Ex Parte Coates

Board of Patent Appeals and Interferences

May 25, 2012

10773160 (B.P.A.I. May. 25, 2012)

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.
10/773,160 02/09/2004 Fredrica V. Coates 4063/11US-C 5449
19148 7590 05/25/2012
Shumaker, Loop & Kendrick, LLP
128 South Tryon Street
Suite 1800
Charlotte, NC 28202-5013
EXAMINER
ZALUKAEVA, TATYANA
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
05/25/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte FREDRICA V. COATES
__________

Appeal 2011-001029
Application 10/773,160
Technology Center 3700
__________

Before ERIC GRIMES, JEFFERY N. FREDMAN, and ERICA
A. FRANKLIN, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a reusable
protective undergarment. The Examiner has rejected the claims as indefinite
and obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Claims 20-22, 24-27, 29-31, and 34 are on appeal. Claims 20 and 34
are representative and read as follows:
Appeal 2011-001029
Application 10/773,160

2
20. A protective undergarment, comprising a first part and a
second part attachable to and detachable from the first part:
the first part comprising an outer layer and an anchor layer;
the outer layer comprising a fabric layer shaped to conform to a
buttock and leg region of a user;
the anchor layer comprising a fabric layer stitched to the outer layer
and having a shape conforming to that of the outer layer, the anchor layer
and the outer layer comprising separate fabrics; and
the second part comprising a pocketed sling forming a pocket for
retaining a fluid absorbent pad, the pocketed sling being detachably
coupleable to the anchor layer but not attachable directly to the outer layer,
wherein when second part is attached to the first part, the pocketed sling is
displaced inwardly toward a center of the anchor layer and inwardly from
stitches joining the anchor layer and the outer layer, the pocketed sling
extending from the anchor layer on the inner side of the undergarment when
the undergarment is worn with the pocket facing inwardly away from the
anchor layer;
wherein the pocketed sling is attachable to and detachable from the
anchor layer by releasable fasteners on the pocketed sling and the anchor
layer with the outer layer completely overlying the releasable fasteners on
the anchor layer; and
wherein the releasable fasteners on the anchor layer are displaced
inwardly from the stitches joining the anchor layer to the outer layer around
the entire periphery of the anchor layer and all of the releasable fasteners on
the anchor layer and the pocketed sling are displaced inwardly relative to the
stitches joining the anchor layer and the outer layer when the pocketed sling
is fastened to the anchor layer.
34. The protective undergarment of claim 20 wherein the second part
initially includes a rectangular piece of material, wherein triangular corner
portions of the rectangular piece of material have been removed and
remaining adjacent sides created by such removal being stitched together to
form said pocket, an outer edge of the pocket being covered by an elastic
strip.
Appeal 2011-001029
Application 10/773,160

3
The claims stand rejected as follows:
• Claims 20-22, 24-27, 29-31, and 34 under 35 U.S.C. § 112, second
paragraph (Answer 3);
• Claims 20, 21, 24-27, and 29-31 under 35 U.S.C. § 103(a) based on
Bernard,1 Wyant,2 and Siudzinski3 (Answer 5);
• Claims 20, 22, 24-27, and 29-31 under 35 U.S.C. § 103(a) based on
Bernard, Siudzinski, Thompson,4 and Stevens5 (Answer 9); and
• Claim 34 based on either of the combinations of prior art set out
above, combined with Alsop6 and Brownlee7 (Answer 10).
I.
The Examiner has rejected all of the claims on appeal as indefinite, on
the basis that a “positive structural antecedent basis for ‘the stitches joining
. . . around the entire periphery of the anchor layer’ (last section, first three
lines of claim 20) should be set forth” (Answer 4).
Appellant argues that “[a]ntecedent basis for the stitches joining the
anchor layer to the outer layer is found in line 13 of Claim 20. Antecedent
basis for the releasable fasteners is found in line 17 of Claim 20. The
remainder of the last paragraph of Claim 20 merely recites the relative
positioning of these components.” (Appeal Br. 9.)

1 Bernard, US 2,691,983, issued Oct. 20, 1952
2 Wyant, US 5,843,065, issued Dec. 1, 1998
3 Siudzinski, US 5,772,649, issued June 30, 1998
4 Thompson, US 3,049,124, issued Aug. 14, 1962
5 Stevens et al., US 4,892,598, issued Jan. 9, 1990
6 Alsop, US 1,977,604, issued Oct. 23, 1934
7 Brownlee et al., US 5,360,422, issued Nov. 1, 1994
Appeal 2011-001029
Application 10/773,160

