Ex Parte Long et al

Patent Trial and Appeal BoardSep 4, 2013

11303283 (P.T.A.B. Sep. 4, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/303,283 12/15/2005 Andrew M. Long 22,139 8805 23556 7590 09/04/2013 KIMBERLY-CLARK WORLDWIDE, INC. Tammi Langin 2300 Winchester Rd. NEENAH, WI 54956 EXAMINER MEHMOOD, JENNIFER ART UNIT PAPER NUMBER 2689 MAIL DATE DELIVERY MODE 09/04/2013 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 ANDREW M. LONG and DAROLD D. TIPPEY ____________ Appeal 2011-002761 Application 11/303,283 Technology Center 2600 ____________ Before JOHN A. JEFFERY, BARBARA A. BENOIT, and PATRICK M. BOUCHER, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellants’ invention uses a signaling device to indicate that a body fluid is present in a garment. In one implementation, the signaling device’s Appeal 2011-002761 Application 11/303,283 2 terminals connect to conductive elements in the garment through an orifice in the garment’s outer cover. See generally Spec. 2. Claim 1 is illustrative: 1. A garment comprising: a chassis comprising an outer cover having an interior surface and an exterior surface, the chassis including a crotch region positioned in between a front region and a back region, the front region and the back region jointly defining a waist region; first and second conductive elements contained in the chassis, the conductive elements located in at least the waist region, the first and second conductive elements forming part of a circuit; and a signaling device including at least one first terminal and at least one second terminal, the first and second terminals adapted to operatively connect to the first and second conductive elements; wherein the first and second terminals operatively connect to the first and second conductive elements through at least one orifice in the outer cover. THE REJECTIONS 1. The Examiner rejected claims 1, 3, 5-7, 11, 12, and 171 under 35 U.S.C. § 102(b) as anticipated by Xie (US 4,768,023; issued Aug. 30, 1988). Ans. 3-5.2 2. The Examiner rejected claims 2, 4, 8, 13-16, and 18 under 35 U.S.C. § 103(a) as unpatentable over Xie and Nissim (US 5,760,694; issued June 2, 1998). Ans. 5-7. 1 Although the Examiner includes claim 20 in the statement of this rejection, the Examiner nonetheless discusses this claim in connection with the obviousness rejection of claim 19 from which claim 20 depends. Compare Ans. 3 with Ans. 8-9. Accord Br. 4 (noting this inconsistency). Accordingly, we presume that the Examiner intended to reject claim 20 as obvious over Xie and Johnson and present the correct claim listing here for clarity. 2 Throughout this opinion, we refer to the Appeal Brief filed December 5, 2008 (“Br.”) and the Examiner’s Answer mailed January 23, 2009 (“Ans.”). Appeal 2011-002761 Application 11/303,283 3 3. The Examiner rejected claims 9, 10, 19, and 20 under 35 U.S.C. § 103(a) as unpatentable over Xie and Johnson (US 5,266,928; issued Nov. 30, 1993). Ans. 8-9. THE ANTICIPATION REJECTION The Examiner finds that Xie’s garment has every recited element of claim 1 including a signaling device with first and second “terminals” associated with electrodes 3 and 4 operatively connected to first and second conductive elements (electrodes 3 and 4) through “orifices” (apertures 31 and 32) in the garment’s outer cover 12. Ans. 3-4, 9-10. Appellants argue that Xie does not disclose signaling device terminals connecting to conductive elements through an orifice in an outer cover as claimed, but rather passes electrodes through an outer sheet where they are affixed to adhesively coated tapes to adhere device contacts 15, 16 thereto. Br. 4. ISSUE Under § 102, has the Examiner erred in rejecting claim 1 by finding that Xie discloses a signaling device with first and second terminals operatively connected to first and second conductive elements through at least one orifice in a garment chassis’ outer cover? ANALYSIS We begin by clarifying the Examiner’s mapping. The Examiner refers principally to Xie’s electrodes 3, 4 in connection with the recited conductive elements and signaling device terminals (see Ans. 3, 9-10)—a Appeal 2011-002761 Application 11/303,283 4 mapping that appears at first blush to inappropriately map the same disclosed feature to two different recited elements.3 But the Examiner not only refers to Xie’s “terminal ends” of the electrodes in connection with the recited terminals, but also conductive tapes 5 and 6 in this regard. See Ans. 3-4 (referring to “items 3-6” in connection with the last clause of claim 1), 9- 10. Accord Ans. 8, 11 (noting that Xie’s conductive tapes 5, 6 are electrode termination points and therefore are parts of the recited terminals, namely terminal tops). Although this latter mapping is in connection with claim 9, it nonetheless informs our construction regarding the recited terminals since claim 9 further details the terminals recited in claim 1 from which claim 9 depends—terminals that the Examiner maps at least partly to Xie’s conductive tapes 5, 6 in addition to electrodes 3, 4 as noted above. We therefore presume that this mapping applies to claim 1 as well. Based on this mapping, we see no error in the Examiner’s rejection. As shown below, Xie’s Figure 4 shows electrodes 3, 4 that extend through apertures 31, 32 in a diaper’s outer sheet 12 for electrical connection to conductive tapes 5, 6, respectively. Xie, col. 2, ll. 11-24. 