Ex Parte Nguyen et al

Patent Trial and Appeal Board

Jul 26, 2017

13718427 (P.T.A.B. Jul. 26, 2017)

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.
13/718,427 12/18/2012 KC NGUYEN A0269 1339
99653 7590 07/28/2017
Moser TahnaHa / An sell T imiterl
EXAMINER
1030 Broad Street HARRIS, RAYMOND EUGENE
Suite 203
Shrewsbury, NJ 07702 ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
07/28/2017 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):
docketing@mtiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KC NGUYEN, BENG SIM CHUAH, ADELINE AI LIN KUNG,
MATTHEW STEVEN GROSKORTH, and
CHAYAPORN PONGTHANOMSAK
(Applicant: ANSELL LIMITED)
Appeal 2017-008513
Application 13/718,427
Technology Center 3700
Before JENNIFER D. BAHR, ARTHUR M. PESLAK, and
SEAN P. O’HANLON, Administrative Patent Judges.
O’HANLON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-008513
Application 13/718,427
STATEMENT OF THE CASE
Ansell Limited (Appellant) appeals under 35U.S.C. § 134 from the
Examiner’s July 14, 2016 final decision (“Final Act.”) rejecting claims 1, 2,
5—8, and 21—27.1 We have jurisdiction over this appeal under 35 U.S.C.
§ 6(b).
We AFFIRM but denominate the affirmed rejections as NEW
GROUNDS OF REJECTION.
SUMMARY OF THE INVENTION
Appellant’s disclosure is directed to “a condom having raised features
and surface textures in various designs and patterns.” Spec. 12. Claim 1 is
the sole independent claim and is reproduced below from page 23 (Claims
Appendix) of the Appeal Brief:
1. A condom, comprising:
an open end;
a closed end; and
a tubular sheath extending from the open end to the
closed end, comprising:
a first elastomeric layer having a first color,
an inner elastomeric coating attached along an
entire inner surface of the first elastomeric layer, wherein the
inner elastomeric coating has a second color that is different
from the first color of the first elastomeric layer, and
a plurality of diamond-shaped raised features
disposed on an outer surface of the first elastomeric layer, the
plurality of diamond-shaped raised features defining a top
surface and gaps defining a base surface between the diamond­
shaped raised features, wherein the difference in color between
the first elastomeric layer and the inner elastomeric coating
1 Claims 3, 4, and 9-20 are canceled. Appeal Br. 23—24 (Claims App.).
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Application 13/718,427
imparts additional contrast to the top surface relative to the base
surface.
REJECTIONS
Claims 1, 2, 6, 8, and 23 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wilk (US 5,284,159, issued Feb. 8, 1994), Povlacs
(US 3,809,090, issued May 7, 1974), and Turner (US 2006/0048784 Al,
published Mar. 9, 2006).
Claims 5, 7, 21, and 22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wilk, Povlacs, Turner, and Haines (US 4,852,586,
issued Aug. 1, 1989).
Claims 24—27 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wilk, Povlacs, Turner, and Mistier (US 2011/0041856
Al, published Feb. 24, 2011).
ANALYSIS
Rejection Based on Wilk, Povlacs, and Turner
The Examiner finds that Wilk discloses a two-layer condom
substantially as recited in claim 1, including, inter alia, a first elastomeric
layer having a first color (outer condom 22)2 and an inner elastomeric
coating (inner condom 26) attached along an entire inner surface of the first
elastomeric layer and having a second color. Final Act. 2—3.
The Examiner finds that Wilk does not disclose a plurality of raised
features or the difference in the color of the layers imparting additional
contrast to the top surface of the raised features relative to the base surface
2 Parentheticals refer to the terminology of the cited references.
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Application 13/718,427
thereof. Id. at 3. The Examiner finds that Povlacs discloses a condom
having a plurality of raised features (projections 18) disposed on an outer
surface thereof, and reasons that it would have been obvious to one of
ordinary skill to include such a plurality of raised features on Wilk’s condom
to provide a friction generating contour. Id. at 3^4.
The Examiner finds that Wilk, as modified by Povlacs, does not
disclose diamond-shaped raised features. Id. The Examiner finds that
Turner discloses a two-layer condom having a plurality of diamond-shaped
raised features (projections 20), and reasons that it would have been obvious
to one of ordinary skill to include such a plurality of diamond-shaped raised
features on Wilk’s (modified) condom to provide further enhanced tactile
stimulus transmission to the user of the condom. Id. at 4—5.
