Ex Parte Jadin et al

Patent Trial and Appeal Board

Jul 17, 2013

11894927 (P.T.A.B. Jul. 17, 2013)

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.
11/894,927 08/22/2007 Barry John Jadin 64361730US01 8904
23556 7590 07/17/2013
KIMBERLY-CLARK WORLDWIDE, INC.
Tammi Langin
2300 Winchester Rd.
NEENAH, WI 54956
EXAMINER
GEHMAN, BRYON P
ART UNIT PAPER NUMBER
3728
MAIL DATE DELIVERY MODE
07/17/2013 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
____________

Ex parte BARY JOHN JADIN, DAVID FRANCIS CHAUVETTE,
STEPHEN CHRISTOPHER COLE, SCOTT LESLIE WILLIAMS,
ROBERT ERNEST BRYSON, and DOUGLAS D. SWEERE
____________

Appeal 2011-000693
Application 11/894,927
Technology Center 3700
____________

Before NEAL E. ABRAMS, MITCHELL G. WEATHERLY,
and CARL M. DEFRANCO, Administrative Patent Judges

ABRAMS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Barry John Jadin et al. (Appellants) seek our review under 35 U.S.C.
§ 134 from the Examiner’s decision rejecting claims 1-20. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).

We AFFIRM.

Appeal 2011-000693
Application 11/894,927

2

THE INVENTION
The claimed invention is directed to packages which contain a
plurality of absorbent articles having at least one premium located within the
package.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A plurality of packages wherein each package
comprises a plurality of absorbent articles and at
least one premium located within an interior
space; each package further comprises at least one
opening means adapted to transition the package
from a closed condition to an open condition and
create an opening to access the interior space;
wherein, in each package, the at least one
premium is not directly attached to the absorbent
articles or the package and the at least one
premium is consistently positioned and is
immediately accessible through the opening when
the package is first transitioned from the closed
condition to the open condition.

THE PRIOR ART
The Examiner relied upon the following as evidence of
unpatentability:
Kossnar US 3,533,546 Oct. 13, 1970
Tripodi US 3,695,422 Oct. 3, 1972
Nakagoshi US 5,020,669 Jun. 4, 1991
Schmidt
Ronnberg
US 6,446,796 B1
US 2007/0175789 A1
Sep. 10, 2002
Aug. 2, 2007

Appeal 2011-000693
Application 11/894,927

3

THE REJECTIONS
Claim 9 stands rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicants regard as the invention.
Claims 1, 2, 4-6, 8-11, 13 and 15-20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Schmidt in view of Tripodi.
Claims 3 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schmidt in view of Tripodi, and further in view of
Nakagoshi.
Claims 7 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schmidt in view of Tripodi, and further in view of
Kossnar.
Claims 1, 2, 4-6, 8, 10, 11, 13 and 15-20 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Ronnberg in view of Tripodi.
Claim 3 and 12 stand rejected under 35 U.S.C. § 103(a) being
unpatentable over Ronnberg in view of Tripodi, and further in view of
Nakagoshi.
Claims 7 and 14 stand rejected under 35 U.S.C. § 103(a) being
unpatentable over Ronnberg in view of Tripodi, and further in view of
Kossnar.

Appeal 2011-000693
Application 11/894,927

4

OPINION
Claim 20
The Examiner has stated that claims 1-20 are on appeal. Ans. 2.
However, claim 20 is not included in the statement of the rejections (Ans. 5),
although it is treated in the explanation of the rejections, grouped with
claims 10 and 15 (Ans. 5-6). Likewise, Appellants listed claim 20 as being
on appeal (Br. 2), and omitted claim 20 from their statement of the rejections
(Br. 3-4).
In identical language, claim 20 adds the same limitation to
independent claim 17 that claims 10 and 15 add, respectively, to independent
claims 1 and 11. Such being the case, we consider the omission of claim 20
from the statements of rejection to be inadvertent error, and shall group
claim 20 with claims 10 and 15 in considering the rejections.

Claim 9 – Indefiniteness
The Examiner points out that “the premium” on line 2 of the claim
should read “the at least one premium,” in order to “be consistent.” Ans. 4.
Appellants “acknowledge the Examiner’s position” with regard to this
matter, and have agreed to amend claim 9 “pending the outcome of the
present Appeal.” Br. 9. However, such amendment having not been made,
the rejection is sustained.

