Ex Parte Price

Board of Patent Appeals and Interferences

Aug 19, 2011

10741755 (B.P.A.I. Aug. 19, 2011)

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.
10/741,755 12/18/2003 Cindy Lou Price 18,993 4736
23556 7590 08/19/2011
KIMBERLY-CLARK WORLDWIDE, INC.
Tara Pohlkotte
2300 Winchester Rd.
NEENAH, WI 54956
EXAMINER
ANDERSON, CATHARINE L
ART UNIT PAPER NUMBER
3764
MAIL DATE DELIVERY MODE
08/19/2011 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 CINDY LOU PRICE
____________________

Appeal 2009-012799
Application 10/741,755
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, JOHN C. KERINS, and KEN B.
BARRETT, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-012799
Application 10/741,755
2
STATEMENT OF CASE
Cindy Lou Price (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1, 4, 11-15, 21, and 23 under 35 U.S.C. §
102(b) as being anticipated by Dreier (US 5,558,660, iss. Sep. 24, 1996);
and of claims 1, 4-10, 12-19, and 21-23 under 35 U.S.C. § 102(b) as being
anticipated by Tanji (US 6,440,116 B1, iss. Aug. 27, 2002). We have
jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM, but denominate our affirmance as to the Dreier
rejection as a NEW GROUND OF REJECTION, pursuant to 37 C.F.R.
§ 41.50(b).

THE INVENTION
The claims are directed to an absorbent pad with three-dimensional
end containment. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. An absorbent pad configured for attachment in an
undergarment, the pad having a rear portion, front portion,
garment-facing surface, and body-facing surface, the pad
comprising:
a backsheet layer;
a liquid permeable topsheet layer secured to and in facing
relation with the backsheet layer;
an absorbent assembly disposed between the backsheet
layer and the topsheet layer;
at least one elasticized side retention member disposed
outboard of the absorbent assembly on each side of the
absorbent assembly; and
Appeal 2009-012799
Application 10/741,755
3
a three-dimensional capture structure;
said three-dimensional capture structure being disposed
in the rear portion of the pad on the body facing surface
and adapted to conform to a wearer's gluteal groove
when the rear portion of the absorbent pad is positioned
in an undergarment adjacent a wearer's perianal region,
wherein the capture structure defines a volume such that
any fluid entering said volume is retained by said volume
and the elasticized side retention members apply tension
to the three-dimensional capture structure and facilitate
opening the three-dimensional capture structure.