Appellant traverses, presenting several arguments regarding the
difference in color of the first layer and inner coating yielding additional
contrast between the top and base surfaces. See, e.g., Appeal Br. 7
(“Nothing in Wilk teaches or describes that the difference in color between
the first elastomeric layer and the inner elastomeric coating imparts
additional contrast to the top surface relative to the base surface.”), 8 (“only
if there is a break in the outer condom [does] Wilk teach[] that the
differently] colored inner condom can be seen” (emphasis omitted)), 9
(“Wilk teaches away from the use of raised features defining a top surface
and gaps defining a base surface between the diamond-shaped raised
features, wherein the difference in color between the first elastomeric layer
and the inner elastomeric coating imparts additional contrast to the top
surface relative to the base surface.”).
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Regarding the “additional contrast” recitation, the Examiner reasons
that the increased thickness of Wilk’s condom due to the added projections
will impart additional contrast to the top surface of the projections because
contrast is a property of the color of the material. Ans. 3. The Examiner
explains that “the first elastomeric layer. . . imparts additional contrast to the
top surface of said projections as the material at these locations is thicker
than the material at the base surface thereof.” Id.
In essence, the Examiner is relying on a theory of inherency to
determine that the increased thickness of the projections necessarily provides
contrast to the distal ends thereof (corresponding to the recited top surface)
relative to the proximal ends thereof (corresponding to the recited base
surface). Such additional contrast, however, does not necessarily result from
an increased thickness. Rather, it is dependent upon a number of factors,
including, for example, thickness of the outer condom, the particular colors
of the inner and outer condoms, and the material of the outer layer. Thus,
the Examiner has not established, by a preponderance of the evidence, that
Wilk, as modified by Povlacs and Turner, imparts the additional contrast as
required by claim 1.
This additional contrast, however, is purely ornamental. Appellant’s
Specification discloses a two-layer condom with raised portions that can be
diamond-shaped and/or arranged in a snakeskin pattern (Spec 118), and may
have differently colored layers (id. 136). Appellant explains that the
patterns and color of the raised features provide different appearances when
viewed from a plan perspective. Id. 124; see also id. H 23, 25. Appellant
further explains that the difference in colors “form[s] an aesthetically
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pleasing pattern.” Appeal Br. 5. As such, the “additional contrast”
recitation cannot be relied upon for patentability. In re Seid, 161 F.2d 229,
231 (CCPA 1947) (holding that claim features that “relate to ornamentation
only and have no mechanical function whatsoever” cannot be relied upon for
patentability because “the appealed claims are not directed to a design but
are structural claims”).
Appellant does make one structural argument: Wilk’s inner condom
is not an inner elastomeric coating because it is not formed in the same
manner that Appellant discloses, namely dipping a former into one tank of
latex emulsion and then dipping it into a second tank of latex emulsion.
Appeal Br. 12—13.
We find this argument unpersuasive for reasons set forth by the
Examiner. See Ans. 7. The method of production is not recited in claim 1
(which is directed to a product, rather than to a method). Additionally, as
correctly noted by the Examiner (see Final Act. 3), Wilk discloses an
embodiment wherein the inner and outer condoms are affixed together via a
tacky polymer such that the inner condom is attached to the outer condom
along its entire length as required by claim 1. See Wilk 3:10-17, Fig. 4.
Accordingly, for the foregoing reasons, we sustain the Examiner’s
determination that claim 1 and its dependent claims 2, 6, 8, and 23, which
are not argued separately, are unpatentable over Wilk, Povlacs, and Turner.
Because our rationale for affirmance differs from that of the Examiner, we
designate the affirmance as a new ground of rejection, pursuant to 37 C.F.R.
§ 41.50(b), to provide Appellant an opportunity to respond thereto.
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Rejection Based on Wilk, Povlacs, Turner, and Haines
Claims 5 and 21
With respect to the rejection of claims 5 and 21, Appellant relies on
the arguments presented above in regard to the rejection of claim 1. Appeal
Br. 14. Accordingly, for the same reasons as discussed above, we also
sustain the rejection of claims 5 and 21 as being unpatentable over Wilk,
Povlacs, Turner, and Haines. We designate this affirmed rejection as a new
ground of rejection, pursuant to 37 C.F.R. § 41.50(b), for the reasons
discussed above in connection with the rejection of claim 1.
Claim 7
Claim 7 depends indirectly from claim 1, and further requires that the
plurality of diamond-shaped raised features form a snakeskin pattern.
Appeal Br. 23 (Claims App.).
The Examiner relies on Haines to teach a snakeskin pattern of raised
features, and reasons that it would have been obvious to one of ordinary skill
to arrange the projections on Wilk’s modified condom to further transmit
tactile sensations and promote the use of prophylactic members during
intercourse. Final Act. 7.
Appellant traverses, arguing that Haines does not teach a snakeskin
pattern, that the Examiner has not explained how the modification of Wilk’s
condom to include a snakeskin pattern of projections would provide benefit,
and that the Examiner’s rejection is based on impermissible hindsight
reasoning. Appeal Br. 14—19.
We are unpersuaded by Appellant’s arguments. Regarding
Appellant’s benefit and hindsight arguments, the Examiner reasons that the
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modification to include Haines’s pattern would “further transmit tactile
sensations and promote the use of prophylactic members during
intercourse,” thus setting forth both a benefit and a reason to include
Haines’s pattern on Wilk’s modified condom. If, as here, the Examiner has
articulated a reason having rational underpinnings for making a proposed
combination of prior art teachings, then that articulated reasoning
demonstrates the combination is not based on hindsight. See In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR Int 7 Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007)).
Regarding Appellant’s argument that Haines does not teach a
snakeskin pattern, Appellant improperly relies on an ornamental feature in
an attempt to establish patentability of a structural claim, and, thus, fail to
apprise us of error. See Seid, 161 F.2d at 231.
Accordingly, for the foregoing reasons, we sustain the rejection of
claim 7 as being unpatentable over Wilk, Povlacs, Turner, and Haines. We
designate this affirmed rejection as a new ground of rejection, pursuant to 37
C.F.R. § 41.50(b), for the reasons discussed above in connection with the
rejection of claim 1.
Claim 22
Claim 22 depends indirectly from claim 1, and further requires that at
least some of the plurality of diamond-shaped raised features be of greater
height and darker. Appeal Br. 24 (Claims App.).
The Examiner finds that Haines teaches a condom with raised features
of different height, reasons that it would have been obvious to one of
ordinary skill in the art to include raised features of different height in
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Wilk’s modified condom to further transmit tactile sensations and promote
the use of prophylactic members during intercourse. Final Act. 7—8. The
Examiner determines that the raised features of greater height would be
perceived as being darker. Id. at 8.
Appellant traverses, arguing that the Examiner has not properly
established that raised features having a greater height would necessary be
darker. Appeal Br. 19—20.
For the same reasons as discussed above with respect to the rejection
of claim 1, we agree that the Examiner has not established, by a
preponderance of the evidence, that Wilk, as modified by Povlacs, Turner,
and Haines, discloses or teaches that the raised features of greater height are
darker as required by claim 22.
However, as also discussed above with respect to the rejection of
claim 1, the darkness of the projections is purely ornamental and, therefore,
cannot be relied upon to establish patentability of a structural claim. See
Seid, 161 F.2d at 231.
Accordingly, for the foregoing reasons, we sustain the rejection of
claim 22 as being unpatentable over Wilk, Povlacs, Turner, and Haines. We
designate this affirmed rejection as a new ground of rejection, pursuant to 37
C.F.R. § 41.50(b), for the reasons discussed above in connection with the
rejection of claim 1.
Rejection Based on Wilk, Povlacs, Turner, and Mistier
With respect to the rejection of claims 24—27, Appellant relies on the
arguments presented above in regard to the rejection of claim 1. Appeal Br.
20-21. Accordingly, for the same reasons as discussed above, we also
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sustain the rejection of claims 24—27 as being unpatentable over Wilk,
Povlacs, Turner, and Mistier. We designate this affirmed rejection as a new
ground of rejection, pursuant to 37 C.F.R. § 41.50(b), for the reasons
discussed above in connection with the rejection of claim 1.
DECISION
The Examiner’s decision to reject claims 1, 2, 5—8, and 21—27 is
affirmed, but the affirmance is designated as a new ground of rejection.
NEW GROUND
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. . . .
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED; 37 C.F.R. $ 41.50(b)
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