Ex Parte Rosenberg

Board of Patent Appeals and Interferences

Apr 29, 2010

11024620 (B.P.A.I. Apr. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte FRANK ROSENBERG
____________________

Appeal 2009-013092
Application 11/024,620
Technology Center 3600
____________________

Decided: April 30, 2010
____________________

Before RICHARD E. SCHAFER, JAMESON LEE, and
SALLY C. MEDLEY, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge LEE.

Opinion Dissenting filed by Administrative Patent Judge SCHAFER.

LEE, Administrative Patent Judge.

DECISION ON APPEAL

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A. STATEMENT OF THE CASE
This is a decision on appeal by an Appellant under 35 U.S.C. § 134(a)
from a final rejection of claims 21-39. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm-in-part.
References Relied on by the Examiner
Dishart 3,269,621 Aug. 30, 1966
Jones-Steele 4,133,063 Jan. 9, 1979
Fitzsimmons 4,886,150 Dec. 12, 1989
Moretz et al. (“Moretz”) 5,249,320 Oct. 5, 1993
Butler, III (“Butler”) 5,551,108 Sep. 3, 1996

The Rejections on Appeal
The Examiner rejected claims 21, 23, 27, and 38 under 35 U.S.C.
§ 103(a) as unpatentable over Fitzsimmons and Moretz.
The Examiner rejected claims 26, 27, and 39 under 35 U.S.C. § 103(a)
as unpatentable over Jones-Steele and Butler.
The Examiner rejected claims 21, 22, 24, 25, and 28-30 under 35
U.S.C. § 103(a) as unpatentable over Jones-Steele and Moretz.
The Examiner rejected claims 31-37 under 35 U.S.C. § 103(a) as
unpatentable over Jones-Steele, Moretz and Dishart.

The Invention
The invention relates to the practice of changing a baby’s diaper and a
disposable changing pad used in that practice. (Spec. 1:3-4.)
Claim 21 is reproduced below (Claims App’x. p. i.):
21. A method of changing a baby's diaper, comprising:

placing a baby on a disposable changing pad;

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wherein the disposable changing pad comprises:

a water impermeable layer;

a fabric layer attached to said water impermeable layer;

a water absorbing layer located between the water
impermeable layer and the fabric layer; and

at least one movement resistance aid that is an integral
part of the water impermeable barrier layer;

wherein said at least one movement resistance aid is on
the side of the water impermeable layer that is opposite the
fabric layer; and

wherein the at least one movement resistance aid
comprises: a sealing strip, a snap, a hook fastener that can mate
with a loop fastener, or a loop fastener that can mate with a
hook fastener; and

changing the baby's diaper while the baby lies on the disposable
changing pad.
B. ISSUES
1. Has the Appellant shown that the Examiner erred in
determining that the teachings of Moretz are available as prior art in
rejecting the Appellant’s claims?
2. Has the Appellant shown that the Examiner erred in
determining that a person of ordinary skill in the art would have had
adequate reason to combine the teachings of Fitzsimmons and Moretz?
3. Has the Appellant shown that the Examiner erred in
determining that the step in method claim 23 of sticking a disposable
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changing pad to a carpeted floor is simply a statement of intended use that is
met if an element in the prior art is capable of performing that use?
4. Has the Appellant shown the Examiner erred in determining
that a person of ordinary skill in the art would have recognized that
Fitzsimmons discloses a clip that retains a changing pad on a changing
platform as is required by claim 27?
5. Has the Appellant shown the Examiner erred in determining
that Jones-Steele discloses a structure configured as a pad that is disposable?
6. Has the Appellant shown that the Examiner erred in
determining that one with ordinary skill in the art would have recognized
from the teachings of Butler that a clip may be substituted for a snap tab
fastening element that is disclosed in Jones-Steele?
7. Has the Appellant shown that the Examiner erred in concluding
that it would have been obvious to change the size of a fabric layer in Jones-
Steele so that a water impermeable sheet forms a border around that fabric
layer?
8. Has the Appellant shown that the Examiner erred in
determining that a person of ordinary skill in the art would have had
adequate reason to combine the teachings of Jones-Steel and Moretz?
9. Does the Appellant’s specification provide a special definition
of the claim term “sealing strip” which distinguishes that term over a strip of
fastening elements that is disclosed in Jones-Steele?
10. Has the Appellant shown that the Examiner was incorrect in
finding that Jones-Steele discloses a changing platform that is formed of a
unitary piece of material?
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C. FINDINGS OF FACT
The Appellant’s Specification
1. The Appellant’s specification recognizes that the act of
changing a baby’s diaper typically involves exposure of bodily fluids, such
as urine, to the surface on which the baby lies during the changing process.
(Spec. 1:6-14.)
2. One problem that the Appellant’s invention generally seeks to
solve is controlling entrapped or absorbed liquid in a pad by forming it with
specific layers of material. (Spec. 4:12-5:13.)
3. With respect to the term “sealing strips”, the Appellant’s
specification states the following (Spec. p. 6, ll. 15-17):
Examples of mechanical sticking agents include: hook and loop type
fasteners (e.g. Velcro™), snaps, and sealing strips (e.g. the closures
on Ziploc™ sandwich bags).

