Ex parte Boone

Board of Patent Appeals and Interferences

Sep 16, 1999

08655736 (B.P.A.I. Sep. 16, 1999)

Application for patent filed May 30, 1996. According to the appellant, the1
application is a “continuation” of provisional application 60/000,021, filed June 8,
1995, now abandoned. However, we believe it only appropriate to indicate that the
present application is accorded benefit of the filing date of the specified provisional
application; 35 U.S.C. § 119(e)(1).
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JEFFREY S. BOONE
_____________
Appeal No. 98-1945
Application 08/655,7361
______________
ON BRIEF
_______________
Before COHEN, MEISTER and McQUADE, Administrative Patent
Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims 1 through 12 and 16 through
24, all of the claims remaining in the application, as amended
subsequent to the final rejection.
Appeal No. 98-1945
Application 08/655,736
It is apparent that both the final rejection of claims 1 through 9, 19, 20, 222
and 23 under 35 U.S.C. § 112, first paragraph, and the new ground of rejection under 35
U.S.C. § 112, second paragraph, set forth in the answer, have been overcome by the entry
of subsequently filed amendments.
2

Appellant’s invention pertains to a tampon device, a
tampon applicator device, a tampon device kit, and to a method
of reminding a tampon user that a tampon has been used. An
understanding of the invention can be derived from a reading
of exemplary claims 1, 4, 10, and 16, copies of which appear
in the revised Appendix attached to “REPLY TO PAPER 23" (Paper
No. 24).
As evidence of obviousness, the examiner has applied the
documents listed below:
Stump 3,429,312 Feb. 25, 1969
Bossak 3,948,257 Apr. 6, 1976
Thompson 4,332,251 Jun. 1, 1982
Jones 4,941,688 Jul. 17, 1990
The following rejection is before us for review.2
Appeal No. 98-1945
Application 08/655,736
The examiner has not complied with Section 1208 of the MPEP. This section3
specifies that statements of grounds of rejection appearing in a single prior action may
be incorporated by reference into an examiner’s answer. Thus, reference should not be
made, directly or indirectly, to more than one prior office action.
3
Claims 1 through 12 and 16 through 24 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Stump in
view of Bossak, Thompson, and Jones.
The full text of the examiner's rejection and response to
the argument presented by appellant appears in the first and
final rejections and answer (Paper Nos. 4, 9 and 15), while3
the complete statement of appellant’s argument can be found in
the main and reply briefs (Paper Nos. 14 and 16).
In the main brief (pages 2, 3, and 6), appellant groups
the claims as follows: claims 1-3, claims 4-9, claim 10,
claims 11-12, claim 16, claim 18, claims 19-21, and claims 22
through 24, and requests that each group of claims be
considered separately.
OPINION
Appeal No. 98-1945
Application 08/655,736
4
In reaching our conclusion on the obviousness issue
raised in this appeal, we have carefully considered
appellant’s specification and claims, the applied patents, and
the respective viewpoints of appellant and the examiner. As a
consequence of our review, we make the determination which
follows.
This panel of the board reverses the examiner’s rejection
of appellant’s claims under 35 U.S.C. 103, for the reasons set
forth below.
When we set aside what appellant has taught us in the
present application, it is at once apparent to us that, absent
impermissible hindsight, the applied references themselves
would not have been suggestive of the tampon device (claim 1),
the tampon applicator device (claim 4), the tampon device kit
(claim 10), and the method of reminding a tampon user that a
tampon has been used (claim 16).
We certainly comprehend each of the applied teachings.
Appeal No. 98-1945
Application 08/655,736
5
In particular, we appreciate the Jones disclosure of an
adhesively secured periodic event recorder that is intended to
be associated with, related to, or nearby the site of
performance of a desired task or event (column 1, lines 58
through 68). However, as we see it, at best, of the
collective evidence of obviousness before us, the Bossak and
Thompson patents would have been fairly suggestive of the
application of either of the respective deodorant retaining
device and disc features for a tampon (each with their
additional reminder function) to the tampon applicator and
package arrangement of Stump (Fig. 5). This modification, of
course, does not yield appellant’s invention.
As should be evident from our analysis, supra, the
evidence of obviousness relied upon simply would not have been
suggestive of, in particular, an adhesive reminder “sticker”,
a requirement of each of appellant’s independent tampon device
and method claims 1, 4, 10, and 16.
In summary, this panel of the board has reversed the
rejection of appellant’s claims under 35 U.S.C. § 103.
Appeal No. 98-1945
Application 08/655,736
6
The decision of the examiner is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JAMES M. MEISTER )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOHN P. McQUADE )
Administrative Patent Judge )
ICC/kis
Jeffrey S. Boone
14309 Strawbridge Court
Chesterfield, MO 63017-2831