Ex Parte Masini

Board of Patent Appeals and Interferences

Apr 18, 2011

10872717 (B.P.A.I. Apr. 18, 2011)

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.
10/872,717 06/21/2004 Michael A. Masini MHM-00308/29 4283
25006 7590 04/18/2011
GIFFORD, KRASS, SPRINKLE,ANDERSON & CITKOWSKI, P.C
PO BOX 7021
TROY, MI 48007-7021
EXAMINER
PATEL, TARLA R
ART UNIT PAPER NUMBER
3772
MAIL DATE DELIVERY MODE
04/18/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL A. MASINI
____________

Appeal 2009-012297
Application 10/872,717
Technology Center 3700
____________

Before STEVEN D.A. McCARTHY, MICHAEL W. O’NEILL, and
STEFAN STAICOVICI, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Michael A. Mansini (Appellant) seeks our review under 35 U.S.C.
§ 134 of the rejection of claims 11-23. Appellant cancelled claims 1-10.
We have jurisdiction under 35 U.S.C. § 6(b).
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The Invention
The claimed invention is directed to a bandage shaped for conforming
to a joint or other articulating body area of a user.
Claim 11, reproduced below, is representative of the subject matter on
appeal.
11. A bandage shaped for conformity with
joints and other articulating body areas,
comprising:
an absorbent layer with a peripheral edge;
an outwardly extending layer for securement
of the bandage to a patient, the outwardly
extending layer being continuous and non-
perforated up to a peripheral edge that extends
beyond the entire peripheral edge of the absorbent
layer in every direction;
an adhesive on the outwardly extending
layer; and
one or more notches on the peripheral edge
of the outwardly extending layer, each notch
terminating in an area spaced apart from the
absorbent layer such that at least a portion of the
outwardly extending layer surrounds the absorbent
layer on all sides; and
wherein the notches are spread apart when
the outwardly extending layer is in a flattened
state.
The Rejections
The following Examiner’s rejections are before us for review:
Claims 11-23 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.1 Ans. 3-4.

1 The Examiner set forth two separate rejections of claims 11-23 under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. Ans. 3-4 and 4.
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Claims 11, 13, 17, and 20 are rejected under 35 U.S.C. § 102(b) as
anticipated by Gale, Jr. (U.S. Patent No. 2,054,768, issued Sep. 15, 1936).
Ans. 5.
Claims 11, 12, 14, 15, 19, and 22 are rejected under 35 U.S.C.
§ 102(e) as anticipated by Johansen (U.S. Patent No. 5,820,578, issued Oct.
13, 1998). Ans. 5-6.
Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Johansen. Ans. 6-7.
Claims 16 and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gale, Jr. Ans. 7.
Claim 23 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Gale, Jr. and Fuzak (U.S. Patent No. 2,875,758, issued Mar. 3, 1959). Ans.
7-8.

SUMMARY OF DECISION
We AFFIRM.

