Ex Parte Cook et al

Board of Patent Appeals and Interferences

Aug 4, 2009

10523023 (B.P.A.I. Aug. 4, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte GORDON COOK and GRAEME FOLLETT
__________

Appeal 2009-002395
Application 10/523,023
Technology Center 3700
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Decided: August 4, 2009
__________

Before FRANCISCO C. PRATS, MELANIE L. MCCOLLUM, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a device
for impulse therapy. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm-in-part.
Statement of the Case
Background
The Specification teaches that “[t]he use of an inflatable garment
applied to a limb or other area of the human body as a means of enhancing
blood circulation is a well established medical technique with proven
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clinical benefits” (Spec. 1, ll. 9-11). According to the Specification, one
prior art garment “comprises an inflatable bladder being part of or integral
with means in the form of a foot wrap for securing the bladder in the plantar
arch of the foot and about the area to be treated” (Spec. 1, ll. 18-20).
The Claims
Claims 1-3, 5-7, and 9-11 are on appeal. We will focus on claims 1,
3, 5, and 6 which are representative and read as follows:
1. A device for use in applying impulse therapy to a limb
of the human body comprising:
an inflatable bladder having volume-reducing internal
component means for dissipating the flow of fluid into the
bladder with accompanying reduction in fluid flow rates and
noise generated by the fluid flow during pressurization of
the bladder in a timed sequence of pressure hold and
pressure release;
means for providing intermittent pulses of fluid to the
bladder in accordance with the pre-determined timed
sequence of pressure hold and pressure release; and
means for securing the bladder around the limb of the
human body to apply the bladder to the area to be treated.

3. The device as claimed in claim 1, wherein the internal
component is a gel.

5. The device as claimed in claim 2, wherein the foam is
attached to one or both walls of the bladder.

6. The device as claimed claim 5, wherein the foam is
provided with air flow channels.

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The prior art
The Examiner relies on the following prior art references to show
unpatentability:
Gorran US 4,135,500 Jan. 23, 1979
Grim US 5,353,525 Oct. 11, 1994
Johnson, Jr. US 5,496,262 Mar. 5, 1996

The issues
A. The Examiner rejected claims 1, 2, 7, 9, and 10 under 35 U.S.C. §
102(b) as being anticipated by Johnson (Ans. 3-4).
B. The Examiner rejected claims 3 and 11 under 35 U.S.C. § 103(a) as
being obvious over Johnson and Gorran (Ans. 4).
C. The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as being
obvious over Johnson (Ans. 4-5).
D. The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as being
obvious over Johnson and Grim (Ans. 5).
A. 35 U.S.C. § 102(b) over Johnson
The Examiner rejected claims 1, 2, 7, 9, and 10 under 35 U.S.C. §
102(b) as being anticipated by Johnson (Ans. 3-4).
The Examiner finds that “Johnson '262 discloses in figures 1-6 a
device for use in applying impulse therapy to a limb of the human body
comprising an inflatable bladder 6, means (1, la), for providing intermittent
pulse of fluid to the bladder, means 3, for securing the bladder around the
limb” (Ans. 3). The Examiner finds that “the bladder includes a volume-
reducing internal component 34, that is a foam material (urethane)” (Ans. 3).
Appellants contend that “[t]here is no explicit disclosure in . . .
Johnson '262 . . . of an inflatable bladder having a volume-reducing internal
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component means for dissipating the flow of fluid into the bladder with
accompanying reduction in fluid flow rates and noise” (App. Br. 6).
Appellants also contend that “[t]he Office Action clearly provides no
objective factual evidence that the layers 32 of urethane foam in Johnson
'262 necessarily constitute volume-reducing internal component means for
dissipating the flow of fluid into the bladder with accompanying reduction in
fluid flow rates and noise” (App. Br. 7).
In view of these conflicting positions, we frame the anticipation issue
before us as follows:
Have Appellants demonstrated that the Examiner erred in finding that
Johnson teaches “an inflatable bladder having volume-reducing internal
component means” as required by claim 1?
Findings of Fact (FF)
1. The Specification teaches that “the bladder 4 is provided with
an internal media 10 in the form preferably of a foam, gel or fluid reservoir
which reduces the internal volume of the bladder” (Spec. 6, ll. 22-24).
2. The Specification teaches that “[t]he internal media acts to
dissipate the flow of fluid within the bladder thus reducing noise and also the
amount of fluid necessary to achieve the required rate of pressurisation”
(Spec. 7, ll. 4-6).
3. The Specification teaches that “[d]uring use the bladder is filled
with a fluid such as air” (Spec. 1, l. 22).
4. Johnson teaches “a therapeutic intermittent compression system
comprising an inflatable chamber for pressure engagement with at least a
portion of an associated body” (Johnson, col. 4, ll. 20-24).
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5. Johnson teaches that the “leg brace 3 . . . has the inflatable
chambers in air cell 6 on the medial side and a sealed air cell 6b on the
lateral side” (Johnson, col. 5, ll. 19-21).
6. Johnson teaches that air cell 6 “includes a first sealed chamber
8 enclosed in a second larger chamber 9 . . . chamber 9 may be preinflated or
adjustably inflated via valve 9a” (Johnson, col. 5, ll. 36-44).
7. Johnson teaches the device in figure 3, reproduced below:

“FIG. 3 is a cross-sectional view of the air cell” (Johnson, col. 4, l. 56).
8. Johnson teaches that “[i]n the cross section of FIG. 3, it can be
seen that the outer chamber 9 is formed with an outer layer 30 that is
preferably of 0.012 inches pvc film. The sealed chamber 8 enclosed within
chamber 9 has a urethane foam layer 34 therein. Another layer of urethane
foam is placed in chamber 9 between the chamber 8 and the chamber 11”
(Johnson, col. 5, ll. 54-59).
9. Johnson teaches that “[t]wo additional chambers 10 and 11,
shown . . . in cross section in FIG 3, are enveloped by and included within
chamber 9 . . . . Chamber 10 is enclosed within chamber 11 and is inflated
by air pump 1. . . . A restrictor tube 12 is sealed within chamber 10 and
communicates with chamber 11” (Johnson, col. 5, ll. 41-50).
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10. Johnson teaches that “[a]ir pump 1 is turned on by timer 1a for
approximately 30 seconds of each minute. Air flows through tube 2 to
chamber 10 which quickly inflates” (Johnson, col. 6, ll. 1-3).
11. Johnson teaches “a cuff-like member adapted to be applied to
the limb of a user” (Johnson, col. 8, ll. 7-8).
Principles of Law
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable over the
prior art under 35 U.S.C. § 102 begins with a determination of the scope of
the claim. In construing a means-plus-function claim limitation in
accordance with 35 U.S.C. § 112, ¶ 6, one first identifies the function of the
limitation and then looks to the Specification and identifies the
corresponding structure for that function. Med. Instrumentation and
Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003).
“Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an [A]pplicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product.” In re Best, 562 F.2d 1252, 1255 (CCPA 1977). “Whether
the rejection is based on ‘inherency’ under 35 U.S.C. § 102, on ‘prima facie
obviousness' under 35 U.S.C. § 103, jointly or alternatively, the burden of
proof is the same, and its fairness is evidenced by the PTO's inability to
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manufacture products or to obtain and compare prior art products.” Id. at
1255.
Analysis
We agree with the Examiner that Johnson teaches a device comprising
the three elements required by claim 1, an inflatable bladder having a
volume-reducing internal component, a “means for providing intermittent
pulses of fluid to the bladder” and “a means for securing the bladder around
the limb of the human body” (see Ans. 3-4; FF 4-11).
What Appellants dispute is whether Johnson teaches the inflatable
bladder having a volume-reducing internal component for “dissipating the
flow of fluid into the bladder” (see App. Br. 6).
Johnson teaches an air cell 6 or bladder which comprises four separate
inflatable compartments, chambers 8, 9, 10, and 11 (FF 5-9). Johnson
teaches that two of these compartments, chambers 8 and 9, comprise
polyurethane foam (FF 8). Consistent with the Specification, foam can
function as a “volume-reducing internal component” (FF 1). The
Specification recognizes air as a “fluid” (FF 3).
Consequently, when Johnson teaches that air pump 1 functions to
flow air into the four compartment air cell 6, particularly into chamber 10 of
air cell 6, the Examiner reasonably finds that “it is inherent that the foam
material (34) is a volume-reducing internal component (located inside the
bladder 6 and taking up space therein) and the foam is a means for
