Ex Parte Lin

Patent Trial and Appeal Board

Jan 30, 2013

11122863 (P.T.A.B. Jan. 30, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/122,863 05/04/2005 Edward D. Lin EDL.P.7 5616
26360 7590 01/31/2013
Renner Kenner Greive Bobak Taylor & Weber Co., LPA
106 South Main Street, Suite 400
Akron, OH 44308-1412
EXAMINER
HAND, MELANIE JO
ART UNIT PAPER NUMBER
3778
MAIL DATE DELIVERY MODE
01/31/2013 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 EDWARD D. LIN
__________

Appeal 2011-003806
Application 11/122,863
Technology Center 3700
__________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and
LORA M. GREEN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 11-13, 15-17, 34, and 37-52.1 We have
jurisdiction under 35 U.S.C. § 6(b).

1 Claims 41, 42, 45-47, and 49 are also pending, but stand objected to as
being dependent on a rejected base claim (App. Br. 2).
Appeal 2011-003806
Application 11/122,863

2
STATEMENT OF THE CASE
Claim 11 is representative of the claims on appeal, and reads as
follows:
11. A device for protecting and treating a wound, comprising:
a housing defining a chamber;
a lid integral to said housing for opening and closing a first portion of
said housing and movable between open and closed positions to allow ready
access to said chamber;
a cushion secured about a perimeter of a second portion of said
housing, said second portion being open and said cushion defining an
annulus; and
an adhesive layer attached to said cushion for securing said cushion
and attached housing over the body of a patient, wherein said device is fluid
tight.

The following grounds of rejection are before us for review:
I. Claims 11-13, 15-17, 34, and 37-52 stand rejected under 35 U.S.C.
§ 112, first paragraph, as containing new matter (Ans. 4).
II. Claims 11, 12, 17, and 342 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Sarason. 3 As Appellant only presents
separate arguments as to claims 12 and 17, we focus our analysis
on claim 11, and claim 34 stands or falls with claim 11. 37 C.F.R.
§ 41.37(c)(1)(vii).

2 Although claim 34 does not appear in the statement of the rejection, the
Examiner addresses it at page 6 of the Answer.
3 Sarason, GB 288,220, issued Jul. 11,1927.
Appeal 2011-003806
Application 11/122,863

3
III. Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Sarason and Bear4 (Ans.
7).
IV. Claims 15, 16, and 48 stand rejected under 35 U.S.C. § 103(a) as
being rendered obvious by the combination of Sarason and
Stevens5 (Ans. 8).
V. Claim 50 stands rejected under 35 U.S.C. § 103(a) as being
rendered obvious by Sarason (Ans. 9).
VI. Claims 38-40 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Sarason and Hickey6 (Ans.
9).
VII. Claims 43 and 44 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Sarason and Garribotto7
(Ans. 10).
VIII. Claim 51 stands rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Sarason and Stenzler8
(Ans. 11).

4 Bear et al., EP 1,674,898 A1 issued Jul. 2006.
5 Stevens, US 3,026,874, issued Mar. 27, 1962.
6 Hickey, US 6,837,027 B2, issued Jan.4, 2005.
7 Garribotto et al., US 2004/0153032 A1, published Aug. 05, 2004.
8 Stenzler, US 2005/0137521 A1, published Jun. 23, 2005.
Appeal 2011-003806
Application 11/122,863

4
IX. Claim 52 stands rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Sarason and Holtermann9
(Ans. 12).

We affirm.

ISSUE (Written Description)
Does the preponderance of the evidence of record support the
Examiner’s finding that the claims contain new matter?

FINDINGS OF FACT

FF1. The Examiner finds that there “is no support in the disclosure as
originally filed for a fluid-tight device” (Ans. 4).
FF2. The Examiner further finds that the “chamber and the device are
clearly two different entities of different scope, i.e. the device includes the
chamber and other items” (id.).