Appeal 2011-000693
Application 11/894,927

5
Claims 1, 2, 4-6, 8-11, 13 and 15-19 – Obviousness
Schmidt in view of Tripodi
The Examiner finds all of the subject matter recited in these claims to
be disclosed in Schmidt, except that in Schmidt the “enclosure” (hereinafter
“premium,” as recited in Appellants’ claims) is “directly attached to the
absorbent articles or package,” rather than not being attached to either, as is
required by the claims. Ans. 5. However, it is the Examiner’s position that
“Tripodi discloses it is not necessary to secure a premium to the package or
contents to consistently position the premium (see column 3, lines 35-59),”
and therefore “[t]o employ the same tight packaging to maintain the
premium in position in . . . Schmidt . . . as taught by Tripodi, eliminating a
securing step between the contents or package and the premium” would have
been obvious. Ans. 5.
Appellants take the position that Tripodi discloses a package of
cigarettes enclosed by a cellophane wrapper, and that Tripodi “distinguishes
between the ‘package’ and the ‘wrapper’” and places the premium between
the package and the wrapper, that is, outside of the package. Br. 5. Thus,
Appellants argue, Tripodi teaches away from Schmidt, and to modify the
Schmidt package in the manner proposed by the Examiner would make it
“unsatisfactory for its intended purpose.” Br. 6. Finally, Appellants assert
that “there is no suggestion or motivation to make the proposed
modification,” and that the Examiner has “utilized impermissible hindsight
in an attempt to arrive at Appellants’ invention.” Br. 6.
Schmidt teaches placing “an enclosure, such as a leaflet or coupon, in
a bag “secured to one end of the bag and/or near an opening in the bag.”
Col. 1, ll. 53-56. The reasons for this are so the enclosure is immediately
Appeal 2011-000693
Application 11/894,927

6
visible and available to the consumer upon opening the bag (Col. 1, ll. 56-
58), so it does not sink to the bottom of the bag where it is not apparent to
the user and difficult to reach (Col. 1, ll. 23-28), and so that “when the bag is
empty, particularly prior to being filled, the enclosure naturally lies flat
within the bag, permitting manageable stacking and storage of the bags on
wickets, or the processing of online formed bags” (Col. 1, ll. 58-62). These
three goals are accomplished by gusseting one end of the bag and securing
the enclosure to the gusseted end “such that when the bag is opened to be
filled, the gusseted end unfolds and consequently realigns the enclosure to a
position perpendicular to its position when the bag is flat.” Col. 1, ll. 64-67.
To this end, “a small amount of adhesive can be applied to either the
enclosure or to the gusset of the bag, and the enclosure can be adhered inside
the bag.” Col. 2, ll. 3-5. This process is shown in Figs. 2-4, the resulting
package in Fig. 1, and is explained in columns 3 and 4.
Tripodi discloses a cigarette “package unit” 12 (Col. 2, l. 38) having a
“wrapper” 34 (Col. 2, l. 64), between which a premium 40 is “snugly
embraced” (Col. 4, l. 1).
Both Schmidt and Tripodi have as an objective ensuring that the
premium is immediately visible and accessible to the user when the package
is opened. Tripodi accomplishes this by capturing the premium between two
layers of the package, without attaching it to either. However, the Schmidt
invention has the additional goal of fixing the premium in position during
the process of manufacturing the bag and setting the bag up prior to being
filled, which Schmidt teaches is accomplished by bonding the premium to
the package at an appropriate location at the outset of the manufacturing
Appeal 2011-000693
Application 11/894,927

