Ex Parte Hettich

Board of Patent Appeals and Interferences

Jun 19, 2008

10780510 (B.P.A.I. Jun. 19, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MARY ANN HETTICH
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Appeal 2008-1419
Application 10/780,510
Technology Center 3700
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Decided: June 19, 2008
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Before LORA M. GREEN, RICHARD M. LEBOVITZ, and
FRANCISCO C. PRATS, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the final rejection of claims 1-7. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Appeal 2008-1419
Application 10/780,510

STATEMENT OF THE CASE
The claims are drawn to a therapeutic gradient stocking that may be
worn on either leg. Claims 1-7, which are all the pending claims, are
appealed and stand finally rejected under 35 U.S.C. § 103(a) as obvious over
Russell (U.S. Pat. No. 3,440,665, issued Apr. 29, 1969) in view of Fregeolle
(U.S. Pat. No. 3,975,929, issued Aug. 24, 1976) (Ans. 3).
We select claim 1 as representative of the appealed subject matter.
Claim 1 reads as follows:
1. A therapeutic gradient compression stocking comprising
a foot portion, a leg portion having a lower leg portion
and an upper leg portion and a waist support spaced above said
leg portion and a hip portion extending between said leg portion
and said waist support portion, said hip portion having a cutout
portion on each side of said hip portion sized to accommodate
the lower waist of the wearer so that the stocking may be worn
on either leg; and said waist portion constructed so as to
accommodate a fastener surrounding the patient's waist, said
stocking being capable of being worn on either leg of the
patient.
OBVIOUSNESS
Claims 1-7 stand rejected under 35 U.S.C. § 103(a) as obvious over
Russell in view of Fregeolle.
FINDINGS OF FACT (FF)
Scope and content of the prior art
The Russell patent
1. Russell describes a hip-high hosiery having stockings 5 and 6 (Russell,
col. 2, ll. 10-12; see Fig. 1) which are united at the waist by a hook fasteners
(id. at col. 1, ll. 36-39; see Figs. 3-5).
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2. Stocking 6 has a foot portion 15, a leg portion 16, a hip portion, 17, and a
waist support 18 which is elastic and tubular in construction (Russell, at col.
2, ll. 12-14, 32-34; see Figs. 1 and 2).
3. The hip portion 17 has a slit 22 that provides an opening beneath the
waist (Russell, at col. 2, ll. 29-31; see Figs. 1 and 2).
4. As shown in Fig. 2 of Russell, the slit 22 has a cutout portion in the front
and back of the hip portion 17 of stocking 6. See Fig. 2, particularly the pair
of lines drawn from numeral “22” pointing to the frontside and backside
cutouts of stocking 6.
5. The slit 22 is worn around the lower waist (FF 3) of the wearer.
6. A stocking can be interchangeably worn on either leg by turning it inside
out (Russell, at col. 2, ll. 65-68).
The Fregeolle patent
7. Fregeolle teaches a therapeutic gradient compression stocking (Fregeolle,
at col. 1, ll. 4-9) to reduce the incidence of pulmonary embolism (id. at col.
1, ll. 10-17).
Differences between the prior art and the claimed invention
8. Russell describes a stocking having foot, leg, and hip portions (FF 2), and
a waist portion accommodating a fastener (FF 1) – as required by claim 1.
9. Russell’s stocking also has cutout portions in the frontside and backside
(FF 3, 4) which are worn around the wearer’s lower waist (FF 5) – meeting
the limitation of claim of a “hip portion having a cutout portion on each side
of said hip portion sized to accommodate the lower waist.”
10. The stockings described in Russell can be worn interchangeably on
either leg (FF 6) as can the stocking of claim 1 (“the stocking may be worn
either leg”).
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11. Russell does not describe a “therapeutic gradient compression stocking”
as recited in the preamble of claim 1, but Fregeolle teaches a gradient
compression stocking type to reduce the incidence of pulmonary embolism
(FF 7).

