Ex Parte Beaudry

Board of Patent Appeals and Interferences

Dec 8, 2010

11024567 (B.P.A.I. Dec. 8, 2010)

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.
11/024,567 12/29/2004 Wallace J. Beaudry 8115.12394-A CIP DIV 2 4400
7590 12/09/2010
Laura A. Dable
RYAN KROMHOLZ & MANION, S.C.
Post Office Box 26618
Milwaukee, WI 53226-0618
EXAMINER
BROWN, MICHAEL A
ART UNIT PAPER NUMBER
3772
MAIL DATE DELIVERY MODE
12/09/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WALLACE J. BEAUDRY
____________

Appeal 2009-009866
Application 11/024,567
Technology Center 3700
____________

Before LINDA E. HORNER, STEFAN STAICOVICI, and
FRED A. SILVERBERG, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Application 11/024,567

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STATEMENT OF THE CASE
Wallace J. Beaudry (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1, 2, 9, and 11-18. Claims
3-8 and 10 have been canceled, and claims 19-28 have been withdrawn from
consideration. We have jurisdiction under 35 U.S.C. § 6(b). We
REVERSE.
THE INVENTION
Appellant’s claimed invention relates to “dressings for wounds,
bandages, drug delivery systems, epidermal lifting mechanisms, and
positioning mechanisms for positioning epidermal layers of skin on humans
and/or animals in a predetermined manner.” Spec. 1:19-22. Claim 1,
reproduced below, is the sole independent claim and is representative of the
subject matter on appeal.
1. A dressing mechanism comprising:
a first section, a second section, and a third section;
the first and third sections each including a proximal end
and a distal end;
the proximal end of the first section being coupled to the
second section and the second section being coupled to the
proximal end of the third section;
the second section comprising an elastic material;
the first section and the third section each having a first
side and a second side;
at least one adhesive layer, said at least one adhesive
layer having a first adhesive side and a second adhesive side;
said first adhesive side being coupled to said second side
of at least one of said first section and said second section;
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said at least one adhesive layer including a distal end and
a proximal end;
a barrier layer, said barrier layer overlaying at least a
portion of said first adhesive side, said at least a portion of said
first adhesive side located proximate said proximal end of said
at least one adhesive layer.
THE REJECTIONS
Appellant seeks review of the following rejections:
1. The Examiner rejected claims 1, 2, 9, and 11-18 under 35 U.S.C.
§ 112, first paragraph as failing to comply with the written description
requirement.
2. The Examiner rejected claims 1, 2, 9, and 11-18 under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which Appellant
regards as the invention.
Appellant also seeks review of the Examiner’s objection to the
Specification based on certain informalities and seeks review of the
Examiner’s requirement for a substitute specification. App. Br. 5-6; Ans. 3.
These matters are reviewable by petition under 37 C.F.R. § 1.181 (see
Manual of Patent Examining Procedure (MPEP) §§ 1002 and 1201) and are
thus not within the jurisdiction of the Board. See In re Mindick, 371 F.2d
892, 894 (CCPA 1967).
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ISSUES
The issues presented by this appeal are:
Does Appellant’s disclosure reasonably convey to those skilled in the
art that Appellant had possession of the claimed subject matter as of the
filing date?
Would those skilled in the art understand what is claimed when the
claims are read in light of Appellant’s Specification?
PRINCIPLES OF LAW
In order to satisfy the written description requirement, “the [original]
specification must describe an invention understandable to that skilled
artisan and show that the inventor actually invented the invention claimed.”
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc). “[T]he test for sufficiency is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.”
Id. (citations omitted). “[T]he level of detail required to satisfy the written
description requirement varies depending on the nature and scope of the
claims and on the complexity and predictability of the relevant technology.”
Id. (citing Capon v. Eshhar, 418 F.3d 1349, 1357-58 (Fed. Cir. 2005)). The
claimed invention need not be recited in haec verba in the original
specification in order to satisfy the written description requirement. Id. at
1352. “[T]he written description requirement is satisfied by the patentee’s
disclosure of ‘such descriptive means as words, structures, figures, diagrams,
formulas, etc., that fully set forth the claimed invention.’” Enzo Biochem,
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Inc. v. Gen-Probe Inc., 323 F.3d 956, 969 (Fed. Cir. 2002) (quoting
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)).
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted).
ANALYSIS
Written Description Rejection
The Examiner’s rejection appears to be based on a lack of written
descriptive support for the first, second, and third sections as recited in
independent claim 1. As such, our analysis focuses on independent claim 1.
We find that the level of detail provided in Appellant’s Specification is
sufficient to satisfy the written description requirement for the first section,
second section, and third section recited in claim 1.
