Ex Parte Riesinger

Patent Trial and Appeal Board

May 24, 2018

12091969 (P.T.A.B. May. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/091,969 07/31/2008
75628 7590 06/07/2018
RANKIN, HILL & CLARK LLP
23755 LORAIN ROAD, SUITE 200
NORTH OLMSTED, OH 44070
FIRST NAMED INVENTOR
Birgit Riesinger
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.
JOS-18312 7285
EXAMINER
HAWTHORNE, OPHELIA AL THEA
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
06/07/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
7 5628@rankinhill.com
digges@rankinhill.com
shea@rankinhill.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BIRGIT RIESINGER
Appeal2017-008827
Application 12/091,969
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
LYNNE H. BROWNE, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Birgit Riesinger (Appellant) appeals under 35 U.S.C. § 134 from the
rejection of claims 47---66. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
Appeal2017-008827
Application 12/091,969
CLAIMED SUBJECT MATTER
Claims 47, 59, and 66 are independent. Claim 47, reproduced below,
is illustrative of the claimed subject matter:
47. A method for in depth-cleansing of a wound, the method
compnsmg:
providing an absorbent article that comprises
an inner layer in the form of a mat, which consists
essentially of a mixture of strongly
osmotically active substances, namely
superabsorbent polymers in the form of
superabsorbent particles, and substances that
are osmotically comparatively weaker than
the strongly osmotically active substances or
are osmotically inactive, wherein more than
40% by weight of the inner layer consists of
said superabsorbent polymers, and
an outer covering comprising two cover layers
which are liquid-permeable and which are
joined together to form a pocket within which
the inner layer is located, said inner layer
being freely movable within the pocket; and
placing the absorbent article on the wound such that the
inner layer is in sufficient proximity to the wound
to establish an osmotic pressure via which wound
fluids, namely endogenous wound exudate, are
removed from the wound in a direction of flow to a
skin surface and absorbed into the absorbent article
such that hyperhydration is reduced both in a
surface region and in a tissue depth of the wound.
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Application 12/091,969
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hansen us 5,807,364 Sept. 15, 1998
Silver us 5,965,149 Oct. 12, 1999
Roe US 6,498,284 B 1 Dec. 24, 2002
Hobbs US 6,645,618 B2 Nov. 11, 2003
Rippon US 2004/0028739 Al Feb. 12,2004
Hoon US 2005/0019380 Al Jan.27,2005
Flick US 2006/0264796 Al Nov. 23, 2006
Silcock US 2007 /0020318 Al Jan.25,2007
Raad US 7,651,661 B2 Jan.26,2010
Krautkramer US 7,858,841 B2 Dec. 28, 2010
Blott US 7,964,766 B2 June 21, 2011
REJECTIONS
I. Claim 54 1 stands rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
1 In the Final Action, the Examiner discusses claim 54 under the header
"Claim Objections." Final Act. 2. However, the Examiner's explanation of
the "objection" includes the statement that "the metes and bounds of the
claimed subject matter[] renders the scope of the claim indefinite" which is
a statement commonly used by Examiners in setting forth a rejection based
on 35 U.S.C. § 112, second paragraph. Id. In the Answer, the Examiner
reiterates this explanation, but does not include the reference to a claim
objection. Ans. 3. Rather, the Examiner's reiteration follows the statement
"[t]he following ground(s) of rejection are applicable to the appealed
claims." Id. We thus understand claim 54 to stand rejected under 35 U.S.C.
§ 112, second paragraph.
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Appeal2017-008827
Application 12/091,969
II. Claims 47-52, 54, 55, 58, 59, and 63 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Silcock and Krautkramer,
as evidenced by Hansen, Silver, Blott, Hobbs, and Rippon.
III. Claim 53 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Silcock, Krautkramer, and Blott, as
evidenced by Hansen, Silver, Blott, Hobbs, and Rippon.
IV. Claims 56 and 57 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Silcock, Krautkramer, and Roe, as evidenced
by Hansen, Silver, Blott, Hobbs, and Rippon.
V. Claim 60 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Silcock, Krautkramer, and Hoon, as
evidenced by Hansen, Silver, Blott, Hobbs, and Rippon.
VI. Claims 61 and 62 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Silcock, Krautkramer, and Flick, as
evidenced by Hansen, Silver, Blott, Hobbs, and Rippon.
VII. Claims 64 and 65 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Silcock, Krautkramer, and Raad, as
evidenced by Hansen, Silver, Blott, Hobbs, and Rippon.
VIII. Claim 66 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Silcock, Krautkramer, and Blott, as
evidenced by Hansen and Silver.
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Appeal2017-008827
Application 12/091,969
DISCUSSION
Rejection I
Referring to Manual of Patent Examining Procedure, "MPEP"
§ 2173.05(c)II, the Examiner determines that
Claim 54 recites the limitation "the inner layer has a mass per
unit area of at least 300 g/mA2," in the claim[] but does not recite
an upper limit to the range pertaining to the mass per unit area
claimed and thus is an open-ended range which creates
ambiguity with respect to the metes and bounds of the claimed
subject matter claimed [sic] and thus renders the scope of the
claim indefinite.
Final Act. 2.
In response to this rejection, Appellant contends that "the Examiner is
simply wrong regarding claim 54." Appeal Br. 18. In support of this
contention, Appellant points out that claim 54 depends from claim 4 7 and
that claim 4 7 does not define a mass per unit area for the inner layer. Appeal
Br. 18. As such, Appellant submits that "claim 4 7 covers an inner layer
having a mass per unit area from greater than O (it would not be possible to
have zero mass per unit area) to infinity" and that "[ c ]laim 54 narrows what
is covered in claim 4 7 by eliminating the portion of claim 4 7 from greater
than Oto 300 g/m2." Id.
Appellant further asserts that "[ t ]he section of the MPEP cited by the
Examiner does not support the objection. Id. MPEP § 2173.05(c)II states:
Open-ended numerical ranges should be carefully analyzed for
definiteness. For example, when an independent claim recites a
composition comprising "at least 20% sodium" and a dependent
claim sets forth specific amounts of nonsodium ingredients
which add up to 100%, apparently to the exclusion of sodium, an
ambiguity is created with regard to the "at least" limitation
(unless the percentages of the nonsodium ingredients are based
on the weight of the nonsodium ingredients).
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Appeal2017-008827
Application 12/091,969
MPEP § 2173.05(c)II (emphasis added). Here, it is dependent claim 54 that
recites "the inner layer has a mass per unit area of at least 300 g/m2" and no
ambiguity exists based on this limitation and any other limitations in claim
4 7, including the limitation "wherein more than 40% by weight of the inner
layer consists of said superabsorbent polymers."
Accordingly, we do not sustain the Examiner's decision rejecting
claim 54 as indefinite.
Re} ection II
The Examiner finds that Silcock, Krautkramer, Hansen, Silver, Blott,
Hobbs, and Rippon disclose or suggest all the limitations of claims 4 7 and
59. See Final Act. 3-5, 7-9. In particular, the Examiner finds that Silcock
discloses "superabsorbent polymers in the form of superabsorbent particles,
as for example, a low-moisture hydro gel matrix" and a "hydro gel matrix
compris[ing] 'modified starches' which is considered a particle as evidenced
by Hansen (5,807,364) in ([Col.14], lines 16-17)." Id. at 3. The Examiner
further finds that "Silver shows 'modified starches' as particles in powdered
form in ([Col.3], lines 65-67) and ([Col.4], lines 1 and 46-50)." Id.
Appellant contends that the Examiner's characterization of "the low-
moisture hydrogel matrix in the wound dressing of Silcock et al. as being in
the form of a particle, [] is quite clearly wrong" (Appeal Br. 12). In support
of this contention, Appellant explains that Silcock discloses that in an early
manufacturing step, its hydrocolloid matrix is in the form of a gel with
oxidized regenerated cellulose particles (ORC) dispersed therein, and that
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Application 12/091,969
the gel and ORC mixture is dried thereafter to form a solid film which is
applied to the wound. Id. (citing Silcock ,r,r 6, 21, 36).
Noting that although"[ o ]ne conceivably could start out with particles
of a 'modified starch' [ such as the starches taught by Silver and Hanson] in
the process according to Silcock et al.," Appellant points out that "one
would have to hydrate those particles to form an aqueous gel into which the
ORC could be dispersed." Appeal Br. 12. Given this fact, Appellant further
argues that"[ w ]hen the 'modified starch' particles [ of Silver or Hanson] are
hydrated to form a gel, they cease to be in the form of particles." Id. at 13.
Appellant is correct. See, e.g., Silcock ,r,r 6, 21, 36. Thus, the Examiner's
finding that Silcock discloses "superabsorbent polymers in the form of
superabsorbent particles" is in error. Final Act. 3.
In addition, the Examiner's characterization of claim 4 7 and 59 as
product-by-process claims is in error, as these claims are directed to
methods, not products. See Appeal Br. 20-24 (Claims App.).
For these reasons, the rejection of claims 47 and 59, and claims 48-
52, 54, 55, 58, and 63 depending therefrom, is not sustained.
Rejections III-VIII
Rejections III-VIII rely on the same erroneous finding with respect to
Silcock as Rejection II. Final Act. 10-16. Roe, Hoon, Flick, and Raad are
not relied on to cure the deficiencies of this finding. Accordingly, we do not
sustain Rejections III-VIII for the reasons discussed supra.
DECISION
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Appeal2017-008827
Application 12/091,969
The Examiner's rejection of claim 54 under 35 U.S.C. § 112, second
paragraph, as being indefinite is REVERSED.
The Examiner's rejections of claims 47---66 under 35 U.S.C. § 103(a)
are REVERSED.
REVERSED
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