Nilsson, Carianne

Patent Trials and Appeals Board

Nov 24, 2020

2019003277 (P.T.A.B. Nov. 24, 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.
13/502,470 04/17/2012 Carianne Nilsson 13302.0038U1 1775
23859 7590 11/24/2020
Ballard Spahr LLP
SUITE 1600
999 PEACHTREE STREET
ATLANTA, GA 30309-4421
EXAMINER
KLEIN, BENJAMIN JACOB
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
11/24/2020 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CARIANNE NILSSON

Appeal 2019-003277
Application 13/502,470
Technology Center 3700

Before LINDA E. HORNER, CHARLES N. GREENHUT, and JILL D.
HILL, Administrative Patent Judges.

HILL, 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 1–13. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as MÖLNLYCKE
HEALTH CARE AB. Appeal Br. 2.
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BACKGROUND
Independent claims 1 and 12 are pending. Independent claim 1,
reproduced below, illustrates the claimed invention.
1. An article for use in wound treatment, wherein the article
is colored in a chosen color, wherein the chosen color is green,
wherein the green colored article hides the color of synthetic
blood when synthetic blood is present in the article, and wherein
the chosen color in dry state has:
a lightness factor L* along the black-white axis of between
20-55 according to Test Method T-397,
a chromatic coordinate a* along the red-green axis of
between -45 to -20 according to Test Method T-397, and
a chromatic coordinate b * along the yellow-blue axis of
between -4.0 to -1.0 according to Test Method T-397.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Benecke US 2003/0135174 A1 July 17, 2003
Weston US 2005/0261642 A1 Nov. 24, 2005
Peng (as translated) CN001138486A Dec. 25, 1996
REJECTIONS
I. Claims 1–11 and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Peng and Benecke. Final Act. 7.
II. Claim 12 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Weston, Peng, and Benecke. Final Act. 10.
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OPINION
Rejection I – Claims 1–11 and 13
The Examiner finds that Peng discloses a wound treatment article that
is green in its dry state and “hides the color of blood (and is therefore also
interpreted to hide the color of synthetic blood).” Final Act. 7. The
Examiner also finds that Peng discloses the criticality of selecting an article
color that “allows for identification of the article in a wound, and also turns
dark or black in the presence of blood eliminating the patient’s fear of their
blood.” Id. at 7–8 (citing Peng Abstract, ¶ 2). The Examiner recognizes that
Peng does not disclose Test Method T-397, or the claimed L*, a*, and b*
values, but finds that Benecke discloses absorbent articles with blood
masking properties, and wherein “L*, a*, and b*, are result effective
variables in color masking and in the visual interpretation of color by the
user.” Id. at 8 (citing Benecke ¶¶ 61–66). The Examiner further finds that
Benecke discloses blue and green colors that “are effective at hiding the
blood.” Id. (citing Benecke Table 2, Figs. 12–13, ¶ 74). The Examiner
concludes that it would have been obvious to “optimize the [known] result
effective variables; L*, a*, and b* . . . to produce a device with optimum
color for masking the color of blood and to provide for the identification of
the article in the wound of a patient as desired by Peng.” Id. at 8‒9 (quoting
In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[W]here the general
conditions of a claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine experimentation.”)).
Appellant contends that: (1) “there is no reasonable expectation of
success that a green colored gauze sample can mask/hide the color of
synthetic blood, much less a reasonable expectation of success that the green
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color recited in claims 1 and 12 can mask/hide the color of synthetic blood;”
(2) “Benecke teaches away from modifying the L *, a*, and b* chromatic
coordinates of the green colors in Peng to be within the chromatic
coordinates recited in claims 1 and 12;” and (3) “It is superior and
unexpected that the green article recited in claim 1 or the green wound filler
recited in claim 12 can mask/hide the color of synthetic blood.” Appeal Br.
7 (emphases omitted). We address each argument in turn below.
(1) Reasonable Expectation of Success
The basis for Appellant’s argument that there is no reasonable
expectation of success that Peng’s green colored gauze can hide blood, is
based on Appellant’s contention that the “green color[ed] gauze samples in
Peng are inoperable for masking/hiding the color of synthetic blood.”
Appeal Br. 9–10 (emphasis omitted). To support the contention that Peng’s
green colored gauze samples are inoperable, Appellant provides tests results
from what Appellant alleges to be Peng’s green gauze samples with
synthetic blood applied thereto. Id. at 10–11.2 Appellant’s proffered test
results are addressed in a Declaration of Kevin Biller, filed February 1, 2018
(hereinafter “Biller Dec.”), which is discussed by Appellant and the
Examiner in this appeal.
Initially, we note that Kevin Biller’s Declaration states that, because
“[s]ome of the specific chemicals listed in Peng used to develop [its green
gauze samples] are no longer commercially available or can only be

