Medline Industries, Inc.

Patent Trials and Appeals Board

Dec 16, 2020

2020002163 (P.T.A.B. Dec. 16, 2020)

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.
15/285,737 10/05/2016 Christopher Miller BPMDL0131CM (11720U) 6952
27939 7590 12/16/2020
Philip H. Burrus, IV
Burrus Intellectual Property Law Group LLC
222 12th Street NE
Suite 1803
Atlanta, GA 30309
EXAMINER
HAWTHORNE, OPHELIA ALTHEA
ART UNIT PAPER NUMBER
3786
NOTIFICATION DATE DELIVERY MODE
12/16/2020 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):
kberry@burrusiplaw.com
pburrus@burrusiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER MILLER
Appeal 2020-002163
Application 15/285,737
Technology Center 3700
Before CHARLES N. GREENHUT, BRETT C. MARTIN, and
CARL M. DEFRANCO, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. See Non-Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Medline Industries,
Inc. Appeal Br. 2.
Appeal 2020-002163
Application 15/285,737
2
CLAIMED SUBJECT MATTER
The claims are directed to an elbow compression wrap and
corresponding methods. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A compression wrap, comprising:
an elongated wrap body extending from a first end to a
distal end;
a fastening tab coupled to a first major face of the
elongated wrap body at the first end;
a fastening loop coupled to the first major face of the
elongated wrap body at the distal end;
a compression pad disposed along a second major face of
the elongated wrap body between the first end and the distal end;
and
a stretchable layer straddling the compression pad with a
first stretchable layer end coupled to the second major face of the
elongated wrap body to a first side of the compression pad and a
second stretchable layer end coupled to the second major face of
the elongated wrap body to a second side of the compression pad
such that the stretchable layer and a portion of the elongated wrap
body comprising the compression pad define a stretchable
sleeve.
Appeal Br. 26 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Hurwitz US 3,858,881 Jan. 7, 1975
McCoy US 5,165,402 Nov. 24, 1992
Barbe-Vicuna US 6,338,722 B1 Jan. 15, 2002
Serola US 8,628,488 B2 Jan. 14, 2014
Cox US 2016/0000612 A1 Jan. 7, 2016
Ausen US 2016/0362824 A1 Dec. 15, 2016

Appeal 2020-002163
Application 15/285,737
3
REJECTIONS
Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
1–7, 9–12, 14, 16, 17,
19
102(a)(1) Serola
8 103 Serola, Cox
13 103 Serola, Barbe-Vicuna
15 103 Serola, Hurwitz
18 103 Serola, Ausen
20 103 Serola, Mccoy

OPINION
Claims 1 and 14
Appellant argues claims 1 and 14 together, for which claim 1 is
representative. 37 C.F.R. § 41.37(c)(1)(iv). For the following reasons we
sustain the Examiner’s rejection of claims 1 and 14 as being anticipated by
Serola. Appellant raises three issues with the Examiner’s anticipation
rejection, as summarized on page 14 of the Appeal Brief, which we address
in turn.

along
The first issue raised ultimately hinges on whether a recitation calling
for the compression pad to be disposed “along” a second major face
precludes the compression pad from being disposed on, abutting, or directly
connected to, what the Examiner regards as the first major face as opposed
to the second major face. Final Act. 4–5 (annotating Serola); Appeal Br. 12–
13; Ans. 13; Reply Br 7–9. The Examiner has the better position in that
“along” is not synonymous with disposed on, abutting, or directly connected
to. Unlike those terms, “along” allows for extending more or less in the same
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Application 15/285,737
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direction while being generally adjacent with the possibility of separation by
some intervening structure or a gap.2
Our reviewing court has “cautioned against reading limitations into a
claim from the preferred embodiment described in the specification, even if
it is the only embodiment described, absent clear disclaimer in the
specification.” In re American Academy of Science Tech Center, 367 F.3d
1359, 1369 (Fed. Cir. 2004) (citations omitted). The fact that the term
“along” is used (Spec. para. 22) in conjunction with figures depicting
compression pad 106 directly abutting the second major face 105 does not
evince a clear intent to disavow other arrangements based merely on the use
of the word “along.” Just as limitations from the Specification are not read
into the claims, limitations from the figures are also not imported into the
claims. During prosecution Appellant is free to choose claim language
limiting the claim scope to embodiments described in the Specification or
depicted in the Figures. Where Appellant chooses not to do so, it is our duty
in reading the claim in view of Appellant’s disclosure not to import
limitations Appellant chose to omit. It is well-settled that patent disclosures
need only describe the best mode, not all modes, of the invention. 35 U.S.C.
§ 112(a); Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 US 405
(US 1908); Winans v. Denmead, 56 US 330 (1854). Accordingly, it is the
claims that define the scope of protection sought. Thus, the omission from
the claims of certain aspects of the preferred modes or embodiments in the
disclosure can be just as informative to the skilled artisan with regard to that
scope as their inclusion.

