Patent Law

Relatively Stiff

By Gary Odom and Jordan Kuhn

Yousef Daneshvar filed a patent application claiming : "an apparatus for dressing a wound. The invention features a 'relatively stiff support' that is secured over the wound using one or more 'relatively stretchable straps.'" The BPAI rejected Daneshvar's claims as anticipated and obvious over 5,779,657. Daneshvar had to go to the CAFC to get PTO incompetence overturned.

In re Daneshvar (CAFC 2009-1475) non-precedential

All of the rejected claims require a strap that "comprises relatively stretchable material that directly attaches to the attachment means . . . ." The Board held that the '657 patent discloses that limitation because it teaches that the straps can be elastic and that the straps can be directly attached to the support by an attachment means such as Velcro. Dr. Daneshvar argues that the claim language requires the straps to contain a material that is both stretchable and capable of directly attaching to the attachment means, and that the record does not show that the Velcro components disclosed in the '657 patent have both of those properties.

We agree with Dr. Daneshvar. The Board did not reject Dr. Daneshvar's argument that the claim language dictates that the relatively stretchable material must directly attach to the attachment means. Under that construction, if the '657 patent is to anticipate claim 11 it must disclose a material that is both stretchable and capable of attaching directly to the attachment means. The Board found that two separate strap embodiments in the '657 patent disclosed that element: a strap made of the loop-type Velcro described in the patent, and a strap made of elastic material having an end piece of Velcro. Those findings, however, are not supported by substantial evidence in the record. While the '657 patent teaches a strap incorporating a loop-type material and also describes a strap having elastic components, the '657 patent does not disclose a strap made of a material that is both stretchable and capable of attaching directly to the attachment means.

Truth-impaired government attorneys at the PTO tried to cover patent board laxity, but the CAFC panel wouldn't have it.

Regarding the '657 strap embodiment in which the strap is made of loop-type Velcro, the '657 patent does not disclose that the Velcro material is stretchable. The government argues that the Board could properly conclude from the '657 patent that the loop-type Velcro itself constitutes "relatively stretchable material." The Board, however, did not find that the '657 patent described the Velcro as being stretchable. It simply stated that the '657 patent taught that the strap may be stretchable and that the strap may contain Velcro. Yet while the '657 patent teaches both elastic and inelastic straps, it does not indicate that Velcro is an example of elastic material.¹

¹ The government's citation to a commercial pamphlet describing Velcro is of no assistance because the pamphlet was not shown to be evidence of record.

Another careless factual error by the board was overruled, along with dismissing BPAI imagination as a basis for rejection.

Because the '657 patent does not describe loop-type Velcro as being "relatively stretchable" or Velcro end pieces that are integral with and a part of the strap, and because the Board pointed to nothing else in the record to fill those evidentiary gaps, we hold that the Board erred in affirming the anticipation rejection. Moreover, because the Board's obviousness determination was based entirely on its anticipation ruling, the Board's error on anticipation undermines its obviousness determination as well. Thus neither ground of rejection can be sustained.

Its lips for suggestion sealed by law, all the CAFC could do was reverse and remand.

At this stage, we are limited to reviewing the grounds relied on by the agency. See SEC v. Chenery Corp., 332 U.S. 194 (1947); In re Buszard, 504 F.3d 1364, 1367 (Fed. Cir. 2007). Our decision addresses only the grounds employed by the Board, on the record before it, for affirming the examiner's rejections; beyond that limited holding, we do not direct the manner in which the agency should proceed on remand or indicate how the issue of patentability should ultimately be resolved. See, e.g., In re Lister, 583 F.3d 1307, 1317 n.4 (Fed. Cir. 2009). Accordingly, we reverse the Board's decision and remand for further proceedings.

Full post as published by The Patent Prospector on February 18, 2010 (boomark / email).