2 Appellant also argues that “Peng actually did not test whether the gauze
samples with green the colors, in fact, masked/hid the red color of synthetic
blood,” but no evidentiary basis for this argument is provided. Appeal Br.
10.
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obtained in large bulk, which is not economically feasible, . . . comparable
chemicals were used to reproduce the green and blue color Nos. 1-3 in
Peng.” Biller Dec. ¶ 11. According to Mr. Biller, “[t]hese comparable
chemicals produce the identical green and blue colors as the green and blue
color Nos. 1-3 in Peng.” Id. While the same blue dye listed in Peng was
used in the testing, the yellow dye used in testing differed from that of Peng,
because Peng’s yellow dye was not economically feasible to use. Id. ¶ 12.
Additionally, certain other chemicals used in Peng to prepare its green gauze
samples were not available for testing and other “recommended” chemicals
were used. Id. ¶ 12, App. B, App. C.
Regarding masking ability of dyed samples, the test results provided
in Kevin Biller’s Declaration indicate that “none of the reproduced green
color [samples] have masking properties for the color of synthetic blood.”
Id. ¶ 16, App. B, App. C. This failure of the reproduced Peng green samples
to mask blood forms the basis for Appellant’s assertion that Peng is
inoperable, which forms the basis for Appellant’s contention (1) that there is
no reasonable expectation of success that Peng’s green samples can
mask/hide the color of synthetic blood. Appeal Br. 7.
To this proffered evidence of Peng’s inoperability, the Examiner
responds, inter alia, that
the economic feasibility of purchasing . . . dye has no bearing
on the scientific accuracy of the testing. Appellant’s choice to
purchase a substitute chemical on economic grounds is an
unreasonable compromise when attempting to accurately
reproduce a sample. . . . Simply, the economics of
reproduction; and for that matter the commercial
availability/feasibility; are not relevant to the accuracy of
reproduction. The only relevant factor in the fidelity of the
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reproduction is how faithfully each and every step was
followed, and component used.
Ans. 7.
According to the Examiner, Peng’s process uses “no less than 3 dyes
(Vat Blue 66, Vat blue 6, and Vat Yellow 46), and 6 additional process
chemicals (DEKOL SN-S, TRILON TB, SETAMOL WS, PERAGAL P,
LUDIGOL, and sodium hydrosulfite),” and “the reproduced samples of Peng
use at most 2 of the 9 chemicals disclosed by Peng,” such that “any assertion
by Appellant that the reproduced samples are faithful to those disclosed by
Peng is not demonstrated with any evidence or declared with sufficient
expertise.” Ans. 7–8. We agree.
A prior art reference is presumed operable until applicant provides
facts rebutting the presumption of operability. In re Sasse, 629 F.2d 675,
681 (CCPA 1980). Appellant’s attempt to overcome the presumption of
operability using testing that reproduces samples of Peng with, at most, 2 of
the 9 chemicals disclosed by Peng, is simply insufficient to overcome the
presumption of operability.
Appellant’s contention that a skilled artisan would have “no
reasonable expectation of success” is based on establishing that Peng’s green
samples are inoperable. Because the testing was insufficient to overcome
the presumed operability of Peng’s green samples, Appellant’s argument of
“no reasonable expectation of success” is not persuasive.
(2) Teaching Away
As stated above, the Examiner relies on Benecke for its teaching that
“the L, a*, b* color space is used to describe the color of articles,” and that
“non-saturated blue, non-saturated green, and saturated green articles (See
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Figs. 12 and 13) are effective to mask the color change of the article when
exposed to menstrual blood and fluid.” Final Act. 3. Further, the Examiner
reasons that a skilled artisan, considering the teaching of Benecke regarding
the effect of each of the characteristics L*, a* and b* on the human eye’s
perception of colors, including blood and the hiding thereof, would have
found it obvious to optimize the green color of Peng’s article “to maximize
the color masking ability of the article.” Id.
Appellant argues that Benecke teaches away from modifying the L*,
a*, and b* chromatic coordinates of the green colors in Peng to be within the
claimed chromatic coordinates. Appeal Br. 7. According to Appellant,
Benecke’s goal of hiding blood by minimizing ΔE teaches away from hiding
blood by making it visible as a dark color that differs from the color of
blood. See id.
Appellant’s teaching away argument is not persuasive. It is Peng that
the Examiner finds teaches hiding blood by making it visible as a dark color
that differs from the color of blood. Benecke is relied on only for its
disclosure of the effect of each of the characteristics L*, a*, and b* on the
human eye and on ΔE (i.e., the perception of blood). Benecke’s disclosure
of one alternative for hiding blood by minimizing ΔE does not constitute a
teaching away from Peng’s and the claimed invention’s alternative of hiding
blood by making it visible as a dark color that differs from the color of
blood, because Benecke’s disclosure does not “criticize, discredit, or
otherwise discourage” the claimed method of hiding blood. In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004). Indeed, Benecke’s teachings
regarding the effect of each of the characteristics L*, a*, and b* on the
human eye and on ΔE (i.e., the perception of blood) would have instructed a
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skilled artisan on optimizing the green color of Peng’s article to achieve
Peng’s goal of having the blood absorbed by its green gauze appear as a dark
color to eliminating patient fear and ease recovery of the gauze after
operating. See Final Act. 3; Peng Abstract. For this reason, we are not
persuaded that Benecke teaches away from the Examiner’s proposed
combination of references.
(3) Unexpected Results
Based on the test results from recreating Peng’s green samples, as set
forth in Kevin Biller’s Declaration, Appellant argues that the green article
recited in claim 1 provides unexpected masking/hiding of blood. See Appeal
Br. 21. According to Appellant, unexpected results can be established by
comparing the claimed invention with the closest prior art which is
commensurate in scope with the claims, and the testing results set forth in
Kevin Biller’s Declaration compare the green article recited in claim 1 with
“the green article disclosed in Peng, which is the closest prior art.” Id.
Appellant contends that, because Peng’s green samples are “completely
inoperable for masking/hiding the color of synthetic blood,” the synthetic
blood hiding properties of the claimed invention are unexpected results. See
id.
Because this argument is based on the testing results set forth in Kevin
Biller’s Declaration, which we determined above are insufficient to establish
inoperability of Peng’s green samples, we are likewise not persuaded that
Appellant has established unexpected results, and the Examiner’s
obviousness rejection has not been overcome.
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Conclusion
For the reasons set forth above, we sustain Rejection I.
Rejection II – Claim 12
Claim 12 recites a green wound filler with the same chromatic
coordinates as recited in claim 1. Appeal Br. 28 (Claims App.). Appellant
argues that “claim 12 is non-obvious over Weston, Peng and Benecke . . . for
the same reasons claim 1-11 and 13 are non-obvious.” Id. at 25. For the
reasons set forth above in Rejection I, we sustain Rejection II.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1–11, 13 103(a) Peng, Benecke 1–11, 13
12 103(a) Weston, Peng, Benecke 12
Overall
Outcome
  1–13

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED