Ex Parte Pasko et alDownload PDFPatent Trial and Appeal BoardSep 6, 201813925598 (P.T.A.B. Sep. 6, 2018) Copy Citation 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. 2 Appeal2017-007300 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. 3 Appeal2017-007300 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. 4 Appeal2017-007300 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 5 Appeal2017-007300 Application 13/925,598 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- 6 Appeal2017-007300 Application 13/925,598 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 7 Appeal2017-007300 Application 13/925,598 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: 8 Appeal2017-007300 Application 13/925,598 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 9 Appeal2017-007300 Application 13/925,598 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. 10 Appeal2017-007300 Application 13/925,598 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. 11 Appeal2017-007300 Application 13/925,598 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 12 Copy with citationCopy as parenthetical citation