Ex Parte Cantor et al

Patent Trial and Appeal BoardDec 7, 2012

11497766 (P.T.A.B. Dec. 7, 2012)

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. 11/497,766 08/02/2006 Joy Cantor CANM 0133 PUS 7334 22045 7590 12/10/2012 BROOKS KUSHMAN P.C. 1000 TOWN CENTER TWENTY-SECOND FLOOR SOUTHFIELD, MI 48075 EXAMINER WANG, JACK K ART UNIT PAPER NUMBER 2682 MAIL DATE DELIVERY MODE 12/10/2012 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 JOY CANTOR and MARK A. CANTOR ____________________ Appeal 2010-006919 Application 11/497,766 Technology Center 2600 ____________________ Before ROBERT E. NAPPI, DEBRA K. STEPHENS, and KRISTEN L. DROESCH, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-006919 Application 11/497,766 2 Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final rejection of claims 1-8, 13-15, and 21-25. We have jurisdiction under 35 U.S.C. § 6(b). Claims 9-11 and 16 have been canceled and claims 12 and 17-20 have been withdrawn. We AFFIRM-IN-PART and enter a NEW GROUNDS OF REJECTION UNDER 37 C.F.R. § 41.50(b). Introduction According to Appellants, the invention relates to sanitary apparatuses with moisture level indication (Spec. 1, §1. Field of the Invention). STATEMENT OF THE CASE Exemplary Claims Claims 1 and 25 are exemplary claims and are reproduced below: 1. A moisture absorbent tampon comprising: a body sized to be received within a body part of a user; a moisture absorbent material provided in the body of the tampon for absorbing moisture from the user; a moisture sensor provided in the body of the tampon for sensing moisture at a location of the body of the tampon; and an actuator provided in the body of the tampon in communication with the moisture sensor for receiving a signal from the moisture sensor indicating a level of moisture absorption in the moisture absorbent material whereby the actuator imparts a signal to the body part of the user indicating to the user the level of moisture absorption. 25. A moisture absorbent sanitary apparatus comprising: a body sized to cooperate with a body part of a user; a moisture absorbent material provided in the body of the apparatus for absorbing moisture from the user; Appeal 2010-006919 Application 11/497,766 3 a moisture sensor provided in the body of the apparatus for sensing moisture at a location of the body of the apparatus; and an actuator provided in the body of the apparatus in communication with the moisture sensor for receiving a signal from the moisture sensor indicating a level of moisture absorption in the moisture absorbent material whereby the actuator imparts a signal to the body part of the user indicating to the user the level of moisture absorption; wherein the actuator is encased in a moisture resistant material. References David US 2004/0064114 Apr. 1, 2004 Zainiev US 2004/0106202 Jun. 3, 2004 Rejections (1) Claims 21-23 stand rejected under 35 U.S.C. § 112, first paragraph as failing to comply with the written description requirement. (2) Claims 1-8, 13-15, 24, and 25 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Zainiev. 1 (3) Claims 21-23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Zainiev and David. 1 We note the Examiner mistakenly includes claims 12 and 17-20 as pending in the application (Ans. 3) and mistakenly includes canceled claims 9-11 and 16 and withdrawn claims 12 and 17-20 in the Claim Rejections (Ans. 4). We treat claims 9-11 and 16 as being canceled and claims 12 and 17-20 as being withdrawn based on Appellants’ claims (Claim Appd’x), stated Status of Claims (App. Br. 2), and Acknowledgement Letter with Correction filed January 21, 2010. Appeal 2010-006919 Application 11/497,766 4 We have only considered those arguments that Appellants actually raised in the Briefs. Arguments Appellants could have made but chose not to make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii)(2011). ISSUE 1 35 U.S.C. § 112, first paragraph, written description: claims 21-23 With respect to claims 21 and 22, Appellants argue the Specification expressly discloses multiple “indicators” and thus, describes the recited “at least two moisture sensors” recited in the claims (App. Br. 19). With respect to claim 23, Appellants contend the Specification’s disclosure of “incrementally indicating to the user multiple moisture levels” supports the recited limitation of the “actuator imparts two different signals to the user for indicating two different levels of moisture absorption” (id.). Issue 1: Has the Examiner erred by rejecting claims 21-23 for failing to comply with the written description requirement? Analysis We agree with the Examiner’s findings and reasons and adopt them as our own. Accordingly, Appellants have not persuaded us the Examiner erred in determining claims 21-23 fail to comply with the written description requirements. Appeal 2010-006919 Application 11/497,766 5 ISSUE 2 35 U.S.C. § 102(b): Claims 1-8, 13-15, 24, and 25 Claims 1 and 25 Appellants argue their