Ex Parte Maynard et al

Patent Trial and Appeal Board

Jan 8, 2018

12625903 (P.T.A.B. Jan. 8, 2018)

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.
2853 1144
EXAMINER
THEIS, MATTHEW T
ART UNIT PAPER NUMBER
3782
MAIL DATE DELIVERY MODE
12/625,903 11/25/2009
44649 7590 01/08/2018
DONALD J. ERSLER, S.C.
1165 Terrace Drive
Elm Grove, WI53122
Nicole Marie Maynard
01/08/2018 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 NICOLE MARIE MAYNARD and JESSE ANTON MAYNARD
Appeal 2017-003725
Application 12/625,903
Technology Center 3700
Before EDWARD A. BROWN, LEE STEPINA, and
ANTHONY KNIGHT, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 34—55.1 We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Claims 1—33 are cancelled. Br. 1 (Claims App.).
Appeal 2017-003725
Application 12/625,903
CLAIMED SUBJECT MATTER
Claims 34, 42, and 49 are independent. Claim 34, reproduced below,
illustrates the claimed subject matter.
34. A machine washable and machine dryable reusable fabric
waterproof bag for transporting and storing wet items, with a seal
resistant to overstuffmg and repetitive washing, comprising:
an outer bag; and
an inner bag formed of fabric laminated with a water
repelling coating resistant to wetting, the fabric having a water
repelling coating side that is less than the 3 millimeters thick, the
inner bag is formed by sealing the water repelling coating side of
the fabric to itself at two side edges with heat bonding to form a
heat bond seal, said heat bond seal is reinforced with stitching,
said heat bond seal is created wide enough to contain said
stitching, said inner bag is retained in and enveloped by the outer
bag, wherein said heat bond seal creates a waterproof seal,
wherein said stitching within said heat bond seal prevents
separation of said heat bond seal.
REJECTIONS2
I. Claims 42—55 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
II. Claims 34, 37, 39, 40, 42, 43, 47, 49, 50, and 54 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Hydom (US 4,127,155,
issued Nov. 28, 1978) and Rich (US 5,817,379, issued Oct. 6, 1998).
III. Claims 35, 38, 44, 45, 51, and 52 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hydom, Rich, and Mogil (US 2004/0136621
Al, published July 15, 2004).
2 A rejection of claims 42-45 under 35 U.S.C. § 112, second paragraph, has
been withdrawn. Ans. 11.
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Application 12/625,903
IV. Claim 36 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Hydom, Rich, Mogil, and Bearman (US 5,288,150, issued Feb. 22,
1994).
V. Claims 41, 46, and 53 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hydom, Rich, and Thatcher (US 2007/0080182 Al,
published Apr. 12, 2007).
VI. Claims 48 and 55 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hydom, Rich, and Bearman.
ANALYSIS
Rejection I
Claims 42 and 49 recite that “water in the inner bag does not come in
contact with said plurality of stitches, because the water does not penetrate
said heat bond seal.” Appeal Br. (Claims App. 5, 8). The Examiner finds
that the disclosure “discuss [es] the ability of the combined seal and seam to
prevent water or liquid from escaping the bag, but does not specifically note
that water does not reach or come in contact with the stitches.” Final Act. 3.
Appellants contend the Specification does disclose the disputed
limitation. Br. 7. In support, Appellants point out that the Specification
describes:
A flaw with many wet bags presently being sold is that they wick
or leak at the seams. Often this is due to the fact that the seams
are sewn with no other measures to prevent address the holes in
the waterproof material of the wet bag at the sewn seams. The
present invention addresses this problem.
Id. (citing Spec. 13). According to Appellants, this description states the
problem of leaking/wicking found in stitching of prior art bags. Id. at 7—8.
Appellants also point out that the Specification describes:
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Application 12/625,903
The sealed region runs along the side of the bag. A bag having
a combined seal 35 and sewn seam 58 comprising stitches, may
advantageously provide extra strength and waterproofing ability
whereby water or liquid is prevented from escaping the bag
through the combined sides 30.
Id. at 8; see Spec. 148. It is Appellants’ position that these two passages,
taken together, disclose the disputed claim limitation. Id.
The Examiner responds that the Specification fails to provide detail
describing specifically how far water is permitted to penetrate, or not
penetrate, into the seam. Ans. 11—12. According to the Examiner, “a seam
may maintain a waterproof seal even if water is permitted to pass midway
through the width of the seam.” Id. at 12.
The test for sufficiency under the written description requirement of
35 U.S.C. § 112, first paragraph, “is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.”
See AriadPharm., Inc. v. EliLilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) (en banc). To have “possession,” “the specification must. . . show
that the inventor actually invented the invention claimed.” Id. The
description in paragraph 3 of the Specification cited by Appellants does not
disclose how the present invention addresses the problem that “many wet
bags presently being sold . . . wick or leak at the seams.” See Spec. 13.
This description does not identify specifically what “other measures” are
provided to “prevent address the holes in the waterproof material of the wet
bag at the sewn seams.” The description in paragraph 48 of the
Specification cited by Appellants discloses that a bag having a combined
seal 35 and sewn seam 58 comprising stitches may prevent water from
“escaping the bag through the combined sides 30.” See id. 148 (emphasis
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added). This description does not, however, indicate that water is prevented
from passing into seal 35, or prevented from coming into contact with the
stiches. Rather, this description only indicates that water is prevented from
“escaping the bag” by passing “through the combined sides 30.” We are not
persuaded that the two passages, even taken together, disclose the disputed
claim limitation.
For these reasons, we sustain the rejection of claims 42—55 under the
written description requirement of 35 U.S.C. § 112, first paragraph.
Rejection II
Appellants argue for patentability of claims 34, 37, 39, 40, 42, 43, 47,
49, 50, and 54 as a group. Br. 10-12. We select claim 34 as representative
of this group, and claims 37, 39, 40, 42, 43, 47, 49, 50, and 54 stand or fall
with claim 34. See 37 C.F.R. § 41.37(c)(l)(iv).
As to claim 34, the Examiner finds that Hydom discloses a machine
washable and machine dryable reusable fabric waterproof bag, comprising
an outer bag (side panel 34) and an inner bag (compartment 39) formed of
waterproof materials resistant to wetting, with inner bag 39 being formed by
sealing the waterproof side segments thereof to itself at two side edges with
heat bonding to form a heat bond seal, which is reinforced with stitching 11.
Final Act. 5 (citing Hydom, col. 2,11. 32—37, Fig. 4; see also id. at col. 5,11.
31—43, Figs. 5, 6). The Examiner finds that Hydom discloses use of a water
repelling coating side applied less than 3 millimeters thick to create a
waterproof panel for the outer bag walls. Id. at 6 (citing Hydom, col. 3,11.
18—22). The Examiner finds Hydom does not disclose that the inner
waterproof panels of the inner bag include fabric laminated with a water
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Application 12/625,903
repelling coating, or that the inner bag is formed by sealing the water
repelling coating side of the fabric. Id.
The Examiner finds that Rich teaches a waterproof bag formed from
fabric laminated with a water repelling coating resistant to wetting, wherein
the fabric has a water repelling coating side 14 formed by sealing this side to
itself at two side edges using heat to form sealed seams, each being two
water repelling coating sides sealed directly together. Final Act 6 (citing
Rich, col. 3,11. 13-15,11. 19-23, Fig. 1).
The Examiner concludes that it would have been obvious to make
Hydom’s inner bag out of fabric laminated with a water repelling coating to
allow each side to have different beneficial properties. Id. The Examiner
explains that Hydom is relied upon to teach waterproof seams, and Rich is
relied upon to teach a bag with walls formed of a fabric with a coating of
waterproof material {id. at col. 3,11. 11—15) and the ability to attach those
layers together by heat sealing {id. at col. 3,11. 19-21, Fig. 1 (“portions 14
contact each other at side seams 16”). Ans. 12. The Examiner further
explains:
The rejection is intended to take the device of Hydom,
specifically noting Fig. 6 including the outer bag 34 and inner
(plastic) bag (36/37)3 and using the teaching of Rich, make the
inner bag out of a fabric coated with a waterproof material, as
well as bonding the waterproof material coated sides together by
heat sealing.
Id. at 13.
3 We understand that the “inner (plastic) bag (36/37)” corresponds to the
compartment 39 including dividers 37 and 38 shown in Figure 6 of Hydom.
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Application 12/625,903
Appellants contend that Hydom does not disclose machine washing
the carrying bag in a washing machine. Br. 10. According to Appellants,
the stiffness of the materials used in Hydom’s bag do not make it suitable
for machine washing. Id. Appellants also contend that Hydom states that
the preferred form of waterproofing is with impermeable plastic material of
a thickness of about 3 mils, but this creates a bag that is not suitable for
machine washing. Id. (citing Hydom, col. 3,11. 18—22). The Examiner
responds that “being ‘machine washable’ i.e. structurally capable of being
washed with a machine is highly dependent on the roughness or delicate
washing nature of the machine.” Ans. 12. The Examiner determines that
the phrase “machine washable” is very broad and “the device of Hydom is
structurally capable of being washed by a sufficiently gentle machine.” Id.
Appellants’ contentions are not persuasive. Claim 34 does not recite
any limitation that specifies the material of the outer bag or the fabric of the
inner bag. Regarding Appellants’ contention that Hydom’s carrying bag is
not “machine washable” due to the stiffness of the materials used in the
carrying bag, Appellants do not direct us to any disclosure in Hydom that
supports this position. In fact, we note Hydom discloses, for example: “an
object of the invention [is] to provide a strong flexible carrying bag”
(Hydom, col. 1,11. 44^45, emphasis added); “the side panels are constmcted
from a durable, flexible materiaF {id. at col. 2,11. 6—7, emphasis added);
“two or more flexible waterproof dividers may be provided in the bag” {id. at
col. 2,11. 32—33, emphasis added); the side panels laminated with plastic
material 7 are “flexible” {id. at col. 3,11. 21—22); and “[t]he side panels have
the rigidity required to support the bag and the flexibility to conform to the
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Application 12/625,903
shape of irregularly shaped objects placed in the bag’’ (id. at col. 4,11. 56—
59, emphasis added). Accordingly, Appellants’ contention is not persuasive.
Appellants acknowledge that Hydom teaches a waterproof bag (Br.
12) and Rich’s towel is machine washable (id.). Appellants contend,
however, that Rich fails to teach “sealing the inner layers to themselves to
form a waterproof pocket” (id. at 11), or “sealing the inner layers to each
other to make a waterproof bag” (id. at 12). According to Appellants,
Hydom and Rich do not teach or suggest heat bonding a material with a
waterproof coating to itself. Id.
These contentions are not persuasive. “Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references. [Each reference] must be
read, not in isolation, but for what it fairly teaches in combination with the
prior art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986) (citation omitted). As noted, the Examiner relies upon Hydom to
teach waterproof seams. Ans. 12. The Examiner finds Hydom teaches that
the inner bag including dividers 37, 38 is formed by sealing the waterproof
side segments thereof to itself at two side edges with heat bonding to form a
heat bond seal. Final Act. 5. Hydom describes that:
two or more flexible waterproof dividers may be provided in the
bag and secured to the periphery thereof. Upon heat sealing the
dividers together and providing a suitable closure device at their
open ends, one or more watertight and airtight compartments are
formed within the bag.
Hydom, col. 2,11. 32—37 (emphasis added). Accordingly, Hydom discloses
sealing the dividers (“inner layers”) to each other to make a waterproof bag.
The Examiner relies on Rich to teach a fabric laminated with a water
repellant coating. Appellants do not apprise us of any error in this finding.
