Ex parte CUMMINGS et al.

Board of Patent Appeals and Interferences

Mar 31, 1998

08088625 (B.P.A.I. Mar. 31, 1998)

Application for patent filed July 1, 1993. According1
to appellants, this application is a continuation of
Application 07/780,619 filed October 23, 1991, now abandoned.
1
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not binding precedent of the Board.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. 45
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte GARY W. CUMMINGS and ROBERT CUMMINGS
__________
Appeal No. 96-1415
Application No. 08/088,6251
__________
ON BRIEF
__________
Before CALVERT, FRANKFORT and CRAWFORD, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 to
4, 7, 8, 10, 12, 14, 16, 17, 23 to 25, 33, 41 to 46, 54 to 56,
Appeal No. 96-1415
Application No. 08/088,625
2
60 to 63 and 66 to 69. The remaining claims in the
application stand withdrawn from consideration under 37 CFR
1.142(b) as being drawn to nonelected species.
The subject matter in issue concerns a composite dressing
applicable to a wound, and a method of treating a wound using
a composite dressing. The claims on appeal are as set forth
in the appendix to appellants’ brief, except that (1) there
are errors in claims 4, 25 and 33, and (2) claim 54 does not
contain the additional language added by the amendment filed
January 17, 1995.
The references applied to the appealed claims are:
Gilman (Gilman ‘001) 4,600,001 Jul. 15,
1986
Sims 4,638,796 Jan.
27, 1987
Gilman (Gilman ‘362) 5,106,362 Apr. 21,
1992
(filed Apr. 13, 1989)
An additional reference, of record, applied herein in
rejections pursuant to 37 CFR 1.196(b) is:
Gilman (Gilman ‘510) 5,056,510 Oct. 15,
1991
(filed Jan. 5, 1990)
Appeal No. 96-1415
Application No. 08/088,625
In an Advisory Action dated February 23, 1995 (Paper2
No. 30), the examiner stated that the amendment (response)
filed January 17, 1995, overcame a rejection of claim 54 under
35 U.S.C. § 112, second paragraph. Also, in a letter dated
November 27, 1995 (Paper No. 39), the examiner indicated that
in view of the terminal disclaimer filed June 22, 1995, a
double patenting rejection of claims 1 to 4, 7, 8, 12, 16, 17,
23 to 25, 33, 41, 42, 54, 55 and 60 to 63 was withdrawn.
This was a new ground of rejection made in the3
examiner’s answer.
3
The claims on appeal stand rejected as follows :2
(1) Claims 1 to 4, 7, 8, 10, 12, 14, 16, 24, 25, 41 to 45,
54 to 56, 63 and 67, anticipated by Gilman ‘362 under 35
U.S.C.
§ 102(e), or unpatentable over Gilman ‘362 in view of Sims,
under 35 U.S.C. § 103.
(2) Claims 1 to 4, 7, 8, 10, 12, 14, 17, 24, 25, 41 to 43, 54
to 56 and 63, unpatentable over Sims, under 35 U.S.C. § 103.
(3) Claims 23, 33 and 60 to 62, unpatentable over Gilman ‘362
in view of Sims and Gilman ‘001, under 35 U.S.C. § 103.
(4) Claims 46, 68 and 69, unpatentable under 35 U.S.C. § 103
over Gilman ‘362 alone, or in view of Sims .3
We have fully considered the record in light of the
arguments presented in appellants’ brief and reply brief, and
Appeal No. 96-1415
Application No. 08/088,625
4
in the examiner’s answer. As a result, we conclude that none
of the rejections will be sustained, but that some of the
appealed claims should be rejected pursuant to 37 CFR
1.196(b). Our reasons for these conclusions are discussed
under separate headings below.
Rejection (1)
In explaining this rejection, the examiner stated that he
considered the dressing component [sic: bottom of the contact
component 12] of Gilman ‘362 to be “continuously planar,” as
claimed, notwithstanding the presence of one or more holes 22
therein, but alternatively, that it would have been obvious to
utilize instead a permeable material such as disclosed by
Sims’ barrier 20. In response to appellants’ argument that
Gilman’s dressing component and contact component are not
“releasably attached directly to each other,” as recited in
claims 1, 43 and 54, the examiner noted Gilman’s Figs. 7 and
10 to 12, in which dressing component 44 is directly attached
to contact component 12 (Fig. 7) or absorbent layer 76 is
releasably secured over vent sheet 68 (Figs. 10 to 12).
Appellants argue in their reply brief that neither of these
embodiments teaches a releasable, direct attachment.
Appeal No. 96-1415
Application No. 08/088,625
5
We do not consider this rejection to be well taken.
While the Fig. 7 embodiment of Gilman ‘362 does disclose the
direct attachment of dressing component 44 to contact
component 12 by adhesive 46, there is no disclosure that such
attachment is releasable (see col. 4, lines 7 to 10), nor is
it inherent that it would be. As for Gilman’s Figs. 10 to 12
embodiment, the dressing component 76 is disclosed as being
“releasably secured in place over the second vent sheet 68”
(col. 5, lines 43 to 44), but there is no disclosure that it
is directly attached to the vent sheet 68 or either of the
other two parts 28, 84 of the contact component; in all
probability, it would be secured to the patient by adhesive
tape 32, as shown in Fig. 2. Absent an express or inherent
disclosure of the claimed releasable direct attachment, claims
1, 43 and 54, and the claims dependent thereon, are not
anticipated. See In re Schrieber, 128 F.3d 1473, 1477, 44
USPQ2d 1429, 1431 (Fed. Cir. 1997) (claim not anticipated
unless prior art reference discloses every limitation, either
explicitly or inherently). As for claims 66 and 67, there is
no disclosure in Gilman ‘362 of placing a second composite
dressing over a wound over which a first contact component is
Appeal No. 96-1415
Application No. 08/088,625
6
held (claim 66), nor of placing a separated second dressing
