Ex Parte Hardison

Patent Trial and Appeal Board

Oct 16, 2012

10674758 (P.T.A.B. Oct. 16, 2012)

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.
10/674,758 09/30/2003 Pamela Hardison 06-0320-PHA.RA 4217
29043 7590 10/17/2012
WILLIAMSON INTELLECTUAL PROPERTY LAW, LLC
1870 THE EXCHANGE, SUITE 100
ATLANTA, GA 30339
EXAMINER
FLICK, JASON E
ART UNIT PAPER NUMBER
3763
MAIL DATE DELIVERY MODE
10/17/2012 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 PAMELA HARDISON
__________

Appeal 2011-012155
Application 10/674,758
Technology Center 3700
__________

Before ERIC GRIMES, MELANIE L. McCOLLUM, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
suspension apparatus. The Examiner rejected the claims as failing to
comply with the written description requirement and as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

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Statement of the Case
Background
“[T]he present invention is a support and retention device for use in
holding medical appliances, preferably wound drainage systems” (Spec. 9,
ll. 13-15).
The Claims
Claims 1-20 and 22 are on appeal. Claims 1 and 7 are representative
and read as follows:
1. A suspension apparatus for supporting medical
appliances, said suspension apparatus comprising a length of
material joined together so as to form an upper section and a
lower section, wherein said length of material forming said
upper section and said lower section is uniform in diameter
throughout said upper section and said lower section, and
wherein said upper section is dimensioned to fit over a user's
head, and wherein the medical appliance is attached to said
lower section.

7. The suspension apparatus of claim [1, further
comprising a first end and a second end joined together into
a joint thereby forming a continuous loop, wherein said joint
comprises a splice], wherein said splice has a diameter and
said length of material has a diameter, and wherein said
splice diameter is approximately equal to said length of
material diameter.

The Issues

A. The Examiner rejected claims 1, 14, and 22 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description requirement
(Ans. 5).
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B. The Examiner rejected claims 1-19 under 35 U.S.C. § 103(a) as
obvious over Giacona, III
1
and Chu
2
(Ans. 6-7).
C. The Examiner rejected claims 20 and 22 under 35 U.S.C. § 103(a) as
obvious over Giacona, III, Chu, and Millen
3
(Ans. 8-9).
A. 35 U.S.C. § 112, first paragraph, written description
The Examiner finds that “[c]laims 1, 14, and 22 have been amended to
indicate an upper and lower section which is uniform in diameter” (Ans. 5).
The Examiner finds that “figures may not be used to show support for
limitations relating to scale/relative size of elements (MPEP 2125).
Furthermore, paragraph [0019] of applicant‟s disclosure specifically states
that the drawings of the disclosure are not necessarily drawn to scale” (id.).
The Examiner finds that the “written portion of the disclosure (page 10, lines
15-16) cited by applicant‟s representative does not provide support for the
amended claims” (id.).
Appellant contends that at “page 10, lines 14-16, the Specification
recites that „preferably, splice 30 is smooth and has substantially the same
diameter 32 as the diameter 26 of length of material 20‟” (App. Br. 6).
Appellant contends that “[b]ecause Applicant addressed, and proposed a
solution to, the problem of having a non-uniform diameter, anyone skilled in
the art would clearly recognize that Applicant had possession of the
invention with an upper and lower section having uniform diameters” (id. at
7). Appellant contends that “claim 7 implicitly recites the length of material

1
Giacona, III, C., US 2005/0092789 A1, published May 5, 2005.
2
Chu et al., US 2004/0225181 A1, published Nov. 11, 2004.
3
Millen, T., US 6,129,709, issued Oct. 10, 2000.
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having a single, uniform diameter, which is thus applicable to the upper
section and the lower section” (App. Br. 7).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner‟s conclusion that the limitation “wherein said length
of material forming said upper section and said lower section is uniform in
diameter throughout said upper section and said lower section” represents
new matter?
Findings of Fact
1. Figure 1 of the Specification is reproduced below:

“FIG. 1 is a perspective view of a device” (Spec. 8, l. 11).
2. The Specification teaches that “apparatus 10 is preferably a
length of material 20 . . . . Length of material 20 has ends 22 and 24 fixed
together to form splice 30. Preferably, splice 30 is smooth and has
substantially the same diameter 32 as the diameter 26 of length of material
20” (Spec. 10, ll. 6-16).
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3. The Specification includes original claim 7 as reproduced
below:
7. The suspension apparatus of claim 3, wherein said splice
has a diameter and said length of material has a diameter,
and wherein said splice diameter is approximately equal to
said length of material diameter.

(Spec. 18, ll. 5-8.)
4. The Specification teaches that the “invention is preferably a soft
flexible length of material . . . formed into a circle, spliced so as to complete
the circle in a fashion that does not increase the diameter of the spliced area,
and preferably utilized by the wearer by placing about the neck” (Spec. 9, ll.
15-21).
Principles of Law
“[I]t is the specification itself that must demonstrate possession. And
while the description requirement does not demand any particular form of
disclosure, ... or that the specification recite the claimed invention in haec
verba, a description that merely renders the invention obvious does not
satisfy the requirement” Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co.,
598 F.3d 1336, 1352 (Fed. Cir. 2010).
Analysis
While the Examiner is correct that the specific language of the claims
was not disclosed ipsis verbis in the Specification, ipsis verbis support is not
required. Fujikawa v. Wattanasin, 93 F.3d 1559, 1570 (Fed. Cir. 1996).
The Specification teaches that “splice 30 is smooth and has
substantially the same diameter 32 as the diameter 26 of length of material
20” (Spec. 10, ll. 14-16; FF 2). The requirement that the splice, or joining,
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of the two ends of material 26 have the same diameter as the length of
material 20 reasonably teaches that the entire length has a single, and
therefore uniform, diameter, as required by the claim amendment of uniform
in diameter (FF 2). Original claim 7 further supports this position, since
original claim 7 requires that the length of material has a diameter, the splice
has a diameter, and these diameters are approximately equal (FF 3). This is
additionally supported by Figure 1, which depicts uniform diameter (FF 1).
We therefore agree with Appellant that the person of ordinary skill, in
reading the Specification, would have found that the Specification
demonstrated possession of a length of material which is “uniform in
diameter” as now required by the independent claims.
Conclusion of Law
The evidence of record does not support the Examiner‟s conclusion
that the limitation “wherein said length of material forming said upper
section and said lower section is uniform in diameter throughout said upper
section and said lower section” represents new matter.
B. U.S.C. § 103(a) over Giacona, III and Chu
The Examiner finds that
Giacona, III teaches a device and method for retaining
objects about a person (figure 1, item 10) (attaching an
object to said lower section) (figures 1 and 2) comprising a
length of material (a chain of linked elements) (figure 1,
items 11 and 26) joined together so as to form an upper
section (figure 1, item 11) and a lower section (figure 1, item
26), wherein said upper section is dimensioned to fit over a
user‟s head (figure 2), and wherein a medical appliance is
capable of being attached to said lower section (figures 3
and 4)

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(Ans. 6). The Examiner finds that “Giacona, III does not specifically state
that the material forming the upper and lower sections is uniform in
diameter” (Ans. 7). The Examiner finds that “Chu teaches a support
apparatus . . . wherein the material is uniform in diameter” (id.). The
Examiner finds it obvious “to modify the structure taught by Giacona, III,
with the use of a uniform length of material, as taught by Chu, in order to
increase ease of use, as well as to allow for easier adjustment of attachments
across all length of the material” (id.).
Appellant contends that “Chu et al. „181 merely teaches a sling that
may have a uniform thickness. In essence, the Examiner is arguing that the
word „thickness‟ is subsumed by the word „diameter‟. Not only is this
argument counter-intuitive, it is contrary to established rules regarding claim
construction” (App. Br. 12). Appellant contends that Chu “teaches that the
„cable 27 [attached to strap 11] is preferably a much smaller diameter than
the maximum thickness of large loop member 11’” (id. at 15).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner‟s conclusion that Giacona III and Chu render the
claims obvious?
Findings of Fact
5. Giacona III teaches “an improved bottled drink carrier
apparatus that can easily be carried by the user at the neck or shoulder area
or strapped to a belt” (Giacona III 1 ¶ 0012).
6. Giacona III teaches that “cable is preferably much smaller in
diameter than the maximum width of the strap so that the cable can be made
very small and lightweight” (Giacona III 1 ¶ 0017 (emphasis added)).
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7. Giacona III teaches that the “cable has a cable thickness and the
strap member has a maximum width, the maximum width being much
greater than the cable thickness; the maximum width of the strap member is
preferably at least two times greater than the cable thickness” (Giacona III 2
¶ 0029).
8. Figure 7 of Giacona III is reproduced below:

“FIG. 7 is a front elevation view of a second and preferred embodiment of
the apparatus” (Giacona III 4 ¶ 0099).
9. Figure 1 of Chu is reproduced below:
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“FIG. 1 shows a sling delivery system 10 according to an illustrative
embodiment of the invention” (Chu 3 ¶ 0034).
10. Chu teaches that “the length and width of the sling 16 can be
adapted to the body part of the patient that requires support” (Chu 3 ¶ 0035).
11. Chu teaches that the “sling 16 may have a uniform thickness
over the entire length and/or width of sling 16. Alternatively, the thickness
can be suitably varied at one or more locations” (Chu 3 ¶ 0035).
12. The word “diameter” is defined as “1. Math a. A straight line
segment passing through the center of a figure, esp. of a circle or sphere, and
terminating at the periphery. B. The length of such a segment. 2. Width or
thickness.”
4

4
Webster‟s II New Riverside University Dictionary 373 (1984).
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Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417. As noted by the Court in KSR, “[a] person of
ordinary skill is also a person of ordinary creativity, not an automaton.” 550
U.S. at 421.
Claim terms are interpreted using the broadest reasonable
interpretation in light of the Specification. See, e.g., In re Hyatt, 211 F.3d
1367, 1372 (Fed. Cir. 2000) (“[D]uring examination proceedings, claims are
given their broadest reasonable interpretation consistent with the
specification.”).

Analysis
5

Claim 1
Claim interpretation is at the heart of patent examination because
before a claim is properly interpreted, its scope cannot be compared to the

5
Appellant first contends that Chu does not qualify as a reference because
Appellant “has submitted an [sic, a] Declaration herewith attesting to the
fact that Applicant conceived of the invention in the instant patent
application on December 17, 2002” (App. Br. 11). However, as pointed out
by the Examiner, “these declarations are not formally entered, and thus, have
not been considered by the examiner. The Appellant has not shown or
demonstrated any valid reason why these declarations were not filed earlier
in prosecution, prior to the filing of an Appeal Brief” (Ans. 11). See 37
C.F.R. § 41.33(d)(2).

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prior art. In this case, there is no dispute that Giacona III and Chu each
suggest a suspension apparatus which comprises a length of material (FF 6-
9), and that Giacona III teaches the length of material joined together to
form an upper and lower section which is dimensioned to fit over a user‟s
head (FF 5-8).
Appellant contends that “Chu et al. „181 does not supply the missing
requirement of a „uniform diameter‟ as required by Applicant‟s independent
claims” (App. Br. 12).
During prosecution, claim terms are given their broadest reasonable
interpretation as they would be understood by persons of ordinary skill in the
art in the light of the Specification. Therefore, we first turn to the
Specification to determine whether the meanings of the phrase “uniform in
diameter” at issue can be discerned.
The Specification does not define the word “diameter” nor is there
any reason based on the Specification to interpret the word “diameter”
differently than its ordinary meaning (FF 1-4). The word “diameter” is
defined as “1. Math a. A straight line segment passing through the center of
a figure, esp. of a circle or sphere, and terminating at the periphery. B. The
length of such a segment. 2. Width or thickness” (FF 12).
In the context of the support device claimed and those of Giacona III
and Chu, these are three dimensional objects with a length, width, and depth.
The “uniform in diameter” limitation cannot reasonably be intended to refer
to the length of the suspension apparatus, and must refer to either or both of
the width and depth. Claim 1 does not require that the suspension apparatus
material is cylindrical, so this interpretation is consistent with the ordinary
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definition of the term diameter, which recognizes that diameter refers to
“[w]idth or thickness” (FF 12).
Having found that diameter is reasonably interpreted as referring to
“[w]idth or thickness,” we agree with the Examiner that Chu teaches that the
“sling 16 may have a uniform thickness over the entire length and/or width
of sling 16” (Chu 3 ¶ 0035; FF 11). We further agree with the Examiner that
in view of Chu‟s teaching, the ordinary artisan of ordinary creativity would
have found it obvious that the width, depth, and/or thickness of the support
device may be uniform, resulting in a uniform diameter (FF 11).
Appellant contends that “Chu et al. „181 merely teaches a sling that
may have a uniform thickness. In essence, the Examiner is arguing that the
word „thickness‟ is subsumed by the word „diameter‟. Not only is this
argument counter-intuitive, it is contrary to established rules regarding claim
construction” (App. Br. 12). Appellant contends that Giacona III “teaches
that the „cable 27 [attached to strap 11] is preferably a much smaller
diameter than the maximum thickness of large loop member 11’” (id. at 15).
We are not persuaded. In light of the definition of the term
“diameter,” the Examiner has reasonably interpreted diameter as the width
and thickness of the device, an interpretation which is consistent with the
dictionary definition of the term “diameter” (FF 12). We recognize that
Giacona III teaches an embodiment where the cable may have a smaller
diameter, but Chu expressly teaches a uniform thickness (FF 11). See In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art‟s mere
disclosure of more than one alternative does not constitute a teaching away
from any of these alternatives because such disclosure does not criticize,
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discredit, or otherwise discourage the solution claimed”). Appellant does not
identify, and we do not find, any teaching in the cited references which
criticize, discredit, or otherwise discourage the use of a uniform diameter
support.
Claim 7
Appellant contends that “if Giacona, III . . . teaches anything, it
teaches a splice diameter that is necessarily different than the diameter of the
materials” (App. Br. 15).
The Examiner finds, regarding claim 7, that “the prior art to Giacona,
III clearly meets the recited claim limitations” (Ans. 12).
We find that the Examiner has the better position. While we agree
with Appellant that absolute reliance cannot be placed on the scale in the
figures of Giacona III, Chu expressly teaches the use of a uniform thickness
(FF 11) and this teaching reasonably suggests to the ordinary artisan that the
splicing can also be uniform in thickness.
Conclusion of Law
The evidence of record supports the Examiner‟s conclusion that
Giacona III and Chu render the claims obvious.
C. 35 U.S.C. § 103(a) over Giacona, III, Chu, and Millen
The Examiner finds that “Millen teaches a suspension apparatus for
supporting medical devices wherein medical appliances are attached via at
least one safety pin” (Ans. 8). The Examiner finds it obvious “to modify the
structure taught by Giacona, III and Chu, with the use of safety pins, as
taught by Millen, in order to provide an alternative means of attaching items
to the supporting structure” (id.).
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The Examiner provides sound fact-based reasoning for combining
Millen with Giacona III and Chu. We adopt the fact finding and analysis of
the Examiner as our own. Appellant argues the merits of the obviousness
rejection of claim 1, but Appellant does not identify any material defect in
the Examiner‟s reasoning for combining Millen with Giacona III and Chu.
Since Appellant only argues the rejection which we affirmed above, we
affirm this rejection for the reasons stated by the Examiner.
SUMMARY
In summary, we reverse the rejection of claims 1, 14, and 22 under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
We affirm the rejection of claims 1 and 7 under 35 U.S.C. § 103(a) as
obvious over Giacona, III and Chu. Pursuant to 37 C.F.R. § 41.37(c)(1), we
also affirm the rejection of claims 2-6 and 8-19 as these claims were not
argued separately.
We affirm the rejection of claims 20 and 22 under 35 U.S.C. § 103(a)
as obvious over Giacona, III, Chu, and Millen.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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