Ex Parte Martin

Board of Patent Appeals and Interferences

Nov 16, 2011

11696287 (B.P.A.I. Nov. 16, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/696,287 04/04/2007 Jim Martin JMART-001 4149
28661 7590 11/17/2011
LEWIS AND ROCA LLP
1663 Hwy 395, Suite 201
Minden, NV 89423
EXAMINER
LE, HUYEN D
ART UNIT PAPER NUMBER
3751
MAIL DATE DELIVERY MODE
11/17/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JIM MARTIN
____________

Appeal 2010-003571
Application 11/696,287
Technology Center 3700
____________

Before PHILLIP J. KAUFFMAN, GAY ANN SPAHN, and
JAMES P. CALVE, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/696,287

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1 and 6-8. Claims 2-5 have been cancelled. We
have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
THE INVENTION
The claims are directed to a disposable toilet seat cover. Claim 1, set
forth below, is illustrative of the claimed subject matter on appeal:
1. A disposable toilet seat cover comprising:
two layers of moisture resistant material laminated
together to form an internal envelope, the internal
envelope corresponding to the shape of a divided
toilet seat that includes two curved side arms
connected at the rear of the toilet seat and
separately spaced at the front of the toilet seat,
wherein the internal envelope is configured to
encapsulate the two curved side arms of the toilet
seat;
two openings located at the rear of the cover, the two
openings allowing for concurrent insertion of the
curved side arms of the toilet seat into the internal
envelope; and
a flat center section forming a seating surface that
supports a user of the toilet seat cover when the
internal envelope encapsulates the two curved side
arms of the toilet seat, wherein the center section
includes an elongated opening to allow for use of a
toilet coupled to the toilet seat, and wherein the
outer portion of the cover includes a flange that
extends from each side and the front of the cover,
the flanges configured to cover exposed front and
side surfaces of the toilet.

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THE REJECTIONS
The Examiner relies on the following as evidence of unpatentability:
Hamer US 2,093,168 Sep. 14, 1937
Montaldo US 3,316,560 May 2, 1967
Fernand FR 2,683,989 May 28, 1993

The following grounds of rejection are before us for review:
1. The Examiner rejected claim 1 under 35 U.S.C. § 103(a) as
being unpatentable over Montaldo and Hamer.
2. The Examiner rejected claims 6-8 under § 103(a) as being
unpatentable over Montaldo, Hamer, and Fernand.
ISSUE
The issue presented by this appeal is:
Does Montaldo disclose a disposable toilet seat cover with a flange
extending from each side and the front of the cover as called for in claim 1?
Does combining Fernand with Montaldo and Hamer result in an
inoperable combination or change the principle of operation of the
references?
ANALYSIS
Claim 1 based on Montaldo and Hamer
The Examiner rejected independent claim 1 based on Montaldo and
Hamer. Ans. 3-4. Appellant challenges this rejection on the grounds that
Montaldo does not disclose “a flange that extends from each side and the
front of the cover” of the disposable seat cover. App. Br. 12. Appellant
argues that the elements relied on by the Examiner are front and side edges
13, 14, 15 that represent terminating points for the disposable toilet seat
cover, not flanges as called for in claim 1. App. Br. 12.
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The Examiner’s finding that Montaldo discloses a flange that extends
from each side and the front of the cover and is configured to cover exposed
surfaces of the toilet (Ans. 3) is supported by a preponderance of evidence.
Montaldo discloses a seat cover 10 comprised of upper and lower plastic
sheets 11 and 12 that are sealed together along their front edges 13 and side
edges 14, 15 (Montaldo, col. 2, ll. 23-30; figs. 1-3). Montaldo, col. 2, ll. 50-
52; fig. 1. Montaldo’s front 13 and side edges 14, 15 extend from the seat
cover (Montaldo, fig. 2) in the same way that Appellant’s flange 110 extends
from the seat cover (Spec., figs. 2, 3). See Ans. 5. Therefore, Montaldo’s
front 13 and side edges 14, 15 correspond to the claimed flange and the use
of different terminology by Montaldo does not negate that correspondence.
See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (a reference does not
have to satisfy an ipsissimis verbis test to disclose a claimed element).
Appellant’s attempt to distinguish Montaldo’s front and side edges 13,
14, 15 as terminating points is not persuasive. See App. Br. 12. Claim 1 is
directed to a disposable toilet seat cover comprised of two layers of material
having an outer portion that includes a flange that “extends from each side
and the front of the cover.” Appellant’s Specification does not include a
lexicographical definition of “flange.” An ordinary meaning of “flange” is
“any rim or projecting surface.”[1] Appellant’s Specification describes that
the outer circumference of the disposable seat cover extends beyond the
outer circumference of the toilet seat to create a flange. Spec., para. [0010].
Appellant’s Specification describes the flange 110 as encompassing the
outer perimeter of both sides of the front cover 100, and extending outward

[1] “Flange”, n., def. 3a, Oxford English Dictionary (1989).