Claim 1 recites a dressing mechanism comprising a first section, a
second section, and a third section, where the proximal end of the first
section is coupled to the second section and the second section is coupled to
the proximal end of the third section. Claim 1 further calls for the second
section to comprise an elastic material. Claim 1 further calls for a first
adhesive side of an adhesive layer to be coupled to one side of at least one of
the first and the second sections, and a barrier layer overlaying at least a
portion of the first adhesive side at a location proximate a proximal end of
the adhesive layer.
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Several embodiments in Appellant’s disclosure describe dressing
mechanisms as claimed. For example, with reference to the embodiment of
Figures 94-96, Appellant’s disclosure describes a dressing structure 300
comprised of anchor sections 301 and 303 (first and third sections) and a
center section 325 (second section) including an elastic member 321.
Spec. 42:11-34. As shown in Figures 94-96, a proximal end of the anchor
section 301 is coupled to the center section 325 and the center section 325 is
also coupled to a proximal end of the anchor section 303. Dressing structure
300 also includes an adhesive layer 327 having a first adhesive side coupled
to one side of the anchor sections 301 and 303. Spec. 42:20-21; fig. 96.
Dressing structure 300 also includes a barrier layer 500 overlaying at least a
portion of the first adhesive side of the adhesive layer 327 at a location
proximate a proximal end of the adhesive layer. Spec. 43:30-44:1; fig. 96.
Similar disclosures of dressing structures including anchor sections 301 and
303, center section 325, elastic member 321, adhesive layer 327 and barrier
layer 500 are found, for example, in the descriptions of the embodiments of
Figures 103-108 of Appellant’s Specification. Spec. 46:17-47:22. Further,
Appellant’s Specification describes, more generally, that the dressing
comprises: “a first section, a second section, and a third section” where “the
first section is coupled to the second section and the second section is
coupled to the third section” and the second section comprises an elastic
material, and one side of the first and third section shaving an adhesive
located thereon. Spec. 3:15-24.
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Based on these disclosures, we conclude that Appellant’s original
disclosure reasonably conveys to those skilled in the art that Appellant had
possession of the claimed subject matter as of the filing date. The fact that
Appellant’s Specification does not explicitly label the anchor sections 301
and 303 as the first and third sections in the written description and does not
explicitly label the center section 325 with elastic member 321 as the second
section in the written description is not a sufficient basis, in the present case,
for a finding that the claimed invention lacks adequate written descriptive
support.
Accordingly, we will not sustain the rejection of independent claim 1
or its dependent claims 2, 9, and 11-18 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Indefiniteness rejection
The Examiner appears to make two separate rejections of claims 1, 2,
9, and 11-18 under 35 U.S.C. § 112, second paragraph. Ans. 4. Both
statements of these rejections find the recitation of the different sections, i.e.,
the first, second and third sections, in the claims to be indefinite. Discerning
no meaningful difference between the statements of these two rejections, we
treat them as a single rejection of claims 1, 2, 9, and 11-18 under 35 U.S.C.
§ 112, second paragraph.
The Examiner’s rejection appears to be based on perceived
indefiniteness of the first, second, and third sections as recited in
independent claim 1. As such, our analysis focuses on independent claim 1.
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For the same reasons provided above in our analysis of the written
description rejection, we find that Appellant’s disclosure provides an
adequate description of the invention so that a person skilled in the art, upon
reading Appellant’s Specification, would understand what is being claimed
in claim 1 with reference to the first section, the second section, and the third
section. In particular, with reference to dressing structure 300 and variations
thereof described in Appellant’s Specification, the first section corresponds
to the anchor section 301, the second section corresponds to the center
section 325 including elastic member 321, and the third section corresponds
to anchor section 303. Accordingly, we will not sustain the rejection of
independent claim 1 or its dependent claims 2, 9, and 11-18 under 35 U.S.C.
§ 112, second paragraph, as being indefinite.
CONCLUSIONS
Appellant’s disclosure reasonably conveys to those skilled in the art
that Appellant had possession of the claimed subject matter as of the filing
date.
Those skilled in the art would understand what is claimed when the
claims are read in light of Appellant’s Specification.
DECISION
The decision of the Examiner to reject claims 1, 2, 9, and 11-18 is
REVERSED.

REVERSED

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Application 11/024,567

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nlk

Laura A. Dable
RYAN KROMHOLZ & MANION, S.C.
Post Office Box 26618
Milwaukee WI 53226-0618