Paul Gaffney

Patent Trials and Appeals Board

Aug 21, 2019

14542843 - (D) (P.T.A.B. Aug. 21, 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.
14/542,843 11/17/2014 Paul Gaffney 6950 6742
44386 7590 08/21/2019
CHARLES I. BRODSKY
2 BUCKS LANE
MARLBORO, NJ 07746
EXAMINER
NELSON, KERI JESSICA
ART UNIT PAPER NUMBER
3786
MAIL DATE DELIVERY MODE
08/21/2019 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PAUL GAFFNEY
____________

Appeal 2018-008402
Application 14/542,8431
Technology Center 3700
____________

Before MICHAEL C. ASTORINO, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–5. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 The Appellant is the real party in interest. Appeal Br. 1. (All references
are to the Amended Brief On Appeal, dated March 21, 2017.)
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ILLUSTRATIVE CLAIM
1. A disposable waterproof cast or bandage cover
comprising:
a plastic sheath dimensioned to fit around an arm or leg
cast or bandage of a wearer, said plastic sheath having an open
first end and a sealed second end opposite thereto;
a flexible elastic band including a first expandable trough
encircling said plastic sheath at said open first end of said
plastic sheath;
a stretchable band of circular cross section seated within
said expandable trough of said flexible elastic band at said open
first end of said plastic sheath; and
a loop over and joining together weld of said flexible
elastic band with said stretchable band within said expandable
trough to said plastic sheath at said open first end of said plastic
sheath;
with said plastic sheath being of a polypropylene
composition, with said stretchable band being of a length and
stretch characteristic to enable a pulling of said plastic sheath
onto an arm or leg cast or bandage of the wearer in securely and
snugly fitting said open first end of said plastic sheath
thereabout in use, and with said stretchable band being of a
circular cross section to effect a removal of said plastic sheath
therefrom by rolling said circular cross section stretchable band
within said expandable trough, along and in a direction from
said open first end of said plastic sheath to said sealed second
end of said plastic sheath, to be removed thereat from the arm
or leg of the wearer for discarding after a single use.
CITED REFERENCES
The Examiner relies upon the following references:
Meehan US 5,728,052 Mar. 17, 1998
Dobos US 6,512,158 B1 Jan. 28, 2003
Clare US 6,916,301 B1 July 12, 2005
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Treadway Fancher US 7,290,290 B2 Nov. 6, 2007
Ballantyne et al. US 8,056,148 B1 Nov. 15, 2011
(hereinafter “Ballantyne”)
REJECTIONS2
I. Claim 1 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Treadway Fancher, Clare, and Dobos.
II. Claims 2–4 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Treadway Fancher, Clare, Dobos, and Meehan.
III. Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Treadway Fancher, Clare, Dobos, and Ballantyne.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Among the Appellant’s arguments in the Appeal Brief, the Appellant
contends that the cited prior art does not disclose the recited “stretchable
band of circular cross section” of independent claim 1 (the sole independent
claim in this case). See Appeal Br. 5.
The Examiner identifies the elastic band (identified by reference
numeral 12) of the Treadway Fancher reference as teaching the recited
“stretchable band of circular cross section.” Final Action 4–5 (citing
Treadway Fancher col. 3, ll. 47–64, col. 4, ll. 12–19, 25–30, 64–67, col. 5, ll.
1–4, 9–15, 49–53, Figs. 1, 2, 4, 5, 11). Mindful of the Appellant’s dispute
on the matter, but disagreeing with the Appellant’s position, the Examiner