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beyond the outer circumference of the toilet seat. Spec., para. [0018]. Thus,
in light of Appellant’s Specification, the broadest reasonable interpretation is
that claim 1 calls for a flange that is a projecting surface that forms the outer
circumference of the disposable toilet seat cover and that extends beyond the
outer circumference of a toilet seat. Montaldo’s front 13 and side edges 14,
15 are projecting surfaces that form the outer circumference of the toilet seat
cover and extend beyond the outer circumference of the toilet seat as shown
in Figures 1 and 2 of Montaldo.
We are not persuaded that element 15 of Montaldo is a toilet bowl as
Appellant asserts. App. Br. 13. Montaldo discloses element 28 as the toilet
bowl and element 15 as a side edge. Montaldo, col. 2, ll. 27-30 and 50-52.
Accordingly, we sustain the Examiner’s rejection of claim 1.
Claims 6-8 based on Montaldo, Hamer, and Fernand
Appellant argues dependent claims 6-8 as a group. App. Br. 14-16.
We select claim 6 as the representative claim. Dependent claims 7 and 8
stand or fall with claim 6. See 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner found that Montaldo discloses a disposable seat cover,
but does not disclose two cutouts or a removal tab at the front edge as called
for in claims 6 and 7. Ans. 4. The Examiner found that Fernand discloses
two cutouts at the forward edge. Ans. 4. The Examiner determined that it
would have been obvious to one of ordinary skill in the art to provide
Fernand’s cutouts on Montaldo’s seat cover to conserve materials, reduce
manufacturing costs, and create a removal tab at the front edge. Ans. 4.
Appellant argues that combining Fernand with Montaldo and Hamer
would produce an inoperable combination and/or change the principle of
operation of the references because Montaldo and Hamer disclose toilet seat
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encapsulation, whereas Fernand discloses a cover that is placed on top of a
toilet seat. App. Br. 14-15. We are not persuaded by Appellant’s arguments
because the Examiner relied on Hamer and Montaldo for their disclosure of
an encapsulated seat cover as called for in claim 1 and Fernand to teach two
cutouts and a removal tab on the front edge of the encapsulated toilet seat
cover as called for in claims 6 and 7. Ans. 5. The Examiner’s combination
did not change the modified Montaldo encapsulated seat cover to a flat cover
and Appellant has not explained how adding Fernand’s cutouts to the front
flange of Montaldo’s encapsulated seat cover would change the principle of
operation of that seat cover or render Montaldo’s modified encapsulated seat
cover inoperable for supporting a user. See In re Merck & Co., Inc., 800
F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established
by attacking references individually where the rejection is based upon the
teachings of a combination of references.”).
Appellant also argues that Fernand’s “laid on top” toilet seat cover
would not be considered in the context of the encapsulating seat covers of
Montaldo and Hamer. App. Br. 15. We are not persuaded by this argument
because Montaldo, Hamer, and Fernand are from the same field of endeavor
of disposable sanitary toilet seat covers. Montaldo, col. 1, ll. 8-13; Hamer,
col. 1, ll. 1-4; Fernand, p. 1, ll. 1-2 (English translation). See In re Bigio,
381 F.3d 1320, 1325 (Fed. Cir. 2004) (a prior art reference is analogous art
if it is (1) from the “same field of endeavor,” regardless of the problem it
addresses, or (2) “reasonably pertinent to the particular problem” addressed
by the inventor even if it is not from the same field of endeavor). Further,
Appellant sought to create a disposable children’s toilet seat cover for a
toilet seat of divided construction (Spec. para. [001]), and Fernand, as a
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protective device for a toilet seat, is reasonably pertinent because the matter
with which it deals logically would have commended itself to an inventor’s
attention considering Appellants’ problem (Fernand p. 1, ll. 1-4 (English
translation)). See In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379-
80 (Fed. Cir. 2007). Therefore, a person skilled in the art would look to
Fernand to make improvements to the encapsulated seat covers of Montaldo
and Hamer, including forming cutouts and a removal tab on the front flange
of Montaldo’s seat cover. Accordingly, we sustain the Examiner’s rejection
of claim 6, and claims 7 and 8, which fall with claim 6.
CONCLUSION
Montaldo discloses a disposable toiled seat cover with a flange
extending from each side and the front of the cover as called for in claim 1.
Combining Fernand with Montaldo and Hamer does not result in an
inoperable combination or change the principle of operation of the
references.
DECISION
The Examiner’s decision to reject claim 1 under 35 U.S.C. § 103(a) as
being unpatentable over Montaldo and Hamer is AFFIRMED.
The Examiner’s decision to reject claims 6-8 under § 103(a) as being
unpatentable over Montaldo, Hamer, and Fernand 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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