Ex parte Ives

Board of Patent Appeals and Interferences

Sep 14, 2001

09251656 (B.P.A.I. Sep. 14, 2001)

Claim 1 has been amended subsequent to final rejection.1
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and is not binding precedent of the Board.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. 10
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SHARI IVES
____________
Appeal No. 2001-1334
Application No. 09/251,656
____________
ON BRIEF
____________
Before COHEN, McQUADE and BAHR, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Shari Ives appeals from the final rejection of claim 1,
the only claim pending in the application.1
THE INVENTION
The invention relates to a diaper having a pocket for (1)
storing items such as baby powder, diaper cream and wet wipes,
and (2) receiving in rolled-up form the rest of the diaper
when soiled to facilitate disposal. Claim 1 reads as follows:
Appeal No. 2001-1334
Application No. 09/251,656
2
1. A diaper with a pocket adapted for the convenient
storing of baby-changing related objects comprising, in
combination:
an exterior layer of a liquid impervious plastic material
having an interior face and an exterior face and having a
generally horizontal upper edge positionable around a baby and
having a front and a rear and a bottom and leg holes
therethrough;
an interior layer of a liquid absorbing material having
an interior face and an exterior face and having a generally
horizontal upper edge positioned around a baby and having a
front and a rear and a bottom and leg holes therethrough;
separable vertical edges extending downwardly from the
upper edges to the upper extent of the leg holes with adhesive
strips for securing the layers on the baby;
an intermediate layer of a liquid impervious plastic
material in a generally rectangular configuration exterior of
the interior layer and coupled at the periphery to the
interior face of the exterior layer at the rear, the
intermediate layer having an upper edge adjacent to the upper
edge of the exterior layer and extending horizontally for the
majority of the extent of the rear and extending vertically
for the majority of the extent of the rear thereby forming a
large pocket;
an elongated horizontal slit in the exterior layer
immediately below the upper edge of the intermediate layer for
allowing the placement into and removal from the pocket of the
baby-changing related objects; and
a strip of an adhesive within the pocket on the interior
surface of the exterior layer immediately beneath and parallel
with the slit with a peel strip removably located thereon
whereby the diaper may be rolled up and turned into the pocket
and sealed for easy disposal.
Appeal No. 2001-1334
Application No. 09/251,656
3
PRIOR ART
The reference relied on by the examiner as evidence of
anticipation is:
Schaar 3,731,689 May 8, 1973
THE REJECTIONS
Claim 1 stands rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly
claim the subject matter the appellant regards as the
invention.
Claim 1 also stands rejected under 35 U.S.C. § 102(b) as
being anticipated by Schaar.
Attention is directed to the appellant’s brief (Paper No.
8) and to the examiner’s final rejection and answer (Paper
Nos. 4 and 9) for the respective positions of the appellant
and the examiner with regard to the merits of these
rejections.
DISCUSSION
I. The 35 U.S.C. § 112, second paragraph, rejection
Appeal No. 2001-1334
Application No. 09/251,656
The word “positioned” appears on line 11 of claim 1 as2
amended subsequent to final rejection.
4
We shall summarily sustain this rejection as the
appellant has not challenged the examiner’s determination that
claim 1 is indefinite because it prompts the question: “is
Applicant claiming the body as part of the claimed
combination? If not, on line [12], ’positioned’ should be -
–positionable–-” (final rejection, page 3). 2
II. The 35 U.S.C. § 102(b) rejection
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 of the invention. Scripps Clinic & Research
Found. v. Genentech Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001,
1010 (Fed. Cir. 1991).
Schaar discloses a disposable diaper which is described
in the following terms:
Appeal No. 2001-1334
Application No. 09/251,656
5
. . . the invention particularly concerns the
disposable diaper of the type having a fluid
absorbent pad 12 and at least two layers 14 and 16
of fluid impervious sheet material attached to the