Fitzsimmons
4. Fitzsimmons discloses a baby carrier with a releasable pad on
which a baby is placed during a diaper changing process. (Fitzsimmons
Abstract.)
5. The carrier includes pad 9 that is attached to panel 8 by Velcro
strips 11. (Id. at 1:65-68.)
Moretz
6. Moretz discloses a moisture-managing bed pad that has the
benefit of wicking moisture from the surface of the bed pad thereby creating
a dry surface for a patient lying on the surface. (Moretz 2:7-26.)
7. That benefit arises from a series of layers in the pad including a
top fabric layer 11, a bottom water impermeable layer 13, and an
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intermediate layer 12 operating as an absorbing layer to hold quantities of
moisture. (Id. at 6:15-35.)
8. The layered arrangement prevents the liquid from leaking onto
the surface underlying the pad. (Id. at 1:30-33)
9. Moretz discloses the multi-layered fabric of its pad also “can be
used to cover any given surface[.]” (Id. at 2:18-21.)
Jones-Steele
10. Jones-Steele discloses a portable infant mattress device that
may be used as a changing table for an infant. (Jones-Steele 1:6-9.)
11. The changing table includes a pad formed of fabric panels 18
with a top sheet 28 connected to the panels. (Id. at 2:28-30.)
12. Jones-Steele states: “[t]he top sheet 28 is detachably connected
to the top panels 18 so that it may be cleaned separately or replaced.” (Id. at
2:30-32.)
13. Jones-Steele further discloses that top sheet 28 is attached to
panels 18 by fastener elements 30 formed as snap tabs. (Id. at 2:36-42.)
14. Jones-Steele’s changing platform is formed of multiple separate
components, i.e., two side pieces spaced apart by hinges. (Id. at 1:22-40;
Fig. 2.)
Butler
15. Butler discloses a portable baby cushion in which portions of
the cushion are attached to one another by fastening elements such as “clips,
buttons, snaps, zippers, catches and the like.” (Butler 4:55-57.)
D. PRINCIPLES OF LAW
If a feature has been used to improve one device, and a person of
ordinary skill in the art would have recognized that it would improve a
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similar device in that field or another, implementing that feature on the
similar device is likely obvious. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007).
A reference is analogous art if it is either in the same field of an
inventor’s endeavor or if the reference is reasonably pertinent to the problem
with which the inventor was concerned. In re Clay, 966 F.2d 656, 659 (Fed
Cir. 1992). The problem examined is not limited to the specific problem
solved by the invention but can be a general problem that confronted the
inventor before the invention was made. In re Kahn, 441 F.3d 977, 987
(Fed. Cir. 2006).
One of ordinary skill in the art need not see the identical problem
addressed in a prior art reference to be motivated to apply its teachings.
Cross Medical Products, Inc. v. Medtronic Sofamor Danek, Inc. 424 F.3d
1293, 1323 (Fed. Cir. 2005).
A motivation to combine teachings need only be supported by an
articulated reasoning with rational underpinnings. In re Kahn, 441 F.3d at
988.
E. ANALYSIS
The rejection based on Fitzsimmons and Moretz
The Examiner rejected claims 21, 23, 27, and 38 as unpatentable over
Fitzsimmons and Moretz. The Examiner found that Fitzsimmons discloses a
method of changing a baby’s diaper involving a disposable changing pad
with a water impermeable layer but does not disclose an additional “fabric
layer attached to said water impermeable layer” and a “water absorbing layer
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located between the water impermeable layer and the fabric layer[.]”
(Claims App’x. p. i.)
To account for the limitations missing from Fitzsimmons, the
Examiner turned to Moretz. Moretz discloses a moisture-managing bed pad
that has the benefit of wicking moisture from the surface of the bed pad
thereby creating a dry surface for a patient lying on the surface. (Moretz
2:7-26.) That benefit arises from a series of layers in the pad including a top
fabric layer 11, a bottom water impermeable layer 13, and an intermediate
layer 12 operating as an absorbing layer to hold quantities of moisture. (Id.
at 6:15-35.) In light of the disclosed benefit offered by Moretz’s pad, the
Examiner reasoned that it would have been obvious for a person of ordinary
skill in the art to implement the layered configuration of Moretz’s moisture-
