Ex parte Habermeyer

Board of Patent Appeals and Interferences

Mar 25, 1999

08275091 (B.P.A.I. Mar. 25, 1999)

Application for patent filed July 14, 1994. According1
to the appellant, the application is a continuation of
Application 07/812,874, filed December 20, 1991 now abandoned;
which is a continuation of Application 07/474,025, filed June
4, 1990, 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not binding precedent of the Board.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. 50
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte PETER HABERMEYER
__________
Appeal No. 96-3886
Application 08/275,0911
___________
HEARD: March 10, 1999
___________
Before McCANDLISH Senior Administrative Patent Judges,
McQUADE and STAAB, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection
Appeal No. 96-3886
Application 08/275,091
2
of claims 26 to 29, all the claims currently pending in the
application. An amendment filed subsequent to the final
rejection (Paper No. 37, filed April 10, 1996) has been
entered.
By way of background, this appeal is related to an
earlier appeal (No. 94-1162) in the now-abandoned parent
application. The earlier appeal resulted in a decision by a
merits panel of this Board reversing a rejection of the
appealed claim under 35 U.S.C. § 103 and affirming a rejection
of the appealed claim under 35 U.S.C. § 112, first paragraph.
In rendering our decision in this appeal, we assume
familiarity with the earlier decision.
Appellant’s invention pertains to an apparatus for
treating a fracture in an extremity. The apparatus includes a
cuff-forming cushion (1) adapted to be formed into a sleeve
and a protective sleeve (5) disposed about the cushion. The
cushion defines a vacuum tight inner space having a plurality
of filling bodies movable relative to one another disposed
therein. When the inner space is evacuated the movable bodies
interengage to form a stable and rigid support structure.
Appeal No. 96-3886
Application 08/275,091
In the final rejection, claims 26 to 29 were also2
rejected under 35 U.S.C. § 112, first paragraph, as being
based on a disclosure that fails to comply with the written
description requirement of that paragraph, however, this
rejection has since been withdrawn. See page 2 of the answer.
3
Appealed claim 26, a copy of which is appended to appellant’s
brief, is illustrative of the appealed subject matter.
The references of record relied upon by the examiner as
evidence of obviousness are:
Rose 3,745,998 Jul.
17, 1973
Johnson 1,531,268 Nov. 8,
1978
(Great Britain)
Claims 26 to 29 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Rose and Johnson. The examiner2
considers that Rose generally discloses in Figure 12 the
claimed subject matter, with the exception of the use of a
plastic protective sleeve that is regionally connected to the
bladder 123, 124 during use (answer, page 3). However, the
examiner is of the view that it would have been obvious to one
of ordinary skill in the art "to modify the casting device of
Appeal No. 96-3886
Application 08/275,091
We note the presence in the file of another reply brief3
(Paper No. 40, filed September 23, 1996) that was denied entry
by the examiner (Paper No. 42, mailed March 18, 1997), and a
petition by appellant pursuant to 37 CFR § 1.181 (Paper No.
4
Rose with a plastic, protective support sleeve regionally
connected to his bladder as taught by Johnson" (answer, page
4). Alternatively, the examiner is also of the view that it
would have been obvious "to modify the casting member of
Johnson with an evacuable bladder having filling bodies as
taught by Rose in order to increase the rigidity and strength
of the Johnson casting device" (answer, page 4). Implicit in
each of the above is the examiner’s position that the devices
of Rose and Johnson, modified in the manner indicated, would
result in an apparatus that corresponds to the claimed subject
matter in all respects.
The opposing viewpoints of appellant are set forth in the
brief (Paper No. 35, filed April 10, 1996) and the conditional
substitute reply brief (Paper No. 43, filed May 19, 1997),
entry of which was approved by the examiner in an advisory
letter (Paper No. 44, mailed January 6, 1998).3
Appeal No. 96-3886
Application 08/275,091
43½, filed May 19, 1997) to enter this reply brief, which
petition has to date apparently not been considered by the
Group Director. In view of our reversal of the examiner’s §
103 rejection of the appealed claims, this procedural
oversight is moot.
5
Rose pertains to a vacuum formed immobilizer device
comprising an interior wall 30 and an exterior wall 31
defining a vacuum tight inner space therebetween. The inner
space is filled with "micro-balloon" polymer beads which flow
over each other to facilitate easy manipulation of the casting
device when the inner space is subject to atmospheric pressure
but which stabilize and rigidify when the inner space is
evacuated (col. 2, line 49 - col. 3, line 5). Rose discloses
various embodiments for the immobilizer, including the leg
cast of Fig. 12. The leg cast embodiment includes an outer
boot 127, which may be composed of a thick sheet of flexible
rubber vinyl material, bonded to the outer wall 124 of the
evacuable envelope (col. 9, lines 45-50).
