Ex Parte Labit

Patent Trial and Appeal Board

Jan 20, 2016

13229104 (P.T.A.B. Jan. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/229,104 09/09/2011
28997 7590 01/22/2016
HARNESS, DICKEY, & PIERCE, PLC
7700 Bonhomme, Suite 400
ST. LOUIS, MO 63105
FIRST NAMED INVENTOR
Jennifer Lynn Labit
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
6687-000099-US 8884
EXAMINER
SU, SUSAN SHAN
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
01122/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
stldocket@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JENNIFER LYNN LABIT
Appeal2013-008681
Application 13/229,104 1
Technology Center 3700
Before JOHN C. KERINS, STEP AN ST AI CO VICI, and LEE L. STEPINA,
Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jennifer Lynn Labit (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner's final decision rejecting claims 1-10, 12-16, and
18-21. Claims 11 and 17 have been canceled. Appeal Br. 2. We have
jurisdiction under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We AFFIRM.
1 According to Appellant, the real party in interest is the sole inventor
Jennifer Lynn Labit. Ms. Labit has entered into an exclusive license
agreement with Cotton Babies, Inc. Appeal Br. 2 (filed Jan. 25, 2013).
Appeal2013-008681
Application 13/229, 104
INVENTION
Appellant's invention relates to "reusable diapers." Spec. i-f 2.
Claims 1, 9, and 19 are independent. Independent claim 1 is
illustrative of the claimed invention and reads as follows:
1. A reusable diaper comprising:
a forward waist portion;
a rearward waist portion;
a crotch portion between the forward waist portion and
the rearward waist portion; and
first and second liquid-absorbent flaps each having a
fixed end portion coupled to the diaper and a free end portion
opposite the fixed end portion, which is not coupled to the
reusable diaper, the free end portion of the first liquid-absorbent
flap at least partially overlapping the free end portion of the
second liquid-absorbent flap along the crotch portion, the first
and second liquid-absorbent flaps slidable relative to each
other.
THE REJECTIONS
The following rejections are before us for review2 :
I. The Examiner provisionally rejected claims 1-10, 12-16, and 18-21
on the ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1-10, 12-16, and 18-20 of copending US
Application No. 13/344,785.
2 The Examiner's objection to claims 6 and 16 (see Final Action 6) is a
petitionable matter and not an appealable matter and is not within the
jurisdiction of the Board. See In re Mindick, 371 F.2d. 892, 894 (CCPA
1967).
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Application 13/229, 104
II. The Examiner rejected claims 1-5, 7-10, 12-15, and 18-21 under 3 5
U.S.C. § 103(a) as being unpatentable over Perez (US 5,019,068, iss. May
28, 1991) and Janson (US 5,100,399, iss. Mar. 31, 1992).
III. The Examiner rejected claims 6 and 16 under 3 5 U.S. C. § 1 0 3 (a) as
being unpatentable over Perez, Janson, and Dorsey (US 2007/0074426 Al,
pub. Apr. 5, 2007).
ANALYSIS
Rejection I
Appellant asserts that the "provisional double patenting rejection is
not the subject of this Appeal." Appeal Br. 2 (emphasis omitted).
Because US Application No. 13/344,785, which is used as the basis
for the double patenting rejection, has matured into US Patent No. 8,409,163
B2 (iss. Apr. 2, 2013), the double patenting rejection is ripe for adjudication.
Because Appellant does not point to error in the Examiner's rejection, this
rejection is summarily sustained.
Rejection II
Although Appellant lists independent claims 1, 9, and 19 under
separate headings, nevertheless, Appellant has not presented arguments for
the patentability of claims 9 and 19 apart from claim 1. Appeal Br. 12-13.
Similarly, Appellant has not presented arguments for the patentability of
claims 2-5, 7, 8, 10, 12-15, 18, 20, and 21 apart from claim 1. Id. at 13.
Therefore, in accordance with 37 C.F.R. § 41.37(c)(l)(iv) (2014), we select
claim 1 as the representative claim to decide the appeal of the rejection of
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these claims, with claims 2-5, 7-10, 12-15, and 18-21 standing or falling
with claim 1.
The Examiner finds that Perez teaches most of the limitations of claim
1 including "first liquid-absorbent flap ( 48) having a fixed end portion
coupled to the diaper (on the diaper's rear waist edge[])," but that "Perez
does not teach a second liquid-absorbent flap also having a fixed end portion
coupled to the diaper and a free end portion." Final Act. 6 (see Perez, Figs.
1--4). The Examiner finds, however, that "Perez expresses desire to add
more absorbent material similar to the first flap and in an overlapping
fashion with the first flap to increase the absorbency of the diaper (e.g.[,] by
adding secondary liner 64)." Id. (citing Perez, col. 3 11. 8-16 and 46-50).
The Examiner relies on Janson as teaching "a reusable diaper []provided
with a liquid-absorbent flap (14) having a fixed end portion coupled to the
diaper's forward waist portion and a free end that extends towards the
rearward waist portion." Id. (citing Janson, Fig. 1 ). The Examiner's
position is that it would have been obvious to one of ordinary skill in the art
at the time of the invention "to modify Perez by adding/duplicating an
absorbent flap in the location gleaned from Janson as one way to add
absorbency to a diaper." Id. at 8. The Examiner concludes that "Perez
offers one way to increase the absorbency of the diaper (i.e.[,] by placing an
insert into the first flap)," and that because
adding a front flap would also improve absorbency in the diaper
as desired by Perez, one of ordinary skill in the art would find it
obvious at the time of the invention to modify the basic diaper of
Perez by learning from Janson that a flap can be attached at the
front of the diaper and fold into the crotch region to increase
absorbency in the crotch region.
Ans. 11.
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Appellant argues that Perez's "secondary liner 64 is removable for
more efficient cleaning and drying," and therefore, "Perez teaches away
