Ex Parte Yazarlo-Stahl et al

Board of Patent Appeals and Interferences

Jun 26, 2012

11765643 (B.P.A.I. Jun. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte SHADI YAZARLO-STAHL and SOFIA HERMANSSON
__________

Appeal 2011-004930
Application 11/765,643
Technology Center 3700
__________

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

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1-15, directed to a disposable pad with a closure device. The claims
have been rejected on the grounds of anticipation and obviousness. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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STATEMENT OF THE CASE
Claims 1-15 are pending and on appeal. Claim 1 (emphasis added) is
representative of the subject matter on appeal:
1. A substantially rectangular disposable pad for the protection of an
object that requires protection, the pad comprising:
at least one edge;
a liquid-receiving covering layer intended to face away from the
object that requires protection;
an essentially liquid-tight backing layer intended to face towards the
object that requires protection when it is being used; and
a device for closing the pad after use, wherein the device comprises
at least one securing flap having a first end area and a second end area,
the first end area is permanently attached to the backing layer or to the
liquid-receiving covering layer at a location proximate the at least one
edge, the second end area of the securing flap has a device for securely
attaching directly to the liquid-tight backing layer of the pad after use;
wherein
the device is convertible from a first position in which the disposable
pad is shipped to a second position in which the device holds the disposable
pad in a rolled-up configuration; and
in the first position, the second end area is located between the
location proximate the at least one edge and the at least one edge.
The Examiner relies on the following evidence:
O’Connell US 4,097,943 Jul. 4, 1978
Hogan US 5,135,792 Aug. 4, 1992
Ames-Ooten et al. US 5,575,784 Nov. 19, 1996
Trefethren et al. US 2004/0163179 A1 Aug. 26, 2004
Kido et al. EP 0 815 820 A2 Jan. 7, 1998
The claims stand rejected as follows:
I. Claims 1, 3-5, 8, 9, 11, and 15 under 35 U.S.C. § 102(b) as
anticipated by Trefethren (Ans. 3-7);
II. Claim 10 under 35 U.S.C. § 103(a) as unpatentable over
Trefethren and O’Connell (Ans. 10);
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III. Claim 12 under 35 U.S.C. § 103(a) as unpatentable over
Trefethren, O’Connell, and Ames-Ooten (Ans. 11);
IV. Claims 2 and 6 under 35 U.S.C. § 103(a) as unpatentable over
Trefethren and Hogan (Ans. 7-9); and
V. Claims 7, 13, and 14 under 35 U.S.C. § 103(a) as unpatentable
over Trefethren, Hogan, and Kido (Ans. 11-13).

FINDINGS OF FACT
1. Figures 1, 2a, and 2b of the Specification are reproduced
immediately below:

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Figure 1 of the Specification shows a disposable changing pad 101
that meets the limitations of claim 1. The pad is shown from the side that is
intended to face toward an object that is to be protected, with a backing layer
104, and a closing means 120 (Spec. 7: 30-34).
Figure 2a shows a section through the closure means 120 “before the
means has been used” (id. at 7: 35-37). Figure 2b shows a section through
the closure means “in the outstretched state before it is to be closed against
the backing layer of the pad” (id. at 8: 1-4).
The means 120 comprises an elongated securing flap
121, a protective layer 122 and a securing device 123. The
securing flap 121 is arranged in conjunction with the edge 112
of the pad 101, as a consequence of which it is permanently
attached to the backing layer 104 adjacent to its first end area
124. The second end area 125 of the securing flap 121 is
attached in a detachable fashion to the backing layer 104 of the
pad 101 . . . .
(Id. at 12: 6-14).
Figure 2a also shows the securing flap 121, which may be “a strip of
paper, . . . nonwoven material, plastic or the like” (id. at 14: 13-16), “folded
in the form of a Z in its initial state” (id. at 7-8).

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2. Trefethren discloses a disposable changing pad with a “finger
placement indicator . . . suitable for use by a consumer to easily unfold a
folded changing pad” (Trefethren ¶ 42). The finger placement indicator
“may be indicia printed or scored upon a portion of a surface . . . of an outer
panel . . . of a folded changing pad” or it “may be defined by a piece of
material situated on a portion of a surface . . . of an outer panel of a folded
changing pad” (id.).
3. Figure 19 of Trefethren is reproduced below:

Figure 19 depicts Trefethren’s changing pad, shown in its unfolded
configuration, with a “finger placement indicator (70)” comprising “a strip
(72) of material having a length, a width and opposing ends” which is
“secured or joined” “adjacent to a portion of a surface (60, 62) of an outer
panel (54, 56) of a folded changing pad” (Trefethren ¶ 43).
4. Trefethren teaches that the finger placement indicator 70 may
also serve as a closure means “providing a user with a means of containing a
soiled absorbent product, a wiping product and/or other soiled items in a
tight, odor containing package that can be easily and conveniently disposed”
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(Trefethren ¶ 45). Trefethren also teaches that “the closure means may be
provided separately from the finger placement indicator (70)” (id. at ¶ 47).
5. Trefethren teaches that “[t]he closure means may be a pressure
sensitive adhesive, a mechanical fastener, a cohesive fastener, or other
suitable means as known in the art” (Trefethren ¶ 46).

PRINCIPLES OF LAW
“[A]pparatus claims cover what a device is, not what a device does.”
Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990). Claims directed to an apparatus must be distinguished from the
prior art on structural grounds. See In re Schreiber, 128 F.3d 1473, 1477-
1478 (Fed. Cir. 1997). Merely stating an intended use for an apparatus is not
sufficient to distinguish the apparatus from the prior art. In re Sinex, 309
F.2d 488, 492 (CCPA 1962).
DISCUSSION
I: Anticipation by Trefethren
Claims 1, 3-5, 8, 9, 11, and 15 stand rejected as anticipated by
Trefethren.
The Examiner finds that Trefethren discloses a disposable changing
pad that meets all the structural requirements of claim 1, including the
structural requirements for the closure device. Specifically, the Examiner
finds that Trefethren’s finger placement indicator 70, which also provides a
closure means for the changing pad, meets all the structural requirements of
claim 1 because Trefethren teaches that “the device 70 is a strip of material
that can be similar to the material of the backing layer, [and] the material of
the backing layer is disclosed as being foldable” (Ans. 4-5).
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Appellants contend that “the ‘second end area’ of Trefethren’s finger
placement indicator 70 in any ‘first position’ is not located between the
location of the ‘first end area’ of the indicator 70 proximate the edge of the
article 30 and the edge of the article 30 as defined in independent Claim 1”
(App. Br. 11-12).
This argument is not persuasive as Appellants have not identified a
structural difference between Trefethren’s changing pad and the changing
pad of claim 1 (compare Figure 2b of the Specification with Figure 19 of
Trefethren). At most, Appellants have identified a transient difference in the
position of the non-permanently attached end of Trefethren’s indicator 70.
See Schreiber, 128 F.3d at 1477-1478, and Sinex, 309 F.2d at 492.
Appellants further argue that “[t]he combination of features defined
in” claims 3, 4, 5, 8, 9, 11, and 15 “is not disclosed or inherently described
by Trefethren” (App. Br. 14-15). However, these arguments are not
persuasive for the reasons set forth in detail by the Examiner on pages 15
and 16 of the Answer.
Accordingly, we will affirm the rejection of claims 1, 3-5, 8, 9, 11,
and 15 as anticipated by Trefethren.
II: Obviousness over Trefethren and O’Connell
Claim 10 stands rejected as unpatentable over Trefethren and
O’Connell for reasons of record on page 10 of the Answer.
Appellants contend that “[t]he combination of features defined in
Claim 10 . . . is neither taught nor suggested by the combination of
Trefethren and O’Connell” (App. Br. 16-17).
This conclusory statement does not address the Examiner’s findings
or conclusions, and is insufficient to overcome the rejection.
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III: Obviousness over Trefethren, O’Connell and Ames-Ooten
Claim 12 stands rejected as unpatentable over Trefethren, O’Connell
and Ames-Ooten for reasons of record on page 11 of the Answer.
Appellants contend that “[t]he combination of features defined in
Claim 12 . . . is neither taught nor suggested by the combination of
Trefethren and Ames” (App. Br. 17).
This conclusory statement does not address the Examiner’s findings
or conclusions, and is insufficient to overcome the rejection.
IV: Obviousness over Trefethren and Hogan
Claims 2 and 6 stand rejected as unpatentable over Trefethren and
Hogan for reasons of record on pages 7-10 of the Answer.
Appellants contend that “[t]he combination of features defined in
[Claims 2 and 6] . . . is neither taught nor suggested by the combination of
Trefethren and Hogan” (App. Br. 16).
This conclusory statement does not address the Examiner’s findings
or conclusions, and is insufficient to overcome the rejection.
V: Obviousness over Trefethren, Hogan, and Kido
Claims 7, 13, and 14 stand rejected as unpatentable over Trefethren,
Hogan, and Kido for reasons of record on pages 11-13 of the Answer.
Appellants contend that “[t]he combination of features defined in
[Claims 7, 13, and 14] . . . is neither taught nor suggested by the
combination of Trefethren and Kido” (App. Br. 17-18).
This conclusory statement does not address the Examiner’s findings
or conclusions, and is insufficient to overcome the rejection.

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SUMMARY
Anticipation rejection I and obviousness rejections II-V are affirmed.
TIME PERIOD FOR RESPONSE
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

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