Ex Parte Pierre et al

Patent Trial and Appeal Board

Jun 16, 2016

12320648 (P.T.A.B. Jun. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/320,648 0113012009
135866 7590 06/16/2016
LAW OFFICE OF LOUIS WOO
717 NORTH FAYETTE STREET
ALEXANDRIA, VA 22314
FIRST NAMED INVENTOR
Joseph Pierre
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. CONFIRMATION NO.
0107/0061 9949
EXAMINER
LEE, WENG WAH
ART UNIT PAPER NUMBER
3763
MAILDATE DELIVERY MODE
06/16/2016 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
Exparte JOSEPH PIERRE, RACHEL STARR, and
ALAN STEC
Appeal2014-003501
Application 12/320,648
Technology Center 3700
Before NEALE. ABRAMS, LYNNE H. BROWNE, and
MICHELLE R. OSINSKI, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Joseph Pierre et al. (Appellants) 1 appeal under 35 U.S.C. § 134 from
the Examiner's final decision rejecting claims 1, 5-11, 14--20, and 23.2 We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is Smiths Medical ASD,
Inc. Br. 4.
2 Claims 2--4, 12, 13, 21, and 22 are objected to as being dependent upon a
rejected base claim, but have been deemed allowable if rewritten in
independent form including all limitations of the base claim and any
intervening claims. Final Act. 14.
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THE CLAIMED SUBJECT MATTER
Claims 1, 11, and 19 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter on appeal.
1. A convective warming blanket comprising: two air
impermeable sheets bonded at their respective edges to form an
inflatable structure having an upper body portion and two
longitudinal leg portions each extending from a distal end of said
upper body portion, said longitudinal leg portions separated by a
space sufficient to expose a lateral side of a patient from the feet
of the patient to at least the legs of the patient when the blanket
is placed over the patient, one of the longitudinal leg portions
having one edge extending from a longitudinal side edge of said
upper body portion, the other of the longitudinal leg portions
extending from the distal end of the upper body portion between
the two longitudinal side edges of said upper body portion, the
two longitudinal leg portions sandwiching the exposed lateral
side of the patient when the blanket is placed over the patient, at
least one inlet provided at said upper body portion to enable
temperature treated air to be input to said structure for inflating
the same; the sheet to be in contact with the patient having
apertures for outputting the temperature treated air to the patient.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Augustine '2 7 4
Augustine '870
us 5,928,274
US 6,176,870 Bl
REJECTIONS
July27, 1999
Jan.23,2001
I. Claims 1, 5, 9, and 10 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Augustine '274. Final Act. 2--4.
II. Claims 1, 5, 9, 10, 11, 14, and 18 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Augustine '870. Id. at 4--9.
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Ill. Claims 6-8, 19, 20, and 23 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Augustine '274. Id. at 10-13.
IV. Claims 15-17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Augustine '870. Id. at 13-14.
OPINION
Rejection I
Independent claim 1
The Examiner finds that Augustine '274 discloses all of the
limitations of independent claim 1, including, inter alia, (i) longitudinal leg
portions separated by space 332 sufficient to expose a lateral side of a
patient from the feet of the patient to the legs of the patient when the blanket
is placed over the patient and also sandwiching the exposed lateral side of
the patient when the blanket is placed over the patient, (ii) one longitudinal
leg portion having one edge extending from a longitudinal side edge of an
upper body portion; and (iii) the other longitudinal leg portion extending
from the distal edge of the upper body portion between the two longitudinal
side edges of the upper body portion. Final Act. 2--4 (citing Augustine '274,
Fig. 15).
Appellants question "whether there are even side edges that extend
from the upper portion of the Augustine '27 4 blanket" "[g]iven that the
upper portion is a substantially circumferential tent or cocoon like structure."
