Ex Parte Clark et al

Patent Trial and Appeal Board

Sep 26, 2012

11214401 (P.T.A.B. Sep. 26, 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.
11/214,401 08/29/2005 James Joseph Clark JR. 21225 2882
23556 7590 09/27/2012
KIMBERLY-CLARK WORLDWIDE, INC.
Tara Pohlkotte
2300 Winchester Rd.
NEENAH, WI 54956
EXAMINER
STEPHENS, JACQUELINE F
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
09/27/2012 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 JAMES JOSEPH CLARK, JR., GARRY ROLAND WOLTMAN,
SUSAN JEAN MODER, ANNAIG GAEL JACQUEMARD, and
ROLAND ECKEHARD NEPF
____________

Appeal 2009-014750
Application 11/214,401
Technology Center 3700
____________

Before NEAL E. ABRAMS, CHARLES N. GREENHUT,
and REMY J. VANOPHEM, Administrative Patent Judges.

ABRAMS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

James J. Clark, Jr. et al. (Appellants) seek our review under 35 U.S.C.
§ 134 from the Examiner’s decision rejecting claims 1-20. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

Appeal 2009-014750
Application 11/214,401

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THE INVENTION
The claimed invention is directed to an article comprising a personal
care product and a pouch which encloses the product.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. An article, having a longitudinal length, a width and a
thickness, the article comprising: a fresh personal care product
in a substantially unsoiled condition; and a pouch having a
pouch volume which operatively encloses the fresh product; the
pouch including a front panel region;
a back panel region which is operatively connected to the
front panel region; and
at least one expansion section which is operatively
connected between the front panel region and back panel
region;
wherein
the expansion section operatively held in a substantially
unexpanded, closed position when the fresh product is enclosed
in the pouch;
the expansion section is movable to an open position
after a removal of the fresh product from the pouch;
the open position of the expansion section is configured
to provide an expanded disposal volume which can operatively
contain the product when the product is in a used and soiled
condition.

THE PRIOR ART
The Examiner relied upon the following as evidence of
unpatentability:
Black US 4,182,336 Jan. 8, 1980

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THE REJECTIONS
Claims 1-4 and 6-20 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Black.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Black.

OPINION
Claims 1-4 and 6-20- Anticipation – Black
The stated purpose of the Appellants’ invention is to provide a
package for a personal care product which also can function as a pouch for
disposing of the product. Spec. 2. Claim 1 is directed to an article
comprising “a fresh personal care product in a substantially unsoiled
condition” and “a pouch having a pouch volume which operatively encloses
the fresh product.” Black discloses a sanitary napkin 10 having an attached
disposal container [pouch] 2. The Examiner has taken the position that
since the personal care product recited in claim 1 is required only to be “in a
substantially unsoiled condition,” all of the claimed structure is found in the
article shown in Black’s Figures 5 and 6. Ans. 3-6. The crux of the
Appellants’ arguments in response to the Examiner’s position is that “[a]t no
time does Black disclose housing a fresh, unsoiled product in the disposal
sack 12” (App. Br. 4), whereas claim 1 “requires a fresh product housed in a
pouch.” App. Br. 5.
While claim 1 recites a “fresh personal care product,” in the next four
words of the claim the description of the product is broadened by the added
characterization that this “fresh” product is “in a substantially unsoiled
condition.” The Black pouch is disclosed as being intended for use in
disposing of a soiled care product. Col. 1, ll. 7-10. The description of the
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product in claim 1 as being in “a substantially unsoiled condition” describes
one of but only a few conditions with regard to soiling in which the napkin
of the Black system could be disposed. In our view, this is sufficient to
describe placing within the Black pouch an absorbent product in a
substantially unsoiled condition. See e.g., In re Petering, 301 F.2d 676, 682
(C.C.P.A 1962) (a very small genus can be a disclosure of each species
within the genus). We must decline to make an infringer of one who has
previously used Black in this ordinary manner to thereby result in
Appellants’ claimed structure. Peters v. Active Mfg. Co., 129 U.S. 530,
537(1889)(“That which infringes, if later, would anticipate, if earlier.”).
Although we have carefully considered the Appellants’ arguments (App. Br.
4-6), they have not persuaded us otherwise. Thus, we find ourselves in
agreement with the Examiner that Black anticipates the subject matter
recited in claim 1, in the manner described by the Examiner on pages 3 and
4 of the Answer.
The Examiner’s rejection of claim 1 is affirmed. Since the Appellants
have chosen not to separately argue the rejections of claims 2-4, 8-11, 15-17
and 20, all of which are dependent from claim 1, the Examiner’s rejection of
these claims also is affirmed.
Claim 6 adds to claim 1 the requirement that the pouch have a
“closure mechanism which operatively holds the pouch in a closed position
which encloses the fresh product.” The Appellants argue that since Black
does not enclose a “fresh” product, this provision of claim 6 is not met. As
we have pointed out above, claim 1 recites a product that need only be
“substantially unsoiled,” which is a condition that can exist in the closed
pouch shown in Figure 6 of Black. Since Black discloses a closure
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mechanism 16 which holds the pouch in a closed position, the terms of claim
6 are met, and the rejection is affirmed.
With regard to dependent claim 7, the Appellants do not challenge the
fact that Black’s pouch has an opening mechanism, but again argue that
since Black doesn’t disclose a pouch for holding a “fresh” product, it cannot
meet the requirements of claim 7. Our reasoning here is the same as with
claim 6, that is, since claim 7 is dependent from claim 1, it requires only that
the product be in a “substantially unsoiled condition,” and therefore this
rejection is affirmed.
Independent claim 12 sets forth the elements of the invention in more
detail than claim 1. The Appellants argue that this claim is not anticipated
by Black because of the more detailed structure in several areas, including
“the manner in which the pouch is opened.” App. Br. 5. In this regard,
claim 12 recites a pouch opening mechanism which includes “a first
attachment between a first side-portion of the front panel and a first side-
portion of the back panel” of the pouch, and “a frangible line of weakness
positioned along the first attachment.” This feature is described as a “line of
frangibility 94” (Spec. 14), and is illustrated in Figure 4. It is the
Examiner’s view that Black’s flap 16 “serves as a pouch-opening
mechanism” and “includes a fold, which provides the claimed frangible line
of weakness.” Ans. 4.
We do not agree with the Examiner’s conclusion on this point. Black
discloses that flap 16 is used to hold open the pouch in order to place the
product inside (Col. 2, ll. 3-7), after which it may be “folded over from left
to right as shown in Fig. 6” to close the pouch (Col. 2, ll. 10-13). While a
line of demarcation between the flap and the back panel of the pouch is
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shown in Figures 5 and 6, there is no indication in the Specification that this
constitutes a “frangible line of weakness,” as required by claim 12.
Furthermore, the Examiner has not provided evidence or reasoning in
support of his conclusion that a fold line should be considered to be a
frangible line of weakness. Nor, from our perspective, does there appear to
be any need to separate the flap from the pouch in the operation of the Black
system, which would obviate the need for a frangible line of weakness
between these two components.
We therefore reverse the Examiner’s rejection of independent claim
12, as well as claims 13 and 14, which depend from claim 12.
Claim 18 adds to claim 12 “a deactivator mechanism to operatively
inhibit” an adhesive disposed on the personal care product when the product
is soiled and is being placed into the pouch for disposal. The Examiner is of
the opinion that Black’s flap 13 covers the adhesive on the product and can
be grasped by the user to push the product into the pouch, thus operating as a
deactivator mechanism for the garment-facing adhesive. Ans. 6. The
Appellants’ argument merely offers the conclusion that Black does not
disclose such a mechanism (App. Br. 6), but this is not supported by
evidence or explanation directed to why the Examiner’s stated position is not
correct. We therefore will affirm the rejection.
With regard to claim 19, which adds to claim 1 the limitation that the
pouch material “has been configured to provide visual masking,” the
Examiner finds that the plastic material used by Black for the pouch
“provides some degree of visual masking because it changes the visual
perception of the article.” Ans. 7. In response, the Appellants argue that
Black’s disposal pouch is constructed from a thin plastic material “which
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does not suggest that it is opaque.” App. Br. 6. This argument is not
persuasive on its face because claim 19 does not require that the material be
opaque, and additionally because the Appellants have not explained why the
Examiner’s position regarding this limitation is incorrect. The rejection of
claim 19 therefore, is affirmed.

Claim 5- Obviousness – Black
Claim 5 depends from claim 1, and adds requirements pertaining to
the total retention capacity and the expanded disposal volume of the personal
care product and the expansion capacity of the pouch. The Examiner
acknowledges that Black does not teach the claimed saturation capacity and
volume of expansion, but takes the position that when the only difference
between the claimed device and the prior art device is a recitation of relative
dimensions and the claimed device would not perform differently than the
prior art device, the claimed device is not patentably distinct from the prior
art device. Ans. 5. The Appellants’ only argument in response is that Black
“makes no disclosure regarding the amount of fluid that the pad can absorb
and still fit in the disposal pouch after being soiled” (App. Br. 7), so the
Examiner’s expressed position stands unchallenged. In light of the evidence
before us and arguments presented, we will sustain the rejection of claim 5,
noting also that on page 7 of the Answer the Examiner advanced the
proposition that it is reasonable to expect the absorbent product of the
claimed invention and Black to have similar saturation retention capacities,
and that Black teaches that the soiled pad can fit in the pouch.

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DECISION
The rejection of claims 1-4, 6-11 and 15-20 as being anticipated by
Black is affirmed.
The rejection of claims 12-14 as being anticipated by Black is
reversed.
The rejection of claim 5 as being unpatentable over Black 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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