Ex Parte Bester, et al

Board of Patent Appeals and Interferences

Aug 15, 2011

11300824 (B.P.A.I. Aug. 15, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KENNETH W. BESTER JR., JOSEPH DIPALMA,
and MARYANN ZUNKER
____________________

Appeal 2010-001994
Application 11/300,824
Technology Center 3700
____________________

Before: MICHAEL W. O’NEILL, PHILLIP J. KAUFFMAN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the rejection of claims
1-7 and 10-35. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

THE INVENTION
Appellants’ claimed invention “relates generally to hygienic articles
for personal wear by males to take in and retain body fluids away from the
wearer’s skin.” Spec. 1, para. [0001]. Independent claim 1, reproduced
below, is representative of the claimed subject matter:
1. A hygienic article for personal wear by a male, said hygienic
article comprising an elongate fabric sleeve having a first end, a
longitudinally opposite second end and a central passage
extending longitudinally between the first and second ends of
the sleeve, the first end of the sleeve being open to the central
passage to permit the wearer’s penis to extend through said
open first end into the central passage of the sleeve with the
first end of the sleeve nearer to the base of the wearer’s penis
than the second end of the sleeve, the second end of the sleeve
also being open to the central passage of the sleeve to permit
the wearer to urinate through said open second end, the sleeve
having a longitudinal direction extending longitudinally
between the first and second ends of the sleeve and a transverse
direction extending circumferentially about the sleeve, wherein
the sleeve has a length sized such that the second end of the
sleeve is disposed longitudinally outward beyond the tip of the
wearer’s penis during wear, said sleeve being stretchable in the
transverse direction of the sleeve for conforming the size and
shape of the central passage of the sleeve to the wearer’s penis.

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REJECTIONS
To facilitate our review, we organized the rejections based upon the
independent claims involved. Appellants seek review of the following
rejections:

I. Independent claim 1.
a. Rejection of claims 1, 4, 5, 7, 14, 15, and 33 under 35 U.S.C.
§ 103(a) as being unpatentable over Cherio (US 3,307,546; issued March 7,
1967).1
b. Rejection of claims 2 and 3 under 35 U.S.C. § 103(a) as being
unpatentable over Cherio and Wada (EP 0903131 A1; published March 24,
1999).
c. Rejection of claim 6 under 35 U.S.C. § 103(a) as being
unpatentable over Cherio and McDevitt (US 2003/0050589 A1; published
March 13, 2003).
d. Rejection of claim 11 under 35 U.S.C. § 103(a) as being
unpatentable over Cherio and Soerens (US 6,596,402 B2; published July 22,
2003).
e. Rejection of claim 12 under 35 U.S.C. § 103(a) as being
unpatentable over Cherio and Sorbara2 (US 5,331,670; issued July 19,
1994).

1 The Examiner explains that claims 16, 18-21, 24, and 34 are not subject to
rejection as obvious in view of Cherio, but rather are only rejected as
obvious in view of Cherio and Parker (see rejection III.a., infra). Ans. 18.
Consequently, the rejection of claims 16, 18-21, 24, and 34 under 35 U.S.C.
§ 103(a) as being unpatentable over Cherio is not before us on appeal.

