Ex Parte Carlozzi

Patent Trial and Appeal Board

Mar 8, 2018

12654241 (P.T.A.B. Mar. 8, 2018)

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.
12/654,241 12/15/2009 Antonella F. Carlozzi 0077282-000001 5183
21839 7590 03/12/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
STEPHENS, JACQUELINE F
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
03/12/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ADIPDOCl@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTONELLA F. CARLOZZI
Appeal 2016-003102
Application 12/654,2411
Technology Center 3700
Before LINDA E. HORNER, MICHAEL L. HOELTER, and
LYNNE H. BROWNE, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1-78, 83-85, 90-92, and 94-113.
Final Office Action (February 12, 2016) (hereinafter “Final Act.”).2 We
have jurisdiction under 35 U.S.C. § 6(b).
1 The inventor is the real party-in-interest. Appeal Brief 2 (July 8, 2013)
(hereinafter “Br.”). The inventor presented arguments pro se at an Oral
Hearing held on February 27, 2018.
2 Claims 1-113 are pending. The Examiner allowed claims 86 and 87 and
objected to claims 79-82, 88, 89, and 93 as being dependent upon a rejected
base claim, and indicated these claims would be allowable if rewritten in
Appeal 2016-003102
Application 12/654,241
The claimed subject matter relates to a feminine undergarment
suitable for wearing in lieu of briefs, panties, or thong underwear to achieve
a sleek or smooth appearance under garments. This undergarment includes a
strapless, coreless web that can be adhered to the skin of the wearer.
Appellant contends that the prior art does not anticipate the claimed
subject matter because the prior art does not disclose an undergarment
having a coreless web. We agree with the Examiner’s determination that the
prior art discloses an embodiment of its absorbent article that is coreless.
For this reason, we do not find error in the Examiner’s rejection.
Appellant presented additional arguments in support of patentability
of various dependent claims over the prior art. For the reasons discussed
below, we do not find error in the Examiner’s rejections of all of the rejected
claims on appeal, except for claim 10. Accordingly, we AFFIRM-IN-
PART.
CLAIMED SUBJECT MATTER
Claims 1, 4, 109, and 113 are the rejected independent claims.
Claim 1 is illustrative of the subject matter on appeal and is reproduced
below.
1. A feminine undergarment consisting essentially of
a strapless, coreless web sized and configured to cover, in use, at
least a wearer’s vulva, wherein the web is pre-adherent to the
skin of the wearer, suitable for contact with human skin and
sufficiently adherent to removably hold the undergarment in
place during use covering the wearer’s vulva.
Br. 11 (Claims Appendix).
independent form including all of the limitations of the base claim and any
intervening claims. Final Act. 11.
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Application 12/654,241
REJECTIONS
The Final Office Action includes the following rejections:
1. Claims 1-78, 83-85, 90-92, and 94-113 stand rejected under
35 U.S.C. § 102(b) as anticipated by Rosenfeld et al.
(US 2006/0058760 Al, published March 16, 2006).* * 3
2. Claims 84, 85, and 103 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Rosenfeld.
ISSUE
Appellant argues the claims subject to the first ground of rejection as a
group, and presents additional arguments for dependent claims 3, 5-7, 10,
22, 23, 45-52, 101, and 102. Br. 4-9. We select claim 1 as the
representative claim for the group, and address the separate arguments for
the above-listed dependent claims below. Appellant does not present any
additional arguments specifically addressing the second ground of rejection
of claims 84, 85, and 103. We understand Appellant to be relying on the
arguments presented against the first ground of rejection in seeking reversal
of the second ground of rejection. As such, the outcome of the appeal of the
second ground of rejection turns on our analysis of the first ground of
rejection and the patentability of representative claim 1.
3 The Examiner also cited Croon et al. (US 3,716,430, issued February 13,
1973) as evidence that natural fibers are absorbent unless treated, and cited
Vinas (US 2008/0071370 Al, published March 20, 2008) as evidence that
the silicone gel disclosed in Rosenfeld is a washable silicone gel. Final
Act. 2; Examiner’s Answer 4 (October 24, 2013) (hereinafter “Ans.”).
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Application 12/654,241
As to claim 1, the Examiner found that Rosenfeld teaches a feminine
undergarment having a strapless, coreless web 20. Final Act. 4 (citing
Rosenfeld ^ 97).
Appellant argues that Rosenfeld does not anticipate the claimed
undergarment because it does not have a “coreless” web. Br. 4. Appellant
states that the Specification defines a “coreless” web to mean that the web
does not have an absorbent pad or filler materials of femcare products, i.e.,
sanitary napkins. Id. (citing Spec. ^ 63). Appellant argues that Rosenfeld’s
article has an absorbent system 44 disposed between a cover layer 42 and a
barrier layer 50, and that this absorbent system 44 is a core. Id. Appellant
acknowledges that Rosenfeld discloses an embodiment in which the
absorbent system 44 is integrated with the cover layer and/or the barrier
layer, so that only a single layer structure or a two-layer structure forms the
article. Id. at 4-5 (citing Rosenfeld ^ 97). Appellant contends that
Rosenfeld’s resulting absorbent article, nonetheless, contains an absorbent
core. Id. at 5. Appellant further contends that the Examiner’s interpretation
of “coreless” web to include an absorbent system is inconsistent with the
Specification and with the interpretation that those skilled in the art would
reach upon reading the Specification. Id.4
4 Appellant also argues that Rosenfeld teaches away. Br. 5-6. This
argument is not pertinent to a rejection based on anticipation. “[WJhether a
reference ‘teaches away’ from [an] invention is inapplicable to an
anticipation analysis.” Clearvalue, Inc. v. Pearl River Polymers, Inc., 668
F.3d 1340, 1344 (Fed. Cir. 2012) (quoting Celeritas Techs., Ltd. v. Rockwell
Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)). Also, this argument
addresses a proposed modification of Rosenfeld to remove the alleged
absorbent core. The Examiner did not propose any such modification to
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Application 12/654,241
The Examiner points out that the Specification indicates the
“coreless” web can be constructed from absorbent materials of a mono-layer
or multi-layer formation, including natural or synthetic fibers including
cotton, flax, cellulose, and wool. Final Act. 2 (citing Spec. 63-64). As
such, the Examiner finds that the claimed “coreless web” includes an
absorbent system. Id. (citing Croon, col 4,11. 59-62 as evidence that natural
fibers such as cotton, other forms of cellulose, and wool are absorbent).* * 5
The issue before us is whether Rosenfeld discloses the undergarment
of claim 1, including a “coreless” web. The additional issues raised by
Appellant for various dependent claims are identified and addressed below.
ANALYSIS
Claim 1
The Specification discloses generally that the web is formed of a
single layer or multiple layers of material, i.e., “a mono-layer web or a
multi-layer web.” Spec. 63-64; see also id. 66 (describing duo-layer
embodiment), 93 (describing non-permeable mono-, duo-, and tri-layer
embodiments). The Specification also describes that the materials used for
one or more layers of the web can be absorbent. Id.
Rosenfeld’s article, either in the rejection based on anticipation or in the
rejection based on obviousness.
5 The Examiner further finds that Appellant fails to meet her burden to show
that the introduction of additional components would materially change the
characteristics of Appellant’s invention such that these additional
components are excluded by the recitation of “consisting essentially of.”
Final Act. 2-3. As it is not clear exactly what “additional components” the
Examiner is referring to here, we do not rely on this reasoning by the
Examiner to support our affirmance.
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Application 12/654,241
The Specification defines a “coreless” web as “not hav[ing] the
absorbent pad or filler materials of femcare products, i.e., sanitary napkins.”
Id. 63. Despite the lack of an absorbent pad or filler materials, the
Specification describes that the “coreless” web may be “absorbent in
nature.” Id. With reference to the Figures, the Specification discloses a
mono-layer web version of a coreless web, formed with a single layer of
material and/or combination of materials 30 forming the web 16. Id. ^ 132,
Fig. 2A. The Specification also discloses a duo-layer web version of a
coreless web, formed with two layers of material and/or combination of
materials 30’ and 31’ forming the web 16’. Id., Fig. 2B.
Common dictionary meanings of “core” include “a central and often
foundational part usually distinct from the enveloping part by a difference in
nature” (Merriam Webster on-line dictionary, www.merriam-
webster.com/dictionary/core (definition 1)), and “[t]he central or innermost
part” (The American Heritage® Dictionary of the English Language,
https://www.ahdictionary.com/word/search.html7q =CORE (definition 1)).
Based on the ordinary meaning of core as referring to the central or
innermost part of something, and based on the description in the
Specification of the coreless web as excluding an absorbent pad or filler
material used in femcare products, we construe “coreless web” to encompass
a web made of one or more layers, where the web does not include an
absorbent material as the central or innermost layer, i.e., enveloped between
additional web layers. For instance, “coreless web” encompasses a web
made of a single layer of absorbent material, a web made of two layers
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Application 12/654,241
having one or both of the layers made of absorbent material, or a tri-layer
web in which the innermost layer is not comprised of absorbent material.
