Neostyle B Co., Ltd.

Patent Trials and Appeals Board

Jan 20, 2022

2021005184 (P.T.A.B. Jan. 20, 2022)

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. 15/515,150 03/29/2017 Masanori HARADA 7130.1014 6387 37321 7590 01/20/2022 KACVINSKY DAISAK BLUNI, PLLC 2601 Weston Parkway Suite 103 Cary, NC 27513 EXAMINER FISHER, VICTORIA HICKS ART UNIT PAPER NUMBER 3786 NOTIFICATION DATE DELIVERY MODE 01/20/2022 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): Docketing@kdbfirm.com kpotts@kdbfirm.com mfitzsimmons@kdbfirm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MASANORI HARADA ____________ Appeal 2021-005184 Application 15/515,150 Technology Center 3700 ____________ Before ANNETTE R. REIMERS, WILLIAM A. CAPP, and MICHAEL L. WOODS, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final rejection of claims 1, 3, 5-7, and 10. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Neostyle B Co., Ltd., as the applicant and real party in interest. Appeal Br. 2. Appeal 2021-005184 Application 15/515,150 2 THE INVENTION Appellant’s invention is a device for treatment of ingrown nails. Spec. ¶ 1. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. An adhesive plaster structure configured to attach to a finger or a toe along a lateral nail edge for treating a wound neighboring an ingrown nail, the adhesive plaster structure comprising: (i) a wound adhesion area having a flexible wound adhesion surface to be adhered to the wound neighboring the ingrown nail; and (ii) a guide area having a slide groove that is configured to receive the lateral nail edge, the slide groove configured to slide in a longitudinal direction of a nail along the lateral nail edge, wherein the wound adhesion area is formed by a soft body and has a first solid structure, the guide area is formed by a hard body and has a second solid structure, the adhesive plaster structure has an approximately rod shape, when an end portion of the adhesive plaster structure adapted to be located at a root side of the finger or the toe is defined as a tip portion and an end portion of the adhesive plaster structure adapted to be located at a tip side of the finger or the toe is defined as a rear end portion in a state that the adhesive plaster structure is attached to the finger or the toe, the slide groove extends at least over a part of a length between the tip portion and the rear end portion of the adhesive plaster structure in the longitudinal direction of the adhesive plaster structure, the flexible wound adhesion surface is arranged between the lateral nail edge and the wound neighboring the ingrown nail in a state that the slide groove receives the lateral nail edge when the adhesive plaster structure is attached to the finger or the toe, Appeal 2021-005184 Application 15/515,150 3 the wound adhesion area is disposed concentrically around a side of the guide area opposite of the slide groove such that the flexible wound adhesion surface of the wound adhesion area follows a same contour of and is oriented identically to the guide area, the guide area and the disposed wound adhesion area are arranged together as a single component physically defined at least by the first and second solid structures of the wound adhesion area and the guide area, respectively, wherein the guide area and the wound adhesion area are configured to attach to the finger or the toe as the single component, the guide area configured to guide the flexible wound adhesion surface of the wound adhesion area, as the single component, to a position of the wound caused by the ingrown nail as the adhesive plaster structure is being attached to the finger or the toe such that the flexible wound adhesion surface is: (i) submerged under the lateral nail edge and (ii) enclosed by flesh of the finger or the toe after the adhesive plaster structure has been attached to the finger or the toe. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: NAME REFERENCE DATE Haener US 1,596,532 Aug. 17, 1926 Machida US 2004/0260221 A1 Dec. 23, 2004 Hurley US 2006/0189909 A1 Aug. 24, 2006 Cha US 2007/0287945 A1 Dec. 13, 2007 Stolz US 2010/0262058 A1 Oct. 14, 2010 The following rejections are before us for review: 1. Claims 1, 5, 7, and 10 are rejected under 35 U.S.C. § 103 as being unpatentable over Cha and Stolz. Appeal 2021-005184 Application 15/515,150 4 2. Claim 3 is rejected under 35 U.S.C. § 103 as being unpatentable over Cha, Stolz, Hurley, and Machida. 3. Claim 6 is rejected under 35 U.S.C. § 103 as being unpatentable over Cha, Stolz, and Haener. OPINION Unpatentability of Claims 1, 5, 7, and 10 over Cha and Stolz Claim 1 The Examiner finds that Cha discloses the invention substantially as claimed except for the guide area being formed by a hard body, for which the Examiner relies on Stolz. Final Act. 4-7. In particular, the Examiner finds that Cha’s liquid bonding agent 10 satisfies the limitations in claim 1 directed to a wound adhesion area with a wound adhesion surface that is arranged together with a guide area, as a single component, to be guided and attached to a finger or toe as claimed. Id. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time the invention was made to combine the teachings of Cha and Stolz to achieve the claimed invention. Id. at 8. According to the Examiner, a person of ordinary skill in the art would have done this to ensure a more firm lasting hold at the edge of the toenail. Id. Appellant argues that Cha fails to disclose a guide area that is “configured to guide” the “single component,” which is made up of the guide area and wound adhesion area, to a position on the wound as claimed. Appeal Br. 5-6. Among other things, Appellant argues that Cha’s protecting gutter 6 is first inserted into the nail and then Cha’s liquid bonding agent flows into the wound area after the gutter is placed in position. Id. at 7. Appeal 2021-005184 Application 15/515,150 5 In response, the Examiner maintains that, taken together, Cha’s gutter 6 and liquid bonding agent 10 are arranged as a single component. Ans. 12. The Examiner directs our attention to Figure 9 of Cha as purportedly disclosing the two components (gutter and bonding agent) as a single component. Id. With respect to the limitation directed to being “configured to guide” in claim 1, the Examiner dismisses such claim language as mere “intended use” and maintains that there is no structural difference that patentably distinguishes the claim language and the prior art. Id. Moreover, the Examiner maintains that Cha’s gutter is capable of guiding the outer surface of the bonding agent. Id. Finally, the Examiner maintains that Cha’s bonding agent becomes a “solid structure” as recited in claim 1 after the liquid becomes “dried.” Id. at 13. Appellant’s invention has a C-shaped cross-section that remains substantially constant along its length, which length roughly corresponds to the length of the lateral edge of the toenail or fingernail that requires treatment. See Figs. 2, 5A-C, 11. Appellant’s device is composed of two layers that are laminated together. The first, radially internal layer is referred to as the “guide area.” Fig. 2, element 3. The second, radially external layer is referred to as the wound adhesion area. Fig. 2, element 2. The outer layer is disposed concentrically around a side of the inner layer opposite the opening of the C-shape. Claims App. claim 1, Fig. 2. The two concentric layers are arranged together and configured to attach to a finger or toe as a “single component.” Id. The radially outward surface of element 2 is referred to as the wound adhesive surface. Fig. 2, element 2A. After Appellant’s device is placed in position over and along a wounded nail, the wound adhesive surface adheres Appeal 2021-005184 Application 15/515,150 6 to the wound caused by the ingrown nail. Spec. ¶ 49. The opening of the C- shaped structure is referred to as a slide groove that extends along the entire length of the device. Id., Fig. 2, element 3A. Appellant’s device is capable of sliding in the longitudinal direction of the nail along the lateral nail edge. Id. As recited in the claim, the slide groove (3A) of the two-layered “single component” is “configured to slide” in a longitudinal direction along a nail edge. Claims App. Cha is directed to a method for treating ingrown toenails. Cha, Abstract. Cha features a single layer, C-shaped component referred to as protecting gutter 6 that is inserted over the lateral edge of a damaged nail. Id. ¶ 12, Figs. 5, 6, 9. After gutter 6 is placed in position over the nail, a liquid bonding agent is applied to cover the entire affected area of the wound. Id. The bonding agent is then dried. Id. Prior to being placed over the nail, the protecting gutter is considerably longer than the length of the nail and the excess length is used as a sort of handle that is held by a user’s fingers to facilitate placement of the gutter. Id. After the gutter is placed in position, the excess length of the gutter that protrudes from the end of the toe is trimmed off. Id. Having considered the competing positions of Appellant and the Examiner, we are of the opinion that the Examiner’s position is fraught with error. We are unable to agree with the Examiner that the “configured to guide” recital in claim 1 is nothing more than “intended use.” In the context of the surrounding claim language, the “configured to guide” recital means that Appellant’s device is a two layer, concentric, C-shaped laminated structure that is arranged as a single component that is capable of sliding lengthwise along the lateral edge of the nail to be placed in position on an Appeal 2021-005184 Application 15/515,150 7 affected finger or toe. Claims App. At the moment of application to the wound, the device features an outward “adhesion surface” to be adhered to wound. Id. Thus, the “configured to guide” recital in the claim refers to a structural arrangement and is not merely a statement of intended use. Instead, it is the arrangement that provides the necessary capability. The Examiner errs in finding that there is no “structural difference” between the claimed invention and the prior art and, therefore, errs in giving the “configured to guide” recital no patentable weight. Ans. 12. Contrary to the Examiner’s position, Cha does not disclose a device with features that correspond to Appellant’s claim language. Cha’s liquid bonding agent is not analogous to Appellant’s wound adhesion area. It is applied to the gutter only after the gutter is slid into position and, therefore, does not become a “single component” with the gutter until after the bonding agent dries and cures. There is no factual support for the Examiner’s finding that Cha’s bonding agent is formed “concentrically” around a side of the guide area as claimed. Furthermore, the Examiner finds that Cha’s bonding agent must dry to satisfy the claim language directed to the wound area being “solid” (as opposed to liquid). However, the Examiner makes no findings of fact as to the physical properties of the surface of Cha’s bonding agent after it dries. We are thus left to speculate as to whether Cha’s alleged wound adhesion area has an adhesion surface “to be adhered” to the wound as part of a two-layer, concentric, laminated “single component” after Cha’s liquid bonding agent has dried and cured. The Examiner’s findings of fact are not supported by a preponderance of the evidence and, therefore, the Examiner’s legal conclusion of Appeal 2021-005184 Application 15/515,150 8 unpatentability is not well-founded. In view thereof, we do not sustain the Examiner’s unpatentability rejection of claim 1. Claims 5, 7, and 10 Claims 5, 7, and 10 depend from claim 1 and add various dependent limitations. Claims App. The Examiner’s rejection of these claims suffers from the same infirmities that we have discussed above with respect to claim 1. For the same reasons, we do not sustain the rejection of claims 5, 7, and 10. Unpatentability of Claims 3 and 6 These claims depend from claim 1 and are rejected over Cha and Stolz in combination with various other references. Claims App.; Final Act. 9-12. We have reviewed the additional cited art and the Examiner’s findings and we determine that these additional references do not cure the deficiencies we have noted above with respect to the rejection of claim 1. For the same reasons, we do not sustain the rejection of claims 3 and 6. CONCLUSION Claims Rejected 35 U.S.C. § References Affirmed Reversed 1, 5, 7, 10 103 Cha, Stolz 1, 5, 7, 10 3 103 Cha, Stolz, Hurley, Machida 3 6 103 Cha, Stolz, Haener 6 Overall Outcome 1, 3, 5-7, 10 REVERSED