2 The Examiner mistakenly refers to this reference as Westby. We refer to
this reference as Sorbara throughout.
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f. Rejection of claim 13 under 35 U.S.C. § 103(a) as being
unpatentable over Cherio, Sorbara, and Roessler (US 5,399,219; issued
March 21, 1995).
II. Independent claims 10 and 22
Rejection of claims 10 and 22 under 35 U.S.C. § 103(a) as being
unpatentable over Cherio and Koenig (US 2003/0119396 A1; published June
26, 2003).
III. Independent claim 16
a. Rejection of claims 16, 18-21, 24, 25, and 34 under 35 U.S.C.
§ 103(a) as being unpatentable over Cherio and Parker (US 3,097,644;
issued July 16, 1963).
b. Rejection of claim 17 under 35 U.S.C. § 103(a) as being
unpatentable over Cherio, Parker, and Wada.
c. Rejection of claim 23 under 35 U.S.C. § 103(a) as being
unpatentable over Cherio, Parker, and Soerens.
d. Rejection of claim 26 under 35 U.S.C. § 103(a) as being
unpatentable over Cherio, Parker, and Roessler.
IV. Independent claim 27
a. Rejection of claims 27-29, 31, and 32 under 35 U.S.C. § 103(a) as
being unpatentable over Cherio, Addis3 (US 3,283,886; issued November 8,
1966), and Fernfors (6,328,725 B2; issued December 11, 2001).
b. Rejection of claim 30 under 35 U.S.C. § 103(a) as being
unpatentable over Cherio, Addis, Fernfors, and Sorbara.

3 The Examiner mistakenly refers to this reference as Eddis. See, e.g., Ans.
14. We refer to this reference as Addis throughout.
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V. Independent claim 35
Rejection of claim 35 under 35 U.S.C. § 103(a) as being unpatentable
over Cherio.

ISSUES
Does Cherio disclose an elongate fabric sleeve (tubular fabric 10)
having a length sized such that the device is capable of positioning as called
for in independent claim 1?
Did the Examiner articulate adequate reasoning based on a rational
underpinning to explain why a person of ordinary skill in the art would have
been led to provide at least a portion of the inner surface of Cherio’s
elongate fabric sleeve (tubular fabric 10) with a wet wipe lining, as taught by
Koenig, to reach the subject matter of independent claims 10 and 22?
Does Parker disclose or suggest a technique for selectively
configuring an elongate fabric sleeve between an open and a closed position
as called for in independent claim 16?
Would a person of ordinary skill in the art have combined Cherio,
Addis, and Fernfors as proposed by the Examiner to reach the subject matter
of independent claim 27?
Does Cherio disclose an elongate fabric sleeve that is elastic in the
longitudinal direction of the sleeve as called for in independent claim 35?

