Ex Parte Pike

Patent Trial and Appeal Board

Mar 15, 2016

10561752 (P.T.A.B. Mar. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/561,752 01/26/2006
23869 7590
Hoffmann & Baron LLP
6900 Jericho Turnpike
Syosset, NY 11791
03/16/2016
FIRST NAMED INVENTOR
Anthony Bruce Pike
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.
2163-2 PCT/US/RCE 1633
EXAMINER
NELSON, KERI JESSICA
ART UNIT PAPER NUMBER
3772
MAILDATE DELIVERY MODE
03/16/2016 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
Ex parte ANTHONY BRUCE PIKE 1
Appeal2014-000100
Application 10/561,752
Technology Center 3700
Before WILLIAM A. CAPP, AMANDA F. WIEKER, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
WIEKER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Anthony Bruce Pike ("Appellant") appeals under 35 U.S.C. § 134(a)
from the Examiner's decision finally rejecting claims 1, 2, 5-9, 14--17, 19,
20, 22, 26-34, and 36-39.2 We have jurisdiction over the appeal under 35
U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the Real Party in Interest is AP A Parafricta
Limited. Appeal Br. 3.
2 Claims 3, 4, 10-13, 18, 21, 23-25, and 35 have been cancelled. Id. at 5.
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CLAIMED SUBJECT MATTER
The invention relates to medical protection sheeting. Spec. 1 :4--5.
Claims 1 and 38 are illustrative of the subject matter on appeal, and recite:
1. An article comprising a medical protection
sheeting comprising a breathable plain weave of low friction
nylon warp and low friction nylon weft yams, said yams having
a linear density between 1000 and 40 decitex, said sheeting
having a coefficient of static friction substantially the same as
its coefficient of dynamic friction;
wherein said medical protection sheeting includes an
external patient-contacting surface having said plain weave.
38. An article comprising a medical protection
sheeting formed from a low frictional material having a
coefficient of static friction no more than 20% greater than a
coefficient of dynamic friction, wherein said material is
breathable and plain woven, and wherein said medical
protection sheeting includes an external patient-contacting
surface.
1A .. ppeal Br. 140, 147 (emphases added).
Independent claim 36 is also drawn to an article comprising a medical
protection sheeting. Id. at 147. Independent claims 16 and 27 are drawn to
a boot comprising a medical protection sheeting. Id. at 141-142, 144--145.
And independent claims 26, 33, and 39 are drawn to methods for reducing
skin damage by use of a medical protection sheeting. Id. at 143-144, 146,
147-148.
Furthermore, independent claims 16, 27, and 36 each recite that a
coefficient of static friction is substantially the same as a coefficient of
dynamic friction, similar to the language emphasized above in claim 1. Id.
at 141-142, 144--145, 147. Likewise, independent claims 26, 33, and 39
each recite that a coefficient of static friction is no more than twenty percent
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greater than a coefficient of dynamic friction, similar to the language
emphasized above in claim 38. Id. at 143-144, 146, 147-148.
REJECTIONS
The claims stand rejected as follows: 3
I. Claims 1, 2, 5-7, 14, 15, 34, and 36-38 under 35 U.S.C.
§ 102(±) as claiming subject matter not invented by Appellant.
II. Claims 1, 2, 5-7, 14, 34, 36-38 under 35 U.S.C. § 102(b) as
anticipated by Moriwaki (US 5,989,660, iss. Nov. 23, 1999) or,
in the alternative, under 35 U.S.C. § 103(a) as unpatentable
over Moriwaki.
III. Claim 15 under 35 U.S.C. § 103(a) as unpatentable over
Moriwaki and Tsuboi (US 5,558,450, iss. Sept. 24, 1996).
IV. Claims 1, 8, 9, 16, 17, 20, 22, 27-29, 31, and 32 under 35
U.S.C. § 103(a) as unpatentable over Kuehnreich (US
5, 176,624, iss. Jan. 5, 1993), Holt (US 5,778,565, iss. July 14,
1998), and Moriwaki.
V. Claims 19 and 30 under 35 U.S.C. § 103(a) as unpatentable
over Kuehnreich, Holt, Moriwaki, and Tsuboi.
