Jay Michael. Pensler

Patent Trials and Appeals Board

Aug 13, 2019

14656707 - (D) (P.T.A.B. Aug. 13, 2019)

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.
14/656,707 03/12/2015 Jay Michael Pensler Pensler-2 2334
32132 7590 08/13/2019
LAMORTE & ASSOCIATES P.C.
P.O. BOX 434
YARDLEY, PA 19067
EXAMINER
LEWIS, KIM M
ART UNIT PAPER NUMBER
3786
NOTIFICATION DATE DELIVERY MODE
08/13/2019 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):
mail@uspatlaw.com
malamorte@verizon.net
uspatlaw1@verizon.net
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte JAY MICHAEL PENSLER
__________

Appeal 2018-009163
Application 14/656,707
Technology Center 3700
__________

Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
LISA M. GUIJT, Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection2 of claims 12–14 and 16–20. Claims 1–11 and 15 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Jay Michael Pensler is identified as the real party in interest. Br. 2.
2 Appeal is taken from the Final Office Action dated Aug. 31, 2017.
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STATEMENT OF THE CASE
Claim 12, the sole independent claim on appeal, reproduced below
with disputed limitations italicized for emphasis, is exemplary of the subject
matter on appeal.
12. A method of protecting a wound, said method comprising
the steps of:
providing a volume of a skin adhesive;
providing a segment of elastic tape having a plurality of
apertures cut therein, wherein said segment of elastic tape is
fabricated from a material that has elastic properties and is
porous to said skin adhesive, wherein said segment of adhesive
tape can be elastically stretched into a stretched condition;
stretching said segment of elastic tape into said stretched
condition;
adhering said segment of elastic tape over said wound in
said stretched condition, wherein at least some of said plurality
of apertures extend over the wound and wherein said segment of
elastic tape compresses said wound.

THE REJECTIONS3
I. Claims 12–14, 16, and 17 stand rejected under 35 U.S.C.
§ 102(a)(1) as being anticipated by, or alternatively, under 35 U.S.C. § 103
as unpatentable over, Lutri ’036 (US 2005/0015036 A1; published Jan. 20,
2005).
II. Claim 18 stands rejected under 35 U.S.C. § 103 as unpatentable
over Lutri ’036 and Lutri ’712 (US 7,122,712 B2; issued Oct. 17, 2006).

3 The After-Final Amendment canceling claims 1–11 and 15 is entered and
overcomes the rejection of claims 12–14, and 16–20 under 35 U.S.C. § 112,
first paragraph. See Adv. Act. 2; Final Act. 3.
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III. Claim 19 stands rejected under 35 U.S.C. § 103 as unpatentable
over Lutri ’036 and VanDruff (US 2002/0193721 A1; published Dec. 19,
2002).
IV. Claim 20 stands rejected under 35 U.S.C. § 103 as unpatentable
over Lutri ’036 and Jonn (US 2009/0076542 A1; published Mar. 19, 2009).

