Ex Parte Pasko et al

Patent Trial and Appeal Board

May 31, 2016

13276232 (P.T.A.B. May. 31, 2016)

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.
13/276,232 10/18/2011 Stephanie Pasko BPMDL0035SP (10328U) 9806
27939 7590 05/31/2016
Philip H. Burrus, IV
Burrus Intellectual Property Law Group LLC
222 12th Street NE
Suite 1803
Atlanta, GA 30309
EXAMINER
HADEN, SALLY CLINE
ART UNIT PAPER NUMBER
3765
MAIL DATE DELIVERY MODE
05/31/2016 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
________________

Appeal 2014-005696
Application 13/276,232
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 Ouma (“Appellants”) appeal under
35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1–13 and
37–41. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

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Application 13/276,232

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CLAIMED SUBJECT MATTER
Independent claims 1 and 37 are directed to a disposable medical
gown. Claim 1, reproduced below, illustrates the subject matter on appeal.
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 and the rear portion defines
an opening configured to assist a user in donning the gown; 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.

REJECTIONS1
I. Claims 11 and 13 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
II. Claims 1, 2, and 5–13 stand rejected under 35 U.S.C. § 103(a)
as obvious over Graneto (US D598,638 S; iss. Aug. 25, 2009) and
Matsushita (US 6,378,136 B2; iss. Apr. 30, 2002).
III. Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Graneto, Matsushita, and Cater (US 3,276,036; iss. Oct. 4,
1966).

1 Claim 18 is objected to because it contains the wrong status identifier, and
the drawings are objected to under 37 C.F.R. § 1.83(a) as not showing every
feature of the invention specified in the claims. Final Act. 2. Appellants
argue that the objections are improper. Appeal Br. 11–16. We have not
considered Appellants’ arguments regarding the Examiner’s objections,
because the objections are petitionable, rather than appealable. See 37 C.F.R
§ 1.181; MPEP §§ 706.1, 1002.02, and 1201.
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IV. Claims 37–41 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Graneto and Lin (US 2009/0320177 A1; pub. Dec. 31,
2009).
ANALYSIS
Rejection I
Claim 11
Claim 11 recites a gown including a rear portion with an opening that
is “non-closable and arranged so as to leave exposed at least a six-inch width
of a backside of the wearer when the first tie member and the second tie
member are tied together about a torso of a wearer.” Appeal Br. 27, Claims
App.
The Examiner rejects claim 11 because the term “non-closable”
renders the claim indefinite. Final Act. 4; Ans. 4. The Examiner contends
that “[i]t is unclear how the opening is prevented from being closed.” Id.
Appellants argue that the term “non-closable” is described: (1) in
Appellants’ Specification as meaning “that the rear portion covers shoulder
blades only, and leaves the remainder of the torso exposed;” and (2) in the
claim itself as “leav[ing] exposed at least a six-inch width of a backside of
the wearer when the first tie member [] and the second tie member [] are tied
together about a torso of a wearer.” Appeal Br. 17–18 (citing Spec. ¶ 68).
The Examiner has the better argument. Defining the term “non-
closable” in terms of the unclaimed wearer does not apprise us of Examiner
error. The difference in the size of the torso of the wearer could be large
because the wearer could be a small child or a large adult. It is not clear
how the opening of the gown would be “non-closable” for all wearers.
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Further, claim 11 and the Specification describe the opening as “non-
closeable and arranged so as to leave exposed at least a six-inch width of a
backside of a wearer.” Appeal Br. 27, Claims App., Spec. ¶ 68 (emphasis
added). The phrase “so as to leave exposed at least a six-inch width”
appears to modify “arranged” rather than “non-closable.” Without
additional guidance, one of ordinary skill in the art would not be able to
understand what is claimed in claim 11. Accordingly, we sustain the
rejection of claim 11 as indefinite.
Appellants also argue that the Examiner erred because Section 112
requires only the explanation of an Appellants’ use of a term, not every
possible and conceivable interpretation of the term. Id. at 18. Appellants
have failed to provide any support for this contention. As discussed supra,
the test for definiteness under 35 U.S.C. § 112, second paragraph, is whether
“those skilled in the art would understand what is claimed when the claim is
read in light of the specification,” and claim 11 fails to satisfy the test. See
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed.
Cir. 1986).
Claim 13
Claim 13 recites a gown with one or more tie members including a
score line, “wherein the score line is non-linear and measures between one
and three inches.” Appeal Br. 27, Claims App. The Examiner finds that
claim 13 is indefinite because “it is unclear to what the measurement is
referring.” Final Act. 4.
Appellants argue that the fundamentals of the English language make
the meaning of claim 13 clear, i.e., that the score line is non-linear and also
measures between one and three inches. Appeal Br. 19. The Examiner
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responds that the term “‘non-linear’ makes it difficult to determine what is
1–3 inches.” Ans. 5.
The Appellants have the better argument. We discern no lack of
clarity in Appellants use of the term non-linear, and we are not persuaded
that measuring a non-linear line falls outside of the abilities of a skilled
artisan. See e.g., Spec. ¶ 71. When read in light of the Specification, those
skilled in the art would understand that the score lines are non-linear and
measure one to three inches in length (i.e., the length of the non-linear line is
the length of the line if one were to stretch the line to make it linear). See
Orthokinetics, Inc. v. Safety Travel Chairs, Inc. Accordingly, we do not
sustain the rejection of claim 13 as indefinite.
Rejection II
Regarding independent claim 1, the Examiner finds that Graneto
discloses, inter alia, that “one or more perforations (fig. 5) extends across
the rear portion . . . the perforations being configured to tear and split the
rear portion when the front portion is pulled away from the user.” Final Act.
5. The Examiner finds that Graneto does not disclose the material of the
gown, but that Matsushita teaches a gown comprising a non-woven fabric
layer. Id. The Examiner concludes that it would have been obvious to
provide the non-woven material of Matsushita for the fabric layer in Graneto
“for the purpose of providing a material that is moisture-impervious,
cushioning, and stretchable.” Id. at 5 (citing Matsushita, col. 5, ll. 35–40).
Appellants argue that modifying Graneto to include a stretchable
material changes the principle of operation of Graneto, because it would
cause the “material to stretch, instead of tear.” Appeal Br. 22.
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The Examiner responds that (1) the limitation “being configured to
tear and split the rear portion” in claim 1 is a functional limitation and
requires only that the perforations in Graneto be capable of tearing and
splitting the rear portion; (2) “[a] known function of perforations is to
provide weak points in a material so that, when the material is stretched, the
weak points give way and tear;” (3) the perforations in Graneto are capable
of tearing and splitting the rear portion;2 and (4) a stretchable, non-woven
material will still tear at the perforations when stretched far enough. Ans. 2–
3.
We agree with the Examiner that a known function of perforations is
to provide weak points at which a material will tear when stretched, and that
the perforations of the gown of Graneto as modified by Matsushita, are
capable of tearing the rear portion when stretched. See Ans. 2, 3. We
disagree with Appellants’ contention that perforations in a non-woven
material are not capable of tearing – indeed, Appellants’ perforations in a
non-woven fabric are disclosed as being capable of tearing. Thus,
Appellants’ contention that the modification of Graneto would change its
principle of operation (apparently defined by Appellant to be tearing) is not
persuasive.

2 The Examiner has previously found that perforations are configured to tear
and split apart the gown. See Final Act. 5. In response to the Examiner’s
findings in the Answer, Appellants argue in the Reply Brief that the
Examiner has improperly relied upon common knowledge that stretchable,
non-woven material will tear at perforations. Reply Br. 8. Appellants have
not previously raised this argument. Accordingly, we decline to consider
this argument first raised in the Reply Brief. See 37 C.F.R § 41.41(b)(2).
We note, however, that Appellants fail to contend that perforations were not
well known.
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Appellants also argue that Matsushita would change the principle of
operation of Graneto because “Matsushita teaches a collar member having a
‘transversely long belt-like form’” and “belts are not configured to tear.”
Appeal Br. 22–23 (citing Matsushita, col. 3, l. 8).
Appellants’ argument that the collar of Matsushita is not configured
to tear is not germane to the Examiner’s proposed combination. The
Examiner’s proposed rejection uses the gown of Graneto with the non-
woven fabric of Matsushita, and Appellants’ argument is directed solely to
the gown of Matsushita. See Final Act. 5. The collar of Matsushita is not
part of the proposed combination and does not change the principle of
operation of the prior art invention being modified, i.e., the gown of
Graneto. See MPEP § 2143.01(VI). Accordingly, Appellants’ arguments
regarding changes to the intended operation of Graneto lack support and are
not persuasive. See Ans. 3.
For these reasons, we sustain the rejection of claims 1, 2, and 5–13
under 35 U.S.C. § 103(a) as unpatentable over Graneto and Matsushita.
Rejection III
Rejection III pertains to claims that depend from independent claim 1.
Appellants do not present any additional arguments for the patentability of
the claims in this rejection. See Appeal Br. 10. Accordingly, we sustain this
rejection for the same reasons that we sustain Rejection II.
Rejection IV
Regarding claim 37, the Examiner finds that Graneto discloses every
limitation, except the body covering portion being yellow. Final Act. 9–10.
The Examiner further finds that Lin teaches a yellow material for at least
part of a disposable medical gown, and concludes that it would have been
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obvious to modify the gown of Graneto to include the yellow color of Lin
“for the purpose of enhanced visual perception to convey information to the
viewer, such as the gown’s level of fluid protection.” Id. at 10 (citing Lin ¶
39).
Appellants argue that Lin only discloses a yellow sleeve and fails to
disclose a yellow body covering portion. Appeal Br. 23. The Examiner
responds that it would have been obvious to provide a yellow body covering
portion for the reason disclosed by Lin, i.e., to provide a visually perceptible
color to correspond with the protection level of the gown. Ans. 3–4 (citing
Lin ¶ 39). We are not persuaded that it is beyond the skill of a person of
ordinary skill in the art to apply the yellow coloring of Lin to the body
covering portion. Thus, Appellants fail to apprise us of error.
Appellants further argue that Lin teaches away from a yellow body
covering portion because “Lin states that the coating should not extend
more than nine inches from the cuff.” Id. at 23 (citing Lin ¶ 33).
Appellants’ argument is unconvincing, because teaching away requires that
a reference “criticize, discredit, or otherwise discourage” the solution
claimed. See In re Fulton, 391, F.3d 1195, 1201 (Fed. Cir. 2004) (To teach
away, prior art must “criticize, discredit, or otherwise discourage the
solution claimed.”). The portion of Lin cited by Appellants as teaching
away states that “the coated area may extend away from the cuff 26 for a
distance of about 3 to 9 inches.” Lin ¶ 33. This citation is not indicative of
an intent to limit coverage of the yellow color, and Appellants have failed to
point to any criticism of providing more colored coverage, and thus, fail to
apprise us of error.
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For these reasons, we sustain the rejection of claims 37–41 under
35 U.S.C. § 103(a) as unpatentable over Graneto and Lin.

DECISION
We AFFIRM the Examiner’s rejection of claim 11 under 35 U.S.C.
§ 112, second paragraph, as indefinite.
We REVERSE the Examiner’s rejection of claim 13 under 35 U.S.C.
§ 112, second paragraph, as indefinite.
We AFFIRM the Examiner’s rejection of claims 1, 2, and 5–13 under
35 U.S.C. § 103(a) as unpatentable over Graneto and Matsushita.
We AFFIRM the Examiner’s rejection of claims 3 and 4 under
35 U.S.C. § 103(a) as unpatentable over Graneto, Matsushita, and Cater.
We AFFIRM the Examiner’s rejection of claims 37–41 under
35 U.S.C. § 103(a) as unpatentable over Graneto and Lin.
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-IN-PART