dissipating the flow of fluid into the bladder” (Ans. 5-6).
We agree with the Examiner that as the air flows into chamber 10 of
bladder 6, it is reasonable to conclude that the urethane foam layers in
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chambers 8 and 9 will inherently function to “dissipate the flow of fluid” by
resisting the flow and that the foam layer will also function to “reduce noise”
(FF 5-11). Appellants have provided no evidence to prove that the prior art
bladder of Johnson does not necessarily or inherently possess the
characteristics of the claimed product.
We are not persuaded by Appellants argument that the “Office Action
clearly provides no objective factual evidence that layers 32 of urethane
foam in Johnson ‘262 necessarily constitute volume-reducing internal
component means” (App. Br. 7). Appellants misplace the burden in this
argument. The Examiner has demonstrated that Johnson teaches an
inflatable bladder which satisfies all of the structural elements of claim 1
(see Ans. 5). In particular, the bladder has the urethane foam volume-
reducing internal component (FF 8-9). Consequently, under Best, the burden
of proving that the bladder of Johnson does not inherently satisfy the claim
is placed on Appellants.
We do not find Appellants’ citation of the Examiner’s alleged
“admission” persuasive (App. Br. 7), since the Examiner is simply noting
that Johnson is relied upon inherently because Johnson provides no express
teaching that the urethane foam functions to dissipate fluid flow and reduce
noise (see Final Rej. 4-5).
We are also not persuaded by Appellants argument that “the inclusion
of foam material in Johnson ‘262 is never mentioned as being operatively
coupled to Johnson’s ‘262 pulsed pressure chambers 10 and 11” (App. Br.
9). In fact, bladder 6 comprises four chambers, and chambers 8 and 9
(which comprise urethane foam) are disclosed as being adjacent to chambers
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10 and 11 and are physically coupled to chambers 10 and 11 (see Johnson,
Fig. 3; FF 7). While no air flows from chambers 10 and 11 into chambers 8
or 9, these two chambers form part of Johnson’s bladder 6 as discussed
above (FF 5-9).
Conclusion of Law
Appellants have not demonstrated that the Examiner erred in finding
that Johnson teaches “an inflatable bladder having volume-reducing internal
component means” as required by claim 1.
B. 35 U.S.C. § 103(a) over Johnson and Gorran
The Examiner rejected claims 3 and 11 under 35 U.S.C. § 103(a) as
being obvious over Johnson and Gorran (Ans. 4).
The Examiner finds that “Johnson doesn’t disclose the internal
component being a gel. Gorran teaches in figure 1 an inflatable device
comprising an internal component that is a gel (col. 3, lines 15-20), used to
inflate a bladder” (Ans. 4). The Examiner finds that “the gel as taught by
Gorran could be substituted for the internal component disclosed by Johnson
because either internal component could be used to reduce volume in the
inflatable device” (Ans. 4).
Appellants contend that “Johnson ‘262 and Gorran are quite different
and are not concerned with solving the same problem” (App. Br. 13).
Appellants also contend that “the Office Action fails to provide objective
factual evidence that replacing urethane foam layers 34 by a gel inside of the
Johnson ‘262 cuff will achieve the patient cushioning and compression
provided by a urethane foam layer” (App. Br. 14).
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In view of these conflicting positions, we frame the obviousness issue
before us as follows:
Have Appellants demonstrated that the Examiner erred in finding that
it would have been obvious to replace the urethane foam layer of Johnson
with a gel as taught by Gorran?
Findings of Fact
11. Gorran teaches a floatation support system which comprises a
fluid where “said fluid preferably comprises a liquid such as water, but other
liquids including materials of greater or lesser viscosity than water may be
utilized . . . and similarly other flowable and semi-flowable materials,
including gels . . . can be used for filling the interior of envelope” (Gorran,
col. 3, ll. 10-19).
Principles of Law
“[A] patent composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art.” KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418-19
(2007). It is important for the Examiner to identify a reason that would have
prompted one of ordinary skill in the art to combine the elements to arrive at
the claimed subject matter. Id. (“[I]t can be important to identify a reason
that would have prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed new invention does.”)
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” Id. at 417-18, quoting In re Kahn, 441 F.3d 977, 988 (Fed.
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Cir. 2006). The Examiner has the initial burden of establishing a prima facie
case obviousness under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.”).
Analysis
We agree with Appellants that “Johnson ‘262 and Gorran are quite
different and are not concerned with solving the same problem” (App. Br.
13). While the Examiner is correct that both the gel and the urethane foam
are found in the prior art, the Examiner has not articulated specific reasons
why the ordinary practitioner would have recognized that a gel used in
flotation systems is equivalent to a foam used in inflatable cuffs.
The Examiner contends that the “gel and the foam are equivalent
because both can be used to reduce the internal volume, dissipate the flow of
fluid and reduce noise during pressurization” (Ans. 7). However, these
reasons are solely derived from Appellants invention and not based on the
disclosures of either Johnson or Gorran. Neither Gorran nor Johnson teach
the urethane foam for any of the purposes identified by the Examiner. The
Examiner provides no other reason or evidence as to why these references
should be combined.
Conclusion of Law
Appellants have demonstrated that the Examiner erred in finding that
it would have been obvious to replace the urethane foam layer of Johnson
with a gel as taught by Gorran.
C. 35 U.S.C. § 103(a) over Johnson
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The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as being
obvious over Johnson (Ans. 4-5).
Appellants contend that [a]ll that is stated is that sealed chamber 8 of
Figure 3 enclosed within chamber 9 has a layer of urethane foam 34 therein,
and that another layer of urethane foam is placed in chamber 9 between the
chamber 8 and the chamber 11. So, Johnson ‘262 clearly does not disclose a
layer of foam attached to a bladder wall, as claimed” (App. Br. 17).
In view of these conflicting positions, we frame the obviousness issue
before us as follows:
Have Appellants demonstrated that the Examiner erred in finding it
obvious to attach foam to a wall of the bladder?

Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR at 416. “If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability.” Id. at 417. Moreover, an
“[e]xpress suggestion to substitute one equivalent for another need not be
present to render such substitution obvious.” In re Fout, 675 F.2d 297, 301
(CCPA 1982). As noted by the Court in KSR, “[a] person of ordinary skill is
also a person of ordinary creativity, not an automaton.” 550 U.S. at 421.
Analysis
Appellants contend that “Johnson ‘262 clearly does not disclose a
layer of foam attached to a bladder wall, as claimed” (App. Br. 17).
However, the issue is whether an ordinary practitioner, taught by Johnson to
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incorporate urethane foam into the bladder, would have found it obvious to
attach that urethane foam to a wall of the bladder.
We agree with the Examiner’s conclusion that it would have been
obvious to attach foam to “one or both walls of the bladder” since one mode
of formation is where the foam is integral to the device (Ans. 5). Appellants
have not identified any unexpected result or secondary consideration which
would suggest that attaching the foam in an “integral” fashion would be
unobvious. Such a combination is merely a “predictable use of prior art
elements according to their established functions.” KSR, 550 U.S. at 417.
Conclusion of Law
Appellants have not demonstrated that the Examiner erred in finding it
obvious to attach foam to a wall of the bladder?

D. 35 U.S.C. § 103(a) over Johnson and Grim
The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as being
obvious over Johnson and Grim (Ans. 5).
The Examiner finds that “Grim teaches in figure 7 foam 72, having
channels (col. 4, lines 60-65)” (Ans. 5). The Examiner finds that “[i]t would
have been obvious to one having ordinary skill in the art at the time that the
invention was made that the foam disclosed by Johnson could be fabricated
with channels as taught by Grim in order to allow air to flow along the
channels inside of the inflatable bladder” (Ans. 5).
Appellants contend that “the Office Action fails to provide any
objective factual evidence that one of ordinary skill in the art would be
properly motivated to turn to Grim to modify the only identified single one
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of two references on which this rejection is based, because Johnson ‘262 and
Grim are so different” (App. Br. 18). “Appellants respectfully submit that
one of ordinary skill in the art would have no incentive to include a foam
material, grooved or not, in Johnson’s ‘262 intermittently pulsed bladders
because Johnson '262 clearly does not disclose such a feature” (App. Br. 19).
In view of these conflicting positions, we frame the obviousness issue
before us as follows:
Have Appellants demonstrated that the Examiner erred in finding it
obvious to use the grooved foam material of Grim in the bladder of Johnson?
Findings of Fact
12. Grim teaches a shoe with a “resilient spring member 26
expands the chamber 20, drawing air in through valve 16” (Grim, col. 3, ll.
61-62).
13. Grim teaches that spring 26 can be “replaced by the resilient
material 72, which may be a relatively stiff, open cell foam material, which
serves substantially the same function as the spring 26” (Grim, col. 4, ll. 59-
62).
14. Grim teaches that the “open cell foam material 72 may have
channels extending through it to facilitate air flow from the valve 16’ to the
valve 18’” (Grim, col. 4, ll. 63-65).
Analysis
We agree with Appellants that “Johnson ‘262 and Grim are so
different (a rapidly constantly inflated and deflated therapeutic cuff and an
infrequently inflatable shoe) and are not concerned with solving the same
problem ” (App. Br. 18). While Grim does teach channels extending
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through the foam to facilitate air flow, there is no specific reason to
incorporate such channels into the foam of Johnson. In Johnson, the foam is
in chambers which are not subject to routine deflation, but are inflated orally
and then left sealed. There is no indication in Johnson that chambers 8 and 9
are ever deflated. In Grim, the foam requires channels to permit deflation.
The Examiner has not articulated specific reasons why the ordinary
practitioner would have recognized that channels used in deflation would be
necessary in the foam of Johnson, in chambers which are not deflated.
Conclusion of Law
Appellants have demonstrated that the Examiner erred in finding it
obvious to use the grooved foam material of Grim in the bladder of Johnson.
SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C. §
102(b) as anticipated by Johnson. Pursuant to 37 C.F.R. §
41.37(c)(1)(vii)(2006), we also affirm the rejection of claims 2, 7, 9, and 10
as these claims were not argued separately.
We reverse the rejection of claims 3 and 11 under 35 U.S.C. § 103(a)
as obvious over Johnson and Gorran.
We affirm the rejection of claim 5 under 35 U.S.C. § 103(a) as
obvious over Johnson.
We reverse the rejection of claim 6 under 35 U.S.C. § 103(a) as
obvious over Johnson and Grim.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006).
AFFIRMED-IN-PART

Ssc:

BIRCH, STEWART, KOLASCH & BIRCH
PO BOX 747
FALLS CHURCH, VA 22040-0747
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