes up for the deficiency in DeMarco. See Ans. 22–23. We therefore reverse the rejection of claim 18 under 35 U.S.C. § 103(a) based on DeMarco, Smithers, and Jewell for the same reasons discussed above with respect to claim 1. Appeal 2020-001797 Application 11/704,635 14 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 23, 24 101 Eligibility 23, 24 15 102(b) DeMarco 15 1, 2, 8, 10, 11, 14, 16, 17, 19–21, 28, 29, 37, 38 103(a) DeMarco, Smithers 1, 2, 8, 10, 11, 14, 16, 17, 19–21, 28, 29, 37, 38 3–5 103(a) DeMarco, Smithers, Malamed 3–5 18 103(a) DeMarco, Smithers, Jewell 18 22, 23 103(a) DeMarco, Smithers, Lipshaw 22, 23 24 103(a) DeMarco, Smithers, Lipshaw, Binder 24 Overall Outcome 1–5, 8, 10, 11, 14–24, 28, 29, 37, 38 REVERSED