Ex Parte Long et al

Patent Trial and Appeal Board

Sep 23, 2016

12475398 (P.T.A.B. Sep. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/475,398 0512912009 Justin Alexander Long
60402 7590 09/27/2016
KINETIC CONCEPTS, INC
c/o Harness Dickey & Pierce
5445 Corporate Drive
Suite 200
Troy, MI 48098
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.
VAC.0869US 3421
EXAMINER
JACKSON, BRANDON LEE
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
09/27/2016 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):
dgodzisz@hdp.com
troymailroom@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUSTIN ALEXANDER LONG,
RICHARD MARVIN KAZALA, JR., ROBERT PEYTON WILKES,
ERIC WOODSON BARTA, MATTHEW FRANCIS CAVANAUGH II,
LARRY TAB RANDOLPH, and LI YAO
Appeal2014-006015
Application 12/475,398
Technology Center 3700
Before JENNIFER D. BAHR, JOHN C. KERINS, and
BRANDON J. WARNER, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Justin Alexander Long et al. (Appellants) seek our review under
35 U.S.C. § 134 of the final rejection of claims 1, 2, 6-12, 22, 27, 29-32,
42--44, and 46. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal2014-006015
Application 12/475,398
THE INVENTION
Appellants' claimed invention is directed to a system and method for
treating subcutaneous damaged tissue. Claim 1, reproduced below, is
illustrative:
1. A reduced-pressure system for treating subcutaneous
damaged tissue, the reduced-pressure system comprising:
a shaped dressing bolster having an oblique extremity and
formed from a porous foam medical bolster material, the shaped
dressing bolster substantially sized to overlay the subcutaneous
damaged tissue;
an over-drape adapted to provide a fluid seal over the shaped
dressing bolster and a portion of the patient's epidermis;
a reduced-pressure source;
a reduced-pressure interface coupled to the over-drape, the
reduced-pressure interface configured for delivering reduced
pressure to the shaped dressing bolster;
a reduced-pressure delivery conduit fluidly coupling the
reduced-pressure source and the reduced-pressure interface;
wherein the over-drape is coupled to the oblique extremity of
the shaped dressing bolster and adapted to contract under the
influence of reduced pressure; and
wherein the shaped dressing bolster is adapted to generate and
evenly distribute a radial, compressive force when placed under
reduced pressure.
THE REJECTIONS
The Examiner has rejected:
(i) claims 1, 2, 6-8, 22, 29, 30, 32, 42--44, and 46 under 35 U.S.C.
§ 103(a) as being unpatentable over Joshi (US 2005/0070835 Al, published
Mar. 21, 2005), in view of Johnson (US 2004/0225208 Al, published Nov.
11, 2004);
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Application 12/475,398
(ii) claims 9-12 under 35 U.S.C. § 103(a) as being unpatentable over
Joshi in view of Johnson and Lockwood (US 7,338,482 B2, issued Mar. 4,
2008);
(iii) claim 27 under 35 U.S.C. § 103(a) as being unpatentable over
Joshi in view of Johnson and Yarusso (US 5,866,249, issued Feb. 2, 1999);
and
(iv) claims 1, 31, 32, and 42 under 35 U.S.C. § 103(a) as being
unpatentable over Joshi in view of Johnson.
Rejection (iv) was introduced in the Examiner's Answer as a new
ground of rejection. Ans. 7-11. The rationale set forth in this rejection
differs somewhat from that in Rejection (i), and includes a rejection of claim
31, which Rejection (i) did not. Appellants traverse this new ground of
rejection at pages 2---6 in the Reply Brief.
ANALYSIS
Claims 1, 2, 6---8, 22, 29, 30, 32, 42--44, and 46--Joshi/Johnson
The Examiner proposes to modify the Joshi manually operated
negative pressure wound device by replacing a portion of the manual system
with the reduced pressure source (vacuum pump), conduit, and interface
disclosed in Johnson. Final Act. 4. The stated reason for this modification
is to more precisely control and monitor the treatment, as provided by the
Johnson system, and to eliminate the need for manual manipulation of the
negative pressure device. Id.
The Joshi disclosure begins with a recognition that "[t]he concept of
using negative pressure in the treatment of wounds has been around for
decades." Joshi, para. 4. Joshi describes the known devices as including
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Application 12/475,398
bulky and complicated equipment such as suction pumps, vacuum pumps,
and complex electronic controllers, and that such devices are "bulky, power
intensive, costly and non-disposable." Id. Joshi specifically states that it is
an object of the invention disclosed therein to provide a device "for creating
a negative partial pressure without the use of electrically/chemically
powered suction and/or vacuum pumps." Id., para. 6 (emphasis added); see
also id. at para. 7; Appeal Br. 12-13.
Appellants argue, inter alia, that Joshi teaches away from the
modification proposed by the Examiner. Appeal Br. 12-13. A reference
may be said to teach away from a combination when it criticizes, discredits,
or otherwise discourages the proposed modification. See In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004); In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994).
The Examiner's proposed modification flies directly in the face of the
stated object of the Joshi contribution to the art, and is directly contrary to
the direction taken in the Joshi disclosure. As such, Joshi is correctly
characterized as teaching away from the proposed combination and the
claimed invention. 1 The Examiner thus has not established a prima facie
case of obviousness. The rejection of claims 1, 2, 6-8, 22, 29, 30, 32, 42-
44, and 46 is not sustained.
1 Joshi may contain teachings that, under other circumstances, could be
considered to be pertinent in determining whether other systems might
obviously be modified. We do not reach that issue here.
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Appeal2014-006015
Application 12/475,398
Claims 9-12--Joshi/Johnson/Lockwood
Lockwood is not relied on by the Examiner to cure the deficiency
noted above with respect to the proposed combination of Joshi and Johnson.
The rejection of claims 9-12 is not sustained.
Claim 27--Joshi/Johnson/Yarusso
Y arusso is not relied on by the Examiner to cure the deficiency noted
above with respect to the proposed combination of Joshi and Johnson. The
rejection of claim 27 is not sustained.
Claims 1, 31, 32, and 42--Joshi/Johnson
This new ground of rejection, in addition to being deficient in
improperly proposing to modify the Joshi device in a manner that Joshi
specifically teaches away from, as discussed above, also includes an
incorrect finding that Joshi "discloses the housing (102) is depressed by
hand under a pressure around 350 mmHg (par. 0016)." Ans. 8. As pointed
out by Appellants, paragraph 16 of Joshi is directed to pressure bands to
apply pressure to the skin that could be used either alone or in conjunction
with the negative pressure treatment devices, but does not disclose that they
may be used to apply pressure to a housing of a negative pressure treatment
device. Reply Br. 2-3.
This new ground of rejection of claims 1, 31, 32, and 42, as being
unpatentable over Joshi and Johnson, is not sustained.
DECISION
The rejections of claims 1, 2, 6-12, 22, 27, 29-32, 42--44, and 46
under 35 U.S.C. § 103(a) is reversed.
REVERSED
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