from the permanent, non-removable addition of the portion 14 of Janson to
provide additional absorbency [-] because such added absorbency is
already provided." Appeal Br. 9 (citing Perez, col. 3, 11. 52---60, and MPEP
§ 2145(X)(D)(2)) (emphasis omitted).
As the Examiner correctly notes, Perez teaches an alternative way to
add absorbency, and that such "alternative does not constitute a teaching
away, because it does not criticize, discredit, or otherwise discourage the
solution/combination claimed." Ans. 11 (citation omitted); see also In re
Fulton, 391F.3d1195, 1201 (Fed. Cir. 2004). Thus, this argument is not
persuasive.
Appellant also argues that the Examiner's suggestion of "adding
portion 14 of Janson to the diaper of Perez is based on the Appellant's own
disclosure, and not something that would be obvious to one skilled in the art
at the time of the invention," because the resultant "diaper becomes more
onerous with no added benefit," and because the resultant diaper "is clearly
less efficient and more problematic than the un-modified diaper disclosed in
Perez." Appeal Br. 10 (emphasis omitted). Appellant thus argues that "the
suggested combination is based on impermissible hindsight." Id. at 11; see
also Reply Br. 2.
We are not persuaded by Appellant's argument that the Examiner
employed impermissible hindsight, because the Examiner's reasoning is
based on Janson's explicit teaching that a front flap provides absorption in
the central region. See e.g., Janson, col. 2, 11. 21-24. We thus agree with the
Examiner that "Perez offers one way to increase the absorbency of the
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diaper (i.e.[,] by placing an insert into the first flap)," at the rear of the
diaper, and that Janson teaches another way to increase the absorbency of
the diaper, namely, "a flap can be attached at the front of the diaper." Ans.
11. Perez teaches that secondary liner 64 is an optional feature that may be
used for additional absorption at the main body (central) portion of the
diaper. See Perez, col. 3, 11. 47---61. Janson teaches a foldable portion 14
that "provide[s] an absorbent pad in the central region of the diaper." Janson
col. 2, 11. 21-24. Because both ways of increasing absorbency ultimately
result in a folded absorbent pad in the center of the diaper, (see Perez, col. 3,
11. 19-26; Fig. 3, and Janson, col. 2, 11. 21-24; Fig. 3) modifying the diaper
of Perez to have one of the pads attached to the front of the diaper, as taught
by Janson, instead of inserted inside the rear flap, would not have been
uniquely challenging to a person of ordinary skill in the art, because it is no
more than "the mere application of a known technique to a piece of prior art
ready for improvement." KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398, 417
(2007)). As such, because the Examiner's reasoning is based on Janson's
explicit teachings, Appellant has not persuasively argued that the
Examiner's conclusion is based on impermissible hindsight.
Appellant then asserts that the combination of teachings in the
references "fails to address or even consider the effect of the different sizes
on the absorbent portion[s]," and that "the absorbent portion[] likely
becomes bunched up at the bottom end[], potentially causing discomfort to
the baby." Appeal Br. 11. Appellant asserts that in contrast, by having the
free end portions of the "flaps at least partially overlap, and are slidable
relative to one another," results in "reducing and/or eliminating the potential
for discomfort to the user and/or bunching along the crotch." Id. (emphasis
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omitted). Appellant argues that the recited arrangement "is not a predictable
result of 'adding absorbency' as the Patent Office has done in rejecting the
instant claim." Id. at 12; see also Reply Br. 3.
We are not persuaded by Appellant's argument because Appellant
fails to explain why the flaps of the modified Perez diaper would be
incapable of sliding relative to each other. As the Examiner correctly states,
in "the modification, at least the free end portions of the flaps would be
positioned in an overlapping manner along the crotch portion (since each of
Perez's and Janson's flaps fold into the crotch portion, they would thus
overlap)." Final Act. 7. Appellant has not come forth with any persuasive
evidence or technical reasoning to show why adding the front flap of Janson
to a diaper having a rear flap as in Perez and positioning the flaps in an
overlapping manner along the crotch portion would prevent the flaps from
moving relative to each other. Moreover, Perez teaches varying the folds of
the primary (rear attached) liner as necessary. See Perez, col. 3, 11. 20-27.
Although we appreciate that the quantity of absorbent material may reduce
the slidability, nonetheless, absolute predictability is not required; all that is
required is a reasonable expectation of success. See In re 0 'Farrell, 853
F.2d 894, 903-904 (Fed. Cir. 1988).
For the reasons discussed supra, we sustain the rejection of
independent claims 1, 9, and 19 as well as the rejection of claims 2-5, 7, 8,
10, 12-15, 18, 20, and 21, which depend therefrom, as being unpatentable
over Perez and Janson.
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Rejection III
Appellant relies on the arguments discussed supra with respect to the
rejection of claim 1 to assert the patentability of claims 6 and 16. Appeal Br.
13. Accordingly, for the same reasons, we sustain the rejection of claims 6
and 16 under 35 U.S.C. § 103(a) as being unpatentable over Perez, Janson,
and Dorsey.
SUMMARY
The decision of the Examiner to reject claims 1-10, 12-16, and 18-21
on the grounds of non-statutory obvious-type double patenting is affirmed.
The decision of the Examiner to reject claims 1-5, 8-15, and 18-21
under 35 U.S.C. § 103(a) as being unpatentable over Perez and Janson is
affirmed.
The decision of the Examiner to reject claims 6 and 16 under 35
U.S.C. § 103(a) as being unpatentable over Perez, Janson, and Dorsey is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
rvb
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