Ex Parte Nelson et al

Board of Patent Appeals and Interferences

Dec 17, 2010

10750505 (B.P.A.I. Dec. 17, 2010)

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.
10/750,505 12/31/2003 Denise J. Nelson 17,858.2 1813
23556 7590 12/20/2010
KIMBERLY-CLARK WORLDWIDE, INC.
Tara Pohlkotte
2300 Winchester Rd.
NEENAH, WI 54956
EXAMINER
TAWFIK, SAMEH
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
12/20/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KIMBERLY-CLARK WORLDWIDE, INC.
____________________

Appeal 2009-010026
Application 10/750,505
Technology Center 3700
____________________

Before JAMESON LEE, SALLY GARDNER LANE, and
SALLY C. MEDLEY, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-010026
Application 10/750,505

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A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, Kimberly-
Clark Worldwide, Inc. (“Kimberly-Clark”), under 35 U.S.C. § 134(a) from a
final rejection of claims 1-8, 10-19, 21, 22, 35-39, 41-46, and 48. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

Reference Relied on by the Examiner
Japanese Patent Application No. 10-95481 from Applicant Kao
Corporation published April 14, 1998 (“Kao”)

The Rejection on Appeal
The Examiner rejected claims 1-8, 10-19, 21, 22, 35-39, 41-46, and 48
under 35 U.S.C. § 103(a) as unpatentable over Kao.

The Invention
The invention relates to a method of folding disposable absorbent
articles. (Spec. 1:6-8.)
Claim 1 is representative and is reproduced below (App. Br. 9 Claims
App’x.):
1. A method of folding a disposable absorbent article, the article
having an initial upper surface, an initial lower surface, a longitudinal
centerline, a transverse centerline, opposing first longitudinal side
edges, opposing first transverse end edges and an unfolded
configuration, the method of folding comprising: forming one fold
extending in a transverse direction by bringing a portion of the initial
upper surface into a facing relationship with another portion of the
initial upper surface, the one fold being spaced between opposing first
transverse end edges, the resulting partially-folded article having an
intermediate first surface, an intermediate second surface and
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opposing second transverse end edges, and thereafter forming a
number, greater than one, of transversely extending folds in an
accordion-like manner, the transversely extending accordion-like
folds being spaced between opposing second transverse end edges
and thereby forming a folded article having a folded configuration
area and an unfolded configuration area wherein the folded article has
a ratio between the folded configuration area and the unfolded
configuration area of no more than 0.14.
B. ISSUE
Did the Examiner incorrectly determine that the claim feature of a
folded article having a ratio between a folded configuration area and an
unfolded configuration area of no more than 0.14 does not distinguish
Kimberly-Clark’s claims over the teachings of Kao?
C. PRINCIPLES OF LAW
In an obviousness analysis, it is not necessary to find precise teachings
in the prior art directed to the specific subject matter claimed because
inferences and creative steps that a person of ordinary skill in the art would
employ can be taken into account. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007).
D. FINDINGS AND ANALYSIS
The Examiner rejected claims 1-8, 10-19, 21, 22, 35-39, 41-46, and 48
over Kao. Claims 1, 12, 35 and 42 are independent. Claims 2-8, 10, 11, 13-
19, 21, 22, 36-39, 41, 43-46, and 48 are ultimately dependent on, and argued
collectively with, one of the independent claims. Claims 1, 12, 35, and 42
are each drawn to a method of folding a disposable absorbent article. Each
claim requires that the article is folded in an “accordion-like” manner (App.
Br. 9, 11, 13, 14 Claims App’x.):
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thereby forming a folded article having a folded configuration area
and an unfolded configuration area wherein the folded article has a
ratio between the folded configuration area and the unfolded
configuration area of no more than 0.14.

