Ex Parte OdorzynskiDownload PDFBoard of Patent Appeals and InterferencesOct 15, 201010334931 (B.P.A.I. Oct. 15, 2010) Copy Citation 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 Copy with citationCopy as parenthetical citation