Ex Parte Osborn et al

Board of Patent Appeals and Interferences

May 10, 2012

11298132 (B.P.A.I. May. 10, 2012)

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.
11/298,132 12/08/2005 Thomas Ward Osborn III 9660R 6769
27752 7590 05/11/2012
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
KIDWELL, MICHELE M
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
05/11/2012 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 THOMAS WARD OSBORN III
and DIANA LYNNE GANN
__________

Appeal 2011-001672
Application 11/298,132
Technology Center 3700
__________

Before LORA M. GREEN, JEFFREY N. FREDMAN, and
ERICA A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
pessary applicator. The Patent Examiner rejected the claims as anticipated,
or in the alternative, as obvious. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

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Application 11/298,132

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STATEMENT OF THE CASE
Claims 1-28 are on appeal. Claim 1 is representative and reads as
follows:
1. A pessary applicator for positioning a pessary inside a vaginal cavity,
said applicator comprising:

i. an outer member disposed co-axially with an inner member for
insertion of said pessary into said vaginal cavity;

ii. said inner member being slidable within said outer member;

wherein at least 15% of a length of said pessary remains in said outer
member when said inner member is fully engaged with said outer
member to define a remaining portion of said pessary, said remaining
portion of said pessary requiring a force of less than about 0.30 N to
be removed from said pessary applicator.

The Examiner rejected claims 1-28 under 35 U.S.C. §102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over Mackay.
1

Appellants have not argued claims 2-28 separately, therefore these
claims stand or fall with claim 1. 37 C.F.R. 41.37(c)(1)(vii).
The Issue
The Examiner found that Mackay disclosed a pessary applicator 10
for positioning a pessary 40, with said applicator comprising an outer
member 23 and an inner member 25. (Ans. 3-4.) The Examiner found that
“[w]hen the inner member 25 is fully engaged with the outer member 23 (i.e.
the inner member is entirely contained within the outer member, as shown in

1
Patent No. US 6,358,223 B1 issued to Lisa Ann Mackay et al., Mar. 19,
2002.
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Application 11/298,132

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figure 1) at least 35% of the length of the tampon remains in the applicator.”
(Id. at 4.) The Examiner found that this configuration would allow for the
claimed removal force, as shown in the chart set forth on page 12 of
Applicants‟ Specification. (Id.)
Likewise, the Examiner found that “Mackay discloses a tampon
applicator wherein at least 10% of the tampon length remains in the outer
member when the inner member is fully engaged with the outer member
….” (Id.) Therefore, according to the Examiner, “one can reasonably
assume that based on the identical structure, the same amount of force would
be required for removal.” (Id. at 5.)
Alternatively, the Examiner concluded that a skilled artisan would
have found it obvious “to modify the removal force in order to determine the
most effective product since it has been held that where the general
conditions of a claim are disclosed in the prior art, discovering the optimum
or workable range is within the level [of] ordinary skill in the art.” (Id.)
Appellants contend that the Examiner has not set forth any evidence
that Mackay teaches or suggests “a pessary applicator wherein at least 15%
of a length of the pessary remains in the outer member when the inner
member is fully engaged with the outer member to define a remaining
portion of the pessary… requiring a force of less than about 0.30 N to be
removed from the applicator.” (App. Br. 3.) According to Appellants,
Mackay instead taught that its applicator has guides with guidance plates
“designed to substantially not move and/or move only within certain
minimal parameters, [such that] an expelling tampon, once it meets the
guides 28, will optimally be caused to expel directionally from the tampon
holder tube 22 by the angular surfacing of the guidance plates 29.” (Id. at 3-
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4.) Appellants also assert that Mackay taught that “the guides 28 are created
to provide a resistance to applied force to the tampon 40 as it is pushed
through the tampon holder tube 22” and that the guidance ridges are
preferably “stiff enough to substantially resist moving as the un-joined
and/or semi-joined portions of a tampon 40 expel therethrough.” (Id. at 4.)
Further, Appellants assert that contrary to the Examiner‟s finding,
Mackay‟s figure 1 “does not depict the „fully engaged‟ limitation of the
claims,” but instead shows that “the guides 28 operate to remain
substantially close to their pre-expelled position during the expulsion of part
of the tampon 40 from the tampon holder tube 22.” (Id. at 5.) Thus,
Appellants assert that the Examiner “has not provided evidence that Mackay
meets the claimed amount of force.” (Id.)
Appellants additionally assert that they have submitted the declaration
of Dr. Osborn “[a]s evidence of what Mackay teaches to one ordinarily
skilled in the art ….” (Id.)
The issue is whether the preponderance of evidence on this record
supports the Examiner‟s finding that Mackay teaches the claimed pessary
applicator.
Findings of Fact
1. The Examiner‟s findings may be found at Ans. 3-5.
2. The Examiner relies on Figure 1 of Mackay, reproduced below:
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Figure 1 depicts a perspective drawing of Mackay‟s tampon applicator 20
and tampon 40 being expelled therethrough. (Mackay col. 5, ll. 10-11.)
3. Appellants do not dispute the Examiner‟s finding that Mackay‟s
applicator 20 comprised an outer member 23 and an inner member 24. (See
App. Br. 3-7; Ans. 3.)
4. The Specification defines the term “fully engaged” as occurring
either “when the second end of the inner member is flush with the second
end of the outer member or after 1250 grams of force has been applied to the
end of the inner member.” (Spec. 6, ll. 18-20) (emphasis added.)
Principles of Law
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987).
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While features of a product or apparatus may be recited either
structurally or functionally, claims directed to the product or apparatus must
be distinguished from the prior art in terms of structure rather than function.
In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997) (The absence of a
disclosure in a prior art reference relating to function did not defeat the
Board‟s finding of anticipation of a claimed apparatus because the structure
limitations at issue were found to be inherent in the prior art reference.).
Where, as here, the claimed and prior art products are
identical or substantially identical, or are produced by identical
or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed
product.… Whether the rejection is based on „inherency‟ under
35 U.S.C. § 102, on „prima facie obviousness‟ under 35 U.S.C.
§ 103, jointly or alternatively, the burden of proof is the same,
and its fairness is evidenced by the PTO‟s inability to
manufacture products or to obtain and compare prior art
products.

