Ex Parte Smith

Board of Patent Appeals and Interferences

Mar 21, 2012

10303877 (B.P.A.I. Mar. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte CAROLYN J. SMITH
__________

Appeal 2010-004001
Application 10/303,877
Technology Center 3700
__________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
ERICA A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to an
arrangement and a method for cleaning breasts and a baby’s mouth areas
during a woman’s nursing regimen comprising the use of a disposable wipe
made of non-woven fabric. The Patent Examiner rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

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STATEMENT OF THE CASE
Claims 1-18 are on appeal. Claims 1 and 16 are representative and
read as follows:
1. An arrangement for cleaning breasts and a baby's mouth areas during
a woman's nursing regimen, comprising:
at least one disposable wipe made of non-woven fabric;
a sealed but openable package containing the at least one wipe;
a liquid consisting of purified water within the sealed openable
package and soaking the at least one disposable wipe, whereby upon
opening the package and removing the wipe, the wipe is used to clean the
breast.

The Examiner rejected claims 1-18 under 35 U.S.C. § 103(a) as
unpatentable over Toohey1 and Brennan.2
Claims 2-15 and 17-18 have not been argued separately and therefore
stand or fall with claims 1 and 16, respectively. 37 C.F.R. § 41.37(c)(1)(vii).

OBVIOUSNESS
The Issue
Regarding independent claim 1, the Examiner’s position is that
Toohey disclosed an arrangement comprising at least one disposable wipe, a
sealed but openable package containing the at least one wipe, a liquid
consisting of purified water within the sealed openable package and soaking
the at least one disposable wipe. (Ans. 5.) The Examiner found that Toohey
did not disclose that the wipe was made of non-woven fabric or for cleaning

1 US Patent No. 4, 749, 080 issued to Richard D. Toohey, Jun. 7, 1988.
2 Patent No. US 6,361,784 B1 issued to Jonathan Paul Brennan et al., Mar.
26, 2002.