7
process and maintaining it in that position during these steps. If Schmidt
were to be modified by eliminating the attached premium in favor of an
unattached one, as proposed by the Examiner, the result would be to restore
one of the problems which the Schmidt invention overcomes.
Therefore, even assuming, arguendo, the Examiner’s position
regarding what constitutes Tripodi’s “package” to be correct, we agree with
Appellants that one of ordinary skill in the art would not have found it
obvious in view of the teachings of Tripodi to modify the Schmidt package
in the manner proposed by the Examiner, because to do so would cause the
Schmidt invention to be unsatisfactory for its intended purpose.
All three of Appellants’ independent claims require that the premium
not be attached to either the articles in the package or the package itself.
This being the case, this rejection of independent claims 1, 11 and 17 is not
sustained nor, it follows, is the like rejection of dependent claims 2, 4-6, 8-
11, 13 and 15-20.
Claims 3 and 12 – Obviousness
Schmidt in view of Tripodi and Nakagoshi
The teachings of Nakagoshi fail to alleviate the shortcoming pointed
out with regard to the combination of Schmidt and Tripodi as applied against
claims 1 and 11, and therefore this rejection is not sustained.
Claims 7 and 14 – Obviousness
Schmidt in view of Tripodi and Kossnar
The teachings of Kossnar also fail to alleviate the shortcoming pointed
out with regard to the combination of Schmidt and Tripodi as applied against
claims 1 and 11, and therefore this rejection is not sustained.
Appeal 2011-000693
Application 11/894,927

8

Claims 1, 2, 4-6, 8, 10, 11, 13 and 15-19 – Obviousness
Ronnberg in view of Tripodi
Ronnberg is directed to an arrangement for removing a single article
in a package from a stack of articles. As was the case with Schmidt, the
Examiner finds all of the structure recited in these claims to be disclosed in
Ronnberg, except for providing a premium inside the package which is not
attached to the articles or to the package, but nevertheless allows the
premium to be consistently positioned and immediately accessible when the
package is opened. The Examiner has concluded that it would have been
obvious in view of the teachings of Tripodi to utilize “tight packaging to
maintain the premium in position” in the Ronnberg arrangement. Ans. 5.
Appellants’ arguments are the same as those offered in rebuttal to the
positions taken by the Examiner in the rejection based upon Schmidt and
Tripodi. Br. 5-7.
Ronnberg discloses a package comprising a plurality of absorbent
articles (Fig. 1) located within an interior of a package (442 in Fig. 4 and
817 in Fig. 8), which package comprises opening means (412 in Fig. 4 and
512 in Fig. 5) adapted to transition the package from a closed position to an
open position and create an opening to access the interior space. One of the
objectives of Ronnberg is to provide a gripping device intended to at least
partially remove at least one article from a pack of articles. Para. [0020].
The gripping device comprises a strip of material having a first surface in
contact with the article “which the gripping device is intended to influence,
so that the influence occurs through friction between the first surface of the
strip of material and the absorbent article.” Para. [0024] (emphasis added).
Appeal 2011-000693
Application 11/894,927

9
The second surface of the gripping device exhibits lower friction than the
first. Para. [0025].1 As shown in Figs. 3 a-d, the gripping devices 320 are
positioned between the side surfaces of the absorbent articles in the pack
module 317, and can include a “gripping loop which [extends] beyond one
of the boundary surfaces of the pack module.” Para. [0087]. Fig. 4 shows a
looped gripping device 420 in its folded position in an unopened package
442, and Fig. 5 shows a gripping device 520 in its extended position in
opened package 542. An embodiment in which gripping device 820 is
disposed in a serpentine manner through a plurality of absorbent articles is
shown in Figs. 8a and 8b. Ronnberg teaches that “the gripping device is
suitable as a carrier of information between the manufacturer and the
customer . . . . or it can serve as discount coupons or the like.” Para. [0135]
(emphasis added).
Thus, looking to the language of independent claims 1, 11 and 17,
Ronnberg discloses “at least one premium located within an interior space”
(gripping device 420, 520, 820), which is “not directly attached to the
absorbent articles or the package” and “is consistently positioned and is
immediately accessible through the opening when the package is first
transitioned from the closed condition to the open position” (see Figs. 4 and
5). Independent claim 11 recites an additional requirement that the premium
“is positioned adjacent a major face panel,” which feature is clearly
disclosed by Ronnberg in the embodiments shown in Figs. 8a and 8b. A
further requirement appearing in claim 17 is that the premium be “positioned

1 While in the embodiment shown in Figures 6a-6d the gripping device 620
is adhesively attached to the articles (Para. [0127]), such is not disclosed
with regard to any of the other embodiments.
Appeal 2011-000693
Application 11/894,927