2 See, e.g., https://www.dictionary.com/browse/along; https://www.merriam-
webster.com/dictionary/along last accessed Nov. 11, 2020.
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end
Appellant’s second argument hinges on whether it was reasonable for
the Examiner to regard the region of the shorter portion (lower portion as
viewed in Serola Figs. 1, 22) of the wrap that extends from D-ring 34 affixed
by stitching 40 as the recited “end” of the layer straddling the compression
pad 22. Appellant contends that region cannot reasonably be regarded as an
“end” because the material continues beyond the stitching 40 to wrap around
D-ring 34. Appeal Br. 13–16; Reply Br 9. Again, the Examiner has the better
position: there is nothing in the express language of the claim or the rest of
the Specification that leads us to the conclusion that an end of a layer must
also be the end of the material forming that layer. Straddling the
compression pad is what defines the layer in question. There is a clear
demarcation at the stitching sites 56, 40 where the layers of material
straddling compression pad 22 begin straddling the pad and cease doing so.
There does not appear to be any dispute that the region proximate stich 56
constitutes an end of that layer. We are not apprised of any good reasons
why we should reach a different conclusion with regard to the region
proximate stitching site 40. Again, we are not apprised as to why the end of
a particular layer according to the claim must constitute the end of whatever
material is being used to form that layer in toto.

sleeve
Appellant contends “[Serola’s] pocket [18] is not a sleeve” because
“the sleeve of claims 1 and 14 is a sleeve that ‘covers the arm; as, the sleeve
of a coat or gown.’” Appeal Br. 16–18. Appellant further contends Serola’s
pocket 18 is not a sleeve because “Serola’s compression wrap insert is
sandwiched between both sides of its pocket. It cannot be a sleeve, therefore,
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Application 15/285,737
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because nothing can pass between the sides of the pocket and the
compression wrap insert.” Appeal Br. 18.
We do not agree with Appellant that the Examiner failed to appreciate
this argument. Reply Br. 10. The Examiner correctly responded that there
does not appear to be any language in the claims or Specification that
either 1) specifically limits a “sleeve” to one through which a human arm is
capable of passing, or 2) specifically indicates the sleeve must not be
occupied by any other structure so as to allow for the insertion of a human
arm. Ans. 17–18. Appellant could have very easily included the functional
language from the Specification, such as “[for] wrap[ing] around the user’s
forearm or other limb portion” (Spec. para. 16) to describe the function of
the sleeve in order to imply the presence of the distinguishing structural
features Appellant now asks us to import. Again, as discussed above,
Appellant’s decision not to do so informs the reader that the claims should
be construed as more broadly covering modes or embodiments beyond those
specifically disclosed in the Specification. That Appellant used the term
“sleeve” to refer to the specific type of sleeve depicted in the figures which
is capable of accommodating a human arm does not, without more, evince
any clear intent to disavow other types of sleeves, such as those which can,
or do, accommodate compression pads. In other words, Appellant does not
redefine or otherwise imply a particular meaning that should be imposed on
the term “sleeve” despite such language being absent from the claim. We
are not apprised of good and sufficient reasons why, based on the express
language present in the claim, Serola’s pocket bearing all the structural
requirements associated with the sleeve that are actually recited would not
reasonably fall within the ambit of the recited term “sleeve.” Anticipation is
not an ipsissimis verbis test.
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Claims 2 and 16
With regard to representative claim 2 (see 37 C.F.R.
§ 41.37(c)(1)(iv)), Appellant contends that the Serola insert 22 is
substantially moon shaped and therefore does not define an ovular perimeter.
Appeal Br. 20. However, first, as a perimeter is generally regarded as a two-
dimensional path, the three-dimensional shape of Serola’s insert is not
dispositive of what shapes Serola’s compression pad might define in two-
dimensional space. Second, the ovular perimeter defined by the compression
pad need not be a perimeter of the pad itself according to claim 2: it can be
any perimeter along the second major face of the elongated wrap body.
Serola’s pocket 18 clearly exhibits an ovular shape in Figure 1 of Serola,
which is defined by the pad 22 because pad 22 is depicted fitting snugly
therein, giving the pocket its shape.
Accordingly, we sustain the Examiner’s rejection of claims 2 and 16
as being anticipated by Serola.

