Ex Parte Ohba

Board of Patent Appeals and Interferences

May 19, 2008

10680365 (B.P.A.I. May. 19, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte CHIE OHBA
__________

Appeal 2008-1882
Application 10/680,365
Technology Center 3700
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Decided: May 19, 2008
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Before, TONI R. SCHEINER, DONALD E. ADAMS, and DEMETRA J.
MILLS, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for anticipation and obviousness. We have jurisdiction under 35
U.S.C. § 6(b).

Appeal 2008-1882
Application 10/680,365

The following claim is representative.
1. An interlabial device having a body contacting surface, a garment
facing surface opposing the body contacting surface, an interior region, and
a periphery region which surrounds the interior region, the body contacting
surface being liquid permeable, the absorbent interlabial device comprising a
concave portion adapted for insertion by a user's fingers and wherein the
interlabial device is configured such that substantially the entire device
resides within an interlabial space of a wearer in use.

6. The interlabial device of Claim 1, wherein the interlabial device
has a longitudinal length of from about 60 mm to about 150 mm and a
transverse width of from about 20 mm to about 80 mm.

Reference Cited by the Examiner:
Lassen US 4,631,062 December 26, 1986

Grounds of Rejection
1. Claims 1-5 stand rejected under 35 U.S.C. § 102(b), as anticipated
by Lassen.
2. Claim 6 stands rejected under 35 U.S.C. 103(a) as being
unpatentable over Lassen.
DISCUSSION
Background
The present invention relates to absorbent devices, and more
particularly to an absorbent interlabial device that is worn interlabially by
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female wearers for catamenial (menstrual) purposes, incontinence
protection, or both.

1. Claims 1-5 stand rejected under 35 U.S.C. § 102(b), over Lassen.
We select claim 1 as representative of the rejection before us since
Appellants have not separately argued the individual claims. 37 C.F.R.
41.37(c)(1)(vii).
Claim interpretation
“A determination of anticipation … involves two steps. First is
construing the claim, … followed by a comparison of the construed
claim to the prior art. This comparison process involves fact-finding,
and is for the fact-finder in the first instance.” Key Pharms. v. Hercon
Labs. Corp., 161 F.3d 709, 714 (Fed. Cir. 1998). Accordingly, our
analysis begins by construing the claimed invention, followed by a
comparison of the construed claim to the prior art.
In the Specification, the term "absorbent interlabial device" refers to a
“structure which includes at least one absorbent component or member, and
which is specifically configured to reside within the interlabial space of a
female wearer during use.” (Spec. 4: 11-17.) “When the absorbent
interlabial device is properly sized for an individual wearer, more than half
of the entire absorbent interlabial device of the present invention resides
within such interlabial space.” (Spec. 4: 11-17.) “Preferably substantially
the entire absorbent interlabial device resides within such interlabial space,
and more preferably the entire absorbent interlabial device resides within
such interlabial space of a female wearer during use.” (Spec. 4: 15-17.)
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Application 10/680,365

Thus, the Specification distinguishes between “substantially the
entire” and “entire” interlabial space. From this disclosure we interpret the
phrase “substantially the entire device resides within an interlabial space of a
wearer in use” to mean something less than the entire device resides within
the interlabial space, i.e., a portion of the device may be outside the
interlabial space of a wearer in use.
The Examiner finds that
Lassen discloses an interlabial absorbent device having a
liquid permeable topsheet 80 on a body facing side and a liquid
impermeable backsheet 70 on a garment facing side, with an
interior region 64 and periphery region (58,60,62), with an
absorbent 74 disposed between the garment and body facing
sides in a laminate structure (Figures 2 and 6). The interlabial
device has a concave portion on the garment facing side and a
convex portion on the body contacting side, the concave and
convex portions are in face-to-face relationship (Figures 2 and
6). The concave portion is capable of being inserted by a user's
fingers. The interlabial device is capable of fitting within an
interlabial region of a user, particularly if the device is folded.
As to claim 5, see Figure 6 where the concave portion is on the
garment facing side.