ANALYSIS
Rejection I
Anticipation by Lutri ’036
Appellant does not present arguments for dependent claims 13, 14, 16,
and 17 apart from the arguments presented for independent claim 12. Br. 4–
7. We select claim 12 as representative, and claims 13, 14, 16, and 17 stand
or fall with claim 12. See 37 C.F.R. § 41.37(c)(1)(iv).
Regarding independent claim 12, the Examiner finds that Lutri ’036
discloses the method of claim 12 (Final Act. 4–5), including, inter alia, the
step of providing a segment of an elastic tape that is fabricated from a
material that has elastic properties (id. (citing Lutri ’036 ¶¶ 23, 27, Figs. 1,
3–16); see also Ans. 7) and is porous to a skin adhesive (id. (citing Lutri
’036 ¶¶ 23, 27, Fig. 15); see also id. at 3; Ans. 9; Adv. Act. 2) as claimed.
The Examiner also finds that Lutri ’036 discloses adhering the segment of
elastic tape over a wound in a stretched condition, as claimed. Final Act. 5
(citing Lutri ’036 ¶ 34, Figs. 11–13); see also Ans. 7–8.
Appellant argues that Lutri ’036 does not disclose the claimed steps of
“providing a segment of elastic tape . . . wherein said segment of elastic tape
is fabricated from a material that has elastic properties and is porous to said
skin adhesive” and “wherein said segment of adhesive tape can be elastically
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stretched into a stretched condition.” Br. 8. In support, Appellant submits
that, in Lutri ’036, “[n]o importance is given to the absorbency or non-
absorbency of the tape material” and “[t]he porosity of the tape material is
not important because no skin adhesive is applied to the side piece[s] of
tape.”4 Id. at 6. As such, Appellant argues that Lutri ’036’s adhesive is only
applied directly to the wound, whereas Appellant’s “tape can be saturated
with the skin adhesive and bonded to the skin using the skin adhesive.” Id.;
see also id. at 10.
Appellant’s argument that Lutri ’036 does not disclose “providing a
segment of elastic tape . . . fabricated from a material that has elastic
properties,” as claimed supra, is unpersuasive, because Lutri ’036 discloses
that “[m]aterials used to make the tape can be . . . rubber.” Lutri ’036 ¶ 23.
The term “rubber” is defined as “an elastic substance that is obtained by
coagulating the milky juice of any of various tropical plants (as of the genera
Hevea and Ficus), is essentially a polymer of isoprene, and is prepared as
sheets and then dried.”5 Thus, by a preponderance of evidence, Lutri ’036
discloses a “segment of elastic tape [that] is fabricated from a material that
has elastic properties,” as claimed.
Appellant’s argument that Lutri ’036 does not disclose “providing a
segment of elastic tape . . . fabricated from a material that . . . is porous to [a]
skin adhesive,” as claimed supra, is also unpersuasive.

4 Appellant points out that Lutri ’036 “discloses a bandage with side sections
of tape that are not glued into place.” Br. 7; cf. Lutri ’036, ¶ 4 (disclosing
that the surgical bandage is “an adhesive strip with an opening or openings
through which tissue adhesive may be applied to a wound”).
5 https://www.merriam-webster.com/dictionary/rubber (last accessed July
24, 2019) (emphasis added).
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First, we note that Appellant’s mere reiteration of the claim language
does not inform us of error in the Examiner’s findings. See Br. 8; 37 C.F.R.
§ 41.37(c)(1)(iv) (statements that merely point out what a claim recites are
not considered to present an argument for separate patentability of the
claim); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (Rule
41.37 requires more than recitation of the claim elements and a naked
assertion that the elements are not found in the prior art).
Further, the Examiner determines that the surgical bandage of Lutri
’036 is porous to a skin adhesive because Lutri ’036 discloses that
“[m]aterials used to make the tape can be absorbent” (Lutri ’036, ¶ 23) and
the Examiner “interprets ‘absorbent’ as having pores” (Adv. Act. 2). See
also Final Act. 3–5. An ordinary definition of the claim term “porous,”
consistent with the Specification, is “admitting the passage of gas or liquid
through pores or interstices,”6 and an ordinary definition of the term
“absorbent” is “able to take in liquids especially through the surface.”7
Appellant does not apprise us of error in the Examiner’s determination that
because Lutri ’036 discloses that the material of the bandage (i.e., rubber)
may be absorbent, then Lutri ’036 also discloses that the rubber material
may be porous so as to be absorbent. Notably, it is well known in the art of
wound dressings to “employ a porous ‘bonding pad’ which acts as a matrix
for adhesive.” Lutri ’036 ¶ 4; see also Lutri ’712 2:33–36 (disclosing
bandages having a porous bonding member: 33–36), VanDruff ¶¶ 6, 31, 40
(disclosing bandages made of a material that is porous or is a permeable

