Ex Parte Johnson et alDownload PDFPatent Trial and Appeal BoardSep 29, 201612474733 (P.T.A.B. Sep. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/474,733 0512912009 David R. Johnson 277 7590 10/03/2016 PRICE HENEVELD LLP 695 KENMOOR SE PO BOX 2567 GRAND RAPIDS, MI 49501 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 ATTORNEY DOCKET NO. CONFIRMATION NO. COR021 P316A 2140 EXAMINER KOKKINOS, NICHOLAS C ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 10/03/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): ptomail@priceheneveld.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID R. JOHNSON and STEVEN R. KLEMM Appeal2015-002844 Application 12/474,733 Technology Center 1700 Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and MONTE T. SQUIRE, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 appeal the Examiner's final rejection of claims 1-10, 12-14, and 22. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b ). For the reasons set forth below, we REVERSE. 1 Appellants identify Corium International, Inc. as the real party in interest. App. Br. 2. Appeal2015-002844 Application 12/474,733 The Claimed Invention Appellants' disclosure relates to adhesive devices used as wound dressings, ingredient delivery devices, and IV hold-downs. Spec. i-f 2; Abstract. Claim 1 is representative of the claims on appeal and is reproduced below from the Claims Appendix to the Appeal Brief (App. Br. 11) (emphasis added to identify key limitation in dispute): 1. A wound dressing/ingredient delivery device/IV hold down comprising: a non-conductive layer which is adhesively coated on at least a first portion of a first side to facilitate adhesion to a patient; a release liner in contact with the entire first portion of the first side of the nonconductive layer; a handling member comprising at least one layer of non- conductive handle material, wherein: at least one of the non-conductive layer and the handling member further comprises a layer of conductive material fixed to the non-conductive layer or the layer of non- conductive handle material, respectively; and wherein: the handling member is electrostatically adhered to the non-conductive layer solely by electrostatic attraction, without an adhesive. The Reference The Examiner relies on the following prior art reference as evidence in rejecting the claims on appeal: Johns us 5,840,052 Nov. 24, 1998 The Rejections On appeal, the Examiner maintains the following rejections: 1. Claim 22 stands rejected under pre-AIA 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. 2 Appeal2015-002844 Application 12/474,733 2. Claim 22 stands rejected under pre-AIA 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the applicants regard as the invention. 2 3. Claims 1-10 and 12-14 stand rejected under pre-AIA 35 U.S.C. § 102(b) as being anticipated by Johns. OPINION Rejections 1and2 Claim 22 stands rejected for both lack of written description and indefiniteness. Final Act. 2, 4. In particular, the Examiner concludes that adequate written descriptive support is not provided in the Specification for the limitation "the entire handling member is 'substantially planar."' Id. at 2. The Examiner also concludes that the term "substantially planar" is indefinite because it is "not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention." Id. at 4. Appellants argue that the Examiner's rejections should be reversed because the term "substantially planar" is supported by the Specification and based on the Specification's disclosure, "[o]ne skilled in the art would readily recognize that the disclosed handling member 10 would not have to 2 The Examiner has withdrawn the rejections of claims 16-18 under pre-AIA 35 U.S.C. § 112, i-f 2 for indefiniteness. Ans. 2. 3 Appeal2015-002844 Application 12/474,733 be precisely planar" and that "the inventors ... possessed a substantially planar handling member." App. Br. 6 (citing Spec. Figs. 1, 2, and 3). We agree with Appellants' arguments and are persuaded that the "substantially planar" recitation is adequately supported by the Specification and not indefinite. It is well settled that the word "substantially" has numerous ordinary meanings. It can be a term of approximation or a term of magnitude with meaning varying from "significantly" or "considerably" to "largely" or "essentially." Deering Precision Instruments L.L. C. v. Vector Distribution Sys. Inc., 347 F.3d 1314, 1321 (Fed. Cir. 2003). When "substantially" is used as a word of degree, one must look to the Specification to determine a standard for measuring that degree. See Seattle Box Co. v. Industrial Crating & Packing, Inc., 731F.2d818, 826 (Fed. Cir. 1984) ("When a word of degree is used the district court must determine whether the patent's specification provides some standard for measuring that degree."). As disclosed in the Specification, handling member l 0 includes film layers 20, 22, and optionally 24. Spec. i-fi-f 13-15. The claimed handling member also has a window 12. Id. Although it is shown in the figures as planar, it is clear that forming such a multilayer film article as precisely planar is neither expressly required nor likely to occur in typical manufacturing processes. A reading of the Specification indicates that Appellants are using "substantially" as a term of approximation to encompass handling members that are not precisely planar but are largely or essentially planar. Thus, we are persuaded that the Specification, as filed, provides sufficient written descriptive support such that the skilled artisan would have understood the handling member 10 as being substantially planar-and not 4 Appeal2015-002844 Application 12/474,733 limited to a handling member that is precisely planar-and that the inventors were in possession of and had actually invented the handling member as claimed. Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 13 51 (Fed. Cir. 2010) ("[T]he specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed."). We are also persuaded that the term "substantially planar" is not indefinite. As discussed above regarding the Examiner's rejection for lack of written description, although handling member 10 is depicted in the figures as planar, it is evident from reading the Specification in context, including its disclosure of the multilayer film structure of Appellant's claimed invention, that the term "substantially planar" encompasses handling members that are not precisely planar but are largely or essentially planar. Cf Ecolab, Inc. v. Envirochem, Inc., 264 F.3d 1358, 1367 (Fed. Cir. 2001) (noting that the term "substantially" may be used in patent claims without necessarily rendering the claims indefinite). As such, we determine that the claim language defines the claimed subject matter with an adequate degree of particularly and distinctness such that one of ordinary skill in the art would understand what is being claimed regarding the handling member recited in claim 10. Accordingly, we reverse the Examiner's rejections of claim 22 for lack of written description and indefiniteness. Rejection 3 Appellants argue claims 1-10, 12, and 13 as a group. We select claim 1 as representative of this group, and the remaining claims stand or fall with claim 1. 37 C.F.R. § 41.37( c )(1 )(iv). 5 Appeal2015-002844 Application 12/474,733 The Examiner finds that the Johns reference discloses all of the limitations of claim 1 and rejects claim 1 as being anticipated under § 102(b). Final Act. 5, 6. In particular, the Examiner finds that Johns inherently discloses the limitation "the handling member is electrostatically adhered to the non-conductive layer solely by electrostatic attraction, without an adhesive." Id. at 6 (finding that "this feature is deemed to be inherent to the Johns article"). Appellants argue that the Examiner's rejection of claim 1 should be reversed because "there is no disclosure whatsoever of electrostatic adhesion in Johns" as required by the claim. App. Br. 7. In particular, Appellants argue that Johns does not disclose claim 1 's "the handling member is electrostatically adhered to the non-conductive layer solely by electrostatic attraction, without an adhesive" limitation and that "the actual disclosure of Johns ... is directly contrary" to the language of the claim. Id. at 7, 8. We agree with Appellants' argument. To serve as an anticipatory reference, "the reference must disclose each and every element of the claimed invention." In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). For a claim limitation to be found inherently present in the cited prior art reference, the limitation must be either (a) necessarily present, or (b) the natural result of the combination of elements explicitly disclosed by the prior art. Par Pharmaceutical, Inc. v. TWI Pharmaceuticals, Inc., 773 F.3d 1186, 1195-96 (Fed. Cir. 2014). Based on the record before us, we are not persuaded that the Examiner has established by a preponderance of the evidence that Johns inherently discloses that the "handling member is electrostatically adhered to the non-conductive layer solely by electrostatic attraction, without an adhesive," as required by claim 1. 6 Appeal2015-002844 Application 12/474,733 The Examiner does not identify or direct us to sufficient evidence that Johns inherently discloses this limitation. As Appellants correctly point out (App. 7, 8), the portions of Johns that the Examiner relies on for showing a basis for inherency do not show that this limitation is necessarily present in or the natural result of the combination of elements explicitly disclosed by the reference. See Final Act. 5, 6 (citing Johns, Figs. 2); see also Ans. 7, 8 (citing Johns, Figs. 3 and 8). None of these cited portions teach, suggest, or mention that the support layer 7 of Johns is necessarily adhered to dressing layer 3 solely by electrostatic attraction, as required by the claims. Rather, as noted by Appellants (App. Br. 7, 8), Johns' disclosure appears to be directly contrary to Appellants' claimed invention in this regard, particularly because Johns expressly teaches that the end portions 7a of support layer 7 directly contact adhesive layer 5. See Johns Figs. 2 and 3, col. 7, 11. 60-62, 66, and 67. We, therefore, cannot sustain the Examiner's finding that John teaches all of claim 1 's limitations and conclusion that the reference anticipates claim 1. Accordingly, we reverse the Examiner's rejection of claim 1 under pre-AIA 35 U.S.C. § 102(b). Because claims 2-10, 12, and 13 each depend from claim 1 and because claim 14 includes the same "the handling member is electrostatically adhered to the non-conductive layer, without [an] adhesive" limitation as claim 1, we also reverse the rejections of these claims. DECISION/ORDER The Examiner's rejections of claims 1-10, 12-14, and 22 are reversed. It is ordered that the Examiner's decision is reversed. 7 Appeal2015-002844 Application 12/474,733 REVERSED 8 Copy with citationCopy as parenthetical citation