Br. 13. The Examiner points to the outermost side surfaces shown in
Figures 14B and 15, as the claimed side edges. Ans. 15-16 (citing
Augustine '274, Figs. 14B, 15). We agree with the Examiner that the
"outermost surface found on the side of an object can be considered a side
edge" (id. at 15), considering that an "edge" is broadly defined as "[t]he line
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or area farthest away from the middle" (The American Heritage Dictionary
of the English Language, available at
https://www.ahdictionary.com/word/search.html?q=edge) (last visited June
9, 2016) and such a broad definition is not inconsistent with Appellants'
Specification.
Appellants also argue that Augustine '274 contemplates a blanket that
is limited substantially to the waist of a patient and accordingly "does not
have any leg portions that could conceivably sandwich the lateral side of the
patient." Br. 14 (citing Augustine '274, 9:12-16). We are not persuaded by
this argument. The Examiner reasoned, and we agree, that the blanket of
Augustine '274 is "sufficient to sandwich at least part of [the] legs of a
smaller patient such as an infant or a child, as no size requirement is claimed
for the patient." Final Act. 3. The Examiner elaborates that if a blanket
intended for an adult "were to be placed on a child, the blanket would then
cover the chest and at least portions of [the] abdomen while allowing the
legs of the blanket to sandwich the lateral sides of the child." Ans. 16.
Therefore, the blanket of Augustine '27 4 is capable of sandwiching an
exposed lateral side of a patient when it is utilized with patients of a
particular size. In light of this, the burden shifted to Appellants to show that
the blanket of Augustine '274 is incapable of exposing a lateral side of a
patient as called for in independent claim 1. See In re Schreiber, 128 F.3d
1473, 1478 (Fed. Cir. 1997) (once the Examiner finds the prior art structure
would be capable of performing all of the functions claimed, the burden
shifts to the applicant to show that this is not the case). Appellants do not
provide persuasive reasoning or evidence as to why Augustine '274's
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blanket is incapable of the claimed function when utilized with patients of a
particular size.
Appellants additionally argue that Augustine '274 teaches away from
a blanket that exposes the lateral side of a patient. This argument is not
persuasive because teaching away is not germane to the issue of anticipation.
See Seachange Int'!, Inc. v. C-COR, Inc., 413 F.3d 1361, 1380 (Fed. Cir.
2005).
Appellants further argue that Augustine '274 fails to disclose a leg
portion that extends from the upper body portion between the longitudinal
side edges of the upper body portion, in particular. Br. 15-16. The
Examiner responds that at least a section of the leg portion of the blanket in
Figure 15 in Augustine '274 extends from the upper body portion between
the two longitudinal side edges of the upper body portion. Ans. 17. We
agree that the Examiner has adequately shown how Augustine '274 discloses
this feature as broadly claimed.
We also are not persuaded by Appellants' additional argument that
Augustine '274 is designed for the patient's face to be exposed such that it
would be extremely difficult for a patient to both keep his face looking out
face opening 329 while exposing the patient's lateral side between the leg
portions. Br. 16. The Examiner explains that the claims do not actually
require the patient to lay on his or her side because "[t]he legs and feet of a
patient would still be sandwiched between the legs of the thermal blanket
even when lying on his or her back." Ans. 17. We agree that the lateral side
of a patient would be exposed and sandwiched between the legs of the
thermal blanket even if the patient were lying on his or her back. Moreover,
the Examiner also finds that even if the patient were lying on his or her side,
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"the face opening of the blanket is a cutout (col. 6, lines 4--9) and would
allow the patient to still breathe." Id. at 17-18. We agree with the Examiner
that the blanket of Augustine '274 is capable of sandwiching an exposed
lateral side of a patient under either scenario advanced by the Examiner, and
Appellants do not provide persuasive evidence or reasoning as to why the
blanket is incapable of sandwiching an exposed lateral side of a patient
under the identified circumstances. For the foregoing reasons, we are not
persuaded that the Examiner's rejection of independent claim 1 was in error,
and we sustain the rejection of claim 1under35 U.S.C. § 102(b) as
anticipated by Augustine '274.
Dependent claim 5
Appellants separately argue the patentability of dependent claim 5.
