Ex Parte 6,936,018 et al

Patent Trial and Appeal Board

Feb 12, 2013

95001311 (P.T.A.B. Feb. 12, 2013)

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.
95/001,311 03/26/2010 6,936,018 020198-002500US 5813
24504 7590 02/12/2013
THOMAS | HORSTEMEYER, LLP
400 INTERSTATE NORTH PARKWAY SE
SUITE 1500
ATLANTA, GA 30339
EXAMINER
WEHNER, CARY ELLEN
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
02/12/2013 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)

1

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

UNITED EXCHANGE CORPORATION
Requester, Respondent

v.

HEATMAX, INC.
1

Patent Owner, Appellant
____________________

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Reexamination Control 95/001,311
Patent US 6,936,018 B2
2

Technology Center 3900
____________________

Before JEFFREY B. ROBERTSON, DANIEL S. SONG and
RAE LYNN P. GUEST, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1
Heatmax, Inc. is the real party in interest (Appeal Brief (hereinafter "App.
Br.") 1).
2
Issued August 30, 2005 to Chalek (hereinafter "'018 patent").
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STATEMENT OF THE CASE
The Patent Owner appeals under 35 U.S.C. §§ 134 and 315 (2002)
from a Final Rejection of claims 1-6.
3
In addition to its Appeal Brief
(hereinafter "App. Br."), the Patent Owner also relies on its Rebuttal Brief
(hereinafter "Reb. Br."). The Requester has submitted a Respondent Brief
(hereinafter "Resp. Br.") in support of the Examiner's rejections as set forth
in the Right to Appeal Notice (hereinafter "RAN").
4
We have jurisdiction
under 35 U.S.C. §§ 134 and 315 (2002).
The '018 patent is directed to a wrap for applying a thermal pad to a
human body (Abstract). Representative claim 3 which utilizes a Jepson
format reads as follows (App. Br., Claims Appendix, underlining indicating
amendment to claim 3 as issued in the '018 patent):
3. An improved wrap suited for applying a thermal
pad to any of various different selected body portions of
different sizes, wherein the wrap has a pocket defining at
least one opening adapting the pocket to receive a
prepackaged thermal pad therein through said opening
and has a longitudinally elongated flexible and elastic
compression band that is elastic in the direction of
elongation, having first and second opposite compression
band portions extending away from two opposite edges
of said pocket to respective first and second distal ends of
said band, the band having sufficient length for applying
the pocket to a selected body portion by wrapping and

3
We observe that there appears to be a typographical error in the Right to
Appeal Notice which identifies claims 1-11 as being subject to
reexamination and rejected (Right to Appeal Notice, pg. 1), whereas only
claims 1-6 are subject to reexamination and rejected as set forth infra.
4
The Examiner's Answer dated January 25, 2012 merely incorporates by
reference, the RAN mailed April 25, 2011. Thus, we refer to the RAN in the
decision.
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applying compression to the body portion, wherein the
improvement comprises:
an attachment element carried on a first one of said
respective first and second ends of said band distal from
said pocket, wherein said attachment element is adapted
to releasably fasten to any selected portion of said elastic
band to conform and secure the wrap to a selected body
portion; and
a fastening means extending along the entire
surface of said elastic band, engageable with said
attachment element to secure the wrap around a selected
body portion while permitting any portion of the band,
distal from said engaged area, to be severed from the
wrap for variably adjusting the fit of the wrap to the size
of the selected body portion, wherein said pocket has
elasticity in the direction of elongation.

Claim 1 is also an independent claim directed to a wrap configured as
a sleeve wherein "said pocket having elasticity in the direction of
elongation." (App. Br., Claims Appendix).
The Examiner made the following rejections of the various claims
(parenthetical identifying the actual ground in the RAN):
1. Claims 3-6 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Admitted Prior Art
5
, Ouellette
6
and Rosenwald
7

(Ground 5);
2. Claims 3 and 6 under 35 U.S.C. § 103(a) as unpatentable over
the combination of Rosenwald in view of Meistrell
8
(Ground 6);

5
The Examiner's position is that because claim 3 of the '018 patent is in
Jepson format, the recitations prior to "wherein the improvement comprises"
is admitted prior art (hereinafter "APA"; RAN 14).
6
International Publication No. WO 97/01315, published January 16, 1997.
7
U.S. Patent No. 5,496,358 to Rosenwald, issued March 5, 1996.
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3. Claims 4 and 5 under 35 U.S.C. § 103(a) as unpatentable over
the combination of Rosenwald, Meistrell and Ouellette (Ground 7);
4. Claim 3 under 35 U.S.C. § 102(b) as anticipated by Lerner
9

(Ground 8);
5. Claims 1 and 2 under 35 U.S.C. § 103(a) as unpatentable over
the combination of Ouellette, Rosenwald and Lemon
10
(Ground 9);
and
6. Claims 3-6 under 35 U.S.C. § 103(a) as unpatentable over the
combination of APA, Ouellette and Hernandez
11
(Ground 11).

We AFFIRM.

ISSUES
The following issues have been raised in the present appeal.
1. Whether the claim limitation "wherein said pocket has elasticity
in the direction of elongation" precludes any non-elastic portion on
the pocket.
2. Whether the Examiner erred in finding that Rosenwald
discloses a pocket having "elasticity in the direction of elongation."
3. Whether the Examiner erred in finding Lerner discloses a
pocket having "elasticity in the direction of elongation."

8
U.S. Patent No. 4,805,620 to Meistrell issued February 21, 1989.
9
U.S. Patent No. 5,956,963 to Lerner issued September 28, 1999.
10
U.S. Patent No. 3,710,790 to Lemon issued January 16, 1973.
11
U.S. Patent No. 4,625,340 to Hernandez issued December, 2, 1986.
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4. Whether the Examiner erred in finding that Hernandez discloses
a pocket having "elasticity in the direction of elongation."

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. A. The '018 patent discloses a wrap for applying a thermal pad to a
human body (Abstract). Figure 1 of the '018 patent is reproduced
below.

Figure 1 shows "a plan view of the inner surface of one
embodiment of a thermal application device" constructed as a wrap 10
with a strip 12 made of a flexible material, and a pouch 14 formed by
a layer 20 of the same material that is attached at three edges to form
an end opening 22 for receiving a thermal pack (col. 4, ll. 7-10, 44-
67).
B. The specification of the '018 patent states "[t]he material of the
strip 12 from which the wrap 10 is constructed is preferably a material
which is sufficiently flexible to provide a certain amount of elasticity
or pliancy in the direction of elongation." (Col. 4, ll. 44-48; see also
col. 3, ll. 21-23, 48-49).
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C. The specification of the '018 patent further states that "the
pouch is made from the same flexible woven cloth as the band and has
an end opening adapted to permit access to the interior thereof for
selective insertion and retrieval of a thermal pack." (Col. 3, ll. 56-60).
D. The specification of the '018 patent also states:
Given the width of the pouch 14, 16 relative to the width of the
strip 12, the end opening 22 and the interior of the pouch 14, 16
may be accessed even after the device 10, 11 or 32 has been
placed on an injured party. Thus, the device 10, 11, 32 does not
need to be entirely removed and [sic] order to change out the
thermal pack as the heat or cold wears off. Inasmuch as there is
no latex or rubber included in the strip 12, there is no allergic
reaction potential to contact with the skin of a user. However,
the slight elasticity and pliancy accommodates adjustability
onto an injured body portion as well as permits compression.
(Col. 6, ll. 28-39).

2. A. Rosenwald discloses a thermal wrap for joints and limbs
(Abstract). Figure 3 of Rosenwald is reproduced below.

Figure 3 shows the outer surface of a knee wrap 10 laid flat, the
knee wrap including a support member 12 which carries a flexible
pouch 42 with panel 44, a fastener strip 30, a fastener with first and
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second coacting parts 36, 38, and upper and lower flexible straps 22,
24 (col. 2, ll. 50-51; col. 5, ll. 16-31).
B. Rosenwald discloses that the support member 12 is made of a
stretch fabric that provides "omnidirectional elasticity," that the panel
44 is "preferably constructed of the same material as support member
12" and that the formed pouch is "expandable." (Col. 5, ll. 42-45, 57-
65).
C. Figure 6 of Rosenwald is reproduced below.

Figure 6 shows another embodiment of a knee wrap including a
support member 112, a pouch panel 144 that forms a pouch 142, and a
zipper 152 for closing the pouch (col. 2, ll. 54; col. 7, ll. 20-24, 34-
37).
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D. Figure 13 of Rosenwald is reproduced below.

Figure 13 shows a perspective view of an embodiment of an ankle
wrap 400 including flexible elastic cloth panels 402, 404 that define a
flexible elastic pouch 406 which is closed by hook and loop fastener
strips 408, 410, and inelastic cinch strap fastener strip 442 (col. 2, ll.
67; col. 9, ll. 7-16).

3. A. Hernandez discloses a carrier pocket textile sleeve that is worn
around the calf of the user (Abstract). Figure 1 of Hernandez is
reproduced below.

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Figure 1 shows a side elevation view of the carrier which is a
tubular sleeve 6 of "somewhat elastic fabric" that is "augmented by an
overlying sheet 9 of a generally similar textile or knitted material" so
as to form a pocket 13 with an opening 12 (col. 1, ll. 39-41, 49-65).
B. The carrier of Hernandez also includes a flap 16 that overlaps
the opening 12 and includes a portion of a fastener 18 that engages a
mating fastener part 19 secured to the overlying sheet 9 (col. 2, ll. 4-
16).
C. Hernandez states that various personal articles can be inserted
into the pocket "and are normally retained by the elasticity of the
sleeve and the sheet." (Col. 1, l. 65-col. 2, l. 2).

PRINCIPLES OF LAW
Claims are to be given 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. In
re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). This
is the standard for claim interpretation in both original examination and re-
examination. See In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984); see
also In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir.
2007) ("During reexamination, as with original examination, the PTO must
give claims their broadest reasonable construction consistent with the
specification. Therefore, we look to the specification to see if it provides a
definition for claim terms, but otherwise apply a broad interpretation.").
Furthermore, "[t]hough understanding the claim language may be aided by
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the explanations contained in the written description, it is important not to
import into a claim limitations that are not a part of the claim." See
Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir.
2004).

ANALYSIS
We address the various rejections and arguments in the appeal infra,
albeit in an order that differs from that presented by the Patent Owner.

Rejection 1 (Ground 5)
The Examiner rejects claims 3-6 as obvious over the combination of
APA, Ouellette and Rosenwald, the Examiner relying on Ouellette for
disclosing the use of the claimed fastening means, and relying on Rosenwald
for disclosing the limitation "a pocket having an elasticity in the direction of
elongation." (RAN 15). The Examiner concludes that it would have been
obvious to one of ordinary skill in the art "to construct the pocket of the
APA of a material having an elasticity in the direction of elongation, as
taught by Rosenwald, so that the pocket can be expanded to accommodate
different sized thermal packs." (RAN 15-16).
The Patent Owner argues that Rosenwald does not disclose the
limitation "wherein said pocket has elasticity in the direction of elongation"
because the broadest reasonable interpretation of claim 3 in view of the
specification of the '018 patent requires the "entire pocket" to have elasticity
in the direction of elongation thereby precluding non-elastic portions on the
pocket. (App. Br. 5-8; Reb. Br. 2-5). The Patent Owner provides a citation to
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the specification of the '018 patent in support of this interpretation, and
argues that the claimed wrap has a benefit in that it "does not need to be
entirely removed in order to change out the thermal pack. This is due to the
width of the pouch relative to the width of the strip in addition to the elastic
nature of the entire pouch itself." (App. Br. 8-9, emphasis in original; Reb.
Br. 6; see also FF 1D).
The Patent Owner argues that "[e]ach of the pocket configurations
taught by Rosenwald includes at least a portion of the pocket that is not
elastic, which ultimately affects the elasticity of the pocket as a whole."
(App. Br. 9, emphasis in original). With respect to the embodiment of
Rosenwald shown in Figure 3, the Patent Owner argues that the fastener
strip 30 extending across the top of the pouch 42 is inelastic (FF 2A), and
thus, the pouch is not elastic in the direction of elongation (App. Br. 6; Reb.
Br. 3-4). As to the embodiment shown in Figure 6, the Patent Owner argues
that because of the inelastic zipper strip 152 (FF 2C), "the opening of the
pouch is not elastic." (App. Br. 7, emphasis in original; Reb. Br. 4). The
Patent Owner similarly argues that the embodiment shown in Figure 13
includes inelastic cinch strap fastener strip 442 (FF 2D) so that the disclosed
pocket is not elastic in the direction of elongation (App. Br. 7-8; Reb. Br. 5).
The Examiner finds that the fastener strip or zipper present in the
embodiments of Rosenwald does not restrict the other areas of the pocket,
and finds that Rosenwald "expressly discusses the elasticity of the panel that
forms the pocket." (RAN 30). Thus, the Examiner's rejection implicitly
interprets the limitation "a pocket having an elasticity in the direction of
elongation" as not precluding inclusion of inelastic components. The
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Requester argues that the specification of the '018 patent does not define the
degree of elasticity required, and claim 3 does not recite "where elasticity is
present in the pocket," or recite that the "opening" of the pouch is elastic as
argued by the Patent Owner (Res. Br. 5-7).
We find no error in the Examiner's rejection. The Patent Owner's
arguments for a narrow interpretation of the added limitation "wherein said
pocket has elasticity in the direction of elongation" are not well founded.
Whereas the Patent Owner provides a citation to the specification of the '018
patent in support of its narrow interpretation, the ability to change out the
thermal pack without the entire removal of the device is attributed to the
"width of the pouch 14, 16 relative to the width of the strip 12" (FF 1D), and
not to the entirety of the pocket being elastic. The specification also refers
to elasticity and pliancy as merely allowing adjustability of the strip 12 and
compression on the injured body portion (FF 1D). Indeed, the specification
of the '018 patent does not describe "elasticity" of the pouch in a specific
manner so as to preclude any inelastic portion thereon. Whereas the wrap
illustrated does not include any inelastic features on the pouch, we decline to
read such a limitation from the specification into the claim because the claim
language is broader. See Superguide, 358 F.3d at 875. We find no
reasonable basis to conclude that this limitation would be understood by one
of ordinary skill in the art when reviewing the specification so as to preclude
any inelastic portion on an elastic pocket, and the Patent Owner has not set
forth any persuasive evidence that supports a different conclusion.
To the extent that the pockets disclosed in the various embodiments of
Rosenwald do include a small inelastic portion at the edge thereof that forms
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the opening, most of the elastic pocket is clearly unimpeded in the direction
of elongation (FF 2A-2D). In this regard, Rosenwald discloses that the
pouch is formed of a stretch fabric that provides "omnidirectional elasticity,"
and further characterizes the pouch as being "expandable." (FF 2B).
The Patent Owner's argument that the claimed invention provides the
benefit of allowing exchange of the thermal pad without removal of the warp
is also unpersuasive because the ability of such an exchange would be
impacted by the size of the thermal pack which is not a limitation in the
claims. Furthermore, a small inelastic portion at the edge of the pocket in
the embodiments of Rosenwald would not preclude such exchange of the
thermal pack because the opening of the pouch extends the width of the
pocket. While the ability to enlarge the opening of the pouch would make
such exchange of the thermal pack potentially easier, the claims are not
directed to enlargement of the opening of the pocket. Instead, the claims
merely require that the pocket have elasticity in the direction of elongation
which the pouch of Rosenwald clearly has.
For the foregoing reasons, we disagree with the Patent Owner's
asserted claim interpretation, and are not persuaded that the Examiner erred.
Thus, the Examiner's Rejection 1 of claims 3-6 as being obvious over the
combination of APA, Ouellette and Rosenwald is sustained.

Rejections 2, 3 and 5 (Grounds 6, 7, 9)
The dispositive issue in these rejections is the same as that of
Rejection 1 discussed supra, namely, whether Rosenwald discloses a pocket
having "elasticity in the direction of elongation." In its brief, the Patent
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Owner's relies on the same arguments proffered with respect to Rejection 1
in its request to reverse Rejections 2 and 3, and submits substantially the
same arguments with respect to Rejection 5 which rejects claims 1 and 2
(App. Br. 10-15). Thus, for the reasons discussed supra in Rejection 1, we
sustain Rejections 2, 3 and 5 as well.

Rejection 6 (Ground 11)
The Examiner rejects claims 3-6 under 35 U.S.C. § 103(a) as
unpatentable over the combination of APA, Ouellette and Hernandez,
finding that Hernandez discloses a carrier with "a pocket having an elasticity
in the direction of elongation [] and allows for some bulging or shifting of
the contents of the pocket[.]" (RAN 23). The Examiner concludes that it
would have been obvious to one of ordinary skill in the art "to construct the
pocket of the APA of a material having an elasticity in the direction of
elongation, as taught by Hernandez, so that the pocket can be expanded to
accommodate different sized thermal packs." (RAN 23).
The Patent Owner's arguments proffered with respect to this rejection
are substantially similar to those submitted with respect to Rosenwald in
Rejection 1. In particular, the Patent Owner argues that the limitation
"wherein said pocket has elasticity in the direction of elongation" recited in
independent claim 3 should be narrowly interpreted to require the entirety of
the pocket to have the recited elasticity (App. Br. 17-19), thereby precluding
inelastic portions being present on the pocket. The Patent Owner argues that
the provision of the fastener portion 19 on the sheet 9 that forms the pocket
(FF 3A), "clearly restricts the elasticity of the pocket," and thus, fails to
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disclose a pocket having elasticity in the direction of elongation as required
(App. Br. 17).
We disagree with the Patent Owner's claim interpretation for the
reasons already discussed supra relative to Rejection 1. In addition, we
agree with the Examiner's finding that Hernandez discloses a pocket having
elasticity in the direction of elongation. In particular, Hernandez discloses a
tubular sleeve 6 of an elastic fabric with a pocket 13 thereon made from the
same elastic material (FF 3A, 3C). Whereas the carrier of Hernandez
includes a mating fastener part 19 on the pocket 13, the mating fastener part
19 is small in comparison to the pocket 13, and thus, the teaching evinces
that the pocket is elastic in the direction of elongation (FF 3A-3C). We
further observe that in the carrier of Hernandez, the mating fastener part 19
extends along only a portion of the edge forming the opening 12 of the
pocket 13 (FF 3A). Hence, the carrier of Hernandez would allow the
opening of the pocket to be enlarged so as to facilitate exchange of a thermal
pack without removal of the sleeve which is purported to be the advantage of
the claimed invention.
Thus, the Examiner's Rejection 6 of claims 3-6 as obvious over the
combination of APA, Ouellette and Hernandez is also sustained.

Rejection 4 (Ground 8)
The Examiner rejects claim 3 as anticipated by Lerner (RAN 18).
However, claim 3 has been rejected as unpatentable in three different
rejections, namely, Rejections 1, 2 and 6 discussed supra. Thus, we find it
unnecessary to reach this rejection.
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CONCLUSIONS
1. The claim limitation "wherein said pocket has elasticity in the
direction of elongation" does not preclude presence of a non-elastic
portion on the pocket.
2. The Examiner did not err in finding that Rosenwald discloses a
pocket having "elasticity in the direction of elongation."
3. We do not reach the issue of whether Lerner discloses a pocket
having "elasticity in the direction of elongation."
4. The Examiner did not err in finding that Hernandez discloses a
pocket having "elasticity in the direction of elongation."

ORDER
The Examiner's Rejections 1-3, 5 and 6 are AFFIRMED so that claims
1-6 subject to this reexamination stand rejected.

Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g).

AFFIRMED

alw

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Patent Owner:
Thomas, Kayden, Horstemeyer & Risley, L.L.P.
400 Interstate North Pkwy., SE
Suite 1500
Atlanta, GA 30339

Third Party Requester:
Townsend and Townsend and Crew LLP
Two Embarcadero Center, Eighth Floor
San Francisco, CA 94111-3834