Ex Parte KutschDownload PDFPatent Trial and Appeal BoardDec 13, 201713475174 (P.T.A.B. Dec. 13, 2017) Copy Citation 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. 13/475,174 05/18/2012 John Henry Kutsch BPMDL0049JK (10483U) 8615 27939 7590 12/13/2017 Philip H. Burrus, IV Burrus Intellectual Property Law Group LLC 222 12th Street NE Suite 1803 Atlanta, GA 30309 EXAMINER BOSWORTH, KAMI A ART UNIT PAPER NUMBER 3763 MAIL DATE DELIVERY MODE 12/13/2017 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 JOHN HENRY KUTSCH Appeal 2017-003101 Application 13/475,1741 Technology Center 3700 Before PHILIP J. HOFFMANN, BRADLEY B. BAYAT, and TARA L. HUTCHINGS, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the final rejection of claims 1—10, 12—16, and 21—23. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. According to Appellant, the invention relates “to a window dressing suitable for use in catheter and intravenous insertion procedures.” Spec. 12. 1 According to Appellant, “[t]he real party in interest is Medline Industries, Inc.” Br. 2. Appeal 2017-003101 Application 13/475,174 Claim 1 is the only independent claim on appeal. Below, we reproduce claim 1 as illustrative of the appealed claims. 1. A window dressing, comprising: a top layer defining a window; a backing layer coupled to the top layer and spanning the window; a plurality of adhesive islands disposed about a perimeter of the top layer, each adhesive islands having a first adhesion coefficient associated therewith; and an adhesive layer disposed about the plurality of adhesive islands, the adhesive layer having a second adhesion coefficient associated therewith that is less than the first adhesion coefficient. REJECTIONS AND PRIOR ART The Examiner rejects claims 1, 2, 4, 5, 9, 10, 13, and 21—23 under 35 U.S.C. § 102(b) as anticipated by Worthley (US 2004/0077984 Al, pub. Apr. 22, 2004). The Examiner rejects claims 1, 2, 4—7, 9, 10, 12—14, and 21—23 under 35 U.S.C. § 103(a) as unpatentable over Worthley. The Examiner rejects claim 3 under 35 U.S.C. § 103(a) as unpatentable over Worthley and Blatchford (US 6,461,467 B2, iss. Oct. 8, 2002). The Examiner rejects claims 7 and 8 under 35 U.S.C. § 103(a) as unpatentable over Worthley and Propp (US 2010/0198161 Al, pub. Aug. 5, 2010) (“Propp ’161”). The Examiner rejects claims 14 and 15 under 35 U.S.C. § 103(a) as unpatentable over Worthley and Propp (US 2008/0132821 Al, pub. June 5, 2008) (“Propp ’821”). 2 Appeal 2017-003101 Application 13/475,174 The Examiner rejects claim 16 under 35 U.S.C. § 103(a) as unpatentable over Worthley and Roman (US 2006/0211994 Al, pub. Sept. 21,2006). ANALYSIS Anticipation rejection of claims E 2, 4, 5, 9, 10, 13, and 21—23, based on Worthley As set forth above, independent claim 1 recites a plurality of adhesive islands disposed about a perimeter of the top layer, each adhesive islands having a first adhesion coefficient associated therewith; and an adhesive layer disposed about the plurality of adhesive islands, the adhesive layer having a second adhesion coefficient associated therewith that is less than the first adhesion coefficient. Br., Claims App. Appellant argues that the Examiner’s rejection is erroneous because Worthley’s adhesive layer 14 is not disposed “about” adhesive layer 16. Br. 10-16. More specifically, Appellant argues that based on the ordinary definitions of the terms “about” and “island,” and the broadest reasonable interpretation of the claim in view of Appellant’s Specification, the claim requires that the adhesive layer surrounds the plurality of adhesive islands. See, e.g., id. at 13—14. Appellant further argues that each of Worthley’s Figures 1A and IB show that “adhesive [16] is disposed on the bottom of a foam layer, while . . . adhesive [14] is disposed on the toy of the foam layer T such that adhesive layer 14 does not surround adhesive layer 16. Id. at 14. Conversely, the Examiner does not dispute that adhesive layer 14 is on a different side of a foam layer than adhesive layer 16, but instead determines that “the only definition of the 3 Appeal 2017-003101 Application 13/475,174 term ‘about’ that is supported by [Appellant’s] drawings is ‘in the vicinity of or ‘near[,]’ and[, thus,] one of ordinary skill. . ., when viewing [Worthley’s] Fig 1A, would consider adhesives 14 and 16 to be ‘in the vicinity of’ or ‘near’ each other.” Answer 7. Based on our review, the Examiner does not support adequately the finding that Worthley discloses an adhesive layer disposed about the plurality of adhesive islands, as claimed. Initially, we note that although the Examiner determines that “the only definition of the term ‘about’ that is supported by [Appellant’s] drawings is ‘in the vicinity of or ‘near’” (Answer 7), the Examiner does not explain why this is the only definition that is supported by Appellant’s drawings. Further, the Examiner does not make any determination as to what definition of “about” is supported by Appellant’s Specification, and does not address Appellant’s argument that the Specification’s paragraphs 24, 25, 37, and 62— 64 support another definition. See, e.g., Br. 13—14. Conversely, based on our review of these portions of the Specification, we agree with Appellant that when the claims are read in view of the Specification, the broadest reasonable interpretation of the claim is that the adhesive islands are islands by virtue of being surrounded by the adhesive layer. See, e.g., id. The Examiner does not demonstrate that Worthley discloses such an arrangement. Thus, based on the foregoing, we do not sustain the anticipation rejection of claim 1. We also do not sustain the anticipation rejection of claims 2, 4, 5, 9, 10, 13, and 21—23 that depend from claim 1. Obviousness rejection of claims E 2, 4, 5, 9, 10, 13, and 21—23, based on Worthley The Examiner’s obviousness rejection of claims 1, 2, 4, 5, 9, 10, 13, and 21—23 relies on a finding that Worthley discloses an adhesive layer 4 Appeal 2017-003101 Application 13/475,174 disposed about the plurality of adhesive islands, as claimed. Inasmuch as the Examiner does not demonstrate that Worthley discloses such an arrangement, we do not sustain the obviousness rejection. Obviousness rejection of claims 3, 7, 8, and 14—16, based on Worthley and either Blatchford, Propp ’161, Propp ’821, or Roman The Examiner’s obviousness rejections of claims 3, 7, 8, and 14—16 each rely on a finding that Worthley discloses an adhesive layer disposed about the plurality of adhesive islands, as claimed. Inasmuch as the Examiner does not demonstrate that Worthley discloses such an arrangement, and does not demonstrate that any other reference remedies this deficiency, we do not sustain the obviousness rejections of these claims. DECISION We REVERSE the Examiner’s anticipation and obviousness rejections of claims 1—10, 12—16, and 21—23. REVERSED 5 Copy with citationCopy as parenthetical citation