OPINION
Issues
(1) Whether the original disclosure inherently supports claim 11’s
recitations that “the outwardly extending layer . . . extends beyond the entire
peripheral edge of the absorbent layer in every direction” and “each notch
terminating in an area spaced apart from the absorbent layer such that a
portion of the outwardly extending layer surrounds the absorbent layer on all
sides” in order to comply with the written description requirement under 35
U.S.C. § 112, first paragraph.
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(2) Whether Gale, Jr.’s outwardly extending layer 5 meets claim 11’s
recitation of being “non-perforated up to a peripheral edge that extends
beyond the entire peripheral edge of the absorbent layer in every direction.”
(3) Whether Johansen’s slits 13a, 13b, or 13c meet claim 11’s
recitation that “the notches are spread apart when the outwardly extending
layer is in a flattened state.”
Analysis
Issue (1)
Appellant disagrees with the Examiner’s finding that the Figures and
Specification fail to support claim 11’s recitations that “the outwardly
extending layer . . . extends beyond the entire peripheral edge of the
absorbent layer in every direction” and “each notch terminating in an area
spaced apart from the absorbent layer such that a portion of the outwardly
extending layer surrounds the absorbent layer on all sides.” App. Br. 3.
Appellant argues that the originally filed disclosure inherently supports the
above-quoted claim recitations and offers rebuttal evidence in the form of
affidavits (Affidavit of Dr. Mark H. Falahee, an orthopedic surgeon and the
Affidavit of Arthur D. Annechino, Director of Medical Products for Light
Fabrications, Inc.) to bolster this argument. App. Br. 3-4. In essence,
Appellant alleges that because all bandages are intended to capture fluid
without leaking, the embodiments of the bandages designed with notches
must also be intended to be fluid impermeable and thus, any notch cannot
extend into the absorbent layer or the bandage would leak. Id.
The Examiner posits that claims 11-23 fail to comply with the written
description requirement under 35 U.S.C. § 112, first paragraph, because the
claim recitations that “the outwardly extending layer . . . extends beyond the
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entire peripheral edge of the absorbent layer in every direction” and “each
notch terminating in an area spaced apart from the absorbent layer such that
a portion of the outwardly extending layer surrounds the absorbent layer on
all sides,” which were added by amendment, are not supported by the
originally filed Specification and Drawings. Ans. 3-4. The Examiner also
posits that “[t]he affidavits are merely an opinion and do not set forth any
facts or evidence to support the alleged position of inherency.” Ans. 9.
[T]he test for sufficiency is whether the disclosure
of the application relied upon reasonably conveys
to those skilled in the art that the inventor had
possession of the claimed subject matter as of the
filing date. . . . [T]he test requires an objective
inquiry into the four corners of the specification
from the perspective of a person of ordinary skill
in the art. Based on that inquiry, the specification
must describe an invention understandable to that
skilled artisan and show that the inventor actually
invented the invention claimed. . . . This inquiry . .
. is a question of fact.

Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010)(en banc) (citing Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562-63
(Fed. Cir. 1991)). See also Vas-Cath at 1563-64.
New or amended claims which introduce elements or limitations
which are not supported by the as-filed disclosure violate the written
description requirement. Written description support can be either express
or inherent, and is determined from the disclosure considered as a whole.
Reiffin v. Microsoft, 214 F.3d 1342, 1346 (Fed. Cir. 2000). That one of
ordinary skill in the art might see the scenario asserted by Appellant as
possible within the context of the description in Appellant’s Specification is
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insufficient to satisfy the written description requirement of 35 U.S.C. § 112,
first paragraph. See, e.g., Lockwood v. Am. Airlines, Inc., 107 F.3d 1565,
1571-72 (Fed. Cir. 1997) and In re Wohnsiedler, 315 F.2d 934, 937 (CCPA
1963). See also In re Barker, 559 F.2d 588, 593 (CCPA 1977):
That a person skilled in the art might realize
from reading the disclosure that such a step is
possible is not a sufficient indication to that
person that [the] step is part of appellants’
invention. Such an indication is the least
that is required for a description of the
invention under the first paragraph of § 112.
Precisely how close the original description must come to comply with the
description requirement must be determined on a case-by-case basis. The
primary consideration is factual and depends on the nature of the invention
and the amount of knowledge imparted to those skilled in the art by the
disclosure. See Vas-Cath at 1561-63.
Here, we agree with the Examiner that claim 11 fails to comply with
the written description requirement under 35 U.S.C. § 112, first paragraph.
The Appellant’s original disclosure does not expressly teach that the notched
embodiments of the bandage shown in Figures 6A and 6B have the
outwardly extending layer extending beyond the entire peripheral edge of
the absorbent layer in every direction and each notch terminating in an area
spaced apart from the absorbent layer such that a portion of the outwardly
extending layer surrounds the absorbent layer on all sides. In addition, claim
11’s recitations at issue are not inherent as suggested by Appellant and
Appellant’s affidavits provide insufficient evidence to support inherency for
the reasons that follow.
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We have reviewed the Affidavit of Dr. Mark H. Falahee attached to
the Appeal Brief in the Evidence Appendix. We note that the statements in
paragraphs 1, 2, 3, and 5 of the affidavit set forth facts, the statements in
paragraphs 4 and 8 set forth a mixture of fact and opinion, and the
statements in paragraphs 7, 9, 10, and 11 of the affidavit set forth the
affiant’s opinions. While we understand in Dr. Falahee’s opinion that only
showing Figures 6A and 6B is sufficient enough for a person of ordinary
skill in the art to understand Appellant was inherently in possession of claim
11 that combines features that are expressly, separately disclosed in the
Specification, we find that such an opinion is a personal impression and
there are insufficient facts in the record to support that a person having
ordinary skill in the art would understand that Appellant possessed the
invention as claimed within claim 11 that combines the features of the
outwardly extending layer extending beyond the entire peripheral edge of
the absorbent layer in every direction and each notch terminating in an area
spaced apart from the absorbent layer such that a portion of the outwardly
extending layer surrounds the absorbent layer on all sides. For instance, the
Affidavit cites to just three lines within the Specification as a foundation for
the opinion rendered by Dr. Falahee. While drawings can be the basis for
adequate written description, there is no drawing that illustrates the
combination of claimed features within claim 11. Given the evidence of
record, a person having ordinary skill in the art when reading the
Specification would understand that the Appellant possessed separate
embodiments one of which having a layer extending beyond the entire
peripheral edge of the absorbent layer in every direction and at least an
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another having at least one notch terminating in an area spaced apart from
the absorbent layer.
As such, when considering the disclosure as a whole, we find that the
Affidavit of Dr. Mark H. Falahee does not provide, by a preponderance of
the evidence, that the Specification inherently discloses the recitations at
issue in claim 11.
We have also reviewed the Affidavit of Arthur D. Annechino attached
to the Appeal Brief in the Evidence Appendix. We note that the statements
in paragraphs 1-5 of the affidavit set forth facts and the statements in
paragraphs 6 and 7 of the affidavit set forth the affiant’s opinion. More
particularly, paragraphs 6 and 7 are a set of inferences that lead, in Mr.
Annechino’s opinion, to the conclusion that the Specification inherently
discloses the recitations of claim 11 that are at issue. However, when
considering the disclosure as a whole, none of the facts set forth in
paragraphs 1-5 establish, by a preponderance of the evidence, that the
Specification inherently discloses the recitations at issue in claim 11.
Thus, we find that there is insufficient evidence to support the
inferences of the two affiants’ opinions, other than their own personal beliefs
that the Specification inherently supports the recitations at issue in clam 11.
However, inherency may not be established by probabilities or possibilities.
In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (quoting Hansgirg v.
Kemmer, 102 F.2d 212, 214 (CCPA 1939). “The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.” In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted). In the
present case, inherency does not necessarily flow from the affiants’ opinions
due to the lack of documentary evidence.
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In view of the foregoing, we sustain the Examiner’s rejection of
claims 11-23 under 35 U.S.C. § 112, first paragraph, as failing to comply
with the written description requirement. Having sustained the Examiner’s
first rejection of claims 11-23 under 35 U.S.C. § 112, first paragraph on
pages 3-4 of the Examiner’s Answer, we will not reach the Examiner’s
second rejection of claims 11-23 under 35 U.S.C. § 112, first paragraph on
page 4 of the Examiner’s Answer. See 37 C.F.R. § 41.50(a)(1).
Issue (2)
Appellant contends that claim 11 is not anticipated because the
outwardly extending layer 5 of Gale, Jr.’s first aid dressing or bandage does
not meet the recitation of being “non-perforated.” App. Br. 5 and Reply Br.
2. More particularly, Appellant contends that all embodiments of Gale, Jr.’s
first aid dressing or bandage are perforated by any one of slits 8 in Figures 1-
5 and 7-9, slits 9 in Figures 5 and 8, and perforations 10 in Figure 6. App.
Br. 5.
The Examiner alleges that Gale, Jr. anticipates claims 11, 13, 17, and
20. Ans. 5. The Examiner finds that Gale, Jr. discloses “an outwardly
extending layer (5) having a peripheral edge that extends beyond the entire
peripheral edge of the absorbent layer in every direction,” but the Examiner
does not address whether the outwardly extending layer 5 meets the claim
language of “being continuous and non-perforated up to a peripheral edge
that extends beyond the entire peripheral edge of the absorbent layer in
every direction.” Ans. 5.
We agree with Appellant that claim 11 is not anticipated. Every
embodiment of Gale, Jr. is perforated with a slit 8 or 9 or a perforation 10.
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Since the claim element of being “non-perforated” is absent, Gale, Jr. fails to
anticipate claim 11.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 11, 13, 17, and 20 under 35 U.S.C. § 102(b) as anticipated by
Gale, Jr. Since the rejections of claims 16, 21, and 23 are based upon the
same erroneous interpretation as was applied to claim 11 and since Fuzak
fails to cure the deficiency of Gale, Jr., we also do not sustain the
Examiner’s rejections of claims 16 and 21 under 35 U.S.C. § 103(a) as
unpatentable over Gale, Jr. and claim 23 under 35 U.S.C. § 103(a) as
unpatentable over Gale, Jr. and Fuzak.
Issue (3)
Appellant contends that Johansen fails to anticipate claim 11 because
Johansen does not teach or suggest that “the notches are spread apart when
the outwardly extending layer is in a flattened state.” App. Br. 5-6 and
Reply Br. 2. Appellant also contends that all embodiments of Johansen, and
in particular the Figure 1 embodiment, show slits 13a, 13b, and 13c are not
spread apart when the outwardly extending layer 16 is in a flattened state
and only form notches when the bandage articulates. App. Br. 6.
The Examiner alleges that Johansen anticipates claims 11, 12, 14, 15,
19, and 22. Ans. 5-6. The Examiner posits that Johansen discloses “one or
more notches (13 a, b, c) on the peripheral edge of the outwardly extending
layer such that at least a portion of the outwardly extending layer surrounds
the absorbent layer on all sides (space 11 a, b, c),” but the Examiner fails to
address whether Johansen discloses the claim limitation of “wherein the
notches are spread apart when the outwardly extending layer is in a flattened
state.” Ans. 6.
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We agree with Appellant that Johansen does not anticipate claim 11.
Johansen’s Figures 1, 3, and 5 depict the bandage 10 on the upper arm
having the outwardly extending layer or backing material 16 in a flattened
state. In these Figures, the slits 13a, 13b, and 13c are clearly not spread
apart. However, Johansen’s Figure 7 illustrates the bandage placed on the
inner arm of a user so that the outwardly extending layer or backing material
is not in a flattened state and the slits are spaced apart.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 11, 12, 14, 15, 19, and 22 under 35 U.S.C. § 102(e) as anticipated
by Johansen. Since the rejection of claim 18 is based upon the same
erroneous interpretation as was applied to claim 11, we also do not sustain
the Examiner’s rejection of claim 18 under 35 U.S.C. § 103(a) as
unpatentable over Johansen.

