Ex Parte HoldenDownload PDFPatent Trial and Appeal BoardApr 30, 201311938609 (P.T.A.B. Apr. 30, 2013) Copy Citation 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. 11/938,609 11/12/2007 Perriann M. Holden 810103-2 4319 33651 7590 04/30/2013 JERRY RICHARD POTTS 3248 VIA RIBERA ESCONDIDO, CA 92029 EXAMINER HOEY, ALISSA L ART UNIT PAPER NUMBER 3765 MAIL DATE DELIVERY MODE 04/30/2013 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 PERRIANN M. HOLDEN ________________ Appeal 2011-003056 Application 11/938,609 Technology Center 3700 ________________ Before TERRY J. OWENS, MURRIEL E. CRAWFORD, and ANTON W. FETTING, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-003056 Application 11/938,609 2 STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 14-25. Claims 10-13, which are all of the other pending claims, stand withdrawn from consideration by the Examiner. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellant claims a novelty fashion wear item. Claim 14 is illustrative: 14. A novelty fashion wear item, comprising: a perspiration barrier; a waterproof adhesive disposed on one side of said perspiration barrier, wherein said waterproof adhesive is a skin compatible adhesive; an anchoring adhesive disposed on another side of said perspiration barrier; a peel sheet disposed on said waterproof adhesive; and another peel sheet disposed on said anchoring adhesive; whereby said another peel sheet can be removed by a user for attaching a fashion wear item to said perspiration barrier via said anchoring adhesive; and whereby said peel sheet can be removed by the user for attaching said fashion wear item and said perspiration barrier to a user selected body part for fashion decoration purposes. The References Scholl US 2,633,440 Mar. 31, 1953 Morera US 4,602,390 Jul. 29, 1986 Hochfeld US 5,551,612 Sep. 3, 1996 Appeal 2011-003056 Application 11/938,609 3 The Rejections The claims stand rejected under 35 U.S.C. § 103 as follows: claims14, 22 and 23 over Hochfeld in view of Scholl and claims 15-21, 24 and 25 over Hochfeld in view of Scholl and Morera.1 OPINION We affirm the rejections. Rejection of claims 14, 22 and 23 over Hochfeld in view of Scholl Claim 14 The Appellant’s claim 14 claims “[a] novelty fashion wear item” and the body of the claim recites that “said another peel sheet can be removed by a user for attaching a fashion wear item to said perspiration barrier via said anchoring adhesive”. We therefore interpret the claim as including a fashion wear item and the recited five layer structure (perspiration barrier, waterproof adhesive, peel sheet on the waterproof adhesive, anchoring adhesive and another peel sheet on the anchoring adhesive) prior to the another peel sheet being removed from the anchoring adhesive. Interpreting claim 14 in that manner, rather than interpreting it as including only the five layer structure as argued by the Appellant (Br. 22-23), permits claim 14’s dependent claims 15-21, which are directed toward the fashion wear item, to further limit claim 14. 1 The Examiner omits claim 21 from the statement of the rejection over Hochfeld in view of Scholl and Morera (Ans. 7). Because claim 21 is included in the discussion of that rejection (Ans. 8), that omission appears to be inadvertent. We therefore consider claim 21 to be rejected over Hochfeld in view of Scholl and Morera. Appeal 2011-003056 Application 11/938,609 4 Hochfeld discloses “a readily available stick-on condom package which, once adhered to the body, can be easily removed, but which will not be washed off, for example, in a shower or bath, and which will not come off the body when subjected to perspiration or other moisture” (col. 1, ll. 29- 34). To adhere the package to the body, the package can include a waterproof, double coated adhesive tape or sheet, such as 3M medical tape no. 1509, comprising a flexible polyethylene film (22) coated with adhesive (24, 26) on both of its sides (col. 3, l. 39 – col. 4, l. 1). The outer adhesive layer (26) can be covered by a conventional release layer (18) (col. 3, ll. 23-25; Fig. 3). The adhesive tape or sheet also can be stuck to clothing (col. 4, ll. 61-65). Hochfeld does not disclose a release layer on the inner adhesive layer (24). Scholl discloses “a double-face adhesive tape and a protective cover therefor, the tape being highly desirable for use in connection with the attachment of articles of apparel, make-up devices, and other items to the human body” (col. 1, ll. 1-6). The tape comprises “a body of woven elastic or stretchable fabric, having an adhesive application on both sides thereof” (col. 2, ll. 12-14). When the tape is in flat strip form both adhesive layers are covered by a temporary protective layer (10, 11) (col. 4, ll. 5-11; Fig. 4), but when the tape is in roll form only the outer adhesive layer is covered by a temporary protective layer (11) (col. 4, ll. 13-22, 38-42; Fig. 6). The Appellant argues that it would not be possible to place a protective cover over Hochfeld’s inner adhesive layer (24) because it is permanently attached to the package (Br. 20-23). When Hochfeld’s package is adhered to the body using a commercially-available double coated medical tape (col. 3, l. 58 – col. 4, Appeal 2011-003056 Application 11/938,609 5 l. 1), that tape exists in independent form prior to one of its adhesive layers being attached to the package. As indicated by Scholl (col. 4, ll. 5-11), when a double coated adhesive tape is in flat strip form both adhesive layers need to be covered by a temporary protective layer to prevent them from sticking to surfaces other than the desired surface. Thus, one of ordinary skill in the art, through no more than ordinary creativity, would have covered with temporary protective layers both adhesive layers of a flat-strip-form double coated adhesive tape used to adhere Hochfeld’s package to skin. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (In making an obviousness determination one “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”). Accordingly, we are not persuaded of reversible error in the rejection of claim 14. Claims 22 and 23 The Appellant argues that Hochfeld discloses only one type of adhesive whereas the Appellant’s claim 22 requires two different types of adhesive (Br. 25). The Appellant’s claim 22 requires that one of the adhesives is a laminating adhesive having high peel-bond strength and high temperature tolerance and the other adhesive is an acrylate adhesive. The Appellant, however, does not define “high peel-bond strength” or “high temperature tolerance” at all, let alone in a manner that excludes acrylate adhesives. Thus, it appears that both of claim 22’s adhesive layers can be a high peel- bond strength, high temperature tolerance acrylate adhesive and that the Appeal 2011-003056 Application 11/938,609 6 acrylate adhesive can be the adhesive in Hochfeld’s 3M tape number 1509. 2 Moreover, the recitation in claim 22’s dependent claim 23 that both adhesive layers are water resistant laminating adhesives further indicates that the same adhesive can be used in both adhesive layers. The Appellant argues that what Hochfeld attaches to the skin is a condom package, not a fashion wear item (Br. 25). “‘[D]uring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.’” In re Translogic Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). Hochfeld’s condom package can be worn on an exposed body part and can include a decorative design (11) (col. 3, ll. 35-37; col. 4, ll. 61-63). The Appellant does not define “fashion wear item” in any manner that excludes Hochfeld’s decorative condom package. Thus, the Appellant has not shown reversible error in the rejection of claim 22.3 Rejection of claims 15-21, 24 and 25 over Hochfeld in view of Scholl and Morera The Appellant separately argues claims 15, 17, 18 and 21 but provides no substantive argument as to the separate patentability of claims 16, 19, 20, 24 and 25 (Br. 30-34). We therefore limit our discussion to claims 15, 17, 2 According to 3M’s website, 3M tape number 1509 is a “Tack, Acrylic” adhesive for “Adhesion to skin, Adhesion to Substrate”. 3 The Appellant mentions the claim 22 requirement that the perspiration barrier is made of polyurethane, but the Appellant provides no substantive argument as to why polyurethane would have been unobvious over Hochfeld’s polyethylene (col. 3, l. 63) (Br. 23). Appeal 2011-003056 Application 11/938,609 7 18 and 21. Claims 16, 19, 20, 24 and 25 stand or fall with the claim we address from which they depend. See 37 C.F.R. § 41.37(c)(1)(vii) (2007). Claim 15 Morera discloses a pocket that can be releasably adhered to clothing by a self-adhesive layer (col. 1, ll. 8-12, 38-41; col. 3, ll. 1-4). The Appellant argues that one of ordinary skill in the art would not have attached Morera’s pocket to skin because there would be no perspiration barrier and, therefore, perspiration would prevent the pocket from sticking to the skin (Br. 30-31). “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Appellant has not established that Hochfeld’s polyethylene film (col. 3, l. 63) would not function as a perspiration barrier such that Morera’s pocket, when substituted for Hochfeld’s package, would stick to skin. Hence, we are not convinced of reversible error in the rejection of claim 15. Claim 17 The Appellant points out that Morera’s exemplified pocket (col. 2, ll. 38-40; Fig. 4) is made of superimposed layers rather than a single piece of construction material (Br. 32). The Appellant, however, does not argue that making Morera’s pocket out of a single piece stitched only on its sides instead of two pieces stitched both on their sides and bottom would have been unobvious to one of ordinary skill in the art. Appeal 2011-003056 Application 11/938,609 8 Consequently, we are not persuaded of reversible error in the rejection of claim 17. Claim 18 The Appellant argues that Morera’s Figure 4 does not show an elongated strip extending from the right side to the left side of the pocket (Br. 18). Morera discloses that the pocket can be closed by a strip of velvet (11c) or a similar material (col. 3, ll. 30-34) and indicates that the strip extends from one side to the other side of the pocket (Fig. 4). Thus, the Appellant has not shown reversible error in the rejection of claim 18. Claim 21 The Appellant asserts that “Morera et al. does not disclose nor suggest such a pocket hem construction” (Br. 34). The Examiner’s argument that one of ordinary skill in the art would have used a hem construction to hide the seams when making Morera’s pocket (Ans. 8) is reasonable and is unchallenged by the Appellant. Accordingly, we are not convinced of reversible error in the rejection of claim 21. DECISION/ORDER The rejections under 35 U.S.C. § 103 of claims 14, 22 and 23 over Hochfeld in view of Scholl and claims 15-21, 24 and 25 over Hochfeld in view of Scholl and Morera are affirmed. It is ordered that the Examiner’s decision 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). Appeal 2011-003056 Application 11/938,609 9 AFFIRMED bar Copy with citationCopy as parenthetical citation