Rose describes the application of the Figure 12 immobilizer
device to a patient’s leg as follows:
Appeal No. 96-3886
Application 08/275,091
6
In use, the hollow interior sleeve-like cavity of
the device between walls 123 and 124 is collapsed so
that the particles therein are loosely arrayed, and
offer no resistance to the insertion of the
patient’s foot and leg 129 within the device to the
position shown in Fig. 12. Additional particles of
filler material may be added through the portal 126
if desired, and the encircling straps 128 may be
adjusted to provide the desired reinforcement. The
device is then evacuated by drawing air from the
interior cavity of the device through the portal 126
. . . . The resulting pressure differential allows
atmospheric pressure to urge the walls 123 and 124
together, securely clamping the filler particles
therebetween in a rigid, immobilizing position,
anchoring the wearer’s leg 129 in position therein
and inhibiting articulating movement of the wearer’s
knee, ankle and foot to a substantial degree. [col.
9, line 52 - col. 10, line 3.]
Johnson discloses an orthopedic leg cast comprising
complementary shells 12, 14 fitted around a limb to define a
tubular outer member. Adjacent longitudinal edges of the half
shells overlap to allow the shells to be radially adjusted
relative to each other about the limb. Inflatable air bags 30
are positioned between the inner surfaces of the shells and
the patient’s leg. The air bags need not be permanently fixed
to the shells, but, if desired, may be attached to the shells
by light adhesive (page 4, lines 121-130). Johnson describes
the placement of the cast about a patient’s leg as follows:
Appeal No. 96-3886
Application 08/275,091
7
After the half-shell members 12, 14 has [sic,
have] been assembled as shown in Figure 1B, . . .
air or other suitable inflation medium is then
introduced into each air bag 30 through their
respective inlet tubes 32 to cause the air bags to
inflate. Sufficient internal pressure is developed
in each air bag to completely fill the annular
spaces or voids existing between the inwardly facing
sides or portions of the air bags and the relatively
irregular contoured surface of the injured limb as
shown, for example, in Figures 2 and 3. Inflation
of the flexible air bags 30 causes them to conform
to the portions of the limb not in indirect abutting
engagement with the interior surface of the shell
structure and thereby provides firm constant
pressure support for these portions of the limb. . .
.
. . . [I]t will be noted in accordance with an
important feature of the present invention that
despite inflation of the air bags 30 as described
above, the portions of the immobilized limb
originally in indirect abutting engagement with the
interior of the telescoped shell structure will
virtually retain their indirect abutting engagement
with the interior surface of the two radially
telescoped half-shell members. This is shown to
best advantage in Figure 4, for example, at
locations indicated by the letters b and c. . . .
Since, as mentioned above, the immobilized limb
always remains in virtual indirect abutting
engagement with the interior surface of the
cylindrical shell structure formed by the two
radially telescoped half-shell members 12, 14 at two
longitudinally spaced locations, the damaged limb is
prevented from being moved or displaced relative to
or within the shell structure and thus, in effect,
Appeal No. 96-3886
Application 08/275,091
8
the shell structure itself as well as the
circumferential array of air cushions provided by
the inflated air bags 30 contribute to
immobilization of the injured limb . . . . [page 7,
lines 2-64.]
Turning now to the examiner’s rationale based on Rose as
the starting point of the rejection, a comparison of the
Figure 12 apparatus of Rose to the claimed subject matter
reveals that the Rose device lacks burr closure means coupled
with the sleeve 127 for continuously adjusting the internal
diameter of the sleeve to varying sizes of the cushion 123,
124 after the cushion has been evacuated, as called for in
each of the independent claims. Indeed, in that the outer
protective sleeve 127 and cushion of Rose combine to form a
seamless boot-like enclosure for the leg, and in that the
outer wall 124 of Rose’s cushion is bonded (col. 9, lines 45-
49) to the outer sleeve 127, presumably over its entire
interface surface, there would be no apparent need for
providing a separate closure means for continuously adjusting
the internal diameter of the outer sleeve 127 after the
cushion is evacuated. As to Johnson, while we appreciate that
this reference discloses shell-like members 12, 14 secured
Appeal No. 96-3886
Application 08/275,091
9
together by hook and loop fasteners 50, 52, 54 for adjusting
the position of the shell members relative to the limb, the
fact remains that there is no apparent need for incorporating
either the separate shell-like construction or hook and loop
fastening means arrangement of Johnson in Rose so as to arrive
at the subject matter of the appealed claims.