CONCLUSIONS
The original disclosure does not inherently support claim 11’s
recitations that “the outwardly extending layer . . . extends beyond the entire
peripheral edge of the absorbent layer in every direction” and “each notch
terminating in an area spaced apart from the absorbent layer such that a
portion of the outwardly extending layer surrounds the absorbent layer on all
sides” in order to comply with the written description requirement under 35
U.S.C. § 112, first paragraph.
Gale, Jr.’s outwardly extending layer 5 fails to meet claim 11’s
recitation of being “non-perforated up to a peripheral edge that extends
beyond the entire peripheral edge of the absorbent layer in every direction.”
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Johansen’s notches 13a, 13b, or 13c fail to meet claim 11’s recitation
of being “spread apart when the outwardly extending layer is in a flattened
state.”

DECISION
We affirm the Examiner’s rejection, set forth on pages 3-4 of the
Examiner’s Answer, of claims 11-23 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the description requirement.
We do not reach the Examiner’s rejection, as set forth on page 4 of the
Examiner’s Answer, of claims 11-23 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the description requirement.
We reverse the Examiner’s rejections of: claims 11, 13, 17, and 20
under 35 U.S.C. § 102(b) as anticipated by Gale, Jr.; claims 11, 12, 14, 15,
19, and 22 under 35 U.S.C. § 102(e) as anticipated by Johansen; claim 18
under 35 U.S.C. § 103(a) as unpatentable over Johansen; claims 16 and 21
under 35 U.S.C. § 103(a) as unpatentable over Gale, Jr.; and claim 23 under
35 U.S.C. § 103(a) as unpatentable over Gale in view of Fuzak.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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