4
We agree with the Examiner that the recitation of “releasable fasteners
on the anchor layer [that] are displaced inwardly from the stitches joining
the anchor layer to the outer layer around the entire periphery of the anchor
layer” (claim 20) is indefinite. As the Examiner pointed out, the claim does
not provide antecedent basis for “the stitches joining the anchor layer to the
outer layer around the entire periphery.” If Appellant intends this to be a
limitation of the claimed product, it should be recited as an express
limitation.
In addition, the claim language at issue can plausibly be interpreted in
two different ways. It could mean that the releasable fasteners are displaced
inwardly, around the entire periphery, from the stitches. Or it could mean
that the releasable fasteners are displaced inwardly from the stitches, which
run around the entire periphery. “[I]f a claim is amenable to two or more
plausible claim constructions, the USPTO is justified in requiring the
applicant to more precisely define the metes and bounds of the claimed
invention by holding the claim unpatentable under 35 U.S.C. § 112, second
paragraph, as indefinite.” Ex parte Miyazaki, 2008 WL 5105055, at *5
(BPAI 2008) (precedential). For both of the above reasons, we affirm the
Examiner’s rejection of claim 20 under 35 U.S.C. § 112, second paragraph.
II.
The Examiner has rejected claims 20, 21, 24-27, and 29-31 as obvious
based on Bernard, Wyant, and Siudzinski (Answer 5), and has rejected
claims 20, 22, 24-27, and 29-31 as obvious based on Bernard, Siudzinski,
Thompson, and Stevens (Answer 9). The Examiner’s rejection of claim 20
does not rely on any of Wyant, Siudzinski, Thompson, or Stevens (see id. at
App
App

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01029
/773,160
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01029
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’s Figure 9
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d
Appeal 2011-001029
Application 10/773,160

7
Appellant argues that the embodiment shown in Bernard’s Figures 7-9
does not make obvious a product meeting all of the limitations of claim 20
(Appeal Br. 9-11). Specifically, Appellant argues that Bernard does not
describe the embodiment of Figures 7-9 as including an outer garment (“first
part” in claim 20) having both an outer layer and an anchor layer, as
claimed. Appellant argues that Bernard “contains no discussion of the
unnumbered middle layer that . . . appears upon enlargement of Figure 9”
(Appeal Br. 10) – that is, the layer between elements 15a and 16a – and that
Figure 9 “can also be interpreted as showing a dual layer diaper pocket 16a
and a single layer outer body” (id.).
Similarly, Appellant argues that “the rejection is based on the
assumption that the stitching 17 of Figures 1-6 is incorporated into the
embodiment of Figures 7-9” (id. at 9), but the “lining 16a of the embodiment
of Figures 7-9 is coupled by detachable fasteners 51 and is not stitched to the
outer layer 15a” (id. at 10). Appellant argues that the dashed lines shown in
Figure 7 do not indicate two layers stitched together “since these dashed
lines can just as easily be interpreted as a hem, like the hem incorporated in
the outer layer 15 of the embodiment of Figures 1-6” (id. at 11).
These arguments are not persuasive. Bernard expressly states that the
outer garment of the embodiment shown in Figure 7-9 is “constructed as
before described” (Bernard, col. 3, ll. 24-25). That construction includes
attaching an outer fabric sheet 15 to a lining 16 “by conventional stitching
17” (id. at col. 1, l. 55 to col. 2, l. 6). Bernard describes element 16a as the
bottom sheet of the diaper-retaining element (see id. at col. 3, ll. 33-35). The
three-layer structure shown in Bernard’s Figure 9 is therefore reasonably
Appeal 2011-001029
Application 10/773,160

8
understood to show a two-layer (outer layer and anchor layer) outer garment
coupled to a diaper-retaining element having a single bottom sheet. In
addition, Bernard’s description of the two sheets of the outer garment as
“secured together along their margins by conventional stitching 17” (id. at
col. 2, ll. 5-6), and a comparison of Bernard’s Figure 7 with its Figures 2 and
3, indicates that the dashed lines in Figure 7 are intended to show the
stitching that holds together the two layers of the outer garment.
We also note that, as shown in Bernard’s figures, the fastener
elements 51 and 52 are displaced inwardly from the stitching around the
periphery of the outer garment and the diaper retaining element.
Appellant also argues that
[i]f the unnumbered middle layer [in Figure 9] is the anchor
layer, it must then follow that the fastener element 51 extends
through both the outer layer 15a and this middle layer of
element 15a if fastener elements 51 are to be exposed so that
the fasteners 52 can engage and disengage from fasteners 51.
Therefore, the sling must be directly connected to the outer
layer 15a, since it appears that fastener 51 extends though both
layers 15a to engage fasteners 52.
(Appeal Br. 11.)
We disagree. In the scenario described by Appellant, the fastener 52
of the diaper retaining element is attached to the fastener 51 of the outer
garment, which itself is connected to both the anchor layer (unnumbered in
Figure 9) and the outer layer 15a. Thus, the diaper retaining element (or
sling) is attached only indirectly to the outer layer; in other words, it is “not
attachable directly to the outer layer,” as required by claim 20.
With regard to claim 22, Appellant argues that the “statement made
with respect to Claim 22 that cooperating snap fasteners are completely
Appeal 2011-001029
Application 10/773,160

