Ex Parte SnellDownload PDFPatent Trial and Appeal BoardApr 10, 201814611467 (P.T.A.B. Apr. 10, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/611,467 02/02/2015 Alan Kay Snell 64935 7590 04/11/2018 TILLMAN WRIGHT, PLLC P.O. BOX 49309 CHARLOTTE, NC 28277-0076 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 1032.725 6444 EXAMINER BUI,LUANKIM ART UNIT PAPER NUMBER 3728 MAILDATE DELIVERY MODE 04/11/2018 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 PATENT TRIAL AND APPEAL BOARD Ex parte ALAN KAY SNELL Appeal2017-004801 Application 14/611,467 Technology Center 3700 Before BRETT C. MARTIN, LYNNE H. BROWNE, and BRENT M. DOUGAL, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant 1 appeals under 35 U.S.C. § 134 from the rejection of claims 2 and 5-7. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellant, the real party in interest is Diaperoos, LLC. See Appeal Br. 3. Appeal2017-004801 Application 14/611,467 CLAIMED SUBJECT MATTER Claims 2, 5, and 6 are independent. Claim 2, reproduced below, is illustrative of the claimed subject matter: 2. A diaper kit for a changing of a single disposable diaper, compnsmg: (a) a packaged single-use disposable diaper comprising, (i) a sealed substantially air impermeable encasement completely enclosing an interior space and having at least one airtight seal, and (ii) a single compressed single-use disposable diaper vacuum-sealed within said interior space of the sealed substantially air impermeable encasement, (iii) wherein said interior space has at least a partial vacuum, (iv) wherein an equilibrium exists between (A) a combination of (I) a pressure differential acting upon the encasement and the diaper, and (II) a hoop strength of the encasement, and (B) a restoring force tending to expand the compressed single-use disposable diaper, which operates to maintain the diaper in the compressed state; (v) wherein predominantly the hoop strength operates to balance the restoring force and maintain the diaper in the compressed state. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Habib Snell Nelson Narawa US 6,723,080 Bl US 7 ,520,3 87 B2 US 2004/0172002 Al JP 10-95481 2 Apr. 20, 2004 Apr. 21, 2009 Sept. 2, 2004 Sept. 19, 1996 Appeal2017-004801 Application 14/611,467 REJECTIONS I. Claims 2 and 5-7 stand rejected under 35 U.S.C. § 102(e) as anticipated by Nelson or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Nelson. II. Claims 2 and 5-7 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Habib and Narawa or Nelson. 2 III. Claims 2 and 5-7 stand rejected on the ground of nonstatutory double patenting as unpatentable over claim 20 of Snell. DISCUSSION Rejection I: Anticipation by or Obviousness of Claims 2 and 5-7 Based on Nelson The Examiner finds that Nelson discloses each and every limitation of claim 2. Final Act. 2-3. Alternatively, the Examiner determines that "[t]o the extent that ... [Nelson] fails to show an equilibrium exists between a combination of a pressure differential acting upon the encasement and the diaper and a hoop strength of the encasement and a restoring force tending to expand the compressed single-use disposable diaper," it would have been obvious to modify Nelson to have these features "since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice." Id. at 3 (citation omitted). Appellant contends that "nowhere does the Office Action offer support for the allegation that Nelson discloses a packaged compressed 2 We note that this rejection is actually two alternative rejections. We address each of these rejections separately infra. 3 Appeal2017-004801 Application 14/611,467 diaper ... where 'predominantly the hoop strength operates to balance the restoring force and maintain the diaper in the compressed state'." Appeal Br. 9. In support of this contention, Appellant notes that "the Office Action merely alleges that 'Nelson[] discloses the encasement maintains the diaper in the compressed state (Figures 11, 13, & 15)', and further alleges that this 'is considered equivalent to' the recited claim language." Id. Appellant is correct. The Examiner does not identify where Nelson describes the hoop strength of the encasement, let alone where Nelson indicates that such hoop strength operates "to balance the restoring force and maintain the diaper in the compressed state" as required by claim 2. Moreover, the Examiner does not establish that such hoop strength is inherent in Nelson's device. In paragraph 45, Nelson describes the packaging process. Nelson states: A vacuum is applied to the articles and the cavities 162, and film is then positioned and sealed over each cavity via sealing devices, such as thermal sealing, ultrasonic bonding, or any other sealing methods known by those skilled in the art. The vacuum depressurizes the chamber in the packaging station to a pressure which is less than the atmospheric pressure outside of the chamber. After the package is sealed, the vacuum is removed from the chamber, and the chamber and the article sealed in the package are permitted to return to regular atmospheric pressure, which results in compression of the article in the package, providing a soft package (form-fill-seal) which is formed about the article. Nelson i-f 45. Thus, in Nelson, it is the return of the package to atmospheric pressure, not the hoop strength of the packaging that maintains the diaper in the compressed state. Accordingly, Nelson does not anticipate claim 2. Noting, that the rejection is based on the premise that it is within the general skill of a worker in the art to select a known material on the basis of 4 Appeal2017-004801 Application 14/611,467 its suitability for the intended use as a matter of obvious design choice, Appellant further contends that "the Office Action fails to even so much as allege that it would have been obvious to make a modification such that 'predominantly [a] hoop strength operates to balance the restoring force and maintain the diaper in the compressed state." Appeal Br. 12. Again, Appellant is correct. Applying the Examiner's reasoning to Nelson's packaging would result in a material selected for the intended use of containing a diaper that is compressed by atmospheric pressure. It would not result in the selection of a material based on its hoop strength such the selected hoop strength would maintain the diaper in a compressed state as required by claim 2. Thus, the Examiner's reasoning is flawed. For these reasons, we do not sustain the Examiner's decision rejecting claim 2 as anticipated by, or in the alternative as obvious over Nelson. Claims 5 and 6 contain similar limitations which are not anticipated or rendered obvious by Nelson. Accordingly, we do not sustain the Examiner's decision rejecting claims 5 and 6. Likewise, we do not sustain the Examiner's decision rejecting claim 7, which depends from claim 6. Rejection II: Obviousness of Claims 2 and 5-7 Based on Habib in view of Narawa or Nelson Habib and Narawa The Examiner finds that Habib discloses all of the limitations of claim 2 except for "the single compressed single-use disposable diaper being vacuum sealed within the interior space of the encasement." Final Act. 5. The Examiner finds that Narawa "shows a package (1) comprising an air impermeable encasement (3, 30) and an unused diaper (2) in a compressed state being vacuum-sealed within an interior space of the encasement 5 Appeal2017-004801 Application 14/611,467 (paragraphs 0033 and 0041) to provide a compact package and convenient to carry and use." Id. Based on this finding, the Examiner determines that it would have been obvious "to modify the diaper kit of ... [Habib] so the single compressed single-use disposable diaper ... [is] vacuum sealed within the interior space of the encasement to provide a compact package ... [that is] convenient to carry and use and ... [to] further protect[] the diaper .... " Id. The Examiner explains that Habib, as modified, comprises an encasement that maintains the diaper in the compressed state as taught by Narawa which is considered equivalent to an equilibrium exists between a combination of a pressure differential acting upon the encasement and the diaper and a hoop strength of the encasement and a restoring force tending to expand the compressed single-use disposable diaper and predominantly the hoop strength or the pressure differential operates to balance the restoring force and maintain the diaper in the compressed state. Id. at 6. The Examiner further explains that to the extent that Habib as modified fails to show such equilibrium, it would have been obvious to further modify Habib to maintain such equilibrium. See id. Noting that claim 2 requires "that 'predominantly [a] hoop strength operates to balance the restoring force and maintain the diaper in the compressed state,"' Appellant contends that "the Examiner has failed to provide a basis in fact and/or technical reasoning to reasonably support the determination that the recited claim language necessarily flows from the teachings ofNarawa." Appeal Br. 12, 13. The Specification equates "hoop strength" with "resistance to expansion of the encasement via deformation of the encasement." Spec. 6 Appeal2017-004801 Application 14/611,467 i-f 186. Accordingly, the claim language at issue requires an encasement wherein the encasement's ability to resist deformation (which we understand to be a property of the material from which the encasement is made) operates to balance the restoring force to maintain the diaper in the compressed state. In other words, the claim requires an encasement made from material strong enough to prevent the diaper from bursting out of the encasement. We agree with the Examiner that Narawa describes such an encasement. Narawa states: at the time of manufacturing of the individual packaging structure 1 of the present invention, instead of applying aforementioned pressure in order to release the air from the individual packaging bag, sealing may be done after suctioning the air from the individual packaging bag by using a suction pump, etc. That is, instead of using the compression and sealing processes of aforementioned preferable manufacturing method, it is possible to manufacture the individual packaging structure of the present invention by removing air and sealing processes wherein sealing is done at predetermined places after the air is suctioned from the individual packaging. Narawa i-f 33. Thus, Narawa discloses an encasement that is vacuum-sealed with an interior space that has at least a partial vacuum as required by claim 2. Narawa describes the use of this encasement in three experiments wherein the encasement was formed of polyethylene film and each diaper was compressed to a different thickness. Id. at i-fi-135-37. As shown in Narawa's graph 11, "[t]here was no change of thickness after seven days passed regarding the wrapping structure of performed experiments 1 through 3." Id. at i-f 39. As there were no other constraints on the restoring force of the diaper during that seven day period, the hoop strength of the polyethylene film must necessarily have been predominantly responsible for 7 Appeal2017-004801 Application 14/611,467 balancing the diaper restoring force to maintain the diaper in the compressed state. 3 Accordingly, we sustain the Examiner's decision rejecting claim 2 as unpatentable over Habib and Narawa. In contesting the rejection of claims 5 and 6 based on Habib and Narawa, Appellant substantially repeats the same arguments discussed supra. Further, Appellant does not present separate arguments for the patentability of claim 7, which depends from claim 6. Thus, we also sustain the Examiner's decision rejecting claims 5-7 as unpatentable over Habib and Narawa. Habib and Nelson This rejection suffers from deficiencies similar to those discussed supra, in the anticipation rejection based on Nelson. For these reasons, we do not sustain the Examiner's decision rejecting claim 2. As noted supra, claims 5 and 6 contain limitations similar to claim 2. Accordingly, we do not sustain the Examiner's decision rejecting claims 5 and 6 for the same reasons. We likewise do not sustain the Examiner's decision rejecting claim 7, which depends from claim 6. Rejection III: Nonstatutory Double Patenting Based on Claim 20 of Snell The Examiner rejects claims 2 and 5-7 based on nonstatutory double patenting. Final Act. 8. Appellant does not contest this rejection. See generally Appeal Br. Accordingly, we summarily sustain the Examiner's decision rejecting claims 2 and 5-7 based on nonstatutory double patenting. 3 We note that to the extent that the vacuum inside the encasement is also responsible for maintaining the diaper in the compressed state, the same would be true for the instant invention. 8 Appeal2017-004801 Application 14/611,467 DECISION The Examiner's rejection of claims 2 and 5-7 under 35 U.S.C. §§ 102(e) or 103(a) based on Nelson is REVERSED. The Examiner's rejection of claims 2 and 5-7 under 35 U.S.C. § 103(a) based on Habib in view ofNarawa is AFFIRMED. The Examiner's rejection of claims 2 and 5-7 under 35 U.S.C. § 103(a) based on Habib in view of Nelson is REVERSED. The Examiners rejection of claims 2 and 5-7 based on nonstatutory double patenting is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 9 Copy with citationCopy as parenthetical citation