Ex Parte Tuma

Patent Trial and Appeal Board

Feb 28, 2019

13261985 (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/261,985 11/10/2014
513 7590 03/04/2019
WENDEROTH, LIND & PONACK, L.L.P.
1030 15th Street, N.W.,
Suite 400 East
Washington, DC 20005-1503
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Jan Tuma
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.
61983 3565
EXAMINER
LEE, MICHELLE J
ART UNIT PAPER NUMBER
3786
NOTIFICATION DATE DELIVERY MODE
03/04/2019 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):
eoa@wenderoth.com
kmiller@wenderoth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAN TUMA
Appeal2018-001259 1
Application 13/261,985
Technology Center 3700
Before WILLIAM V. SAINDON, PAUL J. KORNICZKY, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner's decision to reject claims 17-38. We have jurisdiction under
§ 6(b ). We affirm-in-part.
1 We reference herein the Specification filed November 10, 2014 ("Spec."),
Appeal Brief filed December 8, 2016 ("Appeal Br."), and Reply Brief filed
March 24, 2017 ("Reply Br."), as well as the Final Office Action mailed
July 20, 2016 ("Final Act."), Examiner's Answer mailed February 17, 2017
("Ans."), and Advisory Action mailed November 3, 2017 ("Adv. Act.").
2 Appellant is the Applicant, Gottlieb Binder GmbH & Co. KG, which,
according to the Appeal Brief, is the real party in interest. Appeal Br. 1.
Appeal2018-001259
Application 13/261,985
CLAIMED SUBJECT MATTER
Claims 1 7 and 3 7 are the independent claims on appeal. Independent
claim 17, reproduced below, is illustrative of the claimed subject matter:
17. A medicinal product for care of an individual having an
injury with a surface area, comprising:
a earner;
a first functional surface on said carrier configured to
cover an area adjacent to the injury;
first stem parts projecting from said first functional surface
and having free front-side ends forming adhesion parts
adhereable on the individual or a second functional surface
primarily by van der Waals forces;
a functional care surface on said carrier configured to be
adhered on the surface area of the injury; and
second stem parts projecting from said functional care
surface and having free front-side ends forming adhesion parts
adhereable to the surface area of the injury primarily by van der
Waals forces.
REFERENCES
The Examiner relies on the following references in rejecting the
claims on appeal:
Murata
Lindsay et al.
Macedo
Pusel et al.
us 4,808, 172
US 2005/0148984 Al
US 2007 /0078365 Al
US 2011/0294931 Al
2
Feb.28, 1989
July 7, 2005
Apr. 5, 2007
Dec. 1, 2011
("Lindsay")
("Pusel")
Appeal2018-001259
Application 13/261,985
REJECTIONS 3
The Examiner rejects the claims on appeal as follows:
claim 38 under 35 U.S.C. § 112, second paragraph, as indefinite;
claims 17-24, 27-35, and 37 under 35 U.S.C. § 103(a) as
unpatentable over Macedo and Lindsay;
claims 25 and 26 under 35 U.S.C. § 103(a) as unpatentable over
Macedo, Lindsay, and Pusel; and
claims 36 and 38 under 35 U.S.C. § 103(a) as unpatentable over
Macedo, Lindsay, and Murata.
ANALYSIS
Indefiniteness
In determining that claim 3 8 is indefinite, the Examiner finds there is
insufficient antecedent basis for the term "the stem elements" recited in the
claim. Final Act. 3; Ans. 14. Indeed, there is no previous recitation of
"stem elements" in claim 3 8, or claim 3 7 from which it depends, to clarify to
what "the stem elements" refers. See Ex parte McAward, No. 2015-006416,
2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (holding that
during prosecution, "[a] claim is indefinite when it contains words or
phrases whose meaning is unclear" (alteration in original) (quoting In re
Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014))).
Appellant does not refute the Examiner's rejection, but relies on an
Amendment filed concurrently with the Reply Brief. Reply Br. 2. The
Examiner, however, has not entered the Amendment. Adv. Act.
3 The Examiner has withdrawn the rejection of claim 36 under 35 U.S.C.
§ 112, second paragraph. Ans. 14.
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Appeal2018-001259
Application 13/261,985
In view of the foregoing, the Examiner has shown persuasively that
the lack of antecedent basis for the term "the stem elements" renders the
claim unclear and, therefore, indefinite. Accordingly, we sustain the
rejection of claim 38.
Obviousness
In rejecting independent claim 1 7, the Examiner relies on Macedo for
disclosing the invention substantially as claimed. Final Act. 4. In particular,
the Examiner relies on the portion of film 1 not within the cavity holding
pad 3 for disclosing the recited "first functional surface," and the portion of
film 1 within the cavity for disclosing the recited "functional care surface,"
as shown in the Examiner's annotated version of Macedo' s Figure 4,
reproduced below. Id.; Ans. 15.
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Appeal2018-001259
Application 13/261,985
The Examiner annotated Macedo' s Figure 4, which is a detailed
cross-section view of the disclosed adhesive bandage product, to illustrate
the first functional and functional care surfaces. Ans. 15; Macedo ,r 29. The
Examiner also finds adhesive 2 on film 1 is adhereable to the individual, to
the surface of the injury, and to a second functional surface. Final Act. 4.
The Examiner acknowledges:
Macedo is silent on the adhesive on said first functional surface
being first stem parts projecting from the surface and having free
front-side ends forming adhesion parts that are adhereable
primarily by van der Waals forces; and the adhesive on said
functional care surface being second stem parts projecting from
the surface and having free front-side ends forming adhesion
parts that are adhereable primarily by van der Waals forces,
as recited in the claim. Id. The Examiner further finds Lindsay teaches
adhesive 30 comprised of stem parts 32 projecting from surface 42 and has
free front-side ends 40 forming adhesion parts that are adhereable primarily
by van der Waals forces. Id. The Examiner then determines it would have
been obvious to modify Macedo's bandage so that the adhesive on the first
functional surface and the functional care surface is stem parts projecting
from the surface and having free front-side ends forming adhesion parts
adhereable by van der Waals forces, as taught by Lindsay, to have an
adhesive that "[does] not leave a residue when removed." Id. at 5 (quoting
Lindsay ,r 3).
In response to Appellant's assertion that the adhesive on the portion of
film 1 contacting pad 3 is not on a functional care surface in contact with an
injury as recited in independent claim 17 (Appeal Br. 4---6), the Examiner
explains that the claim does not require the functional care surface or the
second stem parts to be "directly adhereable" to an injury (Ans. 15).
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Application 13/261,985
According to the Examiner, "the interpretation of Macedo (where the
adhesive and functional care surface are adhereable to the injury via the pad)
and Lindsay ( where the adhesive of Macedo is modified to be stem
fasteners) meets the limitations ... of the claims." Id.
Appellant challenges the Examiner's interpretation of the claim.
Reply Br. 3--4. In particular, Appellant contends the only reasonable
interpretation of the limitations reciting the "functional care surface" and
"second stem parts" requires "that the stem parts on the functional care
surface be adhered 'directly' on the surface of the injury." Id. at 3.
Appellant's argument is persuasive.
When construing claims,
the PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage
as they would be understood by one of ordinary skill in the art,
taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant's specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997); see also Chef Am., Inc.
v. Lamb-Weston, Inc., 358 F.3d 1371 (Fed. Cir. 2004) (explaining claim
terms are to be given their ordinary meaning, absent any indication that their
use in a particular context changes their meaning). If the specification does
not assign or suggest a particular definition to a claim term, it is appropriate
to consult a general dictionary definition of the word for guidance in
determining the ordinary and customary meaning of the claim term as
viewed by a person of ordinary skill in the art. Comaper Corp. v. Antee,
Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010).
Here, independent claim 17 recites "a functional care surface on said
carrier configured to be adhered on the surface area of the injury" and
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Appeal2018-001259
Application 13/261,985
"second stem parts ... adhereable to the surface area of the injury primarily
by van der Waals forces." The Specification does not provide an explicit
definition for "adhere" or any related form thereof, e.g., "adhered,"
"adhereable," so we tum to its ordinary and customary meaning. "Adhere"
ordinarily means "to stay attached; stick fast; cleave; cling." Adhere,
DICTIONARY.COM, http://www.dictionary.com/browse/adhere (last visited
Jan. 28, 2019). Thus, the ordinary meaning of "a functional care surface on
said carrier configured to be adhered on the surface area of the injury"
requires the functional care surface to be configured to stick to the injury.
Similarly, the ordinary meaning of "second stem parts ... adhereable to the
surface area of the injury primarily by van der Waals forces" would require
the second stem to be positioned such that the stems are stuck: ( 1) to the
injury itself and (2) primarily by way of van der Waals forces. These
interpretations are consistent with the usage of "adhere" and its related forms
throughout the Specification. See, e.g., Spec. 2-3 (noting that adhesion to
the body via van der Waals forces provides for removal without injury),
4 ( contrasting a bandage that has adhesion on the edge of the wound area
from a bandage adhering to an injury), 4--5 (distinguishing between adhesion
to an injury and adhesion to some other part of the medicinal product).
In the Examiner's proposed combination, the so-called functional care
surface and the second stem parts would be adhered to pad 3, not the injury.
To the extent the Examiner believes the second stem parts stick to the injury
primarily by way of van der Waals forces despite the presence pad, the
Examiner has not put forth sufficient explanation that would support such a
position. The Examiner's arguments regarding direct adhesion (Ans. 14--15)
are not supported by a claim construction, nor is it clear how adherence to a
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Application 13/261,985
pad that in tum merely touches an injury is the same as adherence to an
injury primarily by van der Waals forces. The Examiner does not address
that the claim requires the functional care surface and the second stem parts
to be adhered to the injury, not merely held in place nearby.
Furthermore, the Examiner's reason to add the stem parts of Lindsay
to the bandage of Macedo, i.e., to "not leave a residue when removed"
(Final Act. 5), is reasonable as to the first stem parts, which in the
Examiner's proposed combination, are adhered to the skin adjacent the
injury. However, this is not a good reason as to the second stem parts,
which adhere to the pad. Because the second stem parts adhere to the pad,
not the injury, there is no apparent reason to be concerned with residue. See
Appeal Br. 5 (arguing that Lindsay discloses stems adhered to skin).
In view of the above, we do not sustain the Examiner's rejection of
independent claim 17 and claims 18-24 and 27-35 depending therefrom.
Independent claim 3 7 includes similar limitations to independent claim 17,
and the Examiner's rejection relies on the same combination of Macedo and
Lindsay. Final Act. 11-12; Ans. 14--15. We, therefore, do not sustain the
Examiner's rejection of independent claim 3 7 for the same reasons as
independent claim 17. The Examiner's rejections of claims 25, 26, 36, and
38 also suffer from the same deficiency as the rejection of the independent
claims. Final Act. 12-15. We similarly do not sustain the Examiner's
rejections of these claims.
DECISION
The Examiner's decision to reject claim 38 under 35 U.S.C. § 112,
second paragraph, is affirmed.
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Appeal2018-001259
Application 13/261,985
The Examiner's decision to reject claims 17-38 under 35 U.S.C.
§ 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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