3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals Board

Dec 20, 2021

2021003419 (P.T.A.B. Dec. 20, 2021)

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.
15/537,931 06/20/2017 Andrew J. McGregor 76989US007 2152
32692 7590 12/20/2021
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
EKRAMI, YASAMIN
ART UNIT PAPER NUMBER
3794
NOTIFICATION DATE DELIVERY MODE
12/20/2021 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW J. MCGREGOR
Appeal 2021-003419
Application 15/537,931
Technology Center 3700
Before WILLIAM A. CAPP, JEREMY M. PLENZLER, and
MICHAEL L. WOODS, Administrative Patent Judges.
PLENZLER, 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 1–5, 7–13, and 15–22. 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(a). Appellant identifies the real party in interest as 3M Company.
Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims relate to a convective garment. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A combination, comprising:
a garment,
a configurable convective device configured to be
disposed on the garment, comprising:
a flexible first layer having air permeable surface;
a flexible second layer joining the first layer by a
seal around a common periphery to form a pneumatic structure,
the pneumatic structure having a first edge and an opposing
second edge, wherein the pneumatic structure comprises a first
portion, a second portion, and an inflatable channel connecting
the first portion and the second portion;
at least one opening into the pneumatic structure;
and
a separation device disposed on the first edge and
between the first portion and the second portion, comprising: an
enclosure seal extending from the first edge toward the second
edge, and a separation element within the enclosure seal, wherein
the separation element comprises at least one of a line of
weakness, perforation, and slit;
an additional convective device disposed between the first
portion and the second portion; and
an attachment device configured to attach the configurable
convective device to the garment,
wherein the separation device at least partially surrounds
the additional convective device and separates the additional
convective device from the first portion, the second portion and
the inflatable channel of the configurable convective device.
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Augustine US 2003/0195596 A1 Oct. 16, 2003
Anderson US 2007/0093882 A1 Apr. 26, 2007
Pierre ’532 US 2007/0244532 A1 Oct. 18, 2007
Pierre ’139 US 2010/0211139 A1 Aug. 19, 2010
Pierre ’141 US 2010/0211141 A1 Aug. 19, 2010
REJECTIONS
Claims 1–4, 7–10, and 16–18 are rejected under 35 U.S.C. § 103 as
being unpatentable over Anderson and Pierre ’141.2
Claim 5 is rejected under 35 U.S.C. § 103 as being unpatentable over
Anderson, Pierre ’141, and Pierre ’532.3
Claims 11–13, 15, and 19–22 are rejected under 35 U.S.C. § 103 as
being unpatentable over Pierre ’139 and Augustine.
OPINION
Claim 1
With respect to the Examiner’s first basis for rejecting claim 1,
Appellant argues claims 1, 3, 7–10, 17, and 18 as a group. See Appeal Br.
8–10. We select claim 1 as representative. Claims 3, 7–10, 17, and 18 stand
or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant does not
provide separate argument for the rejection of claim 5. See Appeal Br. 13.

2 The Examiner provides two alternate bases for the rejection using this
combination of references.
3 The Examiner provides two alternate bases for the rejection using this
combination of references.
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Appellant contends that “[t]he combined teachings of the references
do not teach or disclose ‘an enclosure seal extending from the first edge
toward the second edge.’” Appeal Br. 9. With respect to this feature, the
claim recites
a separation device disposed on the first edge and between the
first portion and the second portion, comprising: an enclosure
seal extending from the first edge toward the second edge, and a
separation element within the enclosure seal, wherein the
separation element comprises at least one of a line of weakness,
perforation, and slit.
The Examiner finds that Andersen teaches the separation device, including
perforation 66p (Final Act. 7), but “is silent about specifically teaching the
separation element is within an enclosure seal” (id. at 8). The Examiner
cites Pierre ’141 for the enclosure seal teaching and reasons that it would
have been obvious to include such a seal in Anderson. Id. at 9.
Figure 3B of Anderson is reproduced below.

