08554993 (B.P.A.I. May. 25, 2011)

Ex Parte Dillon

Board of Patent Appeals and InterferencesMay 25, 2011

08554993 (B.P.A.I. May. 25, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 08/554,993 11/13/1995 MARK E. DILLON E-1594 8689 7590 05/25/2011 HARDING EARLEY FOLLMER & FRAILEY 86 THE COMMONS AT VALLEY FORGE EAST 1288 VALLEY FORGE ROAD P O BOX 750 VALLEY FORGE, PA 194820750 EXAMINER GHALI, ISIS A D ART UNIT PAPER NUMBER 1611 MAIL DATE DELIVERY MODE 05/25/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte MARK E. DILLON __________ Appeal 2010-012558 Application 08/554,993 Technology Center 1600 __________ Before ERIC GRIMES, LORA M. GREEN, and STEPHEN WALSH, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims related to therapeutic medical garments. The Examiner has rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE The Specification discloses that “[b]y applying a surface layer of silicone elastomeric material to one side of a suitable textile fabric prior to garment fabrication, … shaped garments may be produced which provide a Appeal 2010-012558 Application 08/554,993 2 surface layer of silicone for uniform skin contact even when shaped into complex geometric forms” (Spec. 3: 12-17). Claims 1, 4, 5, 7, 10-14, 17-20 and 24 are on appeal. Claim 1 is representative and reads as follows: 1. A composite material for use in the construction of therapeutic medical garments worn by a patient to treat dermatological scars comprising: means for treating dermatological scars comprising a therapeutic layer having scar treatment properties constructed and arranged to contact the skin of a patient for a duration time which the patient wears the therapeutic medical garment, the therapeutic layer being a therapeutic agent for the treatment of dermatological scars comprising a therapeutic agent selected from the group consisting of silicone gel, silicone elastomer and silicone interpenetrating polymer network, and a backing layer of a textile fabric bonded to the therapeutic layer, wherein the backing layer is a component of the garment. The Examiner has rejected claims 1, 4, 5, 7, 10-14, 17-20 and 24 under 35 U.S.C. § 103(a) as being obvious in view of Ahn,1 McCurley,2 and Bell.3 The Examiner cites Bell only for its disclosure of a garment made of a mixture of nylon and spandex (Answer 4), which is not relevant to the dispositive issue, so we will not discuss Bell further. The Examiner finds that Ahn discloses silicone gel sheets held in place by an elastic garment to treat hypertrophic scars (Answer 3-4). The Examiner finds that McCurley discloses a “mastectomy compression brassiere comprising pad sewn to the inside of the front of the brassiere to 1 Sang Tae Ahn et al., Topical silicone gel: A new treatment for hypertrophic scars, 106 SURGERY 781-787 (1989) 2 McCurley US 5,158,541, Oct. 27, 1992. 3 Bell et al., US 4,701,964, Oct. 27, 1987 Appeal 2010-012558 Application 08/554,993 3 promote wound healing” (id. at 4). The Examiner concludes that it would have been obvious to sew Ahn’s silicone sheet into McCurley’s garment because McCurley “teaches that [a] skin treating pad when integrated and sewn into the brassiere … retains the pad in place and eliminates a body wrap or bandage and eliminates burn associated with adhesive tape” (id. at 5). Appellant contends that it would not have been obvious to bond Ahn’s silicone gel to the textile fabric of McCurley’s brassiere because neither reference teaches bonding a therapeutic layer to a garment: Ahn discloses that the silicone gel is held in place by a garment without being bonded to it and McCurley discloses that the gauze pad therapeutic layer is held in place by, but is not bonded to, its brassiere. We agree with Appellants that the Examiner has not adequately shown that the cited references would have made obvious the claims on appeal. Ahn discloses the use of silicone gel sheeting for treating hypertrophic scars (Ahn, abstract) resulting from, e.g., burns (id. at 783, left col.). Ahn discloses that the silicone gel sheets were held in place by bandages or an elastic compression garment (id. at 782, left col.) and the sheets were removed and cleaned once or twice daily (id.). As the Examiner has acknowledged, Ahn does not disclose bonding its silicone gel sheets to a backing that is a component of a garment (Answer 4). McCurley discloses “a brassiere for retaining surgical dressings post operatively over a mastectomy incision area under proper compression” (McCurley, col. 1, ll. 8-10). Figure 1 of McCurley is shown below: Appeal 2010-012558 Application 08/554,993 4 The figure shows a “double mastectomy compression surgical brassiere” (id. at col. 3, ll. 23-24). McCurley discloses that a “compression pad 16 is necessary to retain surgical gauze pads in place to overlie the mastectomy incision and to apply a compression … to maintain the gauze pads in place” (id. at col. 3, ll. 35-38) and that an “elastic return force band 17 is used to supply a return force over the compression pad 16 and to retain the surgical gauze pads in place” (id. at col. 3, ll. 57-60). McCurley discloses that its brassiere “permit[s] the patient to change her own surgical dressings” (id. at col. 2, ll. 26-27). Thus, similarly to Ahn’s removable silicone gel sheets being held in place by a separate bandage or elastic compression garment, McCurley’s brassiere includes a compression pad, sewed to the brassiere, that holds Appeal 2010-012558 Application 08/554,993 5 removeable gauze pads in place over a mastectomy incision. Ahn and McCurley disclose that the silicone gel sheet and gauze pads are removed periodically to be cleaned or changed, respectively. We agree with Appellants that the Examiner has not adequately explained why the disclosures of these references would have made it obvious to bond Ahn’s silicone gel sheet to McCurley’s brassiere. The Examiner reasons that “Ahn desired to support the silicone sheet with the garment for long periods, and US '541 [McCurley] teaches that in order to have long period of application of the pad, the pad … is integrated to the garment” (Answer 7). We do not agree that this reasoning is sufficient to establish obviousness. Ahn and McCurley both disclose maintaining a therapeutic layer – silicone gel sheet in Ahn, gauze dressing in McCurley – in contact with the skin for extended periods of time. Yet both teach that the therapeutic layer should be removed periodically for cleaning or replacement. It is the gauze pads in McCurley that are comparable to Ahn’s silicone gel sheet, not the compression pad that is sewed to the brassiere. The Examiner has not provided sufficient reason for concluding that it would have been obvious to sew or otherwise bond a silicone gel sheet to McCurley’s brassiere. The other independent claims (claims 5, 7, 13, 17-20 and 24) are also directed to products in which a therapeutic agent layer is bonded to a backing layer of a textile fabric, or methods that require the step of depositing a therapeutic agent such as silicone gel onto a textile fabric as part of the process of making the medical garment. The rejection of the Appeal 2010-012558 Application 08/554,993 6 other independent claims, and all of the dependent claims, is therefore reversed for the reasons discussed above. SUMMARY We reverse the rejection claims 1, 4, 5, 7, 10-14, 17-20 and 24 under 35 U.S.C. § 103(a). REVERSED lp