Rosenfeld discloses a sanitary napkin having a fluid permeable cover
layer 42, a barrier layer 50, and an absorbent system 44, the latter of which
may comprise a single layer of material or multiple layers, disposed between
the cover layer and the barrier layer. Rosenfeld ^ 62. Rosenfeld discloses
that absorbent system 44 is a blend or mixture of cellulosic fibers and
superabsorbent disposed in and amongst fibers of that pulp. Id. 84.
Rosenfeld also describes an embodiment in which “absorbent system 44
could be integrated with the cover and/or barrier such that there is essentially
only a single layer structure or a two layer structure including the function of
the multiple layers described herein.” Id. 85; see also id. 97.
We agree with the Examiner that the single layer and two layer
embodiments disclosed in paragraphs 85 and 97 of Rosenfeld do not have a
core, and thus the material in these embodiments form a coreless web.
Appellant fails to distinguish structurally this single layer embodiment of the
prior art with the claimed “coreless web.” Thus, Appellant has not identified
an error in the Examiner’s rejection of claim 1.
For these reasons, we sustain the rejection of independent claim 1 as
anticipated by Rosenfeld. Claims 2, 4, 8, 9, 11-22, 24^14, 53-78, 83-85,
90-92, 94-100, and 103-113 fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
For these same reasons, we likewise sustain the rejection of claims 84, 85,
and 103 under 35 U.S.C. § 103(a) as unpatentable over Rosenfeld.
We now turn to the additional arguments for patentability of various
dependent claims over Rosenfeld.
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Claim 3
Claim 3 depends from claim 1. Claim 3 recites, “wherein the web
comprises a washable and reusable silicone material that is inherently
adhesive to human skin.” Br. 11 (Claims Appendix). Appellant argues that
Rosenfeld does not describe the absorbent article, or any layer of the article,
is a “web comprising a washable and reusable silicone material.” Br. 6.
Appellant contends that paragraph 73, relied upon by the Examiner,
discloses various adhesives that can be used on the top surface of the
absorbent article for attaching the absorbent article to the body. Id.
The argument implicitly asks us to assign a meaning to the word
“web” that distinguishes the claimed structure over the silicone adhesive of
the prior art. We turn to the Specification to examine its use of the term
“web.” The Specification describes that the “web” includes “fabric, film,
mesh, molded or otherwise formed or unformed panel or piece (including
multi-piece) material or the like.” Spec. ^ 6. The Specification describes
that in an exemplary embodiment, “both the web and the adhesive comprise
silicone material” and that the “undergarment” optionally can be “formed
entirely or essentially entirely of silicone material(s).” Id. ^ 65. The
Specification also describes that the silicone material may be “an essentially
flat sheet of flexible silicone material forming all or a portion of the web” or
a “preconfigured, molded body of silicone material.” Id. We construe
“web” in light of the Specification to encompass a multi-layer structure in
which one of the layers comprises a silicone film or sheet, or silicone that is
otherwise formed onto the remaining layers of the structure.
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Application 12/654,241
Rosenfeld discloses a body attachable embodiment in which an
adhesive 33 for securing the article to the body of a user is applied to the
body facing surface 45 of the cover 42. Rosenfeld 63. Paragraphs 64-73
of Rosenfeld describe various adhesives that may be employed in the article.
Specifically, Rosenfeld describes that the adhesive could include silicone
gels. Id. 73.
Based on the above findings, we understand Rosenfeld to disclose a
silicone gel applied as a layer on the body facing side of the article. The
definition of “web” in Appellant’s Specification, as discussed above, is
broad enough to encompass a layer of adhesive silicone that is applied to the
other web layers as forming part of the web. Regarding the recitation to
“washable,” the Examiner states, “Rosenfeld in paragraph 0073 teaches a
silicone gel such as Silgel 612 from Wacker Silicones. This is a washable
silicone gel as taught in Vinas.” Ans. 4 (citing Vinas 8, 47, 50, 64).
Regarding the recitation to “reusable,” Appellant does not make clear how
Rosenfeld’s product cannot be reused in a like manner.”
For these reasons, we sustain the rejection of dependent claim 3 as
anticipated by Rosenfeld.
Claims 5 and 101
Appellant argues claims 5 and 101 as a subgroup. Br. 6-7. We select
claim 5 as representative of the subgroup, and claim 101 stands or falls with
claim 5. 37 C.F.R. § 41.37(c)(l)(iv). Claim 5 depends from claim 4.6 * * 9
6 Independent claim 4 recites,
4. An undergarment consisting essentially of:
- a strapless, coreless web having an anterior end, a posterior
end, a body side and an outside, wherein the web is sized and
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Claim 5 recites, “wherein the web comprises cloth, paper, silicone,
hydrocolloid, or a combination of any of them.” Br. 11 (Claims Appendix).
Appellant argues that paragraph 87 of Rosenfeld, upon which the
Examiner relied for anticipation of claim 5, describes the absorbent system
of Rosenfeld and is irrelevant to the subject matter of claim 5, because the
claimed invention does not contain an absorbent core. Br. 7. Paragraph 87
of Rosenfeld discloses the components of absorbent core 44 include
cellulosic fibers and superabsorbent polymers. Rosenfeld earlier described
that cellulosic fibers can include wood pulp, cotton, flax, and peat moss.
Thus, Rosenfeld’s absorbent system 44 comprises cloth (i.e., cotton) or
paper (i.e., wood pulp).
Appellant’s argument that the discussion of Rosenfeld’s absorbent
system is irrelevant to claim 5 because the claimed invention does not
contain an absorbent core is unavailing because it fails to account for the
disclosure in Rosenfeld of a single layer, coreless embodiment in which the
absorbent system 44 is integrated with the cover layer and the barrier layer.
See Rosenfeld 85, 97. Thus, for the same reasons discussed above in the
analysis of claim 1, Appellant has not identified error in the rejection of
claim 5. Accordingly, we sustain the rejection of claim 5 as anticipated by
Rosenfeld. Claim 101 falls with claim 5.
configured between the anterior end and the posterior end to
cover, in use, at least a wearer’s vulva; and
- pre-applied adhesive on the body side of the web, suitable
for contact with human skin to removably hold the
undergarment in place during use covering a female wearer’s
vulva.
Appeal Br. 11 (Claims Appendix).
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Application 12/654,241
Claims 6 and 101
Appellant argues claims 6 and 101 as a subgroup. Appeal Br. 7. We
select claim 6 as representative of the subgroup, and claim 101 stands or
falls with claim 6. 37 C.F.R. § 41.37(c)(l)(iv). Claim 6 depends from
claim 4. Claim 6 recites, “wherein the web comprises cotton, flax, rayon,
polyester, nylon, spandex, sponge, foam, lycra, fabric, woven material,
unwoven material, high twist cotton elastic cloth, fibers, thermoplastic film,
polyurethane, gel, viscous medium, gauze, twill, burlap, hemp, weave, silk,
wool, natural plant material, canvas, denim, natural materials, seaweed,
algae, medical foam, or a combination of any of them.” Br. 11 (Claims
Appendix). Appellant argues that paragraph 83, upon which the Examiner
relies, relates to attachment between cover layer 42 and absorbent system 44,
and does not disclose the claimed material for a web. Appellant argues that
paragraph 84, upon which the Examiner also relies, describes material for
the absorbent system of Rosenfeld and does not disclose the features of
claim 6. Br. 7.
Paragraph 84, similar to paragraph 87 discussed above, describes that
the absorbent system 44 is a blend of cellulosic fibers and superabsorbent.
For the same reasons discussed above in the analysis of claim 5, we find that
the disclosure of cellulosic fibers anticipates the claimed web materials.
Further, for the same reasons discussed above in the analysis of claim 5,
Appellant’s argument that Rosenfeld’s disclosure of materials for absorbent
system 44 is irrelevant to the claimed subject matter is unavailing.
Accordingly, we sustain the rejection of claim 6 as anticipated by Rosenfeld.
Claim 101 falls with claim 6.
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Claims 7 and 102
Appellant argues claims 7 and 102 as a subgroup. Br. 8. We select
claim 7 as representative of the subgroup, and claim 102 stands or falls with
claim 7. 37 C.F.R. § 41.37(c)(l)(iv). Claim 7 depends from claim 4. Claim
7 recites, “wherein the web comprises silicone, hydrocolloid, or a
combination of both material and the pre-applied adhesive comprises a
silicone, hydrocolloid, or a combination of both.” Br. 12 (Claims
Appendix). Appellant argues that paragraph 85, upon which the Examiner
relies, relates to a structural feature of absorbent system 44, and does not
relate to the material for the cover layer or adhesive and does not teach the
features of claim 7. Br. 8. The Examiner admitted to a typographical error
in the Final Action, and corrected the findings in the Answer to cite to
paragraphs 84 and 86 to teach a hydrocolloid for the web, and paragraphs 73
and 74 to teach a silicone pre-applied adhesive. Ans. 5.
