Ex Parte Johnson

Board of Patent Appeals and Interferences

Aug 15, 2011

10319858 - (D) (B.P.A.I. Aug. 15, 2011)

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.
10/319,858 12/12/2002 Tracy J. Johnson C-304CIP 1408
802 7590 08/15/2011
PATENTTM.US
P. O. BOX 82788
PORTLAND, OR 97282-0788
EXAMINER
SMITH, PHILIP ROBERT
ART UNIT PAPER NUMBER
3779
MAIL DATE DELIVERY MODE
08/15/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte TRACY J. JOHNSON
____________________

Appeal 2010-002001
Application 10/319,858
Technology Center 3700
____________________

Before: WILLIAM F. PATE III, JENNIFER D. BAHR, and
PHILLIP J. KAUFFMAN, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-002001
Application 10/319,858
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
10, 12-15, 17-25, 29-42, 44, and 46-51.1 We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.

THE INVENTION
Appellant’s claimed invention relates to therapy wraps, for heat or
cold application on humans or animals. Spec. 4:3-10. Independent claim
15, reproduced below, is representative of the claimed subject matter
(emphasis added):
15. A therapy wrap, comprising:
a flexible side wall;
an elastically deformable layer; and
at least one heatable/coolable/freezable element, said
element being positioned between said flexible side wall and
said elastically deformable layer, for providing heating or
cooling to said wrap.

1 In the Office Action that is the subject of this appeal, claims 10, 12-15, 17-
25, and 29-51 were rejected. Office Action dated December 11, 2007.
Subsequently, Appellant cancelled claims 43 and 45. See Advisory Action
dated July 17, 2009. Appellant’s listing of claims they wish to appeal omits
claims 41 and 42; however, because Appellant argues for the patentability of
these claims, we treat them as appealed. See Br. 2, 12. Appellant’s listing
of claims they wish to appeal mistakenly includes claim 45; however claim
45 is cancelled and is not subject to this appeal. See Br. 2.
Appeal 2010-002001
Application 10/319,858
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REJECTIONS
Appellant seeks review of the following rejections:
1. Rejection of claims 10, 12-15, 17-25, 29, 34, 39, and 40 under
35 U.S.C. § 103(a) as being unpatentable over Brannigan (US 4,575,097;
issued March 11, 1986) and Flanders (US 5,215,136; issued June 1, 1993).
2. Rejection of claims 30, 35, 41, 42, 46, and 51 under 35 U.S.C.
§ 103(a) as being unpatentable over Brannigan, Flanders, and McCarthy
(US 2002/0155768 A1; published October 24, 2002).
3. Rejection of claims 31, 36, 47, and 49 under 35 U.S.C. § 103(a) as
being unpatentable over Brannigan, Flanders, McCarthy, and Lenz
(US 4,885,881; issued December 12, 1989).
4. Rejection of claims 32, 37, 48, and 50 under 35 U.S.C. § 103(a) as
being unpatentable over Brannigan, Flanders, McCarthy, Lenz, and Iwasa
(US 5,744,763; issued April 28, 1998).
5. Rejection of claims 33 and 38 under 35 U.S.C. § 103(a) as being
unpatentable over Brannigan, Flanders, and Bailey (US 2001/0045104 A1;
published November 29, 2001).
6. Rejection of claims 44 under 35 U.S.C. § 112, second paragraph, as
being indefinite because it depends from a cancelled claim.2

2 Claim 44 stands rejected. Office Action dated December 11, 2007 at 2.
Appellant states they wish to appeal claim 44, but presents no arguments.
See Br. 2. Accordingly, we sustain this rejection. See Ex Parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential) (the Board may treat
arguments appellant failed to make as waived).
Appeal 2010-002001
Application 10/319,858
4
ISSUES
Does Brannigan disclose a therapy wrap that includes an elastically
deformable layer as called for in independent claim 15?
Would a person of ordinary skill in the art have combined Brannigan
and Flanders to reach the subject matter of independent claim 15?
Would a person of ordinary skill in the art have combined Brannigan,
Flanders, and McCarthy to reach the subject matter of claim 30?

ANALYSIS
Rejection of claims 10, 12-15, 17-25, 29, 34, 39, and 40 under
35 U.S.C. § 103(a) as being unpatentable over Brannigan and Flanders
Appellant argues claims 10, 12-15, 17-25, 29, 34, 39, and 40 as a
group. Br. 7-12. We select independent claim 15 as the representative
claim, and claims 10, 12-14, 17-25, 29, 34, 39, and 40 stand or fall with
claim 15. See 37 C.F.R. § 41.37(c)(1)(vii).
Independent claim 15 is directed to a therapy wrap that includes a
flexible side wall and an elastically deformable layer. Appellant’s
Specification describes an embodiment of a therapy wrap having a flexible
side wall (outer shell 62) and an elastically deformable layer (inner layer
66). Spec. 10:16-32.3
We affirm this rejection for two independent reasons: one, because
Brannigan discloses an elastically deformable layer as called for in claim 15,
and two, because the subject matter of independent claim 15 would have
been obvious in view of Brannigan and Flanders.
The Examiner found that Brannigan discloses the therapy wrap of
claim 15, except that Brannigan does not explicitly disclose that the inner

3 See Amended Spec., p. 10, dated October 5, 2007.
Appeal 2010-002001
Application 10/319,858
5
layer (second flexible layer 22 formed of polyethelene) is elastically
deformable. Ans. 5-6. The Examiner found that Flanders discloses that
neoprene is a flexible, waterproof alternative to polyethylene. Ans. 6. The
Examiner concluded it would be obvious to modify Brannigan’s therapy
wrap by substituting neoprene, as disclosed by Flanders, for polyethelene, to
form Brannigan’s inner layer (second flexible layer 22). Id.
Appellant argues that Brannigan discloses that strap portion 58 is
“elastic,” but in contrast, discloses that second flexible layer 22 is “flexible”
without specifying that it is elastic. Br. 7-10. Appellant reasons that if
Brannigan’s inner layer (second flexible layer 22) was elastically
deformable, Brannigan would have stated such, and Appellant infers that the
absence of such a description demonstrates that Brannigan’s second flexible
layer 22 is not elastically deformable as claimed. Id. We cannot agree.
Brannigan discloses a therapeutic device 10 that includes a first
flexible layer 12 and a second flexible layer 22, each formed of a suitable
flexible material, such as polyethelene. Brannigan, col. 6, ll. 4-8, 12-15, 30-
33. The upper surface 24 of second flexible layer 22 is sealingly engaged to
lower surface 16 of first flexible layer 12 to form a plurality of chambers 28
that are joined by passageways 30. Brannigan, col. 6, ll. 20-25; fig. 2.
“Chambers 28 and passageways 30 are adapted to be evenly filled with a
thermal responsive medium, such as water,” and may be used in a frozen
state. Brannigan, col. 6, ll. 35-37; col. 7, ll. 6-7, 28-33.
Because the water that fills chambers 28 and passageways 30 expands
when changing from a liquid to a solid state (when “freezing”), Brannigan’s
first and second flexible layers 12, 22 must deform to accommodate this
expansion. Further, though not explicitly described as a reusable device,
Brannigan’s therapeutic device 10 is not described as a one-time-use device
Appeal 2010-002001
Application 10/319,858
6
(disposable) device, and we find that the reference as a whole indicates it is
intended for repeated use. As a reusable device, Brannigan’s first and
second flexible layers 12, 22 must return to their original shape after the
force provided by the expansion of the freezing water is removed (i.e., by
the water changing from a solid to a liquid state). Accordingly, we find by a
preponderance of the evidence that Brannigan’s second flexible layer 22 is
elastically deformable, as called for in claim 15. As such, Brannigan
discloses the therapy wrap of claim 15. See In re Pearson, 494 F.2d 1399,
1402 (CCPA 1974) (citation omitted) (anticipation is the epitome of
obviousness).
Appellant is correct that Brannigan describes strap portion 58 as
elastic and does not describe Brannigan’s second layer 22 as elastic. See,
e.g., Brannigan, col. 6, ll. 30-33; col. 8, ll. 40-41. However, we are not
persuaded that Brannigan’s failure to mention that second layer 22 has this
characteristic demonstrates that it does not. Given the operation of
Brannigan’s device as described, supra, we remain convinced that a
preponderance of the evidence shows that second layer 22 must elastically
deform for proper operation of therapeutic deice 10.
Even if Brannigan’s second layer 22 is not elastically deformable as
called for in independent claim 15, as explained below, the proposed
combination of Brannigan and Flanders would have rendered the subject
matter of claim 15 obvious.
Appellant argues that Flanders does not disclose “elements” as called
