Ex Parte Odorzynski

Board of Patent Appeals and Interferences

Apr 28, 2011

10748715 (B.P.A.I. Apr. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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Ex parte THOMAS ODORZYNSKI 8
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Appeal 2010-004574 11
Application 10/748,715 12
Technology Center 3600 13
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Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and 16
BIBHU R. MOHANTY, Administrative Patent Judges. 17
FETTING, Administrative Patent Judge. 18
DECISION ON APPEAL 19
Appeal 2010-004574
Application 10/748,715

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STATEMENT OF THE CASE1 1

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed September 11, 2009) and Reply Brief (“Reply Br.,” filed January
13, 2010), and the Examiner’s Answer (“Ans.,” mailed December 9, 2009).
Thomas Odorzynski (Appellant) seeks review under 35 U.S.C. § 134 2
(2002) of a final rejection of claims 1,3-8,10-18,20,22,24-29,and 31-33, the 3
only claims pending in the application on appeal. We have jurisdiction over 4
the appeal pursuant to 35 U.S.C. § 6(b) (2002). 5
The Appellant invented a way of using diapers as an advertising medium 6
(Specification 1:21-22). 7
An understanding of the invention can be derived from a reading of 8
exemplary claim 1, which is reproduced below [bracketed matter and some 9
paragraphing added]. 10
1. A method of advertising, the method comprising: 11
[1] selling space on a disposable diaper to a sponsor; and 12
[2] placing an ad for a product other than disposable diapers 13
onto the disposable diaper. 14
The Examiner relies upon the following prior art: 15
Gabler US 5,481,758 Jan. 9, 1996
Iwamoto WO 03/028496 A1 Apr. 10, 2003
Claims 1, 3, 6, 8, 12, 14-17, 20, 22, 25, 26, 28, 31, and 32 stand rejected 16
under 35 U.S.C. § 102(b) as anticipated by Gabler. 17
Appeal 2010-004574
Application 10/748,715

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Claims 4, 5, 7, 10, 11, 13, 18, 24, 27, 29, and 33 stand rejected under 35 1
U.S.C. § 103(a) as unpatentable over Gabler and Iwamoto2. 2
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ISSUES 4
The issue of anticipation turns on whether a diaper is an undergarment. 5
FACTS PERTINENT TO THE ISSUES 6
The following enumerated Findings of Fact (FF) are believed to be 7
supported by a preponderance of the evidence. 8
Facts Related to the Prior Art 9
Gabler 10
01. Gabler is directed to a garment having a message on the outer 11
surface. Gabler 1:9-10. 12
02. Gabler describes how its messages are not limited to outer 13
garments but can also be applied to clothing normally seen only in 14
private including underwear. Gabler 2:57-60. 15
03. Gabler’s Fig. 3 displays a commercial message, implying the 16
space for the message was sold as advertising. 17
Iwamoto 18

2 Although the heading for this rejection excludes claim 33, the analysis for
the rejection of claim 33 is included under this heading in both the Final
Rejection and Answer. We take the omission from the heading as a
typographic error.
Appeal 2010-004574
Application 10/748,715

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04. Iwamoto is directed to a novel advertising medium using a 1
detachable advertisement display for clothing. Iwamoto Abstract. 2
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ANALYSIS 4
Claims 1, 3, 6, 8, 12, 14-17, 20, 22, 25, 26, 28, 31, and 32 rejected under 35 5
U.S.C. § 102(b) as anticipated by Gabler. 6
We are unpersuaded by the Appellant’s argument that Gabler fails to 7
describe a disposable diaper. Appeal Br. 4-6. Gabler describes applying 8
messages to undergarments such as underwear. This is clearly a genus for 9
which disposable diapers would be a species. Whether disposable diapers 10
are constructed differently than other forms of underwear as the Appellant 11
contends is not pertinent to the issue of whether a diaper is a garment worn 12
under other clothing. Similarly, whether the means for attaching a message 13
would be structurally different for diapers as the Appellant contends is not 14
pertinent as no means is claimed and the claims do not recite attachment, but 15
merely placement onto the diaper. 16
We are also unpersuaded by the Appellant’s argument that MPEP 17
§ 2131.02 states that a description of a genus does not necessarily anticipate 18
a species. Reply Br. 2. There are a limited number of types of 19
undergarments, compared to the many variations of chemical formulas cited 20
in MPEP § 2131.02. Accordingly, one would have immediately envisaged 21
diapers as among those garments worn under clothing by extremely young 22
children. 23
Appeal 2010-004574
Application 10/748,715

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Claims 4, 5, 7, 10, 11, 13, 18, 24, 27, 29, and 33 rejected under 35 U.S.C. 1
§ 103(a) as unpatentable over Gabler and Iwamoto. 2
We are unpersuaded by the Appellant’s arguments that art fails to 3
describe the claimed structure of a disposable diaper. As the Examiner 4
found, the structure does not affect one’s ability to simply place a message 5
somewhere upon a diaper, and the structure recited of an absorbent pad, 6
bodyside liner, and liquid impermeable backsheet, is known by ordinary 7
consumers, much less those of ordinary skill, to be that of many 8
conventional disposable diapers. 9
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CONCLUSIONS OF LAW 11
The rejection of claims 1, 3, 6, 8, 12, 14-17, 20, 22, 25, 26, 28, 31, and 12
32 under 35 U.S.C. § 102(b) as anticipated by Gabler is proper. 13
The rejection of claims 4, 5, 7, 10, 11, 13, 18, 24, 27, 29, and 33 under 14
35 U.S.C. § 103(a) as unpatentable over Gabler and Iwamoto is proper. 15
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DECISION 17
To summarize, our decision is as follows. 18
 The rejection of claims 1, 3, 6, 8, 12, 14-17, 20, 22, 25, 26, 28, 31, and 19
32 under 35 U.S.C. § 102(b) as anticipated by Gabler is sustained. 20
 The rejection of claims 4, 5, 7, 10, 11, 13, 18, 24, 27, 29, and 33 under 21
35 U.S.C. § 103(a) as unpatentable over Gabler and Iwamoto is 22
sustained. 23
Appeal 2010-004574
Application 10/748,715

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No time period for taking any subsequent action in connection with this 1
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 2
§ 1.136(a)(1)(iv) (2007). 3
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AFFIRMED 5
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mev 14
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