13005778 (P.T.A.B. Feb. 8, 2018)

Ex Parte Haines

Patent Trial and Appeal BoardFeb 8, 2018

13005778 (P.T.A.B. Feb. 8, 2018)

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. 13/005,778 01/13/2011 Kimberly M. Haines BPMDL0028KH (10287U) 3219 27939 7590 02/08/2018 Philip H. Burrus, IV Burrus Intellectual Property Law Group LLC 222 12th Street NE Suite 1803 Atlanta, GA 30309 EXAMINER PATEL, TARLA R ART UNIT PAPER NUMBER 3772 MAIL DATE DELIVERY MODE 02/08/2018 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 PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte KIMBERLY M. HAINES ____________________ Appeal 2017-003880 Application 13/005,778 Technology Center 3700 ____________________ Before STEFAN STAICOVICI, JILL D. HILL, and ARTHUR M. PESLAK, Administrative Patent Judges. PESLAK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Kimberly M. Haines (“Appellant”) appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1–4, 6–23, 37, and 38.1 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). 1 Appellant identifies Medline Industries, Inc. as the real party in interest. Br. 2. Appeal 2017-003880 Application 13/005,778 2 THE CLAIMED SUBJECT MATTER Independent claims 1 and 37, reproduced below, are illustrative of the claimed subject matter: 1. A gown comprising: a body-covering portion; and a procedure verification card, removably attached to the gown by a frictional attachment, and comprising a predetermined procedure; the procedure verification card comprising an indicator, the indicator removable from the procedure verification card, the indicator comprising an instruction of the predetermined procedure. 37. A gown comprising: a body-covering portion; and a procedure verification card, removably attached to the gown, and comprising a predetermined procedure; the gown comprising a color-coding indicating that the procedure verification card is attached to the gown; the gown a surgeon’s gown and packaged with one or more medical procedure gowns, only the surgeon’s gown comprises the color-coding. THE REJECTIONS 1) Claim 18 is rejected under 35 U.S.C. § 112, second paragraph, as being indefinite.2 2 The Examiner also objects to the Specification for the same reasons that claim 18 stands rejected under 35 U.S.C. § 112, second paragraph. Non- Final Act. 3–4. Ordinarily, an objection is reviewable by petition under 37 C.F.R. § 1.181 and a rejection is appealable to the Patent Trial and Appeal Board. On August 13, 2015, Appellant filed a petition under 37 C.F.R. § 1.181 that was dismissed because “if there has been both rejection and objection by the examiner regarding the same issue, the issue becomes appealable and should not be decided by petition.” Decision on Petition 2– Appeal 2017-003880 Application 13/005,778 3 2) Claims 1–4, 6–8, 18, and 19 are rejected under 35 U.S.C. § 103(a) as unpatentable over Keeton (US 4,947,867, issued Aug. 14, 1990) and Conner (US 7,815,123 B2, issued Oct. 19, 2010). 3) Claims 9–14, 17, 23, 37, and 38 are rejected under 35 U.S.C. § 103(a) as unpatentable over Keeton, Conner, and Czajka (US 7,802,313 B2, issued Sept. 28, 2010). 4) Claims 15 and 16 are rejected under 35 U.S.C. § 103(a) as unpatentable over Keeton, Conner, and Perlow (US 2002/0179094 A1, published Dec. 5, 2002). 5) Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over Keeton, Conner, Shultz (US 2010/0017938 A1, published Jan. 28, 2010), and Scrivens (US 4,027,665, issued June 7, 1977). 6) Claims 21 and 22 are rejected under 35 U.S.C. § 103(a) as unpatentable over Keeton, Conner, and Wichman (US 4,373,214, issued Feb. 15, 1983). OPINION Rejection 1 The Examiner finds that claim 18 is indefinite because the Specification discloses frictional attachment, press-fitting, and pulling material through an aperture, as alternative attachments, but does not disclose that a frictional attachment is “created or formed” by pulling material through an aperture or by press-fitting. Non-Final Act. 4. 