OPINION
The Dreier Rejection
Each of Appellant’s independent claims 1 and 16 recites an
“absorbent pad.” An applicant can be her own lexicographer provided the
applicant's definition, to the extent it differs from the conventional
definition, is clearly set forth in the specification. Beachcombers Int’l, Inc.
v. WildeWood Creative Prods., Inc., 31 F.3d 1154, 1158 (Fed. Cir. 1994). In
this instance, Appellant’s Specification explicitly defines the terminology
“absorbent pad” by stating that
[a]s used herein, the term “absorbent pad” means an article
generally sized and shaped to fit in the crotch region of a wearer
and generally configured to be worn with an undergarment,
such as underwear or panty hose . . . . An absorbent pad should
be distinguished from a full-length absorbent article such as a
baby diaper or adult incontinence briefs or absorbent
undergarments, which are generally not configured for use with
underwear.
Spec. 5:25-31.
Properly construed in accordance with the definition of “absorbent
pad” provided in Appellant’s Specification, Appellant’s claims do not cover
Appeal 2009-012799
Application 10/741,755
4
absorbent articles such as diapers and incontinence briefs or undergarments.
Thus, we do not agree with the Examiner that the term “absorbent pad” fails
to distinguish the claimed subject matter from Dreier’s diaper. See Ans. 5-6.
However, Dreier expressly teaches that the invention disclosed therein (a
disposable absorbent article provided with a liquid pervious topsheet, a
liquid impervious backsheet, an absorbent core intermediate the topsheet and
backsheet, a pocket cuff overlying a portion of the topsheet, and a gluteal
groove spacer disposed on the pocket cuff) is also applicable to other
disposable absorbent articles, such as “sanitary napkins,” which would
satisfy the “absorbent pad” limitation of claims 1 and 16. Dreier, col. 2, ll.
30-36; col. 4, ll. 12-16.
Appellant’s arguments that Dreier’s absorbent article would not
typically be placed in an undergarment, and that Dreier’s absorbent article
would be useless for containing fecal matter if positioned in the perianal
region, are not convincing. See App. Br. 4. First, any of the types of
absorbent articles alluded to by Dreier, including a diaper, is fully capable of
being placed in an undergarment, and a sanitary napkin typically is worn in
and secured to an undergarment. See Dreier, col. 1, ll. 32-34 (referring to
“wearer’s contacting clothing” outside of the diaper). Further, Dreier
discusses positioning of the article so that the apex 157 of the open edge of
the pocket cuff 50 is aligned with the wearer’s gluteal groove to form a seal
with the wearer’s buttocks. Dreier, col. 11, ll. 22-31. Accordingly, Dreier
teaches positioning of the rear portion of the absorbent article “adjacent” a
wearer’s perianal region. Claims 1 and 16 do not require that the entirety of
the absorbent article be positioned in the perianal region.
For the above reasons, we sustain the rejection of claims 1 and 16.
Appellant has not presented any separate arguments for the patentability of
Appeal 2009-012799
Application 10/741,755
5
claims 4, 21, and 23 apart from independent claims 1 and 16. Thus, in
accordance with 37 C.F.R. § 41.37(c)(1)(vii), these claims fall with claims 1
and 16.
Appellant’s argument on page 4 of the Appeal Brief that Dreier “does
not appear to disclose a non-unitary structure” as called for in claim 11 is not
convincing, as it does not specifically point out any error in the Examiner’s
finding that Dreier shows a non-unitary three-dimensional capture structure
in Figure 3. See Ans. 3. Appellant’s reliance on Dreier’s description of the
absorbent articles as “preferably unitary” is misplaced, as Dreier uses the
term “unitary” to mean that the articles do not require separate manipulative
parts or comprise elements of a diaper system such as a separate holder or
liner. Dreier, col. 4, ll. 5-8. Such a description does not preclude a “non-
unitary structure” as Appellant defines that terminology in the sentence
bridging pages 13 and 14 of the Specification. We sustain the rejection of
claim 11.
Appellant’s argument that Dreier “does not appear to disclose the
width to height ratios of claims 12-15” amounts to nothing more than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements are not found in the prior art, and thus does not constitute a
separate argument for patentability pursuant to 37 C.F.R. § 41.37(c)(1)(vii).
See In re Lovin, 99 USPQ2d 1373, 1379 (Fed. Cir. 2011) (holding that the
Board had reasonably interpreted 37 C.F.R. § 41.37(c)(1)(vii) as requiring
“more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
Appeal 2009-012799
Application 10/741,755
6
not found in the prior art”)1 Appellant has waived any argument for separate
patentability of these dependent claims. See id. We sustain the rejection of
claims 12-15.
Our rationale in sustaining the rejection of claims 1, 4, 11-15, 21, and
23 as being anticipated by Dreier differs from that articulated by the
Examiner, as explained above. Thus, we denominate our affirmance of this
rejection as a new ground of rejection pursuant to 37 C.F.R. § 41.50(b), in
order to give Appellant an opportunity to respond thereto.
The Tanji Rejection
The Examiner made findings reading the subject matter of claims 1
and 16 on the article 1 of Tanji. Ans. 4, 6-7. We adopt those findings.
Appellant argues that Tanji’s article is disclosed for collecting at least
feces, and thus does not appear to be configured to absorb urine, menses,
and blood, for example. App. Br. 5, 6. This argument is not well founded,
for the reasons set forth by the Examiner on page 6, in lines 13-18, of the
Answer, which we hereby adopt. See also Tanji, col. 5, ll. 30-32 (describing
the receiving capability of the rear end 42 of the article).
Appellant also argues that the entire absorbent article of Tanji appears
to be the “capture” structure, and thus does not comprise a capture structure
in the rear portion of the pad, as called for in claims 1 and 16. App. Br. 5, 6.
This argument is not convincing. As explained by the Examiner in the
paragraph bridging pages 6 and 7 of the Answer, the rear portion (rear end
42) of Tanji’s article 1 forms a pocket which satisfies the requirements of the
capture structure recited in claims 1 and 16.

1 Appellant’s statement does nothing to explain why the Examiner’s finding
that this ratio is taught by Dreier is in error, especially given Dreier’s
disclosed included angle B of between 45o and 135o (col. 15, ll. 20-22).
Appeal 2009-012799
Application 10/741,755
7
Appellant’s argument that Tanji does not appear to disclose a capture
structure “adapted to conform to a wearer’s gluteal groove when the rear
portion of the absorbent pad is positioned in an undergarment adjacent a
wearer’s perianal region” (App. Br. 5, 6) is not well founded. As shown, for
example, in figure 1, rear end 42 of Tanji’s article 1 comes to an apex along
the centerline of the body-facing surface of the article, such that it is fully
capable of conforming to a wearer’s gluteal groove if attached to an
undergarment as taught by Tanji (col. 5, ll. 35-37). Moreover, while claims
1 and 16 do not require that the rear end of the article actually be positioned
in an undergarment adjacent the wearer’s perianal region, Tanji in fact
discloses positioning of the article such that the wearer’s anus lies
substantially in a central zone of the opening 8 of the article 1, which would
dispose the rear end 42 of the article “adjacent” the anus, and thus
“adjacent” the perianal region. See Tanji, col. 5, ll. 14-18.
Appellant further argues that Tanji’s elasticized side retention
members (elastic members 12) do not appear to apply tension to the capture
structure and facilitate opening. App. Br. 5. This argument is not
convincing, for the reason articulated by the Examiner on page 7 of the
Answer. While the elastic members 12 are secured in an extended state,
such that they would appear to apply a tension force in a direction to make
the opening 8 smaller, that tension force on the article’s front end 41,
intermediate region 43, and rear end 42 also pulls the ends of the topsheet 2
and backsheet 3 upward to form the pocket above the absorbent core 4, as
illustrated in figure 2, thereby facilitating opening the three dimensional
capture structure. See Tanji, col. 4, l. 45.
For the above reasons, we sustain the rejection of claims 1 and 16 and
of claims 4-6, 17, 19, and 21-23, for which Appellant has not presented a
Appeal 2009-012799
Application 10/741,755
8
separate argument, and which thus fall with claims 1 and 16 in accordance
with 37 C.F.R. § 41.50(b). See App. Br. 6.
Appellant’s statement that “Tanji does not appear to disclose an
A1/A2 ratios of [claims 7-10]” (App. Br. 6) does not constitute a separate
argument for patentability pursuant to 37 C.F.R. § 41.37(c)(1)(vii). See
Lovin, 99 USPQ2d at 1379 (holding that the Board had reasonably
interpreted 37 C.F.R. § 41.37(c)(1)(vii) as requiring “more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art”).2 Appellant has waived any argument for separate patentability of
these dependent claims. See id. We sustain the rejection of claims 7-10.
Appellant’s statement that “Tanji does not appear to disclose the
width to height ratios of [claims 12-15]” (App. Br. 6) also does not
constitute a separate argument for patentability pursuant to 37 C.F.R.
§ 41.37(c)(1)(vii). Appellant has not specifically pointed out any error in
the Examiner’s finding that Tanji’s figure 2 shows the width to height ratio
of the capture member to be less than about 1:1. See Ans. 5. We sustain the
rejection of claims 12-15.
Appellant’s statement that “Tanji does not appear to disclose a spacer”
(App. Br. 6) also does not constitute a separate argument for patentability
pursuant to 37 C.F.R. § 41.37(c)(1)(vii). Appellant has not specifically
pointed out any error in the Examiner’s finding that one of the elastic
members 12 in the embodiment of figure 8 of Tanji corresponds to the
claimed spacer. See Ans. 4. We sustain the rejection of claim 18.

2 Appellant’s statement does nothing to explain why the Examiner’s finding
that figures 1 and 2 of Tanji show a garment-facing portion area to body-
facing portion area to be less than about 4:1 is in error. See Ans. 5.
Appeal 2009-012799
Application 10/741,755
9
DECISION
For the above reasons, the Examiner’s decision is affirmed, but we
denominate our affirmance of the rejection of claims 1, 4, 11-15, 21, and 23
as being anticipated by Dreier as a new ground of rejection pursuant to 37
C.F.R. § 41.50(b).

FINALITY OF DECISION
Regarding the affirmed rejection(s), 37 CFR § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the proceeding will be
remanded to the examiner. . . .

(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same record. . . .
Appeal 2009-012799
Application 10/741,755
10
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. § 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED; 37 C.F.R. § 41.50(b)

hh