6 https://www.thefreedictionary.com/porous (last accessed July 24, 2019).
7 https://dictionary.cambridge.org/us/dictionary/english/absorbent (last
accessed July 24, 2019).
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medium); Jonn ¶¶ 38, 39 (disclosing an adhesive-containing wound closure
device that can be porous).
We further note that claim 12 does not require applying skin adhesive
to side pieces of the elastic tape or saturating the elastic tape with skin
adhesive. See also Ans. 8 (explaining that “Appellant argues features that
are not present in claim 12, for example, a tape that is absorptive to the skin
adhesive being used and saturating the tape with the skin adhesive to bind it
in place on the skin”); In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
(limitations not appearing in the claims cannot be relied upon for
patentability). Although claim 12 recites that the “segment of elastic tape is
fabricated from a material that is porous to said skin adhesive,” claim 12
does not require the application of skin adhesive over the surface of the
elastic tape.
Appellant argues that Lutri ’036 does not disclose the claimed step of
“stretching said segment of elastic tape into said stretched condition” and
“adhering said segment of elastic tape over said wound in said stretched
condition.” Br. 8. Appellant submits that, in Lutri ’036, “the bandage is
applied over a wound in a traditional manner,” in that “the bandage is
attached to one end of the wound and is then pulled to close the wound.” Id.
at 6 (citing Lutri ’036, Figs. 11–13). According to Appellant, “[a]lthough
the Lutri Publication states that the bandage can be made of many materials,
eve[n] rubber, [Lutri ’036] makes no disclose of stretching the bandage into
a stretched condition and applying that bandage over the wound in that
stretched condition.” Id.
These contentions are unpersuasive. Appellant acknowledges that
Lutri ’036 discloses a tape made of rubber, i.e., elastic as discussed supra,
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and that the tape is pulled to close the wound. Id. Notably, Lutri ’036
discloses “[o]nce one side of the surgical bandage has been placed and is
adherent, the opposing wound edges should be brought into close
approximation by pulling, with appropriate tension or traction, on the end
that has not been placed on or adhered to the skin surface” (Lutri ’036, ¶ 31
(emphasis added)) and “[a]fter the edges of the wound, laceration or surgical
incision are securely held together in close approximation, a tissue adhesive
may be applied” (id. at ¶ 34 (emphasis added); see also id. at ¶ 4, 32). As
such, Lutri ’036 necessarily discloses “stretching said segment of elastic tape
into said stretched condition” and “adhering said segment of elastic tape
over said wound in said stretched condition” as claimed.
Accordingly, we sustain the Examiner’s rejection of independent
claim 12 under 35 U.S.C. § 102(a)(1) as being anticipated by Lutri ’036.
Claims 13, 14, 16, and 17 fall with claim 12.
Obviousness over Lutri ’036
Alternatively, the Examiner indicates that assuming arguendo that
Lutri ’036 does not disclose stretching the elastic tape, it would have been
obvious to modify the method of Lutri ’036 to stretch the elastic tape to pull
the elastic tape and provide appropriate traction or tension to bring the
wound edges into close approximation. Final Act. 5.
Having affirmed the anticipation rejection of the claim 12 over Lutri
’036, we also conclude that Lutri ’036 also renders claim 12 obvious. See In
re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002) (“It is well settled that
‘anticipation is the epitome of obviousness.’”).
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Even if Lutri ’036 does not disclose stretching the elastic tape, we
note that Appellant’s contentions against the obviousness rejection over
Lutri ’036 are unpersuasive.
Appellant contends that “the Examiner has failed to provide any
articulated reasoning.” Br. 10–11.
However, the Examiner provides a reason with rational underpinning
for the proposed modification in stating that “it would have been obvious to
one having ordinary skill in the art to stretch the tape when pulling the tape
with appropriate traction or tension when the wound edges are brought into
close approximation (see para. 0031).” Final Act. 5.
Appellant argues that “the modification proposed by the Examiner
changes the principle of operation of the references” because “[t]he Lutri
publication discloses a bandage tape that is simply placed over a wound like
a Band-Aid®,” “[t]he Lutri publication relies upon the adhesive of the tape
to hold the tape to the skin” and “[i]f the present invention were made in