Dependent claim 5 recites that the blanket comprises "adhesive means
provided along respective edges of the longitudinal leg portions away from
said space, the respective edges of the longitudinal leg portions make
adhesive contact with a surface onto which the patient and the blanket are
positioned." Br. 27 (Claims App.). The Examiner points to the disclosure at
column 9, lines 5-13 of Augustine '274 in support of this feature. Final Act.
3.
Appellants argue that Augustine '274's adhesive is on the
undersurface of perimeter 333 of cutout 332 for attachment to the skin of the
patient so as to seal the covering and the body of the patient, rather than for
attachment to a surface. Br. 17 (citing Augustine '274, 9:5-13). The
Examiner responds that because the blanket "is capable of adhering to
surfaces, it fully reads on the claim limitation." Ans. 18. We determine that
the adhesive undersurface at perimeter 333 is not provided along respective
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edges of the longitudinal leg portions away from the space (and is instead
along the underside of the edges of the longitudinal leg portions adjacent the
space). More generally, the adhesive is on the underside of the blanket, as
opposed to the edges that we identified in connection with independent
claim 1.
For the foregoing reasons, we are persuaded that the Examiner's
rejection of dependent claim 5 was in error, and we do not sustain the
rejection of claim 5 under 35 U.S.C. § 102(b) as anticipated by Augustine
'274.
Dependent claims 9 and 10
Appellants separately argue the patentability of dependent claims 9
and 10. Dependent claim 9 recites that "the blanket is configured to cover
the patient when the patient is lying on his right side, so that the left lateral
side of the patient below his upper body is exposed between the longitudinal
leg portions." Br. 28 (Claims App.). Dependent claim 10 is substantially
similar but refers to the patient laying on his left side and exposing the right
lateral side of the patient. Id. Appellants again argue that the blanket of
Augustine '274 extends to the waist and is intended to expose the chest or
abdomen. Br. 18. For the same reasons as discussed above in connection
with independent claim 1, we agree with the Examiner that the blanket of
Augustine '274 is capable of exposing the left or right lateral side of a
patient between the longitudinal leg portions when utilized with patients of a
particular size, and Appellants have not provided persuasive reasoning or
evidence otherwise. Accordingly, we are not persuaded that the Examiner's
rejection of dependent claims 9 and 10 was in error, and we sustain the
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rejection of claims 9 and 10 under 35 U.S.C. § 102(b) as anticipated by
Augustine '2 7 4.
Rejection II
Independent claim 1
The Examiner finds that Augustine '870 discloses all of the
limitations of independent claim 1, including, inter alia, longitudinal leg
portions 330, 332, 440, 442 separated by space 334, 444 sufficient to expose
a lateral side of a patient from the feet of the patient to the legs of the patient
when the blanket is placed over the patient and also sandwiching the
exposed lateral side of the patient when the blanket is placed over the
patient. Final Act. 4--5 (citing Augustine '870, Figs. 10, 17).
Appellants argue that the legs of the patient are covered by the
Augustine '870 blanket and that the blanket is designed for use with a
lithotomy procedure for which a patient would not be lying on his or her
side. Br. 19-21. The Examiner responds that "[a]lthough the thermal
blanket of Augustine '8[70] is used for lithotomies, it does not preclude the
thermal blanket from being used to expose the lateral side of a patient for
another medical procedure" and that "[a]s the legs ... are not connected to
the transversal edge ... , they are capable of folding away to expose the
lateral side of a patient. Moreover, ... the thermal blanket is capable of
folding outwards, further enabling the legs of the blanket to expose the
lateral side of a patient." Ans. 19-20. We agree with the Examiner that the
blanket of Augustine '870 is capable of sandwiching an exposed lateral side
of a patient when it is utilized with the legs/drapes folded away for other
medical procedures and that Appellants have not provided persuasive
reasoning or evidence as to why this is not true. See Schreiber, 128 F.3d at
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1478. For the foregoing reasons, we are not persuaded that the Examiner's
rejection of independent claim 1 was in error, and we sustain the rejection of
claim 1under35 U.S.C. § 102(b) as anticipated by Augustine '870.
Dependent claim 5
Appellants separately argue the patentability of dependent claim 5.
The Examiner points to the disclosure at column 10, line 65 to column 11,
line 8 and column 12, lines 17-23 of Augustine '870 in support of the
feature recited in claim 5. Final Act. 5. Appellants argue that this disclosure
teaches that adhesive strips 392, 394, 396, 398 (shown in Figure 12, but
disclosed as being also provided in the embodiment of Figure 17) are for
securing leg portions to the patient, not for making contact with a surface
onto which the patient is positioned. Br. 21. The Examiner's position is that
because the blanket is capable of adhering to surfaces, it satisfies the claim.
Ans. 18, 21.
Claims directed to an apparatus must be distinguished from the prior
art in terms of structure rather than function, provided the structure is
capable of performing the function. See Schreiber, 128 F.3d at 1477-78
(holding that funnel disclosed for oil dispensing anticipated a claim to a
funnel-like structure employed for dispensing popcorn and that applicant had
the burden to provide that the funnel was not capable of dispensing popcorn
once the Examiner established a similarity in structure) and Hewlett-Packard
Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990)
("[A]pparatus claims cover what a device is, not what a device does."). The
Examiner has established a similarity in structure between Augustine '870
and the claimed subject matter in that at least adhesive strips 392, 394,
mounted on outer lateral edge 326, 327, are provided along respective edges
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of the longitudinal leg portions away from the space. This similarity in
structure supports that the adhesive strips of Augustine '870 are capable of
making contact with a surface, and is sufficient for anticipation where
Appellants have not provided persuasive reasoning or evidence as to why the
adhesive strips of Augustine '870 would not be capable of making contact
with a surface despite the similarity in structure. See Schreiber, 128 F.3d at
1477 ("[T]he absence of a disclosure relating to function [i.e., the use of
Augustine '870's disclosed structure of adhesive strips on outer lateral edges
to make adhesive contact with a surface] does not defeat the ... finding of
anticipation.").
For the foregoing reasons, we are not persuaded that the Examiner's
rejection of dependent claim 5 was in error, and we sustain the rejection of
claim 5 under 35 U.S.C. § 102(b) as anticipated by Augustine '870.
Dependent claims 9 and 10
Appellants argue that the blanket of Augustine '870 "is used for
lithotomy, a procedure that prevents a patient to lie on either his right or left
side." Br. 21. We agree with the Examiner that the blanket of Augustine
'870 is not precluded "from being used to expose the lateral side of a patient
for another medical procedure." Ans. 19. In this way, the Examiner has
explained how the blanket of Augustine '870 is capable of exposing the left
or right lateral side of a patient between the longitudinal leg portions when
utilized with other medical procedures, and Appellants have not provided
persuasive reasoning or evidence otherwise. Accordingly, we are not
persuaded that the Examiner's rejection of dependent claims 9 and 10 was in
error, and we sustain the rejection of claims 9 and 10 under 35 U.S.C.
§ 102(b) as anticipated by Augustine '870.
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Independent claim 11
Independent claim 11 recites, inter alia, "one of the legs extending
from the left or right side of said upper body portion, the other leg extending
between the leftmost and rightmost sides of said upper body portion, ... a
flap extending from the side of said upper body that said one leg does not
extend from." Br. 28 (Claims App.). The Examiner found that leg portions
440, 442 both extend from the left or right side of the upper body portion
and that leg portions "440 and 442 are both between the leftmost and
rightmost sides of the upper body portion." Final Act. 8 (citing Augustine
'870, Fig. 17). The Examiner found that element 452 comprises a flap
extending from the side of the upper body that one leg does not extend from.
Id.
