Ex Parte Cantor et al

Patent Trial and Appeal Board

Dec 7, 2012

11497766 (P.T.A.B. Dec. 7, 2012)

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.
11/497,766 08/02/2006 Joy Cantor CANM 0133 PUS 7334
22045 7590 12/10/2012
BROOKS KUSHMAN P.C.
1000 TOWN CENTER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075
EXAMINER
WANG, JACK K
ART UNIT PAPER NUMBER
2682
MAIL DATE DELIVERY MODE
12/10/2012 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 JOY CANTOR and MARK A. CANTOR
____________________

Appeal 2010-006919
Application 11/497,766
Technology Center 2600
____________________

Before ROBERT E. NAPPI, DEBRA K. STEPHENS, and KRISTEN L.
DROESCH, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/497,766

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Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 1-8, 13-15, and 21-25. We have jurisdiction under 35
U.S.C. § 6(b). Claims 9-11 and 16 have been canceled and claims 12 and
17-20 have been withdrawn.
We AFFIRM-IN-PART and enter a NEW GROUNDS OF
REJECTION UNDER 37 C.F.R. § 41.50(b).
Introduction
According to Appellants, the invention relates to sanitary apparatuses
with moisture level indication (Spec. 1, §1. Field of the Invention).

STATEMENT OF THE CASE

Exemplary Claims
Claims 1 and 25 are exemplary claims and are reproduced below:
1. A moisture absorbent tampon comprising:
a body sized to be received within a body part of a user;
a moisture absorbent material provided in the body of the
tampon for absorbing moisture from the user;
a moisture sensor provided in the body of the tampon for
sensing moisture at a location of the body of the tampon; and
an actuator provided in the body of the tampon in
communication with the moisture sensor for receiving a signal from
the moisture sensor indicating a level of moisture absorption in the
moisture absorbent material whereby the actuator imparts a signal to
the body part of the user indicating to the user the level of moisture
absorption.

25. A moisture absorbent sanitary apparatus comprising:
a body sized to cooperate with a body part of a user;
a moisture absorbent material provided in the body of the
apparatus for absorbing moisture from the user;
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a moisture sensor provided in the body of the apparatus for
sensing moisture at a location of the body of the apparatus; and
an actuator provided in the body of the apparatus in
communication with the moisture sensor for receiving a signal from
the moisture sensor indicating a level of moisture absorption in the
moisture absorbent material whereby the actuator imparts a signal to
the body part of the user indicating to the user the level of moisture
absorption;
wherein the actuator is encased in a moisture resistant material.

References
David US 2004/0064114 Apr. 1, 2004
Zainiev US 2004/0106202 Jun. 3, 2004

Rejections
(1) Claims 21-23 stand rejected under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement.
(2) Claims 1-8, 13-15, 24, and 25 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Zainiev. 1
(3) Claims 21-23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zainiev and David.

1 We note the Examiner mistakenly includes claims 12 and 17-20 as pending
in the application (Ans. 3) and mistakenly includes canceled claims 9-11 and
16 and withdrawn claims 12 and 17-20 in the Claim Rejections (Ans. 4).
We treat claims 9-11 and 16 as being canceled and claims 12 and 17-20 as
being withdrawn based on Appellants’ claims (Claim Appd’x), stated Status
of Claims (App. Br. 2), and Acknowledgement Letter with Correction filed
January 21, 2010.
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We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made but chose not
to make in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii)(2011).

ISSUE 1
35 U.S.C. § 112, first paragraph, written description: claims 21-23
With respect to claims 21 and 22, Appellants argue the Specification
expressly discloses multiple “indicators” and thus, describes the recited “at
least two moisture sensors” recited in the claims (App. Br. 19).
With respect to claim 23, Appellants contend the Specification’s
disclosure of “incrementally indicating to the user multiple moisture levels”
supports the recited limitation of the “actuator imparts two different signals
to the user for indicating two different levels of moisture absorption” (id.).

Issue 1: Has the Examiner erred by rejecting claims 21-23 for failing
to comply with the written description requirement?

Analysis
We agree with the Examiner’s findings and reasons and adopt them as
our own. Accordingly, Appellants have not persuaded us the Examiner
erred in determining claims 21-23 fail to comply with the written description
requirements.