Claim 3
Claim 3 calls for “the stretchable layer defining a width that is less
than another width of the portion of the elongated wrap body comprising the
compression pad.” The Examiner apparently misread claim 3, reversing the
required relative widths of the “stretchable layer” and “another width. .
.comprising the compression pad” when issuing the final rejection. See Final
Act. 6 (“portion of the wrap comprising the compression pad is wider”
(emphasis added)). The Examiner did not maintain this clearly erroneous
position in the Examiner’s Answer. Instead, the Examiner cited a lower
chord (as depicted in the Examiner’s annotated version of Serola Fig. 2 at
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Answer 19) as the “another width. . .comprising the compression pad.”3
Although this new cited width may indeed be greater, it is not apparent, and
the Examiner does apprise us as to: 1) why this chord in the loop formed by
the elongated wrap, would fall within the scope of a “width. . .of the
elongated wrap body” itself (emphasis added)(Reply Br. 10); or 2) how this
width somehow can be regarded as “comprising the compression pad” of
Serola.
Accordingly, we do not sustain the Examiner’s rejection of claim 3 as
being anticipated by Serola.

Claim 12
“For a prior art reference to anticipate in terms of 35 U.S.C. § 102,
every element of the claimed invention must be identically shown in a single
reference [and t]hese elements must be arranged as in the claim under
review.” In re Bond 910 F.2d 831, 832 (Fed. Cir. 1990)(citations omitted).
With regard to claim 12, Appellant correctly argues “the Examiner
[incorrectly] alleges that since the elongated member of Serola can be
manufactured from either neoprene or foam, its elongated member can
somehow be manufactured from both neoprene and foam.” Reply Br. 11
(emphasis added). Serola’s disclosure of the use of one or the other material

3 Appellant elected to maintain the appeal and has apprised us of Examiner
error under 37 C.F.R. § 41.41. We nevertheless remind the Examiner that
rule 37 C.F.R. § 41.39(a)(2) serves an important statutory function by
helping to ensure that appellants are treated fairly and given timely and
adequate notice of all matters of fact and law asserted prior to a case being
heard before the board. See, e.g., In re Stepan, 660 F. 3d 1341, 1345 (Fed.
Cir. 2011) (citing Administrative Procedure Act 5 U.S.C. § 554).
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in general does not support an anticipation rejection for claim 12 which
requires each material be used for specific components of the claimed wrap.
Accordingly, we do not sustain the Examiner’s rejection of claim 12
as being anticipated by Serola.

Remaining claims
The remaining claims stand or fall along with the outcomes regarding
their respective parent claims, rendering moot grounds 4 and 5 in
Appellant’s Brief.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–7, 9–12,
14, 16, 17,
19
102(a)(1) Serola 1, 2, 11, 14,
16, 17, 19
3–7, 9, 10,
12
8 103 Serola, Cox 8
13 103 Serola, Barbe-
Vicuna
13
15 103 Serola, Hurwitz 15
18 103 Serola, Ausen 18
20 103 Serola, Mccoy 20
Overall
Outcome
1, 2, 11, 13–
20
3–10, 12
RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART