Ex Parte Chakravarthy

Patent Trial and Appeal Board

Apr 10, 2018

13549839 (P.T.A.B. Apr. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/549,839 07/16/2012
27939 7590 04/11/2018
Philip H. Burrus, IV
Burrus Intellectual Property Law Group LLC
222 12th Street NE
Suite 1803
Atlanta, GA 30309
FIRST NAMED INVENTOR
Debashish Chakravarthy
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BPMDL0053CD (10512U) 3370
EXAMINER
CARREIRO, CAITLIN ANN
ART UNIT PAPER NUMBER
3772
MAILDATE DELIVERY MODE
04/11/2018 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 DEBASHISH CHAKRA V ARTRY
Appeal2017-004990
Application 13/549,839
Technology Center 3700
Before: EDWARD A. BROWN, WILLIAM A. CAPP, and
GEORGE R. HOSKINS, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant 1 seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 12, 14--17, and 21-28. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
1 Appellant identifies Medline Industries, Inc. as the real-party-in-interest.
Appeal Br. 2.
Appeal2017-004990
Application 13/549,839
THE INVENTION
Appellant's invention is a wound dressing. Spec. i-f 2. Claim 12,
reproduced below, is illustrative of the subject matter on appeal.
12. A wound dressing, comprising:
a dressing layer manufactured from alginate fibers; and
carboxymethylcellulose;
the carboxymethylcellulose is selectively deposited along
the dressing layer with a spray of an aqueous solution.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Qin
Shah
Larsen
US 7,229,689 B2
US 2010/0260824 Al
US 2011/0021964 Al
June 12, 2007
Oct. 14, 2010
Jan. 27, 2011
The following rejections are before us for review:
1. Claims 12, 14--17, and 21-28 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicant regards as the
invention.
2. Claims 12, 14, 17, 21, 22, and 24--26 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Qin.
3. Claims 12, 14, 17, 21, 22, and 24--26 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Qin.
4. Claims 12, 14--16, 22, 23, and 26-28 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Larsen and Shah.
5. Claims 15, 16, 27, and 28 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Qin and Shah.
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Application 13/549,839
Claim 12
OPINION
Indefiniteness
The Examiner determines that "selectively deposited ... with a spray"
is indefinite as directed to the process of making the claimed product rather
than describing the claimed subject matter in structural terms. Non-Final
Act. 4. The Examiner cites In re Johnson, 157 USPQ 106 (CCPA 1974) for
the proposition that there is a "general rule" that an indefiniteness rejection
is appropriate if the structure is capable of being described in structural
terms, but instead is described by the process of making it. Id.
Appellant argues, among other things, that the Examiner's citation to
In re Johnson is in error. Appeal Br. 14 (157 USPQ 106, to which the
Examiner cites, corresponds "to the sixth page of an overruled opinion in
Yard-Man, Inc. v. Getz Exterminators"). Despite being on notice that the
purported legal authority underlying the rejection is erroneously cited, the
Examiner once again repeats the same incorrect citation in the Answer. See
Ans. 2-3. The Examiner not only fails to correct the erroneous citation, but
also fails to support the rejection with another legal authority for the so-
called "general rule" relied on in the rejection. Id.
Perhaps the Examiner meant to instead cite the case of In re Johnson,
394 F.2d 591, 593 (CCPA 1968). In that case, the court maintained that
process limitations are not foreclosed in article claims under proper
circumstances. The court then turned to the question of whether the
inclusion of process limitations tends to obscure the claimed invention so
that claims cannot be said to distinctly point out and claim the inventions in
accordance with Section 112. Id. Determining, under the facts of that case,
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Application 13/549,839
that the claims were not obscure or confusing on account of the process
limitations, the court reversed a decision by the Board that the product-by-
process claims were indefinite. Id. at 594.
The Federal Circuit has provided us with the following guidance on
product-by-process claims.
Product-by-process claims are not specifically discussed in the
patent statute. The practice and governing law have developed
in response to the need to enable an applicant to claim an
otherwise patentable product that resists definition by other
than the process by which it is made. For this reason, even
though product-by-process claims are limited by and defined by
the process, determination of patentability is based on the
product itself. [citations omitted].
The patentability of a product does not depend on its method of
production. In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ
145, 147 (CCPA 1969). If the product in a product-by-process
claim is the same as or obvious from a product of the prior art,
the claim is unpatentable even though the prior product was
made by a different process. [citations omitted].
In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985).
As in the Johnson case, we look to whether the inclusion of process
limitations tends to obscure the claimed invention so that the claims cannot
be said to distinctly point out and claim the invention in accordance with
Section 112. Johnson, 394 F.2d at 593. In our opinion, claim 12 is not so
obscure or confusing on account of the process limitation directed to
"selectively deposited ... with a spray" that the claim is indefinite. Id.
at 594. Furthermore, we are not prepared to find that Appellant's use of a
product-by-process limitation is inappropriate under the facts of this case.
We do not sustain the Examiner's Section 112, second paragraph,
rejection of claim 1.
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Application 13/549,839
Claim 24
The Examiner rejects claim 24, which depends from claim 12,
because the limitation "flash dried" is a process limitation. Non-Final
Act. 4. The Examiner's reasoning is essentially identical to the Section 112
rejection of claim 12 and relies, once again, on the same erroneous citation
to Johnson. Id.
Our analysis of the rejection of claim 12 above applies with equal
force to the Examiner's rejection of claim 24. We do not sustain the
rejection of claim 24 for similar reasons.
Claim 25
The Examiner rejects claim 25, which depends from claim 12,
because it also contain a process limitation. Non-Final Act. 4. The
Examiner's reasoning is essentially identical to the Section 112 rejection of
claim 12 and relies, once again, on the same erroneous citation to Johnson.
Id.
Our analysis of the rejection of claim 12 above applies with equal
force to the Examiner's rejection of claim 25. We do not sustain the
rejection of claim 25 for similar reasons.
Claims 14-17, 21, 23, 27, and 28
These claims were rejected under Section 112, second paragraph,
solely based on their dependency from a rejected claim. Non-Final Act. 5.
We do not sustain the rejection of these claims for the reasons previously
stated for claim 12.
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Application 13/549,839
Anticipation of Claims 12, 14, 17, 21, 22, and 24-26
by Qin
Claim 12
Appellant argues that Qin fails to disclose carboxymethylcellulose
(hereinafter "CMC") being selectively deposited with a spray of aqueous
solution. Appeal Br. 16. Appellant asserts that Qin only teaches
polysaccharide fibers formed from extrusion or spinning alginate. Id.
While Qin does teach the incorporation of carboxymethyl-
cellulose into the fibers, this is done through a co-spinning
process, not with the spray of an aqueous solution on only
portions of a dressing layer, i.e., by selective deposition along
the dressing layer.
Id. at 17.
In response, the Examiner states the co-spinning process of Qin
results in a product where CMC is "selectively deposited" because the steps
of drawing out, twisting and winding two fibers results in chosen, relative
quantities of the two fibers. Ans. 13.
In reply, Appellant argues that co-spinning results in all of the co-spun
material having CMC, which is patentably distinct from selective deposition
as claimed. Reply Br. 9--10.
The dispute between the Examiner and Appellant is largely a matter
of claim construction over the meaning of "selectively deposited." During
examination of a patent application, pending claims are given their broadest
reasonable construction consistent with the specification. In re Am. Acad. of
Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under the broadest
reasonable interpretation standard, claim terms are given their ordinary and
customary meaning as would be understood by one of ordinary skill in the
art in the context of the entire disclosure. In re Trans logic Tech., Inc., 504
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F.3d 1249, 1257 (Fed. Cir. 2007). Even under the broadest reasonable
interpretation, the Board's construction "cannot be divorced from the
specification and the record evidence." In re NTP, Inc., 654 F.3d 1279,
1288 (Fed. Cir. 2011). A construction that is "unreasonably broad" and
which does not "reasonably reflect the plain language and disclosure" will
not pass muster. Microsoft Corp. v. Proxyconn, Inc. v 789 F.3d 1292, 1298
(Fed. Cir. 2015).
Regarding selective deposition, Appellant's Specification teaches the
following:
[T]here are a variety of reasons why one would not want the
polysaccharide to be applied to the entire dressing. In one
embodiment, for example, the medication can be integrated into
the alginate fibers. Silver ions or other medication can be
applied to or integrated into the alginate fibers for selective
release into a wound. The omission of a polysaccharide in
locations where medication was used would work to increase
the facilitation of the transport of the medication to the wound.
At the same time, the inclusion of the polysaccharide in other
locations would increase the absorbency and reduce the
tendency to adhere without impeding the medicinal transport.
The selective deposition can be performed in a repeating,
periodic pattern, such as in a linear pattern, dotted pattern, or
other similar pattern. Alternatively, the deposition can be in
accordance with a non-periodic pattern designed for a specific
application. The prior art co-blending and co-spinning does not
allow for the creation of selective arrangements where a
dressing has some portions defined by alginate and the
polysaccharide, while other portions are alginate only.
Spec. 6 (emphasis added).
Thus, although the Specification does not provide an explicit
definition of "selectively deposited," it does provide implicit guidance as to
the meaning of the term generally and, more particularly, how the term is to
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Application 13/549,839
be understood relative to co-spinning product applications. Id. "Even when
guidance is not provided in explicit definitional format, the specification
may define claim terms by implication such that the meaning may be found
in or ascertained by a reading of the patent documents." Irdeto Access, Inc.
v. Echostar Satellite Corp., 383 F.3d 1295, 1300 (Fed. Cir. 2004) (internal
quotation omitted).
In the instant case, the Examiner's anticipation rejection is in error as
based on an erroneous and overbroad claim construction. Applying a proper
construction of "selectively deposited," the Examiner's finding that Qin
satisfies the "selectively deposited" limitation is not supported by a
preponderance of the evidence. Accordingly, we do not sustain the
Examiner's anticipation rejection of claim 12.
Claims 14, 17, 21, 22, and 24-26
These claims depend from claim 12. Claims App. The Examiner's
rejection of these claims suffers from the same infirmity that was identified
above with respect to the anticipation rejection of claim 12. Thus, for
essentially the same reason expressed above in connection with claim 12, we
do not sustain the anticipation rejection of claims 14, 17, 21, 22, and 24-26.
Unpatentability of Claims 12, 14, 17, 21, 22, and 24-26
over Qin
The Examiner rejects these claims over Qin in the alternative to the
anticipation rejection discussed hereinabove. Non-Final Act. 6-8.
Appellant faults the Examiner, correctly, for failing to articulate a proper
rejection under the obviousness provisions of 35 U.S.C. § 103. Appeal Br.
20-22. The tests for anticipation and obviousness are different. Cohesive
Technologies, Inc. v. Waters Corp., 543 F.3d 1352, 1364 (Fed. Cir. 2008).
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Application 13/549,839
Anticipation under Section 102 and obviousness under Section 103 require
different elements of proof. Duro-Last, Inc. v. Custom Seal, Inc., 321 F.3d
1098, 1107---08 (Fed. Cir. 2003).
As with the anticipation rejection, the Examiner's obviousness
rejection over Qin suffers from the same erroneous and overbroad claim
construction discussed above. The Examiner's obviousness rejection
otherwise fails to set forth a prima facie case of unpatentability under
Section 103, including proper consideration of the Graham factors and
articulation of a reason to modify the prior art to achieve the claimed
invention. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 399 (2007) quoting
Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966).
We do not sustain the Examiner's unpatentability rejection of
claims 12, 14, 17, 21, 22, and 24-26 over Qin.
Unpatentability of Claims 12, 14-16, 22, 23 and 26-28
over Larsen and Shah
Appellant argues against the Examiner's rejection, pointing out that
Larsen is directed to a sponge and that Shah is primarily directed to a foam
composition. Appeal Br. 23-24. Appellant argues that the Examiner's
rationale for combining the references is cursory, suggesting that the
Examiner is guilty of employing hindsight. Id. at 24.
The Examiner defends the rationale for combining Larsen and Shah
because the prior art teaches that controlling swelling during hydration is an
"added benefit" and, therefore, a person of ordinary skill in the art would
have been motivated to make the proposed modification in order to achieve
such benefit. Ans. 16.
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Appellant's invention is primarily directed to an improvement over
cotton "gauze" bandages where the cotton fibers are replaced with alginate
that is spun into fibers and then woven or fed into a forming machine where
they are interlocked without weaving. Spec. i-fi-14, 5, 24, 32, and 43. In
contrast, Larson is directed to printing a bioactive compound onto the
surface of a matrix material such as a gelatin-based sponge. Larson i-f 111.
Shah is directed to a foam article that incorporates an antimicrobial agent.
Shah, Abstract. In one embodiment, dissolvable alginate or CMC fibers are
imbedded in the foam. Id. i152. However, we view Shah's mention of
fibers in an alternative embodiment of a foam structure that merely
incorporates fibers as an isolated feature that must be arbitrarily plucked
from Shah's overall invention (i.e., foam including alginate fibers) in order
to complete the Examiner's proposed combination (resulting in a dressing
layer manufactured from alginate fibers).
We are not persuaded that a person of ordinary skill in the art would
have found it obvious to combine Larsen and Shah to achieve the claimed
invention. It is well settled that the mere fact that the prior art may be
modified in the manner suggested by the Examiner does not necessarily
make the modification obvious. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir.
1992). Here, notwithstanding the Examiner's stated rationale for combining
the prior art, (see Ans. 16, controlling swelling is an added benefit), it
appears to us that the Examiner relies on picking and choosing among
isolated features of the references to assemble a proposed combination that
incorporates the limitations of claim 12. However, we "cannot use hindsight
reconstruction to pick and choose among isolated disclosures in the prior art
to deprecate the claimed invention." In re Fine, 837 F.2d 1071, 1075 (Fed.
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Cir. 1988); see also Interconnect Planning Corp. v. Feil, 774 F.2d 1132,
1143 (Fed.Cir.1985) ("When prior art references require selective
combination by the court to render obvious a subsequent invention, there
must be some reason for the combination other than the hindsight gleaned
from the invention itself.").
In view of the foregoing, we do not sustain the unpatentability
rejection of claim 12 over Larsen and Shah, neither do we sustain the
rejection of claims 14--16, 22, 23, and 26-28 that depend therefrom.
Unpatentability of Claims 15, 16, 27, and 28
over Qin and Shah
This ground of rejection relies on the same findings of fact and
erroneous claim construction that we noted above with respect to the Qin
reference. Non-Final Act. 11. The Examiner's errors with respect to Qin
are not cured by combining Qin with Shah. We do not sustain the
Examiner's unpatentability rejection of claims 15, 16, 27, and 28 over Qin
and Shah.
DECISION
The decision of the Examiner to reject claims 12, 14--17, and 21-28 is
reversed.
REVERSED
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