10
within the stack between the first absorbent article and the second absorbent
article, which is illustrated in Ronnberg’s Fig. 5.
Ronnberg therefore teaches all of the subject matter recited in
independent claims 1, 11 and 17. It is our position that the Tripodi
“package” comprises both the chamber in which the articles are stacked and
the wrapper encasing it, and we view Tripodi as confirming that it was
known in the art to secure a premium in place in a package in the manner
recited in these claims.
This rejection of independent claims 1, 11 and 17 is sustained.
Appellants have chosen not to separately argue the patentability of
dependent claims 2, 4-6, 8, 10, 13, 15, 16 and 18-20 (see Br. 5-8), and
therefore this rejection of these claims also is sustained.
Claims 3 and 12 – Obviousness
Ronnberg in view of Tripodi and Nakagoshi
Claim 3 adds to claim 1 the requirement that the premium “overlies at
least a portion of at least two sides of the stack.” Ronnberg teaches that the
article gripping devices can include printed material and thus also function
as premiums. Para. [0135]. Ronnberg also states that gripping device 820
“projects beyond the pack module 817 after the pack 842 has been opened”
(Para. [0132]), which suggests that prior to the pack being opened the free
end of gripping device 820 is folded over the top of the pack, as shown in
Figs. 4 and 5, and therefore overlies at least a portion of at least two sides of
the stack. This being the case, the feature recited in claim 3 is disclosed in
Ronnberg, and we view Nakagoshi’s advertising plate 11 as confirmation
Appeal 2011-000693
Application 11/894,927

11
that it was known in the art to provide printed matter on an element that
overlies at least two sides of an article in a package.
Claim 12 adds to claim 11 the limitation that the premium be rigid,
which the Examiner has found also to be taught by Nakagoshi (Ans. 6),
taking the position that Nakagoshi’s advertising plate 11 constitutes a rigid
“premium” because it has “an indicia-carrying strip located within package
structure” (Ans. 11). Appellants argue that Nakagoshi’s advertising plate 11
is not located within an interior space of the package and is directly attached
to shrink film element 8, and that Nakagoshi teaches away from Ronnberg
and therefore cannot properly be combined therewith. Br. 8. Appellants
have not explained why advertising plate 11 does not constitute a
“premium,” nor have they challenged the Examiner’s finding that element
11 is rigid.
As was the case with Tripodi, it is our position that the Nakagoshi
“package” comprises both the structure holding the articles and the wrapper
encasing it, and we note that Appellants have not provided evidence
supporting their position that the advertising plate is attached to the shrink
film. Nakagoshi thus constitutes evidence that it was known to utilize a
rigid premium within the confines of a package in order to provide
information to the user, without attaching it to the package or the articles
contained therein. Therefore, although we have carefully considered
Appellants’ arguments, they have not persuaded us that this rejection of
claim 12 is in error.
This rejection of claims 3 and 12 is affirmed.

Appeal 2011-000693
Application 11/894,927

12
Claims 7 and 14 – Obviousness
Ronnberg in view of Tripodi and Kossnar
Appellants have chosen not to separately argue the patentability of the
subject matter recited in these claims (see Br. 9), and therefore this rejection
is sustained.
DECISION

The rejection of claim 9 as being indefinite is affirmed.
The rejection of claims 1, 2, 4-6, 8-11, 13 and 15-20 as being
unpatentable over Schmidt in view of Tripodi is reversed.
The rejection of claims 3 and 12 as being unpatentable over Schmidt
in view of Tripodi, and further in view of Nakagoshi, is reversed.
The rejection of claims 7 and 14 as being unpatentable over Schmidt
in view of Tripodi, and further in view of Kossnar, is reversed.
The rejection of claims 1, 2, 4-6, 8, 10, 11, 13 and 15-20 as being
unpatentable over Ronnberg in view of Tripodi is affirmed.
The rejection of claims 3 and 12 as being unpatentable over Ronnberg
in view of Tripodi, and further in view of Nakagoshi, is affirmed.
The rejection of claims 7 and 14 being unpatentable over Ronnberg in
view of Tripodi, and further in view of Kossnar, is affirmed.
A rejection of each of the claims having been affirmed, the decision of
the Examiner is affirmed.

Appeal 2011-000693
Application 11/894,927

13
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
rvb