Ex Parte Ricketts

Board of Patent Appeals and Interferences

Dec 7, 2010

11343438 - (D) (B.P.A.I. Dec. 7, 2010)

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.
11/343,438 01/31/2006 Robert A. Ricketts DDI-03 6074
26875 7590 12/07/2010
WOOD, HERRON & EVANS, LLP
2700 CAREW TOWER
441 VINE STREET
CINCINNATI, OH 45202
EXAMINER
CONLEY, FREDRICK C
ART UNIT PAPER NUMBER
3673
MAIL DATE DELIVERY MODE
12/07/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ROBERT A. RICKETTS
____________________

Appeal 2009-009752
Application 11/343438
Technology Center 3600
____________________

Before WILLIAM F. PATE, III, MICHAEL W. O’NEILL, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-009752
Application 11/343,438

STATEMENT OF THE CASE
Robert A. Ricketts (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-9. We have jurisdiction under
35 U.S.C. § 6(b) (2002).
We AFFIRM.

THE INVENTION
Appellant’s claimed invention is directed to a patient rescue bag for
keeping a person warm, dry and comfortable (Spec. 1: para. [0001] and
Spec. 2: para. [0005]).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. An improved patient rescue bag, comprising:
(a) a lower portion having a generally rectangular shape
with a length and a width, having two longitudinal edges and
two transverse edges and having a head area near one of said
transverse edges and a foot area near the other of said
transverse edges, said lower portion comprising:
(i) an outer surface, wherein said outer surface
includes a first portion of a first quick connect/disconnect
fastener device that extends proximally to and along said
two longitudinal edges;
(ii) an interior surface, wherein said inner surface
includes a first portion of a second quick
connect/disconnect fastener device that extends
proximally to and along said transverse edge near said
foot area;
iii) an inner portion between said outer surface and
said interior surface, wherein said inner portion
comprises thermal insulative material;
(b) an upper portion having a generally rectangular shape
with a length and a width, having two longitudinal edges and
two transverse edges and having a head area near one of said
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Application 11/343,438

transverse edges and a foot area near the other of said
transverse edges, wherein the width of the upper portion is
greater than the width of the lower portion, said upper portion
comprising:
(i) an outer surface;
(ii) an interior surface, wherein said inner surface
includes a second portion of said first quick
connect/disconnect fastener device that extends
proximally to and along said two longitudinal edges,
wherein the longitudinal edges on the upper portion are
folded downwardly and inwardly to extend under the
longitudinal edges of the lower portion, said second
portion of the first quick connect/disconnect fastener
device including means for coming into contact with and
easily attaching to or detaching from said first portion of
the first quick connect/disconnect fastener device, and a
second portion of said second quick connect/disconnect
fastener device that extends proximally to and along said
transverse edge near said foot area, said second portion
of the second quick connect/disconnect fastener device
including means for coming into contact with and easily
attaching to or detaching from said first portion of the
second quick connect/disconnect fastener device; and
(iii) an inner portion between said outer surface
and said interior surface, wherein said inner portion
comprises thermal insulative material.

THE REJECTIONS
The following rejections by the Examiner are before us for review:
1. Claims 1-5 and 9 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Ricketts (US 5,386,604, issued Feb. 7, 1995).
2. Claims 6-8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ricketts in view of Burns (US 4,124,908, issued
Nov. 14, 1978).

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Application 11/343,438

ISSUES
The issues before us are: (1) whether the Examiner erred in
concluding that Ricketts, which describes the claimed elements in a different
orientation, anticipates the invention called for in claim 1 (App. Br. 9); and
(2) whether the Examiner erred in concluding that the combined teachings of
Ricketts and Burns would have led a person having ordinary skill in the art
to patient rescue bag with handles having an interconnecting web portion, as
called for in claim 6 (App. Br. 13).

ANALYSIS
Issue 1 - Anticipation rejection of claims 1-5 and 9 over Ricketts
Appellant argues claims 1-5 and 9 as a group (App. Br. 6, 11). As
such, we select claim 1 as representative of the group, and claims 2-5 and 9
will stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2009).
Appellant contends that Ricketts does not describe that the width of
the upper portion is greater than the width of the lower portion and that
the longitudinal edges on the upper portion are folded downwardly and
inwardly, as called for in claim 1 (App. Br. 9). Appellant contends that
Ricketts describes the opposite what is called for in the claims (App. Br. 10).
Appellant contends that to “assert that the prior art device [Ricketts] ‘could
or might be turned upside down’ is unsupported by the prior art and
unfounded in law” (App. Br. 10-11).
The Examiner found that “the orientation, as asserted by Appellant,
appears to be the only discernable difference between the claims of the
present invention and the prior art of record” (Ans. 9).
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Appeal 2009-009752
Application 11/343,438

The Examiner found that orientation does not preclude the finding of
anticipation (id.).
We agree with the Examiner and find that Ricketts describes all
of claimed elements, albeit, in a different orientation. We do not find
Appellant as contesting this finding. Thus, we find that Appellant is seeking
patent protection through an article of manufacture claim for a particular
orientation of a patented device. Whether Ricketts’ layer 30 is called a
bottom layer or a top layer, that is, whether Ricketts’ patient rescue bag 10
is facing upward or downward, does not alter the fact that the Ricketts
describes the patient rescue bag elements called for in claim 1. We find that,
in this instance, orientation itself does not negate anticipation. To find
otherwise would encourage individuals to seek patent protection through an
article of manufacture claim for particular orientations of a device, even
those devices which are patented. See Kalman v. Kimberly-Clark Corp., 713
F.2d 760, 772 (Fed. Cir. 1983) (It is not necessary that the reference teach
what the subject application teaches, but only that the claim read on
something disclosed in the reference, i.e., that all of the limitations in the
claim be found in or fully met by the reference.)
We affirm the rejection of independent claim 1, and dependent claims
2-5 and 9, which fall with claim 1.

Issue 2 - Obviousness rejection of claims 6-8 over Ricketts in view of Burns
Appellant argue claims 6-8 as a group (App. Br. 12, 14). As such, we
select claim 6 as representative of the group, and claims 7 and 8 will stand or
fall with claim 6. 37 C.F.R. § 41.37(c)(1)(vii) (2009).
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Application 11/343,438

Appellant contends that Burns does not cure the deficiency they noted
regarding Ricketts (App. Br. 13). Appellant contends that Burns does not
describe the claimed handles (id.).
The Examiner found (1) that Ricketts describes at least two pairs of
opposite side gripping handles 64, 70, as called for in claim 6 (Ans. 7), (2)
that Ricketts fails to describe handles having an interconnecting web (id.),
and (3) that Burns describes a pair of handles 76, 78, 80, 82 having an
interconnecting web of material (id.).
The Examiner concluded that it would have been obvious to a person
having ordinary skill in the art to modify the teachings of Ricketts by
providing Ricketts’ handles 64, 70 with a web of interconnecting material as
taught by Burns (id.).
We find that Appellant has not contested the combinability of the
teachings of Ricketts and Burns. We find that Appellant argues the cited
references individually, while the Examiner’s conclusion of obviousness is
based on a combination of references. The test for obviousness is whether
the references, taken as a whole, would have suggested appellant's invention
to a person having ordinary skill in the art at the time the invention was
made. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re
Keller, 642 F.2d 413, 426 (CCPA 1981) (One cannot show nonobviousness
by attacking references individually where the rejections are based on
combinations of references.).
Accordingly, we affirm the rejection of claim 6, and claims 7 and 8
which fall with claim 6.

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Appeal 2009-009752
Application 11/343,438

CONCLUSIONS
The Examiner has not erred in concluding that Ricketts, which
describes the claimed elements in a different orientation, anticipates the
invention called for in claim 1.
The Examiner has not erred in concluding that the combined teachings
of Ricketts and Burns would have led a person having ordinary skill in the
art to patient rescue bag with handles having an interconnecting web portion,
as called for in claim 6.

DECISION
The decision of the Examiner to reject claims 1-9 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)(1)(iv) (2007).

AFFIRMED

JRG

WOOD, HERRON & EVANS, LLP
2700 CAREW TOWER
441 VINE STREET
CINCINNATI, OH 45202
7