pad 12 in such a manner as to form a pouch 18 (FIG.
4). The pad 12 preferably includes a fluid pervious
cover sheet 20 as illustrated in FIG. 4. The layers
14 and 16 are connected at their edges 22, 24 and
26, these edges also coinciding with three of the
edges 27, 28 and 29 respectively, of the pad 12 to
define three of the edges of the diaper.
. . .
. . . [T]he outermost layer 16 is slit near one
end 31 of the diaper along a line forming an edge 30
(FIG. 3) at an angle to edges 22 and 24 and along a
longitudinal center line, to form a pair of integral
wings 32 and 34 extending from opposite edges 22 and
24 of the layers 14 and 16 and of the diaper. The
wings 32 and 34 are foldably attached to the bottom
layer 14 so that the diaper can be stored (FIG. 5)
with the wings 32 and 34 overlapping bottom layer
14. . . .
When the diaper is to be placed on the baby, the
wings fold outwardly along the edges 22 and 24 to
give the configuration shown in FIGS. 2 and 3.
Although the wings 32 and 34 are disclosed as having
approximate equal lengths, such is not necessary.
Equal length does provide, however, a more aesthetic
appearance.
. . .
The pinless function of this diaper is
preferably accomplished by applying a pressure
sensitive adhesive to the zones indicated by the
numeral 50, FIGS. 2, 5 and 6. . . . Removable
facing strips may be applied to the adhesive zones
50, so that the wings do not stick until the diaper
is ready for use. . . .
Appeal No. 2001-1334
Application No. 09/251,656
6
. . . [T]he slit edge 30 of the layer 16 defines
the opening into the pouch 18 which permits the
turning inside out of the diaper. When the diaper
is soiled, one hand is then slipped into the pouch
18 to the edge 26 of the layer 16 where that edge is
grasped. At the same time the other hand pulls on
the slit edge 30 of the layer 16, the two hands
crossing over so as to turn the pouch inside out.
The resulting configuration places the inside layer
14 completely exposed on one side of the folded up
diaper with the layer 16 on the other side, the
absorbent pad 12 being thus completely enclosed
[column 2, line 5, through column 3, line 63].
According to the examiner (see page 4 in the answer), the
Schaar reference responds to all of the limitations in claim 1
in that it discloses an “exterior layer” in the form of fluid
impervious layer 16, an “interior layer” in the form of
absorbent pad 12 and/or fluid pervious cover sheet 20, “leg
holes” in the form of the leg openings shown in Figure 1,
“vertical edges” in the form of edges 22 and 24, an
“intermediate layer” in the form of fluid impervious layer 14,
a “horizontal slit” in the form of the slit which defines edge
30, and a “strip of an adhesive” and a “peel strip” in the
form of the adhesive and facing strips in zones 50.
Presumably, the examiner also considers Schaar to disclose a
“pocket” in the form of pouch 18.
Appeal No. 2001-1334
Application No. 09/251,656
7
This analysis is flawed with respect to recitation of the
“strip of an adhesive.” As indicated above, the claim
requires the strip of an adhesive to be “within the pocket on
the interior surface of the exterior layer immediately beneath
and parallel with the slit.” To the extent that Schaar
discloses respective strips of adhesive in zones 50, a person
of ordinary skill in the art would not view either strip as
being within the pocket/pouch 18 or on the interior surface of
exterior layer 16 immediately beneath and parallel with the
slit 30. The examiner’s explanation to the contrary (see
pages 5 and 6 in the answer) rests on an unreasonable
interpretation of the Schaar disclosure stemming from an ill-
advised attempt to read all of the limitations in the claim on
the Schaar diaper.
Since Schaar does not disclose each and every element of
the diaper recited in claim 1, we shall not sustain the
standing 35 U.S.C. § 102(b) rejection of this claim.
SUMMARY
Appeal No. 2001-1334
Application No. 09/251,656
8
The 35 U.S.C. § 112, second paragraph, rejection is
sustained, and the 35 U.S.C. § 102(b) rejection is not. Since
at least one rejection is sustained, the decision of the
examiner to reject claim 1 is affirmed.
No period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
JPM/gjh
Appeal No. 2001-1334
Application No. 09/251,656
9
MICHAEL J. COLITZ, JR.
217 HARBOR VIEW LANE
LARGO, FL 33770
GJH
Appeal No. 2001-1334
Application No. 09/251,656
APJ McQUADE
APJ BAHR
APJ COHEN
AFFIRMED
November 4, 2002