Ex Parte Helmfridsson et al

Patent Trial and Appeal Board

Nov 27, 2012

11980540 (P.T.A.B. Nov. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte BROR-INGE HELMFRIDSSON and KEN OLSSON

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Appeal 2011-006767
Application 11/980,540
Technology Center 3700
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Before JEFFREY N. FREDMAN, STEPHEN WALSH, and
JOHN G. NEW Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-006767
Application 11/980,540

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SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1-20 as unpatentable under 35 U.S.C.
§ 103(a). Claims 1 and 3-20 are rejected under 35 U.S.C. § 103(a) as being
obvious over Sherrod et al. (US 5,558,659, September 24, 1996)
(“Sherrod”). The Examiner additionally rejected claim 2 as being obvious
over the combination of Sherrod and Roslansky et al. (US 6,371,950 B1,
April 16, 2002).
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

STATEMENT OF THE CASE
Appellants’ invention is directed to an incontinence protector for
males intended for disposable use, including a fastening pocket for
fastening the genitalia during use. Abstract.

GROUPING OF CLAIMS

Claims 2-20 depend from claim 1, and we therefore select
independent claim 1 as representative of this group. Claim 1 recites:
1. An incontinence protector for males, comprising a
front transverse edge facing forwards during use, a rear
transverse edge facing rearwards during use, a length of the
front transverse edge being greater than a length of the rear
transverse edge, two longitudinal edges, an upper liquid-
permeable casing layer, a lower backing layer, an absorption
body disposed between the liquid-permeable casing layer and
the backing layer, and a substantially non-absorbent material
layer disposed on a side of the liquid-permeable casing layer
which is oriented away from the absorption body, a periphery
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of the material layer being connected to at least one of the
liquid-permeable casing layer or the backing layer along the
rear transverse edge and along or adjacent the two longitudinal
edges, wherein the material layer has a front transverse edge,
the front transverse edge being free, wherein a pocket is formed
between the material layer and the liquid-permeable casing
layer and wherein an opening of the pocket is disposed at the
front transverse edge of the material layer.

App. Br. App’x A-1.

ISSUE
Appellants argue that the Examiner erred in finding that claim 1 is
unpatentable under 35 U.S.C. § 103(a) as being obvious over Sherrod.
App. Br. 9. Specifically, Appellants argue that the Examiner erred because
the Examiner finds that the front end 40 of Sherrod’s article 20 corresponds
to the rear transverse edge of the claimed invention and that Sherrod’s back
end 42 corresponds to the front transverse edge of the claimed invention.
Furthermore, Appellants argue that the Examiner erred in finding that
Sherrod’s opening 92 corresponds directly to the opening of the pocket
(which attaches at its fixed end to the rear transverse edge) in the claimed
invention. App. Br. 17. We are thus presented with the issue of whether
the evidence of record supports the Examiner’s finding that the front end 40
of Sherrod’s article 80 corresponds to the rear transverse edge of the
claimed invention and that the back end 42 corresponds to the front
transverse edge of the claimed invention.