3 When a claim requires two separate elements, one element construed as having two separate functions will not suffice to meet the claim’s terms. See Lantech, Inc. v. Keip Mach. Co., 32 F.3d 542, 547 (Fed. Cir. 1994); see also In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (claims requiring three separate means not anticipated by structure containing only two means using one element twice). Appeal 2011-002761 Application 11/303,283 5 Xie’s Figure 4 showing electrodes 3 and 4 extending through apertures and connecting with conductive tapes 5 and 6 To be sure, this structure is different than that shown in Appellants’ Figure 7 which shows a signaling device 110’s terminals 116, 118 that can operatively connect with a garment’s conductive elements 100, 102 through at least one orifice 122 as shown below. See Spec. 14:28-32. Appeal 2011-002761 Application 11/303,283 6 Appellants’ Figure 7 showing signaling device terminals operatively connectable with a garment’s conductive elements through orifice 122 Despite these distinctions, the scope and breadth of claim 1 does not preclude the Examiner’s interpretation, since Xie’s “terminals” (“terminal ends” of electrodes 3, 4 and conductive tapes 5, 6) operatively connect to the remainder of the conductive elements 3, 4 through orifices 31, 32. To the extent that Appellants’ arguments presuppose that the recited terminals and conductive elements must be co-located within the orifice (e.g., after connecting the signaling device and garment in Appellants’ Figure 7), such an argument is not commensurate with the scope of the claim. Nor do Appellants persuasively rebut the Examiner’s finding that Xie’s relied-upon “terminals” are “signaling device terminals” since they are part of Xie’s signaling system. Ans. 10. Accord Ans. 11 (“[T]he signaling device comprises many different components functioning as the device.”). Although Xie’s system includes a dedicated signaling device 2 with its own contacts 15, 16 as shown in Figures 6 and 7 (Xie, col. 2, ll. 7-10, 42-46), Appeal 2011-002761 Application 11/303,283 7 nothing in claim 1 precludes the Examiner’s broader interpretation of “signaling device” to include other components of Xie’s system which likewise contribute to its signaling capabilities. We are therefore not persuaded that the Examiner erred in rejecting representative claim 1, and claims 3, 5-7, 11, 12, and 17 not separately argued with particularity. THE OBVIOUSNESS REJECTION OVER XIE AND NISSIM We also sustain the Examiner’s obviousness rejection of claim 2 reciting that the terminals connect to the conductive elements through a single orifice. Ans. 5, 10-11. Despite Appellants’ arguments to the contrary (Br. 4-5), we see no error in the Examiner’s reliance on Johnson merely to show that connecting terminals and conductive elements through a single orifice would have been an obvious variation to Xie’s multiple orifices. See Ans. 5, 10 (citing pouch 120 in Nissim’s Figure 2). Although the Examiner acknowledges that Nissim may require an electrically insulating sheath between conductive elements and terminals (Ans. 10-11), we nonetheless are unpersuaded that Nissim teaches away from the fundamental notion of providing a single orifice in lieu of multiple orifices, particularly since both conductive members 127 of Nissim’s sensor 124 are contained within a single “orifice,” namely the pouch. In any event, we see no reason why using a single orifice for both sets of Xie’s terminal/conductive element connections in lieu of multiple dedicated orifices for each connection would have been uniquely challenging or otherwise beyond the level of ordinarily skilled artisans. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Appeal 2011-002761 Application 11/303,283 8 We are therefore not persuaded that the Examiner erred in rejecting representative claim 2, and claims 4, 8, 13-16, and 18 not separately argued with particularity. THE OBVIOUSNESS REJECTION OVER XIE AND JOHNSON We also sustain the Examiner’s obviousness rejection of claim 9 reciting that the first terminal comprises a top and a stalk, where the top is wider than the stalk. Appellants do not persuasively rebut the Examiner’s reliance on conductive tapes 5 and 6 as constituting a terminal’s “top” that is wider than its “stalk” (i.e., electrodes 3, 4), particularly in view of the Examiner’s mapping of the recited terminals noted above. Ans. 8, 11. Appellants’ arguments regarding Xie’s contacts 15 and 16 (Br. 5) are unavailing, for they are not germane to the Examiner’s reliance on Xie’s tapes and electrodes in connection with the recited terminal structure as noted above. Although Johnson is technically cumulative to Xie in this regard, Appellants nevertheless do not persuasively rebut the Examiner’s position that it would have been obvious to provide a terminal in Xie with the recited structure in view of Johnson’s Figure 5 which shows a conductor with portions 53, 54 at one end (i.e., a “top”) that is wider than other elongated portions 50, 51 which are said to teach a “stalk.” Ans. 8, 11 (citing Johnson, Fig. 5). Appellants’ arguments regarding the planar detector contacts 64, 65 in Figure 6 (Br. 5-6) are unavailing. Not only is this argument not germane to the relied-upon structure in Figure 5, but it does not persuasively rebut the limited purpose for which Johnson was cited, namely to show that the recited terminal structure is known in the art, and that providing such a Appeal 2011-002761 Application 11/303,283 9 structure in Xie’s terminals would have been obvious. Ans. 8, 11. Such an enhancement predictably uses prior art elements according to their established functions—an obvious improvement. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). We are therefore not persuaded that the Examiner erred in rejecting representative claim 9, and claims 10, 19, and 20 not separately argued with particularity. CONCLUSION The Examiner did not err in rejecting (1) claims 1, 3, 5-7, 11, 12, and 17 under § 102, and (2) claims 2, 4, 8-10, 13-16, and 18-20 under § 103. ORDER The Examiner’s decision rejecting claims 1-20 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)(1)(iv). AFFIRMED gvw