2 The Final Office Action (pages 2–3) includes a rejection of claims 1–5
under 35 U.S.C. § 112(b). This rejection is withdrawn. See Answer 6.
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states: “Due to the flexibility of elastic band (12), the cross-section of the
band (as viewed in Fig. 4) is capable of being configured in a circle.” Id.
at 9. More specifically, the Examiner explains:
In response to Appellant’s argument that Treadway
Fancher does not teach a stretchable band of circular cross-
section, the examiner disagrees. As illustrated in Figure 4 of
Treadway Fancher, the elastic band (12) is rounded and would
exhibit a circular cross-section (as viewed from the direction in
Fig. 4) when applied over a limb having a circular perimeter to
which the elastic band will conform. It is noted that Appellant
has not clearly recited which axis of the stretchable band is used
to determine the claimed circular cross-section of the
stretchable band.
Answer 8.
Thus, the Examiner takes the position that Treadway Fancher’s elastic
band, being in the form of a continuous loop, achieves the claimed “circular
cross section,” when it is fitted around an appropriately shaped work piece
— e.g., “a limb having a circular perimeter to which the elastic band will
conform.” Id. The Examiner’s reasoning that Treadway Fancher’s elastic
band may attain such a circular shape accords with the reference’s disclosure
that its embodiment “involves the use of circular elastic bands” Treadway
Fancher col. 3, l. 48.
Yet, the Examiner also acknowledges that the mapping of the claimed
“stretchable band of circular cross section,” to Treadway Fancher’s elastic
band, depends upon a particular construction of the claim language. See
Final Action 9; Answer 8. Namely, the Examiner regards the “cross
section” to be formed by a plane that intersects the entire continuous extent
of Treadway Fancher’s elastic band, so as to reveal an annular shape (in the
cross section) having inner and outer concentric edges — in the manner of
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Treadway Fancher’s Figure 4, showing the elastic band (element 12) in plan
view. See Answer 8 (“As illustrated in Figure 4 of Treadway Fancher, the
elastic band (12) is rounded and would exhibit a circular cross-section (as
viewed from the direction in Fig. 4) when applied over a limb having a
circular perimeter to which the elastic band will conform.”)
By contrast, the Appellant interprets the “cross section” to cut through
a segment of the recited “stretchable band,” in a plane essentially
perpendicular to the axis of the segment, so as to show (in the cross section)
a solid circular shape with a single outer edge. Under the Appellant’s
construction, the “stretchable band” may have the form of a toroid (which
would possess such a circular cross section, per the Appellant’s position), for
example.
“During examination, ‘claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)). As the Federal Circuit has explained:
The correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the specification is not
whether the specification proscribes or precludes some broad
reading of the claim term adopted by the examiner. And it is
not simply an interpretation that is not inconsistent with the
specification. It is an interpretation that corresponds with what
and how the inventor describes his invention in the
specification, i.e., an interpretation that is “consistent with the
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997) (citation and internal quotation marks omitted); see also
In re Suitco Surface, 603 F.3d 1255, 1259–60 (Fed. Cir. 2010).
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In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017). Sources for
claim construction may include intrinsic sources (such as the claims, the
Specification, and the cited references), as well as extrinsic sources (such as
technical treatises and dictionaries). See Vitronics Corp. v. Conceptronic,
Inc., 90 F.3d 1576, 1582–84 & n.6 (Fed. Cir. 1996). Yet, “there is no magic
formula or catechism for conducting claim construction,” nor is there any
requirement to “consider[ ] any particular sources” or to “analyze sources in
any specific sequence, as long as those sources are not used to contradict
claim meaning that is unambiguous in light of the intrinsic evidence.”
Phillips v. AWH Corp., 415 F.3d 1303, 1324 (Fed. Cir. 2005) (en banc).
Because “[t]he specification contains a written description of the invention
which must be clear and complete enough to enable those of ordinary skill in
the art to make and use it,” “the specification is always highly relevant to the
claim construction analysis.” Vitronics, 90 F.3d at 1582. “Usually, it is
dispositive; it is the single best guide to the meaning of a disputed term.” Id.
Significantly, claim 1 describes manipulating the “stretchable band”
in a particular manner, for purposes of removing the “plastic sheath” from a
limb:
said stretchable band being of a length and stretch characteristic
to enable a pulling of said plastic sheath onto an arm or leg cast
or bandage of the wearer in securely and snugly fitting said
open first end of said plastic sheath thereabout in use, and with
said stretchable band being of a circular cross section to effect
a removal of said plastic sheath therefrom by rolling said
circular cross section stretchable band within said expandable
trough, along and in a direction from said open first end of said
plastic sheath to said sealed second end of said plastic sheath.
(Emphasis added). Likewise, the Specification expresses the relationship
between the “circular cross section” and the capacity for the “stretchable
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band” to “roll[ ]”: “By virtue of its circular cross section, the rolling off of
the stretchable band from the open first end of the plastic glove sheath to the
sealed second end of the sheath is easily accomplished.” Spec. 8, ll. 12–15.
See also Spec. 9, ll. 20–22 (“said stretchable band being of a circular cross
section to enable a removal of said plastic sheath therefrom by rolling said
stretchable band”) (originally filed claim 1).
The Appellant’s interpretation of the “circular cross section” aligns
with “easily accomplished” “rolling” functionality of the “stretchable band”
disclosed in the Specification, as well as in the facilitated “rolling” function
thereof, in the original and present versions of claim 1. By contrast, the
Examiner’s proposed annular cross section based upon Treadway Fancher’s
embodiment is inconsistent with the above-identified portions of the
Specification and claim 1. The annular cross section identified by the
Examiner is oriented in a manner that would not facilitate the “rolling”
operation, in the manner of the Appellant’s claims and disclosed
embodiment.
Additionally, claim 1 recites “a flexible elastic band including a first
expandable trough encircling said plastic sheath at said open first end of said
plastic sheath” and further specifies that the “stretchable band of circular
cross section” is “seated within said expandable trough of said flexible
elastic band.” Because the “stretchable band of circular cross section” is
within the “trough” that is “encircling said plastic sheath,” the Examiner’s
interpretation of the claim language would render the “circular cross
section” language superfluous. That is, the “stretchable band” of claim 1
would possess a “circular cross section” (in the sense of the Examiner’s
position), simply by virtue of being “seated within” the “trough” that
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“encircl[es]” the “plastic sheath.” (Emphasis added). Therefore, under the
Examiner’s interpretation, the claim language requiring a “stretchable band
of circular cross section” (emphasis added) would be superfluous,
redundant, or meaningless. Such an interpretation would be contrary to the
principle that “[c]laims must be ‘interpreted with an eye toward giving effect
to all terms in the claim.’” Becton, Dickinson & Co. v. Tyco Healthcare
Group, LP, 616 F.3d 1249, 1257 (Fed. Cir. 2010) (quoting Bicon, Inc. v.
Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006)). See also In re Power
Integrations, Inc., 884 F.3d 1370, 1376 (Fed. Cir. 2018) (explaining that a
“problem with the board’s claim construction is that it renders claim
language meaningless.”); In re Danly, 263 F.2d 844, 847 (CCPA 1959)
(“limit[ing] the claims to a construction in which a connection with a source
of alternating current is actually made,” even though “not positively
recite[d],” because “any other interpretation would render the [claimed]
expression virtually meaningless”).
Accordingly, we agree with the Appellant’s position, to the effect that
the claimed feature of “circular cross section” of the “stretchable band”
refers to the appearance of a section cut through a segment thereof,
essentially perpendicular to the length of the segment, showing a solid
circular form with a single outer edge.
Because we disagree with the Examiner’s position, as to how the prior
art would teach or suggest the claimed “stretchable band of circular cross
section,” we do not sustain the rejection of claim 1, along with claims 2–5
depending therefrom, under 35 U.S.C. § 103(a).
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DECISION
We REVERSE the Examiner’s decision rejecting claims 1–5 under 35
U.S.C. § 103(a).
REVERSED