In addition to the arguments we found unpersuasive in connection
with independent claim 1 (Br. 21-22), Appellants argue that Augustine '870
fails to disclose a flap extending from the side of the upper body that one leg
does not extend from (id. at 22). More specifically, Appellants argue that
drape 452 "are drapes at the head end 432 of the Fig. 17 blanket that hang
over the shoulders of the patient." Id. at 22 (citing Augustine '870, 11 :67-
12:5). The Examiner responds that drape 452 of Augustine '870 meets the
language of the claims in that it extends from the side of the upper body "in
a direction opposite from that of the leg portion." Ans. 22. We agree that
the Examiner has adequately shown how Augustine '870 discloses the flap
feature as broadly claimed. Accordingly, we are not persuaded that the
Examiner's rejection of independent claim 11 was in error, and we sustain
the rejection of claim 11 under 35 U.S.C. § 102(b) as anticipated by
Augustine '870.
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Dependent claims 14 and 18
Appellants separately argue the patentability of dependent claims 14
and 18. Br. 22-23. Dependent claim 14 recites that the blanket comprise
adhesive means "for attaching the two legs to a surface onto which the
patient and the blanket are positioned." Id. at 29 (Claims App.). Appellants
argue that the adhesives of Augustine '870 are for securing the blanket to the
patient's legs, not a surface onto which the patient is positioned. Br. 21. For
similar reasons as described in more detail above in connection with
dependent claim 5, we are persuaded that the adhesive of Augustine '870 is
provided along respective opposite longitudinal edges of the two legs and,
due to structural similarity to the claimed subject matter, is capable of
attaching the legs to a surface, and that this is sufficient for anticipation.
Appellants additionally argue that "since the elongate inflatable
portions 330 and 332 overly the legs of the patient, the legs of the patient
would separate those portions from the surface that the patient lies on to
thereby prevent the adhesive strips from adhering to the surface" such that
the blanket "is capable of being attached to a surface ... only if there is no
patient underneath the blanket." Br. 23. We agree, however, with the
Examiner that "scenarios may arise in which the leg portions of the thermal
blanket may be adhered to the surfaces [i]n addition to the leg such as
preventing warm air from the thermal blanket from escaping." Ans. 22-23.
We are not persuaded that the adhesive strips are not capable of making
contact with a surface under at least some scenarios or circumstances.
Dependent claim 18 recites that the blanket is configured to expose
either the left or right lateral side of the patient below his upper body. Br. 29
(Claims App.). The Examiner finds that the blanket of Augustine '870 is
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capable of exposing a lateral side of a patient when the patient is lying on his
or her side. Final Act. 8. Appellants argue that a lithotomy procedure could
not be performed with the patient lying on his side. Br. 23. The Examiner
has explained how the blanket of Augustine '870 is capable of exposing the
left or right lateral side of a patient between the longitudinal leg portions
when utilized with other medical procedures, and Appellants have not
provided persuasive reasoning or evidence otherwise.
Accordingly, we are not persuaded that the Examiner's rejection of
dependent claims 14 and 18 was in error, and we sustain the rejection of
claims 14 and 18 under 35 U.S.C. § 102(b) as anticipated by Augustine '870.
Rejection III
Claims 6-8
To the extent Appellants' arguments in support of the patentability of
dependent claims 6-8 relate to the perceived deficiencies in Augustine '274,
we are not persuaded of error because we have found no such deficiencies in
Augustine '274. See Br. 24 (arguing that claims 7 and 8 stand or fall with
claim 1 ). Appellants separately argue the patentability of dependent claim 6.
Claim 6 recites "multiple rows of apertures are provided at the sheet
in contact with the patient along the direction of the placement of the arms
of the patient for outputting temperature treated air to at least the arms of the
patient covered by said upper body portion." Br. 28 (Claims App.).
Appellants argue that Augustine '27 4 "merely discloses that apertures are
provided at the underside of the blanket, which is shown by Fig. 9," but
"[t]here is no disclosure or suggestion ... that there be multiple rows of
apertures along the direction of the placement of the arms of the patient."
Id. at 23-24 (citing Augustine '274, 9:8-13, Fig. 9).
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The Examiner finds that Augustine '274 discloses apertures along the
direction of the placement of the arms of the patient for outputting
temperature treated air in the embodiment of Figure 9, but "fails to disclose
multiple rows of apertures provided along the direction of the placement of
the arms" in connection with the embodiment of Figure 15. Final Act. 10-
11 (citing Augustine '274, 9:8-13). The Examiner concludes that it would
have been obvious "to use different configurations of aperture arrangements
on a convective warming blanket, since doing so would effectively enable
one to adjust the concentration of heated air on particular portions of a
patient's body." Id. at 11 (citing Augustine '274, 5:56-59). We agree with
the Examiner that "[a]s the thermal blanket provides coverage to the arms of
the patient in addition to the head, chest and legs, it would be beneficial to
include apertures on the portions of the thermal blanket that surround the
arm as well" and that "as seen in Fig[ ure] 9, the apertures cover at least the
entire upper portion of the thermal blanket and extend to the edges." Ans.
19. Accordingly, we determine that the Examiner has adequately explained
how Augustine '274 renders obvious the subject matter of claim 6.
Accordingly, we are not persuaded that the Examiner's rejection of
dependent claims 6, and dependent claims 7 and 8, for which Appellants rely
on the same arguments and reasoning as in connection with independent
claim 1 (Br. 24), was in error, and we sustain the rejection of claims 6-8
under 35 U.S.C. § 103(a) as unpatentable over Augustine '274.
Claims 19 and 20
Appellants argue that "[c]laim 19 recites substantially the same 'one
and other legs' limitations recited in claim 1" and that "[a] s discussed above
in Section 1, Augustine '274 fails to disclose the 'one and other legs'
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limitations of the instant inventive blanket." Br. 24. For the same reasons as
discussed above in connection with independent claim 1 in Rejection I, we
are not persuaded of error by the Examiner. Accordingly, we are not
persuaded that the Examiner's rejection of claim 19, and claim 20, for which
Appellants rely on the same arguments and reasoning (id.), was in error, and
we sustain the rejection of claims 19 and 20 under 35 U.S.C. § 103(a) as
unpatentable over Augustine '27 4.
Claim 23
Claim 23 recites "adhesive means provided along the respective
opposite longitudinal edges of the two legs for attaching the two legs to a
surface." Br. 30 (Claims App.). The Examiner again finds that Augustine
'274 discloses adhesive means provided along respective edges of the
longitudinal leg portions away from said space" that "make adhesive contact
with a surface." Final Act. 12. Appellants argue that "[c]laim 23 recites
limitations similar to claim 5," and "[t]herefore, the discussion of claim 5 ...
equally applies to claim 23." Br. 24 (emphasis omitted). For similar reasons
as discussed above in connection with dependent claim 5 in Rejection I, we
are persuaded that the Examiner's rejection of claim 23 was in error, and we
do not sustain the rejection of claim 23 under 35 U.S.C. § 103(a) as
unpatentable over Augustine '27 4. In particular, we determine that the
adhesive means in Augustine '274 has not been shown to be provided along
the opposing longitudinal edges of the two legs, when considering the
opposing longitudinal edges to be the outermost side surfaces. 3
3 We note that dependent claim 23 refers to "the respective opposite
longitudinal edges of the two legs," whereas independent claim 19, from
which it depends, fails to provide antecedent basis for the longitudinal edges
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Rejection IV
To the extent Appellants' arguments in support of the patentability of
dependent claims 15-17 relate to the perceived deficiencies in Augustine
'870, we are not persuaded of error because we have found no such
deficiencies in Augustine '870. See Br. 25 (arguing that claim 16 stands or
falls with claim 11 ). Appellants separately argue the patentability of
dependent claims 15 and 17. Id.
Claim 15 recites "multiple rows of apertures formed ... at an area of
said upper body portion that covers the arms of the patient in a direction
orthogonal to the legs." Br. 29 (Claims App.). Appellants argue that Figure
5 of Augustine '870 "merely shows a partial underside view of the
Augustine '870 blanket," but there "does not appear to be any disclosure in
Augustine '870 that suggests ... the subject matter of claim 15." Br. 25.
The Examiner finds that Augustine '870 discloses multiple rows of
apertures 62 formed at an area of an upper body portion that covers the arms
of the patient in a direction orthogonal to the legs in the embodiment shown
in Figure 5 of Augustine '870, and that "it would have been obvious to one
of ordinary skill in the art ... to use different configurations of aperture
arrangements on a convective warming blanket, since doing so would
effectively enable a uniform thermal bath to encompass the patient." Final
Act. 14 (citing Augustine '870, 7:49-56). We agree with the Examiner that
the embodiment of Figure 5 of Augustine '870 teaches rows of apertures for
delivery of thermal air to the patient, and that it would be beneficial to
of the two legs. Because we are not convinced that the lack of antecedent
basis for the term renders the claim so ambiguous as to be indefinite, we do
not enter a ground of rejection based on indefiniteness.
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include the apertures in the embodiment of Figures 1 7-19 "in order to
provide the same uniform thermal bath to the patient." Ans. 23. We also
determine that the apertures are aligned in rows both along the longitudinal
direction of the blanket and in a direction orthogonal to the longitudinal
direction of the blanket in an area that covers the arms of the patient, and it
would have been obvious to use such an arrangement in connection with
other embodiments taught in Augustine '870, such that the Examiner has
adequately explained how Augustine '870 renders obvious the subject matter
of claim 15.
Claim 17 recites "at least one row of apertures provided longitudinally
along an edge of each of the legs facing said space." Br. 29 (Claims App.).
Appellants argue that "[t]here are no respective rows of apertures provided
along an edge of each of the legs that face the space (which Augustine '870
also fails to show) in Fig. 5." Br. 25. The Examiner finds that Augustine
'870 discloses at least one row of apertures provided longitudinally along an
edge of each of the legs facing the space. Final Act. 14 (citing Augustine
'870, 7:65-8:2). Again, we agree with the Examiner that the embodiment of
Figure 5 of Augustine '870 teaches rows of apertures for delivery of thermal
air to the patient, and that it would be beneficial to include the apertures in
the embodiment of Figures 1 7-19 "in order to provide the same uniform
thermal bath to the patient." Ans. 23. We also determine that the apertures
are aligned in rows along the longitudinal direction of the blanket in an area
that covers the legs of the patient, and it would have been obvious to use
such an arrangement in connection with other embodiments taught in
Augustine '870 that include a space between the leg portions, such that the
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Examiner has adequately explained how Augustine '870 renders obvious the
subject matter of claim 17.
Accordingly, we are not persuaded that the Examiner's rejection of
dependent claims 15 and 17, and dependent claim 16, for which Appellants
rely on the same arguments and reasoning as in connection with independent
claim 11 (Br. 25), was in error, and we sustain the rejection of claims 15-17
under 35 U.S.C. § 103(a) as unpatentable over Augustine '870.
DECISION
The Examiner's decision to reject claims 1, 9, and 10 under 35 U.S.C.
§ 102(b) as anticipated by Augustine '274 is affirmed.
The Examiner's decision to reject claim 5 under 35 U.S.C. § 102(b) as
anticipated by Augustine '274 is reversed.
The Examiner's decision to reject claims 1, 5, 9, 10, 11, 14, and 18
under 35 U.S.C. § 102(b) as anticipated by Augustine '870 is affirmed.
The Examiner's decision to reject claims 6-8, 19, and 20 under
35 U.S.C. § 103(a) as unpatentable over Augustine '274 is affirmed.
The Examiner's decision to reject claim 23 under 35 U.S.C. § 103(a)
as unpatentable over Augustine '274 is reversed.
The Examiner's decision to reject claims 15-17 under 35 U.S.C.
§ 103(a) as unpatentable over Augustine '870 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
18