Ex Parte Clough

Patent Trial and Appeal Board

Nov 18, 2012

11961936 (P.T.A.B. Nov. 18, 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.
11/961,936 12/20/2007 Jane Clough KCX-1466-CON
(64045733US1
7166
22827 7590 11/19/2012
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
FIDEI, DAVID
ART UNIT PAPER NUMBER
3788
MAIL DATE DELIVERY MODE
11/19/2012 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 JANE CLOUGH
____________________

Appeal 2010-010257
Application 11/961,936
Technology Center 3700
____________________

Before STEFAN STAICOVICI, MICHELLE R. OSINSKI, and
BART A. GERSTENBLITH, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-010257
Application 11/961,936

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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-14. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

Claim 1 is the sole independent claim on appeal and is reproduced
below:
1. A package comprising:
a bag that includes a first sidewall, a second sidewall, a
third sidewall, a fourth sidewall and a bottom portion connected
to the first sidewall, the second sidewall, the third sidewall and
the fourth sidewall, the bag further including a resilient member
that extends through the first sidewall, the second sidewall, the
third sidewall and the fourth sidewall such that the resilient
member forms an adjustable opening in the bag; and
a plurality of absorbent articles ready for their intended
use and stored within the bag.

REJECTIONS
Appellant seeks review of the following rejections:
(1) Claims 1-14 under 35 U.S.C. § 112, second paragraph, as
indefinite for failing to particularly point out and distinctly claim the subject
matter which Appellant regards as the invention. Ans. 4.
(2) Claims 1-14 under 35 U.S.C. § 103(a) as unpatentable over Ulas
(US 2006/0229581 A1, pub. Oct. 12, 2006) and Nicholas2 (US 5,354,119,
iss. Oct. 11, 1994). Ans. 5-6.

1 Appellant identifies the real party in interest as Kimberly-Clark
Worldwide, Inc. App. Br. 2.
2 We consider the Examiner’s reference to Nicholas as “Nicolas” to be a
mere typographical error. See, e.g., Ans. 5 and 7.
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(3) Claims 1-14 under 35 U.S.C. § 103(a) as unpatentable over
McQueeny (US 5,361,905, iss. Nov. 8, 1994) and Nicholas. Ans. 7-9.
ANALYSIS
§ 112, second paragraph (indefinite)
Claim 1 recites “a resilient member that extends through the first
sidewall, the second sidewall, the third sidewall and the fourth sidewall”
(emphasis added). The Examiner determined that it is unclear what the
scope and content of the claimed subject matter is because of uncertainty
associated with the phrase “extends through.” Ans. 4. According to the
Examiner, the Specification “provides no specific type of construction as to
what the term ‘extends through’ embraces.” Ans. 9. In addition, the
Examiner notes that, “[t]he drawings as originally filed show[] no particular
band arrangement (17) defining what may be considered extending through
each of the sidewall[s].” Id.
Appellant’s Specification, however, does not indicate that the phrase
“extends through” is used in a manner other than its ordinary and customary
meaning. In determining the ordinary and customary meaning of the phrase
“extends through” as viewed by a person of ordinary skill in the art, it is
appropriate to consult a general dictionary definition for guidance. Comaper
Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010). The ordinary
meaning of “extend” is “[t]o stretch or spread (something) out to greater or
fullest length.” See THE AMERICAN HERITAGE® DICTIONARY OF THE ENGLISH
LANGUAGE (2007), from http://www.credoreference.com/entry/
hmdictenglang/extend (last visited on Nov. 16, 2012). The ordinary
meaning of “through” is “[f]rom one end or side to another or an opposite
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end or side.” See THE AMERICAN HERITAGE® DICTIONARY OF THE ENGLISH
LANGUAGE (2007), from http://www.credoreference.com/entry/
hmdictenglang/through (last visited on Nov. 16, 2012).
Under the broadest reasonable construction consistent with
Appellant’s Specification, the resilient member “extends through” each
sidewall if the resilient member stretches from one side (i.e., edge) of each
sidewall to the opposing side (i.e., edge) of each sidewall, regardless of
whether the resilient member is sewn on, constructed in hem, or weaved in
and out of each sidewall, so as to form an adjustable opening in the bag by
stretching around the entire inner perimeter of the bag. See App. Br. 4-6;
see also Spec. 2, ll. 15-17. We find that one of ordinary skill in the art
would understand what is being claimed based on the ordinary and
customary meaning of the terms “extend” and “through.” The test for
definiteness under § 112, second paragraph, is whether “those skilled in the
art would understand what is claimed when the claim is read in light of the
specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986) (citations omitted).
For the foregoing reasons, we do not sustain the rejection of claims 1-
14 as indefinite for failure to particularly point out and distinctly claim the
subject matter which Appellant regards as the invention.

§ 103(a) as unpatentable over Ulas and Nicholas
Only issues and findings of fact contested by Appellant in the Briefs
will be addressed. See Ex parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI
2010) (precedential). Appellant argues claims 1-10 and 12-14 as a group.
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App. Br. 6-9. We select claim 1 as the representative claim. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011). Claims 2-10 and 12-14 will stand or fall with
claim 1.
The Examiner found that Ulas discloses all of the limitations of claim
1 except for “the member (60) [extending through the sidewalls to form an
adjustable opening in bag 10] being a resilient member.” Ans. 5. The
Examiner found that Nicholas discloses resilient members 4, 6 comprising
pieces of elastic sewn to sleeve 2. Id. (citing Nicholas, col. 3, ll. 1-10). The
Examiner concluded that “[i]t would have been obvious to one of ordinary
skill in the art to modify the package of Ulas et al[.] by employing a ribbon
(60) comprising [a] resilient member as taught by Nicholas, in order to
[form] an automatic closing arrangement.” Id.
Appellant first contends that making the ribbon elastic would render
Ulas unsatisfactory for its intended purpose. App. Br. 7-8. Requiring
manual effort in elongating the drawstring and/or providing a drawstring to
function as a carrying handle, however, is not a fair characterization of the
intended purpose of Ulas. See App. Br. 7. Ulas aims to address a “need for
a package for absorbent articles which can be easily and conveniently
handled while reclosing it after having removed the first absorbent article
therefrom.” Ulas, para. [0013]. One of ordinary skill in the art would
recognize that the resiliency of the drawstring does not negatively affect this
operation. Thus, we cannot agree with Appellant that a modification of the
drawstring would defeat the intended purpose of Ulas’ package. To the
extent Appellant contends that “once the user let go of the elastic ribbon, it
would snap back and reopen the package, which contradicts the function of a
closure in the first place” (App. Br. 8), the Examiner found that the resilient
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member “would automatically contract the package” (Ans. 12). Appellant
has not provided sufficient evidence or reasoning to demonstrate that the
Examiner’s finding that the resilient member would automatically contract
the package is in error.
Appellant secondly contends that Nicholas fails to disclose a package
that can be used to transport items or function as a stand-alone container and
that Nicholas’ elastic bands 4, 6 “cannot be removed in any respect from the
top edge and thus cannot function as a carrying handle.” App. Br. 8.
Appellant cannot show nonobviousness by attacking Nicholas individually
when the rejection is based on a combination of Ulas and Nicholas. See In
re Keller, 642 F.2d 413, 425 (CCPA 1981); see also Ans. 13. Appellant’s
contentions are unpersuasive because they rely on a mischaracterization of
the combination of references. The Examiner’s combination relies on
modifying the drawstring handle of Ulas with an elastic member as taught
by Nicholas, not physically combining the top edge of the tubular sleeve of
Nicolas into Ulas’ device.
Appellant thirdly contends that “absent the teaching of applicant’s
disclosure, the person of ordinary skill is not likely to look to Nicholas to
modify a draw string type closure/handle employed by Ulas et al[.] in a
manner that would replicate the package of claim 1.” App. Br. 8. The
Examiner’s reasons for making the proposed combination include Nicholas’
teachings of forming an automatic closing arrangement (Ans. 5; see also
Nicholas, col. 2, ll. 12-18) and the predictability of the substitution of a
resilient member for a drawstring (Ans. 13 (citing KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 416 (2007)). Appellant has not provided persuasive
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argument as to why such stated reasons lack a rational underpinning. See In
re Kahn, 441 F.3d 977, 988 (Fed Cir. 2006).
Appellant separately argues claim 11. App. Br. 8-9. Claim 11 recites
that “the resilient member closes the bag when none of the diapers is
positioned within the opening.” Appellant contends that Nicholas discloses
that the opening at the top and bottom of the sleeve “always will be defined
by a perimeter of about two feet.” App. Br. 9 (citing Nicholas, col. 3, ll. 28-
32). The Examiner’s rejection does not rely on Nicholas disclosing the
resilient member closing the bag when no articles are positioned within the
opening. Rather, the Examiner’s rejection acknowledges that:
it is not described whether the resilient member (see figure 1 of
Nicholas) does not fully close the bag, or closes the bag, when
none of the diapers is positioned within the opening. However,
to construct the band to exhibit these feature[s] would have
been within the level of ordinary skill and obvious for the
reason that closing or not fully closing the bag does not provide
any critical or unexpected results.
Ans. 6. Appellant’s contention is not persuasive because it does not
address the rejection as articulated by the Examiner.
For the foregoing reasons, we sustain the Examiner’s rejection
of claims 1-14 as unpatentable over Ulas and Nicholas.

§ 103(a) as unpatentable over McQueeny and Nicholas
The Examiner found that McQueeny discloses all of the limitations of
claim 1, except for “the bag further including a resilient member that extends
through the [plurality of sidewalls] such that [the] resilient member forms an
adjustable opening in the bag.” Ans. 7. The Examiner found that Nicholas
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discloses resilient members 4, 6 comprising pieces of elastic sewn to the
sleeve 2. Id. (citing Nicholas, col. 3, ll. 1-10). The Examiner concluded that
[i]t would have been obvious to one of ordinary skill in the art
to modify the package of McQueeny et al[.] . . . by constructing
a resilient member as taught by Nicholas, [in] order to [form]
a[] means for securing the diapers within the bag. To the extent
that the resilient member of Nicholas is not secured . . . through
the walls of the bag[, it] would have been an obvious equivalent
means of attaching the resilient member.
Id.
Appellant contends that “the only reason standing behind the Final
Office Action’s contention that a person of ordinary skill would modify
McQueeny et al[.] according to Nicholas must be hindsight access to
applicant’s disclosure.” App. Br. 10. In particular, Appellant contends that
“in none of these numerous disclosed embodiments [in McQueeny] is there
any danger of any of the contents of these carrying packages becoming
dislodged or falling out.” Reply Br. 6.
The reason proffered by the Examiner to modify the teachings of
McQueeny, i.e., to secure the diapers within the bag, appears to already be
adequately performed by the package of McQueeny. The Examiner has not
provided any findings that McQueeny recognized a problem with securing
diapers or other absorbent articles. Without a persuasive articulated
rationale based on rational underpinnings for modifying the reference as
proposed, the Examiner’s rejection appears to be the result of hindsight
analysis. See Kahn, 441 F.3d at 988.
For the foregoing reasons, we do not sustain the rejection of claims 1-
14 as unpatentable over McQueeny and Nicholas.

Appeal 2010-010257
Application 11/961,936

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DECISION
The Examiner’s rejection of claims 1-14 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)(1)(iv).

AFFIRMED

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