3, mailed Oct. 5, 2015; see also MPEP § 2163.06. To the extent that the objection to the Specification in the Non-Final Rejection turns on the same issues as the rejection under 35 U.S.C. § 112, second paragraph, our decision with respect to the rejection is dispositive as to the corresponding objection. Appeal 2017-003880 Application 13/005,778 4 According to the Examiner, one having ordinary skill in art would understand that an adhesive attachment can be a frictional attachment, and would understand that press-fitting and pulling material through an aperture are mechanical attachments, not frictional attachments. Id. at 5. A claim fails to comply with 35 U.S.C. § 112, second paragraph, “when it contains words or phrases whose meaning is unclear.” In re Packard, 751 F.3d 1307, 1310, 1315 (Fed. Cir. 2014). We are not persuaded that the Examiner has established that the phrase “frictional attachment by one of an aperture through which gown material may be pulled, press-fitting or combinations thereof” is unclear. Non-Final Act. 5. Although the Specification lists frictional attachment, press-fitting and pulling material through an aperture as ways of attaching a verification card to a surgical gown (see Spec. ¶ 51), the list itself does not preclude press-fitting and pulling material through an aperture as frictional attachments. “An interference fit, also known as a press fit or friction fit, is a fastening between two parts which is achieved by friction after the parts are pushed together, rather than by any other means of fastening.” Interference Fit, Definitions, http://www.definitions.net/definition/interference%20fit, (last visited Feb. 2, 2018). Similarly, friction3 is created between a material (of a gown) and the sides (walls) that form an aperture. Specifically, the type of material, e.g. silk or denim, and the roughness of the walls of the aperture, e.g., smooth or coarse, will make it easier (decrease friction) or harder (increase friction) to pull the material through the aperture. Thus, we are 3 “Friction is the force caused by, and resisting the relative motion of [two] elements sliding against each other.” http://www.definitions.net/definition/friction, accessed Feb. 2, 2018. Appeal 2017-003880 Application 13/005,778 5 satisfied that one of ordinary skill in the art would understand whether or not press-fitting and pulling material through an aperture created frictional attachments, and therefore the Examiner’s position that it is not clear how the frictional attachment recited in claim 18 is achieved is in error. We, thus, do not sustain the Examiner’s rejection of claim 18 under 35 U.S.C. § 112, second paragraph. Rejection 2 Appellant argues claims 1–4, 6–8, 18, and 19 as a group. Appeal Br. 16–20. We select claim 1 as representative and claims 2–4, 6–8, 18, and 19 stand or fall with claim 1. See 37 C.F.R. §41.37(c)(1)(iv). The Examiner finds that Keeton discloses a gown and a procedure verification card (34) removably attached to the gown “by means of [a] pressure-sensitive [adhesive] label.” Non-Final Act. 6 (citing Keeton, col. 4, ll. 10–14). According to the Examiner, Keeton’s adhesive attachment “is a frictional attachment since frictional attachment is broad claim language and frictional attachment [is] defined as attachment of surface resistance to relative motion and when device of Keeton is applied adhesively to gown will cause to have surface resistance to relative motion.” Id. Appellant argues that “[a]n adhesive attachment is simply not a frictional attachment” because a “frictional” attachment is caused by the movement of one surface rubbing against another whereas “an ‘adhesive’ attachment is unable to move.” Br. 19–20. The Examiner responds that “the adhesive attachment of Keeton is friction attachment,” because “[A]ppellant has not provided any specific argument to why an adhesive attachment cannot be a frictional attachment,” Appeal 2017-003880 Application 13/005,778 6 and because friction, or resistance when moving one object over another, “is achieved by adhesive attachment as interpreted by examiner in rejections.” Ans. 12. As discussed above, a frictional attachment is a fastening by friction, whereas an adhesive connection bonds two objects together.4 Thus, we agree with Appellant that an adhesive attachment does not include relative motion between objects, and, thus, is not a frictional attachment. Nonetheless, Appellant’s Specification discloses that “[g]arment-tag attachment devices are a well-developed art,” and discloses that adhesives and threading material through an aperture, i.e., a frictional attachment, as discussed above, are known alternatives for releasably coupling cards to surgical gowns. See