Ex Parte Pasko et al

Patent Trial and Appeal Board

Sep 6, 2018

13925598 (P.T.A.B. Sep. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/925,598 06/24/2013
27939 7590 09/07/2018
Philip H. Burrus, IV
Burrus Intellectual Property Law Group LLC
222 12th Street NE
Suite 1803
Atlanta, GA 30309
FIRST NAMED INVENTOR
Stephanie Pasko
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.
BPMDL0035SP D2
(10328UD2)
CONFIRMATION NO.
3664
EXAMINER
HADEN, SALLY CLINE
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
09/07/2018 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 STEPHANIE PASKO and ATIENO OUMA
Appeal2017-007300
Application 13/925,598
Technology Center 3700
Before LYNNE H. BROWNE, JILL D. HILL, and LISA M. GUIJT,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Stephanie Pasko and Atieno Omna ("Appellants") appeal under 35
U.S.C. § 134(a) from the Examiner's final decision rejecting claims 1-9, 11,
and 12. 1 We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Claim 10 was canceled in an amendment filed December 5, 2016. See
Advisory Action dated December 27, 2016.
Appeal2017-007300
Application 13/925,598
BACKGROUND
Independent claims 1 and 12 are pending. Independent claim 1,
reproduced below, illustrates the claimed invention.
1. A gown, comprising:
a non-woven fabric layer defining a neck opening
between a front portion and a rear portion, wherein a front
portion length is greater than a rear portion length, the front
portion comprises a front base member defining a concave-
convex edge comprising a major central convex curvature
centrally spanning two minor concave curvatures, and the rear
portion defines an opening where the non-woven fabric layer
terminates, the opening configured as a slit with a left side of
the non-woven fabric layer and a right side of the non-woven
fabric layer that abut, configured to assist a user in donning the
gown;
one or more tie members extending from the non-woven
layer; and
one or more perforations extending across the rear
portion at least partially between the opening and the neck
opening, the one or more perforations being configured to tear
and split the rear portion when the front portion is pulled away
from the user.
REJECTIONS 2
I. Claims 2-8 and 11 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Final Act. 4.
2 The Examiner withdrew the rejection of claims 1-9 and 11 for
indefiniteness (Final Act. 5) and the rejection of claims 1-8 on the ground of
non-statutory double patenting over claims 1-9 and 19 of co-pending US
Patent Application No. 13/925,532 (Final Act. 9). Ans. 2. Claim 10 was
canceled in an Advisory Action dated December 27, 2016.
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Application 13/925,598
II. Claims 1-8 stand provisionally rejected on the ground of non-
statutory double patenting as being unpatentable over claims 1-9 of
copending US Patent Application No. 13/276,232 ("the '232 Application")
in view of Graneto (US D598,638 S, iss. Aug 25, 2009). Final Act. 8.
III. Claims 1, 9, and 11 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Graneto and Matsushita (US 6,378,136 B2, iss. Apr. 30,
2002). 3 Final Act. 11.
IV. Claims 2-8 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Graneto, Matsushita, and Baucom (US 2010/0212063 Al,
pub. Aug. 26, 2010). Final Act. 17.
V. Claim 12 stands rejected under 35 U.S.C. § I03(a) as
unpatentable over Schwarze (US 5,027,438, iss. July 2, 1991) and Wolfe
(US 5,575,006, iss. Nov. 19, 1996). Final Act. 21.
ANALYSIS
Rejection I: Written Description
The Examiner finds that claim 2 contains new matter, given the
combination of the structure of claim 2 with the newly added subject matter
of claim 1. Final Act. 4. According to the Examiner, "[ n Jone of the
disclosed embodiments show, in combination, the front base member as
claimed (claim 1), [a] slit (claim 1)[,] tie members (claim 1), perforations
( claim 1 ), ... at least two linear score lines as claimed ( claim 2), [ and] one
or more additional perforations (claim 2)." Id. at 4--5. Regarding claim 11,
which depends indirectly from claim 1, the Examiner contends that no single
disclosed embodiment shows, in combination, a front base member "( claim
3 Claim 10 was canceled in an Advisory Action dated December 27, 2016.
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Application 13/925,598
1), [a] slit (claim 1)[,] tie members (claim 1), perforations (claim 1), and [a]
score line extending across a width of the one or more tie members ( claim
11). Id. at 5.
Appellants argue that "claim 2 cannot, by definition, introduce new
matter because it was filed, verbatim, in both the present application and the
parent application." Appeal Br. 12. Appellants continue that there is in
haec verba support for each and every limitation cited by the Examiner,
followed by an explanation that identifies where each limitation of claims 1
and 2 is found in Figures 2--4 10, 14, and 17 of the Specification, and argue
that there is no authority "requiring each and every embodiment to be shown
in a single figure." Id. at 13-15. According to Appellants, the Specification
makes clear
that elements from some figures can be used in other
embodiments. For instance, the brief description of the
drawings makes it clear that the elements shown in FIG. 2 are
for a gown configured in accordance with 'one or more
embodiments of the invention.' Appellant's specification,
paragraph [006]. Emphasis added. Similarly, with reference to
the two score lines shown in FIG. 16, to which the Examiner
makes reference in the rejection, the specification makes clear
at paragraph [067] that the gown shown in FIGS. 16-18 is
'configured in accordance with one or more embodiments of
the invention.' Id. Emphasis added. The specification never
states that the elements of one figure are directed to a single
embodiment only.
Id. at 15.
Appellants reiterate these arguments with respect to claim 11. Appeal
Br. 16-17.
The issue is whether Appellants had possession of the claimed
invention. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir.
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Application 13/925,598
1991). "[T]here cannot be a reduction to practice of the invention ... without
a physical embodiment which includes all limitations of the claim." UMC
Elecs. Co. v. United States, 816 F.2d 647, 652 (Fed. Cir. 1987). Appellants
have not provided an embodiment of the invention that includes all of the
limitations of claim 2, because claim 2 combines multiple individually-
illustrated embodiments/species of the invention. Further, to the extent that
Appellants are contending that claim 2 is supported as a genus claim that
includes multiple embodiments/species of the invention, Appellants have not
explained to us how the Specification supports a contention that Appellant
was in possession of the claimed genus. We fail to discern how describing
each figure as being an example of a gown "in accordance with one or more
embodiments of the invention" informs us that Appellants intended for the
characteristics of each species of the gown to be mixed and matched. We
therefore sustain the written description rejection.
Regarding Appellants' contention that claim 2 cannot introduce new
matter because it was filed, verbatim, in Appellants' original Specification,
this allegation is in error, because claim 2 depends from claim 1, and
therefore contains all of the limitations thereof - which were not present,
verbatim, in Appellants' original Specification. Compare Tronzo v. Biomet,
156 F.3d 1154, 1159 (Fed. Cir. 1998) (holding that the disclosure of species
in a parent application did not provide adequate written description support
for claims to a genus in a child application where the specification taught
against other species). Indeed, it was the amendment to claim 1 that formed
the basis for the Examiner's rejection. For this reason, we sustain the
Examiner's written description rejection.
Rejection II: Provisional Non-Statutory Double Patenting
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The Examiner finds that the '232 Application discloses all of the
limitations of claims 1 through 8, "but does not expressly disclose the front
base member defining a concave-convex edge comprising a major central
convex curvature centrally spanning two minor concave curvatures." Final
Act. 8. The Examiner finds that Graneto discloses a similar gown having a
"front base member defining a concave-convex edge comprising a major
central convex curvature centrally spanning two minor concave curvatures
(fig 1)." Id. The Examiner concludes that it would have been obvious to
one skilled in the art "to have provided the front portion of the reference
application with a front base member as taught by Graneto ... to achieve the
claimed invention, for the purpose of aesthetics and wearer comfort." Id.
Appellants argue that the claims pursued in this application are the
result of a restriction requirement, and pursue a species that the Examiner
indicated was distinct from the species pursued in the '232 Application.
Appeal Br. 19--20.
The Examiner responds that pending claims 1-8 "are not drawn to a
single embodiment and combine multiple embodiments which encroach on
the delimitations of the claims in [the '232 Application]." Ans. 3.