managing pad into Fitzsimmons’ disposable changing pad. (Ans. 3:22-4:3.)
The Appellant first challenges the Examiner’s rejection of claims 21,
23, 27, and 38 based on arguments directed to those claims as a group. The
Appellant also separately argues claims 23 and 27 based on features specific
to those claims.
Claims 21, 23, 27, and 38 as argued together
With respect to claims 21, 23, 27, and 38, the Appellant first contends
that Moretz is not properly combinable with Fitzsimmons because it is
nonanalogous art. The Appellant points to In re Clay, 966 F.2d 656 (Fed
Cir. 1992) for the principle that a reference may only be applied in rejecting
an applicant’s claims if it is either in the field of the applicant’s endeavor or
is reasonably pertinent to the problem with which the applicant was
concerned. The Appellant concludes that Moretz is not available as a
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reference because it is neither in the relevant field of diaper changing
devices nor pertinent to the problem of changing diapers. (App. Br. 7:4-18.)
The Supreme Court has provided guidance in determining the
applicability of a reference’s teachings in an obviousness inquiry. In KSR
Int’l Co. v. Teleflex Inc., the Court explained that if a feature has been used
to improve one device, and a person of ordinary skill in the art would have
recognized that it would improve a similar device in that field or another,
implementing that feature on the similar device is likely obvious. KSR, 550
U.S. at 417.
Here, the layered arrangement of Moretz’s pad operates to disperse
liquid, such as urine or perspiration, away from the body of a person lying
on the pad. (Moretz 1:17-32.) The layered arrangement also allows retained
moisture to dissipate from the pad in vapor form while preventing the liquid
from leaking onto the surface underlying the pad. (Id.) Fitzsimmons
discloses a baby carrier with a releasable pad on which a baby is placed
during a diaper changing process. (Fitzsimmons Abstract.) As is recognized
by the Appellant, the act of changing a baby’s diaper typically involves
exposure of bodily fluids, such as urine, to the surface on which the baby
lies during the changing process. (Spec. 1:6-14) Thus, like Moretz’s pad,
Fitzsimmons’ baby changing pad receives a person, i.e., a baby, and is
exposed to bodily fluids. A person of ordinary skill in the art would have
readily appreciated that the layers of a pad, as in Moretz, which exhibit the
desirable characteristics of wicking away bodily fluids and preventing fluid
leakage would benefit another similar pad exposed to bodily fluids, such as
Fitzsimmons’ baby changing pad. That conclusion itself renders a separate
analogous/non-analogous art inquiry unnecessary.
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In any event, we do not agree with the Appellant’s assertion that
Moretz is non-analogous art. A reference is analogous art if it is either in the
same field of an inventor’s endeavor or if the reference is reasonably
pertinent to the problem with which the inventor was concerned. In re Clay,
966 F.2d at 659. The problem examined is not limited to the specific
problem solved by the invention but can be a general problem that
confronted the inventor before the invention was made. In re Kahn, 441
F.3d at 987. Moreover, one of ordinary skill in the art need not see the
identical problem addressed in a prior art reference to be motivated to apply
its teachings. Cross Medical Products, Inc., 424 F.3d at 1323.
In this case, the Appellant’s specification recognizes that babies
produce substantial quantities of urine and, in the context of changing a
baby’s diaper on a pad, the Appellant’s invention generally seeks to solve
the problem of controlling entrapped or absorbed liquid in the pad by
forming it with specific layers of material. (Spec. 4:12-5:13.) As noted
above, Moretz is directed to a moisture-managing pad formed of multiple
layers that operate to wick away moisture from the surface of the pad and
dissipate retained moisture in the pad as vapor. A person of ordinary skill in
the art would have appreciated that that disclosure in Moretz is reasonably
pertinent to the general problem set forth in the Appellant’s specification of
controlling absorbed liquid within a pad that receives a baby during a diaper
change. Accordingly, we conclude that Moretz is analogous art.
