Ex Parte Lademann et al

Patent Trial and Appeal Board

May 1, 2018

13032398 (P.T.A.B. May. 1, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/032,398 02/22/2011 Jurgen Lademann
34018 7590 05/03/2018
Greenberg Traurig, LLP
77 W. Wacker Drive
Suite 3100
CHICAGO, IL 60601-1732
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.
146656-010600 6791
EXAMINER
PIERCE, JEREMY R
ART UNIT PAPER NUMBER
1789
NOTIFICATION DATE DELIVERY MODE
05/03/2018 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):
chiipmail@gtlaw.com
escobedot@gtlaw.com
j arosikg@gtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JURGEN LADEMANN, LAURA M. FRAZIER, and
WORAPHON KATAPHINAN
Appeal2017-006301
Application 13/032,398
Technology Center 1700
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
DEBRA L. DENNETT, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1, 2, 5-9, and 11--49 under 35 U.S.C.
103(a) as unpatentable over at least the basic combination of Ring et al. (US
2008/0255531 Al, published Oct. 16, 2008), Howard et al. (US
1 The real party in interest is stated to be SNS Nano Fiber Technology, LLC.
(Appeal Br. 2). As pointed out by Appellants, this case is related to
12/850, 138 (id.), Appeal No. 2017-006042, wherein the Board affirmed the
Examiner's rejection of similar claims over the same basic combination of
references in a decision mailed April 24, 2018.
Appeal2017-006301
Application 13/032,398
2002/0150720 Al, published Oct. 17, 2002), and Karshanji (GB 2 068 223
A, published Aug. 12, 1981). 2,3
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Independent claim 1 is illustrative of the subject matter on appeal
(emphasis added):
1. An absorbent textile composite material comprising a
carrier layer with a rim; and an active layer,
wherein the active layer is connected with the carrier layer,
and comprises an agent for stimulating production of sweat to
flush out the noxious substances off the skin, and a nanofiber
nonwoven filled with a superabsorbent to absorb and retain
noxious substances from the skin,
wherein the carrier layer is impermeable to water vapor.
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellants' contentions, we find that the preponderance of evidence
supports the Examiner's conclusion that the subject matter of Appellants'
claim 1 is unpatentable over the applied prior art. We sustain the
Examiner's 35 U.S.C. § 103 rejections essentially for the reasons set out by
the Examiner in the Answer.
We add the following primarily for emphasis.
2 Our Decision refers to the Final Action mailed Dec. 4, 2015 ("Final Act.");
Appellants' Appeal Brief filed Sept. 21, 2016 ("Appeal Br."); the
Examiner's Answer mailed Jan. 4, 2017 ("Ans."); Appellants' Reply Brief
filed Mar. 6, 2017 ("Reply Br."); and the original Specification filed Feb. 22,
2015 ("Spec.").
3 While the Examiner applies additional prior art to claims 8, 21, 22, and 24--
36, Appellants do not present any additional arguments against these
rejections, except for dependent claims 8 and 33 (Appeal Br. 9, 12).
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Appellants' principal argument in the Appeal Brief is that the articles
disclosed in Ring, Howard, and Karshanji are completely different such that
the Examiner's proposed combination of elements is impermissible
hindsight (Appeal Br. 4, 5; Reply Br. generally).
Appellants' arguments mainly address the references separately and
do not fully address the rejection and the inferences of these references that
are presented on this record for our review.
It has been established that "the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." KSR Int'! Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). Likewise, it is also well settled that a
reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264---65 (Fed.
Cir. 1992).
The textile of claim 1 encompasses the textile of Ring (both may be a
wound dressing as pointed out by the Examiner) except that Ring fails to
specify that there is a vapor impermeable backing layer with a rim and also
lacks an agent for stimulating production of sweat. One of ordinary skill in
the art would have appreciated that a wound dressing may have a vapor
impermeable backing layer with a rim for adhesive to attach the dressing to
skin, as exemplified in Howard's wound dressing backing layer (e.g., Ans. 3,
12). One of ordinary skill in the art would have also readily appreciated that
it is common to apply germicidal and/or other pharmaceutical ointment to a
wound dressing of Ring, such as the ointment of Karshanji (e.g., Ans. 3, 4).
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As pointed out by the Examiner, Ring teaches that its absorbent textile may
contain a pharmaceutical, and may be used for the sustained release of sweat
(e.g., Ans. 11; Ring i-fi-122, 23). Appellants have not shown reversible error
in the Examiner's determination that a person of ordinary skill in the art
would have, using no more than ordinary creativity, used a bum treatment
ointment that contains a sweat stimulating agent as exemplified in Karshanji
on the wound dressing of Ring (e.g., Ans. 11-15).
Even assuming, arguendo, that Appellants are correct that Howard's
wound dressing with its irrigation system is "contradictory to how the
invention of claim 1" works (Appeal Br. 4; Reply Br. 2, 3), one of ordinary
skill would have readily appreciated that a vapor (as well as a liquid)
impermeable backing layer would have been desirable for other wound
dressings, e.g., to maintain a moist environment for the wound and prevent
bodily fluids from leaking out from the wound dressing. It is well
established that the obviousness inquiry does not ask "whether the
references could be physically combined but whether the claimed inventions
are rendered obvious by the teachings of the prior art as a whole." In re
Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en bane); see also In re Keller,
642 F.2d 413, 425 (CCPA 1981) (stating "[t]he test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference"); In re Nievelt, 482 F.2d 965, 968
( CCP A 1973) ("Combining the teachings of references does not involve an
ability to combine their specific structures.").
To the extent that Appellants argue that either of Howard or Karshanji
are de facto non-analogous art, we note that in KSR Int 'l Co., 550 U.S. at
419-420, the Supreme Court observed that:
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In determining whether the subject matter of a ... claim is
obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. What matters is the objective
reach of the claim. If the claim extends to what is obvious, it is
... [ unpatentable] under § 103.
See also Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir.
2010) ("[t]he Supreme Court's decision in KSR . .. directs us to construe the
scope of analogous art broadly,' stating that 'familiar items may have
obvious uses beyond their primary purposes, and a person of ordinary skill
often will be able to fit the teachings of multiple patents together like pieces
of a puzzle"').
Here, Howard can be seen to exemplify that a vapor impermeable
layer for maintaining moisture in a wound dressing is desirable, especially
for treating, e.g., bums (e.g., Howard i-f i-f 7, 10). Karshanji exemplifies an
ointment for treating bums that has an agent to stimulate sweat production
therein may be applied to a wound dressing. Appellants have not shown
error in the Examiner's determination that one of ordinary skill would have
readily appreciated that these components would have had obvious uses in
other products, such as for the wound dressing of Ring.
Furthermore, we "take account of the inferences and creative steps
that a person of ordinary skill in the art would employ," and find a person of
ordinary skill in the art would have overcome any difficulties in combining
the stated features of these references within their level of skill. KSR Int 'l
Co., 550 U.S. at 418; see also id. at 421 ("A person of ordinary skill is also a
person of ordinary creativity, not an automaton."); Ball Aerosol & Specialty
Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009)
(under the flexible inquiry set forth by the Supreme Court, the PTO must
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take account of the "inferences and creative steps," as well as routine steps,
that an ordinary artisan would employ (emphasis omitted)).
To the extent Appellants argue that the function of their agent (i.e., to
flush out the noxious substances off the skin) is not explicitly taught by the
applied prior art (Appeal Br. 8; Reply Br. 4, 5), the Examiner aptly points
out that the germicidal ointment of Karshanji would indeed perform that
function, and in any event, the claims are directed to a textile product, not to
a method of flushing out noxious substances (Ans. 13). 4 Furthermore,
Appellants have not shown that the textile product suggested by the applied
prior art would have been incapable of flushing out noxious substances off
skin. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (Where
there is reason to conclude that the structure of the prior art is inherently
capable of performing the claimed function, the burden shifts to the
applicant to show that the claimed function patentably distinguishes the
claimed structure from the prior art structure.)
To the extent Appellants present additional argument regarding the
rejections of dependent claims 8 and 33 (Appeal Br. 8, 9), they have not
4 Claims directed to an apparatus or product must be distinguished from the
prior art in terms of structure. "[A ]pparatus [or product] claims cover what a
device [or product] is, not what a device [or product] does." Hewlett-
Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 1468 (Fed. Cir.
1990). Therefore, the patentability of an apparatus claim depends on the
claimed structure, not on the use or purpose of that structure, Catalina Mktg.
Int'! v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002), or the
function or result of that structure. In re Danly, 263 F.2d 844, 848 (CCPA
1959); In re Gardiner, 171F.2d313, 315-16 (CCPA 1949). If the prior art
structure possesses all the claimed characteristics including the capability of
performing the claimed function, then there is a prima facie case of
unpatentability. In re Ludtke, 441F.2d660, 663-64 (CCPA 1971).
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shown reversible error in these rejections for reasons pointed out by the
Examiner (Ans. 15).
Accordingly, we affirm the Examiner's prior art rejections of the
claims under 35 U.S.C. § 103(a) for the reasons given above and presented
by the Examiner.
DECISION
We affirm the Examiner's rejection of claims 1, 2, 5-9, and 11--49.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(l ).
AFFIRMED
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