11266904 (B.P.A.I. Jul. 6, 2010)

Ex Parte Ethelfeld

Board of Patent Appeals and InterferencesJul 6, 2010

11266904 (B.P.A.I. Jul. 6, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ERIK WINKEL ETHELFELD ____________ Appeal 2009-008613 Application 11/266,904 Technology Center 3700 ____________ Before LINDA E. HORNER, JOHN C. KERINS, and FRED A. SILVERBERG, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-008613 Application 11/266,904 2 STATEMENT OF THE CASE Erik Winkel Ethelfeld (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claim 1, the only claim pending in the application. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF DECISION We AFFIRM. THE INVENTION Appellant’s claimed invention is to a device having a skin mountable unit and a handling unit. Claim 1, reproduced below, reads as follows: 1 A device comprising: a skin-mountable unit having a mounting surface comprising adhesive means for adhering the unit to the skin of a subject, the adhesive means being covered by thereto releasably attached protective means, a handling unit releasably attached to the skin- mountable unit and comprising an interior space at least partially accommodating the skin-mountable unit and having an opening through which the skin-mountable member can be moved when detached from the handling unit, the handling unit having a portion surrounding the opening, and a seal member releasably attached to the surrounding portion, thereby providing a sealed space for the skin-mountable unit, wherein removal of the seal member results in the protective means being removed from the adhesive means. Appeal 2009-008613 Application 11/266,904 3 THE REJECTIONS The Examiner has rejected claim 1 under 35 U.S.C. § 102(b) as being anticipated by Cirelli (US 4,886,499, issued December 12, 1989). The Examiner has also rejected claim 1 under 35 U.S.C. § 102(b) as being anticipated by Benecke (US 5,008,110, issued April 16, 1991). ISSUES Does either the Cirelli patent or the Benecke patent disclose a handling unit that is releasably attached to a skin-mountable unit? ANALYSIS Anticipation by Cirelli The Examiner found that Cirelli discloses a handling unit 17 that is releasably attached to a skin-mountable unit 2. (Answer 3). Notwithstanding Appellant’s aversion to advocating that a particular meaning be given to the term “releasably” (Reply Br. 8), Appellant contends that plaster 17 in Cirelli is not releasably attached to the skin-mountable unit, in that the skin-mountable unit or appliance 2 is embedded in the plaster 17 and, when the user attaches the appliance to the skin, the adhesive on both the plaster and the skin-mountable unit attach to the skin of the user. (Appeal Br. 6; Cirelli, col. 4, ll. 51-52; col. 5, ll. 1-5). The Examiner responds to these contentions, invoking the “broadest reasonable interpretation” principle, and citing to definitions of “releasable” and “embed”, as well as asserting that Cirelli does not expressly state that the plaster layer is to be “left behind” with the skin-mountable unit, nor that the plaster cannot be removed from the skin-mountable unit. Finally, the Appeal 2009-008613 Application 11/266,904 4 Examiner avers that the plaster is fully capable of being removed from the skin-mountable unit, as evidenced in Figures 1-8 of Cirelli, where the plaster layer is absent, in at least several of the figures. (Answer 6). The broadest reasonable interpretation of the claim term “releasably attached” that is consistent with the Specification is that the handling unit and skin-mountable unit are to be attached, but that the handling unit is capable of being released through normal and intended operation of the device. In this respect, a plaster having a skin-mountable unit that is embedded2 therein and, as expressly disclosed by Cirelli, being designed to remain with the skin-mountable unit to aid in adhering the skin-mountable unit to the skin (Cirelli, col. 5, ll. 1-5), does not fall within this broadest reasonable interpretation of a handling unit claimed as being releasably attached to the skin-mountable unit. The rejection of claim 1 over Cirelli will not be sustained. Anticipation by Benecke The Examiner found that release liner 40 (Benecke, Figs. 2, 3) or release liner 74 (Benecke, Figs. 6, 7) constitutes a handling unit releasably attached to a skin-mountable unit 12. (Answer 4). Appellant counters that these release liners cannot be a handling unit because they are removed from the skin-mountable unit (a trans-dermal patch) and disposed of prior to applying the patch to the patient, and thus are not used in applying the patch to the skin. (Reply Br. 8-9). Appellant’s argument is not commensurate 2 embed: 1. To fix firmly in a surrounding mass. 2. To enclose snugly or firmly. THE AMERICAN HERITAGE® DICTIONARY OF THE ENGLISH LANGUAGE (4th ed. 2009), accessed at http://dictionary.reference.com/browse/embed (last viewed on June 29, 2010). Appeal 2009-008613 Application 11/266,904 5 with the scope of claim 1, which contains no structure or function supported by structure that requires the handling unit be employed to apply the skin- mountable unit to the patient. Appellant’s reliance (Reply Br. 9) on a passage in the Specification, disclosing that “[t]he first and second units may be releasably attached to each other by any suitable means allowing the device initially to be handled and applied against the skin as a unitary device” (Spec., p. 7, ll. 18-24), is unavailing. Appellant’s claimed handling unit is devoid of any structural limitations3 that would impliedly require the handling unit to operate or be operated specifically in that manner. (Appeal Br., Claims Appendix). As such, Appellant’s argument is directed to an embodiment of the invention to which instant claim 1 is not limited. We decline to, indeed cannot, narrow the scope of the claim by interpreting it to be limited to any particular disclosed embodiment that is not required by the language that Appellant has chosen in setting out the metes and bounds of the claimed invention. See SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004); and In re Morris, 127 F.3d 1048, 1054, (Fed. Cir. 1997). The rejection of claim 1 as anticipated by Benecke will be sustained. CONCLUSIONS Cirelli does not disclose a handling unit that is releasably attached to a skin-mountable unit. Benecke, however, does disclose such a handling unit. 3 Claim 1 recites, for the claimed handling unit, only an opening and a portion surrounding the opening. (Appeal Br., Claims Appendix). Appeal 2009-008613 Application 11/266,904 6 DECISION The decision of the Examiner to reject claim 1 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2007). AFFIRMED Klh NOVO NORDISK, INC. INTELLECTUAL PROPERTY DEPARTMENT 100 COLLEGE ROAD WEST PRINCETON, NEW JERSEY 08540