2020003906 (P.T.A.B. Jan. 1, 2021)

Patricia Morgan

Patent Trials and Appeals BoardJan 1, 2021

2020003906 (P.T.A.B. Jan. 1, 2021)

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. 15/890,316 02/06/2018 Patricia Elizabeth Morgan 1263-001 7132 78519 7590 01/01/2021 DALE JENSEN PLC 606 BULL RUN STAUNTON, VA 24401 EXAMINER WAGGENSPACK, ADAM J ART UNIT PAPER NUMBER 3734 NOTIFICATION DATE DELIVERY MODE 01/01/2021 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): DALERJENSEN@GMAIL.COM djensen@dalejensenlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte PATRICIA ELIZABETH MORGAN ____________ Appeal 2020-003906 Application 15/890,316 Technology Center 3700 ____________ Before MURRIEL E. CRAWFORD, CYNTHIA L. MURPHY, and BRADLEY B. BAYAT, Administrative Patent Judges. BAYAT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Patricia Elizabeth Morgan (Appellant)1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–14, which constitute all pending claims in the application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Patricia Elizabeth Morgan.” Appeal Br. 2. Appeal 2020-003906 Application 15/890,316 2 Invention The title of Appellant’s invention is “THE POCKET POUCH” and “relates to an item of convenience for a variety of individuals and service providers . . . who use sanitary napkins and/or disposable bladder leak underwear.” Spec. ¶ 2. Claimed Subject Matter Claims 1 and 10 are the only independent claims on appeal and reproduced below: 1. A system comprising: a pocket pouch releasably coupled to a diaper, the pocket pouch comprising: one or more absorbency layers; a moisture-free liner; and one or more resealable strips; wherein the pocket pouch is attached to an interior surface of the diaper. 10. A system comprising: a pocket pouch releasably coupleable to a sanitation item, the pocket pouch compising: one or more absorbency layers; a moisture-free liner; and one or more resealable strips; wherein the pocket pouch is attached to an interior surface of the sanitation item. Appeal Br., Claims App. 1, 2. Appeal 2020-003906 Application 15/890,316 3 Rejections2 Claims 1–14 stand rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. Claim 4 stands rejected under 35 U.S.C. § 112(b) as indefinite. Claims 1–14 stand rejected under 35 U.S.C. § 103 as being unpatentable over Hernandez et al. (US 2008/0027403 A1, pub., Jan. 31, 2008) (“Hernandez”) and Cohen et al. (US 8,529,537 B2, iss. Sep. 10, 2013) (“Cohen”), or, Cohen and Richardson (US 6,623,466 B1, iss. Sept. 23, 2003). OPINION 35 U.S.C. § 112(a) In rejecting claims 1–14 as failing to comply with the written description requirement, the Examiner finds: [T]he specification states that the pocket pouch (100) includes absorbency layers, moisture free liners, and a stretch waistband (among other things), that it is releasable coupled to the diaper but also that it is “integrated in the diaper ... with a moisture free lining that stows the sanitary articles and resealable strips” and also discloses that it is attached to the disposable diaper/training pant which seems to include these things (i.e. diapers ordinarily include absorbent layers). It is unclear from the description how the pocket pouch is attached to/integrated into the diaper/training pant/etc, and what parts disclosed (such as absorbency layer) are part of each (or if both include an absorbency layer, etc.). Final Act. 4. 2 Regarding the Examiner’s objections to the drawings and Specifications, “the Board will not hear or decide issues pertaining to objections and formal matters which are not properly before the Board. These formal matters should not be combined in appeals to the Board.” MPEP § 706.01. Appeal 2020-003906 Application 15/890,316 4 Alleging error in the rejection, Appellant argues: “This allegation did not point to any specific claim language that is alleged to not be properly supported by the written description. Moreover, the specific language from the specification that has been cited is for particular embodiments, and is not required for all embodiments.” Appeal Br. 7. According to Appellant, the Examiner has “failed to present a prima facie case of a failure to comply with the written description requirement.” Id. We agree. We reverse the rejection under 35 U.S.C. § 112(a) as failing to comply with the written description requirement because the Examiner has not established a prima facie case under the written description requirement; “[t]he fundamental factual inquiry is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed.” MPEP § 2163 (quoting Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991)). As Appellant points out, the Examiner does not dispute that the Specification as filed discloses the claimed subject matter. Instead, the Examiner questions whether “the drawings and [S]pecification taken together must still provide sufficient disclosure to reasonably convey to those skilled in the art how to make the invention.” Ans. 4. It appears the Examiner may have conflated the written description requirement with the enablement requirement, which is a separate inquiry and assessment as to whether the Specification teaches those in the art to make and use the invention without undue experimentation. See In re Vaeck, 947 F.2d 488, 495 (Fed. Cir. 1991). Appeal 2020-003906 Application 15/890,316 5 35 U.S.C. § 112(b) Dependent claim 4 recites, in part, that “the resealable strips comprise Velcro.” Appeal Br., Claims App. 1. The Examiner rejects claim 4 as indefinite for “[t]he use of the term Velcro, which is a trade name or a mark used in commerce.” Final Act. 4. Appellant argues that “one having ordinary skill in the art would immediately understand what is meant by the term ‘Velcro’ (see, e.g., US Patent 5,713,548 at its Summary section), the written description rejection based upon that term is baseless and should be withdrawn.” Appeal Br. 8. We are not persuaded because the rejection of claim 4 is based on indefiniteness not written description. It is well established that if a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of the 35 U.S.C. §112(b). Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. In fact, the value of a trademark would be lost to the extent that it became descriptive of a product, rather than used as an identification of a source or origin of a product. Thus, the use of a trademark or trade name in a claim to identify or describe a material or product would not only render a claim indefinite, but would also constitute an improper use of the trademark or trade name. Accordingly, we sustain the rejection of claim 4 as indefinite. Appeal 2020-003906 Application 15/890,316 6 35 U.S.C. § 103 In rejecting independent claim 1 under 35 U.S.C. § 103, the Examiner finds Hernandez discloses all the elements of the claimed pocket pouch “but does not disclose that the pocket pouch comprises one or more absorbency layers or one or more resealable strips.” Final Act. 6. The Examiner turns to Cohen, which is directed to an absorbent article with enclosures, to cure those deficiencies. Id. For the absorbancy layer, the Examiner relies on Cohen’s absorbent core 34 located between the bodyside liner 30 and the outer cover 32, and concludes that it would have been obvious to a PHOSITA “given the disclosure of Cohen, to add an absorption layer (34) to the removable pouch of the combination, in order to allow the pouch to also provide an additional absorption function.” Id. In the Answer, the Examiner clarifies the rejection and states that “the absorbent material would be added outside of the barrier material” of Hernandez’s pouch. Ans. 6. Appellant contends that “Hernandez discloses no material or structure for ‘pouch 25’ other than those for preserving wetness for wipes.” Reply Br. 5 (citing Hernandez ¶¶ 61–62). And, given the stated purpose and function of Hernandez, Appellant argues that there would be no value for an “additional absorption function,” as the Examiner proposes. Id. According to Appellant: If the absorbency layer were added to Hernandez “outside of the barrier material” as proffered in the Answer, that layer would be functionally useless. Such a modification would place the layer in contact with an “absorbent article”, which is described specifically as “sanitary napkin 21” - already highly absorbent. The Answer is devoid of an explanation about any value to having an additional absorbent adjacent to the already “absorbent article”. Appeal 2020-003906 Application 15/890,316 7 Id. We agree with Appellant. A claim is unpatentable under § 103 if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). An invention “composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” Id. at 418. Instead, a determination of unpatentability on a ground of obviousness must include “‘articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The obviousness evaluation “should be made explicit” and it “can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Id. The Examiner’s motivation and rationale for the combination appears circular in reasoning and conclusory because the Examiner proposes “to add an absorbency layer . . . to also provide an additional absorption function.” The problem is that the Examiner hasn’t adequately established why an artisan would be inclined to do such a modification; and Appellant’s argument that there would be no value in doing so is not without merit. The Examiner’s reasoning “to also provide an additional absorption function” does not explain why a person of ordinary skill, without the benefit of hindsight, would be motivated to modify Hernandez’s absorbant article in the first place because the Examiner has not adequately shown why such a Appeal 2020-003906 Application 15/890,316 8 modification may be useful. In response to Appellant’s argument, the Examiner “maintains that the [prior] art presented is within the pertinent art” and that “the modifications made are within the level of orindary skill in the art” (Ans. 5–6), but that doesn’t explain why a person of ordinary skill would have been motivated to modify Hernandez’s absorbant article combination “to add an absorbency layer . . . to also provide an additional absorption function” (Final Act. 6) as the rejection proposes. Thus, on the record before us, the Examiner’s reason for the proposed modification lacks a rational underpinning. It is well settled that obviousness cannot be sustained by mere conclusory statements. Kahn, 441 F.3d at 988; accord KSR, 550 U.S. at 418. The Examiner’s alternative rationale and reliance on Cohen and Richardson also does not explain adequately why an artisan would be motivated to modify Hernandez’s absorbant article. Accordingly, we do not sustain the rejection of independent claim 1 under 35 U.S.C. § 103, and independent claim 10, which is similarly rejected. For the same reasons, we also do not sustain the rejection of dependent claims 2–9 and 11–14. CONCLUSION The Examiner’s rejection under 35 U.S.C. § 112(a) is reversed. The Examiner’s rejection under 35 U.S.C. § 112(b) is affirmed. The Examiner’s rejection under 35 U.S.C. § 103 is reversed. Appeal 2020-003906 Application 15/890,316 9 DECISION SUMMARY Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1–14 112(a) Written Description 1–14 4 112(b) 4 1–14 103 Hernandez, Cohen, Richardson 1–14 OVERALL OUTCOME 4 1–14 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED IN PART