VI. Claims 26, 33, and 39 under 35 U.S.C. § 103(a) as unpatentable
over Neilson (US 3,849,813, iss. Nov. 26, 1974) and Moriwaki.
3 The Examiner's rejections under 35 U.S.C. § 101 and 35 U.S.C. § 112, first
paragraph, have been withdrawn. Ans. 12.
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ANALYSIS
35 U.S.C. § 102(/)- Claims 1, 2, 5-7, 14, 15, 34, and 36--38
Claims l, 2, 5-7, 14, 15, and 34
Appellant argues these claims as a group. Appeal Br. 81-83. We
treat claim 1 as representative, and claims 2, 5-7, 14, 15, and 34 stand or fall
with claim 1.
The Examiner finds that "the fabrics used in [Appellant's] invention
do not appear to be [Appellant's] own work. Conversely, it appears that
[Appellant] merely tested and used a material supplied by DuPont." Final
Act. 4.
Appellant contends: "Appellant conceived the subject invention, for
example 'the application of friction-free fabric for the problem of pressure
sores."' Appeal Br. 82 (citing Oct. 12, 2011 Pike Deel. (Ex. 14)).4
Appellant also contends that he personally selected certain DuPont products
for testing, which was performed by the National Physical Laboratory. Id.
(citing Mar. 16, 2009 Barnes Deel. (Ex. 18); Mar. 16, 2009 Pike Deel. (Ex.
17)). Appellant contends that "[t]he mere fact that the Appellant did not
personally make or test the fabric samples is not determinative." Id. at 83;
see also Reply Br. 3.
As the Federal Circuit stated in OddzOn Products Inc. v. Just Toys
Inc., 122 F.3d 1396, 1401---02 (Fed. Cir. 1997):
Section 102(f) provides that a person shall be entitled to a
patent unless "he did not himself invent the subject matter
4 Appellant provides several pieces of evidence with the Appeal Brief,
including the referenced Pike Declaration. See Appeal Br. 149-150
(identifying evidence items 1-18). Although the Appeal Brief refers to these
items by their "ID" number, this Decision refers to them as Exhibits ("Ex.").
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sought to be patented." This is a derivation provision, which
provides that one may not obtain a patent on that which is
obtained from someone else whose possession of the subject
matter is inherently "prior." It does not pertain only to public
knowledge, but also applies to private communications between
the inventor and another which may never become public.
Therefore, a rejection under 35 U.S.C. § 102(±) requires more than a
showing that the claimed subject matter was conceived by another before
Appellant's conception. Rather, there must also be evidence that Appellant
obtained the subject matter from that other person. In other words, it must
be shown that Appellant "acquired knowledge of the claimed invention from
another, or at least so much of the claimed invention as would have made it
obvious to one of ordinary skill in the art." New England Braiding Co. Inc.
v. A. W. Chesterton Co., 970 F.2d 878, 883 (Fed. Cir. 1992); see also Ex
Parte Stanley W. Olson, 1999 WL 34762132, at *2-3 (BPAI Mar. 12, 1999).
Appellant has not apprised us of error in the Examiner's rejection.
Appellant provides evidence that Appellant conceived of a "friction-free
fabric" intended to treat pressure sores, and discussed unspecified "technical
aspects" of such a fabric with DuPont's Dr. Barnes. See Ex. 14 i-f 6(a); see
also id. at Ex. A, Ex. R. However, this does not demonstrate conception of
the claimed subject matter because Appellant's evidence is not
commensurate with the rejected claims. Specifically, the evidence does not
demonstrate conception of all claim limitations, for example, the limitations
requiring "substantially the same" coefficients of static and dynamic friction
(claims 1 and 3 6), or a coefficient of static friction "no more than twenty
percent greater" than a coefficient of dynamic friction (claims 38 and 39).
