Ex Parte Okada

Patent Trial and Appeal Board

Dec 13, 2016

12934069 (P.T.A.B. Dec. 13, 2016)

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.
12/934,069 09/23/2010 Shiro Okada 100440 4439
24225 7590 12/15/2016
Gerald T Peters
JTT Patent Services, LLC
501 Kamitanabe Satsuma Building
6-23 Kamitanabe
Takatsuki Osaka, 569-0805
JAPAN
EXAMINER
ANDERSON, AMBER R
ART UNIT PAPER NUMBER
3678
NOTIFICATION DATE DELIVERY MODE
12/15/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
gerrypeters@jttpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHIRO OKADA
Appeal 2014-009410
Application 12/934,069
Technology Center 3600
Before: JAMES P. CALVE, LEE L. STEPINA, and SEAN P. O’HANLON,
Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1—4. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2014-009410
Application 12/934,069
CLAIMED SUBJECT MATTER
The claims are directed to a penis retainer and penis securing method.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A penis retainer comprising:
a tubular cloth member mounted below a crotch when
installed on a human body and allowing a penis to be inserted
into an interior space from a front opening thereof; and
a connecting member for installing the tubular cloth
member on the human body, the connecting member having a
front connecting cord, one end of which is attached to a front end
of the tubular cloth member; and
a back connecting cord, one end of which is attached to a
back end of the tubular cloth member;
wherein the front connecting cord is attached to the front
end of the tubular cloth member at a location below the interior
space of the tubular cloth member.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Malfitano US 4,666,440 May 19, 1987
Silverstein US 6,443,930 B1 Sept. 3,2002
RuPaul, Lettin’ it All Hang Out: An Autobiography (1996)
REJECTIONS
(I) Claims 1 and 2 are provisionally rejected on the ground of
nonstatutory double-patenting as unpatentable over claims 1 and 3 of
Application Serial No. 13/391,385 and Malfitano.
(II) Claims 1 and 2 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Silverstein and Malfitano.
2
Appeal 2014-009410
Application 12/934,069
(III) Claims 3 and 4 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Silverstein, Malfitano, and RuPaul.
OPINION
Rejection (I)
Appellants argue that the provisional double patenting rejection is
erroneous. AppealBr.il. Because Application Serial No. 13/391,385
became abandoned on February 20, 2015, the rejection of claims 1 and 2 for
double-patenting over this Application is reversed as moot.
Rejection (II)
The Examiner finds that Silverstein discloses most of the features
recited in claim 1, and, specifically, discloses a “connecting member
[having] a connecting cord (18) being attached to [a] tubular cloth member
at a location below [an] interior space of the tubular cloth member.” Final
Act. 4—5 (citing Silverstein, 4:14—15, Figs. 3 and 4). The Examiner finds
that “Silverstein does not specifically disclose a first cord having an end
attached to a front end of the tubular cloth member and a second cord having
an end attached to a back end of the tubular cloth member.” Final Act. 5.
Nonetheless, the Examiner finds that Malfitano discloses “an absorbent
portion (30) attached to a strap (38) that is connected to cords (18 & 20) at
an underside of the absorbent portion (Fig. 4) wherein the cords are attached
to a waist portion (12).” Final Act. 5. The Examiner reasons that, in light of
Malfitano’s disclosed arrangement, it would have been obvious to have
made the cord of Silverstein in two sections, with one end of one cord
attached to the front end of the tube and an end of the second cord attached
3
Appeal 2014-009410
Application 12/934,069
to the back end of the tube so as to allow for a wide and complete range of
adjustment. Final Act. 5.
Appellant argues that “one is hard-pressed to find anything
resembling one cord, much less two cords, in the drawings or textual
disclosure of SILVERSTEIN.” Appeal Br. 14.
In response, the Examiner provides a dictionary definition of the word
“cord” as “a long slender flexible material usually consisting of several
strands (as of thread or yam) woven or twisted together,” and the Examiner
finds that the crotch band disclosed by Silverstein meets this definition.
Ans. 2.
In reply, Appellant asserts that the Examiner’s constmction of the
term “cord” is inconsistent with the Specification. Reply Br. 17. In this
regard, Appellant asserts that “[a]n exemplary reasonable interpretation of
the claim term ‘cord’ might therefore read on a member having at least one
well-defined end capable of being attached to the front or back end of such a
tubular cloth member.” Reply Br. 20 (emphasis added).
Appellant’s argument on this point is without merit. Claim 1 recites
“a front connecting cord, one end of which is attached to a front end of the
tubular cloth member.” Appeal Br. 32 (Claims App.). Claim 1 further
recites “a back connecting cord, one end of which is attached to a back end
of the tubular cloth member.” Id. Appellant’s above-noted constmction of
the term “cord” does not distinguish the Examiner’s proposed combination
of Silverstein and Malfitano. In any event, Appellant’s Specification
describes the item identified by reference number 51 in Figure 13 as a “waist
cord.” (see, e.g., Spec. 149), and waist cord 51 is depicted as a flat strip of
material, similar to what is cited in Silverstein by the Examiner. Thus, the
broadest reasonable interpretation of the term “cord” does not exclude the
4
Appeal 2014-009410
Application 12/934,069
structure in Silverstein relied upon by the Examiner. Further, the Examiner
reasons that, in light of Malfitano’s disclosed arrangement, it would have
been obvious to have made the cord of Silverstein in two sections. See Final
Act. 5.
Appellant also asserts:
Crotch band 18 of SILVERSTEIN cannot satisfy the
limitations of the connecting member at [b'], nor can it even truly
be said to satisfy the Examiner’s rephrased version of this
limitation at [b], because crotch band 18 of SILVERSTEIN does
not have a front connecting cord and a back connecting cord as
is recited at claim 1 of the present application.
Appeal Br. 15.
This argument is without merit inasmuch as the Examiner makes no
finding that Silverstein discloses front and back connecting cords. See Final
Act. 4—5. Instead, the rejection of claim 1 relies on Malfitano to teach front
and back cords. Id.; see also Ans. 2. Thus, Appellant’s argument does not
address the Examiner’s rejection.
Appellant also argues that the Examiner should be under a heightened
burden to show that a person of ordinary skill in the art “would have looked
to the secondary reference and combined the two references in the manner
alleged.” Appeal Br. 15.
This argument is unpersuasive because Appellant does not identify
any deficiency in the Examiner’s findings that would require a change in the
burden required to make a proper rejection under 35 U.S.C. § 103.
Appellant argues that the Examiner’s rationale for modifying the
device in Silverstein is inadequate because the Examiner mischaracterized
the teachings of Malfitano and “because while MALFITANO may teach use
of strap-to-sanitary-napkin connections made adjustable through hook-and-
5
Appeal 2014-009410
Application 12/934,069
loop type fasteners, MALFITANO is silent regarding splitting of a cord into
two sections as suggested the Examiner.” Appeal Br. 17—18.
We disagree with Appellant that Malfitano is silent regarding splitting
a cord into two sections because, as shown in Figures 1 and 4 of Malfitano,
straps 18 and 20 are two distinct components. Further, straps 18 and 20 of
Malfitano satisfy the broadest reasonable interpretation of the term “cord” in
light of Appellant’s disclosure of “waist cord 51” in Figure 13 of the present
Application. In other words, if the item identified by reference number 51 in
Appellant’s Figure 13 qualifies as a cord, so do straps 18 and 20 in
Malfitano.
Appellant argues that “MALFITANO is also silent regarding
attachment of cord sections to front and back ends of a tube or pouch as
suggested by the Examiner at [o]-[t].”1 Appeal Br. 17—18.
In response, the Examiner states “[a]gain, the examiner would like to
reiterate that the motivation for making the cord into two portions comes
from both one of ordinary skill in the art and the Malfitano reference.”
Ans. 6.
Appellant’s argument is unpersuasive because it does not address the
Examiner’s use of Malfitano. See Final Act. 5. The Examiner finds that
Silverstein discloses “a penis retainer (Fig. 2) comprising a tubular cloth
member (18)” (Final Act. 4), and this finding is supported by a
preponderance of the evidence (see Silverstein Figs. 4—5). The Examiner
relies on Malfitano “to teach that it is known to attach an absorbent material
using two cords instead of one.” Ans. 3. Thus, Appellant’s arguments on
1 The letters reference by Appellant identify paraphrasing of claim
limitations listed on page 16 of the Appeal Brief.
