Ex Parte McVicker

Patent Trial and Appeal Board

Oct 6, 2014

11837086 (P.T.A.B. Oct. 6, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte NOLA JANENE MCVICKER
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Appeal 2012-008841
Application 11/837,0861
Technology Center 3700
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Before HUBERT C. LORIN, MICHAEL C. ASTORINO,
JAMES A. WORTH, Administrative Patent Judges.

WORTH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–22.2 We have jurisdiction under 35 U.S.C. §§ 134
and 6(b).
We REVERSE.

1 According to Appellant, the real party in interest is Sun Glitz
Corporation (App. Br. 1).
2 Our decision refers to the Appellant’s Appeal Brief (“App. Br.,” filed
Jan. 11, 2012) and Reply Brief (“Reply Br.,” filed May 16, 2012) and the
Examiner’s Answer (“Ans.,” mailed Mar. 16, 2012) and Final Office Action
(“Final Act.,” mailed Oct. 14, 2011).
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Introduction
Appellant’s disclosure relates to a compression bandage and method
of applying the bandage to provide releasable compression to a patient’s
wound (Spec. ¶ 9).
Claims 1, 11, 12, 21, and 22 are the independent claims on appeal.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A compression dressing for the surface of an animal
comprising:
a compression wrap having a substantially uniform
composition for forming the compression dressing in contact
with the surface of the animal;
the compression wrap being in the form of a closed cell,
self-adherent elongated strip formed of a vinyl foam which has
had excess plasticizer cast into its mixture, the mixture forming
a substantially uniform composition.

App. Br. 32, Clms. App.

Prior Art Relied Upon
Romaine US 4,377,160 Mar. 22, 1983
Cascino US 4,806,404 Feb. 21, 1989
McVicker RE 36,459 Dec. 21, 1999
Gaylord US 7,264,605 B2 Sept. 4, 2007

Rejections on Appeal
I) Claims 1–3, 5, 6, 8–13, 15, 16, and 18–22 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Romaine
and Cascino;
II) Claims 4 and 14 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Romaine, Cascino, and
McVicker;
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III) Claims 7 and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Romaine, Cascino, and Gaylord;
and
IV) Claims 1–22 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written
description requirement.

OPINION
Rejections I–III
The Examiner (Ans. 5) finds that Romaine teaches a compression
wrap that is self-adherent. The Examiner (id.) concludes that it would have
been obvious for one of ordinary skill in the art to modify the compression
wrap taught by Romaine with the closed cell material taught by Cascino
because this element is known to provide high tactile qualities.
Appellant (App. Br. 8–9, Reply Br. 3–4) argues that there is no proper
reasoning explaining the motivation for replacing Romaine’s bandage
material with Cascino’s tack material. Appellant (Reply Br. 9) asserts that
Romaine states three times that the bandage does not adhere to the skin
(col. 3, ll. 7–8, 45–46, 59–60). The Examiner (Ans. 6, 18) finds that
Romaine teaches that the device is self-adherent when it wraps around a
surface such that the device is able to adhere to itself and the surface.
We are persuaded by Appellant’s argument. Romaine’s bandage is
made of open-cell foam impregnated with a high water content gel, “which
gel is capable of adhering to itself, but which does not, however, adhere
strongly to the human or animal skin” (col. 3, ll. 42–46). Romaine’s
material wraps an injured portion of the body, e.g., an extremity with a
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contusion, which may be characterized by pain, discomfort, swelling, or
internal hemorrhaging (col. 1, ll. 12–17, 34–35), such that the bandage does
not significantly adhere to the skin and can be easily removed without
causing injury or discomfort (col. 3, ll. 7–12). There is an insufficient basis
for concluding that it would have been obvious to combine the bandage of
Romaine with the tack material of Cascino. Although the Examiner (Ans.
17) relies on the teaching that Cascino’s material is “easily removed” (col. 1,
ll. 37–38) from glass or porcelain, this is an insufficient basis for the
conclusion that Cascino’s material would be expected to be “easily
removed” from human skin. Indeed, Cascino selected its closed-cell
material for its ability to adhere to glass and porcelain (col. 1, ll. 20–24),
while Romaine selected its open-cell material for its property of not
significantly adhering to skin.
The above discussion applies equally to the apparatus claims
(independent claims 1, 21, and 22, which recite a “closed cell” bandage) and
to the method claims (independent claims 11 and 12, which recite the
application of a “closed cell” bandage), and claims dependent thereon. We,
therefore, do not sustain the rejection of claims 1–3, 5, 6, 8–13, 15, 16, and
18–22 under 35 U.S.C. § 103(a) as being unpatentable over Romaine and
Cascino. We also do not sustain the rejection of claims 4, 7, 14, and 17
under 35 U.S.C. § 103(a) as being unpatentable over Romaine and Cascino
and further in view of McVicker or Gaylord.

Rejection IV
Appellant added the term “substantially uniform composition” to
independent claims 1, 11, 12, 21, and 22 by Amendment of August 12, 2010.
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Appellant stated at the time of the Amendment that Romaine discloses
plasticizer in the surface layer only (but not in the internal gel) and
Appellant argued at the time of Amendment that the “substantially uniform
composition” “avoid[s] Romaine’s disclosure of plasticizer in the surface
layer(s) only” (Amendment 6, filed Aug. 12, 2010). See also Examiner
Interview Summary Record (mailed Aug. 11, 2010) (“Such an amendment
was agreed to overcome the rejections using the Romaine reference of
record.”)
The Examiner (Ans. 15–16) finds that U.S. Patent 4,806,404 (above-
referred to as “Cascino”) is incorporated by reference into the Specification
and discloses a “uniform mixture.” However, the Examiner (id. at 4, 15–16)
finds that the Specification does not support “a substantially uniform
composition,” as recited by the independent claims.3
Appellant (App. Br. 4–6) argues that caselaw has allowed this term on
similar facts, citing In re Mattison, 509 F.2d 563 (CCPA 1975). Appellant
also cites Manual of Patent Examining Procedure (MPEP) §§ 706.03
(indefiniteness) and 2163.03 (written description) for the use of the term
“substantially” in a claim.
Satisfaction of the written description requirement is a question of
fact. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.

3 On July 21, 2011, Appellant submitted an Amendment to the Claims and to
the Specification, i.e., to add a direct quotation from Cascino, which was
already incorporated by reference. The Final Office Action, in response to
the Amendment filed July 21, 2011, analyzes compliance with 35 U.S.C.
§ 112, first paragraph, relative to the Specification as originally filed: “The
claim(s) contains subject matter which was not described in the specification
in such a way as to reasonably convey to one skilled in the relevant art that
the inventor(s), at the time the application was filed, had possession of the
claimed invention” (Final Act. 2).
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2010) (en banc). Whether and to what extent a patent incorporates material
by reference also is a question of law. Hollmer v. Harari, 681 F.3d 1351,
1355 (Fed. Cir. 2012). For incorporation by reference, the host document
must identify with detailed particularity what specific material it
incorporates and clearly indicate where that material is found in the various
documents. Id. at 1357 (citations omitted).
The Specification (Spec. ¶ 16) as originally filed states: “The
composition and manufacturing procedure for the foam is disclosed in U.S.
Pat. No. 4,806,404 [Cascino], which is incorporated herein by reference, and
will not be described further herein.” The written description is thus clear in
its statement of incorporation of Cascino, and specifically, of Cascino’s
“composition and manufacturing procedure for the foam.” The
Specification also contains a similar incorporation by reference of Cascino
at paragraph 7.
Cascino discloses a process for casting a uniform foam mixture (col.
2, ll. 20–32) and proceeds to explain (col. 2, ll. 33–38) that:
[i]t is understood that all chemicals used in forming both
the tack layer 16 and the base cushion layer 14 are well known
to those skilled in the art and that modifications may be made in
the formula or the process without departing from the spirit of
the invention which is commensurate in scope with [the claims
of Cascino].
Cascino, therefore, discloses that a uniform mixture is cast, but that some
degree of modification may be tolerated. Thus, a person of ordinary skill in
the art would understand the term “substantially uniform” as recited in the
independent claims to be consistent with the disclosure of Cascino, as
incorporated by reference into the Specification. We do not sustain the
rejection of claims 1–22 under 35 U.S.C. § 112, first paragraph.
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DECISION
The decision of the Examiner to reject claims 1–22 is reversed.

REVERSED

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