Ex Parte Zunker et al

Patent Trial and Appeal Board

Sep 28, 2016

12651355 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/651,355 12/31/2009
23556 7590 09/28/2016
KIMBERLY-CLARK WORLDWIDE, INC,
Patent Docketing
2300 Winchester Rd.
NEENAH, WI 54956
FIRST NAMED INVENTOR
Mary Ann Zunker
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
64516888US01 8972
EXAMINER
MATTHEWS, CHRISTINE HOPKINS
ART UNIT PAPER NUMBER
3735
MAILDATE DELIVERY MODE
09/28/2016 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 PATENT TRIAL AND APPEAL BOARD
Exparte MARYANN ZUNKER, GARRY ROLAND WOLTMAN,
FUNG-JOU CHEN, PAULIN PAW AR, SARAH ANNE LEMKE,
PATRICA ANN SAMOLINKSI, and SARAH ANNE OLSON
Appeal2015-000287
Application 12/651,355
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
PER CURIAM
DECISION ON APPEAL 1
This Appeal under 35 U.S.C. § 134(a) involves claims 1-22 (Br. 1).
Examiner entered rejections under 35 U.S.C. § 112, second paragraph, 35
U.S.C. §102(b), and 35 U.S.C. §103(a). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the Real Party in Interest as Kimberly-Clark
Worldwide, Inc. (Br. 1 ).
Appeal2015-000287
Application 12/651,355
STATEMENT OF THE CASE
Appellants' invention relates to "a disposable urinary incontinence
device [that] comprises a liquid-stable resilient member and a cover sheet
that envelops the liquid-stable resilient member to form an elongated
member having a tubular profile" (Spec. 2:20-22). Independent claim 1 is
representative and reproduced in the Claims Appendix of Appellants' Brief.
Claims 1-22 stand rejected under 35 U.S.C. § 112, second paragraph
as being indefinite.
Claims 1-9 and 11-21 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by, or in the alternative, under 35 U.S.C. § 103(a), as
obvious2 over Zunker.3
Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Zunker and Ellingson. 4
Claim 22 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Zunker and VanDenBogart. 5
2 We note that the Examiner does not appear to assert in the rejection that
claims 1-9 and 11-21 are obvious over Zunker alone (see Ans. 2-5).
3 Zunker, US 2002/0156343 Al, published Oct. 24, 2002.
4 Ellingson, US 2011/0152813 Al, published June 23, 2011.
5 VanDenBogart et al., US 2010/0016780 Al, published Jan. 21, 2010.
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Application 12/651,355
Definiteness:
ISSUE
Does the preponderance of evidence on this record support
Examiner's conclusion that the claims are indefinite?
FACTUAL FINDINGS (FF)
FF 1. Appellants' Specification teaches that "the cover sheet has a static
coefficient of 0.275 to 0.150, and a dynamic coefficient of friction of 0.230
to 0.150, as measured in accordance with ASTM 1894-01" (Spec. 2:25-27;
see also Ans. 9).
FF 2. Appellants' Specification teaches that "[t]his test measures the percent
contact area at a depth of 10% as measured from the outer surface (i.e., the
skin-facing surface) of a cover sheet material utilizing FR T profilometer
scans which provided 3-dimentional maps of the planar cross section for
each material" (Spec. 12:31-13:2; see also Ans. 9), and that "[b]ased on the
height for each sample, a planar cross-section of the 3-D profile that is a
distance of 10% as measured from the top is selected" (Spec. 12: 14--16; see
also Ans. 9).
FF 3. Appellants' Specification teaches
Coefficient of Friction Test
This test provides the static and dynamic coefficient of
friction for a cover sheet of the present invention as tested against
alternative surfaces, namely surrogate skin. To perform the
procedure, a TMI Model 32-06 C-0-F machine is utilized
(available from Testing Machines Inc., having a place of
business located in Ronkonkoma, New York, U.S.A). All
samples are tested in the machine direction (MD).
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Each test sample should be tested ten times (n=lO) and the
average value is reported.
(Spec. 13:27-15:14; see also Ans. 9-10.)
FF 4. Appellants' Specification teaches
Multi-Cycle Stress/Strain Test
This test is used to determine the elongation and retraction
properties of the cover sheet of the present invention.
When the test is finished and the crosshead has returned,
remove the specimen from the grips. Record the TEA extension
and TEA retraction, various load values and extension values,
percent hysteresis loss, and immediate set percent for cycle one
and two. Measurements are reported as Loading Energy,
Unloading Energy and Hysteresis Loss for each cycle.
(Spec. 15:16-16:10; see also Ans. 10.)
FF 5. Appellants' Specification teaches that "[i]n some aspects, the cover
sheet can have stretch properties of Loading Energy, Unloading Energy and
Hysteresis Loss, as measured by measured by the Multi-Cycle Stress/Strain
Test. The cover sheet can have the following values: •cycle 1 MD Loading
Energy from 6500 g-cm 7500 g-cm ... "(Spec. 26:7-10; see also Ans. 10).
ANALYSIS
Appellants' independent claim 1 requires, inter alia, that "the cover
sheet exhibits a skin-facing surface contact area of less than 30% at a depth
of 10% as measured by the Surface Contact Area Test," and "the cover sheet
has a static coefficient of 0.27 5 to 0.150, and a dynamic coefficient of
friction of0.230 to 0.150, as measured in accordance with ASTM 1894-01"
(see Appellants' claim 1 ). Dependent claim 3 requires "the cover sheet
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Appeal2015-000287
Application 12/651,355
exhibits a cycle 1 MD Loading Energy of 6500 gm-cm- 7500 gm-cm, as
measured by the Multi-Cycle Stress/Strain Test" (see Appellants' claim 3).
Examiner concludes that claims 1-22 are indefinite because
Claim 1 at line 6 recites "a depth of 10%". It is unclear what
defines such a "depth" or what the depth is relative to. Claim 1
at line 9 recites "ASTM 1894-01". It is unclear what is defined
by this recitation. Claim 3 at line 2 recites "cycle 1 MD loading
energy". It is unclear what defines this recitation.
(Ans. 2.)
In regard to claim 1, Appellants contend that
one of ordinary skill would understand the phrase "a depth of
10%" upon reading the language of Claim l and upon reading the
Surface Contact Area Test which is dearly identified in Claim 1
and described within the Specification of the current Application
beginning at page 12, line 30 and ending on page 13, line 25.
(Br. 2.) Appellants further contend that "one of ordinary skill would readily
understand that 'ASTM 1894-01 ', which is disclosed in the specification on
page 35, lines 3-28, is an ASTM standard test method number 1894-01 and
which is entitled 'Standard Test Method for Static and Kinetic Coefficients
of Friction of Plastic Film and Sheeting"' (id. at 3).
We are not persuaded and agree with Examiner that the claims are
indefinite. As Examiner explains,
the specification appears to give two different definitions of ["]a
depth of 10%["]. Page 12, line 31 of the specification describes
the test is taken "at a depth of 10% as measured from the outer
surface of a cover sheet material". Page 13, line 15 describes this
as "a distance of 10% as measured from the top". Given these
varying definitions, "a depth of 10%" remains indefinite.
Moreover, with respect to "at a depth of .. [.]",for example, it is
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Appeal2015-000287
Application 12/651,355
unclear if this is a depth of the cover sheet itself or the skin-facing
surface contact area.
(Ans. 9; FF 2.) Examiner further explains that
the test number for "Standard Test Method for Static and Kinetic
Coefficients of Friction of Plastic Film and Sheeting" was found
to be D1894-01; and not 1894-01 as disclosed by [Appellant].
Moreover, while the specification mentions static and kinetic
coefficients at paragraphs [0064]-[0067] of the publication, it
makes no mention of ASTM 1894-01 or "Standard Test Method
for Static and Kinetic Coefficients of Friction of Plastic Film and
Sheeting" as applied to these coefficients. Moreover, the
extensive list of steps for AS TM D 1894-01 are not read into the
claims, as claim 1 requires a static coefficient and dynamic
coefficient of friction as measured by ASTM 1894-01, thus only
a structure which exhibits such a coefficient in the recited range
is required by the claim.
(Ans. 9-10; FF 1, 3.) "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 Labs .. Inc. v. Shandon. Inc., 997 F.2d 870, 875 (Fed.
Cir. 1993); Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2124
(2014) (" [A] patent is invalid for indefiniteness if its claims, read in light of
the specification delineating the patent, and the prosecution history, fail to
inform, with reasonable certainty, those skilled in the art about the scope of
the invention.").
In regard to claim 3, Appellants contend that
one of ordinary skill would understand the phrase "cycle 1 MD
Loading Energy" upon reading the language of Claim 3 and upon
reading the Multi-Cycle Stress/Strain Test which is clearly
identified in Claim 3 and described within the Specification of
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Appeal2015-000287
Application 12/651,355
the Current Application beginning at page 15, line 16 and ending
at page 16, line 10 and again at page 26, lines 7-21.
(Br. 3--4.)
We do not find this argument persuasive. As Examiner explains,
[p ]age 15 of the instant specification does not mention the cycle
1 MD loading energy, and page 26 merely states that the cover
sheet can have specific values in the respective cycles. The
recitation of a specific value in the specification does not clearly
define what constitutes a "cycle 1 MD loading energy".
(Ans. 10; FF 4--5.) We are not persuaded that the specification informs the
skilled artisan, with reasonable certainty, of the scope of the claims.
Therefore, we conclude that the claims are indefinite because one skilled in
the art would not understand the bounds of the claims when read in light of
the specification for the reasons discussed above.
CONCLUSION OF LAW
The preponderance of evidence on this record supports Examiner's
conclusion that the claims are indefinite. The rejection of claims 1 and 3
under 35 U.S.C. § 112, second paragraph as being indefinite is affirmed.
Claims 2 and 4--22 are not separately argued and fall with claim 1.
Anticipation:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
Examiner's finding that Zunker teaches Appellants' claimed invention?
FACTUAL FINDINGS (FF)
FF 6. Zunker's Figure 12 is reproduced below:
/
78
50 80 82
s~=:£i~~70
FlG. l2
Appeal2015-000287
Application 12/651,355
Figure 12 shows that "the urinary incontinence device 50 is ... retained or
housed in an applicator 78" (Zunker i-f 68; see also Ans. 2-3).
ANALYSIS
Examiner finds that Zucker teaches
a disposable urinary incontinence device comprising a liquid-
stable resilient member 50 and a cover 66' that envelops the
resilient member to form an elongated member with a tubular
profile (Fig. 12 and [0072], wherein the elongated member has
first and second ends and the cover sheet exhibits a skin-facing
surface contact area of less than 30% (as the cover sheet is
covered by the applicator).
(Ans. 2-3 (emphasis added).) As Examiner explains; Zucker's "cover sheet
can exhibit a skin-facing surface contact area ofless than 30% at any depth as
it is covered by an applicator (id. at 10).
The problem with Examiner's analysis is that device of Appellants'
claim 1 does not comprise an applicator. Appellants' claim 21, indirectly
depends from and further limits claim 1 to, inter alia, "further comprise an
applicator" (see Appellants' claim 21 ).
There is presumed to be a difference in meaning and scope when
different words or phrases are used in separate claims. To the
extent that the absence of such difference in meaning and scope
would make a claim superfluous, the doctrine of claim
differentiation states the presumption that the difference between
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Appeal2015-000287
Application 12/651,355
claims is significant." "Where some claims are broad and others
narrow, the narrow claim limitations cannot be read into the
broad whether to avoid invalidity or to escape infringement.
United States v. Telectronics Inc., 857 F.2d 778, 783 (Fed. Cir. 1988)
(citations omitted).
For the foregoing reasons, Examiner failed to establish an evidentiary
basis on this record to support a finding that Zucker teaches a device that
comprises a cover sheet that exhibits a skin-facing surface contact area of
less than 30% at a depth of 10%, as measured by the Surface Contact Area
Test or, as Examiner contends, at any depth (see Appellant's claim 1; cf
Ans. 10).
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner fails to
support Examiner's finding that Zunker teaches Appellants' claimed
invention. The rejection of claims 1-9 and 11-21 under 35 U.S.C.
§ 102(b) over Zunker is reversed.
Obviousness:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
ANALYSIS
Zunker alone or in combination with Ellingson or VanDenBogart:
For the reasons set forth above, Examiner failed to establish that
Zunker makes obvious a disposable urinary incontinence device within the
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Application 12/651,355
scope of Appellants' claimed invention (see Ans. 2-5). Further, Examiner's
reliance on Ellingson to suggest a disposable device that comprises a surge
material comprising a "permeability of about 8000 to 15000 darcy or a
permeability of 95 percent or a surface area per void of 10 to 25 square cm
or a compression resilient in both wet and dry states of at least about 60%"
(id. 6; see generally id. 6-7) or VanDenBogart's disclosure of a tampon
applicator comprising "a gripping portion having an insertion end, a trailing
end and a finger contour and that the hollow plunger has a head and rear
flange" (id. 7-8) makes up for the foregoing deficiency in Zunker.
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness.
The rejection of claims 1-9 and 11-21under35 U.S.C. § 103(a) as
unpatentable over Zunker is reversed.
The rejection of claim 10 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Zunker and Ellingson is reversed.
The rejection of claim 22 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Zunker and VanDenBogart is reversed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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