Ex Parte Snell

Patent Trial and Appeal Board

Apr 10, 2018

14611467 (P.T.A.B. Apr. 10, 2018)

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.
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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
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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
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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.
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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
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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.
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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
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