Ex Parte Ohba

Board of Patent Appeals and Interferences

Sep 28, 2011

10680365 (B.P.A.I. Sep. 28, 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.
10/680,365 10/07/2003 Chie Ohba AA537C2 4655
27752 7590 09/28/2011
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
STEPHENS, JACQUELINE F
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
09/28/2011 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 CHIE OHBA
____________

Appeal 2010-003588
Application 10/680,365
Technology Center 3700
____________

Before STEFAN STAICOVICI, KEN B. BARRETT, and
FRED A. SILVERBERG, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-003588
Application 10/680,365

2
STATEMENT OF THE CASE1
Chie Ohba (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision to finally reject under 35 U.S.C. § 102(b) claims 1-5 as
anticipated by Lassen (US 4,631,062, issued Dec. 23, 1986); and claim 6 as
unpatentable over Lassen.2 We have jurisdiction over this appeal under
35 U.S.C. § 6.

THE INVENTION
Appellant’s invention relates to an interlabial device 20 for absorption
of body fluids including an absorbent member 30 disposed between a body
contacting surface 22 and a garment facing surface 24. Spec. 2, ll. 15-19
and figs. 1 and 6.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
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

1 This application is a continuation application of U.S. Serial No.
10/612,197, filed Jul. 2, 2003, now abandoned. This is Appellant’s second
appeal before the Board of Patent Appeals and Interferences. In the first
appeal (Appeal No. 2008-1882, Decision mailed May 20, 2008), the
rejection of claims 1-6 was affirmed.
2 On the record before us, Appellant does not appeal the obviousness-type
double patenting rejection of claims 1-6 over claims 1-4 and 8 of copending
U.S. Application No. 10/612,197, now abandoned. See Final Rejection, p. 5,
mailed Feb. 3, 2009. Accordingly, the provisional obviousness-type double
patenting rejection of claims 1-6 is not part of this appeal.

Appeal 2010-003588
Application 10/680,365

3
configured such that the entire body contacting surface
resides within an interlabial space of a wearer in use.

SUMMARY OF DECISION
We AFFIRM.
OPINION
Appellant has not presented arguments for the patentability of claims
2-5 apart from claim 1. Br. 2-4. Therefore, in accordance with 37 C.F.R.
§ 41.37(c)(1)(vii), we select claim 1 as the representative claim to decide the
appeal of the rejection of these claims, with claims 2-5 standing or falling
with claim 1. In view of Appellant’s arguments, we will address the
rejection of claim 6 separately.
Claim 1
Independent claim 1 recites an interlabial device having a body
contacting surface, “wherein the interlabial device is configured such that
the entire body contacting surface resides within an interlabial space of a
wearer in use.” Br., Claims Appendix. Appellant argues that the labial pad
of Lassen is structurally different from the claimed interlabial device. Br. 4.
According to Appellant, Lassen teaches a pad that resides at least partially
outside the wearer’s interlabial space. Br. 3. Specifically, Appellant argues
that (1) the labial pad 30 of Lassen is disposed partially within the vestibule
32 of a wearer; and (2) the anterior region 56 of the labial pad 30 of Lassen
is configured for external disposition about the forward vulvar region
towards the mons pubis, over the labia majora. Br. 3-4. Appellant further
contends that the Examiner has failed to provide any evidence that the
interlabial device of Lassen is even capable of fitting within an interlabial
Appeal 2010-003588
Application 10/680,365

4
region of a user. Br. 4. We disagree with Appellant’s arguments for the
following reasons.
At the outset, Appellant’s arguments are not commensurate with the
scope called for in claim 1, which does not require that the interlabial device
reside within an interlabial space of a wearer in use, but rather that the
interlabial device be “configured such that the entire body contacting
surface resides within an interlabial space of a wearer in use.” Emphasis
added. As stated by our reviewing court in In re Hiniker Co., 150 F.3d
1362, 1369 (Fed. Cir. 1998), “the name of the game is the claim.” It is well
established that limitations not appearing in the claims cannot be relied upon
for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
In this case, we agree with the Examiner that the limitation of the
interlabial device being “configured such that the entire body contacting
surface resides within an interlabial space of a wearer in use,” as called for
in claim 1, constitutes functional language as it describes the “intended use”
of the body contacting surface of the interlabial device as opposed to a
structural element of the interlabial device. See Ans. 5-6. It is well
established that features of an apparatus may be recited either structurally or
functionally, however, claims directed to an apparatus must be distinguished
from the prior art in terms of structure rather than function. In re Schreiber,
128 F.3d 1473, 1477-78 (Fed. Cir. 1997). “[A]pparatus claims cover what a
device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb
Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). Therefore, as long as the labial
pad of Lassen can be configured such that the entire body contacting surface
can reside within an interlabial space (vestibule) of a wearer in use, the
labial pad device of Lassen meets the limitation of claim 1.
Appeal 2010-003588
Application 10/680,365

