Ex Parte Woltman et al

Patent Trial and Appeal BoardOct 9, 2012

11408352 (P.T.A.B. Oct. 9, 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. 11/408,352 04/21/2006 Gary Roland Woltman 22367 9002 23556 7590 10/10/2012 KIMBERLY-CLARK WORLDWIDE, INC. Tara Pohlkotte 2300 Winchester Rd. NEENAH, WI 54956 EXAMINER KIDWELL, MICHELE M ART UNIT PAPER NUMBER 3761 MAIL DATE DELIVERY MODE 10/10/2012 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 GARY ROLAND WOLTMAN, CARRIE NICOLE PATERAS, ANGELA RAE HECK, KARYN CLARE SCHROEDER, and MARCILLE FAYE RUMAN ____________________ Appeal 2010-005375 Application 11/408,352 Technology Center 3700 ____________________ Before: JOHN C. KERINS, WILLIAM V. SAINDON, and NEIL T. POWELL, Administrative Patent Judges. SAINDON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005375 Application 11/408,352 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). The Claimed Subject Matter Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A personal care article having a lengthwise longitudinal- direction; a relatively shorter, lateral cross-direction; a first end-section; a second end-section; and an intermediate-section which is interposed between said first end-section and said second end-section; the article comprising: a liquid permeable top sheet layer; and a backsheet layer operatively connected to the top sheet layer; wherein the article has been operatively connected in facing relation with a wrap member; the article has been folded about a first, laterally extending end-fold-region; the first end-fold-region has been operatively arranged to provide a folded-over first end-section of the article, at least a portion of which is in facing relation with the intermediate- section of the article; the article and a corresponding section of the wrap member have been folded about a second, laterally extending end-fold-region; the second end-fold-region has been operatively arranged to provide a folded-over second end-section of the article, at least a portion of which is in facing relation with the intermediate-section of the article, and is positioned at least proximally adjacent the article intermediate-section; a preliminary-folded article and a corresponding, preliminary-folded wrap member have been provided after the Appeal 2010-005375 Application 11/408,352 3 article has been folded about both the first end-fold-region and the second end-fold-region; and the preliminary-folded article and wrap member have been folded along a longitudinally extending, composite-fold- region of both the preliminary-folded article and wrap member, thereby providing a composite-folded, wrapped article. References The Examiner relies upon the following prior art references: Hasegawa Kashiwagi Hansson US 6,168,582 B1 US 6,805,691 B2 WO 96/20668 Jan. 2, 2001 Oct. 19, 2004 Jul. 11, 1996 Rejections I. Claims 1-8 and 10-20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Kashiwagi and Hansson. II. Claims 1, 5-7, and 9-15 are rejected under § 103(a) as unpatentable over Hasegawa and Hansson. SUMMARY OF DECISION We AFFIRM. OPINION Rejection I – Kashiwagi and Hansson The Examiner found that Kashiwagi describes the folded personal care article of claim 1 except for the longitudinal fold. Ans. 3-4. The Examiner found that Hansson teaches a longitudinal fold for a folded personal care article (sanitary napkin). Ans. 4. The Examiner concluded that it would have been obvious to longitudinally fold the article of Appeal 2010-005375 Application 11/408,352 4 Kashiwagi because it would “provide[] a small, compact and discrete article as taught by [Hansson] on page 16, lines 1 – 8.” Ans. 5. Appellants argue claims 1-8, 10, 11, and 14-20 as a group. App. Br. 4-5. We select claim 1 as representative of this group. Appellants separately argue claims 12 and 13 (App. Br. 6), which we address after the claim 1 group. Appellants point out that claim 1 requires a personal care article connected to a wrap member and that Hansson does not teach folding a wrap member in combination with the article. App. Br. 4-5. Appellants, however, are arguing the references in isolation. The Examiner’s rejection utilizes the existing wrap of Kashiwagi, whereas Hansson is used to describe a longitudinal fold. See Ans. 11 (“Hansson is not relied upon for the teaching of folding ... [a] wrap member, but for … a longitudinal fold”). Appellants do not set forth any reason why Hansson’s teaching is inapplicable to or inappropriate for the Kashiwagi article. Accordingly, Appellants’ argument does not apprise us of error. Referencing the Examiner’s reason for why it would have been obvious to modify Kashiwagi to have a longitudinal fold (small, compact, discrete article), Appellants next argue that Kashiwagi “teaches a napkin that is folded at least three times” and that a person of ordinary skill in the art “would not be motivated to combine the teachings of Hansson to solve a problem that does not exist.” App. Br. 5. Notwithstanding the fact that “motivation” is not a prerequisite for a proper obviousness analysis, that a prior art reference already contains a benefit (small size) does not preclude a modification to further that benefit (smaller size). Accordingly, Appellants’ argument does not apprise us of error. Appeal 2010-005375 Application 11/408,352 5 Appellants have not apprised us of error in the Examiner’s rejection of claim 1. Claims 2-8, 10, 11, and 14-20 fall therewith. With respect to claims 12 and 13, Appellants argue that the Examiner only discusses the lateral folds in Kashiwagi but not the composite fold region of the claims. App. Br. 6. This argument apprises us of error in the Examiner’s rejection of claims 12 and 13 because the Examiner has not addressed the composite fold limitations of these claims. Rejection II – Hasegawa and Hansson Appellants argue all the claims of this rejection as a group; we select claim 1 as representative. Appellants’ arguments are substantially similar to those found unpersuasive in Rejection I, namely, that Hansson does not teach a wrap and that Hasegawa already “solves” the “problem” the Examiner offers as the reason for combination. App. Br. 6-7. These arguments are unpersuasive for the reasons set forth above. DECISION We affirm the Examiner’s decision regarding claims 1-8, 10, 11, and 14-20 as unpatentable over Kashiwagi and Hansson. We reverse the Examiner’s decision regarding claims 12 and 13 as unpatentable over Kashiwagi and Hansson. We affirm the Examiner’s decision regarding claims 1, 5-7, and 9-15 as unpatentable over Hasegawa and Hansson. 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 Appeal 2010-005375 Application 11/408,352 6 mls