Ex Parte Connor

Board of Patent Appeals and Interferences

May 18, 2011

11285883 (B.P.A.I. May. 18, 2011)

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.
11/285,883 11/23/2005 Trudy Connor 16402.002 8819
27887 7590 05/18/2011
FENNEMORE CRAIG
3003 NORTH CENTRAL AVENUE
SUITE 2600
PHOENIX, AZ 85012
EXAMINER
ZALUKAEVA, TATYANA
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
05/18/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TRUDY CONNOR
____________

Appeal 2009-013008
Application 11/285,883
Technology Center 3700
____________

Before MICHAEL W. O’NEILL, STEFAN STAICOVICI,
and KEN B. BARRETT, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Trudy Connor (Appellant) seeks our review under 35 U.S.C. § 134 of
the final rejection of claims 1, 3, 4, 6, 7, 9, 12, 22, and 25-31. Claims 2, 5, 8,
10, 11, and 13-21 are cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b). We REVERSE.
Appeal 2009-013008
Application 11/285,883

2
The Invention
The claimed invention is to an article of clothing that is a panty
substitute. Spec. 1, para [0003].
Claim 1, reproduced below with paragraphing added, is illustrative of
the subject matter on appeal.
1. An article of clothing that is a panty substitute
consisting of[:]
a layer of woven cloth and an adhesive on one
side of the cloth for affixing the layer of cloth to an
interior surface of a crotch area of an outer
garment, which outer garment is a pair of pants,
the cloth shaped to fit and conform to the
crotch area of the pants to provide an underwear
function without bunching or forming visible lines
in the pants when being worn by a person,
the panty substitute having a nonreinforced
peripheral edge and a thickness of less than 2
millimeters and an area not greater than 150 square
centimeters,
the adhesive being suitable for bonding the
cloth to the interior surface of the crotch area of
the pants so that the panty substitute is affixed
firmly to the crotch area of the pants and remains
in place without bunching while being worn by the
person.

The Prior Art
The Examiner relies upon the following as evidence of
unpatentability:
Mullen US 2,344,781 Mar. 21, 1944
Meaker US 2,821,719 Feb. 4, 1958
Sherrod US 5,042,088 Aug. 27, 1991
Nakamura US 5,439,748 Aug. 8, 1995
Osborn US 5,611,790 Mar. 18, 1997
Erlich US 5,884,330 Mar. 23, 1999
Anderson-Fischer US 6,087,550 Jul. 11, 2000
Appeal 2009-013008
Application 11/285,883

3
The Rejections
The following Examiner’s rejections are before us for review:
1) Rejection of claims 6, 9, and 26 under 35 U.S.C. § 112, second
paragraph, as being indefinite. Ans. 3.
2) Rejection of claims 1, 4, 6, 7, 9, 12, 22, 25-27, and 29-31 under 35
U.S.C. § 103(a) as unpatentable over Erlich, Osborn, Meaker, and Mullen.
Ans. 5.
3) Rejection of claims 3 and 28 under 35 U.S.C. § 103(a) as being
unpatentable over Erlich, Osborn, Meaker, Mullen, Nakamura, and
Anderson-Fischer. Ans. 10.
4) Rejection of claim 9 under 35 U.S.C. § 103(a) as being
unpatentable over Erlich, Osborn, Meaker, Mullen, and Sherrod.1 Ans. 11.

DISCUSSION
Rejection (1)
Claims 6, 9, and 26 narrow the cloth to either having reliefs or some
sensing indicia. As such, we agree with Appellant that these claims do not
introduce new structure, which the Examiner premises the indefiniteness
rejection upon. Thus, we reverse this rejection as articulated by the
Examiner.

1 The Examiner also states that claim 9 stands rejected under § 103(a) given
Erlich alone, Ans. 11. However, claim 9 depends from claim 1 and claim 1
stands rejected only with the combined teachings of Erlich, Osborn, Meaker,
and Mullen. Therefore, we find the phrase “over Erlich alone” a
typographical error in the statement of rejection and are not considering this
part of the Examiner’s rejection.
Appeal 2009-013008
Application 11/285,883

4
Rejections (2)-(4)
Appellant contends the proposed modification of Erlich with the
combined teachings of Osborn, Meaker, and Mullen does not create a panty
substitute, but rather an undershield with added elements. App. Br. 12-13.
Appellant contends the Examiner has used impermissible hindsight to
propose the modification of Erlich with the combined teachings of Osborn,
Meaker, and Mullen since the Erlich shield is sufficient by itself for its
intended purpose. App. Br. 13. Appellant contends that to substitute
Osborn’s woven cloth for Erlich’s nonwoven cloth would make Erlich’s
undershield incapable of performing its intended purpose of absorbing
moisture; rather, moisture would reach the garment. App. Br. 13-14.
Appellant contends that the claimed feature of an area not greater than 150
square centimeters is not rendered obvious by the combined teachings of
Erlich, Osborn, Meaker, and Mullen. App. Br. 14-15. Appellant contends
that the Examiner failed to give proper weight to the transitional phrase of
“consisting of.” App. Br. 15-16.
We have carefully reviewed the rejection in light of the arguments of
the Appellant and the Examiner’s responses. As a result of this review, we
conclude that the claimed invention within claims 1, 12, and 25 are not
rendered obvious by the combined teachings of Erlich, Osborn, Meaker, and
Mullen. Accordingly, we can not sustain the Examiner’s rejection of claim
1, 4, 6, 7, 9, 12, 22, 25-27, and 29-31. Since independent claims 1, 12, and
15 are not rendered obvious, claims 3, 9, and 28 are not rendered obvious.
See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) (If an independent
claim is nonobvious under 35 U.S.C. § 103, then any claim dependent
therefrom is nonobvious). Our reasons follow.
Appeal 2009-013008
Application 11/285,883

5
We agree with Appellant that the Examiner’s proposed substitution of
Osborn’s woven cloth for Erlich’s nonwoven cloth would defeat the
intended purpose of Erlich’s nonwoven cloth layer which is to absorb
moisture. See Erlich, col. 1, ll. 57-59. Osborn’s woven cloth permits
moisture to pass through to the absorbent core. See Osborn, col. 15, ll. 4-6.
The Examiner has not cogently explained how the application of Osborn’s
teachings to Erlich would not defeat Erlich’s intended purpose for the cloth
layer. When relying on a combination of prior art references, an examiner’s
proposed modification cannot render a prior art reference unsatisfactory for
its intended purpose. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984).

DECISION
Based on the foregoing, we:
REVERSE the Examiner’s decision to reject claims 6, 9, and 26 under
35 U.S.C. § 112, second paragraph, as being indefinite; and
REVERSE the Examiner’s decision to reject claims 1, 4, 6, 7, 9, 12,
22, 25-27, and 29-31 under 35 U.S.C. § 103(a) as unpatentable over Erlich,
Osborn, Meaker, and Mullen; claims 3 and 28 under 35 U.S.C. § 103(a) as
being unpatentable over Erlich, Osborn, Meaker, Mullen, Nakamura, and
Anderson-Fischer; claim 9 under 35 U.S.C. § 103(a) as being unpatentable
over Erlich, Osborn, Meaker, Mullen, and Sherrod.

REVERSED

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