such a manner, the resulting product would not and could not operate in the
same manner as the present invention.” Br. 11.
We first note that in stating that “[i]f the present invention were made
in such a manner, the resulting product would not and could not operate in
the same manner as the present invention,” Appellant is arguing that the
principle of operation of Appellant’s invention is changed––rather that of
Lutri ’036. Further, we fail to see how stretching the elastic tape to apply
over the wound would prevent or change the operation of Lutri ’036’s
bandage, which is “facilitat[ing] application of tissue adhesive to close and
seal wounds.” See Lutri ’036, Abstract. We thus are not persuaded by
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Appellant’s contention that “the modification proposed by the Examiner
changes the principle of operation of the references.” Br. 11.
Accordingly, we sustain the Examiner’s rejection of claims 12–14, 16,
and 17 under 35 U.S.C. § 103 as unpatentable over Lutri ’036.
Rejection II
Claim 18 depends indirectly from claim 12 and recites “wherein said
solid borders occupy between 1% and 25% of said width of said segment of
elastic tape.” Br. 16 (Claims App.).
The Examiner acknowledges that Lutri ’036 does not disclose this
limitation and relies on Lutri ’712 for disclosing this missing limitation.
Final Act. 8.
Appellant contends that “[t]he ’712 Lutri patent does not make any
disclosures concerning the use of bandage tape having porous side sections
that are glued into place and/or a bandage tape stretched in its application”
and that Lutri ’712 “does not address any of the deficiencies of the primary
Lutri publication as applied to the independent claim.” Br. 13.
Because Appellant relies on the arguments provided for independent
claim 12, and as we find no deficiencies in the Examiner’s rejection of claim
12 as being anticipated by or obvious over Lutri ’036, we likewise sustain
the Examiner’s rejection of claim 18 as being obvious over Lutri ’036 and
Lutri ’712.
Rejection III
Claim 19 depends indirectly from claim 12 and recites “wherein said
plurality of apertures occupy between 50% and 97% of said width of
said segment of elastic tape.” Br. 17 (Claims App.).
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The Examiner acknowledges that Lutri ’036 does not disclose this
limitation and relies on VanDruff for disclosing this missing limitation.
Final Act. 8–9.
Appellant contends that “[t]he VanDruff patent makes no disclosure
of the mesh being elastic or of the mesh material being porous so it can be
saturated with skin adhesive after being applied over a wound.” Br. 13.
This argument is unpersuasive. First, the Examiner does not rely on
VanDruff for disclosing a mesh being elastic or made of a porous material.
Second, claim 19 does not require that the elastic tape is saturated with skin
adhesive after being applied over a wound. In re Self, 671 F.2d at 1348.
Accordingly, we sustain the Examiner’s rejection of claim 19 under
35 U.S.C. § 103 as unpatentable over Lutri ’036 and VanDruff.
Rejection IV
Claim 20 depends from claim 12 and recites “wherein said segment
of elastic tape has a tape thickness of between 8 mils and 16 mils.” Br. 17
(Claims App.).
The Examiner acknowledges that Lutri ’036 does not disclose this
limitation and relies on Jonn for disclosing this missing limitation. Final
Act. 9–10.
Appellant contends that “[t]he Jonn Publication makes no disclosure
of tape that is saturated with skin adhesive after being applied over a wound.
Furthermore, the Jonn publication does not disclose the tape mesh being
applied in a stretched condition.” Br. 14.
This argument is unpersuasive. First, the Examiner does not rely on
Jonn for disclosing a tape mesh being applied in a stretched condition.
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Second, claim 20 does not require that the elastic tape is saturated with skin
adhesive after being applied over a wound. In re Self, 671 F.2d at 1348.
Accordingly, we sustain the Examiner’s rejection of claim 20 under
35 U.S.C. § 103 as unpatentable over Lutri ’036 and Jonn.

DECISION
The Examiner’s rejections of claims 12–14, 16, and 17 under 35
U.S.C. §§ 102(a)(1) (as anticipated by Lutri ’036) and 103 (as unpatentable
over Lutri ’036) are AFFIRMED.
The Examiner’s rejection of claim 18 under 35 U.S.C. § 103 as
unpatentable over Lutri ’036 and Lutri ’712 is AFFIRMED.
The Examiner’s rejection of claim 19 under 35 U.S.C. § 103 as
unpatentable over Lutri ’036 and VanDruff is AFFIRMED.
The Examiner’s rejection of claim 20 under 35 U.S.C. § 103 as
unpatentable over Lutri ’036 and Jonn is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended according to 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED