Ex Parte Steinberg

Patent Trial and Appeal Board

Sep 25, 2017

12721025 (P.T.A.B. Sep. 25, 2017)

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.
12/721,025 03/10/2010 C. Howard Steinberg 0086700-000001 1271
21839 7590 09/27/2017
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
CARREIRO, CAITLIN ANN
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
09/27/2017 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):
ADIPDOCl@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte C. HOWARD STEINBERG
Appeal 2016-006680
Application 12/721,025
Technology Center 3700
Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-006680
Application 12/721,025
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
5—7, 9—13, and 15. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
THE CLAIMED SUBJECT MATTER
The claims are directed to an anus crevice insert. Claims 1 and 11 are
independent. App. Br., claims app. 1—2. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A protective device for insertion into a user’s crevice
adjacent to an anus and covering adjacent portions of
a derriere and without any part entering the anus, the
device consisting of:
A flexible flat exterior layer and a smaller flat flexible
interior layer, both layers made from a water-impermeable
material, the interior layer overlying the exterior layer and
forming a center section of the protective device, the portion of
the exterior layer not covered forming a peripheral section, the
center section capable of being inserted into the crevice adjacent
to an anus,
wherein said flexible exterior layer comprises an adhesive
applied to substantially an entire surface of the exterior layer to
be able to adhere to the interior layer and to portions of the
derriere adjacent the crevice, the water-impermeable material
facing the body of the user when the protective device is applied,
wherein said center section comprises an opening through
both layers keeping the anus exposed to the atmosphere thereby
permitting excretion from the anus directly into the atmosphere,
and without covering the anus and surrounds the anus without
entering the anus, the interior layer entering the crevice not
containing any adhesive facing the body, wherein with the center
section inserted in the crevice and the peripheral section adhered
to the derriere only the anus is exposed, and
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Appeal 2016-006680
Application 12/721,025
a single layer of a removable adhesive jacket over the
adhesive.
Kline
Cisko
Mizutani
D’Acchioli
REFERENCES
Dec. 28, 1982
Oct. 30, 2003
Feb. 20, 2007
Sept. 29, 2001
US 4,365,631
US 2003/0204174 A1
US 7,179,247 B2
EP 1136048 A1
REJECTIONS
Claim 1 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Cisko, D’Acchioli, and Mizutani. Final Act. 3.
Claims 5—7, 9, and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Cisko, D’Acchioli, Mizutani, and Kline. Id. at 6.
Claims 11—13 and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Cisko, D’Acchioli, Mizutani, and Kline. Id. at 7.
ANALYSIS
Claim 1—Unpatentable over Cisko, D ’Acchioli, and Mizutani
Claim 1 recites a protective device for entering into a user’s crevice
adjacent to an anus, the device consisting of a water-impermeable exterior
layer and a smaller water-impermeable interior layer overlying and adhered
to the exterior layer to form a center section of the device, the center section
capable of being inserted into the crevice, the interior layer entering the
crevice not containing any adhesive facing the body. App. Br., Claims
App. 1. The center section comprises an opening through both layers to
keep the anus exposed to the atmosphere to permit excretion from the anus
directly into the atmosphere. Id.
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Appeal 2016-006680
Application 12/721,025
The Examiner generally relies on Cisko to teach the exterior layer of
the device, and on D’Acchioli to teach the smaller interior layer. Final Act.
3^4. The Examiner asserts that D’Acchioli discloses an incontinence care
system that includes a flange 12, made of inherently water-impermeable
plastic, the flange corresponding to the claimed interior layer. Id. at 4 (citing
D’Acchioli 43, 46). According to the Examiner,