invention is not anticipated by Zainiev (App. Br. 9-12; Reply Br. 2-5). Specifically, Appellants argue the tampon 110 of Zainiev does not describe a tampon comprising a “body sized to be received within a body part of a user” since the reservoir element 114 is an external element (App. Br. 10). Instead, according to Appellants, the Examiner is combining multiple embodiments of Zainiev to create a new embodiment (Reply Br. 3). Moreover, Appellants maintain Zainiev does not teach the sensor 314 and the alert mechanism 318 are both “provided in the body” of the tampon, but instead teaches the monitoring system is attached to the absorbent fiber material without teaching a location (id.). Issue 2a: Has the Examiner erred in finding Zainiev discloses “a moisture sensor provided in the body of the tampon” and “an actuator provided in the body of the tampon” as recited in claim 1 and commensurately recited in claim 25? Analysis We disagree with Appellants. Instead, we agree with the Examiner’s findings and conclusions (Ans. 4, 7-8, and 10-11). Initially, we note Appellants have not explicitly defined the term “body” in their Specification. Appellants have not provided sufficient evidence or argument to show error in the Examiner’s interpretation which is broad, but reasonable, in light of the Specification. Therefore, we are not convinced that the monitoring Appeal 2010-006919 Application 11/497,766 6 system of Zainiev, even if attached, is not provided in the body of the tampon. Indeed, the body is received into the body part of the user and the monitoring system, even if attached to the body, is received as part of the body, into the body part of the user. In addition to the Examiner’s findings, we further note the following that is cumulative. Zainiev describes the monitoring system may be incorporated in the fiber itself (see [0087]). Specifically, Zainiev discloses “[a] user wishing to employ the present invention can include the monitoring system in absorbent fiber materials….” Thus, Zainiev describes including a monitoring system in the fiber. It follows, Zainiev discloses a body and a moisture sensor and an actuator provided in the body as recited in claims 1 and 25 (Ans. 11; see [0094] and [0087]). Claim 4 Appellants argue that although Zainiev describes “micro speakers” and “vibrations,” Zainiev does not describe a vibration chip that imparts vibration (App. Br. 13). Issue 2b: Has the Examiner erred in finding Zainiev describes “the actuator further comprises a vibration chip for imparting a vibration to the body part of the user?” Analysis We agree with Appellants that Zainiev does not describe a vibration chip as recited in claim 4. However, while we agree Zainiev does not anticipate the vibration device is a chip, we find an ordinary artisan at the Appeal 2010-006919 Application 11/497,766 7 time of the invention would have found it obvious to use a vibration chip to generate the vibrations described in Zainiev. Our reviewing court stated in Leapfrog Enters. Inc. v. Fisher-Price Inc., 485 F.3d 1157 (Fed. Cir. 2007) that one of ordinary skill in the art would have found it obvious to combine an old electromechanical device with electronic circuitry “to update it using modern electronic components in order to gain the commonly understood benefits of such adaptation, such as decreased size, increased reliability, simplified operation, and reduced cost.” Id. at 1162. “The combination is thus the adaptation of an old idea or invention … using newer technology that is commonly available and understood in the art.” Id. We thus find a skilled artisan could take the disclosure of Zainiev in combination with his/her own knowledge of mechanisms that produce vibrations to incorporate a vibration chip for implementing a vibration in the body part of the user. As our statutory basis for rejection is different than that set forth by the Examiner, we make the following new grounds of rejection using our authority under 37 C.F.R. § 41.50(b): Claim 4 is rejected as being unpatentable under 35 U.S.C. § 103(a) for obviousness over Zainiev. Claims 5 and 25 Appellants further argue with respect to claim 25 and with respect to claim 5 that Zainiev does not disclose “the actuator is encased in a moisture resistant material” (App. Br. 13). Instead, according to Appellants, the Appeal 2010-006919 Application 11/497,766 8 disclosed actuator is a sound generating device not enclosed within the moisture impermeable cylinder (id.). Issue 2c: Has the Examiner erred in finding Zainiev describes “the actuator is encased in a moisture resistant material?” Analysis We agree with Appellants that the Examiner has not shown Zainiev describes the actuator is encased in a moisture resistant material; however, we find given the teachings and suggestions of Zainiev, it would have been obvious to an ordinary artisan to encase the actuator in a moisture resistant material if the actuator were included in the fiber as taught