Ex Parte Clark et al

Patent Trial and Appeal BoardSep 26, 2012

11214401 (P.T.A.B. Sep. 26, 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. 11/214,401 08/29/2005 James Joseph Clark JR. 21225 2882 23556 7590 09/27/2012 KIMBERLY-CLARK WORLDWIDE, INC. Tara Pohlkotte 2300 Winchester Rd. NEENAH, WI 54956 EXAMINER STEPHENS, JACQUELINE F ART UNIT PAPER NUMBER 3761 MAIL DATE DELIVERY MODE 09/27/2012 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JAMES JOSEPH CLARK, JR., GARRY ROLAND WOLTMAN, SUSAN JEAN MODER, ANNAIG GAEL JACQUEMARD, and ROLAND ECKEHARD NEPF ____________ Appeal 2009-014750 Application 11/214,401 Technology Center 3700 ____________ Before NEAL E. ABRAMS, CHARLES N. GREENHUT, and REMY J. VANOPHEM, Administrative Patent Judges. ABRAMS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE James J. Clark, Jr. et al. (Appellants) seek our review under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-20. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Appeal 2009-014750 Application 11/214,401 2 THE INVENTION The claimed invention is directed to an article comprising a personal care product and a pouch which encloses the product. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. An article, having a longitudinal length, a width and a thickness, the article comprising: a fresh personal care product in a substantially unsoiled condition; and a pouch having a pouch volume which operatively encloses the fresh product; the pouch including a front panel region; a back panel region which is operatively connected to the front panel region; and at least one expansion section which is operatively connected between the front panel region and back panel region; wherein the expansion section operatively held in a substantially unexpanded, closed position when the fresh product is enclosed in the pouch; the expansion section is movable to an open position after a removal of the fresh product from the pouch; the open position of the expansion section is configured to provide an expanded disposal volume which can operatively contain the product when the product is in a used and soiled condition. THE PRIOR ART The Examiner relied upon the following as evidence of unpatentability: Black US 4,182,336 Jan. 8, 1980 Appeal 2009-014750 Application 11/214,401 3 THE REJECTIONS Claims 1-4 and 6-20 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Black. Claim 5 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Black. OPINION Claims 1-4 and 6-20- Anticipation – Black The stated purpose of the Appellants’ invention is to provide a package for a personal care product which also can function as a pouch for disposing of the product. Spec. 2. Claim 1 is directed to an article comprising “a fresh personal care product in a substantially unsoiled condition” and “a pouch having a pouch volume which operatively encloses the fresh product.” Black discloses a sanitary napkin 10 having an attached disposal container [pouch] 2. The Examiner has taken the position that since the personal care product recited in claim 1 is required only to be “in a substantially unsoiled condition,” all of the claimed structure is found in the article shown in Black’s Figures 5 and 6. Ans. 3-6. The crux of the Appellants’ arguments in response to the Examiner’s position is that “[a]t no time does Black disclose housing a fresh, unsoiled product in the disposal sack 12” (App. Br. 4), whereas claim 1 “requires a fresh product housed in a pouch.” App. Br. 5. While claim 1 recites a “fresh personal care product,” in the next four words of the claim the description of the product is broadened by the added characterization that this “fresh” product is “in a substantially unsoiled condition.” The Black pouch is disclosed as being intended for use in disposing of a soiled care product. Col. 1, ll. 7-10. The description of the Appeal 2009-014750 Application 11/214,401 4 product in claim 1 as being in “a substantially unsoiled condition” describes one of but only a few conditions with regard to soiling in which the napkin of the Black system could be disposed. In our view, this is sufficient to describe placing within the Black pouch an absorbent product in a substantially unsoiled condition. See e.g., In re Petering, 301 F.2d 676, 682 (C.C.P.A 1962) (a very small genus can be a disclosure of each species within the genus). We must decline to make an infringer of one who has previously used Black in this ordinary manner to thereby result in Appellants’ claimed structure. Peters v. Active Mfg. Co., 129 U.S. 530, 537(1889)(“That which infringes, if later, would anticipate, if earlier.”). Although we have carefully considered the Appellants’ arguments (App. Br. 4-6), they have not persuaded us otherwise. Thus, we find ourselves in agreement with the Examiner that Black anticipates the subject matter recited in claim 1, in the manner described by the Examiner on pages 3 and 4 of the Answer. The Examiner’s rejection of claim 1 is affirmed. Since the Appellants have chosen not to separately argue the rejections of claims 2-4, 8-11, 15-17 and 20, all of which are dependent from claim 1, the Examiner’s rejection of these claims also is affirmed. Claim 6 adds to claim 1 the requirement that the pouch have a “closure mechanism which operatively holds the pouch in a closed position which encloses the fresh product.” The Appellants argue that since Black does not enclose a “fresh” product, this provision of claim 6 is not met. As we have pointed out above, claim 1 recites a product that need only be “substantially unsoiled,” which is a condition that can exist in the closed pouch shown in Figure 6 of