The Appellant also contends that combining the teachings of Moretz
with Fitzsimmons would render Fitzsimmons’ changing pad unusable. In
particular, the Appellant argues: “[i]f Fitzsimmons apparatus were modified
to absorb urine, it would quickly become stinky and unusable.” (App. Br.
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7:23-8:1.) The Appellant, however, does not explain the basis for the
assertion that a pad with absorbed urine is “unusable.” The argument
amounts simply to speculation by the Appellant that is unsupported by the
prior art or any other objective evidence, such as declaration testimony.
Mere argument cannot take the place of evidence lacking in the record.
Estee Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997).
Moreover, the Appellant’s argument is also in conflict with the
teachings of Moretz. As discussed above, the construction of Moretz’s pad
allows for moisture that is absorbed by the pad to dissipate from the pad in
vapor form. (Moretz 1:20-24.) That liquid retained in the pad dissipates as
vapor does not suggest that the pad becomes “stinky and unusable.” Rather,
Moretz discloses that its pad absorbs urine yet remains useable because its
configuration permits the urine to dissipate. The Appellant does not explain
why that dissipation effect would not also occur when Fitzsimmons’ pad is
modified to incorporate layers as in Moretz.
Lastly, the Appellant contends that there is no motivation to modify
Fitzsimmons’ diaper changing pad in view of the teachings of Moretz.
According to the Appellant, Moretz’s bed pad and Fitzsimmons’ changing
pad serve different purposes and thus their teachings may not be combined.
(App. Br. 8:5-13.)
We reject the Appellant’s contention. It is not necessary that two
references must serve the same purpose to establish motivation to combine
their teachings. Furthermore, Moretz’s teachings are not limited to any one
particular purpose. The purpose of Moretz’s multi-layered fabric in serving
as a bed pad is merely one disclosed embodiment. In other embodiments,
Moretz discloses that the multi-layered fabric “can be used to cover any
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given surface[.]” (Moretz 2:18-20.) The Appellant does not address that
disclosure in Moretz.
Moreover, a motivation to combine teachings need only be supported
by an articulated reasoning with rational underpinnings. In re Kahn, 441
F.3d at 988. Here, the Examiner determined that one with ordinary skill in
the art would have modified Fitzsimmons’ pad in view of Moretz’s
teachings “in order to move moisture away and provide a dry surface and
healthier environment for the infant lying upon the pad of Fitzsimmons.”
(Ans. 4:1-3.) That determination is rational and is supported by the express
disclosure in Moretz as to the benefits arising from the configuration of its
pad. (Moretz 1:25-33.) The Appellant does not adequately explain why the
Examiner’s determination is unreasonable or otherwise deficient.
With respect to claims 21 and 38, the Appellant does not advance any
further argument as to the patentability of those claims over Fitzsimmons
and Moretz. Accordingly, for the foregoing reasons, we sustain the
rejections of claims 21 and 38 over Fitzsimmons and Moretz. The Appellant
does submit additional arguments in connection with claims 23 and 27.
Claim 23 as separately argued
Claim 23 is an independent method claim and includes a step of
“sticking a disposable changing pad to a carpeted floor using at least one
hook fastener that is an integral part of the disposable changing pad.”
(Claims App’x. p. ii.) In accounting for that limitation, the Examiner states
the following (Ans. 10:9-17):
With regards to claim 23 and the Applicant’s recitation
“sticking a disposable changing pad to a carpeted floor using at least
one hook fastener that is an integral part of the disposable changing
pad”, a recitation of the intended use of the claimed invention must
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result in a structural difference between the claimed invention and the
prior art in order to patentably distinguish the claimed invention from
the prior art. If the prior art structure is capable of performing the
intended use, then it meets the claim. Therefore, Fitzsimmons is
capable of performing the intended use of sticking the disposable pad
to a carpeted floor since the pad includes at least one hook and loop
fastener 11.