In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
Analysis
After considering all the evidence and arguments, we conclude that
the record supports the Examiner‟s finding that Mackay anticipates the
claimed pessary applicator. In particular, we find that the recitation in claim
1 requiring “at least 15% of a length of said pessary remains in said outer
member when said inner member is fully engaged with said outer member”
is a functional recitation that does not distinguish the prior art in terms of
structure. The Specification defines the term “fully engaged” as occurring
either “when the second end of the inner member is flush with the second
end of the outer member or after 1250 grams of force has been applied to the
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end of the inner member.” (FF-4; Ans. 6) (emphasis added). Thus,
Mackay‟s applicator satisfies the functional recitation of the claim when a
user applies 1250 grams of force to the end of the inner member and at least
15% of the length of the tampon remains in the outer member. See
Schreiber, 128 F.3d at 1477-78.
We agree with the Examiner that a skilled artisan would reasonably
expect Mackay‟s applicator to be capable of such function, because like the
claimed invention, Mackay was directed to a conventional tampon applicator
comprising an outer member and inner member as recited in claims. (FF-3;
Ans. 4-5.) The Examiner has presented sufficient evidence to shift the
burden to Appellants to demonstrate that Mackay‟s applicator would not
have satisfied the functional limitations. See Best, 562 F.2d at 1255
(“Whether the rejection is based on „inherency‟ under 35 U.S.C. § 102, on
„prima facie obviousness‟ under 35 U.S.C. § 103, jointly or alternatively, the
burden of proof is the same, and its fairness is evidenced by the PTO‟s
inability to manufacture products or to obtain and compare prior art
products”). Appellants have not presented evidence to establish otherwise.
Appellants merely assert that Mackay‟s applicator comprised guides having
guidance plates designed to cause an expelling tampon to be expelled
directionally from the tampon holder tube or that the guides provide a
resistance to applied force to the tampon as it is pushed through the tampon
holder tube. (See App. Br. 3-5.)
Appellants also assert that Mackay‟s figure 1 “does not depict the
„fully engaged‟ limitation of the claims.” (App. Br. 5.) In support of this
contention, Appellants refer to the declaration of Dr. Osborn. (Id.)
However, Appellants have not submitted the declaration of Dr. Osborn as
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evidence in this appeal. (See App. Br. 13, Evidence Appendix citing
“None.”) Moreover, we addressed Dr. Osborn‟s declaration in the Board‟s
decision of the related appeal and concluded that it did not carry persuasive
weight. See, Appeal 2010-007403 at 8-9.
Accordingly, we conclude that the preponderance of the evidence of
record supports the Examiner‟s finding that Mackay taught the claimed
invention. See Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d at
631. Further, because “„anticipation is the epitome of obviousness,‟” In re
McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002) (citation omitted) we
affirm the Examiner‟s alternative rejection of the claims under 35 U.S.C. §
103(a) as being rendered obvious by Mackay.

CONCLUSIONS OF LAW
The preponderance of evidence on this record supports the
Examiner‟s finding that Mackay anticipates the claimed tampon applicator
and therefore the preponderance of evidence on this record also supports a
conclusion of obviousness.

SUMMARY
We affirm the rejection of claims 1-28 under 35 U.S.C. §102(b) as
anticipated by or, in the alternative, under 35 U.S.C.
§103(a) as obvious over Mackay.

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Application 11/298,132

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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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