Reason to combine the prior art
12. Persons of ordinary skill in the art would have had reason “to have
provided the stocking of Russell . . . with the therapeutic compression
construction of the stocking of Fregeolle, since the stocking of Russell
provided with the therapeutic compression construction would provide not
only a stocking garment that secures at the waist to prevent the garment from
falling down when worn but also provides therapeutic needs to the wearer
preventing incidence of pulmonary embolism” (Ans. 4-5).
ANALYSIS
The examiner bears the initial burden of showing unpatentability. In
re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993). In making an obviousness
determination, a reason must be provided as to why persons of ordinary skill
in the art would have combined the prior art to have arrived at the claimed
invention. KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007).
After reviewing the scope and content of the prior art and the reason
for combining it, it is our opinion that prima facie obviousness of the subject
matter of claim 1 has been established. The only difference between the
claimed invention and the prior art is that Russell does not describe a
therapeutic gradient stocking as recited in the preamble of claim 1 (FF 11).
However, a gradient compression stocking is described by Fregeolle (7) and
the Examiner provides a logical reason to have provided Russell’s stocking
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with gradient compression (FF 12). Thus, we turn to Appellant’s rebuttal
arguments and evidence.
Appellant states that the claimed invention is “a therapeutic gradient
compression stocking having two cutout portions in each stocking leg”
(Reply Br. 1). Appellant asserts that Russell describes “two stockings, one
stocking having one slit specifically configured to be worn on the right leg,
and the other having one slit specifically configured to be worn on the left
leg” (App. Br. 3). Appellant contends that “[n]either of these stockings has
two slits” (id.) as does the stocking of claim 1.
We are not persuaded by this argument that the Examiner erred.
Claim 1 requires the stocking to have “a cutout portion on each side of said
hip portion sized to accommodate the lower waist of the wearer so that the
stocking may be worn on either leg.” As shown in Fig. 2, stocking 6 has
frontside and backside cutout portions (FF 4; Ans. 5) which form the slit 22;
thus the stocking has “a cutout portion” on the sides of the hip portion as
required by the claim. Appellant characterizes these two cutouts as a “one
slit” (App. Br. 3), but both Figs. 1 and 2 of Russell show that the “slit” has a
portion that faces the front and a portion that faces the back of the stocking –
which are sides of the stocking and thus meet the language of claim 1.
Figs. 3 and 4 of the instant Specification show cutouts on the inner
and outer lateral sides of the same stocking – in contrast to Russell who
teaches cutouts on the stocking’s front and back sides. However, claim 1
does not specify the location of the cutouts.
Appellant also contends that claim 1 requires the stocking to have two
cutout portions in each stocking (App. Br. 3). We agree with the Examiner
that the claim does not require the cutouts to be on the same stocking leg
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(Ans. 5). “However, even if the claim provided limitations for a single
stocking leg, Russell . . . still teaches two slits in a single stocking leg, one
cutout in the front of the leg portion and the other cutout in the back of the
leg portion” (id.).
During patent examination, we give the words in the claims their
“broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be
afforded by the written description contained in the applicant's
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). “Giving
claims their broadest reasonable construction ‘serves the public interest by
reducing the possibility that claims, finally allowed, will be given broader
scope than is justified.’” In re American Academy of Science Tech Center,
367 F.3d 1359, 1364 (Fed. Cir. 2004) (internal citations omitted). “An
essential purpose of patent examination is to fashion claims that are precise,
clear, correct, and unambiguous. Only in this way can uncertainties of claim
scope be removed, as much as possible, during the administrative process.”
In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989). In this case, except for not
disclosing a therapeutic gradient compression stocking, we find that Russell
describes a stocking that meets all the limitations of claim 1 as it would be
properly interpreted by one of ordinary skill in the art.
Appellant also contends Russell “provides no motivation to wear the
hosiery on one leg only,” asserting that “the very structure of the hosiery of
Russell is such that even if one wanted to wear only one of the pair of
stockings, it would be impossible” (App. Br. 4). The “use of one stocking
alone would require the fastening member 40 [of Russell] to hook onto loop
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33 of the same stocking” (App. Br. 4). This argument is not convincing.
Claim 1 does not exclude the user from wearing another stocking. The
claim recites that the “waist portion” is “constructed so as to accommodate a
fastener surrounding the patient’s waist.” Russell has a fastener that extends
around the waist (FF 1, 2), meeting the limitation of the claim. We do not
find any language in the claim – and Appellant does not point to any – that
expressly requires the fastener to completely extend around the waist
without cooperating with a fastener from a second stocking member as
shown in Fig. 1 of Russell.
Appellant argues that “Russell makes no mention of the hosiery being
worn for other than aesthetic/fashion-related reasons” (App. Br. 5). This
argument is not persuasive. There is no limitation in the claim that requires
the claimed stocking to be worn for aesthetic or fashion reasons.
Appellant also contends that “if the stockings were constructed to
provide therapeutic compression, turning one of the stockings inside out
would cause the stocking to be uncomfortable to a wearer, for example as a
result of seams that would irritate the wearer” (App. Br. 5). We agree with
the Examiner that “[t]here is nothing that prevents the garment from being
reversed and worn in the reversed manner” (Ans. 6) – even if this
configuration were to be “uncomfortable to a wearer.” Once again, there is
no limitation in the claim that would require the stocking to be comfortable
and to lack irritation when worn.
According to Appellant, Fregeolle does not require “any slitting or
cutout portions to fit the stocking to the leg of the wearer” and is designed to
eliminate the need for slitting (App. Br. 6). “[S]lits or cutout portions are
unnecessary and would in fact render the thigh-length stocking inoperable
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by interrupting the supporting structure” (id.). Appellant also states that
Fregeolle is only thigh-length and is not designed to extend up to the hip as
is Russell’s hosiery (App. Br. 8-9).
These arguments are not persuasive. Fregeolle is relied upon for
teaching a gradient compression stocking (FF 7; Ans. 8). From Fregeolle’s
teachings, a person ordinary skill in the art would have understood how to
produce a compression stocking from Russell’s design. As pointed out by
the Examiner, Fregeolle’s teaching about “slits” refers to a non-compression
part of the stocking (Ans. 7; Fregeolle, at col. 1, ll. 20-40), and thus is not
teaching away from the claimed subject matter. Moreover, the Examiner is
not proposing to modify Fregeolle’s thigh-length stocking; Fregeolle was
relied on to the extent it teaches that gradient compression stockings were
known in the prior art (Ans. 8). Similarly, we are not convinced by
Appellant’s arguments about the lack of motivation to combine Russell with
Fregeolle (App. Br. 9-10); such arguments describe modifications that are
not suggested by the Examiner.
For the foregoing reasons, we affirm the rejection of claim 1 as
obvious over Russell and Fregeolle. Claims 2-7 fall with claim 1 because
separate reasons for their patentability were not provided. See 37 C.F.R.
41.37(c)(1)(vii).
TIME PERIOD
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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