Ex Parte Odorzynski

Board of Patent Appeals and Interferences

Oct 15, 2010

10334931 (B.P.A.I. Oct. 15, 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.
10/334,931 12/31/2002 Thomas Walter Odorzynski 18947 8315
23556 7590 10/15/2010
KIMBERLY-CLARK WORLDWIDE, INC.
Tara Pohlkotte
2300 Winchester Rd.
NEENAH, WI 54956
EXAMINER
KIDWELL, MICHELE M
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
10/15/2010 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 THOMAS WALTER ODORZYNSKI
____________

Appeal 2009-011848
Application 10/334,931
Technology Center 3700
____________

Before WILLIAM F. PATE, III, MICHAEL W. O’NEILL, and
FRED A. SILVERBERG, Administrative Patent Judges.

O’NEILL, 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 2009-011848
Application 10/334,931

2
STATEMENT OF THE CASE
Thomas Walter Odorzynski (Appellant) appeals under 35 U.S.C.
§ 134 from the Examiner’s decision finally rejecting claims 1, 3-6, 9-11, 13,
14, 17-20, 41-50, 53-57, and 59-76 under 35 U.S.C. § 102(b) as anticipated
by, or in the alternative, under 35 U.S.C. § 103(a) as unpatentable over Roe
(US 6,013,063, issued Jan. 11, 2000).2 We have jurisdiction under 35
U.S.C. § 6(b). We REVERSE.
The Invention
The claims on appeal relate to a personal care article.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A personal care article comprising:
first and second encasing layers, wherein said first
encasing layer comprises a liquid permeable liner;
an absorbent core positioned between said first and
second encasing layers;
a patch including an odor control agent, wherein said
patch is attached to said first encasing layer; and
an outermost porous layer directly attached to said first
encasing layer, said outermost porous layer having a Frazier air
permeability of at least 10 m3/m2/minute and wherein said
outermost porous layer extends over at least a portion of said
first encasing layer and said patch and further wherein said
patch is located between said outermost porous layer and said
first encasing layer.

2 Appellant has not presented arguments concerning the final rejection of
claims 15, 16, 51, and 52 under 35 U.S.C. § 103(a) as being unpatentable
over Roe in view of Tramontana (US 6,284,261 B1, issued Sep. 4, 2001).
The Examiner did not withdraw the rejection. Ans. 6. We understand this to
mean that Appellant is relying on his arguments concerning the rejection
based solely on Roe to demonstrate error in the Examiner’s rejection with
Roe and Tramontana.
Appeal 2009-011848
Application 10/334,931

3
The Rejections
The Examiner finds that Roe discloses a patch (172) (element 172 is a
multiplicity of discrete particles that may include odor absorbents pursuant
to Roe’s disclosure) and this patch is attached to a first encasing layer (24)
(element 24 is disclosed as a topsheet pursuant to Roe’s disclosure) as
shown in Figure 6A. The Examiner finds that Roe discloses an outermost
porous layer (150) (element 150 is disclosed as an acceptance element
intended to accept bodily exudates pursuant to Roe’s disclosure) and this
layer (150) is directly attached to the first encasing layer as shown in Figure
6A. The Examiner posits that Roe discloses that this outermost porous layer
extends over at least a portion of the first encasing layer “wherein the patch
is located between the outermost porous layer and the first encasing layer as
set forth in col. 15, lines 48-51 and figure 6A.” Ans. 3-4. As such, based on
these findings and analysis, the Examiner finds Roe anticipates the claims
or, in the alternative, based on Roe disclosing scrim or netting material, the
Frazier air permeability range would be obvious. Ans. 4.
Contentions
Appellant contends that Roe fails to disclose that the patch is located
between the outermost porous layer and the first encasing layer as recited
within claim 1. App. Br. 7. Appellant contends that what Roe discloses is
the particles (172) (the Examiner’s alleged patch) are located under the
acceptance element (150) (the Examiner’s alleged outermost porous layer)
and the liquid permeable topsheet (24) (the Examiner’s alleged first encasing
layer). App. Br. 8.

Appeal 2009-011848
Application 10/334,931

4
DISCUSSION
The law of anticipation is clear. “A claim is anticipated only if each
and every element as set forth in the claim is found, either expressly or
inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v.
Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). To establish
anticipation, every element and limitation of the claimed invention must be
found in a single prior art reference, arranged as in the claim. Karsten Mfg.
Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Our
reviewing court has emphasized that “arranged as in the claim” refers to the
need for the anticipatory reference to show all of the limitations of the claim
as recited in the claim. Net Moneyin, Inc. v. Verisign, Inc., 545 F.3d 1359,
1370 (Fed. Cir. 2008). “[A]bsence from the reference of any claimed
element negates anticipation.” Kloster Speedsteel AB v. Crucible, Inc., 793
F.2d 1565, 1571 (Fed. Cir. 1986).
The portion of Roe relied on by the Examiner to find that the patch is
located between the outmost porous layer and the first encasing layer
discloses that the acceptance element (150) may be integral with another
diaper (20) element, or may be one or more separate elements joined directly
or indirectly with one or more diaper (20) elements. This portion of Roe
fails to show all of the limitations of the claim as recited in the claim, i.e.,
the patch is located between the outermost porous layer and the first
encasing layer. As best as can be understood from Roe’s Figure 6 and 6A,
moving left to right, topsheet (24) extends to the right and is joined to
acceptance element (150). Acceptance element (150) encapsulates odor
absorbent particles (172) and continuing to the right joins topsheet (24). As
such, odor absorbent particles are not between topsheet (layer) (24) and
Appeal 2009-011848
Application 10/334,931

5
acceptance element (layer) (150), but encapsulated by acceptance layer
(150) and a portion of topsheet (24).
In view of the foregoing, Appellant is correct that Roe fails to disclose
or teach that the patch is located between the outermost porous layer
(topsheet 24, Roe’s nomenclature) and the first encasing layer (acceptance
element 150, Roe’s nomenclature).
The Examiner’s reliance on the principle that a person of ordinary
skill in the art would be able to “at once envisage” the specific embodiment
within a generic teaching is of no avail to remediate the Examiner’s
rejection. As stated supra, the law of anticipation is clear: the reference
must show all of the limitations of the claim as recited in the claim since
absence from the reference of any claimed element negates anticipation.
The portion of the MPEP relied on by the Examiner concerns generic-
species relationships of chemical compounds. Moreover, the Examiner has
failed to identify what is generic and what is a species in this case and how
the generic would anticipate the species. Further, for any obviousness
rejection, it is incumbent upon the Examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837 F.2d 1071,
1073 (Fed. Cir. 1988). In so doing, the Examiner is expected to make the
factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17
(1966).
The Examiner’s reliance on Roe or Tramontana for the want of
nonobviousness does not remedy this deficiency within Roe concerning the
arrangement of the claimed elements.
Appeal 2009-011848
Application 10/334,931

6
DECISION
Based on the foregoing, the Examiner’s decision to reject claims 1, 3-
6, 9-11, 13-20, 41-57, and 59-76 is reversed.

REVERSED

mls

KIMBERLY-CLARK WORLDWIDE, INC.
TARA POHLKOTTE
2300 WINCHESTER RD.
NEENAH, WI 54956