Ex Parte Hayman

Board of Patent Appeals and Interferences

May 14, 2009

10982290 (B.P.A.I. May. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DENISE HAYMAN
____________________

Appeal 2009-2643
Application 10/982,290
Technology Center 3600
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Decided:1 May 15, 2009
____________________

Before RICHARD TORCZON, SALLY G. LANE, and MICHAEL P.
TIERNEY, Administrative Patent Judges.

TIERNEY, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, Denise
Hayman under 35 U.S.C. § 134(a) from a final rejection of claims 1-19.
Appellant requests reversal of the Examiner’s rejection of those claims. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part and enter a new
ground of rejection.

References Relied on by the Examiner
Siegel 4,250,938 Feb. 17, 1981
Keiswetter 4,676,376 Jun. 30, 1987
Digangi 6,491,996 Dec. 10, 2002
Amundson, et. al. (“Amundson”) 6,604,651 Aug. 12, 2003

The Rejections on Appeal
The Examiner rejected claims 1, 3-4, 8, and 12-13 under 35 U.S.C.
§ 102(b) as anticipated by Keiswetter.
The Examiner rejected claims 2 and 11 under 35 U.S.C. § 103(a) as
unpatentable over Keiswetter and Amundson.
The Examiner rejected claims 5, 7, 9-10, 14 and 16-18 under
35 U.S.C. § 103(a) as unpatentable over Keiswetter and Digangi.
The Examiner rejected claims 19 under 35 U.S.C. § 103(a) as
unpatentable over Keiswetter, Digangi, and Amundson.
The Examiner rejected claims 6 and 15 under 35 U.S.C. § 103(a) as
unpatentable over Keiswetter, Digangi, and Siegel.

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The Appellant argues the patentability of claims 1 and 8 collectively
with claims 3-4 and 12-13. Appellant argues claims 2 and 11 separately.
Regarding Appellant claims 5-7, 9-10, and 14-19, Appellant reiterates the
arguments made with respect to claims 1 and 8. Accordingly, claims 5-7, 9-
10, and 14-19 are considered to be argued collectively with claims 1 and 8.

The Invention
The invention relates to a combination dispenser and protective pad
for providing a barrier between a first surface and a second surface. (Spec.
p. 2; Br. Claims App’x, p. 23.).
Claims 1, 2, and 16 are illustrative of the claimed invention. Claim 1
is reproduced below along with a summary of claims 2 and 16:
1. A combination dispenser and protective barriers for providing a
barrier between a first surface and a second surface comprising a
plurality of intertwined protective pads housed within a dispenser
housing; the protective pads each comprise [sic comprises] a layer
made from a thermoplastic material or a plastic blend material in the
absence of a cavity.

Claim 2 depends from claim 1 and further requires that the dispenser
housing comprises a transparent thermoplastic sheet.
Claim 16 is similar to claim 1, but does not require a plurality of
intertwined pads and instead requires “a plurality of individual protective
pads separated from one another by a tear line … wherein the dispenser
comprises an access opening for retrieving the individual protective pads.”
(Br. Claims App’x, p. 24.)
The rejections can be viewed as two separate groups: (1) the
rejections of claims 16-19, which require pads separated from one another
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by a tear line, and (2) the rejections of claims 1-15, which require the use of
a plurality of intertwined pads.

B. ISSUES
1. Has Appellant shown that the prior art fails to teach “a layer made
from a thermoplastic material or a plastic blend material in the absence of a
cavity?”
2. Has Appellant shown that the Examiner erred in finding that
Keiswetter alone or in combination with Digangi and Siegel teaches a
plurality of intertwined protective pads?

C. FINDINGS OF FACT
Keiswetter
1. Keiswetter teaches a temporary protective seat cover (protective pad)
for providing a barrier between a first surface and a second surface.
(Keiswetter, Abstract, col. 1, ll. 58-62).
2. Keiswetter’s seat cover 10 is formed from a thin-film that may
comprise a variety of plastic blends and/or thermoplastic. (Id., col. 4, ll. 21-
51, and Figs. 1, 5, and 6).
3. Keiswetter teaches a box-shaped dispenser housing 38, wherein seat
covers are stacked one on top of another. (Id., Fig. 6, col. 5, ll. 22-26)).
4. Keiswetter teaches a pocket or cap 20 for retaining the seat cover to a
vehicle seat. (Id., col. 3, ll. 42-56).
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Amundson
5. Amundson teaches a transparent container 30 housing for storing
wipes. (Amundson, col. 11, l. 66 to Col. 12, l. 8).
6. Amundson teaches that transparent containers allow users to “readily
determine the quantity of wipes remaining…” (Id. at col. 12, ll. 3-6).
7. Amundson also teaches the use of a plurality of intertwined pads. (Id.
at Figs, 37-38 and col. 10, ll. 6-21).
8. Appellant Figure 3 and Amundson Figures 37-38 depict interwining
pads and are provided below.

Appellant Figure 3 and Amundson Figures 37-38 depict
intertwining, protective pads.
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9. Amundson teaches that interfolding the pads allows the pads to be
easily removed from the dispenser. (Id. at col. 10, ll. 6-14).

D. PRINCIPLES OF LAW
A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described in a single prior
art reference. Verdegaal Bros. Inc. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987).
An invention is not patentable under 35 U.S.C. § 103 if it is obvious.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The determination
of obviousness requires a teaching or suggestion of all limitations in a claim.
CFMT Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003); In
re Royka, 490 F.2d 981, 985 (CCPA 1974). The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results. KSR at 416.

E. ANALYSIS
We affirm the rejection of claims 2-11 and 16-19. We reverse the
rejection of claims 1, 3-10, and 12-15, but enter a new ground of rejection as
to those claims.

1. Tear Sheets: Claims 16-19
The Examiner rejected independent claims 16-18 under 35 U.S.C.
§ 103(a) as unpatentable over Keiswetter and Digangi and claim 19 over
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Keiswetter and Digangi in view of Amundson. Appellant argues claims 17-
19, collectively with claim 16.
Claim 16 is a combination dispenser and protective barrier comprising
a plurality of pads with each pad comprising “… a layer made from a
thermoplastic material or a plastic blend material in the absence of a
cavity…” (Br. Claims App’x, p. 24).
Appellant contends that the prior art does not teach all the limitations
of claim 16. In particular, Appellant focuses on the limitation “in the
absence of a cavity.”
a. Claim Construction
We give claims their broadest reasonable interpretation consistent
with the specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
Appellant states that its specification provides a specific definition for the
term “… a layer made from a thermoplastic material or a plastic blend
material in the absence of a cavity…” The specification however, merely
uses the phrase without defining what is meant by the phrase. (See, Spec.
¶¶ 0005-0007).
The plain language of Appellant’s claim requires that the pad layer is
made from a thermoplastic/plastic material in the absence of a cavity. “A
claim must be read in accordance with the precepts of English grammar.” In
re Hyatt, 708 F.2d 712, 714 (Fed. Cir. 1983). General principles of English
grammar require that referential and qualifying words and phrases, where no
contrary intention appears, refer solely to the last antecedent, which consists
of the last word, phrase, or clause that can be made an antecedent without
impairing the meaning of the sentence for purposes of statutory construction.
Finisar Corp. v. The DirecTV Group, Inc., 523 F.3d 1323, 1335-36 (Fed.
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Cir. 2008) (applying tools of statutory construction to construe a reference),
citing Anhydrides & Chemicals, Inc. v. United States, 130 F.3d 1481, 1483
(Fed. Cir. 1997). The only plausible antecedent for the "in" prepositional
phrase is the same as the antecedent for the parallel "from" preposition
phrase: the verb "made". We construe the claim as requiring a layer product
formed by a process that did not employ a cavity. This construction is
consistent with the plain language of the claim and the precepts of English
grammar.