Appellant did not avail herself of the option of filing a Reply Brief
and did not challenge these findings made by the Examiner in the Answer.
For the reasons discussed above with reference to claim 3, we agree with the
Examiner’s finding that Rosenfeld teaches a silicone pre-applied adhesive.
As such, Appellant has not identified any error with the rejection, as
clarified in the Examiner’s Answer. For this reason, we sustain the rejection
of claim 7 as anticipated by Rosenfeld. Claim 102 falls with claim 7.
Claim 10
Claim 10 depends from claim 4. Claim 10 recites, “wherein the pre­
applied adhesive comprises a first adhesive on at least a first area of the
body-side surface of the web and a second adhesive, different from the first
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Application 12/654,241
adhesive, on at least a second surface area of the web.” Br. 12 (Claims
Appendix). Appellant argues that the embodiment described and depicted in
Figures 1 and 3 of Rosenfeld does not disclose adhesive on the body facing
side of the absorbent article. Br. 8-9. We agree with Appellant’s argument.
Figure 3 of Rosenfeld shows several areas of the garment facing side, not the
body facing side, of the absorbent article covered with adhesive 58.
The Examiner responded that Rosenfeld teaches adhesive 33 for
securing the article to the body of a user and adhesive 58 for securing the
article to a pair of panties. Ans. 5 (citing Rosenfeld 9, 63, 115).
Although the Examiner is correct that Rosenfeld teaches adhesive 33 on the
body facing side of the absorbent article, it does not appear to disclose a
single embodiment that uses adhesive on an area of a body facing side of the
article and a different adhesive on another area of a surface of the article.
In particular, Figure 3 shows a bottom plan view of an embodiment in
which the article has various areas covered by adhesive 58 on its garment
facing side. Figure 7 shows a top perspective view of another embodiment
in which the article has a single area covered by adhesive 33 on its body
facing side. We did not find, and the Examiner did not direct us to, an
embodiment disclosed in Rosenfeld that includes adhesive on both sides of
the same article, or that includes different adhesives used in different areas
to include one area of adhesive on a body facing side of the article.
For these reasons, we do not sustain the rejection of claim 10 as
anticipated by Rosenfeld.
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Claims 22, 23, 45-52
Appellant argues claims 22, 23, and 45-52 as a subgroup. Br. 9. We
select claim 22 as representative of the subgroup, and claim 23 and 45-52
stand or fall with claim 22. 37 C.F.R. § 41.37(c)(l)(iv). Claim 22 depends
from claim 4. Claim 22 recites, “wherein the strapless, coreless web
comprises at least a first extension between the anterior end and the posterior
end, carrying at least a portion of the pre-applied adhesive[.]” Br. 13
(Claims Appendix).
Appellant acknowledges that Figure 7 of Rosenfeld illustrates an
embodiment where adhesive 33 is applied to the body facing surface 45 of
the cover 42, but argues that Rosenfeld does not specifically disclose the
locations of the adhesive as recited in claims 22, 23, and 45-52. Br. 9. The
Examiner responds that “Figures 7-9 show adhesive 33 located between the
anterior and posterior ends of the absorbent.” Ans. 5.
The Examiner appears to be construing “extension” to encompass an
extent of the web that lies between the anterior end and posterior end. The
Specification describes a variety of different “extensions” of the web,
including longitudinal, lateral and/or angled extensions, e.g., one or more
side, anterior, and/or posterior tabs, such as lateral extensions between the
anterior and posterior ends. Spec. ^ 119. The claim recites “extension”
generally and is not limited to any particular extension provided as an
example in the Specification. For instance, the claimed “extension” is not
restricted to any particular portion between the anterior end and the posterior
end, such as a lateral extension. The claim language also does not employ
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the language of the Specification of a “tab” that extends beyond a defined
portion of the remainder of the web.
As such, we do not find the Examiner’s interpretation of “extension,”
as encompassing the location of the adhesive 33 in Figure 7 between the
anterior end and the posterior end of the article, to be unreasonably broad.
For this reason, we sustain the rejection of claim 22 as anticipated by
Rosenfeld. Claims 23 and 45-52 fall with claim 22.
DECISION
The decision of the Examiner rejecting claims 1-9, 11-78, 83-85, 90-
92, and 94-113 is affirmed.
The decision of the Examiner rejecting claim 10 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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