by Zainiev (see pg. 7, [0087]; see also pg. 8, [0101] and [0102]). Therefore, while we agree with Appellants that Zainiev does not anticipate “the actuator is encased in a moisture resistant material,” we do conclude an ordinary artisan would have found it obvious to encase the actuator in a moisture resistant material. Therefore, as our statutory basis for rejection is different than that set forth by the Examiner, we make the following new grounds of rejection using our authority under 37 C.F.R. § 41.50(b): Claims 5 and 25 are rejected as being unpatentable under 35 U.S.C. § 103(a) for obviousness over Zainiev. Claim 8 Appellants argue that although Zainiev describes generation of electrical power, Zainiev does not disclose “a normally-closed mechanical switch with a moisture soluble material maintaining the switch is an open position until contacted by moisture” (App. Br. 14). Appeal 2010-006919 Application 11/497,766 9 Issue 2d: Has the Examiner erred in finding Zainiev describes “the moisture sensor further comprises a normally-closed mechanical switch with a moisture soluble material maintaining the switch in an open position until contacted by moisture?” Analysis We agree with the Examiner’s findings and conclusions and adopt them as our own (Ans. 12-13). Claim 15 Appellants argue claim Zainiev discloses a variable sensor that measures properties based on absorption by the capillary material (App. Br. 15). However, Appellants contend Zainiev does not disclose an insulator that can be removed by a user (id.). Issue 2e: Has the Examiner erred in finding Zainiev describes “an insulator in cooperation with the switch maintaining the switch in an open orientation, wherein the user can remove the insulator for powering the circuit?” Analysis We agree with the Examiner’s findings and conclusions (Ans. 13-14) and adopt them as our own. CONCLUSION The Examiner did not err in finding Zainiev discloses the invention as recited in independent claim 1 and dependent claims 2, 3, 6-8, 13-15, and 24, not separately argued. Therefore, the Examiner did not err in rejecting Appeal 2010-006919 Application 11/497,766 10 claims 1-3, 6-8, 13-15, and 24 under 35 U.S.C. § 102(b) for anticipation by Zainiev. The Examiner erred in finding Zainiev discloses the invention as recited in claims 4, 5, and 25. Therefore, the Examiner erred in rejecting claims 4, 5, and 25 under 35 U.S.C. § 102(b) for anticipation by Zainiev. We make the following new grounds of rejection using our authority under 37 C.F.R. § 41.50(b): Claims 4, 5, and 25 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Zainiev. ISSUE 3 35 U.S.C. § 103(a): claims 21-23 Appellants assert their invention is not obvious over Zainiev and David because David does not teach or suggest “an actuator provided in the body of the tampon” (App. Br. 17-18). Issue 3: Has the Examiner erred in finding the combination of Zainiev and David teaches or at least suggests “an actuator provided in the body of the tampon?” ANALYSIS As set forth above in Issue 2, we find Zainiev describes “an actuator provided in the body of the tampon” as recited in claim 1 and commensurately recited in claim 25. Claims 21-23 depend from claim 1, but Appellant does not argue the additional limitations recited in claims 21-23 (App. Br. 17-18). Since Zainev describes the disputed limitation, we further find the combination of Zainiev and David teaches or at least suggests “an Appeal 2010-006919 Application 11/497,766 11 actuator provided in the body of the tampon.” As clarified in KSR, the skilled artisan is “a person of ordinary creativity, not an automaton.” See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Accordingly, the Examiner did not err in finding the combination of Zainiev and David teaches or suggests the invention as recited in claims 21- 23. Therefore, the Examiner did not err in rejecting claims 21-23 under 35 U.S.C. § 103(a) for obviousness over Zainiev and David. DECISION The Examiner’s rejection of claims 21-23 under 35 U.S.C. § 112, first paragraph as failing to comply with the written description requirement is affirmed. The Examiner’s rejection of claims 1-3, 6-8, 13-15, and 24 under 35 U.S.C. § 102(b) as being anticipated by Zainiev is affirmed. The Examiner’s rejection of claims 4, 5, and 25 under 35 U.S.C. § 102(b) as being anticipated by Zainiev is reversed. The Examiner’s rejection of claims 21-23 under 35 U.S.C. § 103(a) as being unpatentable over Zainiev and David is affirmed. In a new ground of rejection, we reject claims 4, 5, and 25 as being unpatentable under 35 U.S.C. § 103(a) for obviousness over Zainiev. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) (2010). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Appeal 2010-006919 Application 11/497,766 12 37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . 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) (2011). AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b) tj