LIFESTYLES HEALTHCARE PTE. LTD.

Patent Trials and Appeals Board

Dec 1, 2021

2021003626 (P.T.A.B. Dec. 1, 2021)

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.
14/976,543 12/21/2015 KC Nguyen LFS0020-00US 1007
48394 7590 12/01/2021
SERVILLA WHITNEY LLC
33 WOOD AVE SOUTH
SUITE 830
ISELIN, NJ 08830
EXAMINER
BAKER, ADAM D
ART UNIT PAPER NUMBER
3786
NOTIFICATION DATE DELIVERY MODE
12/01/2021 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, UTAIN PATTANAPRADIT,
CHAYAPON NGOWPRASERT, and
CHAYAPORN PONGTHANOMSAK
____________

Appeal 2021-003626
Application 14/976,543
Technology Center 3700
____________

Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
AMEE A. SHAH, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, 6, 7, 16–19, and 22. We have
jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as LIFESTYLES
HEALTHCARE PTE. LTD. (Appeal Br. 3).
Appeal 2021-003626
Application 14/976,543
2

CLAIMED SUBJECT MATTER
The Appellants’ claimed invention relates to a coated condom (Spec.,
para. 1). Claim 1, reproduced below, is representative of the subject matter
on appeal.

1. A packaged coated condom, comprising:
a coated condom comprising:
a tubular shaft comprising an elastomeric material, the tubular
shaft having a tip on a closed end of the tubular shaft, an open end
opposite the closed end on the tubular shaft, and a length of the
tubular shaft that extends from the open end of the tubular shaft to the
tip on the closed end of the tubular shaft; and
a rolled configuration having a plurality of rolls of the
elastomeric material;
a fluidic coating material migrated along the rolls of
elastomeric material, wherein:
the fluidic coating material fully covering substantially all of an
exterior surface of the tubular shaft, the fluidic coating material covers
substantially all of the length of the exterior surface of the tubular
shaft when the coated condom is in an unrolled configuration, and
the fluidic coating material comprises one or more components
selected from the group consisting of: silicone-based lubricants,
flavorings, and scents, and the fluidic coating material excludes an
active ingredient and a water-based lubricant; and
a foil package inside which the coated condom is sealed.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Name Reference Date
Harrison US 2002/0103414 Al Aug. 1, 2002
Wray US 2005/0076917 Al Apr. 14, 2005
Potter US 2009/0028811 Al Jan. 29, 2009
Harrison US 2012/0294820 Al Nov. 22, 2012

Appeal 2021-003626
Application 14/976,543
3

The following rejections are before us for review:
1. Claims 1, 3, and 7 are rejected under 35 U.S.C. § 103 as being
unpatentable over Harrison and Potter.
2. Claims 6 and 19 are rejected under 35 U.S.C. § 103 over
Harrison, Potter, and Wary.
3. Claims 16–18 and 22 are rejected under 35 U.S.C. § 103 as
unpatentable over Harrison, Wray, and Potter.

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence2.

ANALYSIS
Claims 1, 3, 6, 7, and 19
The Appellant first argues that the rejection of claim 1 is improper
because the prior art references of Harrison and Potter are not analogous art
for the reason that Harrison has two lubricants (one on each surface), while
Potter has only one lubricant (Appeal Br. 12). The Appellant further argues
this point by asserting that Harrison uses a silicone based lubricant while
Potter uses a water-soluble lubricant and suspends a latent lubricant additive
(Appeal Br. 12). The Appellant further argues that Potter requires a ratio of
components of glycerol and propylene glycol to obtain migration of the
lubricant and is not relevant to Harrison (Appeal Br. 13).

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
Appeal 2021-003626
Application 14/976,543
4

In contrast, the Examiner has determined that the rejection is proper
(Final Act. 2, 3, Ans. 3, 4).
We agree with the Examiner and adopt the findings and rationale of
the Examiner set forth in the rejection of claim 1. While the Appellant has
argued that the references are not analogous prior art due to using dual or
single lubricants, different types of lubricants, or certain ratios of lubricant
components, we disagree with this contention. Here, both the references of
Harrison and Potter are directly related to the field of condom protective
devices, as is the invention (see Spec. ¶ 1); thus, the references are
analogous art. Harrison has disclosed a condom substantially as claimed in
its Figures 1–10 and as set forth in the rejection (see Final Act. 2, 3).
Harrison does not disclose the fluid coating covering the length of the
tubular shaft when the condom is an unrolled configuration, but Potter
discloses this at paragraph 15 in discussing migration of the fluid coating
along the length of the condom. Here, the modification of Harrison to
include the fluid coating of Potter to allow for proper migration of the
lubricant when in the unrolled condition would have been an obvious,
predictable combination of familiar elements for their known functions, and
the cited rejection of claim 1 is sustained. The Appellant has not provided
separate arguments for dependent claims 3 and 7, and the rejection of these
claims is accordingly affirmed as not argued.
With regard to the rejection of claim 6, the Appellant argues the
rejection is improper because the claim requires “50 to 1000mg of the fluidic
coating is disposed on the tubular shaft” (App. Br. 13). The cited reference
of Wray discloses that the lubricant may be “1 ml to 3ml” but discloses a
volume range instead of a weight range. Here, one of ordinary skill in the
art would have readily inferred that the amount of fluid coating for the
Appeal 2021-003626
Application 14/976,543
5

