Ex Parte Buhrow et al

Patent Trial and Appeal Board

Feb 13, 2013

11111531 (P.T.A.B. Feb. 13, 2013)

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.
11/111,531 04/20/2005 Chantel Spring Buhrow 21007 4571
23556 7590 02/13/2013
KIMBERLY-CLARK WORLDWIDE, INC.
Tara Pohlkotte
2300 Winchester Rd.
NEENAH, WI 54956
EXAMINER
CHAPMAN, GINGER T
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
02/13/2013 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 CHANTEL SPRING BUHROW, KUSUM GOSAIN,
SHANNON KATHLEEN MELIUS, JOHN TIMOTHY HAHN,
VIPULA JITENDRA TAILOR and EARL DAVID BROCK
____________

Appeal 2010-006938
Application 11/111,531
Technology Center 3700
____________

Before EDWARD A. BROWN, JOHN W. MORRISON and
RICHARD E. RICE, Administrative Patent Judges.

RICE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-006938
Application 11/111,531

2
STATEMENT OF THE CASE
Chantel Spring Buhrow, et al. (Appellants) seek our review under
35 U.S.C. § 134 of the Examiner’s rejection of claims 1-3 and 7-11. Claims
4-6 and 12-20 are canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The Claimed Subject Matter
The claimed subject matter relates to “disposable diapers, particularly
designed for newborns, which include an optional umbilical feature that does
not require the disposal of removable parts and maintains an area that is free
of diaper components and minimizes contact and irritation with the
umbilical cord and/or navel.” Spec. 1, ll. 14-18. Claim 1, reproduced
below, with italics for emphasis, is representative of the subject matter on
appeal:
1. A diaper comprising,
a. a front portion having at least one line of
weakness adapted to be torn;
b. at least one umbilical cover defined in
part by the at least one line of weakness, the at
least one umbilical cover being moveable from a
starting position to an open position upon tearing
of the at least one line of weakness; and
c. at least one umbilical cover anchor
permanently joined to the umbilical cover when
the umbilical cover is in the starting position
wherein the umbilical cover anchor is adapted to
maintain the at least one umbilical cover in the
open position.
The Rejection
The following Examiner’s rejection is before us for review: Claims 1-
3 and 7-11stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Appeal 2010-006938
Application 11/111,531

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Sorenson (US 4,801,298, iss. Jan. 31, 1989) and Brown (US 4,675,015, iss.
Jun. 23, 1987).1

OPINION
Sorenson discloses a reusable diaper having a “V”-shaped pile
attachment strip 40 positioned at the top front center portion of the diaper.
Sorenson, col. 5, ll. 7-10, figs. 1 and 3. The “V”-shaped strip defines a
border or barrier permitting the user to fold under the triangular-shaped
portion of the diaper (referred to hereafter as the “foldable portion”) above
the strip that covers an infant’s naval. Id. at col. 5, ll. 42-49; figs. 1, 5 and 6.
Hook fastener strips on each of the back wings of the diaper connect to pile
attachment strip 40 in order to define an adjustable waist girthing structure
for assembling the diaper on the infant. Id. at col. 9, ll. 53-59, fig. 6. At
such time as the infant’s naval region can tolerate fabric over it, the diaper
may be used in its original unfolded condition, “which positions a portion of
the diaper sufficiently above the infant’s lower abdominal region to avoid
waste discharge through the waist region of the diaper.” Id. at col. 5,
ll. 49-57.
Brown discloses a disposable diaper having a separable panel formed
in the umbilical area of the diaper. Brown, col. 1, ll. 23-25, figs. 1-3. “The

1 The Final Rejection included a provisional nonstatutory obviousness-type
double patenting (ODP) rejection of claims 1-3 and 7-11 over claims 1-20 of
copending Appl. No. 11/084,317, filed Mar. 18, 2005 (now US 7,947,028
B2, iss. May 24, 2011). Final Rej. mailed 3/17/09 at 7, para. 27. Appellants
have not addressed the ODP rejection in their briefs. See App. Br. 1-13;
Reply Br. 1-4. However, the Examiner has not withdrawn the rejection.
Ans. 2, 13-14, 17. As such, Appellants have waived their right for review of
the ODP rejection by the Board. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Appeal 2010-006938
Application 11/111,531

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umbilical panel is prefer[ably] in the form of a perforated section which can
be separated to allow the umbilical cord of newborn infants to project
therethrough, and which later can be left intact when the umbilical cord has
been eliminated.” Id. at col. 1, ll. 25-31. “[T]he umbilical panel may be
formed as a tear-out square or circle by perforation or forming a weakened
tear line, or may be provided as a flap which is bent back to expose the
umbilical cord.” Id. at col. 2, ll. 34-37.
With respect to independent claim 1, the Examiner pertinently finds
that Sorenson discloses a diaper having a front portion; an umbilical cover
(the foldable portion) moveable from a starting position to an open position;
and at least one umbilical cover anchor (pile attachment strip 40)
permanently joined to the umbilical cover when the umbilical cover is in the
starting position, wherein the umbilical cover anchor is adapted to maintain
the umbilical cover in the open position. Ans. 4-7. Acknowledging that
Sorenson fails to disclose “a line of weakness” (id. at 7), the Examiner finds
that Brown discloses a front portion having at least one line of weakness
adapted to be torn and at least one umbilical cover, defined in part by the at
least one line of weakness, that is moveable from a starting position to an
open position upon tearing of the at least one line of weakness (id. at 8).
The Examiner concludes that “one having ordinary skill in the art at the time
the invention was made would be motivated to modify the umbilical cover
of Sorenson as taught by Brown to provide an umbilical cover that can be
moveable from a starting position to an open position upon either tearing or
folding of the cover along a line of perforation or a fold line for the benefits
to the newborn infant disclosed by both Sorenson and by Brown.” Id. at 8-9.
Appeal 2010-006938
Application 11/111,531

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Appellants argue, and we agree, that the Examiner’s conclusion of
obviousness is not supported by adequate articulated reasoning with rational
underpinning.2 App. Br. 7; Reply Br. 3. In particular, the Examiner does
not provide a sufficient rationale to explain why a person of ordinary skill
would have reason to modify Sorenson’s reusable diaper, which already has
a movable umbilical cover (the foldable portion), by providing a line of
weakness such that at least one umbilical cover is moveable from a starting
position to an open position upon tearing of the line of weakness. To the
extent that the Examiner reasons that the proposed modification involves
only the predictable substitution of one known equivalent feature for
another, we disagree. See Ans. 8. A permanent opening in the umbilical
region of Sorenson’s reusable diaper would frustrate Sorenson’s objective of
returning the diaper to its original unopened position at such time as the
infant can tolerate fabric over its navel region. See Sorenson, col. 5, ll. 49-
57. Further, the Examiner has not explained whether or how the proposed
modification would affect the operation of Sorenson’s umbilical cover
anchor (pile attachment strip 40), which, as required by claim 1, must be
adapted to maintain the at least one umbilical cover in the open position.
Accordingly, we do not sustain the rejection of claim 1, and claims 2,
3 and 7-11 dependent thereon, under 35 U.S.C. § 103(a) as unpatentable
over Sorenson and Brown.

2 See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“‘[R]ejections
on obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.’”) (quoting In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Appeal 2010-006938
Application 11/111,531

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DECISION
We reverse the rejection of claims 1-3 and 7-11.

REVERSED

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