Ex Parte Schmidt- Forst et al

Board of Patent Appeals and Interferences

Jun 28, 2012

11117899 (B.P.A.I. Jun. 28, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/117,899 04/29/2005 Alexander Schmidt- Forst 20672 7155
23556 7590 06/28/2012
KIMBERLY-CLARK WORLDWIDE, INC.
Tara Pohlkotte
2300 Winchester Rd.
NEENAH, WI 54956
EXAMINER
CHAPMAN, GINGER T
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
06/28/2012 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 ALEXANDER SCHMIDT-FORST
and FRANZ ASCHENBRENNER
__________

Appeal 2011-003805
Application 11/117,899
Technology Center 3700
__________

Before ERIC GRIMES, FRANCISCO C. PRATS, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

BONILLA, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims directed to a
tampon comprising absorbent material that is compressed into a generally
cylindrical shape in a first mode, and expands upon absorption of liquid into
a non-cylindrical shape in a second mode. The Examiner rejects claims 15
and 16 as indefinite and claims 10-21 as obvious. We have jurisdiction
under 35 U.S.C. § 6(b). We reverse.
App
App

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03805
/117,899
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. (Spec. 5
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Figure 2
picts a

,

Appeal 2011-003805
Application 11/117,899

3
second mode in a bottle shape. Figure 6 depicts a second mode in a
mushroom shape. (Spec. 11, ll. 6-12.)
Claims 10-21 are on appeal.1 Claim 10 is the only independent claim:
10. A dual mode absorbent tampon comprising:
a mass of absorbent material compressed into a generally
cylindrical shaped, in a first mode of the tampon;
the mass of absorbent material comprising a plurality of fibers
which include a first type of fiber and a second type of fiber, the
second type of fiber having a material composition different than the
first type of fiber; and,
at least a portion of the first type of fibers being bonded in a
pre-determined pattern to adjacent fibers of the plurality of fibers
wherein absorption of liquid by the plurality of fibers causes at least a
portion of the mass of absorbent material to expand into a non-
cylindrical shape which is dependent upon the pre-determined pattern,
in a second mode of the tampon.
Dependent claim 14 recites that:
the non-cylindrical shape comprises a first zone and an adjacent
second zone, with the first zone having a first Diameter corresponding
to the generally cylindrical shape and the second zone having a
second Diameter corresponding to the non-cylindrical shape such that
the second Diameter is greater than the first Diameter as measured
according to the Radial Expansion Test.
Claims 15 and 16 each depend on claim 14 and recite that the second
diameter is “at least 10% greater than the first Diameter,” or “at least 20%
greater than the first Diameter,” respectively.
The claims stand rejected as follows:
(I) Claims 15 and 16 under 35 U.S.C. § 112, 2nd ¶, as being indefinite.

1 Claims 1-21 are pending, but claims 1-9 are withdrawn. (App. Br. 1.)
Appeal 2011-003805
Application 11/117,899

4
(II) Claims 10-11 and 13 under 35 U.S.C. § 103(a) as being obvious
over Brien et al (U.S. Pat. No. 3,738,364, issued Jun. 12, 1973) in view of
Bletzinger et al (U.S. Pat. No. 2,926,394, issued Mar. 1, 1960) and further in
view of Gehling et al (U.S. Pat. No. 6,899,700 B2, issued May 31, 2005).
(III) Claims 12 and 14-16 under 35 U.S.C. § 103(a) as being obvious
over Brien in view of Bletzinger and Gehling and further in view of
Agyapong et al (U.S. Pat. No. 6,554,814 B1, issued Apr. 29, 2003).
(IV) Claims 17 and 19-21 under 35 U.S.C. § 103(a) as being obvious
over Brien in view of Bletzinger in view of Gehling and further in view of
Scott et al (WO 98/47456, published Oct. 29, 1998).
(V) Claim 18 under 35 U.S.C. § 103(a) as being obvious over Brien
in view of Bletzinger in view of Gehling and further in view of Leutwyler et
al (U.S. Pat. No. 5,911,712, issued Jun. 15, 1999).
Rejection (I)
Issue
Did the Examiner err in determining that claims 15 and 16 are
indefinite based on claim language reciting that a second diameter in a
second zone of a non-cylindrical shape “is at least 10% greater” or “at least
20% greater” than a first diameter in a first zone of the shape?
Principles of Law
A patent specification must “conclude with one or more claims
particularly pointing out and distinctly claiming the subject matter which the
applicant regards as his invention.” 35 U.S.C. § 112, second ¶. This
requirement of claim definiteness assures that the claims are “sufficiently
Appeal 2011-003805
Application 11/117,899