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See Appeal Br. 140, 147-148 (reciting additional claim limitations regarding
breathability, plain woven nylon, and certain decitex values). 5
Furthermore, Appellant's Specification states that slide sheets and
dressing coverings of the invention were made from DuPont fabrics, which
were tested to determine performance and material properties, such as
coefficients of friction. Spec. 3--4; see also id. Table 1, Table 2. Appellant
has not provided any evidence to suggest that DuPont's fabric were altered
in any manner for use by Appellant. Indeed, Appellant's March 16, 2009,
Declaration suggests that these fabrics were selected off the shelf. See Ex.
17 i-f 4; see also Ex. 18 i-fi-15-7. Therefore, this testimony demonstrates only
that Appellant identified and requested preexisting DuPont fabrics for
testing, but does not demonstrate that Appellant conceived of these products
or their characteristics (including their coefficients of friction).
Appellant emphasizes that DuPont had not used these fabrics as
"medical protection sheeting" at the time of Appellant's request. See Ex. 1 7
i-f 4 ("I personally selected the DuPont Products for experimental testing with
my Invention before said DuPont Products were ever known or considered
by anyone, including [DuPont] to be used as medical protection sheeting.").
However, this is not dispositive because this intended use of the preexisting
fabric does not impart any structure over that presented by the fabric itself.
See Final Act. 5.
5 In the Reply Brief, Appellant argues that "[t]he Examiner is requiring proof
of structural details of the inventive articles well beyond the scope of the
claims themselves," and contends that the details required by the Examiner
are not a predictor of coefficients of friction. Reply Br. 2 (citing Aug. 18,
2010 Clark Deel. (Ex. 15)). We remain unpersuaded because Appellant has
not provided evidence of conception commensurate in scope with the claims.
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Therefore, Appellant has not persuaded us of error in the Examiner's
rejection of claims 1, 2, 5-7, 14, 15, 34, and 36-38.
Claims 3 6 and 3 7
Appellant argues claims 36 and 37 separately but presents the same
arguments discussed above with respect to claim 1. See Appeal Br. 83-85.
Therefore, Appellant has not persuaded us of error in the Examiner's
rejection of claims 3 6 and 3 7.
Claim 38
Appellant argues claim 38 separately, but presents the same
arguments discussed above with respect to claim 1. See Appeal Br. 86-88.
Therefore, Appellant has not persuaded us of error in the Examiner's
rejection of claim 38.
35 U.S. C. § 102(b}6- Moriwaki - Claims 1, 2, 5-7, 14, 34, and 36--38
Claims l, 2, 5-7, 14, and 34
Appellant argues these claims as a group. Appeal Br. 89-92. We
treat claim 1 as representative, and claims 2, 5-7, 14, 15, and 34 stand or fall
with claim 1.
The Examiner finds that "Moriwaki discloses an article comprising a
plain weave of low friction nylon warp and low friction nylon weft yams
having a linear density between 1,000 and 40 decitex," specifically 350
decitex or about 4 70 decitex. Final Act. 7. The Examiner finds that
6 Because we affirm the Examiner's rejection under 35 U.S.C. § 102(b) as
anticipated by Moriwaki, we need not reach the alternative ground of
rejection under 35 U.S.C. § 103(a). See Appeal Br. 92-97, 100-105, 108-
113.
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Moriwaki's article includes an external plain woven surface capable of
contacting a patient, and has low air permeability. Id. Finally, the Examiner
finds that although "Moriwaki does not explicitly teach the limitations
regarding friction and weight of the article, it is reasonable to presume that
these limitations are inherent." Id. The Examiner finds "[s]upport for these
presumptions ... in the use of similar materials (i.e. nylon yams having a
linear density of 350 decitex or about 470 decitex) and in the similar
production steps (i.e. plain woven) used to produce the article." Id.
Appellant argues that Moriwaki fails to disclose, either expressly or
inherently, the claimed coefficients of friction and that "coefficients of
friction for fabric must be determined by fabric testing." Appeal Br. 90-91
(citing Ex. 15).
A claim is anticipated under 35 U.S.C. § 102(b) only if each element
is found, either expressly or inherently, in a single prior art reference.
Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir.