6
Appeal 2014-009410
Application 12/934,069
this point do not address the combination of references proposed by the
Examiner.
Appellant next asserts that the Examiner’s rationale for making the
proposed combination of Silverstein and Malfitano lacks the requisite degree
of specificity. Appeal Br. 18.
We find this argument to be unpersuasive because the Examiner sets
forth a specific rationale for making the proposed combination, namely, “so
as [to] allow for a wide and complete range of adjustment.” Final Act. 5.
Appellant does not explain persuasively why this rationale is insufficiently
specific.
Appellant asserts that the Examiner’s rejection of claim 1 relies on an
unreasonably broad interpretation of the word “below” as recited in claim 1.
See Appeal Br. 20—24.
In response, the Examiner states
Appellant has placed no special definition of “below” in the
specification, thus the examiner has taken the broadest
reasonable interpretation of the term “below” to mean “in or to a
lower place” as defined by Merriam Webster and as best
understood by the drawings of the invention to be “on the
exterior of’ the tubular fabric. Appellant has not shown the
embodiment of Fig. 13 and 15 (to which the claims are drawn)
on a wearer nor has appellant claimed any axis or orientations in
which the term “below” is to be interpreted structurally in the
claims. Thus, the examiner maintains that the cord of Silverstein
being attached to the surface of the tubular cloth that does not
contact the surface of the wearer is in fact the surface that is
“below” the interior space of the tubular cloth.
Ans. 8.
In reply, Appellant reiterates the assertion that the Examiner’s
interpretation of the term “below” is unreasonably broad and further asserts
that the directional scheme in the Specification makes clear that the term
7
Appeal 2014-009410
Application 12/934,069
“below” refers to being “in or to a lower place” or “lower down than.'1'’
Reply Br. 14, note 29. Appellant contends that if the word “below” were
given the above-noted construction, the Examiner’s proposed combination
of Silverstein and Malfitano would not satisfy the requirement in claim 1
that “the front connecting cord is attached to the front end of the tubular
cloth member at a location below the interior space of the tubular cloth
member.” Reply Br. 16.
We agree with Appellant’s interpretation of the word “below” in
claim 1 as “lower down than.” See, e.g., Spec. 1 8 (describing a tubular
member mounted below the crotch), 148 (describing Figure. 13 has
depicting “front connecting cord 58a being attached to the lower side of a
front open portion of tubular cloth member 55.”). In light of the above-
noted interpretation of the term “below” in claim 1, the Examiner’s finding
that Silverstein discloses “the connecting member hav[ing] a connecting
cord (18) being attached to the tubular cloth member at a location below the
interior space of the tubular cloth member” (Final Act. 4—5) is not supported
by a preponderance of the evidence. Silverstein discloses tubular pouch 18
attached to a posterior surface 27 of anterior portion 26 of the crotch band.
The connection is not “below” the interior space of the tubular cloth member
(pouch 18). Silverstein, 4:10-15, Fig. 3. This occurs because pouch 18 is
oriented vertically, so that band 16 attaches to an outer portion of pouch 18,
rather than “below” interior surface 40. Id. at 4:18—26. Accordingly, we
reverse the Examiner’s rejection of claim 1, and claim 2 depending
therefrom, as unpatentable over Silverstein and Malfitano.
Rejection (III)
8
Appeal 2014-009410
Application 12/934,069
Each of independent claims 3 and 4 recites, in part, “wherein the front
connecting cord is attached to the front end of the tubular cloth member at a
location below the interior space of the tubular cloth member.” Appeal Br.
32—33 (Claims App.). The Examiner’s use of RuPaul does not remedy the
deficiency in the rejection of claim 1 based on Silverstein and Malfitano.
See Final Act. 7. For the same reasons discussed above regarding claim 1,
we reverse the Examiner’s rejection of claims 3 and 4.
DECISION
The Examiner’s decision to reject claims 1—4 is reversed.
REVERSED
9