Ex Parte Long et al

Patent Trial and Appeal Board

Sep 4, 2013

11303283 (P.T.A.B. Sep. 4, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/303,283 12/15/2005 Andrew M. Long 22,139 8805
23556 7590 09/04/2013
KIMBERLY-CLARK WORLDWIDE, INC.
Tammi Langin
2300 Winchester Rd.
NEENAH, WI 54956
EXAMINER
MEHMOOD, JENNIFER
ART UNIT PAPER NUMBER
2689
MAIL DATE DELIVERY MODE
09/04/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDREW M. LONG and DAROLD D. TIPPEY
____________

Appeal 2011-002761
Application 11/303,283
Technology Center 2600
____________

Before JOHN A. JEFFERY, BARBARA A. BENOIT, and
PATRICK M. BOUCHER, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

STATEMENT OF THE CASE
Appellants’ invention uses a signaling device to indicate that a body
fluid is present in a garment. In one implementation, the signaling device’s
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terminals connect to conductive elements in the garment through an orifice
in the garment’s outer cover. See generally Spec. 2. Claim 1 is illustrative:
1. A garment comprising:
a chassis comprising an outer cover having an interior surface
and an exterior surface, the chassis including a crotch region
positioned in between a front region and a back region, the front
region and the back region jointly defining a waist region;
first and second conductive elements contained in the chassis,
the conductive elements located in at least the waist region, the first
and second conductive elements forming part of a circuit; and
a signaling device including at least one first terminal and at
least one second terminal, the first and second terminals adapted to
operatively connect to the first and second conductive elements;
wherein the first and second terminals operatively connect to
the first and second conductive elements through at least one orifice in
the outer cover.

THE REJECTIONS
1. The Examiner rejected claims 1, 3, 5-7, 11, 12, and 171 under 35
U.S.C. § 102(b) as anticipated by Xie (US 4,768,023; issued Aug. 30, 1988).
Ans. 3-5.2
2. The Examiner rejected claims 2, 4, 8, 13-16, and 18 under 35
U.S.C. § 103(a) as unpatentable over Xie and Nissim (US 5,760,694; issued
June 2, 1998). Ans. 5-7.

1 Although the Examiner includes claim 20 in the statement of this rejection,
the Examiner nonetheless discusses this claim in connection with the
obviousness rejection of claim 19 from which claim 20 depends. Compare
Ans. 3 with Ans. 8-9. Accord Br. 4 (noting this inconsistency).
Accordingly, we presume that the Examiner intended to reject claim 20 as
obvious over Xie and Johnson and present the correct claim listing here for
clarity.
2 Throughout this opinion, we refer to the Appeal Brief filed December 5,
2008 (“Br.”) and the Examiner’s Answer mailed January 23, 2009 (“Ans.”).
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3. The Examiner rejected claims 9, 10, 19, and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Xie and Johnson (US 5,266,928; issued Nov.
30, 1993). Ans. 8-9.

THE ANTICIPATION REJECTION
The Examiner finds that Xie’s garment has every recited element of
claim 1 including a signaling device with first and second “terminals”
associated with electrodes 3 and 4 operatively connected to first and second
conductive elements (electrodes 3 and 4) through “orifices” (apertures 31
and 32) in the garment’s outer cover 12. Ans. 3-4, 9-10.
Appellants argue that Xie does not disclose signaling device terminals
connecting to conductive elements through an orifice in an outer cover as
claimed, but rather passes electrodes through an outer sheet where they are
affixed to adhesively coated tapes to adhere device contacts 15, 16 thereto.
Br. 4.

ISSUE
Under § 102, has the Examiner erred in rejecting claim 1 by finding
that Xie discloses a signaling device with first and second terminals
operatively connected to first and second conductive elements through at
least one orifice in a garment chassis’ outer cover?

ANALYSIS
We begin by clarifying the Examiner’s mapping. The Examiner
refers principally to Xie’s electrodes 3, 4 in connection with the recited
conductive elements and signaling device terminals (see Ans. 3, 9-10)—a
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mapping that appears at first blush to inappropriately map the same
disclosed feature to two different recited elements.3 But the Examiner not
only refers to Xie’s “terminal ends” of the electrodes in connection with the
recited terminals, but also conductive tapes 5 and 6 in this regard. See Ans.
3-4 (referring to “items 3-6” in connection with the last clause of claim 1), 9-
10. Accord Ans. 8, 11 (noting that Xie’s conductive tapes 5, 6 are electrode
termination points and therefore are parts of the recited terminals, namely
terminal tops). Although this latter mapping is in connection with claim 9, it
nonetheless informs our construction regarding the recited terminals since
claim 9 further details the terminals recited in claim 1 from which claim 9
depends—terminals that the Examiner maps at least partly to Xie’s
conductive tapes 5, 6 in addition to electrodes 3, 4 as noted above. We
therefore presume that this mapping applies to claim 1 as well.
Based on this mapping, we see no error in the Examiner’s rejection.
As shown below, Xie’s Figure 4 shows electrodes 3, 4 that extend through
apertures 31, 32 in a diaper’s outer sheet 12 for electrical connection to
conductive tapes 5, 6, respectively. Xie, col. 2, ll. 11-24.

3 When a claim requires two separate elements, one element construed as
having two separate functions will not suffice to meet the claim’s terms. See
Lantech, Inc. v. Keip Mach. Co., 32 F.3d 542, 547 (Fed. Cir. 1994); see also
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (claims requiring three
separate means not anticipated by structure containing only two means using
one element twice).