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ANALYSIS
I. Independent claim 1.
a. Rejection of claims 1, 4, 5, 7, 14, 15, and 33 under 35 U.S.C.
§ 103(a) as being unpatentable over Cherio
Appellants argue claims 1, 4, 5, 7, 14, 15, and 33 as a group. App. Br.
8-10. We select claim 1 as the representative claim, and claims 4, 5, 7, 14,
15, and 33 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
Independent claim 1 is directed to a hygienic article for personal wear
by a male comprised of an elongate fabric sleeve having a first end and a
second end, with the length of the sleeve sized so that the second end of the
sleeve is disposed longitudinally outward beyond the tip of the wear’s penis
during wear.
The Examiner found that Cherio discloses an elongate fabric sleeve
(tubular fabric 10) having a first end and a second end. Ans. 4. The
Examiner found that Cherio’s tubular fabric 10 may be applied to any part of
the anatomy, and is capable of being used so that the second end of the
sleeve is disposed longitudinally outward beyond the tip of the wear’s penis
during wear, as called for in claim 1. Id.
Appellants argue that the reference fails to disclose or suggest an
elongate fabric sleeve as called for in claim 1, because Cherio’s tubular
fabric 10 is sized to fit over the bandage applied to a wound on a patient, and
as such, the bandage and tubular fabric 10 would not extend past the end of
the anatomical member. App. Br. 9; Reply Br. 2. Appellants also argue that
the Examiner “failed to articulate any reason whatsoever as to why one
skilled in the art would have found it obvious to extend the length of the
fabric of Cherio et al. beyond the tip of a wearer’s penis.” Reply Br. 2.
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Appellants’ arguments are based on the misperception that the
proposed combination calls for some modification of Cherio’s elongate
fabric sleeve (tubular fabric 10) to perform the function of being positioned
as called for in independent claim 1. This is not the case. The Examiner
found that structurally, Cherio discloses the sleeve of claim 1 (i.e., the
requisite length), and that Cherio’s sleeve (tubular fabric 10) is capable of
the use (positioning) described in claim 1. Because no modification of
Cherio’s device is required, Appellants’ argument is irrelevant.
Further, because the Examiner found that Cherio’s elongate fabric
sleeve (tubular fabric 10) has a length sized such that the device is capable
of positioning as called for in independent claim 1, the burden shifted to
Appellants to show that this is not the case. See In re Schreiber, 128 F.3d
1474, 1478 (Fed. Cir. 1997). Appellants’ argument that because Cherio’s
device is intended to firmly hold a medical dressing in place it would not be
positioned as called for in claim 1, is unconvincing because it does not point
to a structural distinction between Cherio’s tubular fabric 10 and the
elongated fabric sleeve of claim 1. Claims directed to an apparatus must be
distinguished from the prior art in terms of structure rather than function,
provided the structure is capable of performing the function. Id. at 1477-78
(holding that a funnel disclosed for oil dispensing anticipated a claim to a
funnel-like structure employed for dispensing popcorn and that applicant had
the burden to prove that the funnel was not capable of dispensing popcorn
once the Examiner established a similarity in structure).
As such, we sustain the rejection of independent claim 1, and claims
4, 5, 7, 14, 15, and 33 fall with claim 1.
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b.- f. Rejection of claims 2, 3, 6, 11, 12, and 13 under 35 U.S.C.
§ 103(a) as being unpatentable over Cherio, and one of Wada, McDevitt,
Soerens, Sorbara, or Sorbara and Roessler
Claims 2, 3, 6, 11, 12, and 13 depend, directly or indirectly, from
independent claim 1. The rejection of each of these claims relies upon the
Examiner’s finding that Cherio discloses an elongate fabric sleeve (tubular
fabric 10) having a first end and a second end, capable of being positioned as
called for in independent claim 1. Ans. 5-11.
Appellants repeat the arguments used against claim 1 with respect to
these claims. App. Br. 14-15, 19-20; Reply Br. 1. For the reasons explained
in the analysis of claim 1, supra, those arguments are unconvincing here as
well. Accordingly, we sustain the rejection of claims 2, 3, 6, 11, 12, and 13.

II. Independent claims 10 and 22
Rejection of claims 10 and 22 under 35 U.S.C. § 103(a) as being
unpatentable over Cherio and Koenig
Independent claims 10 and 22 are directed to a hygienic article for
personal wear by a male comprising an elongate fabric sleeve, “the sleeve
further comprising a wet wipe lining at least a portion of the inner surface of
the sleeve.”
The Examiner found that Cherio discloses the claimed invention
except at least a portion of the inner surface of the sleeve having a wet wipe
lining. Ans. 8. The Examiner found that “Koenig teaches that it is known to
provide an inner surface of the incontinence article with the wet wipe.” Ans.
8 (citing Koenig 1, para. [0005]). The Examiner concluded that it would
have been obvious to provide at least a portion of the inner surface of the
sleeve of Cherio’s hygienic article with a wet wipe lining, as taught by
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Koenig, “in order to remove ammonia held on the skin’s surface.” Ans. 8.
The Examiner further reasoned that claim 10 is obvious in view of Cherio
and Koenig because the proposed modification is “no more than ‘the simple
substitution of one known element for another or the mere application of a
known technique to a piece of prior art ready for improvement.’” Ans. 19.
Appellants argue that a person of ordinary skill in the art would not
have combined Cherio and Koenig as proposed by the Examiner. App.
Br. 16-18. We agree with Appellants for the following reasons.
First, the Examiner reasoned that a person of ordinary skill in the art
would have made the proposed modification because Koenig’s wet wipe will
remove ammonia held on the skin’s surface. Ans. 8. However, Cherio’s
elongate fabric sleeve (tubular fabric 10) is placed over a medical dressing to
hold the dressing in place, and as a result, tubular fabric 10 is not in direct
contact with the user’s skin. Cherio, col. 1, ll. 10-12. Neither reference
discloses that a wet wipe will remove ammonia from a user’s skin through
an intervening medical dressing. Nor did the Examiner find that such
operation was within the knowledge of a person of ordinary skill in the art.
Consequently, the reason given by the Examiner does not provide a rationale
underpinning for the proposed combination.
Second, Cherio does not disclose that any portion of the inner surface
of the elongate fabric sleeve (tubular fabric 10) includes a lining. For that
reason, the proposed modification is not a simple substitution of one lining
for another as the Examiner concluded. Contra Ans. 19-21.
Third, the Examiner’s finding that Koenig discloses providing an
inner surface of an incontinence article with a wet wipe (as a lining) is in
error. Koenig discloses a substance that can be incorporated into absorbent
products or wet wipes, where that substance interacts with bacteria to reduce
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the amount of ammonia produced by the bacteria. Koenig 1, paras. [0001],
[0005]. In other words, Koenig discloses that either incontinence articles or
wet wipes may be treated with a substance that will reduce ammonia odor.
However, contrary to the Examiner’s finding, Koenig does not disclose
providing an incontinence article with a wet wipe lining.
Given this, we cannot sustain the rejection of independent claims 10
and 22.

III. Independent claim 16
a. Rejection of claims 16, 18-21, 24, 25, and 34 under 35 U.S.C.
§ 103(a) as being unpatentable over Cherio and Parker
Independent claim 16 is directed to a hygienic article for personal
wear by a male, comprising an elongate fabric sleeve having a first end and a
second end, “and a closure for the second end of the sleeve such that the
sleeve is selectively configurable between a closed position in which the
closure substantially closes the second end of the sleeve and an open
position in which the second end of the sleeve is free from being blocked by
the closure to permit the wearer to urinate through said open second end of
the sleeve.”
The Examiner found that Cherio discloses the invention as claimed
except that Cherio does not expressly disclose a closure for the second end
of the sleeve. Ans. 11. The Examiner found that Parker “teaches that it is
known to use the closure 55 for the second end of the sleeve.” Id. The
Examiner concluded that it would have been obvious to employ the closure
of Parker at the second end of the device of Cherio, “in order to close the
sleeve for hygienic purposes.” Ans. 12.
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Appellants argue that a person of ordinary skill in the art would not
have combined the knotted end as taught by Parker with the tubular fabric of
Cherio to arrive at the claimed invention because Parker’s knotted end is
intended as a permanent closure of the tube, and at best, would be difficult to
untie. App. Br. 21-22; Reply Br. 3-4.
Parker discloses a surgical dressing or bandage (toroidal roll 35
formed from knitted cloth 40) that may be applied to an object such as a
body part. Parker, col. 1, ll. 10-15; col. 4, ll. 11, 23-26; figs. 1, 2. Parker
discloses that free end 55 of head bandage 54 formed from toroidal roll 35
may be knotted or tied into a closed end. Parker, col. 6, ll. 40-43; fig. 5.
We cannot find by a preponderance of the evidence that Parker’s knot
may be reconfigured (untied) to an open position. Parker does not explicitly
disclose that the knot may be untied, and it is possible that Parker’s bandage,
including knots, is removed by cutting. Further, Parker’s bandage (knitted
cloth 40) is fitted by alternately stretching and contracting in two directions,
and it is unclear how this characteristic of the bandage would affect the
ability to untie knots in the bandage. See Parker, col. 4, ll. 36-68; figs. 7-9.
As such, we cannot sustain the rejection of claim 16, or its dependent
claims 18-21, 24, 25, and 34.
b.- d. Rejection of claim 17, 23, and 26 under 35 U.S.C. § 103(a) as
being unpatentable over Cherio, Parker, and Wada, Soerens, or Roessler
Claims 17, 23, and 26 depend, directly or indirectly, from independent
claim 16. Appellants repeat the arguments used against the rejection of
claim 16 with respect to these claims. App. Br. 23. For the reasons
explained in the analysis of claim 16, supra, we also cannot sustain the
rejections of claims 17, 23, and 26.