Anderson’s Figure 3B is a plan view of its convective apparatus. Anderson
¶ 34. Anderson explains that “the first convective apparatus 60 may include
an attachment mechanism, preferably in the form of double-sided tape 66”
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and that “the sealed lower portion of the permeable surface 64 where the
attachment mechanism is mounted may be surrounded by a perforation 66p
which allows either side of the attachment mechanism to be detached from
the sealed lower portion and permit the attachment mechanism to pivot on
its longitudinal edge,” which “also permits the attachment mechanism to be
removed after use.” Anderson ¶ 49.
Appellant contends that “Anderson teaches a peripheral seal, it does
not teach an enclosure seal.” Appeal Br. 9. This contention is unpersuasive
because it is unclear what structure Appellant refers to as missing from
Anderson by this statement. Indeed, Appellant identifies no particular
missing structure, and the claim simply requires that the “enclosure seal
extend[s] from the first edge toward the second edge, and a separation
element within the enclosure seal.” What Appellant references as a
“peripheral seal,” when discussing Anderson, extends around perforation
66p (i.e., it surrounds double-sided tape 66 and perforation 66p). Otherwise,
the device would not work as described when perforation 66p is torn, for
example, to permit the described pivoting because there would be a large
opening bleeding air. Although Appellant further contends that any
“enclosure seal [in Anderson] does not extend from the first edge to the
second edge, but rather from the first edge to another part of the first edge,”
this is not commensurate with the scope of the claim. Id. As the Examiner
notes (Advisory Act. 2), the claim recites the extent as “toward,” not “to.”
Appellant’s contention is also unpersuasive because, as noted above,
the Examiner cites Pierre ’141 for the enclosure seal. Appellant does not
dispute the Examiner’s finding related to Pierre 141’s teaching an enclosure
seal. Although Appellant alleges that the proposed combination would not
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have been obvious, there is no accompanying explanation, just a block quote
of Anderson’s paragraph 49. This does not apprise us of any particular error
in the Examiner’s rejection.
Claim 1 additionally recites “an additional convective device” and
that “the separation device at least partially surrounds the additional
convective device and separates the additional convective device from the
first portion, the second portion and the inflatable channel of the
configurable convective device.” The Examiner cites Anderson’s second
convective apparatus 70 as corresponding to the “additional convective
device recited in the claim.” Final Act. 7.
Anderson’s Figures 3D and 3G are reproduced below.