Spec. ¶ 51. The references cited by the Examiner also evidence that these alternatives are recognized in the art as suitable releasable couplings. Czajka discloses that “pass card 40 is typically made of paper, cardboard, or any other suitable material and includes slits or other openings for releasably attaching” the card to the gown. Czajka, 9:35–44; see also Wichman, 4:25–44. Keeton discloses that a pressure sensitive label can be (releasably) attached to a surgical garment. Keeton 4:13–16; see also Non-Final Act. 6. Conner discloses a label that can be removably attached to surgical supplies. See Conner 5:40–58; see also Non-Final Act. 6. In light of these teachings in Czajka, Wichman, Keeton, and Conner, we determine that it would have been obvious to one of ordinary skill in the art at the time of the present invention to substitute the attachment by pulling 4 Adhesive is defined as: “a substance that unites or bonds surfaces together.” http://www.definitions.net/definition/adhesive, accessed Feb. 2, 2018. Appeal 2017-003880 Application 13/005,778 7 material through an aperture, i.e., a frictional attachment, as taught in Czajka or Wichman for Keeton’s attachment by pressure sensitive adhesive for the predictable result of releasably attaching a procedure verification card to a surgical gown that would have a reasonable expectation of success. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007) (“[W]hen a patent claims a structure [or method] already known in the prior art that is altered by the mere substitution of one element [or step] for another known in the field, the combination must do more than yield a predictable result.” (citing United States v. Adams, 383 U.S. 39, 50–51 (1966)); In re Fout, 675 F.2d 297, 301 (CCPA 1982) (“Express suggestion to substitute one equivalent for another need not be present to render such substitution obvious.”); In re Mayne, 104 F.3d 1339, 1340 (Fed. Cir. 1997) (“Because the applicants merely substituted one element known in the art for a known equivalent, this court affirms [the rejection for obviousness].”). Because our analysis differs from that of the Examiner, we designate our affirmance as a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) to provide Appellant with a fair opportunity to respond. Claims 2–4, 6–8, 18, and 19 fall with claim, and we likewise designate our affirmance for these claims as a new ground of rejection. Rejection 3 Claims 9–14, 17, and 23 Claims 9–14, 17, and 23 depend directly or indirectly from claim 1. Appeal Br. 25–26 (Claims App.). Appellant does not argue separately for the patentability of claims 9–14, 17, and 23. Id. at 11–16. We, thus, sustain the rejection of claims 9–14, 17, and 23 for the same reasons as stated above Appeal 2017-003880 Application 13/005,778 8 for claim 1, and likewise designate our affirmance of the rejection of these claims as a new ground of rejection. Claims 37 and 38 The Examiner finds that Keeton and Conner disclose a gown and procedure verification card, but relies on Czajka as teaching color-coding a gown, and that only one of a plurality of gowns are color-coded. Non-Final Act. 9–10. According to the Examiner, it would have been obvious to color- code Keeton’s gown and package multiple gowns with only one color-coded gown “as obvious duplication of part[s] for packaging more than one gown per package with various color as obvious design choice, to provide garment with color for easy accessibility to user as a color-choice.” Id. at 10. The Examiner considers that “mere duplication of the essential working parts of a device involves only routine skill in the art.” Id. (citing St. Regis Paper Co. v. Bemis Co., 193 USPQ 8 (7th Cir. 1977). Appellant argues that although Czajka teaches that “the neck binding of a gown can be color coded to identify a barrier protection level,” Czajka does not teach multiple gowns in a package, and, rather, teaches “a single gown in a package,” i.e., surgical kit 60, “so that a single level of barrier protection can be identified.” Br. 14–15. According to Appellant, the Examiner’s reasoning, namely, duplication of parts would result in a “package of gowns in which every gown has the same color. . . . because duplication of a color coded gown would result in the same color being duplicated.” Br. 15. Appellant asserts that “there is no teaching in the references of Applicant’s claimed one of several gowns having a different Appeal 2017-003880 Application 13/005,778 9 color absent the benefit of Applicant’s specification and impermissible hindsight.” Id. The Examiner responds that because Czajka “discloses gowns of different color for their specific barrier protection level[], when the duplication of products are provided, it will provide the gowns of same color in larger quantity than other color gowns in a package and will be easily accessible for surgeon’s gown pick from whole bunch.” Ans. 11 (citing Czajka, col. 8, ll. 17–28). According to the Examiner, because Czajka discloses a color-coded pass card “to identify the barrier protection level of the disposable surgical gown and package” this provides the user the option to decide “which gown to pick for [the] procedure and which one to leave behind.” Id. (citing Czajka, col. 14, ll. 28–42). Appellant’s arguments are persuasive because the Examiner does not explain adequately how Czajka discloses multiple gowns of different colors in a package where the different colors indicate a different use for the gown. The first portion of Czajka cited by the Examiner discloses as an example, Levels 1 through 4 of protection for the user and that “the neck binding 28 is color-coded to indicate the specific level of barrier protection.” Czajka, col. 8, ll. 17–18. Thus, for a particular level of barrier protection for the user a specific color will be indicated. Duplication of gowns with that color neck binding will result in multiple gowns having the same color neck binding in the package. The other portion of Czajka cited by the Examiner discloses that a surgical kit includes a gown; a pass card attached to the gown, “at least a portion of the pass card being color-coded to identify the barrier protection level of the disposable surgical gown; and a package for holding the disposable surgical gown and pass card.” Id. col. 14, ll. 28–42. The Appeal 2017-003880 Application 13/005,778 10 word “a” gown is not limited to a single (one) gown. However, packaging multiple gowns together, based on duplication of parts, would result in each gown and pass card being the same and, thus, have the same color-code to identify the barrier protection level. The Examiner does not direct us to any disclosure in Czajka of packaging gowns with different protection levels in a single package or any suggestion for doing so. Further, it would be counterintuitive to do so because everyone selecting a gown at the same time, such as doctors and nurses in an operating room, would want the same level of protection. Thus, we agree with Appellant that the Examiner’s conclusion that Czajka discloses a surgeon’s gown packaged with one or more medical procedure gowns, and only the surgeon’s gown comprises color-coding is not supported and instead, is obtained using “the benefit of Applicant’s specification and impermissible hindsight.” Br. 15. For these reasons, we do not sustain the rejection of claim 37 and claim 38 depending therefrom. Rejections 4–6 Claims 15, 16, and 20–22 depend from claim 1. Appeal Br. 25–26 (Claims App.). Appellant does not argue separately for the patentability of claims 15, 16, and 20–22. See Appeal Br. passim. We, thus, sustain the rejection of claims 15, 16, and 20–22 for the same reasons as stated above for claim 1, and likewise designate our affirmance for these claims as a new ground of rejection. Appeal 2017-003880 Application 13/005,778 11 DECISION The Examiner’s decision rejecting claim 18 under 35 U.S.C. § 112, second paragraph, is reversed. The Examiner’s decision rejecting claims 1–4 and 6–23, under 35 U.S.C. § 103(a) is affirmed with the affirmance designated as New Grounds of Rejection. The Examiner’s decision rejecting claims 37 and 38 under 35 U.S.C. § 103(a) is reversed. FINALITY OF DECISION This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant[s], 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 the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant[s] may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The Appeal 2017-003880 Application 13/005,778 12 request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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). AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)