Thus, Kimberly-Clark’s claims require that the “accordion-like”
folding of the absorbent article results in a ratio of folded configuration area
to unfolded configuration area of no more than 0.14. As explained in
Kimberly-Clark’s specification, in determining the folded area to unfolded
area ratio “the area or footprint of a folded disposable absorbent article is
compared to the area or footprint of the unfolded disposable absorbent in its
flat-out, uncontracted state[.]” (Spec. 11:15-18.)
The Examiner determined that Kao describes folding a disposable
absorbent article in an “accordion-like” manner as required by Kimberly-
Clark’s claims. (Ans. 3:11-14.) That determination is not disputed. The
Examiner further determined that Kao does not expressly disclose any
particular ratio of the area of the article in its folded state to its area in an
unfolded state. However, the Examiner concluded that one with ordinary
skill in the art would have recognized that producing the ratio set forth in
Kimberly-Clark’s claims would have been obvious as merely a matter of
routine in carrying out the folding techniques disclosed in Kao. (Id. at 3:15-
4:6.)
Kimberly-Clark challenges the Examiner’s conclusion, arguing that
the Examiner does not explain how there might be “a reasonable expectation
of success” in folding Kao’s absorbent article to the state required by its
claims. (App. Br. 6:19-20.) According to Kimberly-Clark, Kao’s teachings
are limited to a “typical, perfunctory fold” producing a folded article outside
of the claimed configuration. (Id. at 7:11-15.)
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Kimberly-Clark’s argument is unpersuasive. Kimberly-Clark does not
explain what constitutes a “typical, perfunctory fold” or set forth any
meaningful rationale as to why Kao suggests only such a fold. Kimberly-
Clark’s assessment of Kao’s teachings is also inaccurate and contrary to
what is disclosed by the reference. Kao’s invention is directed to a
packaging structure for carrying a folded diaper. (Kao ¶ 0001.) 2 One goal
of the invention is to reduce the space taken up by a diaper by rendering a
diaper more “compact.” (Id. at ¶ 0005.) As one would expect, one
technique employed by Kao in furtherance of that goal is folding the diaper.
Kao does not restrict its teachings to any particular type of fold. Rather, Kao
describes that a diaper may be folded in a variety of ways including
incorporating a “double fold,” folding the diaper “to appear like a W-shape
in section,” and folding it to resemble a “C-shape with 3 layers after
folding.” (Id. at ¶¶ 0027-28.)
Based on Kao’s teachings, one with ordinary skill in the art would
have readily appreciated that Kao’s diaper may be folded to reduce the area
or footprint of the diaper so as to make it more compact. That Kao may not
itself expressly disclose the particular ratio required is of no moment. In an
obviousness analysis, it is not necessary to find precise teachings in the prior
art directed to the specific subject matter claimed because inferences and
creative steps that a person of ordinary skill in the art would employ can be
taken into account. KSR Int’l Co., 550 U.S. at 418. A person of ordinary
skill in the art, who is also one of ordinary creativity and not an automaton,

2 References in this opinion to paragraph numbers in Kao are to the
English translation of that document which is of record and dated March 01,
2006.
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Id. at 421, would have appreciated that it is intrinsic to the very nature of
folding an article, such as a diaper, that the more the article is folded the less
area it takes up.
Furthermore, we reject Kimberly-Clark’s argument that there is no
“reasonable expectation of success” in folding Kao’s diaper down to the
claimed ratio. Kao seeks to render a diaper more compact by folding and
does not set any outer limit on the extent of folding which may take place.
Kimberly-Clark’s assertion is mere argument of counsel which cannot take
the place of evidence lacking in the record. Estee Lauder Inc. v. L'Oreal,
S.A., 129 F.3d 588, 595 (Fed. Cir. 1997).
For the foregoing reasons, we sustain the rejection of claims 1-8, 10-
19, 21, 22, 35-39, 41-46, and 48 as unpatentable over Kao.
E. CONCLUSION
The Examiner did not incorrectly determine that the claim feature of a
folded article having a ratio between a folded configuration area and an
unfolded configuration area of no more than 0.14 does not distinguish
Kimberly-Clark’s claims over the teachings of Kao.
F. ORDER
The rejection of claims1-8, 10-19, 21, 22, 35-39, 41-46, and 48 under
35 U.S.C. § 103(a) as unpatentable over Kao is affirmed.

Appeal 2009-010026
Application 10/750,505

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TIME PERIOD
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) (2009).

AFFIRMED

PL/lb:

KIMBERLY-CLARK WORLDWIDE, INC.
Tara Pohlkotte
2300 Winchester Rd.
NEENAH WI 54956