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IV. Independent claim 27
a. Rejection of claims 27-29, 31, and 32 under 35 U.S.C. § 103(a) as
being unpatentable over Cherio, Addis, and Fernfors
Appellants argue claims 27-29, 31, and 32 as a group. App. Br. 24-
26. We select claim 27 as the representative claim, and claims 28, 29, 31,
and 32 stand or fall with claim 27. See 37 C.F.R. § 41.37(c)(1)(vii).
Independent claim 27 is directed to a combination dispenser and
plurality of hygienic articles for personal wear by a male where the
dispenser facilitates dispensing the hygienic articles “one at a time, from the
dispenser.”
The Examiner found that: Cherio discloses a hygienic article
comprised of an elongate fabric sleeve, Fernfors discloses connecting a
plurality of hygienic articles in the form of a continuous web, and Addis
discloses use of a dispenser for a coiled continuous web. Ans. 14. The
Examiner concluded that it would have been obvious to connect the hygienic
articles of Cherio in a continuous web, as taught by Fernfors, and to dispense
that continuous web from a dispenser, as taught by Addis. Ans. 14-15.
Appellants argue that a person of ordinary skill in the art would not
have combined the references as proposed by the Examiner because there is
no suggestion “for cutting through the circumferences of such a tubular
fabric.” Reply Br. 6 (clarifying the argument at App. Br. 24-26).
Appellants’ assertion is not commensurate in scope with claim 27, in
that claim 27 does not call for cutting through the circumference of the
elongated sleeve (tubular fabric). Rather, claim 27 more broadly calls for
the hygienic articles to be dispensed, “one at a time, from the dispenser.”
We consider Appellants’ argument to the extent that it asserts that the
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references do not suggest that the dispenser facilitates dispensing the
hygienic articles one at a time.
The proposed combination relies upon a dispenser as disclosed by
Addis. See Ans. 14. Addis discloses a dispenser (tape dispenser 11)
configured to facilitate holding the tape stationary while tearing the sleeve
(tape). Addis, col. 1, l. 9; col. 2, ll. 17-19, 53-56; fig. 2. Consequently, the
elongate sleeves (tubular fabric 10) of Cherio, formed in a continuous web,
as taught by Fernfors, could be torn into separate elongate sleeves as they
are dispensed, as taught by Addis. As such, contrary to Appellants’
assertion, the references disclose or suggest a dispenser that facilitates
dispensing articles one at a time.
Given this, we sustain the rejection of claim 27. Claims 28, 29, 31,
and 32 stand with claim 27.
b. Rejection of claim 30 under 35 U.S.C. § 103(a) as being
unpatentable over Cherio, Addis, Fernfors, and Sorbara
Claim 30 depends from claim 27. Appellants repeat the arguments
used again the rejection of claim 27 with respect to claim 30. App. Br. 26-
27. For the reasons explained in the analysis of claim 27, supra, we also
sustain the rejection of claim 30.

V. Independent claim 35
Claim 35 is directed to a hygienic article for personal wear by a male,
comprising an elongate fabric sleeve that is elastic in the longitudinal
direction of the sleeve. Appellants’ Specification defines the term “elastic”
as “that property of a material where upon removal of an elongating force,
the material is capable of recovering to substantially its unstretched size and
shape or the material exhibits a significant retractive force.” Spec. 10:1-5.
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The Examiner found that Cherio’s sleeve (tubular fabric 10) is formed
from elastic zig-zag yarns and is “stretchable in all directions,” to include
longitudinally. Ans. 4, 18.
Appellants argue that Cherio’s tubular fabric 10 is not elastic in the
longitudinal direction as called for in claim 35. App. Br. 12-13; Reply Br. 4.
Cherio discloses a tubular bandage for firmly holding medical
dressings in place. Col. 1, ll. 10-12. Cherio’s tubular fabric 10 is comprised
of a set of axially spaced inelastic yarns 12, and a set of elastic zig-zag yarns
11. Col. 2, ll. 48-49; fig. 1. Cherio discloses that the elastic zig-zag yarns
11 provide extensive radial (transverse) stretching of the tubular fabric 10.
Col. 1, l. 71 - col. 2, l. 1. Cherio discloses that axially spaced inelastic yarns
12 may be made of any inelastic substance. Col. 1, ll. 56-57. Given this, we
find by a preponderance of the evidence that Cherio’s tubular fabric 10 is
elastic in the radial (transverse direction of the sleeve), but is not elastic in
the longitudinal direction of the sleeve. Contra Ans. 4, 18.
Because the Examiner’s conclusion of obviousness is based on an
erroneous finding of fact, we cannot sustain the rejection of independent
claim 35.

CONCLUSIONS
Cherio discloses an elongate fabric sleeve (tubular fabric 10) having a
length sized such that the device is capable of positioning as called for in
independent claim 1.
The Examiner did not articulate adequate reasoning based on a
rational underpinning to explain why a person of ordinary skill in the art
would have been led to provide at least a portion of the inner surface of
Cherio’s elongate fabric sleeve (tubular fabric 10) with a wet wipe lining, as
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taught by Koenig, to reach the subject matter of independent claims 10 and
22.
Parker does not disclose or suggest a technique for selectively
configuring an elongate fabric sleeve between an open and a closed position
as called for in independent claim 16.
A person of ordinary skill in the art would have combined Cherio,
Addis, and Fernfors as proposed by the Examiner to reach the subject matter
of independent claim 27.
Cherio does not disclose a hygienic article for personal wear by a
male comprised of an elongate fabric sleeve that is elastic in the longitudinal
direction of the sleeve as called for in independent claim 35.

DECISION
I. We affirm the Examiner’s decision to reject:
a. Claims 1, 4, 5, 7, 14, 15, and 33 under 35 U.S.C. § 103(a) as being
unpatentable over Cherio;
b. Claims 2 and 3 under 35 U.S.C. § 103(a) as being unpatentable
over Cherio and Wada;
c. Claim 6 under 35 U.S.C. § 103(a) as being unpatentable over
Cherio and McDevitt;
d. Claim 11 under 35 U.S.C. § 103(a) as being unpatentable over
Cherio and Soerens;
e. Claims 12 under 35 U.S.C. § 103(a) as being unpatentable over
Cherio and Sorbara; and
f. Claims 13 under 35 U.S.C. § 103(a) as being unpatentable over
Cherio, Sorbara, and Roessler.
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II. We reverse the Examiner’s decision to rejection claims 10 and 22 under
35 U.S.C. § 103(a) as being unpatentable over Cherio and Koenig.
III. We reverse the Examiner’s decision to reject:
a. Claims 16, 18-21, 24, 25, and 34 under 35 U.S.C. § 103(a) as being
unpatentable over Cherio and Parker;
b. Claim 17 under 35 U.S.C. § 103(a) as being unpatentable over
Cherio, Parker, and Wada;
c. Claim 23 under 35 U.S.C. § 103(a) as being unpatentable over
Cherio, Parker, and Soerens; and
d. Claim 26 under 35 U.S.C. § 103(a) as being unpatentable over
Cherio, Parker, and Roessler.
IV. We affirm the Examiner’s decision to reject:
a. Claims 27-29, 31, and 32 under 35 U.S.C. § 103(a) as being
unpatentable over Cherio, Addis, and Fernfors; and
b. Claim 30 under 35 U.S.C. § 103(a) as being unpatentable over
Cherio, Addis, Fernfors, and Sorbara.
V. We reverse the Examiner’s decision to reject claim 35 under 35 U.S.C.
§ 103(a) as being unpatentable over Cherio.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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