Ex Parte Goldberg

Board of Patent Appeals and Interferences

Oct 31, 2003

09640325 (B.P.A.I. Oct. 31, 2003)

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for publication and is not binding precedent of the Board.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. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte
David Goldberg

Appeal No. 2003-1450
Application No. 09/640,325
ON BRIEF

___________________________
Before WINTERS, LIEBERMAN and SCHEINER, Administrative Patent Judges.
LIEBERMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the decision of the examiner
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1Claims 10 and 11 have been allowed by the examiner. See Answer, page 2.
refusing to allow claims 1 through 9, which are all the claims pending in this application.1
THE INVENTION
The invention is directed to a method for treating diaper rash using an applicator
having a particular structure. Additional limitations are described in the following
illustrative claims.

THE CLAIMS
Claims 1 and 8 are illustrative of appellant’s invention and are reproduced below.
1. A method for treating diaper rash comprising applying an anti-diaper rash agent from
an applicator to the skin of a baby wherein the applicator comprises an elongated housing
containing said anti-diaper rash agent, an elliptically domed applicator portion at one end
of the housing and slots formed through said elliptical domed applicator portion and a
means for forcing said cream of said applicator through said elongated slots in said
elliptically domed applicator portion.
8. The applicator according to claim 7 wherein said elliptically domed applicator portion is
made from a plastic containing an antibacterial agent.
THE REFERENCES OF RECORD
As evidence of obviousness, the examiner relies upon the following references:
Moss 4,816,254 Mar. 28 1989
Dornbusch et al. 5,547,302 Aug. 20, 1996
Franta et al. (Franta) 5,879,096 Mar. 09 1999
Eguchi et al. (Eguchi) JP 10029907 Mar. 02 1998
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THE REJECTIONS