for in claim 15. Br. 11. The proposed combination relies upon Brannigan,
not Flanders, as disclosing the claimed elements. Ans. 6. Thus, Appellant’s
argument does not address the rejection as articulated by the Examiner.
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Application 10/319,858
7
Similarly, Appellant argues that a person of ordinary skill in the art
would not have considered Flanders because Flanders does not disclose
freezable or heatable elements between the layers. Br. 11. Again, Appellant
fails to address the rejection as articulated by the Examiner. The rejection
relies upon Flanders for the disclosure that a waterproof, flexible barrier may
be formed of neoprene or polyethelene. See Ans. 6.
Appellant also argues that, “considered alone, Flanders is unable to
meet the language of the claims.” Br. 11. We are unpersuaded by this
individual attack on Flanders because the rejection is based upon the
combination of Brannigan and Flanders. In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986) citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)
(one cannot show nonobviousness by attacking references individually
where the rejection is based on a combination of references).
Appellant then contends that there is no reason to combine the
references because Brannigan teaches away from the proposed combination
by disclosing that second layer 22 is flexible while not disclosing that it is
elastic, indicating that an elastic layer is undesirable. Br. 10-11. We cannot
agree. Because Brannigan does not criticize, discredit, or otherwise
discourage flexible second layer 22 being formed of an elastically
deformable material, we fail to see how Brannigan can be said to have led a
person of ordinary skill in the art in a direction divergent from that chosen
by Appellant. See In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (“‘A
reference may be said to teach away when a person of ordinary skill, upon
reading the reference, . . . would be led in a direction divergent from the path
that was taken by the applicant.’” (citation omitted)).
Appellant also asserts there is no reason to combine the references.
App. Br. 11. The only distinction identified by Appellant between the prior
Appeal 2010-002001
Application 10/319,858
8
art (Brannigan) and the subject matter of claim 15 is that Brannigan’s inner
layer (flexible second layer 22) is not elastically deformable. With this
difference in mind we examiner the references.
Flanders discloses a knitted fabric cylinder 1 containing two
compartments: first compartment 20 that functions as a golf putter 2 head
cover, and second compartment 30 having a waterproof flexible moisture
barrier 12 that functions as a golf ball 3 washer. Flanders, col. 1, ll. 8-12;
col. 2, ll. 51-55; col. 4, ll. 15-16, 63-64; col. 5, ll. 41-45; col. 6, ll. 8-13; figs.
1A, 1B. Flanders discloses that moisture barrier 12 of second compartment
30 may be neoprene or polyethelene. Flanders, col. 6, ll. 26-27; col. 10,
ll. 15-17.
Flanders discloses that a flexible moisture barrier may be formed of
neoprene or polyethelene, and, as we found supra, Brannigan discloses that
second layer 22, formed of polyethelene, is flexible and serves as a moisture
barrier (by containing water). Further, neither Appellant’s Brief nor
Appellant’s Specification describes the use of an elastically deformable
inner layer as providing unexpected results. In light of this, the Examiner’s
conclusion that a person of ordinary skill in the art would recognize that
forming Brannigan’s second layer 22 of neoprene instead of polyethelene is
a mere substitution, has rationale underpinnings. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 416 (2007) (citing United States v. Adams, 383
U.S. 39, 50-51 (1966) (“[W]hen a patent claims a structure already known in
the prior art that is altered by the mere substitution of one element for
another known in the field, the combination must do more than yield a
predictable result.”).
Further, Appellant has failed to articulate any persuasive reason why
neoprene is not substitutable for polyethelene as proposed by the Examiner.
Appeal 2010-002001
Application 10/319,858
9
Because Brannigan’s second layer 22 formed of polyethelene serves as a
flexible moisture barrier, and because Flanders discloses that a flexible
waterproof moisture barrier may be formed of neoprene or polyethelene, a
person of ordinary skill in the art would have had a reasonable expectation
of success in substituting neoprene for polyethelene in such use.
As such, we sustain the rejection of independent claim 15 as obvious
in view of Brannigan and Flanders, and claims 10, 12-14, 17-25, 29, 34, 39,
and 40 fall with claim 15.

Rejection of claims 30, 35, 41, 42, 46, and 51 under 35 U.S.C. § 103(a) as
being unpatentable over Brannigan, Flanders, and McCarthy
Appellant argues claims 30, 35, 41, 42, 46, and 51 as a group. Br. 12-
16. We select claim 30 as the representative claim, and claims 35, 41, 42,
46, and 51 stand or fall with claim 30. See 37 C.F.R. § 41.37(c)(1)(vii).
Claim 30, which depends from independent claim 10, is directed to a
cold therapy wrap and adds the limitation that the elastically deformable
layer comprises a rubber impregnated fabric.
Appellant argues that the proposed combination would have a rubber
impregnated outer layer rather than a rubber impregnated inner layer as
claimed. Br. 13. This argument is unpersuasive because it mischaracterizes
the rejection. The Examiner found that McCarthy discloses that rubber
impregnated fabric is an alternative to neoprene. Ans. 8 (citing McCarthy,
27, para. [0430]). The Examiner concluded that it would have been obvious
to further modify the combination of Brannigan and Flanders to form the
neoprene inner layer of rubber impregnated fabric, as taught by McCarthy.
Ans. 7-8. Thus, contrary to Appellant’s assertion, the proposed combination
includes an inner layer comprised of a rubber impregnated fabric.
Appeal 2010-002001
Application 10/319,858
10
Appellant argues that McCarthy’s rubber impregnated fabric is
“employed in a completely different situation and use than in applicant’s
device.” Br. 14. We are unpersuaded by this argument because it
mischaracterizes the reference.
McCarthy discloses an embodiment of a swim fin having thin layers
(membranes 298, 300, 302) which are suspended across voids (recesses 286,
288, 290) in the web (portion 186) of the fin. McCarthy, 27, paras. [0428]-
[0429]; fig 20. McCarthy discloses that the thin layers are “significantly
more flexible” than the web of the swim fin (portion 186), and may be
formed of neoprene or rubber impregnated fabric. McCarthy, 27,
para. [0430]; fig. 20. Further, because McCarthy intended to reduce user’s
ankle and leg fatigue,4 flexible members 298, 300, and 302 are more likely
than not formed of materials that do not absorb water.
Hence, a person of ordinary skill in the art would recognize that
McCarthy discloses that rubber impregnated fabric and neoprene are
appropriate for use as a flexible, elastically deformable,5 non-water
absorbent thin membrane. Further, as disclosed in Flanders and explained in
the analysis of claim 15, supra, a person of ordinary skill in the art would
know that neoprene may be substituted for polyethelene. In light of this, the
Examiner’s conclusion that it would have been obvious to substitute
McCarthy’s rubber impregnated fiber for polyethelene to form Brannigan’s
second layer 22 has rationale underpinnings. See KSR, 550 U.S. at 416.
Further, because Brannigan’s second layer 22 serves as a flexible
moisture barrier, and because McCarthy discloses that a rubber impregnated

4 McCarthy, 12, para. [0117].
5 Appellant does not contest the Examiner’s finding that McCarthy’s
membranes are elastically deformable, and that rubber impregnated fabric is
a known alternative to neoprene. Br. 12-16.
Appeal 2010-002001
Application 10/319,858
11
fabric is appropriate for use as a flexible, elastically deformable, non-water
absorbent thin membrane, a person of ordinary skill in the art would have
had a reasonable expectation of success in substituting rubber impregnated
fabric for polyethelene.
Appellant also applies the arguments used against the rejection of
claim 15 to the rejection of claim 30. Br. 13-16. In our analysis of these
arguments with regard to claim 15, supra, we affirmed the rejection on two
independent grounds. We cannot similarly affirm the rejection of claim 30
on the first ground because Brannigan does not disclose an elastically
deformable layer comprising rubber impregnated fabric as called for in
claim 30. However, our analysis regarding the second ground for affirming
the rejection of claim 15 applies equally well to claim 30.
As such, we sustain the rejection of clam 30, and claims 35, 41, 42,
46, and 51 fall with claim 30.

Rejections of claims 31-33, 36-38, and 47-50
Each of the remaining rejections is based on the same proposed
combination of Brannigan and Flanders relied upon for the rejection of claim
30. Appellant applies the arguments used against the rejection of claim 30
to each of these rejections. Br. 16-24. For the reasons explained in the
analysis of claim 30, supra, those arguments are unconvincing here as well.

CONCLUSIONS
Brannigan discloses a therapy wrap that includes an elastically
deformable layer as called for in independent claim 15.
A person of ordinary skill in the art would have combined Brannigan
and Flanders to reach the subject matter of independent claim 15.
Appeal 2010-002001
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12
A person of ordinary skill in the art would have combined Brannigan,
Flanders and McCarthy to reach the subject matter of claim 30.

DECISION
We affirm the Examiner’s decision to reject claims 10, 12-15, 17-25,
29-42, 44, and 46-51.

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

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