Thus, the Examiner takes the position that the above-quoted step in
claim 23 is an “intended use” that does not amount to a structural difference
over the prior art.
The Appellant argues that the relevant step in its method claim 23 is
not an “intended use” but is instead an actual step of the claimed method.
(Reply Br. 2:18-21.) We agree with the Appellant. The Examiner’s reliance
on an “intended use” rationale is misplaced. Claim 23 is directed to a
method of changing a baby’s diaper that includes the step of sticking a
disposable changing pad to a carpeted floor via a hook fastener that is part of
the pad. That is not an “intended use” but is instead a positively recited step
of the method that must be accounted for in the prior art. The Examiner’s
assertion that Fitzsimmons’ changing pad is simply capable of being stuck to
a carpet in the manner required is inadequate to meet the actual step that is
required by claim 23.
Because the Examiner does not point to any portion of Fitzsimmons
or Moretz that accounts for the above-noted requirement in claim 23, we do
not sustain the rejection of claim 23 over Fitzsimmons and Moretz.
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Claim 27 as separately argued
Claim 27 is an independent method claim that includes the feature of a
disposable changing pad with a “clip” that “retains the disposable changing
pad on a changing platform component.” (Claims App’x. p. iii.)
In accounting for the clip requirement of claim 27, the Examiner
found that Fitzsimmons discloses a “fastening means 11” that attaches pad 9
to a changing platform. (Ans. 10:19-21.) Fitzsimmons discloses that its
element 11 is a Velcro strip that attaches changing pad 9 to panel portion 8
of body 1 of its baby accessory carrier. (Fitzsimmons 1:63-68.)
The Appellant does not address the Examiner’s finding. Instead, the
Appellant generally contends that Fitzsimmons does not have a clip. (App.
Br. 8:19-9:3; Reply Br. 3:8-9.)
The Appellant’s contention is unpersuasive. The term “clip” means
“any of various devices that grip, clasp, or hook.” Merriam Webster’s
Collegiate Dictionary 215 (10th ed. 1996). Fitzsimmons’ Velcro strip 11 is a
device that grips, clasps, or hooks pad 9 to panel 8. The Appellant does not
explain why Fitzsimmons’ Velcro strip is not reasonably viewed as a clip.
We sustain the rejection of claim 27 over Fitzsimmons and Moretz.
The rejection based on Jones-Steele and Butler
The Examiner rejected claims 26, 27, and 39 as unpatentable over
Jones-Steele and Butler. The Appellant argues claims 26 and 27
collectively. The Appellant separately argues claim 39.
Claims 26 and 27
Claims 26 and 27 each include the feature of a “disposable changing
pad.” The Appellant first contends that neither Jones-Steele nor Butler
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disclose a changing pad that is “disposable.” (App. Br. 9:6-11.) In
particular, in support of that contention the Appellant points to a “top sheet”
of Jones-Steele as not being disposable. (App. Br. 9:8-9.)
We reject the Appellant’s contention. Jones-Steele discloses a
portable infant mattress device that may be used as a changing table for an
infant. (Jones-Steele 1:6-9.) The changing table includes a pad formed of
fabric panels 18 with top sheet 28 connected to the panels. (Id. at 2:28-30.)
Jones-Steele states: “[t]he top sheet 28 is detachably connected to the top
panels 18 so that it may be cleaned separately or replaced.” (Id. at 2:30-32.)
Thus, Jones-Steele discloses that its top sheet may be removed and replaced.
A component that may be removed and replaced is disposable. Because the
Appellant’s argument is based on an inaccurate assessment of the teachings
of Jones-Steele, i.e., the alleged non-disposability of its top sheet, we do not
find the argument persuasive.
Claims 26 and 27 each also requires the feature of a clip that connects
a disposable changing pad to a changing platform. The Appellant argues
that Jones-Steele does not disclose a clip. The Appellant also argues that it
would not have been obvious to implement Butler’s clip into Jones-Steele’s
changing table. (App. Br. 10:3-8.) In support of that argument, the
Appellant alleges that Jones-Steele’s changing table is intended to be folded
up and a clip would interfere with the folding operation. (Id.)
The Appellant’s argument lacks merit. The Appellant does not point
to any evidence substantiating its assertion that the presence of a clip would
have any impact on the folding of Jones-Steele’s changing table. The
assertion is simply unsupported attorney argument. Moreover, the Appellant
does not adequately address the elements in the prior art that the Examiner
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relied on in accounting for the claimed clip feature. The Examiner pointed
to Jones-Steele as disclosing a snap fastener element for its changing pad but
does not disclose that the element is a clip. To make up for that deficiency,
the Examiner turned to Butler as disclosing the equivalence of snaps and
clips in the art. In light of that teaching, the Examiner reasoned that it would
have been obvious to a person of ordinary skill in the art to substitute a clip
for Jones-Steele’s snap fastener. (Ans. 4:21-5:4)
The Examiner’s reasoning is rational. Jones-Steele discloses that top
sheet 28 is attached to panels 18 by fastener elements 30 formed as snap
tabs. (Jones-Steele 2:36-42.) Thus, Jones-Steele already discloses that the
top sheet of its changing pad includes fastener elements. That disclosure
undermines the Appellant’s assertion that incorporation of a fastener
element, such as a clip, would impede Jones-Steele’s folding operation.
Furthermore, Butler discloses a portable baby cushion in which portions of
the cushion are attached to one another by fastening elements such as “clips,
buttons, snaps, zippers, catches and the like.” (Butler 4:55-57.) The
Appellant does not explain why, in view of that teaching, a person of
ordinary skill in the art would not have readily recognized that fastening
elements configured as clips may be substituted for snaps, such as those
disclosed in Jones-Steele.
For the foregoing reasons, we sustain the rejection of claims 26 and
27 over Jones-Steele and Butler.
Claim 39
Claim 39 is dependent on claim 26 which describes an apparatus for
changing a baby’s diaper that includes a fabric layer and a water
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impermeable layer. Claim 39 adds the following limitation (Claims App’x.
p. vi):
wherein the fabric layer has smaller length and width dimensions than
the water impermeable layer, thus leaving a border of water
impermeable sheet around the fabric layer.

The Appellant contends that the feature of a border of water
impermeable sheet formed around the fabric layer is not disclosed in Jones-
Steele or Butler. (App. Br. 10:9-13.)
The Examiner does not disagree with the Appellant. Rather, to
account for that missing feature, the Examiner simply states in reference to
Jones-Steele that “[i]t is well known that a change is [sic] size is considered
an obvious modification and it would have been obvious to alter the size of
the fabric layer as stated above in order to provide an impermeable area
around the fabric layer.” (Ans. 6:1-5.)
We are not persuaded by the Examiner’s statement. Claim 39 requires
that the length and width of the fabric layer are made smaller relative to the
water impermeable layer in order to create a border around the fabric layer.
The Examiner does not provide any meaningful rationale as to why a person
of ordinary skill in the art would have sought to alter the size of any one of
Jones-Steele’s layers relative to the other. The Examiner’s mere assertion
that the modification of Jones-Steele’s fabric layer to create the required
border would have been obvious is insufficient to account for the added
feature of claim 39.
We do not sustain the rejection of claim 39 over Jones-Steele and
Butler.
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The rejection based on Jones-Steele and Moretz
The Examiner rejected claims 21, 22, 24, 25, and 28-30 as
unpatentable over Jones-Steele and Moretz. The Appellant argues claims
24, 25, and 28-30 collectively with claim 21. Claim 22 is separately argued.
Claims 21, 24, 25, and 28-30
With respect to claim 21, the Examiner found that Jones-Steele
discloses a method of changing diapers as claimed including the use of a
disposable changing pad with a water impermeable layer and a fabric layer
but lacks an intervening water absorbing layer between those two layers. To
account for the water absorbing layer, the Examiner turned to Moretz as
disclosing a pad with a water absorbing layer 12 located between a water
impermeable layer 13 and a fabric layer 11. (Ans. 6:21-7:2.) The Examiner
reasoned that it would have been obvious to a person of ordinary skill in the
art to incorporate the structure of Moretz’s pad into the pad of Jones-Steele.
(Id. at 7:2-5.)
The Appellant challenges the Examiner’s rejection for the same
reason that was advanced above in connection with the rejection of claim 21
over Fitzsimmons and Moretz. Specifically, the Appellant argues that
incorporating Moretz’s pad configuration which has a layer that can absorb
urine into Jones-Steele’s changing pad would render the pad “stinky and
unusable.” (App. Br. 11:3-9.)
We reject the Appellant’s argument. The Appellant does not cite to
any objective evidence supporting his assertion that the combination of
Jones-Steele and Moretz would produce a pad that is “unusable.”
Furthermore, the Appellant’s argument is in conflict with the express
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disclosure of Moretz which provides that its bed pad is specifically designed
to dissipate moisture, such as urine, that is absorbed by the pad. (Moretz
1:20-24) Thus, Moretz’s pad absorbs urine but has the benefit of remaining
useable by dissipating the urine. The Appellant does not explain why that
benefit would not also result when the changing pad of Jones-Steele is
modified to have the features of Moretz’s layered pad.
We sustain the rejection of claim 21, 24, 25, and 28-30 over Jones-
Steele and Moretz.
Claim 22
Claim 22 is dependent on claim 21 and states in-part “wherein the at
least one movement resistance aid comprises a sealing strip[.]” (Claims
App’x. p. i.) The Examiner pointed to Jones-Steele’s fastening elements 30
as being movement resistance aids that are configured as a sealing strip.
(Ans. 6:15; 12:8-16.)
The Appellant urges that its specification at page 6, line 17 sets forth a
special definition for the term “sealing strip” as being “the type of closure on
Ziploc™ sandwich bags.” (Ans. 11:10-12.) The Appellant concludes that
Jones-Steele’s element 30 is not the type of closure on a Ziploc™ sandwich
bag and is thus not a sealing strip. (Id.)
Page 6, lines 15-17 of the Appellant’s specification is reproduced
below:
Examples of mechanical sticking agents include: hook and loop type
fasteners (e.g. Velcro™), snaps, and sealing strips (e.g. the closures
on Ziploc™ sandwich bags).

That portion of the specification does not set forth a definition for
“sealing strip.” The phrase “e.g. the closures on Ziploc™ sandwich bags”
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simply means that the closures of Ziploc™ sandwich bags are but one
example of a sealing strip. The listing of one example type of sealing strip
does not serve to specially define the meaning of that term. Jones-Steele’s
fastener elements 30 are arranged in strips along the edges of top sheet 28 to
secure the sheet to panels 18. (Jones-Steele Fig. 2.) On this record, the
Appellant has not shown that the Examiner erred in determining that those
strips of fastener elements meet the sealing strip requirement of claim 22.
We sustain the rejection of claim 22 as unpatentable over Jones-Steele
and Moretz.
The rejection based on Jones-Steele, Moretz, and Dishart
The Examiner rejected claims 31-37 as unpatentable over Jones-
Steele, Moretz, and Dishart.
Claim 31
Claim 31 is dependent on claim 22. The patentability of claim 31 has
not been argued apart from claim 22. Because we sustain the rejection of
claim 22 over Jones-Steele and Moretz, we also sustain the rejection of
claim 31 over Jones-Steele, Moretz, and Dishart.
Claims 32-37
Claims 32-37 are ultimately dependent on one of independent claims
21 or 26. Each of claims 32-37 requires a changing platform component that
is formed of “a unitary piece of molded plastic.” (Claims App’x. pp. v, vi.)
In accounting for that required feature, the Examiner found that Jones-
Steele discloses a changing platform component that is unitary but is not
made of plastic. To make up for that deficiency, the Examiner turned to
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Dishart as disclosing an infant carrier made of plastic. In view of that
teaching, the Examiner concluded that it would have been obvious to make
Jones-Steele’s changing platform out of plastic. (Ans. 8:15-9:2.)
The Appellant disputes the Examiner’s finding that Jones-Steele
discloses the unitary changing platform that is required by the claims. In
particular, the Appellant contends that Jones-Steele discloses a changing
platform that is formed as two separate pieces connected by separate hinge
assemblies. The Appellant submits that the connection of separate platform
pieces by hinges does not form a changing platform made of a “unitary piece
of molded” material. (App. Br. 12:1-8.)
The Examiner’s rationale in accounting for the above-quoted claim
feature is reproduced below (Ans. 12:17-21):
[U]nitary is customarily defined as pertaining to a unit or a whole.
Although the changing table of Jones-Steele is connected by hinges
each unitary half of the table forms the unit or whole table. Therefore,
the two unitary halves separated by hinges clearly form a unitary table
and do not need to be replaced with a uniform or homogeneous
structure as asserted by the Applicant.

The Examiner’s rationale is misdirected. The claims do not require
that the changing platform simply be a “unit.” Rather, the entire platform
must be formed of a “unitary piece of molded plastic.” Jones-Steele’s
changing platform is formed of multiple separate components, i.e., two side
pieces spaced apart by hinges. (Jones-Steele 1:22-40; Fig. 2.) The
relationship of those multiple components to one another allows the sides of
Jones-Steele’s platform to fold together. (Id.) Even if the additional
disclosure of Dishart does set forth the use of a plastic material in an infant
carrying device, the Examiner does not adequately explain how the
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teachings of the prior art would have led one of ordinary skill to form the
multiple separate components of Jones-Steele’s folding changing platform as
a unitary piece of molded plastic.
Accordingly, we do not sustain the rejection of claims 32-37 over
Jones-Steele, Moretz, and Dishart.
F. CONCLUSION
1. The Appellant has not shown that the Examiner erred in
determining that the teachings of Moretz are available as prior art in
rejecting the Appellant’s claims.
2. The Appellant has not shown that the Examiner erred in
determining that a person of ordinary skill in the art would have had
adequate reason to combine the teachings of Fitzsimmons and Moretz.
3. The Appellant has shown that the Examiner erred in
determining that the step in method claim 23 of sticking a disposable
changing pad to a carpeted floor is simply a statement of intended use that is
met if a element in the prior art is capable of performing that use.
4. The Appellant has not shown the Examiner erred in
determining that a person of ordinary skill in the art would have recognized
that Fitzsimmons discloses a clip that retains a changing pad on a changing
platform as is required by claim 27.
5. The Appellant has not shown the Examiner erred in
determining that Jones-Steele discloses a structure configured as a pad that is
disposable.
6. The Appellant has not shown that the Examiner erred in
determining that one with ordinary skill in the art would have recognized
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from the teachings of Butler that a clip may be substituted for a snap tab
fastening element that is disclosed in Jones-Steele.
7. The Appellant has shown that the Examiner erred in concluding
that it would have been obvious to change the size of a fabric layer in Jones-
Steele so that a water impermeable sheet forms a border around that fabric
layer.
8. The Appellant has not shown that the Examiner erred in
determining that a person of ordinary skill in the art would have had
adequate reason to combine the teachings of Jones-Steel and Moretz.
9. The Appellant’s specification does not provide a special
definition of the claim term “sealing strip” which distinguishes that term
over a strip of fastening elements that is disclosed in Jones-Steele.
10. The Appellant has shown that the Examiner was incorrect in
finding that Jones-Steele discloses a changing platform that is formed of a
unitary piece of material.
G. ORDER
The rejection of claims 21, 27, and 38 under 35 U.S.C. § 103(a) as
unpatentable over Fitzsimmons and Moretz is affirmed.
The rejection of claim 23 under 35 U.S.C. § 103(a) as unpatentable
over Fitzsimmons and Moretz is reversed.
The rejection of claims 26 and 27 under 35 U.S.C. § 103(a) as
unpatentable over Jones-Steele and Butler is affirmed.
The rejection of claim 39 under 35 U.S.C. § 103(a) as unpatentable
over Jones-Steele and Butler is reversed.
The rejection of claims 21, 22, 24, 25, and 28-30 under 35 U.S.C.
§ 103(a) as unpatentable over Jones-Steele and Moretz is affirmed.
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The rejection of claim 31 under 35 U.S.C. § 103(a) as unpatentable
over Jones-Steele, Moretz and Dishart is affirmed.
The rejection of claims 32-37 under 35 U.S.C. § 103(a) as
unpatentable over Jones-Steele, Moretz and Dishart 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).

AFFIRMED-IN-PART

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RICHARD E. SCHAFER, Administrative Patent Judge.
I dissent from the reversal of the rejections of Claims 32-37 and 39. I
would affirm those rejections for essentially the reasons stated by the
Examiner.

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FRANK ROSENBERG
P.O. BOX 29230
SAN FRANCISCO CA 94129-0230