Ex Parte Holden

Patent Trial and Appeal Board

Apr 30, 2013

11938609 (P.T.A.B. Apr. 30, 2013)

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
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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

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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claims, stand withdrawn from consideration by the Examiner.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
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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.
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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,
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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
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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).
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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.
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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).
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AFFIRMED
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