Ex Parte Reid

Board of Patent Appeals and Interferences

Jan 8, 2007

10725837 (B.P.A.I. Jan. 8, 2007)

1
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TONY REID
____________

Appeal No. 2006-1887
Application No. 10/725,837
Technology Center 3700
____________

ON BRIEF
____________

Before CRAWFORD, BAHR and HORNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's rejection of claims 1-10.
We AFFIRM.
Appeal No. 2006-1887
Application No. 10/725,837

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BACKGROUND
The appellant's invention relates to a multiple sleeve apparatus for applying
pressure to a body limb. Independent claims 1 and 5 are illustrative of the
invention and read as follows:
1. A system for applying pressure to a body limb, said
system comprising:
a first sleeve having a foam lining configured to be
slid over the limb and to apply an inward pressure onto
the limb; and
a second sleeve configured to be slid over
substantially the entire length of the first sleeve and to
apply additional inward pressure along the length of the
limb.

5. A system for applying pressure to an arm, said system
comprising:
an innermost therapeutic pressure sleeve (TPS)
having ridges formed over an inner surface and
configured to be slid over the entire length of the arm
from the shoulder to the wrist and to apply an inward
pressure thereon; and
at least a second sleeve configured to be slid over
substantially the entire length of the TPS to apply
additional inward pressure onto the limb.

The examiner relies upon the following as evidence of unpatentability:
Myers 814,795 Mar. 13, 1906
Deasy 5,171,211 Dec. 15, 1992

Appeal No. 2006-1887
Application No. 10/725,837

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The appellant seeks review of the examiner’s rejection of claims 1-10 as
being unpatentable over Deasy in view of Myers. The obviousness-type double
patenting rejection set forth in the final rejection (mailed January 5, 2005) has
apparently been withdrawn in view of the terminal disclaimer filed August 24,
2005, which has been approved.
Rather than reiterate in their entirety the conflicting viewpoints advanced by
the examiner and the appellant regarding this appeal, we make reference to the
examiner's answer (mailed October 4, 2005) for the examiner's complete reasoning
in support of the rejection and to the appellant's brief (filed August 26, 2005) for
the appellant's arguments thereagainst.

OPINION
In reaching our decision in this appeal, we have given careful consideration
to the appellant's specification and claims, to the applied prior art, and to the
respective positions articulated by the appellant and the examiner. Having
considered all of the evidence and argument before us, we conclude that the
examiner’s obviousness rejection should be sustained. Our reasons for this
conclusion follow.
Deasy discloses an elastic garment, proven very effective in treating
edema (col. 2, ll. 56-57), including a pant-like portion 12, a pair of tubular leg
portions 14, a coat-like portion 16 and a pair of tubular arm portions 18 (col. 3, ll.
33-37). The tubular arm portions 18 are sized to extend from the wrist of a user up
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Application No. 10/725,837

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beyond the elbow joint 48 so as to form an overlap with the sleeves 46 of the coat-
like portion 16 (col. 4, ll. 30-34; Fig. 7) and the leg portions 14 are sized such that
the upper edge 40 surrounds the user’s leg at a location above the knee joint 24 so
as to form an overlap with the leg segments 22 of the pant-like portion 12 at the
knee joint when both are worn by an individual (col. 4, ll. 5-10,; Fig. 6). Each
component part of the garment is made of an elastic material and is sized so as to
be compressive on the body of the user and includes an enlarged bead along the
edges thereof to actually compress the body more than the remaining portions of
the components and in effect act like a garter in compressing the body part of the
user immediately beneath the bead (col. 4, ll. 46-53).
In rejecting claims 1-10, the examiner reads the first or innermost sleeve on
Deasy’s arm portion 18 and the second sleeve on the sleeve 46 of the coat-like
portion 16. According to the examiner (answer, pp. 3-4), the sleeve 46 is
configured to be slid over substantially the entire length of the arm portion 18, as
seen in Fig. 7, and to apply additional inward pressure along the length of the limb
(citing col. 4, ll. 35-45).
The appellant argues that Deasy shows overlap of the sleeve 46 with the arm
portion 18 only at the elbow and thus does not disclose the sleeve 46 configured to
be slid over substantially the entire length of the sleeve (brief, p. 4). The examiner
contends that Fig. 7 of Deasy clearly shows an overlap not only at the elbow but
also above the elbow and below the elbow and that such overlap establishes the
sleeve 46 being configured to be slid over substantially (i.e., being largely but not
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Application No. 10/725,837

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wholly) the entire length of arm portion 18 (answer, p. 6). We agree with the
examiner.
The term “substantially” has a plain meaning of “largely” or
“approximately” rather than “perfectly,” and is to be interpreted as such “unless
something in the prosecution history imposed the ‘clear and unmistakable
disclaimer’ needed for narrowing beyond this plain-language interpretation.”
Playtex Products Inc. v. Proctor & Gamble Co., 400 F.3d 901, 907, 73 USPQ2d
2010, 2015 (Fed. Cir. 2005). We find no such clear and unmistakable disclaimer in
the specification or prosecution history of the present application.
Figs. 1, 2A and 2B of the present application appear to illustrate the inner
sleeve 18 and outer thin fabric compression sleeve 40 (or inflatable compression
sleeve 50) having the same length, with the outer sleeve being slid over the entire
length of the inner sleeve. Fig. 6, in contrast, illustrates a different embodiment of
the outer sleeve wherein a shortened sleeve 40a, identical in construction to sleeve
40 but of a shorter length than sleeve 18, can be used with sleeve 18 (present
specification, p. 14). The present specification further informs us, at page 14, that
“a plurality of sleeves 40a, (which can be of various lengths equal or shorter than
sleeve 18), can be applied one over another at various locations on sleeve 18.”
There is nothing in the specification of the present application that clearly and
unmistakably limits claim 1 or claim 5 to the embodiment illustrated in Figs. 1, 2A
and 2B and we have been consistently advised by our reviewing court against
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improperly limiting a claim to a particular or preferred embodiment. See Playtex,
400 F.3d at 907, 73 USPQ2d at 2015.
As for the prosecution history of the present application, in the remarks
accompanying the amendment filed October 28, 2004, in which the language
“substantially the entire length of” was added to claims 1 and 5, the appellant
pointed out that the intent of appellant’s invention is to apply “a generally uniform
pressure” (remarks, pp. 4 and 5) to treat lymphedema, as contrasted with the bands
4 of Myers that are intended to locally compress the limb, not provide uniform
pressure over the length of the bandage (remarks, p. 4) and that the amendment to
claims 1 and 5 was intended to clarify that distinction over the localized
compression application of Myers (remarks, pp. 4 and 5). In light of the above
prosecution history, we understand the claim limitation “over substantially the
entire length of the first sleeve [TPS]” to require a second or outer sleeve that
extends over a significantly larger portion of the length of the inner sleeve than the
bands 4 of Myers so as to apply a generally uniform pressure, that is, a pressure
distribution that is not as localized as that applied by the bands 4 of Myers.
As illustrated in Fig. 7 of Deasy, the sleeve 46 is slid over or overlaps
significantly more than half of the length of the arm portion 18 in a region
extending from well above the elbow to well below the elbow of the user, thus
applying a generally uniform pressure along the length of the arm portion 18, as
contrasted with localized regions of compression as effected by the bands 4 of
Myers. The overlap of the sleeve 46 over the arm portion 18 thus satisfies the
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“configured to be slid over substantially the entire length of the first sleeve [TPS]”
limitation of claims 1 and 5.
Myers discloses an elastic bandage having a body 1 “made of any suitable
material, as rubber or other flexible substance or compounds, that may be rendered
plastic in the process of construction” (p. 1, ll. 35-38), the body 1 being provided
with a series of irregular inner surfaces 3 or inner raised parts where extra pressure
is needed (p. 1, ll. 40-41 and 85-86), and a series of outer encircling bands 4,
“which may either be integral or separately applied in order to give greater
compression than the bandage alone at any desired point” (p. 1, ll. 42-46). The
examiner finds that Myers teaches a system for applying pressure comprising a
first innermost therapeutic pressure sleeve (bandage 1) having a foam lining with
ridges 3 formed over an inner surface (answer, p. 4) and the appellant does not
dispute that finding. The examiner then makes a determination that it would have
been obvious to modify Deasy to include foam material for lining the inner surface
of the first sleeve (arm portion 18) for the purpose of providing comfortable
cushioning for the wearer during use and also “to include a foam lining with ridges
formed over an inner surface, as taught and suggested by Myers,” for the purpose
of increasing the effectiveness of the compression therapy in the treatment of
edema and improving the user’s stamina (answer, p. 4).
The appellant argues that the localized compression function of Myers is far
different from and antithetical to both the appellant’s invention and that of Deasy
and that, consequently, the combined teachings of the references actually teach
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away from the modification proposed by the examiner and that, in any event, there
is no suggestion in the references that would have provided any motivation for
their combination to arrive at the claimed invention (brief, pp. 4 and 5). We do not
agree. While the overlap of the sleeve 46 and arm portion 18 of Deasy is
substantial, as discussed above, so as to effect a generally uniform pressure along
such overlap region, Deasy also provides enlarged beads along the edges of the
sleeve 46 and arm portion 18 to actually compress the body more than the
remaining portions of the components and in effect act like a garter in compressing
the body part of the user immediately beneath the bead (col. 4, ll. 49-53).
Accordingly, the recognition in both Deasy and Myers of the advantages in a body
compression system of providing both a base level of generally uniform
compression and a level of added compression in localized regions as desired
indicates that the systems of Deasy and Myers are more alike and more similar to
appellant’s invention in both structure and purpose than the appellant would have
us believe. The provision of an inner lining having ridges or “a series of irregular
inner surfaces” as taught by Myers in the arm portion 18 of Deasy would have
been obvious to one of ordinary skill in the art at the time of appellant’s invention
in order to give greater compression than the arm portion 18 alone at any desired
point, not just the edges of the arm portion 18 and sleeve 46 where enlarged beads
are provided.
In light of the above, the argument in appellant’s brief fails to persuade us of
any error on the part of the examiner in rejecting independent claims 1 and 5. We
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Application No. 10/725,837

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thus sustain the rejection of claims 1 and 5, and dependent claims 2-4 and 6-10
which appellant has not argued separately apart from claims 1 and 51, as being
unpatentable over Deasy in view of Myers.

CONCLUSION
To summarize, the decision of the examiner to reject claims 1-10 is
REVERSED.

1 Claims not argued separately apart from a representative claim stand or fall with the representative claim (see In re
Young, 927 F.2d 588, 590, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991); In re Wood, 582 F.2d 638, 642, 199 USPQ 137,
140 (CCPA 1978)).
Appeal No. 2006-1887
Application No. 10/725,837

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No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a). See 37 CFR § 1.136(a)(1)(iv).
AFFIRMED

MURRIEL E. CRAWFORD )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JENNIFER D. BAHR ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LINDA E. HORNER )
Administrative Patent Judge )
Appeal No. 2006-1887
Application No. 10/725,837

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