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Xie’s Figure 4 showing electrodes 3 and 4 extending through apertures
and connecting with conductive tapes 5 and 6

To be sure, this structure is different than that shown in Appellants’
Figure 7 which shows a signaling device 110’s terminals 116, 118 that can
operatively connect with a garment’s conductive elements 100, 102 through
at least one orifice 122 as shown below. See Spec. 14:28-32.

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Appellants’ Figure 7 showing signaling device terminals operatively
connectable with a garment’s conductive elements through orifice 122

Despite these distinctions, the scope and breadth of claim 1 does not
preclude the Examiner’s interpretation, since Xie’s “terminals” (“terminal
ends” of electrodes 3, 4 and conductive tapes 5, 6) operatively connect to the
remainder of the conductive elements 3, 4 through orifices 31, 32. To the
extent that Appellants’ arguments presuppose that the recited terminals and
conductive elements must be co-located within the orifice (e.g., after
connecting the signaling device and garment in Appellants’ Figure 7), such
an argument is not commensurate with the scope of the claim.
Nor do Appellants persuasively rebut the Examiner’s finding that
Xie’s relied-upon “terminals” are “signaling device terminals” since they are
part of Xie’s signaling system. Ans. 10. Accord Ans. 11 (“[T]he signaling
device comprises many different components functioning as the device.”).
Although Xie’s system includes a dedicated signaling device 2 with its own
contacts 15, 16 as shown in Figures 6 and 7 (Xie, col. 2, ll. 7-10, 42-46),
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nothing in claim 1 precludes the Examiner’s broader interpretation of
“signaling device” to include other components of Xie’s system which
likewise contribute to its signaling capabilities.
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 1, and claims 3, 5-7, 11, 12, and 17 not separately
argued with particularity.

THE OBVIOUSNESS REJECTION OVER XIE AND NISSIM
We also sustain the Examiner’s obviousness rejection of claim 2
reciting that the terminals connect to the conductive elements through a
single orifice. Ans. 5, 10-11. Despite Appellants’ arguments to the contrary
(Br. 4-5), we see no error in the Examiner’s reliance on Johnson merely to
show that connecting terminals and conductive elements through a single
orifice would have been an obvious variation to Xie’s multiple orifices. See
Ans. 5, 10 (citing pouch 120 in Nissim’s Figure 2). Although the Examiner
acknowledges that Nissim may require an electrically insulating sheath
between conductive elements and terminals (Ans. 10-11), we nonetheless are
unpersuaded that Nissim teaches away from the fundamental notion of
providing a single orifice in lieu of multiple orifices, particularly since both
conductive members 127 of Nissim’s sensor 124 are contained within a
single “orifice,” namely the pouch. In any event, we see no reason why
using a single orifice for both sets of Xie’s terminal/conductive element
connections in lieu of multiple dedicated orifices for each connection would
have been uniquely challenging or otherwise beyond the level of ordinarily
skilled artisans. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d
1157, 1162 (Fed. Cir. 2007).
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We are therefore not persuaded that the Examiner erred in rejecting
representative claim 2, and claims 4, 8, 13-16, and 18 not separately argued
with particularity.

THE OBVIOUSNESS REJECTION OVER XIE AND JOHNSON
We also sustain the Examiner’s obviousness rejection of claim 9
reciting that the first terminal comprises a top and a stalk, where the top is
wider than the stalk. Appellants do not persuasively rebut the Examiner’s
reliance on conductive tapes 5 and 6 as constituting a terminal’s “top” that is
wider than its “stalk” (i.e., electrodes 3, 4), particularly in view of the
Examiner’s mapping of the recited terminals noted above. Ans. 8, 11.
Appellants’ arguments regarding Xie’s contacts 15 and 16 (Br. 5) are
unavailing, for they are not germane to the Examiner’s reliance on Xie’s
tapes and electrodes in connection with the recited terminal structure as
noted above.
Although Johnson is technically cumulative to Xie in this regard,
Appellants nevertheless do not persuasively rebut the Examiner’s position
that it would have been obvious to provide a terminal in Xie with the recited
structure in view of Johnson’s Figure 5 which shows a conductor with
portions 53, 54 at one end (i.e., a “top”) that is wider than other elongated
portions 50, 51 which are said to teach a “stalk.” Ans. 8, 11 (citing Johnson,
Fig. 5). Appellants’ arguments regarding the planar detector contacts 64, 65
in Figure 6 (Br. 5-6) are unavailing. Not only is this argument not germane
to the relied-upon structure in Figure 5, but it does not persuasively rebut the
limited purpose for which Johnson was cited, namely to show that the
recited terminal structure is known in the art, and that providing such a
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structure in Xie’s terminals would have been obvious. Ans. 8, 11. Such an
enhancement predictably uses prior art elements according to their
established functions—an obvious improvement. See KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 417 (2007).
We are therefore not persuaded that the Examiner erred in rejecting
representative claim 9, and claims 10, 19, and 20 not separately argued with
particularity.

CONCLUSION
The Examiner did not err in rejecting (1) claims 1, 3, 5-7, 11, 12, and
17 under § 102, and (2) claims 2, 4, 8-10, 13-16, and 18-20 under § 103.

ORDER
The Examiner’s decision rejecting claims 1-20 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)(1)(iv).

AFFIRMED

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