Ex Parte Renzin et al

Board of Patent Appeals and Interferences

Jan 17, 2012

11572462 (B.P.A.I. Jan. 17, 2012)

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.
11/572,462 01/22/2007 Stephen M. Renzin 1021-0001WOUS 8681
50811 7590 01/18/2012
O''Shea Getz P.C.
1500 MAIN ST. SUITE 912
SPRINGFIELD, MA 01115
EXAMINER
TREYGER, ILYA Y
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
01/18/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte STEPHEN M. RENZIN and WILLIAM SCHMITT
__________

Appeal 2010-007326
Application 11/572,462
Technology Center 3700
__________

Before LORA M. GREEN, JEFFREY N. FREDMAN, and
ERICA A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a mini
pad assembly and method for reducing vulvar inflammation and lowering
acidity of a female’s vulva. The Patent Examiner rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

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STATEMENT OF THE CASE
Claims 1- 27 are on appeal. Claims 1, 5, 12 and 27 are representative
and read as follows:
1. A mini pad assembly for reducing vulvar inflammation and lowering
acidity of a female's vulva which acidity results from vaginal secretions that
leak into vulvar tissue, said mini pad being wearable during everyday
activity, said mini pad comprising:
a) an absorbent pad component;
b) a cooling component; and
c) milk.

5. The mini pad assembly of Claim 1 wherein said cooling component is
an endothermic substance.

12. The mini pad assembly of Claim 11 wherein the cover component is
formed from a solid polymer into which the milk is incorporated prior to
conversion of the polymer to a fibrous form.

27. A method for reducing vulvar inflammation and lowering acidity of a
female's vulva which acidity results from vaginal secretions which are
present in vulvar tissue, said method comprising the step of applying a cold
combination of moisture and skim milk to the inflamed tissue.

The Examiner rejected the claims as follows:
• claims 1, 3-4, 6, 13, 14, 16-17, 19, 26 and 271 under 35 U.S.C.
§ 103(a) as unpatentable over Pesce2 and Hakansson; 3

1 Appellants acknowledge that claim 27 was inadvertently excluded from the
claims listed in the rejection under 35 U.S.C. § 103(a) as unpatentable over
Pesce and Hakansson. (See App.Br. 5-6; see also Ans. 4 discussing
rejection of claim 27.)
2 US Patent No. 6,972,010 B2 issued to Antonella Pesce et al., Dec. 6, 2005.
3US Patent No. 6,761, 885 B1 issued to Eva Grahn Håkansson et al., Jul. 13,
2004.

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• claims 2, 11, 12, 15, 24, and 25 under 35 U.S.C. § 103(a) as
unpatentable over Pesce, Hakansson, and Swanson4;
• claims 7, 8, 20, and 21 under 35 U.S.C. § 103(a) as unpatentable
over Pesce, Hakansson, and Young;5 and
• claims 9, 10, 22, and 23 under 35 U.S.C. § 103(a) as unpatentable
over Pesce, Hakansson, and Bookwalter. 6
• claims 5 and 18 under 35 U.S.C. § 103(a) as unpatentable over
Pesce, Hakansson, and in further view of Godard.7,8
OBVIOUSNESS
The Issue
I. The Rejection of Claims 1, 3-4, 6, 13, 14, 16-17, 19, 26, and 27
The Examiner’s position is that Pesce disclosed a feminine hygiene
absorbent article capable of being worn over the vulva comprising an
absorbent pad component, a cooling component, and an antimicrobial or
other medicinal agent. (Ans. 3.) According to the Examiner, such an
“antimicrobial” by virtue of its definition is the medication that treats
inflammatory conditions. (Id.) The Examiner also found that Pesce did not
expressly disclose the use of milk in the absorbent article. (Id.) However,
the Examiner found that Hakansson taught the use of skimmed milk in
feminine hygiene products. (Id.) According to the Examiner, because Pesce

4 US Patent No. 4,556,146 issued to James L. Swanson et al., Dec. 3, 1985.
5 US Patent No. 3,959,491 issued to Henry Y. Young et al., May 25, 1976.
6 US Patent No. 4,842,884 issued to George N. Bookwalter et al., Jun. 27,
1989.
7 US Patent No. 6,946,459 B2 issued to Jean-Yves Godard et al., Sep. 20,
2005.
8 The Examiner raised a new ground of rejection for claims 5 and 18. (Ans.
7.)
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and Hakansson are both directed to “confronting inflammation/irritation, it
would have been obvious to a person of ordinary skill in the art at the time
the invention was made to substitute the antimicrobial or other medicinal
agents of Pesce with the milk, as taught by Hakansson[,] to achieve the
desired therapeutic effect.” (Id.)
Regarding claim 27, the Examiner found that Pesce disclosed using its
absorbent article comprising an absorbent pad component, a cooling
component, and an antimicrobial or other medicinal agents in a method
“capable of reducing vulvar inflammation and lowering acidity of a female’s
vulva which acidity results from vaginal secretions which are present in
vulvar tissue. ” (Id. at 4.) The Examiner found that while Pesce did not
expressly disclose using milk in the absorbent article, “Hakansson [taught]
the use of skim milk to confront [] irritation/inflammation.” (Id. at 5.)
According to the Examiner, it would have been obvious to a skilled artisan
to have substituted Pesce’s antimicrobial or other medicinal agents with
Hakansson’s milk to achieve the desired therapeutic effect because both
Pesce and Hakansson are of the same problem solving area, i.e., confronting
inflammation/irritation. (Id.)
II. The Rejection of Claims 2, 11, 12, 15, 24, and 25
The Examiner further found that Pesce and Hakansson did not
expressly disclose an absorbent article assembly comprising a cover
component in which said absorbent pad component is disposed. (Id. at 5.)
However, the Examiner found that Swanson taught a wrapper overlaying an
absorbent article and forming the individual package for said article. (Id.)
According to the Examiner, it would have been obvious to a person of
ordinary skill in the art at the time the invention was made to supply the
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absorbent article of Pesce and Hakansson with Swanson’s wrapper because
such modification would improve consumer features of the product, i.e.,
providing an individual package. (Id.)
The Examiner found that claims 12 and 25 recited product-by-process
claims. (Id. at 6.) According to the Examiner, because the product recited
in these claims is fully disclosed by the combined references, the method of
preparing the article imbedded in the claims does not impact the
patentability of the claim. (Id.)
III. The Rejection of Claims 7, 8, 20, and 21
The Examiner further found that Pesce and Hakansson did not
expressly disclose an absorbent article wherein the milk is a slurry of dry
milk and a meltable anhydrous water-soluble carrier. (Id.) However, the
Examiner found that Young disclosed a cosmetic composition comprising
dry milk wherein the milk comprises polyethylene glycol which is an
anhydrous water-soluble carrier. (Id.) According to the Examiner, it would
have been obvious a person of ordinary skill in the art at the time the
invention was made to form the milk used in the absorbent article of Pesce
and Hakansson from a slurry of dry milk and meltable anhydrous water-
soluble carrier to “decrease and simplify manufacturing of the product.” (Id.
at 7.)
IV. The Rejection of Claims 9, 10, 22, and 23
The Examiner further found that Pesce and Hakansson did not
expressly disclose an absorbent article wherein the milk is a slurry of dry
milk and a non-water soluble carrier. (Id.) However, the Examiner found
that Bookwalter disclosed a generally conventional powdered milk
concentrate comprising oil which is a non-water soluble carrier. (Id.)
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According to the Examiner, it would have been obvious to a skilled artisan
to form the milk used in the absorbent article of Pesce and Hakansson from a
slurry of dry milk and a non-water soluble carrier to “decrease and simplify
manufacturing of the product.” (Id.)
V. New Ground of Rejection
The Examiner raised a new ground of rejection in the Answer: the
rejection of claims 5 and 18 as being unpatentable over Pesce, Hakansson, as
applied to claims 1 and 14 above, and further in view of Godard as evidence.
(Id.) The Examiner found that the combination of Pesce and Hakansson
disclosed the claimed invention wherein carboxamides are disclosed as
suitable cooling agents. (Id.) The Examiner further found that Godard
disclosed a carboxamide that is an endothermic substance. (Id.) The
Examiner explained that Godard is cited as rebuttal evidence to show that
the carboxamide was known in the art as being an endothermic compound.
(Id. at 7-8.)
The issue is whether the record supports the Examiner’s conclusion
that the cited references would have made the claimed mini pad assemblies
and methods obvious.
VI. Appellants’ Contentions
Regarding each rejection, Appellants contend that Pesce did not teach
the use of the recited “cooling component” or “cold combination” because
Pesce’s “‘agents’ merely create a perception of coolness without actually
creating the external condition perceived by the wearer.” (App. Br. 5.)
Regarding claim 27, Appellants assert that Hakansson taught LB931
rather than milk to confront an irritation/inflammation. (App. Br. 6.)
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Additionally, Appellants assert that the “agents” taught by Pesce “are not
cold and will not lower the temperature of the tissues they contact.” (Id.)
Regarding claims 12 and 25, Appellants assert that the combined
references do not suggest “that a milk component should be incorporated
into a solid polymer prior to conversion of the polymer to a fibrous form in a
cover for a mini pad assembly….” (Id. at 7.)
Regarding claims 7, 8, 20, and 21, Appellants assert that “Young does
not overcome the shortcomings identified above with respect to the
combined teachings of Pesce and Hakansson.” (Id. )
Regarding claims 9, 10, 22, and 23, Appellants assert that there is no
suggestion in Bookwalter “that the milk concentrate should be used for
anything other than disaster relief.” (Id. at 8.) Appellants also assert that
“Bookwalter does not overcome the shortcomings identified above with
respect to the combined teachings of Pesce and Hakansson.” (Id.)
Regarding claims 5 and 18, Appellants assert that Pesce’s “agents” are
not endothermic because they “do not absorb heat from the tissues that they
contact.” (App. Br. 5.) In the Reply Brief, Appellants respond to the
Examiner’s new ground of rejection for these claims by asserting that the
particular carboxamide disclosed by Godard only would be endothermal
with respect to anything having a temperature which is greater than 168°C,
i.e., 334°F. (Reply Br. 5.) Appellants assert that “[a] carboxamide having
that high a melting point is certainly not endothermal or endothermic relative
to inflamed human female vulvar tissues.” (Id.)

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Findings of Fact
1. We agree with the Examiner’s explicit findings regarding the scope
and content of the prior art references (see Ans. 3-8) with the following
exception:
2. Hakansson disclosed a pharmaceutical composition comprising
Lactobacillus plantarum LB931and skimmed milk as a pharmaceutically
acceptable carrier. (Hakansson col. 10, ll. 64-67, Claim 5.)
3. Appellants rely on the Wiktionary definition for “cooling” (see App.
Br. 4) which, when used as a noun, is defined as “a decrease in temperature”
or “refrigeration,” and when used as an adjective is defined as “that cools.”9
Principles of Law
“Absent claim language carrying a narrow meaning, the PTO should
only limit the claim based on the specification or prosecution history when
those sources expressly disclaim the broader definition.” In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417.
Analysis
I. The Rejection of Claims 1, 3-4, 6, 13, 14, 16-17, 19, 26, and 27
We begin with claim interpretation. The element at issue is “a cooling
component.” (See claims 1 and 14.) The Specification does not define this

9 Wiktionary, http://en.wiktionary.org/wiki/cooling (last visited Jan. 17,
2012).
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disputed claim term. Appellants assert that “[t]he internet Wiktionary
defines the term ‘cooling’ as meaning: ‘a decrease in temperature’; or
‘refrigeration’.” (App. Br. 4; FF-3.) Therefore, according to Appellants, “a
‘cooling component’ in the common English vernacular is a component that
causes a decrease in temperature or that refrigerates.” (App. Br. 4.) We
disagree. The Wiktionary definitions relied upon by Appellants refer to uses
of the term “cooling” as a noun. (FF-3.) However, in claims 1 and 14, the
term “cooling” is used as an adjective to describe the term “component.”
(See App. Br. 9, 10, Claims App’x.) Wiktionary defines the term “cooling,”
when used as an adjective, as “that cools.” (FF-3.) Thus, we find that the
ordinary meaning of the term “a cooling component” refers to any
component “that cools” in any manner, including by providing a cooling
sensation. Appellants have not established with persuasive evidence that a
more limiting interpretation should apply. See Bigio, 381 F.3d at 1325.
Consequently, we find that Pesce taught “a cooling component,” as recited
in claims 1 and 14, by disclosing cooling agents that created a sensation or
perception of coolness. Therefore, we are not persuaded that the claim
limitation “a cooling component” renders independent claim 1, or its
dependent claims 2-13, independent claim 14, or its dependent claims 15-26
nonobvious over the combined prior art.
Regarding independent claim 27, while we agree with Appellants that
Hakansson taught LB931 (Lactobacillus plantarum) rather than milk to
confront an irritation/inflammation (see App. Br. 6) Hakansson included
skimmed milk as a pharmaceutically acceptable carrier in a composition
comprising LB931. (FF-2.) Thus, substituting the antimicrobial or other
medicinal agents of Pesce with Hakansson’s composition comprising LB931
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and skimmed milk provides a combination comprising skim milk, as
required by claim 27. However, we also agree with Appellants that what is
missing from the combination Pesce and Hakansson is a teaching or
suggestion of a method applying a “cold” combination. (App. Br. 6.) The
Examiner did not find that Pesce’s “cooling agents” taught or suggested a
“cold composition” (see Ans. 3-9) nor do we. Indeed, as Appellants have
asserted, the Examiner did not address this claim limitation. (App. Br. 6.)
Accordingly, we affirm the rejection of claims 1, 3-6, 13, 14, 16-19,
and 26, and we reverse the rejection of claim 27.
II. The Rejection of Claims 2, 11, 12, 15, 24, and 25
Appellants assert that claims 2, 11, 12, 15, 24, and 25 are not obvious
for the reasons discussed supra “regarding Pesce and Hakansson and the
proposed combinations thereof.” (App. Br. 6.) Consequently, we are not
persuaded of nonobviousness for the same reasons discussed supra regarding
independent claims 1 and 14.
Appellants further assert, regarding claims 12 and 25, that the
combined references do not suggest “that a milk component should be
incorporated into a solid polymer prior to conversion of the polymer to a
fibrous form in a cover for a mini pad assembly….” (Id. at 7.) However, we
agree with the Examiner that claims 12 and 25 recite product-by-process
claims and because the product recited in these claims is fully disclosed by
the combined references, its method of preparation does not impact the
patentability of the claim. (Ans. 9.) Appellants have not argued or
established otherwise with persuasive evidence. (See Reply Br. 5.)
Accordingly, we affirm the rejection of these claims.

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III. The Rejection of Claims 7, 8, 20, and 21
Appellants assert that claims 7, 8, 20, and 21 are not obvious for the
reasons discussed supra “regarding Pesce and Hakansson and the proposed
combinations thereof.” (App. Br. 7.) According to Appellants, “Young
does not overcome the shortcomings identified above with respect to the
combined teachings of Pesce and Hakansson.” (Id.) Consequently, we are
not persuaded of nonobviousness for the same reasons discussed supra
regarding independent claims 1 and 14.
Accordingly, we affirm the rejection of these claims.
IV. The Rejection of Claims 9, 10, 22, and 23
Appellants assert that claims 9, 10, 22, and 23 are not obvious for the
reasons discussed supra “regarding Pesce and Hakansson and the proposed
combinations thereof.” and that “Bookwalter does not overcome the[se]
shortcomings ….” (App. Br. 8.) Consequently, we are not persuaded of
nonobviousness for the same reasons discussed supra regarding independent
claims 1 and 14.
Further, Appellants assert that there is no suggestion in Bookwalter
“that the milk concentrate should be used for anything other than disaster
relief.” (Id.) However, in rejecting these claims, the Examiner relied upon
Hakansson as teaching the use of skimmed milk in the combination. (Ans.
3, 7.) As Appellants acknowledged, the Examiner “relied upon Bookwalter
as disclosing the generally conventional powdered milk concentrate
comprising oil which is a non-water soluble carrier.” (App. Br. 8; Ans. 7.)
Consequently, we remain unpersuaded of nonobviousness.

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V. The Rejection of Claims 5 and 18
Regarding claims 5 and 18, we are also not persuaded of
nonobviousness by Appellants’ assertion that Pesce’s cooling agents, e.g.,
carboxamides, are not endothermic substances. (App. Br. 5; Reply Br. 5.)
According to Appellants, “[a]n endothermic or endothermal component is
one that, by definition, absorbs heat from anything that it contacts.” (App.
Br. 5.) Appellants acknowledge that Godard provided evidence that a
“particular carboxamide … will be endothermal, (i.e., absorb heat from,)
with respect to anything having a temperature which is greater than 168°C.”
(Reply Br. 5.) However, Appellants assert that the carboxamide is “not
endothermal or endothermic relative to inflamed human female vulvar
tissues.” (Id.) Thus, Appellants assert that Pesce’s cooling agents “are not
endothermic by definition, and do not absorb heat from the tissues that they
contact.” (App. Br. 5.) However, Appellants have not provided such a
limiting definition for the claim term “endothermic substance” in the claims
or the Specification. In other words, as broadly claimed, the claim recitation
“wherein said cooling component is an endothermic substance” is not
limited to substances that are “endothermal or endothermic relative to
inflamed human female vulvar tissues,” as Appellants assert. Consequently,
we agree with the Examiner that Pesce’s disclosure of carboxamides as
cooling agent disclosed an endothermic substance, as evidenced by Godard.
Accordingly, we affirm the rejection of these claims.

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CONCLUSIONS OF LAW
The record supports the Examiner’s conclusion that the cited
references would have made the mini pad assemblies and methods of claims
1-26 obvious. However, the record does not supports the Examiner’s
conclusion that the cited references would have made the method of claim
27 obvious.
SUMMARY
We affirm the rejection of claims 1, 3-4, 6, 13, 14, 16-17, 19, and 26
under 35 U.S.C. § 103(a) as unpatentable over Pesce and Hakansson;
we reverse the rejection of claim 27 under 35 U.S.C. § 103(a) as
unpatentable over Pesce and Hakansson;
we affirm the rejection of claims 2, 11, 12, 15, 24, and 25 under 35
U.S.C. § 103(a) as unpatentable over Pesce, Hakansson, and Swanson;
we affirm the rejection of claims 7, 8, 20, and 21 under 35 U.S.C.
§ 103(a) as unpatentable over Pesce, Hakansson, and Young;
we affirm the rejection of claims 9, 10, 22, and 23 under 35 U.S.C.
§ 103(a) as unpatentable over Pesce, Hakansson, and Bookwalter; and
we affirm the rejection of claims 5 and 18 under 35 U.S.C. § 103(a) as
unpatentable over Pesce, Hakansson, and in further view of Godard.

AFFIRMED-IN-PART

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