Black. Since Black discloses a closure Appeal 2009-014750 Application 11/214,401 5 mechanism 16 which holds the pouch in a closed position, the terms of claim 6 are met, and the rejection is affirmed. With regard to dependent claim 7, the Appellants do not challenge the fact that Black’s pouch has an opening mechanism, but again argue that since Black doesn’t disclose a pouch for holding a “fresh” product, it cannot meet the requirements of claim 7. Our reasoning here is the same as with claim 6, that is, since claim 7 is dependent from claim 1, it requires only that the product be in a “substantially unsoiled condition,” and therefore this rejection is affirmed. Independent claim 12 sets forth the elements of the invention in more detail than claim 1. The Appellants argue that this claim is not anticipated by Black because of the more detailed structure in several areas, including “the manner in which the pouch is opened.” App. Br. 5. In this regard, claim 12 recites a pouch opening mechanism which includes “a first attachment between a first side-portion of the front panel and a first side- portion of the back panel” of the pouch, and “a frangible line of weakness positioned along the first attachment.” This feature is described as a “line of frangibility 94” (Spec. 14), and is illustrated in Figure 4. It is the Examiner’s view that Black’s flap 16 “serves as a pouch-opening mechanism” and “includes a fold, which provides the claimed frangible line of weakness.” Ans. 4. We do not agree with the Examiner’s conclusion on this point. Black discloses that flap 16 is used to hold open the pouch in order to place the product inside (Col. 2, ll. 3-7), after which it may be “folded over from left to right as shown in Fig. 6” to close the pouch (Col. 2, ll. 10-13). While a line of demarcation between the flap and the back panel of the pouch is Appeal 2009-014750 Application 11/214,401 6 shown in Figures 5 and 6, there is no indication in the Specification that this constitutes a “frangible line of weakness,” as required by claim 12. Furthermore, the Examiner has not provided evidence or reasoning in support of his conclusion that a fold line should be considered to be a frangible line of weakness. Nor, from our perspective, does there appear to be any need to separate the flap from the pouch in the operation of the Black system, which would obviate the need for a frangible line of weakness between these two components. We therefore reverse the Examiner’s rejection of independent claim 12, as well as claims 13 and 14, which depend from claim 12. Claim 18 adds to claim 12 “a deactivator mechanism to operatively inhibit” an adhesive disposed on the personal care product when the product is soiled and is being placed into the pouch for disposal. The Examiner is of the opinion that Black’s flap 13 covers the adhesive on the product and can be grasped by the user to push the product into the pouch, thus operating as a deactivator mechanism for the garment-facing adhesive. Ans. 6. The Appellants’ argument merely offers the conclusion that Black does not disclose such a mechanism (App. Br. 6), but this is not supported by evidence or explanation directed to why the Examiner’s stated position is not correct. We therefore will affirm the rejection. With regard to claim 19, which adds to claim 1 the limitation that the pouch material “has been configured to provide visual masking,” the Examiner finds that the plastic material used by Black for the pouch “provides some degree of visual masking because it changes the visual perception of the article.” Ans. 7. In response, the Appellants argue that Black’s disposal pouch is constructed from a thin plastic material “which Appeal 2009-014750 Application 11/214,401 7 does not suggest that it is opaque.” App. Br. 6. This argument is not persuasive on its face because claim 19 does not require that the material be opaque, and additionally because the Appellants have not explained why the Examiner’s position regarding this limitation is incorrect. The rejection of claim 19 therefore, is affirmed. Claim 5- Obviousness – Black Claim 5 depends from claim 1, and adds requirements pertaining to the total retention capacity and the expanded disposal volume of the personal care product and the expansion capacity of the pouch. The Examiner acknowledges that Black does not teach the claimed saturation capacity and volume of expansion, but takes the position that when the only difference between the claimed device and the prior art device is a recitation of relative dimensions and the claimed device would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. Ans. 5. The Appellants’ only argument in response is that Black “makes no disclosure regarding the amount of fluid that the pad can absorb and still fit in the disposal pouch after being soiled” (App. Br. 7), so the Examiner’s expressed position stands unchallenged. In light of the evidence before us and arguments presented, we will sustain the rejection of claim 5, noting also that on page 7 of the Answer the Examiner advanced the proposition that it is reasonable to expect the absorbent product of the claimed invention and Black to have similar saturation retention capacities, and that Black teaches that the soiled pad can fit in the pouch. Appeal 2009-014750 Application 11/214,401 8 DECISION The rejection of claims 1-4, 6-11 and 15-20 as being anticipated by Black is affirmed. The rejection of claims 12-14 as being anticipated by Black is reversed. The rejection of claim 5 as being unpatentable over Black is affirmed. 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-IN-PART mls