LIFESTYLES HEALTHCARE PTE. LTD.

Patent Trials and Appeals Board

Sep 30, 2020

14055190 - (D) (P.T.A.B. Sep. 30, 2020)

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.
14/055,190 10/16/2013 KC Nguyen LFS0010-00US 2656
48394 7590 09/30/2020
SERVILLA WHITNEY LLC
33 WOOD AVE SOUTH
SUITE 830
ISELIN, NJ 08830
EXAMINER
LEE, MICHELLE J
ART UNIT PAPER NUMBER
3786
NOTIFICATION DATE DELIVERY MODE
09/30/2020 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):
docket@dsiplaw.com
hservilla@dsiplaw.com
lmurphy@dsiplaw.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,
CHAYAPORN PONGTHANOMSAK, CHINTANA NETRUNG,
MATTHEW STEVEN GROSKORTH, UTAIN PATTANAPRADIT, and
PAUL D’AGUIAR
____________

Appeal 2020-001319
Application 14/055,190
Technology Center 3700
____________

Before PHILLIP J. KAUFFMAN, ANNETTE R. REIMERS, and
TARA L. HUTCHINGS, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–4, 20–24, and 27–31. We have jurisdiction under
35 U.S.C. § 6(b).

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our Decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed June 14, 2019), and Reply Brief (“Reply Br.,” filed Dec. 4, 2019), and
the Examiner’s Answer (“Ans.,” mailed Oct. 8, 2019), Advisory Action
(“Adv. Act.,” mailed Feb. 20, 2019), and Final Office Action (“Final Act.,”
mailed Nov. 15, 2018). Appellant identifies the real party in interest as
LIFESTYLES HEALTHCARE PTE. LTD. Appeal Br. 4.
Appeal 2020-001319
Application 14/055,190

2
We REVERSE.
CLAIMED INVENTON
The claims are directed to decorated polymeric articles, such as
prophylactics and protective devices. Spec. ¶¶ 1, 4. Claims 1 and 31 are
independent. Claim 1 is reproduced below:
1. A polymeric condom having a tip configured to fit over a
tip of a user’s penis, the condom for use by the user in sexual
activity with a partner, comprising:
a polymeric sheath, the sheath comprising at least two
tubular polymeric fluid barrier layers that have the shape of the
sheath, the sheath having an open and a closed end at the tip;
a tubular portion of the sheath corresponding to the tubular
polymeric fluid barrier layers; and
a decoration disposed on a flexible, two-dimensional
substrate having a defined area bounded on all sides by edges;
the two-dimensional substrate conformed to the tubular
shape of the polymeric sheath and sandwiched between the at
least two tubular polymeric fluid barrier layers, wherein the
substrate comprises at least one of a polymeric film, paper, or a
combination of polymeric film and paper that traverses at least a
quarter of a circumference of the at least two tubular polymeric
fluid barrier layers, and
wherein the decoration comprises an image defined by
differences across the image in color or color density.

REJECTIONS
Claims 1, 2, 20–24, and 27–31 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Vistins (US 2003/0124354 A1, pub. July 3, 2003) and
Hirano (US 4,757,557, iss. July 19, 1998).
Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Vistins, Hirano, and Maeder (WO 2004/014266 A1, pub. Feb. 19, 2004).
Appeal 2020-001319
Application 14/055,190

3
Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Vistins, Hirano, and Stager (US 4,186,445, iss. Feb. 5, 1980).

ANALYSIS
Independent Claims 1 and 11, and Dependent Claims 2, 20–24, and 27–30
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting claims 1 and 13 under 35 U.S.C. § 103(a) because the combination
of Vistins and Hirano does not teach or suggest a polymeric condom having
“a decoration disposed on a flexible, two-dimensional substrate,” the
substrate being “sandwiched between the at least two tubular polymeric fluid
barrier layers,” as recited in claim 1, and similarly recited in claim 31.
Appeal Br. 11–12; id. at 19, 21 (Claims App.); Reply Br. 2.
In rejecting claims 1 and 31 under 35 U.S.C. § 103, the Examiner
primarily relies on Vistins as disclosing the recited limitations. See Final
Act. 4. However, the Examiner acknowledges that Vistins does not teach “a
decoration disposed on a flexible, two-dimensional substrate . . . sandwiched
between the at least two tubular polymeric fluid barrier layers.” Id. For this
aspect of the claim language, the Examiner relies on Hirano. Id. at 5 (citing
Hirano, 3:20–41, Fig. 4).
Hirano relates to a synthetic resin or rubber domestic gauntlet with a
design seal to be used in washing and cooking. Hirano 1:7–10. Hirano
seeks to provide a design seal (e.g., animal(s), flower(s), letter(s)) that does
not easily detach with frequent use of the gauntlet. Id. at 1:14–18, 32–39.
Hirano’s gauntlet 10 includes hand portion 12, first wrist portion 13 having
design seal 16 (e.g., a flower), and second wrist portion 14. Id. 3:8–41,
Fig. 1. Design seal 16 is rubber or vinyl film applied to core sheet 15 at a
Appeal 2020-001319
Application 14/055,190

4
location corresponding to first wrist portion 13. Id. at 3:17–32, Figs. 1, 4.
Paste layer 18 is applied to an external surface of first wrist portion 13, and
then flocking 19 is applied to paste layer 18. Id. at 3:36–41, Fig. 4.
The Examiner finds that Hirano design seal 16 is “sandwiched
between core sheet 15 and paste 18.” Final Act. 5. Appellant argues, and
we agree, that paste layer 18 is not a polymeric fluid barrier layer, as
required by claims 1 and 31. See Appeal Br. 11 (“Those skilled in the art
understand that a combination of paste and fibers does not form a polymeric
fluid barrier layer.”).
In response, the Examiner explains that Vistins, not Hirano, teaches
the claimed polymeric layers. Ans. 12; see also Adv. Act. 3.2 According to
the Examiner, one of ordinary skill in the art would have been motivated to
provide the polymeric layers of Vistins “with a decoration between them, as
taught by Hirano” to “avoid a monotonous appearance and have a distinctly
displayed seal/decoration.” Ans. 12, 13 (citing Hirano 1:44–46); see also
Adv. Act. 2.
Yet, Hirano’s paste and flocking layers are not analogous, structurally
or functionally, to the polymeric layers described by Vistins. Appeal
Br. 11–12. Because of this structural and functional difference, Hirano
would not have suggested sandwiching a film design seal between polymeric
layers. Although a desire to avoid a monotonous appearance and have a
distinctly displayed seal or decoration might have led one of ordinary skill in
the art to add surface ornamentation to a condom, that desire alone would

2 Although the Advisory Action does not include page numbers, we refer to
the pages of the Advisory Action by number beginning with the cover sheet
as page 1.
Appeal 2020-001319
Application 14/055,190

5
not have suggested sandwiching a two-dimensional substrate on which a
design was disposed between at least two polymeric fluid barrier layers, as
recited in claims 1 and 31. Therefore, we do not sustain the rejection of
claims 1, 2, 20–24, and 27–31 under 35 U.S.C. § 103(a) as unpatentable over
Vistins and Hirano.

Dependent Claims 3 and 4
Claims 3 and 4 depend from claim 1. The Examiner’s rejections of
these claims does not remedy the deficiencies in the rejection of independent
claim 1. Therefore, we do not sustain the rejections of claims 3 and 4 under
35 U.S.C. § 103(a) for the same reasons described with respect to claim 1.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§ Basis/References Affirmed Reversed
1, 2, 20–24,
27–31 103(a) Vistins, Hirano
1, 2, 20–24,
27–31
3 103(a) Vistins, Hirano, Maeder 3
4 103(a) Vistins, Hirano, Stager 4
Overall
Outcome
1–4, 20–24,
27–31

REVERSED