Ex Parte Pateras et al

Board of Patent Appeals and Interferences

Jan 20, 2012

11242520 (B.P.A.I. Jan. 20, 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.
11/242,520 10/03/2005 Carrie Nicole Pateras 21694 7955
23556 7590 01/23/2012
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
01/23/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte CARRIE NICOLE PATERAS, GARRY ROLAND WOLTMAN,
MARCILLE FAYE RUMAN, ANGELA RAE HECK,
and KARYN CLARE SCHROEDER
__________

Appeal 2010-008205
Application 11/242,520
Technology Center 3700
__________

Before TONI R. SCHEINER, DEMETRA J. MILLS, and
FRANCISCO C. PRATS, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for anticipation and obviousness. We have jurisdiction under 35
U.S.C. § 6(b).
Appeal 2010-008205
Application 11/242,520

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STATEMENT OF THE CASE

The following claims are representative and reads as follows:
7. A composite-folded article comprising
a personal care article having a longitudinal-direction; a relatively shorter
lateral cross-direction, a first end-section; a second end-section; and an
intermediate-section which is interposed between said first end-section and
said second end-section; said personal care article comprising:
a liquid permeable topsheet layer; and
a backsheet layer operatively connected to the topsheet layer;
wherein
the personal care article has been folded about a first, laterally extending
supplemental-fold-line positioned along a portion of the first end-section
which is proximally adjacent the intermediate-section of the personal care
article, the first supplemental-fold-line operatively arranged to provide a
folded-over first end-section which is positioned onto the intermediate-
section;
the personal care article has been folded about a second, laterally extending
supplemental fold-line positioned along a portion of the second end-section
which is proximally adjacent the intermediate-section of the personal care
article, the second supplemental fold-line operatively arranged to provide a
folded-over second end-section which is positioned onto the folded-over first
end-section, thereby providing a preliminary-folded article; and
the preliminary-folded article has been folded along a third, laterally
extending, composite fold-line,
thereby providing the composite-folded article; and
the personal-care article further includes a garment-attachment mechanism
operatively connected to a garment side of the backsheet layer.

18. A composite-folded article as recited in claim 7, wherein the composite-
folded article has included a girth which is less than about 15 cm.

Appeal 2010-008205
Application 11/242,520

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Cited References

The Examiner relies on the following prior art reference:

Byrd et al. US 5,569,228 Oct. 29, 1996

Grounds of Rejection
1. Claims 7-17 are rejected under 35 U.S.C. § 102(b) for anticipation
over Byrd.
2. Claims 18-19 are rejected under 35 U.S.C. § 103(a) for obviousness
over Byrd.

FINDINGS OF FACT
The findings of fact are set forth in the Answer at pages 3-5.
Highlighted facts appear below.
1. Figures 4A-C of the Specification are reproduced below.

Figures 4A-C show a personal article having two folds 64 and 66,
with an additional third fold 76/96.
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2. Below are Figs. 5 and 6 reproduced from Byrd.

Figure 5 shows releasable wrapper 34, with fold 56. Figure 6 shows
sanitary napkin 20 having two c-folds 50.

Discussion
ISSUE
The Examiner concludes that Byrd discloses a personal care article
with first and second laterally extending fold lines in Fig. 6 and a third fold
line (Fig. 5., 56). (See Ans. 3.) The Examiner argues that the transitional
term “comprising” in the claims makes the claim open to additional elements
such as a releasable wrapper. (See id. at 5.)
Appellants argue that Byrd does not disclose that the article has been
folded along a third, laterally extending, composite fold-line, as claimed.
“Byrd discloses a tri-folded article (i.e., three fold-sections with only two
transverse fold lines) throughout the entire disclosure.” (App. Br. 3.)
The issue is: Does the cited prior art support the Examiner‟s rejection
of the claims for anticipation and obviousness?
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PRINCIPLES OF LAW
“„Comprising‟ is a term of art used in claim language which means
that the named elements are essential, but other elements may be added and
still form a construct within the scope of the claim.” Genentech, Inc. v.
Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997).
In order for a prior art reference to serve as an anticipatory reference,
it must disclose every limitation of the claimed invention, either explicitly or
inherently. See In re Schreiber, 128 F.3d 1473, 1477(Fed. Cir. 1997). To
anticipate, 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).
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.

ANALYSIS
While we agree with the Examiner‟s claim interpretation that the term
“comprising” in claim 7, makes the claim open to additional elements, such
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Application 11/242,520

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as a releasable wrapper, we do not agree with the Examiner that Byrd
discloses a preliminary-folded article has been folded along a third, laterally
extending, composite foldline, as claimed.
The personal care article of claim 7 has a top sheet, backsheet and
specific fold pattern including a third lateral fold. (FF1.) The personal
article of Byrd has only two c-folds, Fig. 6 (FF2.) We do not consider the
releasable wrapper of Fig. 5 of Byrd with fold 56, to be a part of the personal
article as defined in claim 7. Thus, Byrd does not disclose a personal article
having a third lateral fold as claimed. The anticipation rejection is reversed.
For the same reason, we also reverse the obviousness rejections over Byrd.

CONCLUSION OF LAW
The cited reference does not support the Examiner‟s anticipation and
obviousness rejections.

REVERSED

alw