Ex Parte Bray

Board of Patent Appeals and Interferences

Aug 14, 2009

10513065 (B.P.A.I. Aug. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ROGER BRAY
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Appeal 2009-004923
Application 10/513,065
Technology Center 3700
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Decided: August 14, 2009
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Before LORA M. GREEN, RICHARD M. LEBOVITZ, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
wound dressing. The Patent Examiner rejected some of the claims as
anticipated, and the remainder of the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
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STATEMENT OF THE CASE
The invention “relates to wound dressings of the type in which the
wound-contacting surface is composed of a cellulosic material that has been
subjected to carboxymethylation.” (Spec. 1:4-6.) Claims 15-27, which are
all the pending claims, are on appeal. Claims 15, 23 and 26 are
representative and read as follows:
15. A method of manufacturing a wound dressing in the form of a body-
shaped component, wherein the wound dressing is composed of
carboxymethylated cellulosic fabric and has been obtained by a
method comprising the steps of forming a body-shaped component
comprising a cellulosic material and subjecting said body-shaped
component to a carboxymethylation process to carboxymethylate the
cellulosic material at the surface which in use of the dressing contacts
a wound, the carboxymethylated body-shaped component having a
three dimensional shape as opposed to being flat, its shape being such
that when placed on a body part it is able to remain there of its own
accord and does not fall off without the aid of an adhesive layer.

23. The method according to claim 15, wherein the body-shaped
component is composed of at least two pieces of fabric sewn together
with a yarn composed of a material that is not degraded by the
carboxymethylation process.

26. The method according to claim 15, wherein it includes the step of
providing the dressing with a removable cover.

The Examiner rejected the claims as follows:
• claims 15-22 and 24 under 35 U.S.C. § 102(b) as anticipated by
Patel;1 and
• claims 23 and 25 under 35 U.S.C. § 103(a) as obvious over Patel
and Suehr;2 and

1 WO 00/01425, by Champa Patel et al., published Jan. 13, 2000.
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• claims 26 and 27 under 35 U.S.C. § 103(a) as obvious over Patel
and Mann.3

ANTICIPATION
The Anticipation Issue
The Examiner’s position is that Patel disclosed a method of
manufacturing a wound dressing in the form of a body-shaped component.
(Ans. 4.) The Examiner found that “[t]he Patel device is inherently three-
dimensional because all objects are three-dimensional unless the object is
only a plane.” (Id. at 5.) The Examiner further found the Patel device was
capable of being held on a body without adhesive because when placed on
top of a body part, “gravity would hold it on.” (Id.)
Appellant contends that the “claims require that the
carboxymethylated body-shaped component has a three dimensional shape
as opposed to being flat.” (App. Br. 3.) Appellant argues that Patel
concerns “flat fabrics or tow, but does not mention providing those fabrics in
a three dimensional, body shape prior to carboxymethylation.” (Id. at 3-4.)
According to Appellant, “[t]he planar fabric in Patel, et al., therefore, does
not have the form of a body shaped component when it is
carboxymethylated as required by Applicant’s claim 15.” (Id. at 4.) Further,
“[t]he planar fabric of Patel, et al. may be conformable enough to adopt the
shape of the body part on which it is placed, but that will not enable it to
remain there ‘of its own accord’ as required by the claims.” (Id.)

2 US 2002/0099318 A1, by Susan Suehr et al., published Jul. 25, 2002.
3 GB 2 357 286 A, by Gregory Mann et al., published June 20, 2001.
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The issue with respect to this rejection is whether Patel’s article was
formed as a body-shaped component prior to the carboxymethylation step,
and after carboxymethylation, would it have been capable of remaining on a
body part of its own accord.

Findings of Fact
1. Patel disclosed a method of making wound dressings by
carboxymethylating the surface of cellulosic material. (Patel 4:6-17.)
2. Patel taught that the wound dressing article “may be for example a
fibre, an article containing a fibre such as a woven, knitted or
nonwoven fabric, a film or a sponge.” (Id. at 7:4-6.)
3. Appellant’s Specification refers the reader to Patel’s disclosure for “a
fuller discussion of the preferred degree of carboxymethylation to
achieve optimal results.” (Spec. 1:19-27.)
4. Appellant’s Specification states: “The appropriate reaction conditions
. . . may, for example, be identical or similar to those described in . . .
WO 00/01425 [Patel], the contents of which are incorporated by
reference herein and to which the reader is directed for further detail.”
(Id. at 6:25-27.)
5. Appellant’s Specification states: “The body-shaped dressings have a
three-dimensional shape as opposed to being flat, albeit they are
flexible or deformable.” (Id. at 3:18-19.)
6. Appellant’s Specification evaluated Patel type bandages as follows:
“The techniques described in these documents resulted in
commercially successful wound dressings, which are essentially flat
but flexible . . . However, their usefulness is limited . . . where the use
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of adhesive attachment means is difficult. Dressing retention can also
be a problem in awkwardly shaped parts of the body . . ..” (Id. at 2:1-
14).

Principles of Law Relating to Anticipation
To anticipate a claim, a prior art reference must disclose
every limitation of the claimed invention, either explicitly or
inherently. Anticipation is an issue of fact, and the question of
whether a claim limitation is inherent in a prior art reference is
a factual issue.

In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted).
[T]he 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). “Absent claim language
carrying a narrow meaning, the PTO should only limit the claim based on
the specification . . . when [the specification] expressly disclaim[s] the
broader definition.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).

Analysis of the Anticipation Issue
The first step in claim 15’s method is “forming a body-shaped
component.” The Specification’s “Disclosure of the invention” describes
“improved wound dressings in the form of a body-shaped component.”
(Spec. 3:12-23.) According to the Specification, the “body-shaped”
dressings of the invention are “not flat.” (FF5 & 6.) We find that
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Appellant’s Specification expressly disclaimed forming flat body-shaped
components.
The Examiner found that Patel anticipated because the claims, broadly
interpreted, included forming flat-shaped components in the first step.
However, Appellant’s express disclaimer of flat shapes means that claim 15
does not include a step of forming flat-shaped components, such as the
Examiner found described in Patel. We find the evidence provided does not
support the anticipation rejection of claim 15, which we interpret in light of
the Specification’s express disclaimer of flat shapes.

OBVIOUSNESS
When determining whether a claim is obvious, an Examiner must
make “a searching comparison of the claimed invention – including all its
limitations – with the teaching of the prior art.” In re Ochiai, 71 F.3d 1565,
1572 (Fed. Cir. 1995).
The Examiner premised each of the two obviousness rejections on a
finding that “Patel substantially discloses the claimed invention, see
rejection to claim 15.” (Ans. 6 and 7.) The obviousness rejections are thus
premised on a finding that Appellant’s claimed methods include forming
flat-shaped components, but that finding is inconsistent with Appellant’s
express disclaimer of flat shapes. Because the obviousness rejections do not
address how forming body-shaped (not flat-shaped) components would have
been obvious, we reverse them as based on an inappropriately broad claim
interpretation.

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CONCLUSIONS OF LAW
Patel’s article was not formed as a body-shaped component prior to
the carboxymethylation step, and therefore did not anticipate the claimed
method. The two obviousness rejections were premised on an
inappropriately broad claim interpretation, and did not address how forming
a body-shaped (not flat) component would have been obvious.

SUMMARY
We reverse the rejections of claims 15-22 and 24 under 35 U.S.C.
§ 102(b) as anticipated by Patel; claims 23 and 25 under 35 U.S.C. § 103(a)
as obvious over Patel and Suehr; and claims 26 and 27 under 35 U.S.C.
§ 103(a) as obvious over Patel and Mann.

REVERSED
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