5
As such, we find that Lassen teaches an anatomically self-conforming
labial pad 30 including a body contacting surface 80 and a garment facing
surface 70 opposing the body contacting surface 80. Lassen, col.1, ll. 23-27
and col. 9, ll. 7-12 and figs. 1-3. We further find that Lassen specifically
teaches that: (1) the sanitary napkin (labial pad) is “shaped or contoured in
order to achieve interposition within the vestibule [interlabial space] of a
wearer” (see Lassen, col. 1, ll. 19-21 and col. 9, ll. 4-6); (2) labial pad 30 is
“disposed within the vestibule [32] [interlabial space] of a wearer” (see
Lassen, col. 9, ll. 22-24); and (3) the labial pad 30 has the ability “to
conform anatomically to the wearer’s . . . vestibule area [interlabial space]”
(see Lassen, col. 16, ll. 31-33). This is sufficient to establish a prima facie
case that the the entire body contacting surface of Lassen’s labial pad can
reside within an interlabial space (vestibule) of a wearer in use, so as to shift
the burden to Appellant to show that this is not the case. See In re King,
801 F.2d 1324, 1327 (Fed. Cir. 1986). Appellant has not come forth with
any evidence to satisfy that burden. An attorney’s arguments in a brief
cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974). As such, we find that the limitation of the interlabial device
being “configured such that the entire body contacting surface resides within
an interlabial space of a wearer in use,” as called for in claim 1, does not
result in any structural difference between Appellant’s claimed interlabial
device and Lassen’s labial pad.
Accordingly, for the foregoing reasons, the rejection of independent
claim 1 and of claims 2-5, standing or falling with claim 1, as anticipated by
Lassen is sustained.

Appeal 2010-003588
Application 10/680,365

6
Claim 6
Dependent claim 6 requires the interlabial device to have 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. Br., Claims Appendix.
Appellant argues that the Examiner has failed to provide any reasoning why
one skilled in the art would be motivated to modify the labial pad of Lassen
to provide a smaller pad as disclosed in the claimed invention. Br. 5.
According to Appellant, (1) the claimed invention does not merely involve
a change in dimension of the labial pad of Lassen; and (2) “[t]he size
of [Applicant’s] interlabial device 20 is important to its comfort and
effectiveness.” Id. See also Spec. p. 6, l. 9. We disagree with Appellant’s
arguments for the following reasons.
In this case, we find that Lassen discloses that labial pad 30 can
achieve a “range of sizes and geometries” in order to provide “user
conveniences in tailoring specific dimensional variations to suit individual
preferences.” Lassen, col. 12, ll. 46-51. In addition, we agree with the
Examiner that the labial pad of Lassen and Appellant’s claimed interlabial
device “are used for the same purpose and in the same manner” and both
provide comfort and effectiveness to the user. Final Rejection, p.2. See
also, Spec. 2, l. 11-12 and Lassen, col.1, ll. 23-27; col. 9, ll. 7-12; and col.
16, ll. 3-4. Furthermore, it is well established that size is not ordinarily a
patentable feature. In re Rose, 220 F.2d 459, 463 (CCPA 1955) (Claims
directed to a lumber package "of appreciable size and weight requiring
handling by a lift truck" were held unpatentable over prior art lumber
packages which could be lifted by hand because limitations relating to the
size of the package were not sufficient to patentably distinguish over the
Appeal 2010-003588
Application 10/680,365

7
prior art.); Gardner v. TEC Systems, Inc., 725 F.2d 1338, 1346, (Fed. Cir.
1984), cert. denied, 469 U.S. 830 (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 Appellant’s interlabial device is larger or smaller than Lassen’s
labial pad does not impart patentability to the claimed interlabial device
based solely on its size. In this instance, it is incumbent on Appellant to
show that the labial pad of Lassen is, in fact, physically distinct from the
claimed interlabial device. Therefore, since the labial pad of Lassen can be
tailored to “specific dimensional variations to suit individual preference” to
achieve a “range of sizes and geometries,” we agree with the Examiner that
providing the claimed dimensions to the labial pad 30 of Lassen would have
involved no more than routine skill in the art. See Final Rejection, p. 3.
Lastly, Appellant argues that Lassen teaches away from the claimed
invention by teaching partial labial disposition of the pad. Br. 7. Although
we appreciate that partial labial disposition is an advantage of Lassen’s
pad, nonetheless, Appellant does not point to any passage in Lassen that
“criticize[s], discredit[s] or otherwise discourage[s]” configuring the labial
pad 30 such that the entire body contacting surface resides within an
interlabial space (vestibule) of a wearer in use. In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004). As noted supra, the labial pad of Lassen is capable of
being configured such that the entire body contacting surface of the labial
pad of Lassen is capable of residing within an interlabial space (vestibule)
Appeal 2010-003588
Application 10/680,365

8
of a wearer in use. As such, we do not agree that the disclosure of Lassen
teaches away from Appellant’s claimed invention, as Appellant argues.
Accordingly, the rejection of dependent claim 6 under 35 U.S.C.
§ 103(a) as unpatentable over Lassen is sustained.

DECISION
The Examiner’s decision to reject claims 1-6 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

JRG