b. The Prior Art Teaches All Limitations
Keiswetter teaches the combination of a dispenser 38 and seat
covers 10 formed from a thin-film that may be comprised of a variety of
plastic blends and/or thermoplastic. (Keiswetter, col. 4, ll. 21-51, and Figs.
1, 5, and 6). The Examiner found that Keiswetter teaches protective
barriers meeting the “in the absence of a cavity” limitation. (Ans., p. 8).
Appellant contends that Keiswetter does not teach this limitation, because
Keiswetter’s pocket or cap 20, is a cavity. (Br., p. 8-9).
Appellant’s claimed “layer made from . . . in the absence of a cavity”
limitation is a product-by-process limitation. Specifically, a product that is
defined at least in part in terms of the method or process by which it is made
represents a product-by-process claim. Bonito Boats, Inc. v. Thunder Craft
Boats, Inc., 489 U.S. 141, 158 n. (1989). In construing a product-by-process
claim, the Federal Circuit has held that “[i]f the product in a product-by-
process claim is the same as or obvious from a product of the prior art, the
claim is unpatentable even though the prior product was made by a different
process.” In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985).
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Appellant has failed to demonstrate on this record that Keiswetter’s
pad layer formed from thermoplastic materials differs from Appellant’s
claimed pad layer formed from thermoplastic materials. We hold that
Appellant has not demonstrated that the Examiner erred in rejecting claims
16-19 as obvious over the prior art.

2. Intertwined Protective Pads: Claims 1-15
Unlike Appellant claims 16-19 discussed above, Appellant claims
1-15 require “a plurality of intertwined protective pads.” Claims 1-15 are
subject to varying rejections in light of four prior art references. For reasons
made apparent below, the rejections of claims 1-15 can be treated as two
distinct groups: (i) rejection of claims 2 and 11 over Keiswetter in view of
Amundson, and (ii) the rejections of the remaining claims, claims 1, 3-10
and 12-15, which do not rely on Amundson.

a. Claims 2 and 11
The Examiner rejected claims 2 and 11 under 35 U.S.C. § 103 as
unpatentable over Keiswetter in view of Amundson. The Examiner found
that Keiswetter taught all the limitations of claims 2 and 11, except for the
use of a transparent thermoplastic dispenser. (Ans., p. 5). The Examiner,
citing Amundson, found that transparent thermoplastic dispensing housings
were known in the art. (Id. at pp. 5 and 9). The Examiner reasoned that it
would have been obvious to one of ordinary skill in the art to use a
transparent thermoplastic dispenser with Keiswetter to allow a user to track
the remaining supply of seat covers. (Id.).
Appellant contends that claims 2 and 11 are unobvious over the
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teachings of Keiswetter and Amundson. Specifically, Appellant contends
that the Examiner has failed to demonstrate that all the limitations of the
claimed invention are present in the cited prior art and that there is no reason
to combine the teachings of the references and arrive at the claimed
invention.

i. All Structural Limitations are Present in Prior Art
Appellant states that the prior art fails to teach the layer made from a
material in the absence of a cavity. As discussed above, Appellant has
failed to demonstrate that the Examiner erred in finding that the prior art,
e.g., Keiswetter, teaches the claimed layer. (See, supra p. 9).
Appellant also contends that the references fail to teach a plurality of
intertwined protective pads. We disagree. The test for obviousness is what
the combined teachings of the references would have suggested to those of
ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Amundson teaches the use of a plurality of intertwined (interfolded) pads.
(Amundson, col. 10, ll. 6-21). Amundson teaches that intertwining allows
the pads to be easily removed from the dispenser. (Id., col. 10, ll. 6-13).

ii. Reason to Use Transparent Thermoplastic Material
Appellant claims 2 and 11 require that “the dispenser housing
comprises a transparent thermoplastic sheet.” Thus, the dispenser housing
includes a transparent material. Appellant however, contends that one
would not have had a reason to utilize a transparent thermoplastic sheet
material for the dispenser of Keiswetter, because “one cannot know how
many sheets remain in a stack to track except that there is at least one more
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sheet below the current sheet.” (Br., p. 12).
Keiswetter teaches a box-shaped dispenser housing 38, wherein seat
covers are stacked one on top of another. (Keiswetter, Fig. 6, col. 5, ll. 22-
26). Amundson teaches a transparent container 30 housing for storing
wipes. (Amundson, col. 11, l. 66 to Col. 12, l. 8). Amundson specifically
teaches that a transparent container enables a user to “readily determine the
quantity of wipes remaining...” (Id. at col. 12, ll. 3-6). According, one of
ordinary skill in the art would have had a reason to employ a transparent
dispenser housing.
Appellant also contends that Keiswetter’s dispenser “is not designed
for portability” and thus teaches away from the claimed subject matter. (Br.,
p. 16). The portability of the dispenser is not a limitation of the claims.
Furthermore, one of ordinary skill in the art would understand that
Keiswetter’s dispenser is portable in the sense that it can be moved from one
location to another.
We hold that Appellant has done nothing more than combine known
elements (intertwined protective pads within a transparent dispenser) for
their known purpose to arrive at a predictable result (easily dispensed
protective pads in a transparent dispenser that allows a user to see how many
pads remain).