lubricant could be varied based on the desired lubrication level and such a
modification is considered an obvious modification. In KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398 (2007) the Court stated that when considering
obviousness that “the analysis need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSR at 418. Accordingly, the rejection of claim 6 is
sustained.
With respect to claim 19, the Appellant argues that the prior art fails
to disclose that the fluidic coating extends the length of the exterior surface
when it is in an unrolled configuration (Appeal Br. 14). This feature
however is disclosed by Potter at paragraphs 3 and 15 which state that in an
unrolled condom there will be lubricant migration along the length of the
rolled condom. Accordingly, the rejection of claim 19 is sustained.

Claims 16-18, and 22
The Appellant first argues that the rejection of claim 16 is improper
because the prior art references of Harrison and Potter are not analogous art
for the reason that Harrison has two lubricants (one on each surface), while
Potter has only one lubricant (Appeal Br. 15). The Appellant further argues
the references are not analogous art because Harrison uses a silicone based
lubricant while Potter uses a water-soluble lubricant and suspends a latent
lubricant additive (Appeal Br. 15). The Appellant also argues that Potter
requires a ratio of components of glycerol and propylene glycol to obtain
migration of the lubricant and is not relevant to Harrison (Appeal Br. 15).
In contrast, the Examiner has determined that the rejection is proper
(Final Act. 4, 5, Ans. 4, 5).
Appeal 2021-003626
Application 14/976,543
6

We agree with the Examiner and adopt the findings and rationale of
the Examiner set forth in the rejection of claim 16. While the Appellant
argues that the references of Harrison and Potter are not analogous art due to
using dual or single lubricants, different types of lubricants, or certain ratios
of lubricant components, we disagree with this contention. Here, both the
references of Harrison and Potter are directly related to the field of condom
protective devices, as is the invention; thus, the references are analogous art.
Harrison has disclosed a condom substantially as claimed in its Figures 1–10
and as set forth in the rejection (see Final Act. 4, 5). The Appellant also
argues that Harrison and Wray are not analogous art because of the manner
of the lubricant and the way it is applied to the condom in each reference,
but we disagree as both are related to the same field as the invention of
condoms. Harrison does not disclose the fluid coating covering the length of
the tubular shaft when the condom is an unrolled configuration, but Potter
discloses this at paragraph 15 by disclosing migration of the fluid coating
along the length of the condom. The cited reference of Wray discloses that
the lubricant may be “1 ml to 3ml” but discloses a volume range instead of a
weight range.
Here, the modification of Harrison to include the fluid lubricant
migration of Potter to allow for proper migration of the lubricant when in the
unrolled condition, and to include a specific weight of lubricant in view of
Wray would have been an obvious, predictable combination of familiar
elements for their known functions, and the cited rejection of claim 1 is
sustained. Note that in the cited combination, selection of the specific
number of 15 rolls or weight of lubrication could readily be modified based
on the level of size and lubrication needed for the condom and the
modification of the references to include this is considered obvious. Claim
Appeal 2021-003626
Application 14/976,543
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16 contains a specific length, width, and number of rolls of the condom, but
as above, such a modification in the combination is considered an obvious
modification based on the desired size of the condom. Accordingly, the
rejection of claim 16 is affirmed. The Appellant has not provided separate
arguments for dependent claims 17 and 18 and the rejection of these claims
is accordingly affirmed as not argued.
With regard to claim 22, the claimed limitations of a specific width
dimension of 53 mm, length of 185 mm, and the use of 16 rolls is considered
to be an obvious modification based on the particular size of the condom
desired. Accordingly, the rejection of claim 22 is sustained.

CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1, 3, and 7 under 35 U.S.C. § 103 as being unpatentable
over Harrison and Potter.
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 6 and 19 under 35 U.S.C. § 103 over Harrison, Potter, and
Wary.
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 16–18 and 22 under 35 U.S.C. § 103 as unpatentable over
Harrison, Wray, and Potter.

Appeal 2021-003626
Application 14/976,543
8

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3, 7 103 Harrison, Potter 1, 3, 7
6, 19 103 Harrison, Potter,
Wary
6, 19
16–18, 22 103 Harrison, Wray,
Potter
16–18, 22
Overall
Outcome
1, 3, 6, 7,
16–19, 22

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED