SELENA MACK

Patent Trials and Appeals Board

Feb 24, 2022

2021002139 (P.T.A.B. Feb. 24, 2022)

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. 14/079,363 11/13/2013 SELENA MACK KMNL101 1759 21658 7590 02/24/2022 SHAVER & SWANSON, LLP P.O. BOX 877 BOISE, ID 83701-0877 EXAMINER HOEY, ALISSA L ART UNIT PAPER NUMBER 3732 NOTIFICATION DATE DELIVERY MODE 02/24/2022 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): bob@shaverswanson.com kinsey@shaverswanson.com swanson@shaverswanson.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SELENA MACK Appeal 2021-002139 Application 14/079,363 Technology Center 3700 Before JILL D. HILL, CARL M. DeFRANCO, and LEE L. STEPINA, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-14 and 16. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as the inventor, Selena Mack. Appeal Br. 1. Appeal 2021-002139 Application 14/079,363 2 CLAIMED SUBJECT MATTER Appellant’s invention relates to a diaper cover. Claims 1 and 14 are independent. Claim 1, reproduced below with certain limitations italicized, is illustrative of the claimed subject matter: 1. A diaper cover comprising: a garment body having a front side configured to cover a user's front and waist region and a back side configured to cover a user's back and waist region, said garment body further comprising a waist band adjacent a top edge of said garment body, wherein said waist band is configured to define a circumference configured to encircle a user's waist; said garment body further comprising a crotch region and adjacent to said crotch region a pair of pant legs having pant leg openings configured to be closely fitting to a wearer's leg; said garment body further comprising a belt with a first belt end and a second belt end, with said first belt end and said second belt end configured for closing and securing said belt on said back side of said garment body, with said first belt end and said second belt end configured to join in the center of said back side; and said garment body further comprising a flap on said back side of said garment, said flap being closeable and securable over said belt to prevent access to said belt by a wearer, wherein said flap comprises a length extending parallel to said waistband, wherein said length is configured to extend the width of the entire back side of the user. Appeal 2021-002139 Application 14/079,363 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Friedbaum 849,060 Apr. 2, 1907 Sacks 1,735,657 Nov. 12, 1929 Snyder 1,821,818 Sept. 1, 1931 Karberg 1,825,271 Sept. 29, 1931 Kleinman 5,050,244 Sept. 24, 1991 Simon 5,762,619 June 9, 1998 Trochlil-Crist 2009/0139014 A1 June 4, 2009 REJECTIONS I. Claims 1-13 and 16 are rejected under 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. II. Claims 1-14 and 16 are rejected under 35 U.S.C. 112, second paragraph, as indefinite.2 III. Claim 9 is rejected under 35 U.S.C. 112, second paragraph, as indefinite. IV. Claims 1-13 and 16 are rejected under 35 U.S.C. 112, second paragraph, as indefinite. V. Claim 14 is rejected under 35 U.S.C. 112, second paragraph, as indefinite. VI. Claim 16 is rejected under 35 U.S.C. 112, second paragraph, as indefinite. 2 Although Rejections II-VI are all based on 35 U.S.C. 112, second paragraph, our listing of the rejections for indefiniteness mirrors the listing of these rejections in the Final Office Action, which separately identifies the rejected claims based on the language the Examiner determines is unclear. See Final Act. 5-8. Appeal 2021-002139 Application 14/079,363 4 VII. Claims 1-6, 13, and 16 are rejected under 35 U.S.C. 102(b) as anticipated by Friedbaum or, in the alternative, under 35 U.S.C. 103(a) as obvious over Friedbaum and Kleinman. VIII. Claim 8 is rejected under 35 U.S.C. 103(a) as unpatentable over Friedbaum, Kleinman, and Snyder. IX. Claim 12 is rejected under 35 U.S.C. 103(a) as unpatentable over Friedbaum, Kleinman, and Simon. X. Claim 10 is rejected under 35 U.S.C. 103(a) as unpatentable over Friedbaum, Kleinman, and Trochlil-Crist. XI. Claims 7 and 11 are rejected under 35 U.S.C. 103(a) as unpatentable over Friedbaum, Kleinman, and Karberg. XII. Claim 8 is rejected under 35 U.S.C. 103(a) as unpatentable over Friedbaum, Kleinman, and Sacks. XIII. Claim 14 is rejected under 35 U.S.C. 103(a) as unpatentable over Karberg and Friedbaum. The Examiner additionally objects to certain portions of the Specification as failing to provide proper antecedent basis for the claimed subject matter. Final Act. 3. The reasons for the objection to the Specification appear to be coextensive with the reasons for the rejection of the claims under 35 U.S.C. § 112, first paragraph, as failing to meet the written description requirement, and under 35 U.S.C. § 112, second paragraph, as being indefinite, which are further discussed below. See Final Act. 4-8. Appeal 2021-002139 Application 14/079,363 5 OPINION Rejection I; Written Description Claim 1 recites, in part, “wherein said flap comprises a length extending parallel to said waistband, wherein said length is configured to extend the width of the entire back side of the user.” Appeal Br. 3 (Claims App.).3 The Examiner finds that this limitation fails to comply with the written description requirement because “[t]here was no support in the originally filed disclosure for” this limitation. Final Act. 4. According to the Examiner, the drawings do not support this limitation “since the drawings do not detail the garment with respect to the user.” Id. at 5; see also Ans. 3. Appellant argues that the drawings are sufficient to provide written description support because “Figures 1-3 and 5-7 [show] that the flap extends the entire backside of the pants and the backside of the pants are configured to cover the backside of the user.” Appeal Br. 8; see also Reply Br. 2. Thus, according to Appellant, an ordinary artisan “would readily appreciate that the flap length extending the width of the backside of a user was contemplated.” Id. The “written description requirement is satisfied by the patentee’s disclosure of ‘such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention.”’ Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 969 (Fed. Cir. 2002) (quoting Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)). 3 All references to the Claims Appendix refer of the Corrected Appellate Brief filed Nov. 9, 2020. Appeal 2021-002139 Application 14/079,363 6 “The disclosure must allow one skilled in the art to visualize or recognize the identity of the subject matter purportedly described.” Id. at 968 (citation omitted). Although we appreciate that the figures do not depict a user, we agree with Appellant’s assertion that a person of ordinary skill would have been able to recognize the front side and the back side of the garment with respect to the user. See Appeal Br. 8. In particular, claim 1 requires that the garment body back side is “configured to cover a user’s back.” Appeal Br. 3 (Claims App.). Given that Figures 1-3 and 5-7 each depict a rear view of a diaper cover (see paragraphs 10-13 and 14-16), and given that these figures depict flap 20 extending the entire width of the back side of the diaper cover, one of ordinary skill would have been able to visualize that, for a user wearing the diaper cover that is configured to cover the user’s back, the diaper cover would extend the width of the entire back side of the user. Thus, the figures allow one skilled in the art to visualize or recognize that the diaper cover which has a back side configured to cover a user’s back, and a flap extending the entire width of the back side of the diaper cover, has a flap length that would extend the width of the entire back side of the user. We do not sustain the Examiner’s rejection of claim 1 and claims 2- 13 and 16 depending therefrom, as failing to comply with the written description requirement. Rejection II; Indefiniteness - “closely fitting” Claim 1 recites, in part, “pant leg openings configured to be closely fitting to a wearer’s leg.” Appeal Br. 3 (Claims App.). Claim 14 includes the same limitation. Id. at 5 (Claims App.). Appeal 2021-002139 Application 14/079,363 7 The Examiner finds that this limitation is indefinite because it is unclear “[w]hat pant structure is required for the leg openings to be ‘closely fitting’ to a wearer’s leg.” Final Act. 5. Appellant asserts that paragraph 18 of the Specification describes what is required for the pant leg openings to be considered “closely fitting.” Appeal Br. 10. We agree. Paragraph 18 of the Specification discloses: “Access through leg openings 34 is prevented by using tight fitting clothing options below the leg openings of the underlying diaper.” Spec. ¶ 18. Paragraph 18 further discloses: “The leg closures operate by fitting tight enough around the wearer’s legs to prevent a hand from passing between the closure and the user’s leg.” Id. Based on this disclosure, one of ordinary skill in the art would understand that for leg openings to be considered tight fitting, they need to prevent access to the underlying diaper through the leg opening. One of ordinary skill in the art would understand that this is achieved by making the opening tight enough “to prevent a hand from passing between the closure and the user’s leg.” Id. Although the Examiner notes that the Specification uses the term “tight fitting,” whereas the claims recite “closely fitting” (see Ans. 5), Appellant appears to use these terms interchangeably (cf. original claim 1 and paragraph 18), and the Examiner does not explain sufficiently how or why these terms connote different structures. Thus, we are not apprised of a difference between these two terms. Because an ordinary artisan would be able to determine whether a hand is prevented from passing between the closure and the user’s leg, the metes and bounds of the claim are not unclear. We reverse Rejection II. Appeal 2021-002139 Application 14/079,363 8 Rejection III; Indefiniteness -“ribbing” Claim 9 recites, in part, “wherein said pant leg openings further comprise ribbing material.” Appeal Br. 4 (Claims App.). The Examiner finds that it is unclear what is considered “ribbing material.” Final Act. 6. Appellant argues, and we agree, that “Ribbing Material is well known in the art.” Appeal Br. 11. The Specification discloses that Figure 1 shows “ribbing leg closures 28 to prevent the wearer from reaching inside diaper cover 10. Other possible devices include belts, Velcro, straps, drawstrings, cord locks, snap closures, elastic, hook and eye, or other similar devices.” Spec. ¶ 18. Thus, the Specification uses “ribbing” as one of many known options to provide a closure that prevents the wearer from reaching inside the diaper cover through the leg opening. We agree with Appellant that “ribbing” or “ribbing material,” consistent with this disclosure, is known in the art. In support of this assertion, Appellant relies on Dugan (US 7,975,634 B1) as disclosing ribbing material. In particular, Dugan discloses, “A body 605 is a stretch material (e.g., stretch ribbing material).” Dugan, 6:23-24; see also Appeal Br. 11. According to Dugan, the ribbing material “provides holding support so the leggings stay on the baby's leg, even while the baby is aggressively crawling around.” Id. at 6:40-41. This provides evidence that, one of ordinary skill in the art would understand that ribbing material is a subset of stretching material that keeps a garment in place. Here, Appellant uses “ribbing” consistent with its ordinary use in the art as a tight-fitting material that keeps the pant leg in place to prevent the wearer from reaching inside Appeal 2021-002139 Application 14/079,363 9 the diaper cover through the leg opening. For these reasons, claim 9 is not unclear, and, therefore, we reverse Rejection III. Rejection IV; Indefiniteness -“entire back side” Claim 1 recites, in part, “wherein said flap comprises a length extending parallel to said waistband, wherein said length is configured to extend the width of the entire back side of the user.” Appeal Br. 3 (Claims App.). The Examiner finds that this limitation is indefinite because it is unclear what this limitation “requires structurally of the diaper cover.” Final Act. 6. Appellant asserts that the claim requires the flap to have a particular length, namely, a length that extends the entire width of the back side of a user. Appeal Br. 12. According to Appellant, because Figure 1-3 and 5-7 depict the flap extending the entire rear side of the diaper cover, an ordinary artisan would understand that the flap has a length that extends “the entire width of the backside of a user.” Id. Appellant has the better position. Although we appreciate that users have back sides with widths that vary, an ordinary artisan would understand what is required of this limitation. In particular, as discussed above, the diaper cover has a back side configured to cover a user’s back, and the recited flap is defined in terms of the back of a user of that diaper. Thus, although the widths of user’s back sides may vary, the particular user (and particular back side width) is implied in claim 1. For this reason, we reverse Rejection IV. Appeal 2021-002139 Application 14/079,363 10 Rejections V and VI; Indefiniteness - “1/2 of the circumference” Independent claim 14 recites, in part, “said flap has a length of approximately 1/2 of said circumference.” Appeal Br. 5 (Claims App.). Claim 16, which depends from claim 1, includes a substantially similar limitation. Id. The Examiner finds that this limitation is unclear because one of ordinary skill would be unable to determine “the metes and bounds of ‘approximately ½ of said circumference.’” Final Act. 7. According to Appellant, because claims 14 and 16 previously recite “wherein said waist band is configured to define a circumference around a user’s waist,” an ordinary artisan would understand that “1/2 of said circumference” refers back to “the length of the flap in relation to the circumference of the waistband around a user’s waist.” Appeal Br. 12-13. A claim is not indefinite if the specification provides examples or teachings that can be used to measure a degree even without a precise numerical measurement (e.g., a figure that provides a standard for measuring the meaning of the term of degree). See, e.g., Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371-72 (Fed. Cir. 2014) (observing that although there is no absolute or mathematical precision required, “[t]he claims, when read in light of the specification and the prosecution history, must provide objective boundaries for those of skill in the art”). Here, we agree with Appellant that the circumference is of the waistband of the diaper cover, and that a flap having a length of ½ of the circumference, is in relation to the waistband. Given that a circumference extends around the entirety of an object, i.e., the waistband of the diaper cover, and given that Figures 1-3 and 5-7 depict the flap extending the length of the rear side, the Appeal 2021-002139 Application 14/079,363 11 figures provide a standard for measuring the flap length. Specifically, the diaper cover has a front side and a rear side, which together define the entire circumferential extent of the waistband of the diaper cover, each having a length of about ½ of the circumference. That is, when viewed from the rear, one only sees the rear half of the diaper cover, and when viewed from the front, one only sees the front half of the diaper cover. For these reasons, claims 14 and 16 are not indefinite because one of ordinary skill in the art would know what was meant by about, or approximately ½ of the circumference. Accordingly, we reverse Rejections V and VI. Rejection VII; Anticipation/Obviousness - Friedbaum and Kleinman The Examiner finds that Friedbaum discloses each of the limitations of claim 1, including pant leg openings that closely fit to a user’s leg because the claim only requires “pant legs that are capable of providing a close fit to the user’s leg.” Final Act. 8. The Examiner finds that Friedbaum discloses a flap having a length that extends the entire back side of the user, when the entire back side of the user is interpreted as the spine of the user. Id. at 9. To the extent that a length of Friedbaum’s flap does not extend the entire back side of the user, the Examiner finds that Kleinman’s flap does. Id. (citing Kleinman, Figs. 1, 7, and 8). The Examiner reasons that it would have been obvious to make Friedbaum’s flap the length taught by Kleinman “to provide a pants garment with a flap that is closeable and securable over the belt and tunnel creating a more streamlined garment waist edge that would not create any uncomfortable flap and fasteners along the wearer’s back that would irritate a wearer when seated against something.” Id. Appeal 2021-002139 Application 14/079,363 12 Appellant argues, inter alia, that because neither Friedbaum nor Kleinman disclose pant leg openings configured to be closely fit to a wearer’s leg, the claims are not anticipated by Friedbaum and are not obvious over the combination of Friedbaum and Kleinman. Appeal Br. 13- 15. The Examiner responds that because “closely fitting” is indefinite, the pant opening of Friedbaum would be close fitting based on “some user’s interpretation of ‘closely fitting.’” Ans. 7-8. We do not agree with the Examiner’s position. Initially, we note that the standard for determining a claim term is not based on “some user’s interpretation.” See Ans. 8. Rather, the pending claims must be “given their broadest reasonable interpretation consistent with the specification.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005). As discussed above in Rejection II, Appellant appears to use the terms “tight fitting” and “closely fitting” interchangeably. As also discussed, based on the disclosure in the Specification, one of ordinary skill in the art would understand that an opening configured to be closely fitting to a wearer’s leg, as claimed, is achieved by making the opening tight enough “to prevent a hand from passing between the closure and the user’s leg.” The Federal Circuit has stated that the phrase “configured to” means more than “‘capable of’ or ‘suitable for,”’ and is used to mean that “the claimed [device] is designed or constructed to be used” to perform the recited function. In re Giannelli, 739 F.3d 1375, 1380 (Fed. Cir. 2014). Thus, the broadest reasonable interpretation of the term “closely fitting,” consistent with the Specification, is designed or constructed to be tight enough to prevent a hand from passing between the closure and the user’s leg. Appeal 2021-002139 Application 14/079,363 13 “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). The Examiner does not explain sufficiently where Friedbaum discloses openings configured to be closely fitting to a wearer’s leg, as this term would be interpreted by one of ordinary skill in the art under the broadest reasonable interpretation consistent with the Specification. Nor does the Examiner explain why this feature is inherent in the pant opening of Friedbaum. Rather, the Examiner relies on Figures 1-3 of Friedbaum (see Final Act. 8), which are directed to an “improved waistband” (see Friedbaum, 1:24-35), and neither the figures nor the disclosure of Friedbaum relate to pant openings. In the Examiner’s alternate rejection based on Friedbaum and Kleinman, the Examiner does not rely on Kleinman in any way to overcome this shortcoming in Friedbaum. Because the Examiner’s interpretation of “closely fitting” is not in accord with the broadest reasonable interpretation consistent with the Specification, we reverse Rejection VII. Rejections VIII-XII; Obviousness - Claims 7-12 Claims 7-12 each depend from claim 1. Appeal Br. 4-5 (Claims App.) The Examiner’s rejection of claims 7-12 does not rely on the disclosures of Snyder, Simon, Trochlil-Crist, Karberg, or Sacks in any manner that would remedy the deficiencies of the anticipation rejection of claim 1 based on Friedbaum, or the obviousness rejection of claim 1 based on Friedbaum and Kleinman. For the same reasons as for Rejection VII, we reverse Rejections VIII-XII directed to claims 7-12. Appeal 2021-002139 Application 14/079,363 14 Rejection XIII; Obviousness - Karberg and Friedman The Examiner finds that Karberg discloses most of the limitations of claim 14, including pant leg openings that closely fit to a user’s leg because the claim only requires “leg openings at [the] bottom of [the] pant that are capable of fitting closely to a user’s leg.” Final Act. 14. The Examiner does not rely on Friedbaum for any limitations related to the pant leg opening. Id. at 15. Appellant argues that “the combination of Friedbaum and Karberg fail to teach ‘pant leg openings configured to be closely fitting to a wearer’s leg.’” Appeal Br. 23. We agree. Karberg discloses that “pajama trousers 5 have the legs and the rest of the body portion made of any suitable non-elastic fabric.” Karberg, 1:67- 69. Karberg does not disclose, however, any relationship between the legs of trouser 5 and a wearer’s leg. Thus, the Examiner has not established adequately that the opening in the trouser leg of Karberg is tight enough “to prevent a hand from passing between the closure and the user’s leg,” as one of ordinary skill in the art would interpret openings configured to be closely fitting to a wearer’s leg, consistent with the Specification. For the reasons discussed in Rejection VII, the Examiner has not established that Friedbaum discloses the claimed closely fitting leg opening. Because neither reference discloses this feature, the Examiner has not established that the combination discloses this feature. Accordingly, we reverse Rejection XIII. Appeal 2021-002139 Application 14/079,363 15 CONCLUSION The Examiner’s rejections are reversed.4 More specifically, DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-13, 16 112, 1st Written Description 1-13, 16 1-14, 16 112, 2nd Indefiniteness 1-14, 16 9 112, 2nd Indefiniteness 9 1-13, 16 112, 2nd Indefiniteness 1-13, 16 14 112, 2nd Indefiniteness 14 16 112, 2nd Indefiniteness 16 1-6, 13, 16 102/103 Friedbaum, Kleinman 1-6, 13, 16 8 103 Friedbaum, Kleinman, Snyder 8 12 103 Friedbaum, Kleinman, Simon 12 10 103 Friedbaum, Kleinman, Trochlil-Crist 10 7, 11 103 Friedbaum, Kleinman, Karberg 7, 11 9 103 Friedbaum, Kleinman, Sacks 9 14 103 Karberg, Friedbaum 14 Overall Outcome 1-14, 16 REVERSED 4 We do not reach Appellant's further arguments regarding secondary considerations (see Appeal Br. 24-25) because we find the claim construction issue discussed above to be dispositive of the obviousness rejection of all the pending claims.