Figure 3D is a plan view of Anderson’s second convective apparatus 70.
Anderson ¶ 35.
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Figure 3G is a schematic illustration of the attachment between Anderson’s
first convective apparatus 60 and second convective apparatus 70. Id. ¶ 38.
Appellant acknowledges that “Anderson teaches a separation device,
and the additional convective device.” Appeal Br. 10. Appellant contends,
however, that “the separation device does not ‘separate the additional
convective device from the first portion, the second portion and the
inflatable channel of the configurable convective device’ because the
additional convective device and the configurable convective device do not
contact each other and are already inherently separated.” Id. This
contention is unpersuasive because Appellant does not address the actual
disclosure of Anderson.
Anderson explains, for example, “the upper edge 80 of the second
convective apparatus 70 overlaps the lower edge 65 of the first convective
apparatus [60]” and “[t]he upper edge 80 may be retained in place by
tacking, taping, or a light adhesive acting between the upper edge 80 and the
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first convective apparatus 60.” Anderson ¶ 57. That is, Anderson expressly
discloses what Appellant alleges is not present in Anderson (i.e., first
convective apparatus 60 and second convective apparatus 70 not only
contact one another, but are coupled to one another).
For at least the reasons set forth above, we are not apprised of error in
the Examiner’s first basis for rejecting claims 1, 3, 5, 7–10, 17, and 18.
As for the Examiner’s second basis for rejecting claim 1, Appellant
argues claims 1, 3, 7–10, and 16–18 as a group. See Appeal Br. 11–13. We
select claim 1 as representative. Claims 3, 7–10, and 16–18 stand or fall
with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant does not provide
separate argument for the rejection of claim 5. See Appeal Br. 13.
The main difference in the second basis of rejection for claim 1 is “the
two convective devices in this rejection include only 71 and 72” from
Anderson. Ans. 6. As discussed above with respect to the first basis of
rejection, the Examiner again finds Anderson’s “embodiment in Fig. 3B
provides for a separation device 66p that extends from a first edge 65 to a
second edge 62, where 66p is also in contact with edge 80 allowing for
separation between two different convective devices 60 and 70 (which
includes 71 and 72).” Id. The Examiner explains that one skilled in the art
considering this teaching in Anderson would have found it “obvious to
modify the outline of the inflatable convective device 71 to include slits or a
separation device so that it can separate from convective device 72 and be
removed and taped directly onto the patient.” Id. at 6–7.
Appellant’s dispute is based on an unfounded allegation that there
would not have been a reasonable expectation of success when making the
proposed modification. See Appeal Br. 12; Reply Br. 2.
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Based on the record before us, the Examiner has the better position.
Although Appellant alleges that premature tearing might occur from the
proposed modification, the fact that Anderson describes use of such a
separation mechanism as discussed above relative to the first basis suggests
that one skilled in the art would know how to make such an arrangement that
would not tear during normal use as Appellant alleges, regardless of whether
such a separation mechanism is used for different portions of the convective
device. The Examiner has a reasonable basis for the conclusion of
obviousness and Appellant’s general allegations do not identify error.
For at least the reasons set forth above, we are not apprised of error in
the Examiner’s first basis for rejecting claims 1, 3, 5, 7–10, and 16–18.
Claim 2
Claim 2 depends from claim 1 and adds “an air-guide device disposed
proximate to a periphery of the inflatable channel connecting the first
portion and the second portion, the air-guide device configured to direct
flow of inflation medium when at least one of the first and second portions is
bent.”
The Examiner finds that “Anderson teaches wherein the configurable
convective device further comprises an air-guide device configured to direct
flow of inflation medium when at least one of the first and second portions is
bent.” Final Act. 9 (citing Anderson ¶ 64). The Examiner finds that
although “Anderson does not teach the air guide device is disposed
proximate to a periphery of the inflatable channel,” “Pierre teaches its air
guide device are positioned proximate the periphery of the inflatable
channel” and proposes modifying Anderson accordingly. Id. (citing
Pierre ’141 ¶ 20).
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Appellant contends that “Pierre does not teach or disclose ‘the air-
guide device configured to direct flow of inflation medium when at least one
of the first and second portions is bent’” and “[g]iven the design of Pierre, it
is likely that a person of ordinary skill in the art would expect that the
longitudinally disposed air-guide devices would cause impedance of airflow
when the device is bent.” Appeal Br. 10. Appellant contends that
“[b]ecause of this, a person of ordinary skill in the art would not have a
reasonable expectation of success in combining the air-guide device with
Anderson.” Id.