(Ans. 4.)
In addressing the anticipation rejection, Appellant contends that
“Lassen teaches away from an interlabial device configured such that
substantially the entire device resides within the interlabial space of the
wearer in use.” [Emphasis removed.] (Br. 4.) Appellant argues that Lassen
teaches “partial labial disposition within the vestibule of the wearer” and
argues that Lassen also teaches that “the forwardmost or anterior region of
the pad folds beyond the vestibule about the vulva of the wearer.” (Br. 3-4.)
We are not persuaded by Appellant’s argument.
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Lassen discloses that the labial pad is disposed within the vestibule of
the wearer. (Lassen, col. 9, ll. 20-25.) According to Lassen the “vestibule is
considered to be the region defined within the labia … beginning at about a
point lying caudally from the anterior labial commissure” (Fig. 1, element
34), “extending rearward to the posterior labial commissure” (Fig. 1,
element 36) and “bounded inwardly by the floor” (Fig. 1, element 38.)
(Lassen, col. 9, ll. 20-36.) It is true that Lassen’s device does extend outside
of the interlabial space. However, the labial pad disclosure of Lassen still
falls within the scope of the interlabial device claimed in that, as discussed
herein, we have interpreted the phrase “substantially the entire device resides
within an interlabial space of a wearer in use” to mean that a portion of the
device may be outside the interlabial space of a wearer in use.
With respect to Appellant’s “teaching away” argument, we note that
while such arguments may be presented regarding obviousness rejections,
such arguments are not appropriate in an anticipation rejection.
We therefore affirm the anticipation rejection of the claims in view of
Lassen.

2. Claim 6 stands rejected under 35 U.S.C. 103(a) as being
unpatentable over Lassen.
The Examiner acknowledges that Lassen does not specifically
disclose the dimensions of the labial pad. (Ans. 5.) However, the Examiner
finds that while Lassen does not disclose the specific dimensions of the pad,
"Lassen does teach the relative dimensions in a functional sense are at least
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long enough to extend over the desired areas in use (col. 11, lines 28-35).”
(Ans. 5.)
The Examiner concludes based upon the precedent of Gardner v. TEC
Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), where the
Federal Circuit held that, "where the only difference between the prior art
and the claims was a recitation of relative dimensions of the claimed device
and a device having the claimed relative dimensions would not perform
differently than the prior art device, the claimed device was not patentably
distinct from the prior art device," that the labial pad of the claimed
invention is not patentably distinct from the labial pad of Lassen. (Ans. 5.)
Appellant contends, in a manner similar to that argued with respect to
the anticipation rejection above, that Lassen fails to teach an interlabial
device which is configured such that substantially the entire device resides
within the interlabial space of a wearer in use and that has the claimed
dimensions. (Br. 4.) This argument is unpersuasive for the reasons
discussed above.
We further note that the Supreme Court emphasized that “the
[obviousness] analysis need not seek out precise teachings directed to the
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” (KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007)).
In our view, one of ordinary skill in the art reading the disclosure of
Lassen of a labial pad which is generally of a size which is disposed within
the vestibule of the wearer, and understanding that the claimed device would
not perform differently than the labial pad of Lassen, would have considered
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a labial pad having the dimensions of claim 6 to be obvious in view of the
disclosure of Lassen.
Appellant argues that Lassen teaches away from the claimed invention
in that Lassen teaches an interlabial pad wherein a portion of the pad extends
beyond the interlabial space. A reference is said to “teach away” from a
claimed invention when it “suggests that the line of development flowing
from the reference's disclosure is unlikely to be productive of the result
sought by the applicant” (In re Gurley, 27 F.3d 551, 553, (Fed. Cir. 1994)).
Lassen discloses that the labial pad is generally disposed within the
vestibule of the wearer and extends over the vulva which reads on the claim
language “substantially the entire device resides within an interlabial space
of a wearer in use” as set forth in the Specification which also describes that
a portion of the interlabial device does not reside within the interlabial space.
Thus, we find no teaching away in Lassen, as alleged by Appellant.
In our view, the general disposition of the labial pad of Lassen,
Lassen’s device meets the structural limitations imposed on the claimed
device by the requirement that the device is “configured such that
substantially the entire device resides within an interlabial space of a wearer
in use” as set forth in the Specification which also describes that a portion of
the interlabial device does not reside within the interlabial space.
The obviousness rejection of claim 6 is affirmed.

SUMMARY
The rejections of the claims for anticipation and obviousness are
affirmed.
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No time period for any subsequent action in connection with this
appeal may be extended under CFR § 1.136(a).

AFFIRMED

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