Ex Parte Burgdorf et al

Patent Trial and Appeal Board

Nov 7, 2012

11182303 (P.T.A.B. Nov. 7, 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.
11/182,303 07/15/2005 Brian Kenneth Burgdorf 10076 5724
27752 7590 11/08/2012
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
STEPHENS, JACQUELINE F
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
11/08/2012 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 BRIAN KENNETH BURGDORF, MICHAEL DEVON HAYES,
ROBERT PAUL CASSONI, and DEBRA LYNN HARTSELL
____________

Appeal 2010-005028
Application 11/182,303
Technology Center 3700
____________

Before GAY ANN SPAHN, MICHAEL C. ASTORINO, and
WILLIAM A. CAPP, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision twice rejecting claims 8-14 under 35 U.S.C. § 103(a) as
unpatentable over Taylor (US 2003/0191443 A1, pub. Oct. 9, 2003) and
Bernard (US 2003/0181844 A1, pub. Sep. 25, 2003). Claims 1-7 have been
cancelled. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2010-005028
Application 11/182,303

2
CLAIMED SUBJECT MATTER
Claim 8 is the sole independent claim on appeal, is representative of
the subject matter on appeal, and is reproduced below.
8. A tampon comprising:
a primary absorbent member constructed from an
absorbent material compressed to a self-sustaining
form, said primary absorbent member having an
insertion end, and a withdrawal end;
a secondary absorbent member fixedly attached to
said primary absorbent member proximate to said
withdrawal end of said primary absorbent member;
said secondary absorbent member comprising a
color; and
a withdrawal member comprising a color;
wherein the secondary absorbent member color
differs from the withdrawal member color post-
use.

OPINION
The Examiner finds that “Taylor discloses the present invention
substantially as claimed,” except for “a colored or printed patterned
withdrawal member.” Ans. 4. The Appellants acknowledge that Taylor
discloses a tampon including a secondary absorbent member and a
withdrawal means (string) that are the same color. Br. 3. The Examiner
finds that Bernard “teaches a colored withdrawal string.” Ans. 4 (citing
Bernard, para. [0065]). Indeed, Bernard discloses that the withdrawal string
may include multiple tassels, each having a cord with multiple strands,
where each strand may be of a different color. Bernard, para. [0065]. The
Examiner concludes that “[i]t would have been obvious to one having
Appeal 2010-005028
Application 11/182,303

3
ordinary skill in the art at the time of the invention to modify the withdrawal
string of Taylor with color or patterns to serve as a reminder it [(a tampon)]
is in place as taught in Bernard.” Ans. 4; see Ans. 5, and Bernard, Abstract;
see also Bernard, para. [0067].
We have considered the Appellants’ arguments for this ground of
rejection and do not find them persuasive. The Appellants argue, inter alia,
that neither Taylor nor Bernard discloses every aspect of the claimed
invention. More specifically, Taylor does not disclose using different colors
to distinguish the withdrawal string from the secondary absorbent member
(Br. 3) and Bernard does not disclose “a secondary absorbent member” or
even a “need for a secondary absorbent member” (Br. 4). Since the
Examiner’s reasoning does not rely on Taylor disclosing different colors or
Bernard disclosing a secondary member, the Appellants’ contentions are not
persuasive. In other words, one cannot show nonobviousness by attacking
references individually where the rejections are based on a combination of
references. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In
re Keller, 642 F.2d 413, 426 (CCPA 1981).
The Appellants also contend neither Taylor nor Bernard teach that the
secondary absorbent member should be visually distinct from the withdrawal
string. Br. 4. However, as discussed supra, Taylor’s secondary absorbent
member and withdrawal string are the same color (see Br. 3) and Bernard
discloses a multi-colored withdrawal string. As such, the modification of
Taylor’s withdrawal string in view of Bernard’s multi-colored withdrawal
string would necessarily result in the secondary absorbent member having a
different color than the withdrawal string because the secondary absorbent
member has a single color and the withdrawal means has at least two colors.
Appeal 2010-005028
Application 11/182,303

4
Additionally, the Appellants assert that Bernard’s decorative tassel
makes the withdrawal string highly visible, i.e., not the coloration of the
withdrawal string. Br. 5. The Appellants contend that “Bernard does not
disclose or suggest any purpose or advantage to a tampon having a
withdrawal member that has a color, which differs from the color of a
secondary absorbent member.” Id.
In response, the Examiner determines that the color of the withdrawal
string’s tassels is part of its decorative nature; and it is this decorative nature
that makes it highly visible and serves as a reminder that a tampon is in
place. See Ans. 4, 6. Hence, the Examiner has articulated adequate
reasoning with rational underpinning as to why one of ordinary skill in the
art would have combined the teachings of these references to result in the
claimed subject matter. See Ans. 4, and In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (“[R]ejections on obviousness grounds [require] some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”) (cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 418 (2007)).
For the reasons provided above, the Appellants’ contentions are not
persuasive. Thus, the rejection of claim 8 as unpatentable over Taylor and
Bernard is sustained. The Appellants do not make any other arguments with
respect to the rejection of dependent claims 9-14. Accordingly, we also
sustain the rejection of claims 9-14 as unpatentable over Taylor and Bernard.

DECISION
We AFFIRM the rejection of claims 8-14.
Appeal 2010-005028
Application 11/182,303

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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

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