Ex Parte Stec

Patent Trial and Appeal Board

Aug 21, 2018

14160682 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/160,682 01/22/2014
135866 7590 08/21/2018
LAW OFFICE OF LOUIS WOO
717 NORTH FAYETTE STREET
ALEXANDRIA, VA 22314
FIRST NAMED INVENTOR
AlanE. Stec
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.
0107/0076 5381
EXAMINER
BEHRINGER, LUTHER G
ART UNIT PAPER NUMBER
3737
MAIL DATE DELIVERY MODE
08/21/2018 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 ALANE. STEC
(APPLICANT: SMITHS MEDICAL ASD, INC.)
Appeal2017-007943
Application 14/160,682 1
Technology Center 3700
Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge ADAMS.
Opinion Dissenting-in-part by Administrative Patent Judge FITZPATRICK.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This Appeal under 35 U.S.C. § 134(a) involves claims 1-8 (Final
Act. 2 1). 3 Examiner entered rejections under 35 U.S.C. §§ l 12(b) and
103(a). We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Appellant identifies "Smiths Medical ASD, Inc." as the real party in
interest (App. Br. 3).
2 Office Action mailed August 9, 2016.
3 Pending claims 16-28 stand withdrawn from consideration (Final Act. 1 ).
Appeal2017-007943
Application 14/160, 682
STATEMENT OF THE CASE
Appellant's disclosure "relates to convective warming blankets and
more particularly to an underbody blanket configured for enhanced airflow
distribution and has openings where [] the arms of the patient may be
extended" (Spec. ,r 1 ). Claim 1 is representative and reproduced below:
1. An underbody blanket, comprising:
an air impermeable upper sheet and an air impermeable
lower sheet bonded to each other at their respective peripheries
to form an inflatable structure having a periphery defining
therewith in a head portion, a body portion and a foot portion,
each of the head and foot portions having longitudinal sides that
have the same length that narrow in a straight tapered manner
toward each other from opposite sides of the body portion to
respective head and foot ends of the structure so that each of the
head and foot portions has same length tapered sides;
two elongate openings each having a given width and a
given length formed by a corresponding non-ending seal that
encircles the each opening, each non-ending seal having a
length extending longitudinally along substantially the length of
the body portion, the elongate openings sandwiching a non-
inflatable area of the body portion whereon the body of a
patient rests when the patient is positioned onto the upper sheet
of the blanket;
at least one inlet port provided at the structure; and
apertures formed in the upper sheet to enable heated air
input via the inlet port to inflate the structure to escape,
respective rows of apertures provided proximately along each
longitudinal side of the non-inflatable body area positioned to
face the patient when the structure is inflated so that the heated
air output from those respective rows of apertures is directed to
the patient, each of the respective rows of apertures positioned
between the non-inflatable body area and a corresponding one
of the elongate openings.
(App. Br. 17 (emphasis added).)
2
Appeal2017-007943
Application 14/160, 682
The claims stand rejected as follows:
Claims 1-8 stand rejected under 35 U.S.C. § 112(b ).
Claims 1-3, 7, and 8 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Anderson, 4 Allaire, 5 and Pierre. 6
Claim 4 stands rejected under 35 U.S.C. § I03(a) as unpatentable over
the combination of Anderson, Allaire, Pierre, and Berke. 7
Claims 5 and 6 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Anderson, Allaire, Pierre, and Starr. 8
Definiteness:
ISSUE
Does the preponderance of evidence support Examiner's conclusion
that Appellant's claims 1-8 are indefinite?
ANALYSIS
Examiner finds that Appellant's claim 1, from which Appellant's
claims 2-8 ultimately depend, "requires 'an air impermeable upper sheet'
and 'apertures formed in the upper sheet to enable heated air input via the
inlet port to inflate the structure to escape"' (Final Act. 4). According to
Examiner, "[i]t is unclear how an air impermeable sheet can also have
apertures in it that are permeable to air" (id.). In this regard, Examiner
reasons that "an initial reading of [Appellant's] claim 1 would direct one of
ordinary skill to utilize an air impermeable upper sheet. However, a further
4 Anderson et al., US 2006/0052851 Al, published Mar. 9, 2006.
5 Allaire, Jr., US 4,461,048, issued July 24, 1984.
6 Pierre et al., US 2010/0211139 Al, published Aug. 19, 2010.
7 Berke, US 5,165,400, issued Nov. 24, 1992.
8 Starr et al., US 2009/0248120 Al, published Oct. 1, 2009.
3
Appeal2017-007943
Application 14/160, 682
reading of the claim directs one of ordinary skill to utilize an upper sheet
having apertures therein, which would render the sheet to be air permeable"
(Ans. 11 ). Thus, Examiner concludes "that it is unclear how a sheet with
apertures in it can be considered air impermeable and the [O]ffice maintains
the finding of indefinites of [Appellant's] claim 1" (id.). We are not
persuaded.
The underbody blanket set forth in Appellant's claim 1 requires, inter
alia, "an air impermeable upper sheet and an air impermeable lower sheet
bonded to each other at their respective peripheries to form an inflatable
structure" (App. Br. 17). Thus, Appellant's claim 1 defines the material of
the upper and lower sheets as "air impermeable," such that when the sheets
are "bonded to each other at their respective peripheries ... an inflatable
structure" is formed (see id.; see also id. at 7-8; Reply Br. 2-3). The
concept of an "air impermeable" sheet, as used in Appellant's claim 1, is,
therefore, not indefinite.
Having defined what the sheets are made of and how they are bonded
together to form an inflatable structure, Appellant's claim 1 goes on to