Appellant’s contentions are not persuasive because they do not
identify reversible error in the Examiner’s rejection. As noted above, the
Examiner finds that Anderson teaches the “air-guide device configured to
direct flow of inflation medium when at least one of the first and second
portions is bent.” Final Act. 9. Appellant does not dispute this finding. Nor
does Appellant identify error in the Examiner’s proposed modification to the
air guide device’s position in Anderson. Appellant does not even allege, let
alone persuasive argue, that Anderson’s device would not operate properly
when modified as proposed by the Examiner. Moreover, we note that the
claims do not require any particular degree of bending.
For at least these reasons, we are not apprised or error in the
Examiner’s decision to reject claim 2.
Claim 4
Claim 4 depends from claim 2 and adds that “the air-guide device is
configured to facilitate forming creases at the edge of the air-guide device
when the configurable convective device is inflated and at least one of the
first portion and the second portion is bent.”
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The Examiner finds that “Pierre teaches wherein the air-guide device
is configured to facilitate forming creases at the edge of the air guide device
when the configurable convective device is inflated.” Final Act. 10 (citing
Pierre ’141 ¶ 18).
Appellant alleges that “due to placement of the air-guide device and
the orientation (longitudinally), a person of ordinary skill in the art would
not expect that the edges will form creases because there is no part of the air-
guide device that is proximate to the edge.” Appeal Br. 11.
This is unpersuasive of error, because the modification discussed
above relative to claim 2 places the air guide device proximate the periphery
in Anderson. See Advisory Act. 3 (explaining the same).
For at least this reason, we are not apprised of error in the Examiner’s
decision to reject claim 4.
Claim 11
Claim 11 is independent. The Examiner cites a different combination
of references, Pierre ’139 and Augustine, when rejecting claims 11–13, 15,
and 19–22. Appellant argues claims 11–13, 15, and 19–22 as a group.
Appeal Br. 14–15. We select claim 11 as representative. Claims 12, 13, 15,
and 19–22 stand or fall with claim 11.
The Examiner finds Pierre ’139 teaches each limitation in claim 11,
but “is silent about specifically teaching a garment and does not teach an
attachment device configured to attach the configurable convective device to
the garment.” Final Act. 21. The Examiner cites Augustine for the general
teaching of a convective device coupled to a garment and proposes
modifying Pierre ’139 accordingly. Id. at 22.
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Other than presenting unpersuasive contentions related to a bodily
incorporation of Pierre ’139’s device into Augustine’s garment, which is not
the basis of the Examiner’s rejection, Appellant only disputes the
Examiner’s findings related to claim 11’s recitation of “an air-guide device
disposed between the first portion and the second portion, the air-guide
device configured to direct flow of inflation medium at a bending area when
at least one of the first and second portions is bent.” Appeal Br. 14.
Appellant contends that “Pierre appears to disclose the alleged air-
guide device as being located on either the first portion or on the second
portion and not ‘disposed between’ as claimed” and “when the first and
second portion is bent as shown in FIG. 3, it would appear that little to no
direction of the flow would occur because the fold would result in a crease
and would impede inflation.” Appeal Br. 14.
The Examiner responds, pointing to paragraph [0015] of Pierre ’139,
finding that the arrangement of longitudinal and horizontal seals in
Pierre ’139 would provide the flow recited in the claim. Ans. 7–8.
Appellant offers no persuasive explanation as to why Pierre’s seals are any
different than the air guide devices required by the claim. Even Appellant’s
air guide device is made up of seals on opposite portions of its convective
device. See Spec. ¶ 33 (“the air-guide device 120 comprises two guiding
seals 121 and 122”); id. at Fig. 1A (illustrating seals 121, 122).
Accordingly, we are not apprised of any persuasive reason why Pierre ’139’s
“air guide device” is not “disposed between the first portion and the second
portion” as recited in claim 11. Nor does Appellant offer any persuasive
explanation as to why those seals in Pierre ’139 would not “direct flow of
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inflation medium at a bending area when at least one of the first and second
portions is bent” as explained by the Examiner.
Moreover, Appellant’s contention reads too much into the claim. As
noted above, there is no particular degree of bending required by the claim,
and certainly not a bend to the degree that would form the crease asserted in
Appellant’s argument.
For at least the reasons set forth above, we are not apprised of error in
the Examiner’s decision to reject claims 11–13, 15, and 19–22.
CONCLUSION
The Examiner’s rejections are affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4, 7–10,
16–18
103 Anderson,
Pierre ’141
1–4, 7–10,
16–18

5 103 Anderson,
Pierre ’141,
Pierre ’532
5
11–13, 15,
19–22
103 Pierre ’139,
Augustine
11–13, 15,
19–22

Overall
Outcome
1–5, 7–13,
15–22

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) .
AFFIRMED