Ex Parte Cantor

Board of Patent Appeals and Interferences

Mar 18, 2004

09689194 (B.P.A.I. Mar. 18, 2004)

The opinion in support of the decision being
entered today was not written for publication
and is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOY L. CANTOR
____________
Appeal No. 2004-0327
Application No. 09/689,194
____________
HEARD: March 2, 2004
____________
Before COHEN, ABRAMS and MCQUADE, Administrative Patent Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Joy L. Cantor appeals from the final rejection of claims 1
through 9, all of the claims pending in the application.
THE INVENTION
The invention relates to “a scented adhesive bandage”
(specification, page 1). Representative claims 1, 5 and 7 read
as follows:
1. An adhesive bandage adapted to be applied to a user’s
skin wound, the adhesive bandage comprising:
a flexible backing layer having a rear surface;
Appeal No. 2004-0327
Application No. 09/689,194
2
a pad portion attached to the rear surface of the backing
layer;
an adhesive portion disposed on the rear surface of the
backing layer away from a central area of the pad portion, the
adhesive for adhering the bandage to the user’s skin;
fragrance portions disposed within the adhesive portion; and
a release cover releasably secured to the adhesive portion,
which when removed, allows for release of a scent associated with
the fragrance portions.
5. An adhesive bandage and wrapper assembly comprising:
a sealed wrapper having an inner surface and an interior
compartment;
an adhesive bandage disposed within the interior compartment
of the sealed wrapper, the adhesive bandage having an adhesive
side and a non-adhesive side; and
a fragrance portion disposed on at least one of the inner
surface of the sealed wrapper or non-adhesive side of the
adhesive bandage, such that the [sic] when the sealed wrapper is
opened, a scent is released which is associated with the
fragrance portion.
7. A method of forming a wrapped and scented adhesive
bandage, the method comprising:
providing a wrapper having an inner surface and an outer
surface;
applying a fragrance having a scent to the inner surface of
the wrapper;
positioning an adhesive bandage proximate the inner surface
of the wrapper; and
sealing the wrapper so that it encloses the adhesive bandage
and the scent of the fragrance.
Appeal No. 2004-0327
Application No. 09/689,194
1 In the final rejection, claims 1 through 4 additionally
stood rejected under 35 U.S.C. § 112, second paragraph. The
examiner has since withdrawn this rejection (see the advisory
action dated November 29, 2002, Paper No. 7).
3
THE PRIOR ART
The references relied on by the examiner to support the
final rejection are:
Bernardin et al. (Bernardin) 3,830,237 Aug. 20, 1974
Fischel-Ghodsian 5,071,704 Dec. 10, 1991
Hasse 5,591,146 Jan. 7, 1997
THE REJECTIONS
Claims 1 through 3 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Hasse.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hasse in view of Fischel-Ghodsian.
Claims 5, 7 and 8 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hasse in view of Bernardin.
Claims 6 and 9 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hasse in view of Bernardin and Fischel-
Ghodsian.
Attention is directed to the main and reply briefs (Paper
Nos. 11 and 13) and to the final rejection and answer (Paper Nos.
5 and 12) for the respective positions of the appellant and
examiner regarding the merits of these rejections.1
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Application No. 09/689,194
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DISCUSSION
I. The 35 U.S.C. § 102(b) rejection of claims 1 through 3 as
being anticipated by Hasse
Hasse discloses a sanitary napkin 20 (see Figures 1 and 2)
comprising a liquid pervious topsheet 24, a liquid impervious
backsheet 26, an absorbent core 28 positioned between the
topsheet and backsheet, an adhesive layer 90 on the surface of
the backsheet opposite the one contacting the absorbent core for
affixing the sanitary napkin to a wearer’s undergarment,
fragrance-filled microcapsules 95 and 96 embedded in the adhesive
layer, and a release liner 56 covering the adhesive layer.
Removing the release liner from the adhesive layer ruptures the
microcapsules and releases the fragrance contained therein (see
Figure 3).
Anticipation is established only when a single prior art
reference discloses, expressly or under principles of inherency,
each and every element of a claimed invention. RCA Corp. v.
Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir. 1984). In other words, there must be no
difference between the claimed invention and the reference
disclosure, as viewed by a person of ordinary skill in the field
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Application No. 09/689,194
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of the invention. Scripps Clinic & Research Found. v. Genentech
Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001, 1010 (Fed. Cir. 1991).
Independent claim 1 recites an adhesive bandage adapted to
be applied to a user’s skin wound. The claim requires the
bandage to comprise, inter alia, a pad portion and an adhesive
portion on the rear surface of the backing layer. As
persuasively argued by the appellant (see, for example, pages 6
through 8 in the main brief), Hasse does not teach such a
bandage. To begin with, a person of ordinary skill in the art
would not consider Hasse’s sanitary napkin to be an adhesive
bandage adapted to be applied to a user’s skin wound. The
examiner’s reasoning to the contrary (see page 4 in the answer)
is, at best, quite strained. A person of ordinary skill in the
art also would not view Hasse’s pad portion (absorbent core 28)
and adhesive portion (adhesive layer 90), which lie on opposite
surfaces of backsheet 26, to be on the rear surface of a backing