explain that "apertures [are] formed in the upper sheet to enable heated air
input via the inlet port to inflate the structure to escape, ... so that the heated
air output from those ... apertures is directed to the patient" (App. Br. 17).
Thus, having first defined how two air impermeable sheets are bonded
together to form an inflatable structure, Appellant's claim 1 moves on to
describe how apertures may be placed in the inflatable structure, which was
described above, to allow heated air to escape in a specific manner (id.; see
id. at 7-8; Reply 2-3).
4
Appeal2017-007943
Application 14/160, 682
Therefore, when Appellant's claim 1 is read as a whole, we are not
persuaded by Examiner's findings or conclusion. To the contrary, we find
Appellant's claim 1 provides a clear and detailed description of the claimed
underbody blanket.
CONCLUSION
The preponderance of evidence fails to support Examiner's conclusion
that Appellant's claims 1-8 are indefinite. The rejection of claims 1-8 under
35 U.S.C. § 112(b) is reversed.
Obviousness:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
ANALYSIS
The rejection over the combination of Anderson, Allaire, and Pierre:
According to Examiner, "[a] person of ordinary skill in the art, upon
reading [ Anderson, Allaire, and Pierre] would have recognized the
desirability of [having an underbody blanket that comprises, inter alia,]
elongate openings sandwiching a non-inflatable area of the body portion"
(Final Act. 7; see Ans. 5). To reach this conclusion, Examiner finds that
Anderson to discloses Appellant's claimed invention, including two elongate
openings, but fails to disclose, inter alia, that the two elongate openings
sandwich a non-inflatable area of the body portion of Anderson's underbody
blanket (Final Act. 5---6; see also Ans. 3--4). To make up for the foregoing
deficiency in Anderson, Examiner relies upon Pierre to disclose, inter alia,
elongate openings sandwiching a non-inflatable area (Final Act. 7; see Ans.
5
Appeal2017-007943
Application 14/160, 682
4--5). Examiner relies on Allaire to address subject matter unrelated to
elongate openings sandwiching a non-inflatable area (see Final Act. 6; see
Ans. 4).
Appellant correctly points out, however, that, notwithstanding
Examiner's assertion to the contrary, Pierre does not disclose elongate
openings and, therefore, cannot disclose two elongate openings that
sandwich a non-inflatable area (App. Br. 11 ). In response, Examiner asserts
that "Anderson [] was relied upon to teach [] elongate openings" and Pierre
"was relied upon to teach the ... 'non-inflatable body area"' (Ans. 13; see
Reply Br. 4--5 ("[E]xaminer now has changed his reasons for relying on
Pierre")). Thus, on this record, Examiner concedes that Anderson fails to
disclose two elongate openings that sandwich a non-inflatable area of the
body portion of Anderson's underbody blanket and fails to identify an
evidentiary basis on this record that makes up for this deficiency in
Anderson (see Ans. 13; cf Final Act. 5-7; Ans. 3-5).
In sum, Examiner failed to establish an evidentiary basis on this
record to support a conclusion of obviousness. In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992) ("[T]he [E]xaminer bears the initial burden, on review
of the prior art or on any other ground, of presenting a prima facie case of
unpatentability").
The combination of Anderson, Allaire, and Pierre with Berke or Starr:
Examiner failed to establish that either of Berke or Starr make up for
the deficiencies set forth above with respect to the combination of Anderson,
Allaire, and Pierre (see Final Act. 9-12; see also Ans. 7-10).
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Appeal2017-007943
Application 14/160, 682
CONCLUSION
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness.
The rejection of claims 1-3, 7, and 8 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Anderson, Allaire, and Pierre is
reversed.
The rejection of claim 4 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Anderson, Allaire, Pierre, and Berke is reversed.
The rejection of claims 5 and 6 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Anderson, Allaire, Pierre, and Starr is
reversed.
REVERSED
7
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALANE. STEC
(APPLICANT: SMITHS MEDICAL ASD, INC.)
Appeal2017-007943
Application 14/160,682
Technology Center 3700
Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.
FITZPATRICK, Administrative Patent Judge, dissenting-in-part.
I dissent from the decision to reverse the Examiner's rejection of
claims 1-8 as indefinite.
Claim 1 recites "an air impermeable upper sheet" and "apertures
formed in the upper sheet to enable heated air input via the inlet port to
inflate the structure to escape." The Examiner determined that it "is unclear
how an air impermeable sheet can also have apertures in it that are
permeable to air." Final Act. 4. I agree that it is unclear.
The majority disagree. In doing so, they construe "impermeable"
within the phrase "an air impermeable upper sheet" as limiting the material
from which the upper sheet is made, but not the upper sheet itself. See supra
4 ("Having defined what the sheets are made of ... , Appellant's claim 1
goes on to explain that 'apertures [are] formed in the upper sheet to enable
Appeal2017-007943
Application 14/160, 682
heated air input via the inlet port to inflate the structure to escape, ... so that
the heated air output from those ... apertures is directed to the patient')
( quoting claim 1 ). In contrast, I construe "impermeable" as modifying the
"upper sheet" itself.
In my judgment, the upper sheet cannot be both (1) "impermeable"
and (2) have "apertures formed in" it to allow air "to escape."
I would sustain the rejection of claims 1-8 as indefinite.
2