Ex Parte McKissick

Board of Patent Appeals and Interferences

Nov 17, 2009

10315595 (B.P.A.I. Nov. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MEGAN ANNE MCKISSICK
__________

Appeal 2008-003478
Application 10/315,595
Technology Center 3700
__________

Decided: November 17, 2009
__________

Before TONI N. SCHEINER, JEFFREY R. FREDMAN, and STEPHEN
WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
display arrangement for ostomy care and an ostomy care system. The Patent
Examiner rejected the claims as obvious. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
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STATEMENT OF THE CASE
The invention “relates to a system for displaying the instruments and
supplies required for ostomy care.” (Spec. 1:4-6.) According to the
Specification, “[f]or the patient to return to normal life after surgery, it is
necessary for the patient, or other untrained care givers, to perform the
ostomy care procedures.” (Id. at 2:16-18.) “The process may be quite
daunting to the patient or an unskilled caregiver who is confronted only with
the supplies and implements in a disorganized manner.” (Id. at 2:18-20.)
The Specification addresses the problem by providing “at least one display
surface for the supplies and instruments needed for ostomy care, the display
surface including alphamerically1 sequenced indicia.” (Id. at 4:10-12.)
Claims 1-6, 8-12, 14, 16, 18, 20, 24-26 and 28 are on appeal.2
Claims 1 and 20 are representative and read as follows:
1. A display arrangement for ostomy care, comprising:

at least one display surface including sequenced indicia disposed
thereon, said indicia presented to indicate a sequence of use and
including:
at least one indicator for at least one stoma measurement guide;
at least one indicator for at least one cutting implement;
at least one indicator for at least one adhesive product; and
at least one indicator for at least one pouch.

20. An ostomy care system, said ostomy care system comprising:

at least one skin preparation product;
at least one device for stoma measurement;

1 As used in the Specification, “alphameric” includes numerals and
alphabetic symbols. (Spec. 11:4-8.)
2 Appellant states that claims 7, 13, 15, 17, 19 and 27 were cancelled, and
claims 21-23 were withdrawn. (App. Br. 3.)
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at least one wafer cutting implement;
at least one wafer;
at least one adhesive product;
at least one pouch;
at least one display arrangement for said supplies and implements,

said display arrangement including alphamerically sequenced indicia
disposed thereon; said alphamerically sequenced indicia presented to
indicate a sequence of use and including:
at least one indicator for at least one skin preparation product;
at least one indicator for stoma measurement;
at least one indicator for at least one wafer cutting implement;
at least one indicator for a wafer;
at least one indicator for an adhesive product;
at least one indicator for a pouch.

The Examiner rejected the claims as follows:
• claims 1-6, 8-12, 14, 16, 18, 24-26 and 28 under 35 U.S.C. § 103(a)
as unpatentable over Waldner3 and Hammond;4 and
• claim 20 under 35 U.S.C. § 103(a) as unpatentable over Waldner,
Hammond, and Eastman.5

OBVIOUSNESS
Principles of Law
When determining whether a claim would have been obvious,
an Examiner must make “a searching comparison of the claimed invention –
including all its limitations – with the teaching of the prior art.” In re
Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995). A rejection for obviousness

