Ex parte Cummings et al.

Board of Patent Appeals and Interferences

Apr 21, 1999

08324818 (B.P.A.I. Apr. 21, 1999)

Application for patent filed October 17, 1994. 1
According to appellants, this application is a continuation of
Application No. 08/088,625 filed July 1, 1993, now pending;
which is a continuation of Application No. 07/780,619 filed
October 23, 1991, now abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was
not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GARY W. CUMMINGS and ROBERT CUMMINGS
____________
Appeal No. 97-1836
Application No. 08/324,8181
____________
ON BRIEF
____________
Before ABRAMS, McQUADE and GONZALES, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 54-56, 58, 60-66, 68, 69, 71-74 and
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76, which constituted all of the claims remaining of record.
However, the examiner has since indicated that claims 71-73
contain allowable subject matter, which leaves claims 54-56,
58, 68, 69, 74 and 76 before us on appeal.
The appellants’ invention is directed to a composite
dressing applicable to a wound. The subject matter before us
on appeal is illustrated by reference to claim 54, which has
been reproduced in an appendix to the Brief (Paper No. 19).
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Sims 4,638,796 Jan.
27, 1987
Gilman 5,106,362 Apr. 21,
1992
THE REJECTION
Claims 54-56, 58, 60-66, 68, 69, 74 and 76 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Sims in view
of Gilman.
The rejection is explained in the Examiner's Answer.
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The appellants’ arguments in opposition to the positions
taken by the examiner are set forth in the Brief and the Reply
Brief.
OPINION
In reaching our decision on the issues raised in this
appeal, we have carefully assessed the claims, the prior art
applied against the claims, and the respective views of the
examiner and the appellants as set forth in the Answer and the
Brief. As a result of this review, we have concluded that the
teachings of the references relied upon fail to establish a
prima facie case of obviousness with respect to the claimed
subject matter. This being the case, we will not sustain the
rejection. Our reasons for arriving at this decision follow.
The test for obviousness is what the combined teachings
of the prior art would have suggested to one of ordinary skill
in the art. See In re Keller, 642 F.2d 413, 425, 208 USPQ
871, 881 (CCPA 1981). In establishing a prima facie case of
obviousness under 35 U.S.C. § 103, it is incumbent upon the
examiner to provide a reason why one of ordinary skill in the
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art would have been led to modify a prior art reference or to
combine reference teachings to arrive at the claimed
invention. See Ex parte Clapp, 227 USPQ 972, 973 (BPAI 1985).
To this end, the requisite motivation must stem from some
teaching, suggestion or inference in the prior art as a whole
or from the knowledge generally available to one of ordinary
skill in the art and not from the appellants’ disclosure.
See, for example, Uniroyal, Inc. v. Rudkin-Wiley Corp., 837
F.2d 1044, 1052, 5 USPQ2d 1434, 1052 (Fed. Cir.), cert.
denied, 488 U.S. 825 (1988).
The appellants’ invention provides a two part wound
dressing that can be applied in one step and allows redressing
of the wound without disturbing it. As pointed out in the
opening pages of the specification, this solves a number of
problems that were present in the prior art systems, wherein
an essentially non-adherent contact component was installed
upon the wound in a first step, to be followed by the
installation of an absorbent material in a second step. The
Sims patent, which the examiner has applied as the primary
reference, is cited on page 3 of the appellants’ specification
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as an example of the type of system over which they believe
their invention to be an improvement. It is the examiner’s
position that Sims discloses all of the structure set forth in
the three independent claims except for the direct attachment
of the contact component to the absorbent dressing component,
but that Gilman
teaches that direct attachment of a removable
absorbent layer from [sic] a wound contact component
would have been obvious . . . in order to improve
the contact between the two devices over the whole
surfaces thereof and for the same reasons that
Gilman ('362) does the same (Answer, page 4).
We have a number of problems with this conclusion.
Sims is illustrative of the prior art, in that it teaches
a two-step process in which a substantially non-adherent
contact component is installed upon the wound and then is
covered with an absorbent dressing component. There is no
teaching of attaching the dressing component to the contact
component, much less releasably attaching it thereto, as is
required by all of the independent claims on appeal. Gilman
discloses a number of embodiments of a dressing in which the
primary objective is to allow the wound to be vented. The
examiner refers specifically to the embodiment of Figure 7,
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where an absorbent component (44) is “secured” to the back
surface of a base sheet (12) which, in turn, is secured to the
skin of the patient such that an opening (22) therein is over
the wound. The absorbent component is not releasably attached
to the base sheet. See column 3, line 64 et seq. The
examiner also refers to the embodiment of Figures 10-12,
wherein an absorbent component (76) is “releasably secured in
place over the second vent sheet 68,” which is two layers
removed from the component that is in contact with the
patient. See column 5, line 15 et seq. The manner in which
this absorbent pad is “releasably secured” is not disclosed in
the discussion of the embodiment of Figures 10-12 but, in our
view, one of ordinary skill in the art would have understood
it to be in the same manner as is shown in Figure 2, where it
also is releasably attached, and that is by taping it to the
patient’s skin. See column 3, line 37 et seq. Thus, while
Gilman teaches that some components may be attached together,
and that an absorbent pad may be releasably secured to the
patient’s skin, it does not teach releasably securing an
absorbent pad directly to the component that is in contact
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with the patient’s skin, nor does it teach a one step
installation in those embodiments in which the absorbent
component is removable.
The mere fact that the prior art structure could be
modified does not make such a modification obvious unless the
prior art suggests the desirability of doing so. See In re
Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984). The examiner has offered very sparse explanations of
his rationale in constructing the rejection and, even when
viewing the situation in the most charitable light, we fail to
perceive any teaching, suggestion or incentive which would
have led one of ordinary skill in the art to modify the Sims
dressing in the manner proposed by the examiner. From our
perspective, the only suggestion for accomplishing this is
found in the luxury of the hindsight afforded one who first
viewed the appellants’ disclosure. Suggestion arising from
the appellants’ disclosure is, of course, impermissible as the
basis for a rejection. See In re Fritch, 972 F.2d 1260, 1266,
23 USPQ2d 1780, 1783 (Fed. Cir. 1992).
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It therefore is our opinion that the combined teachings
of Sims and Gilman fail to establish a prima facie case of
obviousness with regard to the subject matter recited in the
three independent claims and, it follows, of any of the claims
depending therefrom. This being the case, the rejection
cannot be sustained.
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The decision of the examiner is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
bae
Appeal No. 97-1836
Application No. 08/324,818
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