Paul GaffneyDownload PDFPatent Trials and Appeals BoardAug 21, 201914542843 - (D) (P.T.A.B. Aug. 21, 2019) Copy Citation 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.) Appeal 2018-008402 Application 14/542,843 2 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 Appeal 2018-008402 Application 14/542,843 3 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. Appeal 2018-008402 Application 14/542,843 4 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 Appeal 2018-008402 Application 14/542,843 5 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). Appeal 2018-008402 Application 14/542,843 6 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 Appeal 2018-008402 Application 14/542,843 7 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 Appeal 2018-008402 Application 14/542,843 8 “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). Appeal 2018-008402 Application 14/542,843 9 DECISION We REVERSE the Examiner’s decision rejecting claims 1–5 under 35 U.S.C. § 103(a). REVERSED Copy with citationCopy as parenthetical citation