PRINCIPLES OF LAW
The test for determining whether a specification is sufficient to
support a particular claim “is whether the disclosure of the application relied
upon ‘reasonably conveys to the artisan that the inventor had possession at
that time of the later claimed subject matter.’” Ralston Purina Co. v. Far-

9 Holtermann, US 5,667,502, issued Sep. 16, 1997.
Appeal 2011-003806
Application 11/122,863

5
Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed.Cir.1985) (quoting In re Kaslow,
707 F.2d 1366, 1375 (Fed.Cir.1983)).
Thus, “[i]t is not necessary that the application describe the claim
limitations exactly, but only so clearly that persons of ordinary skill in the
art will recognize from the disclosure that appellants invented processes
including those limitations.” In re Wertheim, 541 F.2d 257, 262 (CCPA
1976) (citation omitted); see also Purdue Pharma L.P. v. Faulding, Inc., 230
F.3d 1320, 1323 (Fed. Cir. 2000) (“In order to satisfy the written description
requirement, the disclosure as originally filed does not have to provide in
haec verba support for the claimed subject matter at issue.”).

ANALYSIS
Appellant points to the following portion of the Specification (App.
Br. 4-5 (quoting Specification 14, ll. 26-30)):
If the chamber 70 is to be used for therapies requiring
fluid-tightness so that the fluids stay within the chamber, the
foam should be of the closed-cell type. The term “fluid-tight”
or related terms as used in this specification means sufficiently
leak-resistant to allow insufflation or vacuum suction to create
an intra-chamber pressure that is above or below ambient
pressure, or to substantially retain fluids within. Various
cyclical patterns of fluid application can be programmed to
optimize the wound chamber milieu ….

(Spec. 14, l. 26-15, l. 2).
According to Appellant, while the above portion does not refer to a
device, the chamber 70 is the device set forth in the claims (App. Br. 5).
Appeal 2011-003806
Application 11/122,863

6
We agree with Appellant that the above portion of the Specification is
sufficient to demonstrate that the disclosure as filed supports the rejected
claims. We thus reverse the rejection.

ISSUE (Anticipation)
Does the preponderance of the evidence of record support the
Examiner’s finding that claims 1, 12, and 17 are anticipated by Sarason?

FINDINGS OF FACT
FF3. The Examiner finds:
Sarason discloses a device for protecting and treating a wound,
comprising the following: a housing in the form of ring “a”
defining a chamber, a lid “d” integral to said housing for
opening and closing a first portion of said housing and movable
between open and closed positions to allow ready access to said
chamber (Fig. 2, Page 1, lines 8-12, Page 1, line 97 - Page 2,
line 1); a cushion in the form of sticking plaster “c” secured
about a perimeter of a second portion of said housing, said
second portion being open and said cushion “c” defining an
annulus; and an adhesive layer attached to said cushion for
securing said cushion and attached housing over the body of a
patient. (Page 1, lines 70-78).

(Ans. 5.)
FF4. Sarason “relates to a dressing-ring with closing lid on the top end and
sticking plaster on the lower open end for sticking the dressing ring on the
skin around the wound” (Sarason ll. 8-12).
FF5. Sarason teaches that the “ring is made of so-called cell-rubber, i.e., of
a rubber which has been made finely porous by means of nitrogen blown in
under high pressure” (id. at ll. 14-17). As a result, Sarason teaches that
App
App

“num
cell”
FF6.
Figu
FF7.
arou
dress
FF8.
a rin
a and
FF9.
skin
Ther
unde
infla
FF10
fabri
eal 2011-0
lication 11
erous ver
(id. at ll. 3
Figure 1
re 1 “show
As taugh
nd the wou
ing mater
Sarason
g-shape, a
projects
Sarason
by means
efore, acco
r the seati
mmations
. As taug
c g glued
03806
/122,863
y narrow p
8-40).
of Saraso
s the dres
t by Saras
nd and a h
ial” (id. at
teaches th
nd is stuck
into the sp
teaches fu
of an aggl
rding to S
ng surface
of the skin
ht by Sara
onto the ri
ores are p
n is reprod
sing ring i
on, the rin
ollow spa
ll. 31-34).
at the stick
onto the b
ace enclos
rther that t
utinant or
arason, “t
of the ring
” (id. at ll
son, the “
ng and ont
7
roduced, e
uced below
n vertical s
g a is “des
ce above t

ing plaste
eveled se
ed by the r
he sticking
a rubber so
he secretio
a where
. 79-83).
lid d is fix
o the lid”
ach pore b
:
ection” (id
igned to f
he wound
r c surroun
ating surfa
ing (id. at
plaster c
lution” (i
n from the
it might de
ed on the r
(id. at ll. 8
eing close

. at ll. 26-
orm an en
for inserti
ds the rub
ce of the r
ll. 70-79)
“is stuck o
d. at ll. 77
wound ca
compose
ing a by a
7-89).
d like a
27).
closure
on of
ber ring in
ubber ring
.
nto the
-79).
nnot get
and cause
piece of

Appeal 2011-003806
Application 11/122,863

8
FF11. Sarason teaches further that the lid may be a rubber disk, and the lid
resting on the upper edge of the ring a may be coated with a rubber solution.
Sarason teaches that the lid thus can “be tightly and securely fastened on the
ring with the aid of the rubber solution” (id. at ll. 97-99).
FF12. The Examiner finds that the sticking plaster “must be soft and/or
pliable enough to conform to the user’s limb, which has a curved surface and
therefore must be sufficiently pliable and soft to be fully functional as a
cushion” (Ans. 14).
FF13. As to claim 12, the Examiner finds that “cushion ‘c’ is pliable,
conformable and compressible inasmuch as it supports the weight of the
device and is adhered in place by placing the device on the skin over the
wound, which would necessarily require compression to activate the skin-
adhering adhesive” (Ans. 5-6).
FF14. As to claim 17, the Examiner finds that the opening of the chamber
of Sarason reads on the at least one port (id. at 6).

ANALYSIS
Appellant argues that Sarason’s ability “to prevent secretions from the
wound from getting under the seating surface of the ring a where it might
decompose and cause inflammation of the skin does not render the entire
device fluid-tight as defined in the application” (App. Br. 10). That is,
Appellant asserts, “[a] device or system, even if fluid tight in one aspect, is
not fluid tight in toto” (id.).
Appellant further asserts that as defined by the Specification, “the
term ‘fluid-tight’ means sufficiently leak-resistant to allow insufflation or
Appeal 2011-003806
Application 11/122,863

9
vacuum suction to create an intra-chamber pressure that is above or below
ambient pressure” (id. (citing Specification 14, ll. 28-30)). Appellant argues
that the device of Sarason is incapable of being fluid tight, as the lid is
attached to the ring by a piece of fabric glued onto the ring and onto the lid,
as the fabric is not fluid tight (App. Br. 11). Moreover, Appellant argues
that, “the soft and readily deformable ‘cell rubber’ ring will not sustain a
fluid-tight seal with the lid when subjected to positive or negative pressures”
(id.).
Appellant’s arguments have been carefully considered, but are not
found to be convincing. Sarason teaches a device made out of closed cell
foam, which is the same foam used in the claimed device (Specification 14,
ll. 26-30). In addition, Sarason teaches that the foam ring is attached to
sticking plaster, which is then stuck to the skin via an agglutinant or a rubber
solution, so that secretions cannot get under the seating surface of the ring,
and also teaches that the lid, which may be a rubber disk, may be tightly
secured to the ring by a rubber solution. Thus, while Appellant argues that
the device of Sarason is not fluid tight, no evidence has been made of record
demonstrating that, and attorney argument cannot take the place of evidence
lacking in the record. Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595
(Fed. Cir. 1997).
Appellant argues further that “the Examiner has provided a definition
of cushion that is not the ordinary meaning for a ‘cushion’” (App. Br. 11
(citing the definition of “cushion” from dictionary.com of “‘a soft bag of
cloth, leather, or rubber, [that may be] filled with feathers, air, foam rubber,
etc., on which to sit, kneel or lie,’ or ‘anything similar in form, used to
Appeal 2011-003806
Application 11/122,863

10
dampen shocks or to prevent excessive pressure or chafing.’”) Appellant
asserts that if the Examiner interprets the sticking plaster “c” of Sarason as
the cushion, the ordinary artisan would not add “an additional and redundant
prominent cell rubber cushion a above it” (App. Br. 11). According to
Appellant, Sarason intends the plaster to serve as an adhesive layer (id. at
11-12).
Our mandate is to give claims their broadest reasonable interpretation
consistent with the Specification as it would be interpreted by one of
ordinary skill in the art. In re American Academy of Science Tech Center,
367 F.3d 1359, 1364 (Fed. Cir. 2004). “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).
Appellant does not point to any definition of cushion in the
Specification, but points to a definition from dictionary.com, which notes
that cushions may be used to dampen shocks or to prevent excessive
pressure or chafing. Claim 11 recites “cushion,” but does not define any
particular cushion material, but only recites that the cushion “is secured
about a perimeter of a second portion of said housing, said second portion
being open and said cushion defining an annulus.” As noted by the
Examiner (Ans. 5), the sticking plaster meets that limitation. Moreover, as
the sticking plaster is placed between the ring a and the adhesive (the
agglutinant or rubber solution), the ordinary artisan would expect it to
Appeal 2011-003806
Application 11/122,863

11
prevent some level of chafing, and thus at some level, act as a cushion
between the adhesive and the ring a.
We thus affirm the anticipation rejection as to claim 11. Claim 34
falls with that claim.
As to claim 12, Appellant notes that “the Examiner asserts that the
sticking plaster ‘c’ is pliable, conformable and compressible inasmuch as it
supports the weight of the device and is adhered in place by placing the
device on the skin over the wound, which would necessarily require
compression to activate the skin-adhering adhesive” (App. Br. 13).
Appellant argues that “being able to support the weight of the device and
being adhered to the skin has no bearing whatsoever on whether or not an
item is a cushion” (id.). Moreover, Appellant asserts, there is not necessarily
a requirement to use compression to apply the sticking plaster to the skin
(id.).
Claim 12 depends from claim 11, and recites that the “cushion is
pliable, conformable, and compressible.” As to the arguments that the fact
that the sticking plaster is able to support the weight of the device has
nothing to do with it being a cushion, as discussed above with respect to
claim 11, the claims are given their broadest reasonable interpretation, and a
cushion may also prevent chafing. The sticking plaster would be pliable and
conformable as it acts as an intermediate between the ring a and the
adhesive, and as Sarason teaches that there is no fluid leakage under the ring,
at some level the sticking plaster must be pliable and conformable to allow
for that seal to form between the ring and the skin. As to compressible,
Appeal 2011-003806
Application 11/122,863

12
again, no level of compression is recited, as thus reads on any level of
compression. We thus affirm the anticipation rejection of claim 12.
As to claim 17, Appellant argues that the claim “has been amended to
make it clear that the port for passing the therapeutic modality into or out of
the chamber must remain functional with the lid closed,” and that there “is
no such teaching or functionality in Sarason (App. Br. 14).
Claim 17 is drawn to the device of claim 12, “wherein said housing
and said lid define a chamber over a wound when said lid is closed, said
device having at least one port for passage of a therapeutic modality into or
out of the chamber.” There is nothing in the claim that requires that the port
for passing the therapeutic modality into or out of the chamber must remain
functional when the lid is closed. We thus affirm the anticipation rejection
of claim 17.
Appellant argues as to the obviousness rejections that the Examiner
erred in rejecting the dependent claims for the same reasons set forth above
with respect to claim 11 (App. Br. 14). Those arguments are not found to be
convincing for the reasons set forth with respect to claim 11. We thus affirm
the obviousness rejections.

SUMMARY
We reverse Rejection I, but affirm Rejections II-IX.

Appeal 2011-003806
Application 11/122,863

13
TIME PERIOD FOR RESPONSE
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-IN-PART
dm