The examiner’s alternative rationale based on Johnson as
the starting point of the rejection also is not well taken. A
comparison of the discussion at col. 9, line 33 - col. 10,
line 3
of Rose and the discussion at page 7, lines 2-67 of Johnson
makes clear that Johnson and Rose differ fundamentally in the
way in which they immobilize an injured limb. In particular,
the "indirect abutting engagement" of Johnson’s shell members
(page 7, lines 52-64) causes the shell members of Johnson to
cooperate with the injured limb in a way that Rose’s outer
sleeve simply cannot duplicate. Also, the envelope 123, 124
of Rose and the air bags 30 of Johnson are fundamentally
different in operation in that Rose’s bladder is evacuated to
Appeal No. 96-3886
Application 08/275,091
10
transform into a rigid structure whereas Johnson’s air bags
are inflated to provide an air cushioning effect. Given the
fundamental differences in approach of the applied references,
we do not think that the disclosures of Rose and Johnson would
have taught or suggested to one of ordinary skill in the art
that the envelope of Rose, which is rigidified when evacuated,
might be successfully substituted for the inflatable air
cushions of Johnson. Instead, Rose and Johnson simply
disclose two distinctly different approaches to the problem of
immobilizing an injured limb. Accordingly, we conclude that
the examiner’s alternative rationale is the result of
impermissible hindsight based on knowledge gleaned from
appellant’s disclosure, rather than on that which is fairly
taught by the applied references.
In light of the foregoing, the standing rejection of the
appealed claims as being unpatentable over the combined
teachings of Rose and Johnson is reversed.
Pursuant to 37 CFR § 1.196(b), we enter the following new
rejection.
Appeal No. 96-3886
Application 08/275,091
11
Claim 28 is rejected under 35 U.S.C. § 112, first
paragraph, as being based on a disclosure that fails to
provide descriptive support for the invention as now claimed.
With respect to the description requirement found in the
first paragraph of 35 U.S.C. § 112,
[t]he test for determining compliance with the
written description requirement is whether the
disclosure of the application as originally filed
reasonably conveys to the artisan that the inventor
had possession at that time of the later claimed
subject matter, rather than the presence or absence
of literal support in the specification for the
claim language. The content of the drawings may
also be considered in determining compliance with
the written description requirement.
In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed.
Cir. 1983) (citations omitted).
Claim 28 requires that "at least a portion of the
exterior wall of the cushion is not secured to the inside of
the protective sleeve to facilitate the placement of the
cushion and
Appeal No. 96-3886
Application 08/275,091
12
of the protective sleeve about said extremity" (emphasis
added).
We find no support in the original disclosure for this claim
requirement.
First, claim 28 was added by way of a preliminary
amendment at the time of filing of this FWC (file wrapper
continuation) application. Accordingly, it does not enjoy the
status of being part of the original disclosure of the present
application because it was not referred to in an oath or
declaration filed with the original application papers. See
MPEP § 608.04(b). Second, while we agree with the merits
panel’s determination on page 4 of the prior decision that the
statement in original claim 6 that the protective sleeve is
"connected regionally" to the cushion provides support for
claiming that the protective sleeve is connected to only a
portion of the protective sleeve, this determination does not
provide appellant with license to expand upon that
determination by now claiming that at least a portion of the
exterior (3) of the cushion (1) is not secured to the inside
of the sleeve (5). Nothing in original claim 6, or the
Appeal No. 96-3886
Application 08/275,091
13
disclosure on page 7 of the specification that the outer
sleeve has a "shell-like form," or any other part of the
original disclosure, supports the proposition that the term
"connected
regionally" of original claim 6 would necessarily be
understood by one of ordinary skill in the art as referring to
the relationship between the exterior of the cushion (3) and
the inside of the sleeve (5). In this regard, the
circumstance that one skilled in the art might realize from
reading a disclosure that something is possible is not a
sufficient indication to that person that the something is a
part of an applicant’s disclosure. See In re Barker, 559 F.2d
588, 593, 194 USPQ 470, 474 (CCPA 1977), cert. denied, 434
U.S. 1064 (1978).
In summary:
the standing rejection of claims 26 to 29 as being
unpatentable over Rose and Johnson is reversed; and
pursuant to 37 CFR § 1.196(b), a new rejection of claim
Appeal No. 96-3886
Application 08/275,091
14
28 under 35 U.S.C. § 112, first paragraph, has been made.
The decision of the examiner is reversed.
This decision contains a new ground 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 appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings
(§ 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. . . .
Appeal No. 96-3886
Application 08/275,091
15
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED; 37 CFR § 1.196(b)
HARRISON E. McCANDLISH, Senior)
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOHN P. McQUADE )
Administrative Patent Judge )
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