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Rich discloses a towel comprising two sheets, each including an absorbent
outer layer 12 and an impervious inner layer 14, in which the sheets are
fastened together along edges 16. See Rich, col. 2,11. 46—52, Fig. 1. The
outer layers 12 and inner layers 14 can be bonded by heat to each other, or
inner layers 14 can be coated onto outer layers 12. Id. at col. 3,11. 11—15.
Rich also discloses that “[t]he inner and outer layers 12 and 14 may be
secured together along closed edges 16 in any suitable manner. Typically,
sewing, heat bonding . . . may be used.” Id. at col. 3,11. 19-22. Appellants
do not explain persuasively securing by heat bonding does not seal the layers
to each other. Rich further describes, “when the moisture absorbing outer
layers 12 are damp and the user’s exercise clothing is also damp, towel 10
can be turned inside out and the damp clothing carried within the towel,
avoiding contaminating any surface or clothing that the towel might
encounter with the retained moisture.'''’ See Rich, col. 3,11. 42-47 (emphasis
added). This description implies the retained moisture is retained inside
towel 10.
Appellants also contend that Rich’s closure device (hook and loop
fastener) is not waterproof. Br. 12. Even if this contention is correct,
however, the proposed modification does not incorporate Rich’s closure into
Hydom. See Ans. 13.
Regarding Appellants’ contention that Hydom and Rich do not teach
or suggest heat bonding a material with a waterproof coating “to itself,”
Appellants do not explain persuasively why both Hydom and Rich fail to
provide this teaching. To the extent Appellants may be contending that the
claimed “fabric laminated with a water repelling coating” is a single piece of
fabric, claim 34 does not limit the fabric to only a single piece. As such,
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Application 12/625,903
claim 34 does not expressly exclude an inner bag formed of two or more
separate pieces of fabric. Further, claim 34 does not expressly exclude “the
water repelling coating side of the fabric” from being “the water repelling
coating side” of two or more separate pieces of fabric, where the water
repelling coating side of one piece of the fabric is sealed to the water
repelling coating side of another piece of the fabric “at two side edges with
heat bonding to form a heat bond seal.”
This construction is consistent with language recited in claim 49, for
example.4 Particularly, claim 49 recites that “an inner bag includes two
pieces of fabric, the two pieces of fabric are laminated with a water repelling
coating resistant to wetting” and “the inner bag is formed by sealing the
water repelling coating side of the two pieces offabric to itself at three side
edges with heat bonding to form a heat bond seal.” Br. (Claims App. 8)
(emphasis added). Claim 49 appears to correspond to the inner bag 20
shown in Figure 5C, which, as described in the Specification, “may be
constructed from 2 separate pieces, for example, rectangular pieces and the
seam [seal] applied to three sides to form a wet bag.” See Spec. 1 50.
As discussed above, Hydom discloses sealing dividers (e.g., dividers
37, 38) to each other to make a waterproof bag. Rich appears to disclose
securing layers 14 (i.e., “the water repelling coating side of the fabric”) to
each other by heat bonding. In view of these teachings, and our above claim
construction, we are not persuaded that the combination of Hydom and Rich
4 “Other claims of the patent in question, both asserted and unasserted, can
also be valuable sources of enlightenment as to the meaning of a claim
term.” See Phillips v. AWHCorp., 415 F.3d 1303, 1314 (Fed. Cir. 2005)
(citation omitted).
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fails to disclose or suggest an “inner bag . . . formed by sealing the water
repelling coating side of the fabric to itself at two side edges with heat
bonding to form a heat bond seal” (emphasis added), as claimed.
For these reasons, we sustain the rejection of claim 34 as unpatentable
over Hydom and Rich. Claims 37, 39, 40, 42, 43, 47, 49, 50, and 54 fall
with claim 34.
Rejections III-VI
Appellants do not present substantive argument for any one of
rejections III—VI, but only rely on the dependency of the rejected claims
from claim 34, 42, or 49 for patentability. Br. 12—13. Accordingly, we also
sustain these rejections for the reasons discussed above for rejection II.
DECISION
The Examiner’s decision to reject claims 34—55 is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended according to 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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