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breasts and a baby’s mouth areas during a woman’s nursing regimen. (Id.)
However, the Examiner found that Brennan disclosed a wipe made of a non-
woven fabric. (Id.) According to the Examiner, it would have been obvious
to a person of ordinary skill in the art at the time the invention was made to
modify Toohey’s invention by making its wipe of a non-woven fabric rather
than a woven fabric to give the wipes a more silky-soft feel. (Id. at 6.)
Additionally, the Examiner found that the claim phrase “whereby upon
opening the package and removing the wipe, the wipe is used to clean the
breast” is a recitation of intended use comprising functional language that is
not given patentable weight in the apparatus claims. (Id.)
Regarding independent claim 16, the Examiner further found that
Toohey did not explicitly recite using its wipe to clean a nursing mother’s
breast during a nursing regimen where after each breast feeding at least one
package of wipes is opened and removed to clean the at least one breast with
the pre-moistened wipe and discarding the wipe thereafter. (Id. at 8.)
However, the Examiner found that such use was well within the scope of the
inventions of both Toohey and Brennan, i.e., cleaning a surface that required
cleaning, and that it would have been obvious to a person of ordinary skill in
the art at the time the invention was made to have used the modified wipe of
Toohey and Brennan according to the claimed method when wiping is
required during a nursing regimen. (Id.)
Appellant contends that the Examiner has not established prima facie
obviousness because (1) those skilled in the art “never thought to combine
the teachings of Toohey and Brennan,” (2) Brennan’s non-woven,
disposable wipe “is in combination with other materials in the form of
additives,” (3) Toohey teaches away from the claimed invention in that it is
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directed to a “towel or towelette made of cotton which is woven and
laundrable and therefore ‘capable of subsequent reuse,’” and (4) there is no
suggestion in Brennan that it should be combined with Toohey because
Brennan’s wipes are disposable while Toohey’s towelettes are “relatively
expensive and preferably not disposable.” (App. Br. 4-5.) According to
Appellant, both references teach away from the claimed invention and the
Examiner’s combination of Toohey and Brennan required hindsight
reconstruction. (Id. at 6.)
Regarding the method claims, Appellant further asserts that no prima
facie case of obviousness has been established because “neither reference
mentions a method for cleaning a nursing mother’s breasts during a nursing
regimen,” including the specific step of keeping the non-woven wipes “in
proximity with a nursing mother.” (Id. at 7.)
The issue is whether the preponderance of the evidence supports the
Examiner’s conclusion that the combination of Toohey and Brennan, along
with the ordinary skill in the art, would have made the claimed arrangement
and method for cleaning breasts an a baby’s mouth areas during a woman’s
nursing regimen obvious.
Findings of Fact
1. We agree with the Examiner’s explicit findings regarding the scope
and content of the prior art references. (See Ans. 5-8.)
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
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ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417.
A prior art reference is said to teach away from an Applicant’s
invention “when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Analysis
After considering all the evidence and arguments, we conclude that
the record supports a conclusion of prima facie obviousness. We are not
persuaded of nonobviousness by Appellant’s assertion that those skilled in
the art “never thought to combine the teachings of Toohey and Brennan.”
(App. Br. 4.) Appellant’s assertion represents attorney argument and not
evidence. Moreover, motivation to combine references only requires an
articulated reasoning with rational underpinnings, see In re Kahn, 441 F.3d
977, 989 (Fed. Cir. 2006) and not a showing that the combination has, in
fact, previously occurred. Here, the motivation to combine the references
was supplied by the nature of the problem and the knowledge of those
skilled in the art at the time of the invention. See Princeton Biochemicals,
Inc. v. Beckman Coulter, Inc., 411 F.3d 1332, 1338-1339 (Fed. Cir. 2005)
(affirming obviousness where motivation was found in the knowledge of
those skilled in the art at the time, and where the nature of the problem also
supplied a motivation). Indeed, as Appellant acknowledged, “an advantage
of the combination of the teachings of [Toohey and Brennan] is presented to
[skilled artisans and breast-feeding women] several times a day.” (App. Br.
5.) Thus, the claimed invention amounted to the combination of familiar
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elements according to known methods that yielded no more than a
predictable result. See KSR Int’l Co., 550 U.S. at 416 (2007).
We are also not persuaded of nonobviousness by Appellant’s assertion
that “both references teach away from Appellant’s claimed concept of
disposable wipes made of non-woven fabric that are packaged with a liquid
consisting of purified water.” (Id. at 6-7.) While Toohey taught that its
woven towel was “capable of subsequent reuse,” as Appellant asserts (see id.
at 5) the reference also explicitly disclosed that its towel may be “discarded
after certain initial uses” or may otherwise “require disposal.” (Toohey col.
1, ll. 67-col. 2, ll. 8.) Therefore, Toohey cannot be said to have taught away
from using a disposable wipe. See Gurley, 27 F.3d at 553. Nor do the
references teach away from the claimed invention by disclosing that their
respective “wipes or towelettes can be packaged with water containing
additives,” as Appellant asserts. (App. Br. 7.) Toohey disclosed that its
towelettes may preferably be packaged in a liquid that is “pure water” and
“free of additives.” (Ans. 5; Toohey col. 2, ll. 40-42.) Further, as the
Examiner explained, in the combination, Brennan is relied upon only for its
teaching to use a non-woven material. (Ans. 10.)
Regarding the method claims, Appellants additionally assert that
“neither reference mentions a method for cleaning a nursing mother’s
breasts during a nursing regimen,” including the specific step of keeping the
non-woven wipes “in proximity with a nursing mother.” (Id. at 7.) The
Examiner acknowledged this fact and found that it was well within the scope
of the inventions of both Toohey and Brennan to use the prior art wipes in
the manner claimed. (Ans. 8.) According to the Examiner, a skilled artisan
would have found the recited method steps obvious when wiping is required
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during a nursing regimen, and that such steps fell within the scope of the use
disclosed by Toohey, i.e., using the towelettes to clean surfaces in need of
cleaning, keeping the towelettes near in proximity of such use, and
discarding the towelette after its use. (Id.) We agree with the Examiner’s
position and Appellant has not established otherwise with persuasive
evidence. (See App. Br. 7-8.)
Accordingly, we affirm the Examiner’s obviousness rejection.

CONCLUSION OF LAW
The preponderance of the evidence supports the Examiner’s
conclusion that the combination of Toohey and Brennan, along with the
ordinary skill in the art, would have made the claimed arrangement and
method for cleaning breasts and a baby’s mouth areas during a woman’s
nursing regimen obvious.

SUMMARY
We affirm the rejection of claims 1-18 under 35 U.S.C. § 103(a) as
unpatentable over Toohey and Brennan.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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