5
precise to permit a potential competitor to determine whether or not he is
infringing.” Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313,
1342 (Fed. Cir. 2003) (quoting Morton Int'l, Inc. v. Cardinal Chem. Co., 5
F.3d 1464, 1470 (Fed. Cir. 1993)). “The test for definiteness is whether one
skilled in the art would understand the bounds of the claim when read in
light of the specification.” Miles Laboratories, Inc. v. Shandon Inc., 997
F.2d 870, 875 (Fed. Cir. 1993).
Analysis
The Examiner concludes that because claims 15 and 16 recite “that
the second diameter is at least 10 % and at least 20 % greater than the first
diameter but do recite an upper limit,” i.e., “lack of an upper limit,” these
claims are indefinite. (Ans. 3.)
We disagree. Based on the claim language itself, as well as teachings
in the Specification, a skilled artisan could determine whether a second
diameter is greater than a first diameter by at least 10% or 20%. Although
claims 15 and 16 do not recite an upper limit for the second diameter, one
skilled in the art would understand the bounds of the claim. One would be
able to determine whether a second diameter is at least 10% or 20% greater
than a first diameter in a non-cylindrical shape “as measured according to
the Radial Expansion Test,” as recited in claim 14. The Specification
describes how to conduct the Radial Expansion Test, as well as a
measurement procedure. (Spec. 14, l. 4 – 15, l. 14.)
Appeal 2011-003805
Application 11/117,899

6
Conclusion of Law
We conclude that the Examiner errs in determining that claims 15 and
16 are indefinite based on claim language reciting that a second diameter in
a second zone of a non-cylindrical shape “is at least 10% greater” or “at least
20% greater” than a first diameter in a first zone of the shape.
Rejection (II)
Issue
Does the Examiner establish that Brien, either alone or in combination
with Bletzinger and/or Gehling, discloses or suggests “a mass of absorbent
material compressed into a generally cylindrical shape[ ],” where at least a
portion of the material expands “into a non-cylindrical shape,” as recited in
claim 10?
Principles of Law
The Examiner bears the initial burden, on review of the prior art or on
any other ground, of presenting a prima facie case of unpatentability. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). If the Examiner fails to
establish a prima facie case of unpatentability in the first instance, the
rejection is improper and must be reversed. Id.
The Board “determines the scope of claims in patent applications not
solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction ‘in light of the specification as it would be
interpreted by one of ordinary skill in the art.”’ Phillips v. AWH Corp., 415
F.3d 1303, 1316 (Fed. Cir. 2005) (quoting In re Am. Acad. of Sci. Tech. Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004)). A claim term is interpreted in a
App
App

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03805
/117,899
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Appeal 2011-003805
Application 11/117,899

8
Figure 1 depicts a perspective view of a starting rectangular pledget as it
appears before forming it into the compressed tampon shape. (Brien, col. 2,
ll. 52-54.) Figure 2 depicts a perspective view of the compressed tampon.
(Id. at ll. 57-59.) The compressed tampon in Figure 2 “comprises a main
cylindrical body portion 15 with a substantially conical forward end portion
16.” (Id. at col. 3, ll. 25-30.)
Consistent with what is shown in Figure 2, Brien describes that the
compressed form of the tampon comprises a “substantially cylindrical shape
having a main cylindrical portion and a forward portion which is generally
conical.” (Id. at col. 6, ll. 18-22; see also col. 1, ll. 45-49 (describing a
“conical tip”)). In one embodiment “the conical tip reexpanded rapidly to
nearly rectangular shape,” while in another embodiment, after expansion,
“the tip of the tampon … remained in substantially conical form even after
the rear, base portion of the tampon had reexpanded to a substantially
rectangular form.” (Id. at col. 5, ll. 10-25; see also col. 1, ll. 57-67.)
We find that Brien discloses a tampon comprising material
compressed into “generally cylindrical shape” where the reference describes
and depicts a cylindrical portion of a compressed tampon, i.e., (15) in Figure
2. The Examiner assumes, however, that the phrase “mass of absorbent
material compressed into a generally cylindrical shape[ ]” as recited in claim
10 encompasses the entire absorbent tampon described in Brien, i.e., both
(15) and the conical tip (16) as shown in Figure 2. (Ans. 4; see also id. at 5
(relying on the finding that “the tip portion … expands into its conical shape,
[and] the base expands to a substantially rectangular shape”).) We disagree
that this phrase in claim 10 can be interpreted so broadly.
Appeal 2011-003805
Application 11/117,899

9
As taught in the Specification, “generally cylindrical shaped” refers to
something that is cylindrical overall, such as shown in Figures 1, 3, and 5 in
the Specification. When the Specification and claims intend to refer to
something that is conical or something that comprises a conical portion, it
describes the shape differently, i.e., as being a “non-cylindrical shape.”
(Spec, 2, ll. 23-27 (defining “non-cylindrical shape” as one having first and
second zones with different diameters); id. at 11, ll. 6-8 (describing a “non-
cylindrical shape” as “cone shaped” as shown in Figure 2).) The
Specification and claims make it clear that “generally cylindrical shaped”
does not refer to a shape that is conical or a shape that comprises both a
portion that is cylindrical and a portion that is conical, because such a shape
has zones with cross-sectional diameters that differ by at least 5%. The
Specification defines such shapes as “non-cylindrical.”
We are aware that certain passages in Brien, in contrast with other
passages in the reference, use the phrase “substantially cylindrical shape”
when referring to the compressed tampon as a whole, i.e., one having the
cylindrical portion and the conical portion. (Id. at col. 3, ll. 42-47; col. 6, ll.
17-21) A broadest reasonable reading of the phrase “generally cylindrical
shaped” as recited in claim 10 in light of the Specification, however, does
not encompass this type of “substantially” cylindrical shape, as discussed
above. Rather, the only component in Brien corresponding to “a mass of
absorbent material compressed into a generally cylindrical shape[ ]” in claim
10 is the cylindrical portion of the compressed tampon (without the conical
tip), i.e., portion (15) in Figure 2.
Appeal 2011-003805
Application 11/117,899

10
The question then becomes whether Brien in view of Bletzinger and
Gehling suggests expanding the cylindrical portion of Brien’s tampon (or
any cylindrical portion of a tampon disclosed in Bletzinger or Gehling) into
“a non-cylindrical shape.” As noted by the Examiner, Brien teaches that the
cylindrical portion expands into a “substantially rectangle shape” (Ans. 4),
which is arguably “non-cylindrical” as one would understand that term
generally.
That said, an applicant may act as his own lexicographer “so long as
he clearly states any special definitions of the claim terms in the patent
specification,” or “ʻby implication’ such that the meaning may be ‘found in
or ascertained by a reading of the patent documents.’” Irdeto Access, Inc. v.
Echostar Satellite Corp., 383 F.3d 1295, 1300 (Fed. Cir. 2004) (quoting Bell
Atl. Network Servs., Inc. v. Covad Communications Group, Inc., 262 F.3d
1258, 1268 (Fed. Cir. 2001)). In this case, the Specification defines “non-
cylindrical shape” to mean “a tampon having a second zone of the tampon
where the cross-sectional Diameter of the second zone is at least 5% greater
than a cross-sectional Diameter of at least a first zone of the tampon.”
(Spec. 2, ll. 23-27.)
The Examiner has not pointed to anything in Brien that demonstrates
or suggests that the disclosed rectangle in Brien (that forms upon expansion
of the cylindrical portion of Brien’s tampon) has a zone with a diameter that
is greater than the diameter of another zone. Specifically, a rectangle does
not have a “diameter.” Those skilled in the art would know that “diameter”
refers to something that is measured in relation to a circle, i.e., the distance
of a straight line that passes through the center of the circle, where the
Appeal 2011-003805
Application 11/117,899

11
endpoints of the line are on the circle. A rectangle does not have a cross-
section corresponding to a circle. Thus, the Examiner has not established
that “a mass of absorbent material compressed into a generally cylindrical
shape[ ]” in Brien expands into a “non-cylindrical shape” as recited in claim
10.
Likewise, the Examiner does not cite to anything in Bletzinger or
Gehling that teaches what is missing in Brien. Rather, the Examiner finds
that Bletzinger teaches the “pre-determined pattern” element of claim 10.
(Ans. 6 (quoting Bletzinger, col. 1, ll. 42-45).) According to the Examiner,
Bletzinger teaches a tampon that is “heat and compression/pressure bonded
in a predetermined pattern to have a smooth outer surface and to expand
when wetted by fluids.” (Ans. 6.) The Examiner relies on Gehling to teach
“bonding” of fibers via “pattern bonding methods” using heat and pressure,
where the “selection of either a localized bond pattern or a pattern along the
entire surface of the fibrous mass would comprise a pre-determined pattern.”
(Id. at 7.) None of these teachings, however, disclose or suggest the
expansion of a “generally cylindrical shaped” material into a “non-
cylindrical shape,” as recited in claim 10.
Conclusion of Law
We conclude that the Examiner does not establish that Brien, either
alone or in combination with Bletzinger and/or Gehling, discloses or
suggests “a mass of absorbent material compressed into a generally
cylindrical shape[ ],” where at least a portion of the material expands “into a
non-cylindrical shape,” as recited in independent claim 10, and therefore
also dependent claims 11 and 13.
Appeal 2011-003805
Application 11/117,899

12
Rejection (III)
Issue
Does the Examiner establish that Brien, either alone or in combination
with Bletzinger, Gehling and/or Agyapong, discloses or suggests the bonded
fibers of dependent claim 12 or “the non-cylindrical shape” of dependent
claim 14, with regard to the “absorbent material” recited in independent
claim 10?
Analysis
Regarding claims 14-16, the Examiner asserts that Brien:
discloses the non-cylindrical shape comprises a first zone 16 and an
adjacent second zone 15, with the first zone 16 having a first diameter
corresponding the generally cylindrical shape and the second zone 15
having a second diameter corresponding to the non-cylindrical shape
such that the second diameter is greater than the first diameter ….
(Ans. 9.) Thus, according to the Examiner, “first zone 16” in Brien, i.e., the
conical tip, has a “generally cylindrical shape,” while “second zone 15”
alone and/or “second zone 15” and “first zone 16” together correspond to the
non-cylindrical shape, as recited in claims 10 and 14.
Claim 10 recites, however, that “at least a portion” of the “mass of
absorbent material compressed into a generally cylindrical shape[ ]” expands
“into a non-cylindrical shape.” As noted above, the only component in
Brien corresponding to “a mass of absorbent material compressed into a
generally cylindrical shape[ ]” in claim 10 is the cylindrical portion of the
compressed tampon, i.e., “second zone 15” as designated by the Examiner,
not “first zone 16.” When “zone 15” expands, it does not expand, in whole
or in part, into something that has two zones with two different diameters.
Appeal 2011-003805
Application 11/117,899

13
Specifically, it does not expand into “zone 16” or a shape comprising both
“second zone 15” and “first zone 16.”
As discussed above, the Examiner has not pointed to anything in
Brien that demonstrates or suggests that the disclosed rectangle in Brien
(that forms upon expansion of the cylindrical portion, i.e., “second zone 15,”
of Brien’s tampon) has one zone with a diameter that is greater than the
diameter of another zone. Nor has the Examiner referred to anything in
Bletzinger or Gehling that teaches what is missing in Brien in this regard.
Examiner also relies on Agyapong as disclosing the performance of
“diameter measuring tests analogous to the claimed [Radial Expansion] Test,
thus disclosing the general conditions of measuring diameters and thus
providing motivation for such tests.” (Ans. 10.) Even assuming this to be
the case, the Examiner has not pointed to anything in Agyapong that teaches
or suggests what is missing in Brien and the other cited references, i.e., the
expansion of at least part of a “generally cylindrical shaped” compressed
material into “a non-cylindrical shape” as recited in claim 10 and defined in
the Specification and further designated in claim 14.
In relation to claim 12, the Examiner also relies on Agyapong for the
teaching of a first type of fiber that is thermally or radiation bonded to
adjacent fiber of a plurality of fibers. (Ans. 8.) For the same reasons
discussed above, this teaching does not disclose or suggest claim elements
lacking in Brien and the other cited references, as discussed above.
Conclusion of Law
We conclude that the Examiner does not establish that Brien, either
alone or in combination with Bletzinger, Gehling and/or Agyapong,
Appeal 2011-003805
Application 11/117,899

14
discloses or suggests “the non-cylindrical shape” of dependent claims 12 and
14, with regard to the “absorbent material” recited in independent claim 10.
Rejections (IV) and (V)
Issue
Does the Examiner establish that Brien, either alone or in combination
with Bletzinger, Gehling, Scott, and/or Leutwyler, discloses or suggests “a
mass of absorbent material compressed into a generally cylindrical shape[ ],”
where at least a portion of the material expands “into a non-cylindrical
shape,” as recited in claim 10, upon which claims 17 and 19-21, and claim
18 depend?
Analysis
For the same reasons discussed above, the Examiner has not shown
that Brien, either alone or in combination with Bletzinger and/or Gehling,
discloses or suggests “a mass of absorbent material compressed into a
generally cylindrical shape[ ],” where at least a portion of the material
expands “into a non-cylindrical shape,” as recited in independent claim 10.
The Examiner relies on Scott for teaching airlaying fibers, as recited
in claim 17 (Ans. 10), as well as bonding a string with a mass of absorbent
material, as recited in claims 19, 20, and 21 (id. at 11). The Examiner relies
on Leutwyler for teaching “autogenous bonds” and “smooth appearance,” as
recited in claim 18. (Id. at 12.) The Examiner does not indicate, however,
how Scott and/or Leutwyler disclose or suggest the elements missing from
Brien, Bletzinger, and Gehling, i.e., “a mass of absorbent material
Appeal 2011-003805
Application 11/117,899

15
compressed into a generally cylindrical shape[ ],” where at least a portion of
the material expands “into a non-cylindrical shape,” as recited in claim 10.
Conclusion of Law
We conclude that the Examiner does not establish that Brien, either
alone or in combination with Bletzinger, Gehling, Scott, and/or Leutwyler,
discloses or suggests “a mass of absorbent material compressed into a
generally cylindrical shape[ ],” where at least a portion of the material
expands “into a non-cylindrical shape,” as recited in claim 10, upon which
claims 17 and 19-21, and claim 18 depend.
SUMMARY
We reverse the indefiniteness rejection (I) of claims 15 and 16. We
also reverse obviousness rejections (II) – (V) of claims 10-11 and 13 over
Brien in view of Bletzinger and further in view of Gehling, claims 12 and
14-16 over Brien in view of Bletzinger and Gehling and further in view of
Agyapong, claims 17 and 19-21 over Brien in view of Bletzinger in view of
Gehling and further in view of Scott, and claim 18 over Brien in view of
Bletzinger in view of Gehling and further in view of Leutwyler.

REVERSED

cdc