Claims 1 through 6 and 9 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Moss in view of Franta.
Claims 1 through 7 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Moss in view of Franta and further in view of Dornbusch.
Claim 8 stands rejected under 35 U.S.C. §103(a) as being unpatentable over Moss
in view of Franta and further in view of Eguchi.
OPINION
We have carefully considered all of the arguments advanced by the appellant and
the examiner and agree with the examiner for the reasons stated herein that the rejection of
claims 1 through 7 and 9 under § 103(a) is well founded. Accordingly, we affirm this
rejection. We agree with the appellant that the rejection of claim 8 under § 103(a) is not
well founded. Accordingly, we reverse this rejection.
As an initial matter, it is the appellant’ s position that, “[t]he claims of each group
stand or fall together.” See Brief, page 6. We interpret the term “group” in the context
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of the Brief as corresponding to the specific claims associated with each ground of
rejection. Accordingly, we select claims 1 and 8 as representative of the claimed subject
matter and limit our consideration thereto. See 37 CFR §1.192(c)(7)(2002).
The Rejection of claims 1-7 and 9
It is the appellant’s position that the references cannot be combined and that,
“nowhere in Moss does it suggest that the ointment therein would be put into some kind of
applicator in the sense of Appellant’s invention.” See Brief, page 6. We disagree.
Moss is directed to an ointment for treating skin irritations such as diaper rash. See
Abstract and column 1, lines 5-16. Moss states that application of the ointment, “may be
performed by hand, but preferably with a suitable medical applicator or swab.” As the
examiner has stated however, “Moss does not expressly teach the specific applicator that
can be used for administration of the composition . . . . ” See Answer, page 4.
Accordingly, the use of a well known medical applicator suitable for application of
an ointment would have been obvious to the person having ordinary skill in the art. In this
respect the examiner has relied upon a reference to Franta. We find that Franta is directed
to a dispenser for gels or creams. See column 1, lines 4-6. We find the gels or creams
include pharmaceuticals. See column 1, lines 30-31. We find that the particular
dispensers disclosed by Franta are designed to prevent weeping such that there is no liquid
phase separation of the cream to flow through the apertures and down the sides of the
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container onto the hands of the user. See column 1, lines 17-27 and 38-46. In our view,
Franta provides ample motivation for use of its medical applicator in dispensing the
ointment of Moss by disclosing a medical applicator which not only provides an alternative
to performing the application of the ointment disclosed in Moss by hand, but
simultaneously prevents weeping and phase separation.
As to the applicator itself, we find no argument in the Brief that the applicator of
Franta fails to comply with any of the requirements of the claimed subject matter. The
only substantive argument presented by the appellant is that in Franta, “the slots or holes 8
extend transversely and do not extend longitudinally . . . . ” See Brief, page 7. The
claimed subject matter however, in contrast, only requires “elongated slots” and contains
no requirement directed to the orientation of the slots.
Furthermore, the appellant submits that, “Appellant’s invention is designed to be
used mostly in the upside down position and is not designed to be used in upward or right
side up position such as a deodorant stick.” See Brief, page 6. We find however, no
limitation in the claimed subject matter directed to the orientation of the applicator at the
time of application. In addition, we find no limitation in the disclosure of Franta limiting
the use of the disclosed application to any specific position.
Finally, the appellant argues that, “the utilization of a domed applicator portion
made from a plastic which is residue resistant and non-porous is of a particular advantage. .
. . ” See Brief, page 7. In this respect we find that Franta discloses a domed applicator,
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Abstract, and column 2, lines 39-41. We find that the domed applicator is prepared from
a plastic, i.e., polypropylene. See column 3, lines 50-53. We further note however, that
there is no requirement in the claimed subject matter that the domed applicator made from
a plastic be non-porous or residue resistant.
Based upon the above reasons, we have determined that the examiner has
established a prima facie case of obviousness. Furthermore, upon reconsideration of all the
evidence and argument submitted by appellant, we have, determined from the totality of
the record that the preponderance of the evidence weighs in favor of obviousness within
the meaning of 35 U.S.C. § 103. See In re Oetiker 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). Accordingly, the decision of the examiner is
sustained as to claims 1through 7 and 9, claim 1 being representative of the rejection of
Moss in view of Franta and Moss in view of Franta and Dornbusch.
In this respect a discussion of Dornbusch, directed to a dispenser containing a cap is
not needed in reaching our decision inasmuch as the limitations further disclosed by
Dornbusch are not required by claim 1 which is representative of the claimed subject
matter.
The Rejection of Claim 8
In contrast to the claimed subject matter previously discussed, the subject matter of
claim 8 further requires that, “said elliptically domed applicator portion is made from a
plastic containing an antibacterial agent.” In order to meet this limitation, the examiner
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relies upon a tertiary reference to Eguchi. The Eguchi reference is directed to a plastic
material having a high level of antibacterial and antifungal activity. See Abstract and page
1. We find that Eguchi may be utilized in a molded plastic product. See page 1. Eguchi,
however, lacks any suggestion that the antibacterial plastic may be utilized in preparing a
medical applicator. Moreover, in treating diaper rash, one would necessarily have to make
contact between the antibacterial product of Eguchi and the more sensitive areas of an
infant skin, i.e., the genitalia and anal areas of the infant. On the record before us
however, there is no evidence to show that the utilization of the product of Eguchi would
be either appropriate or safe.
Accordingly, in our view the only suggestion for combining the Eguchi reference
with that of Moss and Franta comes from the teachings of the appellant. Based upon the
above finding and analysis, we conclude that the examiner has not established a prima facie
case of obviousness with respect to claim 8. See In re Dembiczak, 175 F.3d 994, 999,
50 USPQ2d 1614, 1617 (Fed. Cir. 1999) ("[T]he best defense against the subtle but
powerful attraction of a hindsight-based obviousness analysis is rigorous application of the
requirement for a showing of the teaching or motivation to combine prior art
references.").

DECISION
The rejection of claims 1 through 6 and 9 under 35 U.S.C. §103(a) as being
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unpatentable over Moss in view of Franta is affirmed.
The rejection of claims 1 through 7 under 35 U.S.C. §103(a) as being
unpatentable over Moss in view of Franta and further in view of Dornbusch is affirmed.
The rejection of claim 8 under 35 U.S.C. §103(a) as being unpatentable over
Moss in view of Franta and further in view of Eguchi is reversed.
The decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in connection with this appeal may
be extended under 37 CFR § 1.136(a).

AFFIRMED-IN-PART
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
)
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) BOARD OF PATENT
PAUL LIEBERMAN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
)
TONI R. SCHEINER )
Administrative Patent Judge )
PL/lp
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