1987). Where claimed and prior art products
are identical or substantially identical, or are produced by
identical or substantially identical processes, the PTO can
require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of [the]
claimed product. Whether the rejection is based on 'inherency'
under 35 U.S.C. § 102, on 'prima facie obviousness' under 35
U.S.C. § 103,jointly or alternatively, the burden of proof is the
same, and its fairness is evidenced by the PTO' s inability to
manufacture products or to obtain and compare prior art
products.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (footnote and citations
omitted).
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Appellant does not dispute the Examiner's finding that Moriwaki's
fabric comprises "similar materials (i.e. nylon yams having a linear density
of 350 decitex or about 470 decitex)" and that "similar production steps (i.e.
plain woven) [are] used to produce the article." Final Act. 7. In light of
these undisputed findings, we agree with the Examiner that it is reasonable
to conclude that Moriwaki' s fabric possesses the claimed coefficients of
friction, although Moriwaki does not expressly disclose them. See Best, 562
F.2d at 1255.
Therefore, the burden shifts to Appellant to show that Moriwaki' s
fabric does not possess inherently the claimed frictional characteristics. Id.;
see also MPEP 2112(V). Appellant has not carried this burden. Appellant
cites to unspecified portions of the Clark Declaration to support its argument
that "coefficients of friction for fabrics must be determined by fabric
testing." Appeal Br. 90 (citing Ex. 15). However, this evidence shows only
that testing is necessary to determine whether Moriwaki's fabric includes the
claimed frictional characteristics, but Appellant does not direct our attention
to any such testing. Therefore, Appellant has not established that
"[Moriwaki's] products do not necessarily or inherently possess the
characteristics of [the] claimed product." Best, 562 F.2d at 1255.
Appellant also argues that Moriwaki' s fabric includes a covering layer
of thermoplastic resin, which prevents the fabric from having an "external
patient-contacting surface having said plain weave," as required by claim 1.
Appeal Br. 91.
We are unpersuaded by Appellant's argument. Claim 1 does not
require that a plain weave of nylon yams directly contact a patient, as
Appellant suggests. Rather, claim 1 recites a medical protecting sheeting
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comprising a "plain weave of ... nylon ... yams" and "an external patient-
contacting surface having said plain weave." Appeal Br. 140. The
Examiner finds that Moriwaki' s fabric includes a plain weave of nylon yams
and an external surface that is capable of contacting a patient. Final Act. 7.
This external surface "ha[s] said plain weave," as required by the claim,
because Moriwaki' s plain woven nylon yams are part of Moriwaki' s
external surface of thermoplastic resin. See Ans. 15; see also Moriwaki 2:8-
32.
Appellant also argues that Moriwaki' s fabric includes a covering layer
of thermoplastic resin, which prevents the fabric from being "breathable," as
required by claim 1. Appeal Br. 91.
We are unpersuaded by Appellant's argument. The Examiner finds
that Appellant's Specification does not define the term "breathable," and
requires only that a fabric "enable a certain amount of 'breathing."' Final
Act. 7 (citing Spec. 2: 18-19). Therefore, the Examiner finds that "Moriwaki
discloses that the article has low air permeability ... [and] provides 'a
certain amount of breathing."' Id. (citing Moriwaki 4:31-35). Appellant
does not provide any support for a narrower interpretation of the claim term,
and does not dispute the Examiner's finding that Moriwaki provides "a
certain amount of breathing." See Appeal Br. 91; see also Moriwaki 4:31-
35 (disclosing an air permeability rate of "preferably 20 cc/cm2/sec").
Therefore, Appellant has not demonstrated persuasively Examiner error.
Claims 3 6 and 3 7
Appellant argues these claims as a group. Appeal Br. 97-100. We
treat claim 36 as representative, and claim 37 stands or falls with claim 36.
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Appellant presents substantially the same arguments as discussed
above with respect to claim 1. See id. Specifically, Appellant reiterates the
same arguments regarding inherency and breathability. Id. For the reasons
discussed above, Appellant's arguments are unpersuasive.
Appellant also argues that Moriwaki' s fabric includes a covering layer
of thermoplastic resin, which prevents the fabric from having a "low-
friction, external patient-contacting surface," as required by claim 36. Id.
at 91.
We are unpersuaded by Appellant's argument. Claim 3 6 does not
require that a low friction yam directly contact a patient without a covering
layer, as Appellant suggests. Appeal Br. 147. Rather, claim 36 recites a
medical protecting sheeting formed from a "low frictional material," which
includes "a low-friction, external patient-contacting surface." The Examiner
finds that Moriwaki discloses an article comprising low friction nylon yams,
which includes an external surface capable of contacting a patient. Final
Act. 7. This external surface is "low-friction" as claimed, because
Moriwaki's low friction nylon yams are part of Moriwaki's external surface
of thermoplastic resin. See Ans. 15; see also Moriwaki 2:8-32.
Claim 38
Appellant presents substantially the same arguments as discussed
above with respect to claim 1. See Appeal Br. 105-108. Specifically,
Appellant reiterates the same arguments regarding inherency and
breathability. Id. For the reasons discussed above, Appellant's arguments
are unpersuasive.
Appellant also argues that Moriwaki' s fabric includes a covering layer
of thermoplastic resin, which prevents the fabric from having a "low-
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friction, patient-contacting surface," as required by claim 38. Appeal Br.
107.
We are unpersuaded by Appellant's argument. Claim 3 8 does not
require a "low-friction, patient-contacting surface," as Appellant argues.
Rather, claim 38 recites "an external patient-contacting surface." Appeal Br.
14 7. The Examiner finds that Moriwaki discloses an article comprising an
external surface capable of contacting a patient. Final Act. 7. Appellant has
not explained persuasively how Moriwaki's fabric lacks an external surface.
35U.S.C.§103(a)-Moriwaki and Tsuboi-Claim 15
The Examiner finds that Moriwaki fails to specify a linear density of
about 50 decitex, but finds that Tsuboi teaches an article comprising a plain
weave low friction nylon, having a linear density of about 50 decitex. Final
Act. 9. The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to modify Moriwaki' s fabric to have a linear density
of about 50 decitex, as taught by Tsuboi, to provide a finer material for the
article. Id.; see also Ans. 17.
Appellant makes several arguments concerning aspects of Tsuboi that
are not relied upon by the Examiner, and argues that these features teach
away from the Examiner's proposed combination. For example, Appellant
argues that Tsuboi' s disclosed warp and weft crimp rates result in increased
forces that "would likely increase the potential for decubitus ulcers" and that
"would cause harm to a person struck by an airbag of Moriwaki which has
been modified by Tsuboi." Appeal Br. 114--115. Additionally, Appellant
argues that "one of ordinary skill in the art would not look to the teachings
of Tsuboi for motivation to arrive at the low frictional characteristics of the
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present invention." Id. at 114. And Appellant argues that Tsuboi fails to
disclose permeability characteristics of its fabric and would not be relied
upon to provide a "breathable" material. Id. at 116.
We are unpersuaded by each of these arguments because the
Examiner does not rely on Tsuboi for its crimp rates, its frictional
characteristics, or its permeability, and does not conclude that it would have
been obvious to modify Moriwaki' s fabric to include those features. Final
Act. 9; see also Ans. 17. Rather, the Examiner relies on Tsuboi only to
teach a linear density of 50 decitex. Final Act. 9; see also Ans. 1 7. Because
the Examiner's combination does not suggest it would have been obvious to
modify Moriwaki to include Tsuboi's crimp rates, frictional characteristics,
or permeability, Appellant's "teaching away" arguments are unpersuasive.
Appellant also argues that Moriwaki and Tsuboi are non-analogous
art. Appeal Br. 116-11 7.
We are unpersuaded by Appellant's argument. "In order to rely on a
reference as a basis for rejection of the applicant's invention, the reference
must either be in the field of the applicant's endeavor or, if not, then be
reasonably pertinent to the particular problem with which the inventor was
concerned." In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992).
Therefore, Appellant's argument that Moriwaki and Tsuboi are non-
analogous "to themselves" is not germane. Appeal Br. 117. Furthermore,
we agree with the Examiner's findings that Moriwaki and Tsuboi are
analogous to Appellant's invention:
[A ]lthough Moriwaki is not directly related to the medical field
of art, the use of various fabrics can be found in a variety of
fields with a variety of uses. For example, the same material
used for a table cloth may be used for a bed sheet, a curtain, a
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couch cover, and/or a car seat regardless of the different
intended purposes. The new use of an old product is not patent
eligible regardless of the field of the prior art. Further,
Moriwaki teaches the desirability of reducing the coarseness of
the material (column 3, lines 56-58; column 4, lines 3--4) since
a coarse material has the potential to scratch the skin of
someone causing further injury. It would therefore appear that
both Appellant and Moriwaki share the same concern for
reducing the coarseness of a fabric (i.e., friction) for contact
with the skin of a person and are therefore reasonably pertinent
to the same particular problem. Therefore, one having ordinary
skill in the art would find it obvious to consider various fields
of art (such as fabrics used in air bags) when determining all
possible materials that might have the appropriate friction
values ....
[Similarly,] Tsuboi is related to a plain woven fabric of nylon
yams, which is the same field which is reasonably pertinent to
other plain woven nylon fabrics regardless of intended use. The
art of weaving and materials spans various fields of endeavors
and one having ordinary skill in the art concerned with
optimizing a fabric material would not be limited in their
concern for anyone particular field.
Ans. 16-17. Appellant has not demonstrated persuasively that Moriwaki
and Tsuboi, each drawn to plain woven nylon fabrics, are not within
Appellant's field of endeavor or are not reasonably pertinent to the problem
with which Appellant was concerned.
We are unpersuaded by Appellant's argument that the Examiner relies
on hindsight, which is conclusory. Appeal Br. 116-117.
Finally, we are unpersuaded by Appellant's argument that Tsuboi fails
to cure the deficiencies of Moriwaki because we have not found Moriwaki to
be deficient, as discussed supra.
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35U.S.C.§103(a)-Kuehnreich, Holt, and Moriwaki-Claims 1, 8, 9, 16,
17, 20, 22, 27-29, 31, and 32
Claims l, 8, and 9
Appellant argues these claims as a group. Appeal Br. 118-120. We
treat claim 1 as representative, and claims 8 and 9 stand or fall with claim 1.
The Examiner finds that Kuehnreich discloses a shoe bandage but
fails to teach a collar for receiving a user's foot. Final Act. 9. The Examiner
finds that Holt teaches a collar, and concludes it would have been obvious to
one skilled in the art to modify Kuehnreich's shoe bandage to include Holt's
collar, to secure the shoe bandage around a user's ankle. Id. at 10.
The Examiner also finds that Kuehnreich and Holt fail to teach that
the bandage is made from a breathable plain woven sheet of low friction
nylon warp and weft fibers having a linear density between 1,000 and 40
decitex, wherein the sheet has a coefficient of static friction that is
substantially the same as its coefficient of dynamic friction. The Examiner
relies on Moriwaki, as discussed above, for these features, and concludes
that it would have been obvious to one skilled in the art to modify the shoe
bandage taught by Kuehnriech and Holt "to be made from the material
taught by Moriwaki since it has been held to be within the general skill of a
worker in the art to select a known material on the basis of its suitability for
the intended use as a matter of obvious design choice." Id. at 10-11.
We are unpersuaded by Appellant's arguments that Kuehnreich and
Holt fail to disclose a plain woven low friction nylon fabric, see Appeal Br.
118-119, because the Examiner relies on Moriwaki, not Kuehnreich or Holt,
for these features. Final Act. 10-11.
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Appellant argues that Kuehnreich teaches away from the present
invention because Kuehnreich discloses cut outs in the bandage at "pressure
sensitive points" on the patient. Appeal Br. 118.
We are unpersuaded by Appellant's argument. Kuehnreich indicates
that such cut outs are optional and may be provided, e.g., near the ankle,
toes, or heel. Kuehnreich 2:55---65. Appellant has not explained why the
provision of optional cut outs at some portions of the shoe bandage would
discourage a person of ordinary skill in the art from modifying the
remainder of the shoe bandage material. See Final Act. 11; see also Ans.
18. That "Kuehnreich teaches avoidance of its shoe bandage to 'pressure
sensitive points,"' while Appellant's invention "provide[ s] an external
patient contacting surface, especially for patients having decubitus ulcers"
does not establish that "a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994); see
also Reply Br. 3--4.
We are unpersuaded by Appellant's argument that "Moriwaki is
different field of endeavor from Kuehnreich and Holt," because the relevant
question is whether a reference is analogous to Appellant's invention, not to
other prior art references. See Appeal Br. 119; see also Reply Br. 4; In re
Oetiker, 977 F.2d at 1447. As discussed above, we do not find Moriwaki to
be non-analogous.
We are unpersuaded by Appellant's argument that Kuehnreich and
Holt fail to cure the deficiencies of Moriwaki because we have not found
Moriwaki to be deficient, as discussed supra. Appeal Br. 119.
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Finally, we are unpersuaded by Appellant's argument that evidence of
commercial success and unexpected results demonstrates non-obviousness.
Appeal Br. 119; see also id. at 95-97 (citing Ex. 5-13). Appellant has not
directed us to evidence establishing that "the thing (product or method) that
is commercially successful is the invention disclosed and claimed in the
patent." Demaco Corp. v. F. Von Langsdoff Licensing Ltd., 851F.2d1387,
1392 (Fed. Cir. 1988); see also In re Glatt Air Techniques, Inc., 630 F.3d
1026, 1030 (Fed. Cir. 2011) ("Commercial success evidence should be
considered 'so long as what was sold was within the scope of the claims.'").
Although Appellant's brief asserts that the cited Exhibits concern "the
present invention," attorney argument is insufficient to establish such a fact.
See Appeal Br. 119; In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
("Attorney's argument in a brief cannot take the place of evidence.").
Furthermore, general assertions regarding broad features of the product do
not establish that the product discussed in the Exhibits is that claimed. See,
e.g., Ex. 5 ("To prevent friction and pressure relief .... "); Ex. 9
("ParafrictaTM is a new fabric with low friction properties."); Ex. 10 ("To
determine the effectiveness of Parafricta low-friction garments .... ").
Therefore, without establishing that the product is within the scope of the
claims, the alleged evidence of commercial success and unexpected results
lacks adequate nexus to the invention claimed. Demaco, 851 F.2d at 1392.
Claims 16, 17, 20, and 22
Appellant argues claims 16, 17, 20, and 22 separately, but presents the
same arguments discussed above with respect to claim 1. See Appeal Br.
120-121.
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For the same reasons discussed above, Appellant has not persuaded us
of error in the Examiner's rejection of claims 16, 17, 20, and 22.
Claims 27-29, 31, and 32
Appellant argues claims 27-29, 31, and 32 separately, but presents the
same arguments discussed above with respect to claim 1. See Appeal Br.
121-123.
For the same reasons discussed above, Appellant has not persuaded us
of error in the Examiner's rejection of claims 27-29, 31, and 32.
35U.S.C.§103(a)-Kuehnreich, Holt, Moriwaki, and Tsuboi-Claims 19
and 30
Appellant presents substantially the same arguments regarding the
rejection over Kuehnreich, Holt, Moriwaki, and Tsuboi as Appellant
presented regarding the rejection over Moriwaki and Tsuboi. Compare
Appeal Br. 124--130, with id. at 114--117. For the reasons discussed above,
we are unpersuaded.
Additionally, we are unpersuaded by Appellant's argument that
Tsuboi fails to cure the deficiencies of Kuehnreich, Holt, and Moriwaki
because we have not found Kuehnreich, Holt, and Moriwaki to be deficient,
as discussed supra. Appeal Br. 127, 130.
35 U.S.C. § 103(a)-Neilson and Moriwaki-Claims 26, 33, and 39
Claim 26
The Examiner finds that Neilson discloses a method for limiting
epidermal damage by providing and covering a patient's skin with a medical
protection sheeting fabricated from a substantially frictionless material.
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Final Act. 12. The Examiner finds that Neilson's substantially frictionless
material presents a low coefficient of static friction and a low coefficient of
dynamic friction, such that they are "substantially the same." Id. The
Examiner also finds that Neilson fails to teach that the substantially
frictionless material includes certain claimed features (e.g., a plain woven
material; a linear density between 40 and 1,000 decitex; a weight between 50
and 200 g/m2; a coefficient of static friction no more than 20% of a
coefficient of dynamic friction), and relies on Moriwaki, as discussed above,
to teach a fabric having these features. Id. The Examiner concludes that it
would have been obvious to one having ordinary skill in the art to modify
the sheeting used by Neilson with Moriwaki's material because it is within
the general skill of a worker in the art to select a known material on the basis
of its suitability for an intended use. Id. at 12-13.
We are unpersuaded by Appellant's argument that Neilson teaches
away from a plain woven article because Neilson discloses sheets of satin
and sateen. Appeal Br. 171-172. Appellant has not explained persuasively
why a person skilled in the art would have been discouraged from modifying
Neilson to include a plain woven fabric merely because Neilson discloses
satin or sateen. Appellant has not established that the combination would
produce an inoperative device or that one skilled in the art would be
discouraged from the proposed modification. Indeed, the Examiner relies on
Neilson for its teaching of a substantially frictionless material, and Neilson
specifies that any natural or synthetic frictionless material may be chosen.
Ans. 18-19 (citing Neilson 1:32--42)
We are also unpersuaded by Appellant's argument that "Moriwaki is
[in a] different field of endeavor from Neilson," see Appeal Br. 133, because
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the relevant question is whether a reference is analogous to Appellant's
invention, not to other prior art references. See In re Oetiker, 977 F .2d at
1447. As discussed above, we do not find Moriwaki to be non-analogous.
We are also unpersuaded by Appellant's argument that Moriwaki fails
to disclose that its plain woven material is substantially frictionless and,
therefore, one skilled in the art would not have been motivated to replace
Neilson' s substantially frictionless material with Moriwaki' s fabric. Appeal
Br. 133. Appellant's argument does not address the Examiner's conclusion
that it would have been obvious to one skilled in the art to modify Neilson's
sheeting with Moriwaki' s material "since it has been held to be within the
general skill of a worker in the art to select a known material on the basis of
its suitability for the intended use as a matter of obvious design choice."
Final Act. 12-13. As discussed above, Moriwaki inherently includes low
friction properties. Therefore, Appellant has not persuasively explained why
such a combination would not have been obvious to one skilled in the art.
We are unpersuaded by Appellant's argument that the Examiner relies
on hindsight, which is conclusory. Appeal Br. 133.
Claim 33
Appellant argues claim 33 separately, but presents the same
arguments discussed above with respect to claim 26. See Appeal Br. 133-
136. Therefore, Appellant has not persuaded us of error in the Examiner's
rejection of claim 33.
Claim 39
Appellant argues claim 39 separately, but presents the same
arguments discussed above with respect to claim 26. See Appeal Br. 13 6-
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139. Therefore, Appellant has not persuaded us of error in the Examiner's
rejection of claim 39.
DECISION
We AFFIRM the Examiner's rejection of claims 1, 2, 5-7, 14, 15, 34,
and 36-38 under 35 U.S.C. § 102(±) as claiming subject matter not invented
by Appellant.
We AFFIRM the Examiner's rejection of claims 1, 2, 5-7, 14, 34, and
36-38 under 35 U.S.C. § 102(b) as anticipated by Moriwaki. We do not
reach the Examiner's alternate rejection under 35 U.S.C. § 103(a).
We AFFIRM the Examiner's rejection of claim 15 under 35 U.S.C.
§ 103(a) as unpatentable over Moriwaki and Tsuboi.
We AFFIRM the Examiner's rejection of claims 1, 8, 9, 16, 17, 20,
22, 27-29, 31, and 32 under 35 U.S.C. § 103(a) as unpatentable over
Kuehnreich, Holt, and Moriwaki.
We AFFIRivI the Examiner's rejection of claims 19 and 30 under 35
U.S.C. § 103(a) as unpatentable over Kuehnreich, Holt, Moriwaki, and
Tsuboi.
We AFFIRM the Examiner's rejection of claims 26, 33, and 39 under
35 U.S.C. § 103(a) as unpatentable over and Moriwaki.
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
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