Ex Parte Thomas

Board of Patent Appeals and Interferences

Oct 25, 2011

10705008 (B.P.A.I. Oct. 25, 2011)

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.
10/705,008 11/10/2003 Kathleen A. Thomas KTHOM 4005
39434 7590 10/26/2011
GREGORY T. ZALECKI
12900 HALL ROAD
SUITE 400
STERLING HEIGHTS, MI 48313
EXAMINER
STEPHENS, JACQUELINE F
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
10/26/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KATHLEEN A. THOMAS
____________________

Appeal 2010-002867
Application 10/705,008
Technology Center 3700
____________________

Before JOHN C. KERINS, EDWARD A. BROWN, and
MICHAEL L. HOELTER, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-002867
Application 10/705,008

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STATEMENT OF THE CASE
Kathleen A. Thomas (Appellant) appeals under 35 U.S.C. § 134(a)
from a rejection of claims 1-30. (App. Br. 5). We have jurisdiction over this
appeal under 35 U.S.C. § 6(b). We affirm.

THE INVENTION
The claimed invention is directed to a feminine protection product
disposal pouch. Independent claim 1, reproduced below, is representative of
the appealed claims:
1. A feminine protection product disposal
pouch comprising a flexible leakproof pouch sized
and shaped to compactly contain a used feminine
protection product, said disposal pouch further
comprising two opaque decorative walls forming
the pouch, the pouch having an opening for
inserting the used feminine protection product and
a flap having a sealing side and an exposed side for
covering and sealing the opening of the pouch,
said pouch and said flap being adapted to render
the pouch leakproof when the flap is securely
closed over the opening of the pouch.

THE REJECTIONS
The following Examiner's rejections are before us for review.
1. Claims 1-20 and 23-30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Rosengrant (US 6,402,727; issued Jun. 11, 2002) in view
of Hayes (US 4,349,104; issued Sep. 14, 1982).
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2. Claims 21 and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Rosengrant, Hayes and Fisher (US 5,569,230; issued Oct.
29, 1996).

ISSUES
The following issues are presented in this appeal:
1. Did the Examiner err in finding that Rosengrant discloses a
"leakproof" pouch, as recited in claims 1, 13, and 23?
2. Did the Examiner err in concluding that Rosengrant and Hayes
would have rendered obvious the limitation "said disposal pouch further
comprising two opaque decorative walls forming the pouch," as recited in
claims 1, 13, and 23?
3. Did the Examiner err in concluding that Rosengrant and Hayes
would have rendered obvious the limitations "the odor absorbing material is
sprayed onto the wall surfaces within the pouch" (claims 3, 14, and 24), "the
scented material is sprayed onto the wall surfaces within the pouch" (claims
10, 19, and 29), "the odor absorbing material is molded into the walls of the
pouch" (claims 8, 17, and 27), and "the scented material is molded into the
walls of the pouch" (claims 11, 20, and 30)?
4. Did the Examiner err in concluding that Rosengrant, Hayes and
Fisher would have rendered obvious the limitation "a leakproof zippered
closure for sealing the opening of the pouch," as recited in claim 21, and the
limitation "a leakproof groove and rib closure for sealing the opening of the
pouch," as recited in claim 22?

Appeal 2010-002867
Application 10/705,008

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FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellant's Specification describes that the disposal pouch
"may be constructed from many flexible and leakproof
materials. These include polyethylene, latex, cellophane and
rubber." (Spec. 5, ll. 12-14).
2. Rosengrant describes "[u]sed feminine protection products can
be completely concealed in a cover which will not leak menses
fluid, thus allowing the used feminine protection item to be
disposed of in a discreet and sanitary manner." (Col. 4, ll. 50-
53).
3. Rosengrant discloses that the disposal cover includes a plastic
sheet that "can be of any flexible material such as rubber,
polyethylene, or the like." (Col. 3, ll. 33-36).
4. Rosengrant discloses a disposal cover for used feminine
protection products that includes a scent to mask odors. (Col.
2, ll. 39-42).
5. Appellant's Specification describes that the pouch can include
groove and rib closures, and that "[t]he trade name for bags
being currently sold which contain a rib and a groove for
closure is ZIPLOCK." (Spec. 8, ll. 2-9).
6. Fisher discloses a pouch for sanitary napkins that includes
"zippered track sealing systems such as Dow Company's 'ZIP
LOCKS."' (Col. 20, ll. 43-50).
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ANALYSIS
Rejection of claims 1-20 and 23-30 as unpatentable over Rosengrant
and Hayes
Issue 1 – Claims 1, 13, and 23
Independent claim 1 recites the limitation "said pouch and said flap
being adapted to render the pouch leakproof when the flap is securely closed
over the opening of the pouch." The Examiner found that Rosengrant
discloses a disposable cover for disposing of sanitary articles that is
leakproof. (Ans. 4, 7).
Appellant contends Rosengrant's disposable cover is not "leakproof."
(App. Br. 11). Appellant contends that the disposable cover may provide
some degree of leak protection in the orientation shown in Figure 6, but fluid
would leak from the cover if it were turned upside down from that
orientation. (Id.). These contentions are not persuasive.
The Patent and Trademark Office determines the scope of claims "not
solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction 'in light of the specification as it would be
interpreted by one of ordinary skill in the art.'" Phillips v. AWH Corp., 415
F.3d 1303, 1316-17 (Fed. Cir. 2005) (en banc) (citation omitted). Claim 1
recites no structural limitations that require giving the term "leakproof" any
specific meaning that would distinguish the claimed pouch from
Rosengrant's cover. Appellant's Specification does not explicitly define
"leakproof." Appellant's Specification does, however, describe tightly
folding the flap over the opening and securing the flap to a pouch wall to
provide a leakproof seal. (Spec. 7, ll. 5-8). Based on this description, the
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broadest reasonable interpretation of "leakproof" would include structure
having a flap tightly folded over an opening and secured to a pouch wall to
form a seal. Similarly, Rosengrant folds over and secures flaps to portions
of the pouch to achieve a cover or pouch that "will not leak menses fluid."
(See FF 2). Rosengrant also discloses that the cover can be made of
polyethylene and rubber. (See FF 3). Similarly, Appellant's Specification
describes polyethylene and rubber as "leakproof materials" that the disposal
pouch may be constructed from. (See FF 1). As such, we agree with the
Examiner that Rosengrant discloses a leakproof pouch consistent with
Appellant’s use of the term "leakproof" in the Specification and claims.
As to independent claims 13 and 23, Appellant merely quotes
respective claim limitations that are similar to the "leakproof" limitation in
claim 1 discussed supra. Hence, we also find no reversible error in the
Examiner's position that Rosengrant discloses these limitations in claims 13
and 23.

Issue 2 – Claims 1, 13, and 23
Claims 1, 13 and 23 recite the limitation "said disposal pouch further
comprising two opaque decorative walls forming the pouch." Appellant
contends that neither Rosengrant nor Hayes discloses "two opaque
decorative walls forming a pouch." (App. Br. 15). Appellant contends that
Rosengrant discloses a non-pouchlike structure having five walls, and that
Hayes discloses a baglike structure having five walls. (Id.). Appellant also
contends that neither Rosengrant nor Hayes discloses a "flap" which seals a
pouch. (App. Br. 16). These contentions are not persuasive.
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Claims 1, 13 and 23 recite the pouch "comprising" two walls forming
the pouch. Appellant does not present a persuasive explanation as to why
the cover structure shown in Figure 6 of Rosengrant cannot be considered a
"pouch" as claimed. In addition, Appellant concedes that Rosengrant's cover
has at least two walls. The open-ended claim term "comprising" does not
exclude additional, unrecited elements. See Genentech, Inc. v. Chiron
Corp., 112 F.3d 495, 501 (Fed. Cir. 2005).
Appellant's contention that Rosengrant does not disclose a "flap which
seals a pouch" is not persuasive for reasons discussed supra. Hence, we
sustain the Examiner's obviousness rejection of claims 1, 13, and 23.

Issue 3 – Claims 3, 4, 6-8, 10, 11, 14-17, 19, 20, 24-27, 29, and 30
The Examiner found that Rosengrant discloses incorporating a scented
material for masking odors. (Ans. 4; see also FF 4). The Examiner also
found Hayes discloses a deodorant material (14) in a pouch (i.e., bag 19).
(Id.; see also Hayes, col. 2, ll. 1-4 and 38-39; Fig. 3). The Examiner
construed the claim limitations "the odor absorbing material is sprayed onto
the wall surfaces within the pouch" (claims 3, 14, and 24), "the scented
material is sprayed onto the wall surfaces within the pouch" (claims 10, 19,
and 29), "the odor absorbing material is molded into the walls of the pouch"
(claims 8, 17, and 27), and "the scented material is molded into the walls of
the pouch" (claims 11, 20, and 30), as "product-by-process" limitations.
(Ans. 5). The Examiner found that the product of the combination of
Rosengrant and Hayes and the claimed product both have a deodorant in the
pouch, and it is not germane to patentability as to how the deodorant is
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placed in the pouch. (Ans. 8). The Examiner concluded that it would have
been obvious to one having ordinary skill in the art to place the deodorant in
the pouch by any number of means known in the art, including molding into
the walls, because this would allow the manufacturer to eliminate the need
for a separate deodorant item in the finished product and may be more cost
effective. (Id.).
Appellant contends that the Examiner's analysis is improper because
no reference was cited that discloses odor absorbing material or scented
material having the "same appearance and/or structure" as the scented
material or odor absorbing material that has been molded into or sprayed
onto the walls of the pouch. (App. Br. 16-17, emphasis added). This
contention is not persuasive.
The patentability of a product does not depend on the method used to
produce it. In re Thorpe, 777 F2d 695, 697 (Fed. Cir. 1985) (citing In re
Pilkington, 411 F.2d 1345, 1348 (CCPA 1969)). If the product in a
product-by-process claim is the same as, or obvious from, a product of the
prior art, the claim is unpatentable even though the prior product was made
by a different process. (Id., citations omitted). To establish prima facie
unpatentability of a product-by-process claim, the Patent Office need only
find that the prior art product "reasonably appears to be either identical with
or slightly different from" the claimed product. See In re Brown, 459 F.2d
531, 535 (C.C.P.A. 1972). Appellant has not presented any persuasive
reasoning as to why the Rosengrant/Hayes product comprising deodorant
material within the pouch does not "reasonably [appear] to be either
identical or slightly different from" the claimed disposal pouch comprising
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odor absorbing material or scented material sprayed onto the wall surfaces
within the pouch, or molded into the walls of the pouch.
The Examiner also articulated an adequate reason as to why the
claimed subject would have been obvious. (Ans. 8). In contrast, Appellant
has not presented any persuasive argument or objective evidence to show
that spraying odor absorbing material or scented material onto the wall
surfaces within the Rosengrant/Hayes pouch, or molding these materials into
the walls in the pouch, would have been uniquely challenging to a person of
ordinary skill in the art, and appears to be no more than "substitution of one
known [processing technique] for another" with predictable results. See
KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). Hence, we sustain
the Examiner's obviousness rejection of dependent claims 3, 4, 6-8, 10, 11,
14-17, 19, 20, 24-27, 29, and 30.
Appellant does not separately argue any specific limitations of
dependent claims 2, 5, 9, 12, 18, and 28 and, hence, we also sustain the
rejection of these claims.

Rejection of claims 21 and 22 as unpatentable over Rosengrant, Hayes, and
Fisher
Independent claim 21 recites, inter alia, "a leakproof zippered closure
for sealing the opening of the pouch." The Examiner found that Rosengrant
and Hayes do not teach the claimed zippered closure. (Ans. 5). The
Examiner found that Fisher discloses a resealable pouch having a zippered
track sealing closure, and concluded that it would have been obvious to
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modify Rosengrant's cover with a zippered closure to reduce evaporation,
and reduce or eliminate odor from entering the pouch. (Ans. 6).
Appellant contends that "a leakproof zippered closure" is not met by
Rosengrant, Hayes, or Fisher. (App. Br. 13). We disagree. Fisher discloses
a pouch for containing sanitary napkins including a zippered track sealing
system, such as "ZIP LOCKS." (See FF 6). Similarly, Appellant's
specification describes that the pouch can include a "ZIPLOCK" closure.
(See FF 5). In addition, Rosengrant discloses that "the disposal cover can be
sealed in a number of ways." (Col. 6, ll. 5-8). In light of these teachings,
the Examiner's articulated reason for modifying Rosengrant to include a
zippered track sealing system as taught by Fisher is rational and sufficient to
support the conclusion of obviousness.
Independent claim 22 similarly recites, inter alia, "a leakproof groove
and rib closure for sealing the opening of the pouch." As to claim 22, the
Examiner's findings and rationale supporting the conclusion of obviousness,
and Appellant's arguments for patentability, are substantially similar to those
with respect to claim 21. (Ans. 5-6; App. Br. 14-15).
Appellant's contention that Rosengrant does not disclose two walls
forming a pouch (App. Br. 15) is addressed supra. Hence, we also sustain
the obviousness rejection of claims 21 and 22.

CONCLUSIONS
1. The Examiner did not err in finding that Rosengrant discloses a
"leakproof" pouch, as recited in claims 1, 13, and 23.
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2. The Examiner did not err in concluding that Rosengrant and
Hayes would have rendered obvious the limitation "said disposal pouch
further comprising two opaque decorative walls forming the pouch," as
recited in claims 1, 13, and 23.
3. The Examiner did not err in concluding that Rosengrant and
Hayes would have rendered obvious the limitations "the odor absorbing
material is sprayed onto the wall surfaces within the pouch" (claims 3, 14,
and 24), "the scented material is sprayed onto the wall surfaces within the
pouch" (claims 10, 19, and 29), "the odor absorbing material is molded into
the walls of the pouch" (claims 8, 17, and 27), and "the scented material is
molded into the walls of the pouch" (claims 11, 20, and 30).
4. The Examiner did not err in concluding that Rosengrant, Hayes
and Fisher would have rendered obvious the limitation "a leakproof zippered
closure for sealing the opening of the pouch," as recited in claim 21, and the
limitation "a leakproof groove and rib closure for sealing the opening of the
pouch," as recited in claim 22.

DECISION
Each of the Examiner's rejections 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).

AFFIRMED

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