Ex Parte Bryant et al

Patent Trial and Appeal Board

Nov 21, 2012

11542492 (P.T.A.B. Nov. 21, 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.
11/542,492 10/03/2006 Kristi J. Bryant 64125298US01 4065
23556 7590 11/21/2012
KIMBERLY-CLARK WORLDWIDE, INC.
Tara Pohlkotte
2300 Winchester Rd.
NEENAH, WI 54956
EXAMINER
SU, SUSAN SHAN
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
11/21/2012 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 KRISTI J. BRYANT and KELLIE M. GOODRICH
__________

Appeal 2012-001966
Application 11/542,492
Technology Center 3700
__________

Before DONALD E. ADAMS, ERICA A. FRANKLIN, and SHERIDAN K.
SNEDDEN, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-20. (App. Br. 2.) Claims 1-20, however, are rejected
under new grounds of rejection on appeal. (Ans. 3-4.) We have jurisdiction
under 35 U.S.C. § 6(b). Because Appellants have not responded to the new
grounds of rejection under 37 C.F.R. § 41.39(b), we dismiss the appeal.

Appeal 2012-001966
Application 11/542,492

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STATEMENT OF THE CASE
According to Appellants, the invention relates to an array of
disposable absorbent products. (App. Br. 4.)
Claims 1-20 are on appeal. The claims stand rejected as follows:
I. Claims 1-17 and 19-20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Motsch et al. (US 7,794,439 B2 issued
Sep. 14, 2010 ) in view of M&M’s Competitor Brand Analysis
(obtained from http://ciasses.bus.oregonstate.edu/fall-
05/ba590/MM's.doc,dated 9/9/2006).
II. Claim 18 stands rejected under 35 U.S.C. § 102(e) as being
anticipated by Motsch.
III. Claim 9 stands rejected under 35 U.S.C. § 112, fourth paragraph,
as failing to specify a further limitation of the subject matter
claimed.
I.
Principles of Law
Section 41.39(b) of Title 37 of the Code of Federal Regulations states:
If an examiner’s answer contains a rejection designated
as a new ground of rejection, appellant must within two months
from the date of the examiner’s answer exercise one of the
following two options to avoid sua sponte dismissal of the
appeal as to the claims subject to the new ground of rejection:
(1) Reopen prosecution. Request that prosecution be reopened
before the primary examiner by filing a reply under § 1.111 of
this title with or without amendment or submission of affidavits
(§§ 1.130, 1.131 or 1.132 of this title) or other evidence. Any
amendment or submission of affidavits or other evidence must
Appeal 2012-001966
Application 11/542,492

3
be relevant to the new ground of rejection. A request that
complies with this paragraph will be entered and the application
or the patent under ex parte reexamination will be reconsidered
by the examiner under the provisions of § 1.112 of this title.
Any request that prosecution be reopened under this paragraph
will be treated as a request to withdraw the appeal.
(2) Maintain appeal. Request that the appeal be maintained by
filing a reply brief as set forth in § 41.41. Such a reply brief
must address each new ground of rejection as set forth in §
41.37(c)(1)(vii) and should follow the other requirements of a
brief as set forth in § 41.37(c). A reply brief may not be
accompanied by any amendment, affidavit (§§ 1.130, 1.131 or
1.132 of this title) or other evidence. If a reply brief filed
pursuant to this section is accompanied by any amendment,
affidavit or other evidence, it shall be treated as a request that
prosecution be reopened before the primary examiner under
paragraph (b)(1) of this section.

Analysis
Based on the record before us, we must dismiss this appeal on
procedural grounds. The only rejections are listed as new grounds of
rejection in the Examiner’s Answer under §§ 102, 103 and 112 and
Appellants have simply not responded to those new rejections. That failure
to respond is fatal to this appeal.
Notably, the Examiner prominently identified the new grounds of
rejection. (Ans. 3.) The Technology Center Director approved the new
ground of rejection in accordance with standard procedure. (Ans. 11.) The
Examiner also unambiguously explained that Appellants must, within two
months of the mailing date of the Answer, exercise one of two regulatory
options to avoid sua sponte dismissal of the appeal as to the claims subject
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Application 11/542,492

4
to the new ground of rejection (i.e., claims 1-20). (Ans. 10-11.) As the
Examiner indicated, Appellants’ regulatory options were to: (1) reopen
prosecution by filing a reply under 37 C.FR. § 111, or (2) maintain the
appeal by filing a Reply Brief as set forth in 37 C.F.R. § 41.41. See 37
C.F.R. § 41.39(b).
Appellants, however, did not respond to the Answer at all, let alone
select one of the regulatory options as mandated. That failure to respond is
therefore fatal to this appeal under 37 C.F.R. § 41.39(b).
We acknowledge that there is some overlap between the Examiner's
final rejection under 35 U.S.C. § 103(a) and the new ground of rejection
regarding claims 1-17 and 19-20. (Compare Fin. Rej. 4 with Ans. 3.) That
overlap, however, does not otherwise relieve Appellants of the regulatory
requirement to respond to the new ground of rejection to avoid dismissal.
See 37 C.F.R. § 41.39(b).
For the reasons above, we dismiss the appeal as to claims 1-20 which
are subject to new grounds of rejection under 35 U.S.C. §§ 112, 102 and
103. The Examiner should: (1) cancel claims 1-20, and (2) notify
Appellants that these claims are cancelled because the appeal as to these
claims is dismissed. See MPEP § 1207.03(V)(C).

Conclusion of Law
We find that Appellants failed to avoid sua sponte dismissal of the
appeal as to claims 1-20, which are the claims subject to the new grounds of
rejection under 35 U.S.C. §§ 112, 102 and 103. See 37 C.F.R. § 41.39(b).

Appeal 2012-001966
Application 11/542,492

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SUMMARY
The appeal is dismissed.

DISMISSED

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