According to the Examiner, pending claims 1-8 and the claims of the '232
Application include the same subject matter, because the '232 Application is
drawn to "species D (figs 16-22)" (id.) and Appellants admit that the
"additional perforations" limitation of claim 2 is taken from the embodiment
of species D as shown in "FIG. 17, elements 1702, 17 62" (Appeal Br. 14--
15).
Pending claim 1 recites, inter alia, an opening configured as a slit
with a left side of the non-woven fabric layer and a right side of the non-
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woven fabric layer that abut. Appeal Br. 31 (Claims App'x.). This "slit"
limitation is not recited in claims 1-9 of the '232 Application.
A non-statutory double patenting rejection is appropriate where the
conflicting claims are not identical, but at least one examined claim is not
patentably distinct from the reference claims because the examined claim
would have been obvious over the reference claims. See In re Goodman, 11
F.3d 1046 (Fed. Cir. 1993). Because the Examiner fails to explain how the
"slit" limitation in pending claim 1 is unpatentable as obvious over claims
1-9 of the '232 Application, we do not sustain this provisional non-statutory
double patenting rejection.
Rejection III: Obviousness of Claims 1, 9, and 11
Regarding claim 1, the Examiner finds that Graneto discloses a rear
portion defining an "opening (fig 7) ... configured as a slit (as best
understood, capable of being configured as a slit) with a left side ... and a
right side ... that abut ( are capable of abutting, and see modification below
regarding the non-woven fabric layer)." Final Act. 12.
Appellants argue, inter alia, that the combination of Graneto and
Matsushita fails to teach or suggest "a rear portion that defines an opening
where the body covering terminates, the opening configured as a slit with a
left side and a right side that abut." Appeal Br. 23. According to
Appellants, Graneto discloses a gown having a large, gaping opening with
sides that "leave the wearer's backside exposed for medical procedures,"
rather than abutting, and Matsushita discloses "rear trunk halves that
overlap."' Id. at 23 ( emphasis omitted).
The Examiner responds that Graneto's Figure 6 (open gown) and
Figure 7 ( closed gown) illustrate that "in use, the side straps are tied together
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to close the right and left sides around the wearer's body, and the straps can
obviously be tightened until they bring the right and left sides together close
enough to directly contact one another." Ans. 4--5.
Graneto is a design patent and, and as such, its title, figures, and
figure descriptions provide its disclosure. Graneto states that "FIG. 7 is a
rear view of the disposable medical gown as worn by a user in a closed
configuration." Graneto, cover page. Because Graneto' s Figure 7 provides
a "closed configuration" of a gown (see Graneto, cover page), and the
illustrated "closed configuration" shows an open-backed gown rather than a
narrow opening of "slit," the Examiner's finding that Graneto discloses the
claimed slit is not supported by a preponderance of the evidence. The
Examiner's statement that Graneto is "capable of being configured as a slit"
is, likewise, not supported by a preponderance of the evidence, particularly
given that Graneto' s "closed configuration" of Figure 7 illustrates a large
gap between the left and right rear sides of the gown. For this reason, we do
not sustain the rejection of claim 1. We likewise do not sustain the rejection
of claims 9 and 11 that depend from claim 1.
Rejection IV: Obviousness of Claims 2---8
The Examiner does not find that either Matsushita or Baucom
discloses a gown opening configured as a slit. We therefore do not sustain
the rejection of claims 2-8 for the reason set forth above regarding claim 1.
Rejection V: Obviousness of Claim 12
Independent claim 12 does not recite an opening configured as a slit.
Claim 12 recites
A disposable medical gown, comprising:
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a body covering portion defining a frontal body covering
portion and a rear portion;
one or more tie members extending from the body
covering portion; and
comprising elastic gatherings, with at least one elastic
gathering of the elastic gatherings being disposed at an
attachment interface between a tie member and the body
covering portion such that the tie member extends from the
elastic gathering distally from the disposable medical gown, the
elastic gatherings being disposed so as to gather portions of the
body covering portion about a waist of a wearer.
Appeal Br. 33 (emphasis added).
The Examiner finds that Schwarze discloses the claimed invention,
except for "tie members extending from the body covering portion, with at
least one elastic gathering ... being disposed at an attachment interface
between a tie member and the body covering portion such that the tie
member extends from the elastic gathering distally from the disposable
medical gown." Final Act. 21. The Examiner finds, however, that Wolfe
discloses tie members 26 extending from a body covering portion 10, "with
at least one elastic gathering ( col 2 line 20-25) being disposed at an
attachment interface between a tie member and the body covering portion
such that the tie member extends from the elastic gathering distally from the
disposable medical gown (fig 1)." Id. at 21-22. The Examiner concludes
that it would have been obvious to provide "the body covering portion of
Schwarze with a tie member as taught by Wolfe, for the purpose of allowing
the garment to be used with different waist sizes (Wolfe col 2 line 25-30)."
Id. at 22.
Appellants argue that the Examiner erred in finding that Wolfe
discloses a tie member extending from an elastic gathering distally from a
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garment. Appeal Br. 27. Appellants contend that Wolfe instead discloses its
drawstring 26 being disposed within a channel through its elastic. Id. ( citing
Wolfe 3:50-56 ("A channel (not shown) is preferably included through
waistband 12 along the top ends 18 and 22 of front 14 and rear 16 panel
members, respectively, through which a drawstring 26 or the like is
contained.")). According to Appellants, disposition of the drawstring 26 in
the channel "allows the drawstring to move freely within the channel and
assist any elastic that may be included in adjustment." Id. (citing Wolfe
4: 18-21 ("drawstring 26 may be tightened about a wearer's waist and tied
thereto and, if support means 12 includes elastic, the elastic will assist in
adjusting the size of support means 12 to the wearer.")). Appellants further
contend that it would not have been obvious to attach Wolfe's drawstring
directly to its elastic, because tightening the drawstring would stretch out the
elastic, which is the opposite of the mode of operation occurring in the
reference, and would render Wolfe unsatisfactory for its intended purpose.
Id. at 27-28 (citing In re Gordon, 733 F.2d 900 (Fed. Cir. 1984); MPEP
2143.01).
The Examiner responds claim 12 "does not require the tie member to
be attached or directly attached to the elastic," instead reciting "elastic
gatherings 'disposed at an attachment interface between a tie member and
the body covering portion."' Ans. 5 ( emphasis added). According to the
Examiner, Wolfe's drawstring 26 in the channel of its waistband is attached
to its body covering portion to create an attachment interface, and free ends
of the drawstring hang down from the attachment interface. Id. Further,
Wolfe's elastic gathering 12 is disposed at the attachment interface between
its drawstring 26 and its body covering portion. Id.
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Appellants reply that claim 12 requires that the tie member be coupled
to the elastic gathering "because the attachment interface, where the elastic
is located, is between the tie member and the body covering portion, with the
tie extending from the elastic portion." Reply Br. 14.
We are not persuaded that the Examiner's findings or reasoning are in
error. Claim 12 recites the tie members "extending from" the body covering
portion, and elastic gatherings "disposed at an attachment interface" between
a tie member and the body covering portion. Appellants provide no
argument or evidence that the meaning of either "extending from" or
"attachment interface" actually require that the tie members are coupled to
the elastic gatherings. Such a requirement is simply not recited in claim 12
or present in the record before us. We therefore sustain the rejection of
claim 12.
DECISION
We AFFIRM the rejection of claims 2-8 and 11 under 35 U.S.C. §
112, first paragraph, as failing to comply with the written description
requirement.
We REVERSE the provisional rejection of claims 1-8 on the ground
of non-statutory double patenting as being unpatentable over claims 1-9 of
the '232 Application.
We REVERSE the rejection of claims 1, 9, and 11 as unpatentable
over Graneto and Matsushita.
We REVERSE the rejection of claims 2-8 as unpatentable over
Graneto, Matsushita, and Baucom.
We AFFIRM the rejection of claim 12 as unpatentable over Schwarze
and Wolfe.
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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-IN-PART
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