3 U.S. Patent No. 4,429,424, issued to Nelson D. Waldner, Feb. 7, 1984.
4 U.S. Patent No. 5,931,304, issued to David A. Hammond, Aug. 3, 1999.
5 U.S. Patent No. 4,681,574, issued to Dianne Eastman, Jul. 21, 1987.
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must include “articulated reasoning with some rational underpinning to
support the legal conclusion.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007), quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
The proper question to ask is whether a person of ordinary skill in the art,
facing the wide range of needs created by developments in the field of
endeavor, would have seen a benefit to combining the prior art teachings.
KSR, 550 U.S. at 424; see also In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir.
2004) (the desirability of the combination may arise from nature of the
problem, teachings of references, or the ordinary knowledge of those skilled
in the art). “The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” KSR, 550 U.S. at 416. “[I]f a technique has been used to improve
one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.” KSR,
550 U.S. at 417.
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt,
211 F.3d 1367, 1372 (Fed. Cir. 2000). “[W]hile it is true that claims are to
be interpreted in light of the specification . . . , it does not follow that
limitations from the specification may be read into the claims. . . . It is the
claims that measure the invention.” Sjolund v. Musland, 847 F.2d 1573,
1581-82 (Fed. Cir. 1988) (emphasis in original, citation omitted).
When printed matter is relied on for patentability,
[w]hat is required is the existence of differences between the
appealed claims and the prior art sufficient to establish
patentability. The bare presence or absence of a specific
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functional relationship, without further analysis, is not
dispositive of obviousness. Rather, the critical question is
whether there exists any new and unobvious functional
relationship between the printed matter and the substrate.

In re Gulack, 703 F.2d 1381, 1386 (Fed. Cir. 1983).
A prior art reference is said to teach away from an Applicant’s
invention “when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).

A. Obviousness over Waldner and Hammond
The Issue
The Examiner’s position is that Waldner described an ostomy care
display arrangement “except for sequenced indicia.” (Ans 3.) The
Examiner found that Hammond’s medical kit included packs having
sequenced indicia, and concluded that it would have been obvious to add
Hammond’s “sequenced numbering system to the ostomy organizer of
Waldner in order to provide a user with instructions on how to use the
device and to indicate when it is time to restock the organizer.” (Ans. 4.)
Appellant contends first that Waldner did not teach a display
arrangement for ostomy care. (App. Br. 8.) Appellant then contends that
Waldner did not teach a display surface with sequenced indicia that included
the indicators recited in the claims. (Id.) In Appellant’s view, those
deficiencies are not made up by Hammond and “[t]he elements of claim 1
are simply not disclosed in either the Hammond or the Waldner patent.” (Id.
at 9.) Further, Appellant contends that “there is no motivation for
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combining the references” (id. at 10), and “Hammond actually teaches away
from the claimed invention (id. at 11).
The issues with respect to this rejection are:
has Appellant shown that the combined teachings of Waldner and
Hammond did not disclose all the elements recited in claim 1;
has Appellant shown that the Examiner’s finding of motivation for
combining the prior art teachings is not supported by the evidence; and
has Appellant show that Hammond teaches away from the invention?

Findings of Fact
1. Appellant’s Specification states “the present invention is a system for
organizing and presenting supplies and implements needed for ostomy
care.” (Spec. 4:9-10.)
2. Waldner’s patent is entitled “Ostomy Collector-Organizer Device.”
3. Waldner described the device as “compact, and organized into various
compartments containing items such as napkins, tissues, discharge
receptacles, covers, receptacle liners, etc.” (Abstract.)
4. Hammond’s patent is entitled “First Aid Kit And Method Of
Replenishing.”
5. Hammond’s kit included “a plurality of compartments 37 arranged in
sequence to obtain a card catalogue/file cabinet-like effect.”
(Abstract.)
6. “Contained in the sequential compartments 37 are packs 40 which are
specifically designed with products appropriate for a particular first
aid situation.” (Id.)
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7. “[E]ach of the packs 40 contains medical products specifically
selected for different types of first aid situations as well as an
instructional card 73 which gives quick reference instructions for
administration of first aid in these situations.” (Id.)

Analysis
Appellant’s Specification explains that ostomy patients must wear a
bag or pouch to receive wastes, and that “[t]he bag or pouch must be
frequently drained.” (Spec. at 1:11-13.) Waldner’s device organized
materials for draining an ostomy pouch. Appellant argues that Waldner did
not concern ostomy care, but we must interpret “ostomy care” as broadly as
reasonable in light of the Specification. Hyatt, 211 F.3d 1372. We do not
select from the kinds of ostomy care described in Appellant’s Specification,
to import unwritten limitations into the claims. Sjolund, 847 F.2d at 1581-
82. We find that Waldner’s device is “for ostomy care” as claimed. We also
agree with the Examiner that, contrary to Appellant’s argument, Waldner
taught a display surface, because Waldner’s device displayed items and
implements.
Waldner taught an organizer that included at least five “compartments
containing items such as napkins, tissues, discharge receptacles, covers,
receptacle liners, etc.” (FF3.) The Examiner did not identify implements in
Waldner corresponding to the implements named in Appellant’s claim. If
one of ordinary skill in the art had labeled Waldner’s display with
Hammond’s sequential indicia, at least five numbers would have been added
to Waldner’s display. We agree with the Examiner’s reasoning that it would
have been obvious to add sequential indicia to Waldner’s display. In the
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context of Waldner’s disclosure, the numbers could indicate the implements
Waldner taught.
As the Examiner correctly found, there is no functional relationship
between the display substrate and the indicia. (Ans. 6.) Put another way,
Appellant’s claim “comprising” at least four indicators is the same thing
suggested by Waldner and Hammond: an ostomy care display with five
numbers. Appellant has not identified a functional relationship between the
indicators and the display surface. As shown in Appellant’s Fig. 10, the
display surface may be a sheet of paper or cardboard. (Spec. 14:8-9.) A
number on a sheet of paper may indicate a napkin (Waldner) or a cutting
implement (Appellant’s claim), but the number and sheet of paper do not act
on each other in an unobvious way. We conclude that the nature of the
implements symbolized by the indicators in Appellant’s display does not
distinguish the claimed display over an ostomy care display in which the
indicators symbolize different objects.
Appellant contends that the indicators recited in the claims are not
taught or suggested by the prior art, but we disagree. The indicators recited
in the claims are the same numeral-type indicators as those in the prior art; it
is the symbolic meaning of the indicators that may differ. We agree with the
Examiner that in this case, the indicators and the display surface in
Appellant’s claim do not have a new and nonobvious functional relationship
sufficient to establish patentability. See Gulack, 703 F.2d at 1386.
The Examiner reasoned that adding Hammond’s indicia to Waldner’s
display would have been obvious in order to provide a user with instructions
on how to use the device. Appellant argues that this finding of motivation is
“improperly broad and conclusory.” (App. Br. 11.) We see nothing
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improperly broad in the Examiner’s reasoning, nor do we agree that finding
the use of known prior art sequential indicators to indicate a sequence of
implement use was improperly conclusory. We find that Appellant has not
established error on that score. See Fulton, 391 F.3d at 1200.
Finally, Appellant’s argument that Hammond “teaches away” (App.
Br. 11) fails to show that Hammond would have discouraged a person of
ordinary skill in the art from adding sequential indicia to Waldner’s display.
See Gurley, 27 F.3d at 553.

B. Obviousness of claim 20
The Issue
The Examiner’s position is that Waldner taught an ostomy care
system comprising at least one skin preparation product (29) [sic, (30)
towelettes], at least one pouch (55), and at least one display arrangement
(17, 18) for supplies and implements, but not all the accessories claimed.
(Ans. 6.) The Examiner found that Eastman taught an ostomy appliance
(10) comprising a device for measuring a stoma (38, 42, 43), a wafer cutting
implement (46), at least one wafer (26), and at least one adhesive product
(36). (Id. at 6-7.) The Examiner found “no functional relationship between
the indicia and their respective substrates on the display arrangement or any
of the accessories contained therein,” and “they are given no weight.” (Id. at
8.) The Examiner concluded that “[a]t the time of the invention, it would
have been obvious to one of ordinary skill in the art to add the additional
implements of Eastman to the ostomy storage and carrier tray/kit of Waldner
and Hammond in order to provide a size adjustable ostomy sealing adhesive
wafer.” (Id. at 7.)
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Appellant contends that “Eastman does not disclose the elements of
claim 20,” and that “claim 20 does not recite the ‘size adjustable ostomy
sealing adhesive wafer’ the Examiner is rejecting.” (App. Br. 10.)
The issues for this rejection are:
has Appellant shown that the prior art combined with Eastman
disclosed the elements of claim 20; and
has Appellant shown that the Examiner erred by directing attention to
“a size adjustable ostomy sealing adhesive wafer?”

Further Findings of Fact
9. Eastman’s patent is entitled “Ostomy Appliance With Flexible
Membrane Connector.”
10. Eastman’s “Background Of The Invention” described these steps for
attaching an ostomy appliance to the user as typical in the prior art:
-the user sprays the peristomal area with a medicated skin barrier
spray;
-the user then coats the skin barrier with karaya glue out of a tube and
glues that plate to the peristomal skin;
-the user then cuts a hole in the ostomy appliance to closely match the
hole in the skin barrier;
-the appliance adhesive portion is then pressed firmly against the skin
barrier;
-the bag may be covered with a cloth cover and may be fastened with
a belt; and
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-in some instances the adhesive portion of the appliance is mounted
directly on the skin without an intervening skin barrier. (Col. 1, l 40 –
col. 2, l. 2.)
11. Eastman described the prior art practice as difficult, inconvenient, and
less effective than desired. (Col. 2, ll. 18-19.)
12. Eastman described a thin, flexible and stretchable membrane
attachment for the ostomy appliance. (Col. 3, ll. 35-65.)
13. Eastman’s system included ostomy appliance 10, at least one device
for stoma measurement 38, at least one wafer cutting implement 46, at
least one wafer 26, at least one adhesive product 36, and at least one
pouch 12.

Analysis
We agree with Appellant that claim 20 does not recite a “size
adjustable ostomy sealing adhesive wafer.” Instead, claim 20 calls for “at
least one adhesive product.” We agree with the Examiner that Eastman’s
“size adjustable ostomy sealing adhesive wafer” corresponds to claim 20’s
adhesive product. The Examiner concluded that it would have been obvious
to add the additional implements of Eastman to the ostomy storage and
carrier tray/kit suggested by the combination of Waldner and Hammond in
order to provide a size adjustable ostomy sealing adhesive wafer. We agree.
Appellant’s argument seems directed to the lack of specificity for the
adhesive product recited in the claim. We are not persuaded that the
Examiner erred by reasoning that an ostomy sealing adhesive wafer would
be desirable in an ostomy care display. Appellant has not shown that
Eastman’s adhesive wafer is not an adhesive product as recited in the claim.
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Given the multiple steps Eastman disclosed (FF 10), we see no error in the
Examiner’s reasoning that providing sequential indicia would have been
obvious. As with claim 1, the Examiner gave no patentable weight to the
claim limitations defining indicia presented to indicate a sequence of use in
claim 20. We agree that the indicia do not receive patentable weight under
the Gulack test.

CONCLUSIONS OF LAW
The combination of Waldner and Hammond taught or suggested all
the limitations of claim 1.
The evidence supports the Examiner’s finding of motivation to
combine the prior art teachings.
Appellant has not shown that Hammond teaches away from the
invention.
The rejection of claim 20 provided an explanation showing how the
combination of Waldner, Hammond and Eastman included the claimed
components and alphamerically sequenced indicia that indicated a sequence
of use.

SUMMARY
We affirm the rejection of claims 1-6, 8-12, 14, 16, 18, 24-26 and 28
under 35 U.S.C. § 103(a) as unpatentable over Waldner and Hammond; and
we affirm the rejection of claim 20 under 35 U.S.C. § 103(a) as
unpatentable over Waldner, Hammond, and Eastman.

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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

Ssc:

DR. EDMOND S. MIKSCH
3825 GREEN VALLEY DRIVE
PITTSBURGH, PA 15235
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