Ex Parte Maclean et al

Patent Trial and Appeal BoardJul 19, 2013

10664236 (P.T.A.B. Jul. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte SANDRA M. MACLEAN and ELIZABETH LEVANG ____________________ Appeal 2011-006564 Application 10/664,236 Technology Center 3700 ____________________ Before: WILLIAM V. SAINDON, NEIL T. POWELL, and JILL D. HILL, Administrative Patent Judges. POWELL, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-006564 Application 10/664,236 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1, 25-31, and 35-42. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE CLAIMED SUBJECT MATTER Independent claim 1, reproduced below, is illustrative of the appealed subject matter. 1. A miscarriage kit comprising: at least one under pad/bed liner configured to be positioned on a surface, the under pad/bed liner having a bottom layer and a top layer, wherein the top layer is designed to absorb bodily fluids, and wherein the bottom layer protects the surface from bodily fluids that soak through the top layer; at least one sanitary napkin; at least one towel; at least one pair of gloves; at least one specimen pan for receiving human tissue; and at least one container for holding fetal remains for legal disposition. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Schumacher US 4,917,238 Apr. 17, 1990 Friedbauer US 2001/0032712 A1 Oct. 25, 2001 Gordon US 6,434,762 B2 Aug. 20, 2002 Gallo US 6,622,856 B2 Sep. 23, 2003 Appeal 2011-006564 Application 10/664,236 3 REJECTIONS Appellants seek our review of the following rejections. I. Claims 1, 25-31, 35-37, and 40 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. II. Claims 1 and 25-31 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Schumacher and Friedbauer. III. Claims 35-37 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Schumacher, Friedbauer, and Gordon. IV. Claims 38-42 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Schumacher, Friedbauer, and Gallo. ANALYSIS Rejection I The Examiner indicates that claims 1, 25-31, 35-37, and 40 do not comply with the written description requirement because of certain limitations related to the claimed “under pad/bed liner.” Ans. 4. The Examiner notes the Specification does not explicitly state that the disclosed under pad/bed liner has a bottom layer formed of impermeable material, or that the bottom layer provides protection against fluid that has penetrated the top layer of the under pad/bed liner. Ans. 4. Based on this, the Examiner indicates that the limitation in claims 1 and 35 that “the bottom layer protects the surface from bodily fluids that soak through the top layer” does not comply with the written description requirement. See id. The Examiner likewise indicates that the claim 40 limitation “wherein the bottom layer of Appeal 2011-006564 Application 10/664,236 4 the under pad/bed liner is impermeable to bodily fluid” does not comply with the written description requirement. See id. Appellants argue that the Specification provides written description for the foregoing claim limitations by disclosing that the under pad/bed liner includes a bottom layer “made from a thick polypropylene,” and by disclosing that the under pad/bed liner “helps to reduce worries about blood or fluid soaked bedding or fabrics.” App. Br. 14-15 (citing Spec., paras. [0050], [0051]). The Examiner responds that polypropylene can be impermeable or liquid pervious, and that the top layer of the under pad/bed liner, not the bottom layer, could provide the fluid protection that reduces worries about fluid soaking into bedding or fabrics. Ans. 8. The written description requirement may be met by an express or an implicit disclosure. In re Wertheim, 541 F.2d 257, 262 (CCPA 1976). We agree with the Examiner that the Specification does not expressly disclose the disputed claim limitations. However, Appellants’ arguments convince us that the Specification implicitly and reasonably conveys to a person of ordinary skill in the art that Appellants had possession of an under pad/bed liner whose bottom layer is impermeable to bodily fluid and protects an underlying surface from bodily fluids that soak through the top layer. In the context of a disclosure that the under pad/bed liner serves the purpose of reducing concerns about fluids soaking into bedding, the disclosure of a layer of “thick polypropylene” would suggest an impermeable layer, not a liquid pervious layer. Accordingly, we do not sustain rejection I. Appeal 2011-006564 Application 10/664,236 5 Rejection II Appellants dispute the Examiner’s determination that the paper towel 51 disclosed by Schumacher meets the claim l limitation “at least one sanitary napkin.” App. Br. 23; Ans. 4; see also Schumacher, col. 2, ll. 45- 47. Appellants suggest that the term “sanitary napkin” has an ordinary meaning that does not encompass a paper towel. App. Br. 23. In support of this argument, Appellants offer that “[t]he common understanding of sanitary napkin may be found in any dictionary, for instance, online at dictionary.com as being, ‘a pad of absorbent material, as cotton, worn by women during menstruation to absorb the uterine flow.’” Id. Appellants then note that the disclosure in the Specification regarding sanitary napkins comports with the ordinary meaning of the term. Id. (citing para. [0058]). In response, the Examiner asserts that the claims do not include any structural limitations that would require the claimed “sanitary napkin” to be a feminine hygiene product. Ans. 10. Consistent with the arguments and dictionary definition presented by Appellants, we understand the term “sanitary napkin” to have an ordinary meaning that refers to a feminine hygiene product with certain attendant structural features. Additionally, we agree with Appellants that the examples discussed in the Specification comport with this ordinary meaning of “sanitary napkin,” and we see no indication the Specification attempts to broaden this meaning. Finally, the Examiner has not provided any evidence or reasoned explanation convincing us that a person of ordinary skill in the art would reasonably interpret the recitation of “sanitary napkin” within claim 1 more broadly than its ordinary meaning. Accordingly, we do not Appeal 2011-006564 Application 10/664,236 6 agree with the Examiner’s finding that the claimed “sanitary napkin” reads on Schumacher’s paper towel. Consequently, we do not sustain rejection II. Rejection III and IV Like claim 1, claims 35 and 38 recite “at least one sanitary napkin.” To address this limitation and most of the other limitations of claims 35 and 38, the Examiner refers to the discussion of claim 1 in rejection II. Ans. 6, 7. For the reasons discussed above, we do not agree with the Examiner’s position that Schumacher discloses “at least one sanitary napkin.” Accordingly, we do not sustain rejections III and IV. DECISION We reverse the Examiner’s decision rejecting claims 1, 25-31, and 35- 42. REVERSED Klh