b. Remaining Claims: 1, 3-10 and 12-15
Claims 1, 3-10, and 12-15 each require “a plurality of intertwined
pads.” (Br. Claims App’x, pp. 23-24). Claims 1, 3-10, and 12-15 each rely
on Keiswetter alone or in combination with other references (Digangi or
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Siegel) to reject the claims. Appellant contends that the references fail to
teach intertwined pads.
The references relied upon by the Examiner (Keiswetter, Digangi,
Siegel) do not mention the use of intertwined pads. Further, the Examiner
did not identify a reason to modify Keiswetter, Digangi or Siegel to arrive at
“a plurality of intertwined pads.” Accordingly, we reverse the Examiner’s
rejections as to claims 1, 3-10, and 12-15.
Amundson, as discussed above, teaches the use of intertwined pads
such as that claimed by Appellant. We enter new grounds of rejection for
claims 1, 3-10, and 12-15 in view of the teachings of Amundson.

New Grounds of Rejection
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection for claims 1, 3-10, and 12-15 under 35 U.S.C. § 103(a)
as being obvious over Keiswetter, Digangi, and Siegel in view of
Amundson.
The Examiner found that Keiswetter, Digangi and Siegel teach all the
limitations present in Appellant claims 1, 3-10, and 12-15. As discussed
above, with the exception of the intertwined pads, we agree with the
Examiner that the cited art provides a reason to form Appellant’s claimed
subject matter. Amundson teaches the use of intertwined and further teaches
that the use of intertwined pads allows the pads to be easily removed from a
dispenser. We hold that Appellant claims 1, 3-10 and 12-15 are obvious
over the cited art as the claims do nothing more than combine known
elements (intertwined pads in a dispenser) for their known purpose to
achieve a predictable result (easily removed pads).
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F. CONCLUSION
1. Appellant has not shown that the prior art fails to teach a layer
made from a thermoplastic material or a plastic blend material in the absence
of a cavity.
2. Appellant has shown that the Examiner erred in finding that
Keiswetter alone or in combination with Digangi and Siegel teaches a
plurality of intertwined protective pads.

H. ORDER
The rejection of claims 16-18 under 35 U.S.C. § 103(a) as
unpatentable over Keiswetter, in view of Digangi is affirmed.
The rejection of claim 19 under 35 U.S.C. § 103(a) as unpatentable
over Keiswetter, Digangi, and Amundson is affirmed.
The rejection of claims 2 and 11 under 35 U.S.C. § 103(a) as
unpatentable over Keiswetter, in view of Amundson is affirmed.
The rejections of claims 1, 3, 4, 8, 12, and 13 under 35 U.S.C.
§ 102(b) as anticipated by Keiswetter is reversed.
The rejections of claims 5, 7, 9-10, 14 and 16-18 under
35 U.S.C. § 103(a) as unpatentable over Keiswetter and Digangi is reversed.
The rejections of claims 6 and 15 under 35 U.S.C. § 103(a) as
unpatentable over Keiswetter, Digangi, and Siegel is reversed.
We have also entered a new ground of rejection against claims 1, 3-
10, and 12-15 under 37 C.F.R. § 41.50(b).

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37 C.F.R. § 41.50(b) provides that, “[a] new grounds of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of proceedings (37 C.F.R. § 1.197 (b) as to the rejected claims:

(1) 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…; or

(2) Request that the proceeding be reheard under 37 C.F.R.
§ 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).

AFFIRMED-IN-PART
New ground of rejection under 37 C.F.R. § 41.50(b) (2008)

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