component over a first contact component remaining on the
wound (claim 67). Thus, these claims are likewise not
anticipated.
The Sims reference does not supply the noted deficiencies
of Gilman ‘362, and therefore the rejection under § 103 is
also not sustainable.
Rejection (2)
We are at somewhat of a loss to understand the basis of
this rejection. The examiner acknowledges at page 7 of the
answer that Sims’ barrier (contact component) 20 “may not be
directly attached to [the] absorbent layer as would be
required to meet the present claims,” but still appears to be
of the opinion that such a modification of Sims would have
been obvious, notwithstanding the lack of a secondary
reference or other evidence thereof. On page 15 of the
answer, the examiner refers to Sims’ Fig. 3 and col. 3, lines
41 to 44, which state that a bandage (dressing component) 24
may be fixed to barrier 20 by a suitable adhesive bandage, but
this is not a disclosure of direct attachment. There must be
a factual basis to support a conclusion of obviousness. In re
Appeal No. 96-1415
Application No. 08/088,625
7
Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968). Lacking evidence of
obviousness, the rejection will not be sustained.
Rejection (3)
The Gilman ‘001 patent, cited as an additional reference
in this rejection, does not supply the deficiencies noted
above with regard to rejection (1). Therefore, this rejection
is not sustainable.
Rejection (4)
The claims to which this rejection applies, 46, 68 and
69, are dependent on claims 43, 66 and 67, respectively.
Since we have, with regard to rejection (1), not sustained the
rejection of those parent claims on the same references as
applied herein, we likewise will not sustain rejection (4).
Rejections Pursuant to 37 CFR 1.196(b)
(i) Claims 1 to 4, 7, 16, 17, 24, 25 and 41 to 43 are
rejected under 35 U.S.C. § 102(e) as anticipated by Gilman
‘510. Figure 3 of this reference shows a composite dressing,
described as being a modification of the dressing shown in
Figs. 1 to 3 of the application which issued as Gilman ‘362,
comprising a generally planar contact component 102, 104 with
Appeal No. 96-1415
Application No. 08/088,625
8
a continuously planar bottom side and a dressing (cover)
component 106,126 directly attached to sheet 102 by a
releasable seal, such as pressure-sensitive adhesive, to
permit replacement of the cover component without removing the
dressing (col. 5, lines 22 to 26; see also col. 4, lines 11 to
20). With regard to claims 4 and 7, which recite that the
contact component is “configured” to permit placement of
fasteners (claim 4), or to permit application of pressure
(claim 7), it appears that any sheet, such as 102 of Gilman,
would be “configured” to permit such actions, whether they
were performed or not.
(ii) Claim 23 is rejected as unpatentable over Gilman
‘510 in view of Gilman ‘362. An important goal of Gilman ‘510
is to avoid removal of the dressing from the skin of the
patient until healing is completed (see col. 7, lines 18 to
23), and Gilman ‘362 discloses that using a transparent sheet
allows inspection of the wound without removing the dressing
from the skin (col. 6, lines 12 to 16). In view of this
teaching, it would have been obvious to make the contact
component of Gilman ‘510 of transparent material.
(iii) Claim 33 is rejected under 35 U.S.C. § 103 as
Appeal No. 96-1415
Application No. 08/088,625
9
unpatentable over Gilman ‘510 in view of Gilman ‘001. To
employ heat lamination as the particular means of releasably
attaching the Gilman ‘510 contact and dressing components
would be an obvious matter of design in selecting a particular
known means of releasably attaching dressing components, as
disclosed by Gilman ‘001.
(iv) Claim 46 is rejected under 35 U.S.C. § 103 as
unpatentable over Gilman ‘510. In removing the cover
component 106 of Gilman in order to replace it, once a corner
of the cover sheet 126 was separated from the top surface 114
of sheet 102, it would have been obvious to hold down the
sheet 102 with one or more fingers while separating the rest
of sheet 126 therefrom, to insure that sheet 102 remained
attached to the patient’s skin.
(v) Claim 45 is rejected for failing to comply with 35
U.S.C. § 112, second paragraph. Parent claim 43 recites in
its last two lines that the contact component remains in place
over the wound, but claim 45 recites “if said first contact
component remains on the wound” (emphasis added). This
recitation in claim 45 is inconsistent with claim 43 in that
it implies that the contact component may not be on the wound,
Appeal No. 96-1415
Application No. 08/088,625
10
while claim 43 recites that it is. As a result of this
inconsistency, claim 45 is indefinite because its scope is not
clear.
Conclusion
The examiner’s decision to reject the appealed claims
under 35 U.S.C. § 102(e) and/or § 103 is reversed. Claims 1
to 4, 7, 16, 17, 23 to 25, 33, 41 to 43 and 46 are rejected
pursuant to 37 CFR 1.196(b).
This decision contains new grounds of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR
§ 1.196(b) provides that, “A new ground of rejection shall not
be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellants,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
grounds of rejection to avoid termination of proceedings
Appeal No. 96-1415
Application No. 08/088,625
11
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED, 1.196(b)
IAN A. CALVERT )
Administrative Patent Judge)
)
)
)
CHARLES E. FRANKFORT ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge)
Appeal No. 96-1415
Application No. 08/088,625
12
Wesley T. Noah
Richard, Medlock & Andrews
4500 Rennaissance Tower
Dallas, TX 75270-2197