9
overlaid by an outer layer as taught by Siudzinski ‘649, Thompson ‘124, and
Stevens ‘598 is believed to be an incorrect characterization of these
references and therefore would not support the suggested modifications of
Bernard ‘983” (Appeal Br. 12).
This argument is also unpersuasive. The Examiner finds that each of
Siudzinski, Thompson, and Stevens disclose snap fasteners completely
overlaid by an outer layer (see Answer 10) and concludes that it would have
been obvious to include this feature in Bernard’s garment to make it “more
aesthetic and/or safer, e.g. can’t catch on anything” (id.). We agree.
Thompson, for example, shows snap fasteners (24 in its figures; see also
col. 2, ll. 6-12) that are attached only to the inside surface of the outer layer.
Thus, it would have been obvious to modify Bernard’s garment by attaching
its snap fasteners 51 only to the inner layer of its outer garment (i.e., the
unnumbered layer in Figure 9) to make the garment more aesthetically
pleasing and less likely to catch on things.
Appellant argues that Thompson’s “female snap fasteners . . . are
secured to the outer layer and are thus not relevant to the rejected claims”
(Appeal Br. 13). We disagree. Thompson provides evidence that an
absorbent pad can be attached to a supporting garment via snaps attached
only to the inner surface of the supporting garment, and therefore shows that
snap fasteners completely overlaid by the outer surface, as required by claim
22, would have been obvious to those of ordinary skill in the art.
III.
The Examiner has rejected claim 34 as obvious based on either of the
combinations of references applied to claim 20, further combined with Alsop
Appeal 2011-001029
Application 10/773,160

10
and Brownlee (Answer 11). The Examiner interprets claim 34 as only
requiring “a pocket with sides that have been stitched together in some
manner and an outer edge having an elastic strip covering it” (id. at 5),
because “claim 34 does not explicitly claim how the remaining sides are
stitched to form the pocket, e.g. does not require direct stitching of the cut
edges of the sides formed by cutting the triangular portions” (id.). The
Examiner finds that Bernard “teaches a pocket with sides that have been
stitched together in some manner” (id. at 11) and that Alsop and Brownlee
show that “it is well known . . . to employ an elastic strip covering some
surface of a portion of an outer edge” (id.). The Examiner concludes that the
product of claim 34 would have been obvious (id.).
Appellant argues that “Claim 34 clearly defines a structure. The claim
language that the triangular corner sections have been removed says the
same thing as a rectangular piece of material absent triangular corner
sections.” (Appeal Br. 14.) Appellant argues that the claimed structure is
not shown in the cited references (id.).
We agree with Appellant that claim 34 defines a specific structure,
and the Examiner has not shown that the recited structure would have been
obvious based on the cited references. The claim states that “adjacent sides
created by . . . removal” of triangular corner sections from a rectangular
piece of material are “stitched together to form [a] pocket” (claim 34).
Contrary to the Examiner’s interpretation of the claims, this claim language
requires that the cut edges (“adjacent sides created by . . . removal”) of the
sides formed by removing triangular sections are directly stitched together,
as shown for example in the Specification’s Figures 1D, 1E, and 1G. The
Appeal 2011-001029
Application 10/773,160

11
Examiner has not shown that the claimed structure would have been obvious
based on the prior art, and therefore has not shown that claim 34 would have
been prima facie obvious.
SUMMARY
We affirm the rejection of claim 20 under 35 U.S.C. § 112, second
paragraph. Claims 21, 22, 24-27, 29-31, and 34 fall with claim 20 because
they were not argued separately. See 37 C.F.R. § 41.37(c)(1)(vii).
We affirm the rejection of claim 20 under 35 U.S.C. § 103(a) based on
Bernard, combined either with Wyant and Siudzinski or with Siudzinski,
Thompson, and Stevens. We also affirm the rejection of claim 22 under 35
U.S.C. § 103(a) based on Bernard, Siudzinski, Thompson, and Stevens.
Claims 21, 24-27, and 29-31 fall with claim 20 because they were not argued
separately. See 37 C.F.R. § 41.37(c)(1)(vii).
We reverse the rejection under 35 U.S.C. § 103(a) of claim 34. This
decision is nonetheless designated an affirmance because claim 34 remains
rejected under 35 U.S.C. § 112, second paragraph.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)..

AFFIRMED

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