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ISSUE 2
35 U.S.C. § 102(b): Claims 1-8, 13-15, 24, and 25
Claims 1 and 25
Appellants argue their invention is not anticipated by Zainiev (App.
Br. 9-12; Reply Br. 2-5). Specifically, Appellants argue the tampon 110 of
Zainiev does not describe a tampon comprising a “body sized to be received
within a body part of a user” since the reservoir element 114 is an external
element (App. Br. 10). Instead, according to Appellants, the Examiner is
combining multiple embodiments of Zainiev to create a new embodiment
(Reply Br. 3). Moreover, Appellants maintain Zainiev does not teach the
sensor 314 and the alert mechanism 318 are both “provided in the body” of
the tampon, but instead teaches the monitoring system is attached to the
absorbent fiber material without teaching a location (id.).

Issue 2a: Has the Examiner erred in finding Zainiev discloses “a
moisture sensor provided in the body of the tampon” and “an actuator
provided in the body of the tampon” as recited in claim 1 and
commensurately recited in claim 25?

Analysis
We disagree with Appellants. Instead, we agree with the Examiner’s
findings and conclusions (Ans. 4, 7-8, and 10-11). Initially, we note
Appellants have not explicitly defined the term “body” in their Specification.
Appellants have not provided sufficient evidence or argument to show error
in the Examiner’s interpretation which is broad, but reasonable, in light of
the Specification. Therefore, we are not convinced that the monitoring
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system of Zainiev, even if attached, is not provided in the body of the
tampon. Indeed, the body is received into the body part of the user and the
monitoring system, even if attached to the body, is received as part of the
body, into the body part of the user.
In addition to the Examiner’s findings, we further note the following
that is cumulative. Zainiev describes the monitoring system may be
incorporated in the fiber itself (see [0087]). Specifically, Zainiev discloses
“[a] user wishing to employ the present invention can include the monitoring
system in absorbent fiber materials….” Thus, Zainiev describes including a
monitoring system in the fiber.
It follows, Zainiev discloses a body and a moisture sensor and an
actuator provided in the body as recited in claims 1 and 25 (Ans. 11; see
[0094] and [0087]).

Claim 4
Appellants argue that although Zainiev describes “micro speakers”
and “vibrations,” Zainiev does not describe a vibration chip that imparts
vibration (App. Br. 13).
Issue 2b: Has the Examiner erred in finding Zainiev describes “the
actuator further comprises a vibration chip for imparting a vibration to the
body part of the user?”
Analysis
We agree with Appellants that Zainiev does not describe a vibration
chip as recited in claim 4. However, while we agree Zainiev does not
anticipate the vibration device is a chip, we find an ordinary artisan at the
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time of the invention would have found it obvious to use a vibration chip to
generate the vibrations described in Zainiev. Our reviewing court stated in
Leapfrog Enters. Inc. v. Fisher-Price Inc., 485 F.3d 1157 (Fed. Cir. 2007)
that one of ordinary skill in the art would have found it obvious to combine
an old electromechanical device with electronic circuitry “to update it using
modern electronic components in order to gain the commonly understood
benefits of such adaptation, such as decreased size, increased reliability,
simplified operation, and reduced cost.” Id. at 1162. “The combination is
thus the adaptation of an old idea or invention … using newer technology
that is commonly available and understood in the art.” Id.
We thus find a skilled artisan could take the disclosure of Zainiev in
combination with his/her own knowledge of mechanisms that produce
vibrations to incorporate a vibration chip for implementing a vibration in the
body part of the user.
As our statutory basis for rejection is different than that set forth by
the Examiner, we make the following new grounds of rejection using our
authority under 37 C.F.R. § 41.50(b):
Claim 4 is rejected as being unpatentable under 35 U.S.C. § 103(a) for
obviousness over Zainiev.

Claims 5 and 25
Appellants further argue with respect to claim 25 and with respect to
claim 5 that Zainiev does not disclose “the actuator is encased in a moisture
resistant material” (App. Br. 13). Instead, according to Appellants, the
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disclosed actuator is a sound generating device not enclosed within the
moisture impermeable cylinder (id.).
Issue 2c: Has the Examiner erred in finding Zainiev describes “the
actuator is encased in a moisture resistant material?”
Analysis
We agree with Appellants that the Examiner has not shown Zainiev
describes the actuator is encased in a moisture resistant material; however,
we find given the teachings and suggestions of Zainiev, it would have been
obvious to an ordinary artisan to encase the actuator in a moisture resistant
material if the actuator were included in the fiber as taught by Zainiev (see
pg. 7, [0087]; see also pg. 8, [0101] and [0102]). Therefore, while we agree
with Appellants that Zainiev does not anticipate “the actuator is encased in a
moisture resistant material,” we do conclude an ordinary artisan would have
found it obvious to encase the actuator in a moisture resistant material.
Therefore, as our statutory basis for rejection is different than that set forth
by the Examiner, we make the following new grounds of rejection using our
authority under 37 C.F.R. § 41.50(b):
Claims 5 and 25 are rejected as being unpatentable under
35 U.S.C. § 103(a) for obviousness over Zainiev.

Claim 8
Appellants argue that although Zainiev describes generation of
electrical power, Zainiev does not disclose “a normally-closed mechanical
switch with a moisture soluble material maintaining the switch is an open
position until contacted by moisture” (App. Br. 14).
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Issue 2d: Has the Examiner erred in finding Zainiev describes “the
moisture sensor further comprises a normally-closed mechanical switch with
a moisture soluble material maintaining the switch in an open position until
contacted by moisture?”
Analysis
We agree with the Examiner’s findings and conclusions and adopt
them as our own (Ans. 12-13).

Claim 15
Appellants argue claim Zainiev discloses a variable sensor that
measures properties based on absorption by the capillary material (App. Br.
15). However, Appellants contend Zainiev does not disclose an insulator
that can be removed by a user (id.).
Issue 2e: Has the Examiner erred in finding Zainiev describes “an
insulator in cooperation with the switch maintaining the switch in an open
orientation, wherein the user can remove the insulator for powering the
circuit?”
Analysis
We agree with the Examiner’s findings and conclusions (Ans. 13-14)
and adopt them as our own.

CONCLUSION
The Examiner did not err in finding Zainiev discloses the invention as
recited in independent claim 1 and dependent claims 2, 3, 6-8, 13-15, and
24, not separately argued. Therefore, the Examiner did not err in rejecting
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claims 1-3, 6-8, 13-15, and 24 under 35 U.S.C. § 102(b) for anticipation by
Zainiev.
The Examiner erred in finding Zainiev discloses the invention as
recited in claims 4, 5, and 25. Therefore, the Examiner erred in rejecting
claims 4, 5, and 25 under 35 U.S.C. § 102(b) for anticipation by Zainiev.
We make the following new grounds of rejection using our authority
under 37 C.F.R. § 41.50(b): Claims 4, 5, and 25 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Zainiev.

ISSUE 3
35 U.S.C. § 103(a): claims 21-23
Appellants assert their invention is not obvious over Zainiev and
David because David does not teach or suggest “an actuator provided in the
body of the tampon” (App. Br. 17-18).
Issue 3: Has the Examiner erred in finding the combination of
Zainiev and David teaches or at least suggests “an actuator provided in the
body of the tampon?”
ANALYSIS
As set forth above in Issue 2, we find Zainiev describes “an actuator
provided in the body of the tampon” as recited in claim 1 and
commensurately recited in claim 25. Claims 21-23 depend from claim 1, but
Appellant does not argue the additional limitations recited in claims 21-23
(App. Br. 17-18). Since Zainev describes the disputed limitation, we further
find the combination of Zainiev and David teaches or at least suggests “an
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actuator provided in the body of the tampon.” As clarified in KSR, the
skilled artisan is “a person of ordinary creativity, not an automaton.” See
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
Accordingly, the Examiner did not err in finding the combination of
Zainiev and David teaches or suggests the invention as recited in claims 21-
23. Therefore, the Examiner did not err in rejecting claims 21-23 under
35 U.S.C. § 103(a) for obviousness over Zainiev and David.

DECISION
The Examiner’s rejection of claims 21-23 under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement is
affirmed.
The Examiner’s rejection of claims 1-3, 6-8, 13-15, and 24 under 35
U.S.C. § 102(b) as being anticipated by Zainiev is affirmed.
The Examiner’s rejection of claims 4, 5, and 25 under 35 U.S.C. §
102(b) as being anticipated by Zainiev is reversed.
The Examiner’s rejection of claims 21-23 under 35 U.S.C. § 103(a) as
being unpatentable over Zainiev and David is affirmed.

In a new ground of rejection, we reject claims 4, 5, and 25 as being
unpatentable under 35 U.S.C. § 103(a) for obviousness over Zainiev.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (2010). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
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37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the proceeding will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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