Ex Parte Lange

Board of Patent Appeals and Interferences

Aug 31, 2010

10741678 (B.P.A.I. Aug. 31, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BETH A. LANGE
____________

Appeal 2009-005918
Application 10/741,678
Technology Center 3700
____________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and FRED A.
SILVERBERG, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-005918
Application 10/741,678

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Beth A. Lange (Appellant) filed a “REQUEST FOR REHEARING
UNDER 37 C.F.R. §41.52” dated June 25, 2010, (hereinafter “Request”) of
our decision dated April 27, 2010 (hereinafter “Decision”). In that Decision,
we affirmed the rejection of claims 15, 23, 28, and 29 under 35 U.S.C.
§ 103(a) as being unpatentable over Ehrlich (US 4,221,221, issued Sep. 9,
1980) and Gallo (US 6,622,856 B2, issued Sep. 23, 2003).
Appellant alleges that in reaching our Decision, we misapprehended
the disclosure of Ehrlich. Request 1. Specifically, Appellant argues that the
statement that “Ehrlich explicitly contemplates inclusion of other baby
maintenance items in addition to or in place of the specifically illustrated
powder, oil, and towel containers” (Decision 3, Fact 2) is in error. Request
1.
According to Appellant, the fact that “Ehrlich discloses using more
than three container assemblies adhered to a diaper does not necessarily
mean that the container assemblies would contain anything but powder, oil,
or a towel.” Id. Appellant reasons that Ehrlich’s reference to the powder,
oil, and towel as being “the ‘major elements’ of the container assemblies”
conveys that the powder, oil, and towel are “the most important components
of the container assemblies.” Request 2. Thus, Appellant argues, one of
ordinary skill in the art would not “replace one of the ‘major elements’ of
the container assemblies with something completely unrelated to changing a
diaper.” Id.
Appellant’s argument does not convince us that we erred in finding
that “Ehrlich explicitly contemplates inclusion of other baby maintenance
items in addition to or in place of the specifically illustrated powder, oil, and
towel containers.” Ehrlich’s reference to the powder, oil, and towel as
Appeal 2009-005918
Application 10/741,678

3
“major elements” (col. 3, ll. 20-21) in fact suggests the inclusion of other
items of lesser importance or rank2, i.e., “ancillary”3 products such as
sunscreen. See Gallo, col. 5, ll. 20 and 26 (describing products such as
sunscreen as “ancillary products” to the kit).
Appellant’s Request also argues that the Board’s rationale in opining
that “a person of ordinary skill in the art would have appreciated that it
would have been advantageous to include sunscreen, a well-known
accessory for the care/protection of babies for outdoor activities, on the
utility diaper of Ehrlich, so that the sunscreen would be available when
needed” (Decision 5) is “overly broad and overly inclusive.” Request 2-3.
Appellant argues that “at best, it would have been obvious to attach only the
products listed by Gallo that are related to changing a diaper (e.g., petroleum
jelly, powder, baby oil) to the diaper of Ehrlich.” Request 3. As noted on
page 4 of our Decision, Appellant’s position fails to appreciate the full scope
of Ehrlich’s teachings, which are directed to “baby maintenance” items (col.
1, ll. 44-47, see Decision 3, Fact 1) that is, items used in caring for babies,
not simply diaper changing products.
Moreover, as pointed out on page 6 of our Decision, the Supreme
Court has stated that a rigid insistence on teaching, suggestion, or motivation
is incompatible with its precedent concerning obviousness. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007). A conclusion of obviousness must

2 See Webster's New World Dictionary 854 (David B. Guralnik ed., 2nd Coll.
Ed., Simon & Schuster, Inc. 1984) (defining “major” as “greater in
importance or rank”).
3 SeeWebster’s at 51 (defining “ancillary” as “subordinate”) and id. at 1419
(defining “subordinate” as “inferior to or placed below another in rank,
power, importance, etc.”).
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Application 10/741,678

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be supported by explicit findings and analysis establishing an apparent
reason to combine the known elements in the manner required in the claim at
issue. Id. However, “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id. As we pointed out on page 5 of
our Decision, the modification proposed in the affirmed rejection is nothing
more than the predictable use of prior art elements according to their
established functions. See id. at 417 (an improvement that is nothing more
than the predictable use of prior art elements according to their established
functions is likely to be obvious).

CONCLUSION
The arguments in Appellant’s Request have not convinced us that we
erred in affirming the rejection of claims 15, 23, 28, and 29 under 35 U.S.C.
§ 103(a) as being unpatentable over Ehrlich and Gallo.

DECISION
Appellant’s Request has been granted to the extent that we have
reconsidered our Decision in light of the arguments in Appellant’s Request,
but is denied with respect to our making any modification to the Decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).
DENIED

Appeal 2009-005918
Application 10/741,678

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