layer. The examiner’s interpretation of Hasse’s topsheet 24 and
backsheet 26 as collectively composing a backing layer wherein
the backsheet 26 is the rear surface thereof (see page 5 in the
answer) rests on an unreasonable interpretation of both the Hasse
disclosure, which clearly indicates that the topsheet and
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backsheet are separate entities, and the meaning of the term
“rear surface of the backing layer” in claim 1.
Thus, the examiner’s determination that Hasse is
anticipatory with respect to the subject matter recited in claim
1 is not well taken. Accordingly, we shall not sustain the
standing 35 U.S.C. § 102(a) rejection of claim 1, and dependent
claims 2 and 3, as being anticipated by Hasse.
II. The 35 U.S.C. § 103(a) rejection of claim 4 as being
unpatentable over Hasse in view of Fischel-Ghodsian
As Fischel-Ghodsian does not overcome the above noted
deficiencies of Hasse relative to the subject matter recited in
parent claim 1, we shall not sustain the standing 35 U.S.C.
§ 103(a) rejection of dependent claim 4 as being unpatentable
over Hasse in view of Fischel-Ghodsian.
III. The 35 U.S.C. § 103(a) rejection of claims 5, 7 and 8 as
being unpatentable over Hasse in view of Bernardin
The examiner concedes that Hasse does not meet the
limitations in independent claims 5 and 7 relating to the sealed
wrapper and to the placement of the fragrance on the inner
surface of the wrapper or, in the case of claim 5, on the non-
adhesive side of the bandage. To cure these shortcomings, the
examiner turns to Bernardin.
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Application No. 09/689,194
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Bernardin discloses “[a] method for incorporating small but
effective amounts of a volatile odor-counteracting scent or
fragrance into a compressed absorbent tampon of the type which
has an inserter stick removably seated in a preformed axial
cavity in the base of the tampon” (Abstract). As summarized by
Bernardin,
[t]he method consists of introducing a minute quantity
of an alcohol solution of the selected scent into the
preformed cavity, placing the inserter stick in
position in the cavity, and sealing the tampon and
stick combination in a vapor impermeable pouch. The
scent may be introduced by micro-spraying the solution
directly into the cavity, or by applying the solution
onto the leading end of the insertion stick before
positioning the stick in the cavity [Abstract].
In proposing to combine Hasse and Bernardin to reject claims
5 and 7, the examiner concludes that it would have been obvious
in view of Bernardin “to incorporate a sealed wrapper having a
fragrance disposed on the inner surface such that when the
wrapper is opened, the scent is released onto the device
disclosed by Hasse to provide the bandage with protection until
use” (final rejection, page 4).
Even if it is assumed for the sake of argument that Hasse
and Bernardin are analogous art with respect to the subject
matter on appeal (the appellant argues that they are not), there
is nothing in Bernardin’s method of producing a packaged scented
Appeal No. 2004-0327
Application No. 09/689,194
2 Bernardin’s teaching that no scenting oil permeates from
the cavity to the surface of the tampon (see column 2, lines 60
through 63; and column 3, lines 61 through 65) belies the
examiner’s speculation that “[i]t is inherent that the scent may
adhere to the wrapper” (answer, page 6).
8
tampon which would have suggested disposing a fragrance on the
inner surface of a wrapper for Hasse’s sanitary napkin (or on the
non-adhesive side of the napkin itself). The Bernardin method
does not involve applying a fragrance to these particular
locations,2 and Hasse’s napkin, which is scented by means of its
adhesive layer, is in no need of additional fragrance. Indeed,
Bernardin actually teaches away from such a modification by
noting that a prior art practice of applying a scent to a wrapper
proved to be quite problematic (see column 1, lines 23 through
40). Furthermore, neither Hasse’s sanitary napkin nor
Bernardin’s tampon constitutes an adhesive bandage as recited in
claims 5 and 7.
In light of the foregoing, the combined teachings of Hasse
and Bernardin do not justify the examiner’s conclusion that the
differences between the subject matter recited in independent
claims 5 and 7 and the prior art are such that the subject matter
as a whole would have been obvious at the time the invention was
made to a person having ordinary skill in the art. Consequently,
we shall not sustain the standing 35 U.S.C. § 103(a) rejection of
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Application No. 09/689,194
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claims 5 and 7, and dependent claim 8, as being unpatentable over
Hasse in view of Bernardin.
IV. The 35 U.S.C. § 103(a) rejection of claims 6 and 9 as being
unpatentable over Hasse in view of Bernardin and Fischel-Ghodsian
As Fischel-Ghodsian does not overcome the above noted
deficiencies of Hasse and Bernardin relative to the subject
matter recited in parent claims 5 and 7, we shall not sustain the
standing 35 U.S.C. § 103(a) rejection of dependent claims 6 and 9
as being unpatentable over Hasse in view of Bernardin and
Fischel-Ghodsian.
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Application No. 09/689,194
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SUMMARY
The decision of the examiner to reject claims 1 through 9 is
reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN P. MCQUADE )
Administrative Patent Judge )
JPM/gjh
Appeal No. 2004-0327
Application No. 09/689,194
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BROOKS KUSHMAN, P.C.
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075