Ex Parte Whitely

Patent Trial and Appeal Board

May 2, 2018

12668610 (P.T.A.B. May. 2, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/668,610 0111112010
22150 7590 05/04/2018
F. CHAU & ASSOCIATES, LLC
130 WOODBURY ROAD
WOODBURY, NY 11797
FIRST NAMED INVENTOR
Jeffrey Thomas Whitely
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.
8131-44 (2438USOO) 7358
EXAMINER
GOOD, SAMANTHA M
ART UNIT PAPER NUMBER
3739
NOTIFICATION DATE DELIVERY MODE
05/04/2018 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):
mail@chauiplaw.com
garramone@chauiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY THOMAS WHITELY
Appeal2017-005476
Application 12/668,610 1
Technology Center 3700
Before DONALD E. ADAMS, JAMES A. WORTH and TIMOTHY G.
MAJORS, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This Appeal under 35 U.S.C. § 134(a) involves claims 9, 10, 13, 14,
17, 18, 21, 22, 24, and 25 (Br. 2 3). Examiner entered rejections under
35 U.S.C. § 102(b) and 35 U.S.C. § 103(a). We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Appellant identifies the real party in interest as "Rapid Aid Corp." (Br. 3).
2 Appellant's June 14, 2016 Appeal Brief.
Appeal2017-005476
Application 12/668,610
STATEMENT OF THE CASE
Appellant's disclosure "relates to thennotherapeutic pads that may be
applied to parts of the body to provide alternatively a hot or cold sensation
and/or therapeutic effect" (Spec. 1: 4--5). Appellant's claim 9 is
representative and reproduced below:
9. A thermotherapeutic pad for providing heat or cold to a body
part comprising:
a thermally conductive envelope containing a material for
releasing heat, the material comprising substantially free
flowing grains of cereal, and
a pocket formed by a layer of thermally conductive
material for removably holding a cold pack adjacent to the
envelope, the pocket being disposed on a first face of the
envelope, whereby the thermotherapeutic pad may provide heat
by heating the material and placing the envelope against the
body part, and the thermotherapeutic pad may absorb heat by
cooling the cold pack and placing the cooled cold pack into the
pocket and placing at least a portion of the pocket in direct
contact with the body part.
(Br. 18.)
The claims stand rejected as follows:
Claim 9 stands rejected under 35 U.S.C. § 102(b) as anticipated by
Clark. 3
Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Clark and Fisher. 4
3 Clark et al., US 5,603,727, issued Feb. 18, 1997.
4 Fisher et al., US 2005/0256555 Al, published Nov. 17, 2005.
2
Appeal2017-005476
Application 12/668,610
Claim 17 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Clark and Der Ovanesian. 5
Claim 25 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Clark and Mills. 6
Claims 9, 10, 13, 14, 17, 18, 21, 22, 24, and 25 stand rejected under
35 U.S.C. § 103(a) as unpatentable over the combination of Der Ovanesian
and Mills.
FACTUAL FINDINGS (FF)
FF 1. Appellant's Figure 3 is reproduced below:
25-~
J _..:.. ..... .....i.:-------~"'+l-
~~===n- -------- ~.....,._
~~._
Appellant's "Figure 3 is a side cross-sectional view of [Appellant's]
thermotherapeutic pad" (Spec. 2: 10-11). Appellant discloses that
the thermotherapeutic pad 1 consists of a thermally conductive
envelope 5 enclosing a quantity of free flowing grains of cereal
10 and a pouch or pocket 20 adapted to contain a removable
cold pack 15.
The envelope 5 is preferably made of a soft flexible
material, for example a cotton or flannel fabric ....
5 Der Ovanesian, US 6,083,256, issued July 4, 2000.
6 Mills, US 7,182,777 B2, issued Feb. 27, 2007.
3
Appeal2017-005476
Application 12/668,610
[T]he thermotherapeutic pad 1 provides a holder for
holding a removable cold pack 15 against [an] envelope [ 5].
The holder may for example comprise a pouch or pocket 20
formed by a fabric layer 22 for containing the removable cold
pack 15, which may be placed in the pocket 20 provided on the
exterior of the envelope 5. The pocket 20 is preferably
closeable with a fastening means 25 .... The fabric layer 22 is
formed from a fabric which is thermally conductive, for
example the same fabric as the envelope 5, so that when a
cooled cod pack 15 is disposed in the pocket 20 heat can be
transferred from a body part through the fabric layer 22 to the
cold pack 15.
(Spec. 3: 24- 5: 8; see also id. at 1: 13-14 (Appellant discloses that cotton
is a thermally conductive material).)
FF 2. Appellant's Figure 5 is reproduced below:
<"' <
r·~~;l>l'""'".e: vi-
Appellant's "Figure 5 is a side cross-sectional view of [an] embodiment of
[Appellant's] thermotherapeutic pad" "having a sleeve to facilitate holding
the pad" (Spec. 2: 12-15). According to Appellant "the thermotherapeutic
pad 1 may provide a sleeve 30 on the face opposite the face of the envelope
5 bearing the pocket 20 .... The sleeve 30 may alternatively be a pouch, a
strap or other means for supporting the thermotherapeutic pad 1 on a user's
hand" (Spec. 7: 7-14).
4
Appeal2017-005476
Application 12/668,610
FF 3. Clark "relates to ... a thermal pack which contains a natural
temperature retaining material such as com and has barriers and
communicating compartments for easily locating the temperature retaining
materials in the desired areas" (Clark 1: 6-10).
FF 4. Clark's Figure 1 is reproduced below:
/ l l /' .
I/ !
1
t ll(
11 /1 II I ~ · i t •.•
j ; . ·'.'
I
,.·.--
·.:·::
.·· ..
' .. ,•
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42
\,,
,-)".,_(:• (';-
( ..
(.:
{,1
' \ \ 1\_··
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l
10
:.)
' ' 38 '-.._.,-_41;,i FIG. 1
Clark's
FIG. 1 discloses the thermal pack generally designated as
10. The pack 10 has a pliable container 12 which may be made
from any suitable material which is not only pliable, but
durable. In our preferred embodiment, the material of choice is
muslin. The container 12 has a top surface 14 and a bottom
surface 16.
(Clark 3: 55-59 (emphasis omitted); see Office Act. 7 3.)
7 Examiner's Non-Final Rejection mailed December 15, 2015.
5
Appeal2017-005476
Application 12/668,610
FF 5. Clark's Figure 2 is reproduced below:
28 24 w 14 ~a.
~: