Ex Parte Bertulis et al

Board of Patent Appeals and Interferences

Feb 27, 2009

11187173 (B.P.A.I. Feb. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte EUGENIA MAREN BERTULIS,
MICHAEL EDWARD CARRIER,
DIANE LEE NORRIS, and MICHAEL SEAN FARRELL
__________

Appeal 2009-1497
Application 11/187,173
Technology Center 3700
__________

Decided: February 27, 20091
__________

Before TONI R. SCHEINER, LORA M. GREEN, and
MELANIE L. McCOLLUM, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-1497
Application 11/187,173

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DECISION ON APPEAL
This is a decision on appeal2 under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-17. We have jurisdiction under 35
U.S.C. § 6(b).

STATEMENT OF THE CASE
The claims are directed to a tampon applicator. Claim 1 is
representative of the claims on appeal, and reads as follows:
1. A tampon applicator comprising:
A.) an outer member comprising an
i.) an insertion end
ii.) an inner member receiving end, wherein said inner member
receiving end comprises a multi-directional rim, wherein said multi-
directional rim extending continuously about the inner member receiving
end and comprising
a. an outer member first region and an outer member second
region,
b. wherein said outer member first region is directed in a first
insertion direction and said outer member second region is directed in a
second removal direction, wherein said first direction is substantially
opposite said second direction and
B.) an inner member comprising
i.) a first end and
ii.) a second end, wherein said second end comprises a multi-
directional rim,
a.) said multi-dimensional rim extending continuously about the
second end and comprising an inner member first region and an inner
member second region,

2 This Appeal is related to Appeal No. 2009-1495, USSN 11/187,096, and
Appeal No. 2009-1496, USSN 11/187,172, decided concurrently herewith.
Appeal 2009-1497
Application 11/187,173

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b.) wherein said inner member first region is directed in a first
insertion direction and said inner member second region is directed in a
second removal direction, wherein said first direction is substantially
opposite said second direction.

The Examiner relies on the following evidence:
Osborn III US 6,095,998 Aug. 1, 2000
Rejai US 6,511,452 B1 Jan. 28, 2003

We affirm.
ISSUE
The Examiner concludes that claims 1-17 are rendered obvious by the
combination of Rejai and Osborn III.
Appellants contend that Rejai does not disclose or suggest an inner
member of a tampon applicator, wherein the inner member comprises a
multi-directional rim, which extends continuously about the second region
and a second region.
Thus, the issue on Appeal is: Have Appellants demonstrated that the
Examiner erred in combining Rejai with Osborn III to arrive at the claimed
invention?

FINDINGS OF FACT
FF1 According to the Specification, the present invention “encompasses a
tampon applicator having an outer member and an inner member,” wherein
the “inner member has a first end and a second end.” (Spec. 2.)
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FF2 Figure 1A3 of the instant disclosure is reproduced below:

“Figure 1A is a perspective view of the tampon applicator of the present
invention.” (Spec.4 2.)
FF3 The figure shows a tampon applicator having an outer member 12 and
an inner member 14 (Spec. 2).
FF4 Both the inner member 14 and the outer member 12 may comprise a
multi-dimensional rim, 42, 28, respectively (id. at 4). “The multi-
dimensional rims 28, 42 may be patterned or arranged in any configuration
and in any number suitable for creating an enhanced gripping area for a

3 Replacement sheet dated October 11, 2005.
4 As amended April 24, 2007.
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Application 11/187,173

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user’s fingers and/or a greater surface area for a stop to assist during the
removal of the applicator 10.” (Id.)
FF5 Moreover, the Specification teaches that “a woman can securely and
comfortably grasp, control and position the tampon applicator . . . during
insertion of the applicator,” as “the multi-directional rim 28, 40 structure
provides gripping ability axially in both the insertion and removal directions
without the user having to change their grip on outer member 12, so the user
is able to easily maneuver, control and position the applicator.” (Spec.5 4-5.)
FF6 The Examiner rejects claims 1-17 under 35 U.S.C. § 103(a) as being
obvious over the combination of Rejai and Osborn III (Ans. 3). As
Appellants do not argue the claims separately, we will focus our analysis on
claim 1, and claims 2-17 stand or fall with that claim. 37 C.F.R.
§ 41.37(c)(1)(vii).
FF7 Figure 1 of Rejai is reproduced below:

FF8 Figure 1 shows a perspective view of a preferred embodiment of the
tampon applicator of Rejai (Rejai col. 2, ll. 52-53).

5 As amended April 24, 2007.
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FF9 Referring to Figure 1, the Examiner finds that the applicator 10 has an
outer member 12, which has an insertion end 30 and an inner member
receiving end 28, and an area 20 adjacent to the receiving end (Ans. 3).
FF10 According to the Examiner, claim 1 does not set forth the dimensions
of the rim with respect to the member, and the Specification does not define
the term rim (id.). The Examiner gives the term “its usual . . . dictionary,
definition” of “border edge or margin of an object.” (Id.)
FF11 The Examiner thus finds that the “area 20 is adjacent the edge
defining the end 28 and is multidirectional and extends continuously about
the inner receiving end,” and is thus “considered to be a ‘multidirectional
rim.’” (Id. at 3-4.)
FF12 The Examiner finds further that region 20 includes two regions
directed in substantially opposite directions, that is, alternating portions 22
(id. at 4).
FF13 “Rim” may be defined as “the outer edge, border, margin, or brink of
something, esp. of a circular object,” or “any edge, margin, or frame added
to or around a central object or area.”6
FF14 The Examiner also finds that the applicator of Rejai has an inner
member that has a first end adjacent 28 and a second end remote from 28.
(Ans. 4.)

6 rim. Dictionary.com. Dictionary.com Unabridged (v 1.1). Random House,
Inc. http://dictionary.reference.com/browse/rim (accessed: February 07,
2009).
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FF15 According to the Examiner, the second end has a multi-directional
continuously extending rim having a first region extending in a first
direction, that is a portion of the end edge circumference, and a second
region directed in a second direction substantially opposite the second
direction, that is a second portion of the end edge circumference opposite the
first portion (id.).
FF16 The Examiner notes that the first and second directions are not in the
insertion and removal directions (id.)
FF17 The Examiner relies on Osborn III for disclosing the
“interchangeability of unmodified distal end of the plunger with a distal end
including gripping features similar to those found on the associated barrel
and/or to provide better gripping of the plunger also.” (Id.)
FF18 The Examiner concludes:
Therefore, to make the unmodified plunger distal end of
[Rejai], i.e. no gripping structure like that on the barrel, of the
same configuration as that of the receiving end of the barrel
instead, i.e. including gripping structure, would be obvious to
one of ordinary skill in the art in view of the interchangability
as taught by [Osborn III] and/or the recognition that such
configuration would not only be the same as that of the barrel
but also similarly allow the user to better grip the plunger too
and the desire by [Rejai] to configure the barrel and plunger the
same and provide gripping of the applicator. In so doing the
inner member as taught by the prior art would also include a
first region directed in the insertion direction and a second
region directed in the removal direction.

(Id.)
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PRINCIPLES OF LAW
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
The Supreme Court has recently emphasized that “the [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l v. Teleflex Inc., 550 U.S. 398, ___, 127 S. Ct. 1727, 1741 (2007). “The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. at 1739.
Moreover, an “[e]xpress suggestion to substitute one equivalent for another
need not be present to render such substitution obvious.” In re Fout, 675
F.2d 297, 301 (CCPA 1982).

ANALYSIS
Appellants argue that Rejai “does not disclose or suggest an inner
member of a tampon applicator, wherein the inner member comprises a
multi-directional rim, which extends continuously about the second end and
comprise a first region and a second region,” but “only discloses that the
barrel 12 has a finger grip area.” (App. Br. 3.)
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Appellants’ arguments are not convincing. The Examiner notes that
the edge of the inner member has an edge circumference, which reads on the
rim extending continuously about the second end of the inner member,
wherein the rim has a first region extending in a first direction, that is a first
portion of the end edge circumference, and a second region directed in a
second direction substantially opposite the second direction, that is a second
portion of the end edge circumference opposite the first portion (FF15). As
can be seen in Fig. 1A of the instant Specification (FF2), the first region and
second region are connected to each other, that is, the rim extends
continuously around the end of the inner member, thus supporting the
Examiner’s interpretation. The Examiner then relies on Osborn III to add
the region 20 on the outer member of Rejai to the inner member 14 of Rejai,
and Appellants have not argued or provided evidence that the ordinary
artisan would not have combined the references as suggested by the
Examiner.

CONCLUSIONS OF LAW
We conclude that Appellants have not demonstrated that the Examiner
erred in combining Rejai with Osborn III to arrive at the claimed invention.
We thus affirm the rejection of claims 1-16 under 35 U.S.C. § 103(a)
as being rendered obvious by the combination of Rejai with Osborn III.

Appeal 2009-1497
Application 11/187,173

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TIME LIMITS
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

ssc

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