the flange 12 includes adhesive 20 on the wearer facing portion
23 for attachment of the device to a patient and, furthermore,
includes 1—6 non-adhesive portions on the wearer facing side of
flange 12, at the center of the device, such as the lobes 14 in
figure 1 which are adhesive-free, to facilitate easy placement and
removal of the device without coming in contact with the
adhesive.
Id. at 4—5 (citing D’Acchioli 148, Fig. 1); see also Ans. 14.
Appellant responds, inter alia, that the body-facing side of
D’Acchioli’s flange 12 is not free of adhesive, but rather has applied to it
body-compatible adhesive 20 to secure the device to the wearer. App. Br. 5
(citing D’Acchioli 47-48). Appellant acknowledges that flange 12 may
also have adhesive-free lobes 14, but asserts that “at least the majority of the
body-facing side of the flange 12 has adhesive.” Id. at 5—6. Appellant also
disputes that flange 12, made from plastic, is inherently water-impermeable,
and cites to a U.S. patent that discloses a water-permeable plastic film. Id. at
6 (citing Kuratsuji et al., U.S. 5,939,183, issued August, 17, 1999). In the
Answer, the Examiner does not dispute that this patent teaches a water-
permeable plastic. Instead, the Examiner points to D’Acchioli’s teaching of
“the backsheet of the device,” which is “preferably impervious to liquids in
order to prevent wetting through this layer.” Ans. 14 (citing D’Acchioli
76-78).
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Appeal 2016-006680
Application 12/721,025
We are not persuaded that D’Acchioli teaches an interior layer that
enters the crevice and that does not contain any adhesive. As Appellant
notes, D’Acchioli teaches that its waste-collection bag comprises “a body-
compatible pressure sensitive adhesive (20) applied to the wearer facing
portion (23) of the flange (12)” to secure the device to the wearer.
D’Acchioli 147. While flange 12 may also have between one and six
adhesive-free lobes 14 around the periphery of the flange to facilitate
placement and removal of the device without requiring contact with the
adhesive, the presence of such lobes does not negate the fact that at least part
of flange 12 entering the crevice has adhesive applied to it. See D’Acchioli
148
We are also not persuaded that D’Acchioli teaches that flange 12 may
be water impermeable. Appellant has provided undisputed evidence that
water-permeable plastic exists, so we disagree with the Examiner that flange
12 is inherently water-impermeable because it is made from plastic. And the
“backsheet” that the Examiner discusses in the Answer is not part of flange
12, or even part of the waste-collection bag of which flange 12 is a part.
Instead, it is part of an absorbent pad that is used in conjunction with the
waste-collection bag. See D’Acchioli H 19, 53—54, 76—78.
Because we are not persuaded that D’Acchioli teaches a water-
impermeable interior layer entering the crevice that is adhesive-free, we do
not sustain this rejection.
Claims 5—7, 9, and 10—Unpatentable
over Cisko, D ’Achioli, Mizutani, and Kline
Claims 5—7, 9, and 10 ultimately depend from claim 1. App. Br.,
Claims App. 1. The Examiner’s rejection of these claims relies on the
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Appeal 2016-006680
Application 12/721,025
erroneous finding that D’Acchioli teaches an interior layer entering the
crevice that is adhesive free. Final Act. 6—7. Kline is not relied upon to cure
the deficiency. Accordingly, for the reasons discussed above, we do not
sustain this rejection.
Claims 11—13 and 15—Unpatentable
over Cisko, D ’Achioli, Mizutani, and Kline
Like claim 1, independent claim 11 requires that the interior layer
entering the crevice not have any adhesive. App. Br., Claims App. 2.
Claims 12, 13, and 15 depend from claim 11. Id. The Examiner’s rejection
of these claims relies on the erroneous finding that D’Acchioli teaches an
interior layer entering the crevice that is adhesive-free, and Kline is not
relied upon to cure the deficiency. Final Act. 8—9. Accordingly, for the
reasons discussed above, we do not sustain this rejection.
DECISION
For the above reasons, the Examiner’s rejection of claims 1, 5—7, 9—
13, and 15 is reversed.
REVERSED
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