Ex Parte Tomes et al

Board of Patent Appeals and Interferences

Jul 9, 2012

11557423 (B.P.A.I. Jul. 9, 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.
11/557,423 11/07/2006 Kimberly L. Tomes 24126.7 1468
716 7590 07/09/2012
COX SMITH MATTHEWS INCORPORATED
112 EAST PECAN STREET, SUITE 1800
SAN ANTONIO, TX 78205-1521
EXAMINER
HANRAHAN, BENEDICT L
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
07/09/2012 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 KIMBERLY L. TOMES and THERESA ERNEST
__________

Appeal 2011-004923
Application 11/557,423
Technology Center 3700
__________

Before TONI R. SCHEINER, ERIC GRIMES, and ERICA A. FRANKLIN,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
disposable device intended to “allow[ ] for comfortable and hygienic
urination” (Spec. 1, ¶ 1). The Examiner has rejected the claims as
anticipated by or obvious in view of the prior art. We have jurisdiction
under 35 U.S.C. § 6(b). We reverse.
Appeal 2011-004923
Application 11/557,423

2
STATEMENT OF THE CASE
Claims 1-13 and 15-17 are on appeal. Claim 14 is also pending but
the Examiner has indicated that it is allowable (Answer 15). Claim 1 is
representative and reads as follows:
1. A disposable urine collection device to be used by a person, said
device comprising:
a shell having an inner surface;
an absorbent pad attached to said shell;
said absorbent pad having a shape adapted for generally
conforming to said inner surface of said shell;
said absorbent pad having a capacity for absorbing a quantity of
urine associated with a complete urinary discharge by the person; and
at least one elastic cuff attached to at least one of said absorbent
pad and said shell;
said at least one elastic cuff being adapted for generally
conforming to the urinary area of the person;
said at least one elastic cuff being further adapted to
substantially prevent splattering of urine outside said urine collection
device as the person excretes urine into said urine collection device.

The Examiner has rejected all of the claims on appeal as either
anticipated by Zachery
1
or obvious based on Zachery, alone or combined
with one of Rollins,
2
Ernest,
3
or Daley
4
(see Answer 5-10). The same issue
is dispositive for all of the rejections. With regard to claim 1, the only
independent claim, the Examiner finds that Zachery‟s “insert device for an
adult diaper” (Zachery, col. 1, ll. 32-33), when used as intended with a
diaper, meets all of the claim limitations (Answer 5-6).

1
Zachery, US 6,224,582 B1, issued May 1, 2001.
2
Rollins et al., US 5,423,788, issued June 13, 1995.
3
Ernest et al., US 2004/0216220 A1, issued Nov. 4, 2004.
4
Daley et al., US 6,534,149 B1, issued Mar. 18, 2003.
Appeal 2011-004923
Application 11/557,423

3
Appellants argue that “Zachery does not disclose an absorbent pad
attached to a shell; rather, Zachery discloses an insert for an adult diaper”
(Appeal Br. 3-4). Appellants argue that the diaper in Zachery does not meet
the Specification‟s definition of a “shell” (id. at 4-5) and that Zachery‟s
insert and diaper are not “attached,” as that term is defined in the
Specification (id. at 5-6).
We agree with Appellants that Zachery‟s device does not include a
“shell” with an absorbent pad “attached” to it, as those terms are defined in
Appellants‟ Specification. Zachery discloses an insert device that is “held in
position by a diaper of the usual type worn in the ordinary manner”
(Zachery, col. 1, ll. 39-40).
The Examiner interprets the “shell” required by claim 1 to read on the
diaper holding in place Zachery‟s absorbent insert device (Answer 10-11).
“Although words in a claim are generally given their ordinary and
customary meaning, a patentee may choose to be his own lexicographer and
use terms in a manner other than their ordinary meaning, as long as the
special definition of the term is clearly stated in the patent specification or
file history.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
(Fed. Cir. 1996). The Specification states that “„[s]hell‟ means a generally
concave structure that tends to retain its shape over a substantial period of
time. A shell may or may not be biodegradable.” (Spec. 5, ¶ 24.) We do
not agree with the Examiner‟s conclusion that the broadest reasonable
interpretation of the “shell” recited in the claims encompasses a diaper.
As described by Zachery, a diaper does not have a concave shape that
it retains over a substantial period of time. Zachery describes the diaper
Appeal 2011-004923
Application 11/557,423

4
used in combination with its insert as having an open configuration, as well
as a closed, fastened configuration. See Zachery, col. 3, ll. 18-20 (“a clean
adult diaper of the usual type placed under the hips and back in an open
position ready to be closed”) and ll. 32-33 (“The regular diaper is then
closed and fastened in the usual way”). Although a diaper, like any
relatively flexible article, is capable of being formed into a concave shape, a
diaper is not “a generally concave structure that tends to retain its shape over
a substantial period of time” (Spec. 5, ¶ 24), and therefore does not meet the
Specification‟s definition of a “shell.”
In addition, the insert and diaper in Zachery are not “attached” as
defined in the Specification. The Specification defines “attached” to mean
“fastened or held in place in any manner, including but not limited to one or
more stitches, staples, brads, rivets, nails, screws, glue, adhesive, welding,
melting, fusing, tape, tension, compression, friction, or a combination
thereof” (Spec. 4, ¶ 15).
The Examiner reasons that the insert and diaper in Zachery are
attached because “Zachery discloses the attachment mechanisms as defined
by Applicant including compression and friction” (Answer 12).
We disagree. Zachery discloses that the advantage of its insert device
is that it allows changing of a soiled insert without lifting a bedridden
patient‟s body off the bed (see Zachery, col. 1, ll. 10-20, 40-45). Zachery
describes the use of its insert as follows:
[T]he patient or user is positioned on his/her back with a clean
adult diaper of the usual type placed under the hips and back in
an open position ready to be closed, i.e., ready to be fastened
around the patient‟s abdomen and legs. The insert of the present
invention is . . . placed absorbent side against the patient, the
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Application 11/557,423

5
wide end across the patient‟s stomach and the narrow end
extended down between the legs. . . .
The regular diaper is then closed and fastened in the usual way.
(Id. at col. 3, ll. 17-33.)
Thus, Zachery does not describe its insert as being attached to either
the diaper or the patient; although the insert is positioned in between the
diaper and the patient, it is not attached to either.
In rejecting some of the claims under 35 U.S.C. § 103(a), the
Examiner relied on Zachery‟s disclosure in combination with Rollins,
Ernest, or Daley (Answer 7-9). However, the Examiner pointed to nothing
in any of these references that would make up for the deficiency of Zachery
discussed above. The obviousness rejections therefore suffer from the same
error as the rejections based on Zachery alone, and are reversed for the same
reason.
SUMMARY
We reverse all of the rejections on appeal.

REVERSED

cdc