ANALYSIS
Appellants argue that the Final Rejection of claim 1 requires an
interpretation of Sherrod’s article that is directly contrary to the express
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disclosure of Sherrod and an interpretation of the claimed invention that is
directly contrary to the claim language. App. Br. 10. According to
Appellants, the “front” in both Sherrod and the claimed invention is the
abdomen end and the “back” or “rear” in both Sherrod and the instant
application is the crotch end, positioned behind the scrotum and adjacent to
the perineum. App. Br. 10-11. Appellants dispute the Examiner’s conclusion
that that it would have been obvious to modify Sherrod's article 80 so that the
length of the crotch end (back end 42 in Sherrod, allegedly corresponding to
the claimed invention’s “front transverse edge”) is greater than the length of
the abdomen end (front end 40 in Sherrod, allegedly corresponding to the
claimed “rear transverse edge”). App. Br. 11. According to Appellants, such
a modification would have rendered the claimed invention unsuitable for its
intended purpose by: (a) undesirably increasing the size of the claimed
invention positioned between the legs of the wearer, thus sacrificing
comfort of the wearer; and (b) widening the crotch end (back end 42) of the
claimed invention would create a product that is subject to bunching and
twisting during use, which Appellants allege is contrary to the teachings of
Sherrod. App. Br 12.
Appellants also contend that the Examiner erred in finding that
Sherrod’s compartment 88 reads directly upon the pocket of the claimed
invention and that Sherrod’s opening 92 corresponds to the claimed
opening. App. Br. 17. According to Appellants, the front edge of Sherrod’s
retaining member 82 is fixed at its first end 88 to the front end 40 of the
absorbent article 80 and therefore, the “front” edge of the retaining member
82 is not free. Id. (citing Sherrod, col. 11, ll. 19-20).
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The Examiner answers that Sherrod teaches that the dimensions of
the article can vary depending on desirability (Ans. 8 (citing Sherrod, col. 5,
ll. 43-47)), and therefore, it would have been obvious to one having
ordinary skill in the art at the time the invention was made [to make] the
length of the edge associated with the scrotum greater than the length of the
edge associated with the penis to conform dimensions of the appropriate
anatomical structures. Ans. 8. Furthermore, the Examiner finds that “how
the article is to be w[o]rn is the matter of the intended use of the article and
the wearer's preferences. Since the device can be used both for protection
of genitalia and for enhancing the circulation in the gr[o]in area, it would
have been obvious to one having ordinary skill in the art at the time the
invention was made to wear the device of Sherrod either way depending on
the intend of the wearer.” Id.
We are not persuaded by the Examiner’s reasoning. The Examiner’s
rejection of the claim relies upon equating the “front transverse edge facing
forwards during use” recited in claim 1 with the back end 42 of Sherrod and
equating claim 1’s “rear transverse edge facing rearwards” with the front
edge 40 disclosed by Sherrod. Final Rejection 5. However, as Appellants
point out, Sherrod explicitly teaches that: “The article 80 is positioned on a
male torso 150 such that the front [end] 40 is toward the front of the wearer
and the back end 42 is adjacent [to] the perineum.” Sherrod Fig. 7, col. 11,
ll. 60-63; see also App. Br. 10. We therefore cannot accept the Examiner’s
aberrant definition that the back end 42 disclosed by Sherrod corresponds to
the “front transverse edge facing forwards during use” recited in claim 1.
Rather, we find that the broadest reasonable interpretation of Sherrod and
the language of claim 1 identifies the front end 40 of Sherrod as
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corresponding to claim 1’s recited “front transverse edge facing forwards
during use.” Similarly, we find that the back end 42 disclosed by Sherrod
corresponds to the “rear transverse edge facing rearwards” recited in claim
1. See, e.g., In re Buszard, 504 F.3d 1364, 1366-67 (Fed. Cir. 2007).
As Appellants indirectly admit, such an interpretation results in
Sherrod reading directly upon the limitation of claim 1 reciting “the front
transverse edge being greater than a length of the rear transverse edge”
because Sherrod also teaches that “[r]egardless of the width of the moisture
barrier 22 … the Resulting Width of the absorbent article 20 desirably
narrows toward the back end 42.” Reply Br. 5 (citing Sherrod, col. 5, ll. 43-
46); see also Sherrod, col. 8, ll. 34-39 (“[I]t is desirable for the front elastic
member 66 to provide a reduced amount of transverse gathering force as
compared to the transverse gathering member 32, which is located along the
back end 42. As a result, the article 20 has a Resulting Width that narrows
toward the back end 42”). We therefore find that, contrary to the
Examiner’s conclusion, it would not have been obvious to an artisan of
ordinary skill in the contemporaneous art to make the length of the edge
associated with the scrotum greater than the length of the edge associated
with the abdomen, because Sherrod teaches away from such a conclusion.
See, e.g., In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (A reference
teaches away when “a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.”).
We therefore find that Sherrod discloses or suggests the limitation of
claim 1 reciting “a front transverse edge facing forwards during use, a rear
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transverse edge facing rearwards during use, a length of the front transverse
edge being greater than a length of the rear transverse edge.”
That is not, however, the end of our analysis. Appellants argue that
the Examiner finds that Sherrod’s compartment 86 corresponds to the
opening claimed by the limitation of claim 1 reciting “wherein an opening
of the pocket is disposed at the front transverse edge of the material layer.”
Claim 1; see also App. Br. 17. Appellants argue that the front edge of the
retaining member 82 disclosed in Sherrod is fixed at its first end 88 to the
front end 40 of the absorbent article 80. Sherrod col. 11, ll. 19-20; see also
App. Br. 17. Consequently, Appellants contend, the “front” edge of the
retaining member 82 is not free; rather, any free transverse edge of the
retaining member 82 in Sherrod is the second end 90 of the retaining
member 82. App. Br. 17 (citing Sherrod, Fig. 7).
We are persuaded by Appellants’ reasoning. Fig. 7 of Sherrod
clearly depicts that the pocket formed is affixed laterally to the front end 40
of the device and the free back-end 92 portion of the pocket flap faces the
back end 42 of the device. See also Sherrod, col. 10, ll. 65-67, col. 11, ll. 9-
24. Appellants’ Figs. 1 and 2 depict the pocket as being affixed laterally at
the rear transverse edge of the claimed invention with an “opening of the
pocket is disposed at the front transverse edge of the material layer” as
recited in claim 1. We therefore find that Sherrod does not disclose or
suggest the limitation of claim 1 reciting “wherein an opening of the pocket
is disposed at the front transverse edge of the material layer.”
Claims 2-20 are all dependent upon claim 1. Because we reverse the
Examiner’s finding of obviousness with respect to independent claim 1, we
likewise reverse the Examiner’s Final Rejection of claims 2-20.
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DECISION
We reverse the rejection of claims 1 and 3-20 under 35 U.S.C. §
103(a) as being obvious over Sherrod. We reverse the rejection of claim 2
as being obvious over the combination of Sherrod and Roslansky.

REVERSED

alw