Ex Parte ScallieDownload PDFBoard of Patent Appeals and InterferencesFeb 27, 200910011023 (B.P.A.I. Feb. 27, 2009) Copy Citation 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 2009-1495 Application 11/187,096 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 2009-1495 Application 11/187,096 DECISION ON APPEAL This is a decision on appeal2 under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 3-16. We have jurisdiction under 35 U.S.C. § 6(b). STATEMENT OF THE CASE The claims are directed to an outer member for a tampon. Claim 3 is representative of the claims on appeal, and reads as follows: 3. An outer member comprising: a.) an insertion end and b.) an inner member receiving end, wherein said inner member receiving end comprises a multi-directional rim, i. said multi-directional rim extending continuously about the inner member receiving end and comprising a first region and a second region, ii. wherein said first region is directed in a first insertion direction and said 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: Rejai US 6,511,452 B1 Jan. 28, 2003 Kao GB 2 166 656 A May 14, 1986 We affirm. 2 This Appeal is related to Appeal No. 2009-1496, USSN 11/187,172, and Appeal No. 2009-1497, USSN 11/187,173, decided concurrently herewith. 2 Appeal 2009-1495 Application 11/187,096 ISSUE (Rejai) The Examiner finds that claims 3-16 are anticipated by Rejai. Appellants contend that Rejai does not disclose a continuous multi- dimensional rim, but discloses individual and distinct gripping structures disposed about the barrel. Thus, the issue on Appeal is: Have Appellants demonstrated that the Examiner erred in finding that Rejai discloses a continuous multi- dimensional rim? 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 “outer member has an insertion end and an inner member receiving end.” (Spec. 2.) The “inner member receiving end has a multi-directional rim.” (Id.) FF2 Figure 3B3 of the instant disclosure is reproduced below: 3 Replacement sheet dated October 11, 2005. 3 Appeal 2009-1495 Application 11/187,096 “Figure 3B is a perspective view of the outer member of the tampon applicator.” (Spec.4 2.) FF3 The Specification teaches that the regions 36, 38, of the multidirectional rim 42 may be any size (Spec.5 7). The size of regions 36, 38 can increase by texture and/or material, and has a width, W, of between .2 mms to about 63 mms (id.). FF4 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. . . structure provides gripping ability axially in both the insertion and removal directions 4 As amended April 24, 2007. 5 As amended April 24, 2007. 4 Appeal 2009-1495 Application 11/187,096 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.” (Id. at 4-5.) FF5 The Examiner rejects claims 3-16 under 35 U.S.C. § 102(b) as being anticipated by Rejai (Ans. 3). As Appellants do not argue the claims separately, we will focus our analysis on claim 3, and claims 4-16 stand or fall with that claim. 37 C.F.R. § 41.37(c)(1)(vii). FF6 Figure 1 of Rejai is reproduced below: FF7 Figure 1 shows a perspective view of a preferred embodiment of the tampon applicator of Rejai (Rejai col. 2, ll. 52-53). FF8 Referring to Figure 1, the Examiner finds that the outer member 12 has an insertion end 30 and an inner member receiving end 28 (Ans. 3). FF9 According to the Examiner, claim 3 does not set forth the dimensions of the rim with respect to the outer 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.) FF10 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.) 5 Appeal 2009-1495 Application 11/187,096 FF11 The Examiner finds further that region 20 includes two regions directed in substantially opposite directions, that is, alternating portions 22 (id. at 4). FF12 “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 PRINCIPLES OF LAW To anticipate, every element and limitation of the claimed invention must be found in a single prior art reference, arranged as in the claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). ANALYSIS Appellants argue that claim 3 requires “an inner member receiving end having a multi-directional rim extending continuously about the inner member receiving end.” (App. Br. 3.) Appellants assert that Rejai does not disclose a continuous multi-directional rim, but “discloses individual and distinct gripping structures disposed about the barrel.” (Id.) Appellants argue further that the “gripping structures of Rejai [ ] rely on a raised edge or shoulder to provide grip,” whereas the “multi-directional rim of the present 6 rim. Dictionary.com. Dictionary.com Unabridged (v 1.1). Random House, Inc. http://dictionary.reference.com/browse/rim (accessed: February 07, 2009). 6 Appeal 2009-1495 Application 11/187,096 invention includes a first region disposed in a first insertion direction in one or more columns and a second region disposed in a removal direction in one or more columns, such that the second direction is substantially opposite the first direction.” (Id.) Appellants’ arguments are not convincing. Claim 3 requires, in relevant part, an “inner member receiving end, wherein said inner member receiving end comprises a multi-directional rim, i. said multi-directional rim extending continuously about the inner member receiving end and comprising a first region and a second region, and ii. wherein said first region is directed in a first insertion direction and said second region is directed in a second removal direction, wherein said first direction is substantially opposite said second direction.” As noted by the Examiner (Ans. 6), there is nothing in claim 3 that requires that the first and second regions extend continuously around the inner member receiving end, only that the multi-directional rim extends continuously about the inner member receiving end. The region 20 of Rejai’s Figure 1, which the Examiner defines as the rim, does extend continuously around the inner member receiving end. We also agree with the Examiner that the claim does not require any specific dimensions of the end. As can be seen from the dictionary definition of rim, a rim may be a “border.” (FF12) Moreover, the Specification notes that the rim may have a width of 63mms (FF3), which supports the interpretation of the rim as a border. While the gripping structures of Rejai may rely on a raised edge or shoulder to provide grip, there is nothing in the claim that prevents the use of 7 Appeal 2009-1495 Application 11/187,096 a raised edge. Moreover, according to the Specification, the size of the first and second regions can increase by texture and/or material (FF3). All that is required by the claim is that they are directed in substantially opposite directions, and as can be seen in Figure 1 of Rejai (FF6), the first and second regions of the inner member receiving end meet that limitation. CONCLUSIONS OF LAW We find that Appellants have not demonstrated that the Examiner erred in finding that Rejai discloses a continuous multi-dimensional rim. We thus affirm the rejection of claims 3-16 under 35 U.S.C. § 102(b) as being anticipated by Rejai. ISSUE (Kao) The Examiner finds that claims 3-9 and 14-16 are anticipated by Kao. Appellants contend that Kao does not disclose an outer member that comprises a first region directed in a first insertion direction and a second region directed in a second removal direction. Thus, the issue on Appeal is: Have Appellants demonstrated that the Examiner erred in finding that Kao discloses an outer member that comprises a first region directed in a first insertion direction and a second region directed in a second removal direction? 8 Appeal 2009-1495 Application 11/187,096 FINDINGS OF FACT FF13 The Examiner rejects claims 3-9 and 14-16 as being anticipated by Kao. As Appellants have not argued the claims separately, we focus our analysis on claim 3, and claims 4-9 and 14-16 stand or fall with that claim. FF14 Figure 8 of Kao is reproduced below: Figure 8 shows an embodiment of the invention of Kao, showing a longitudinal cross-sectional view of the absorber storing cylinder (Kao 1 ll. 69-71). FF15 The Examiner finds that the cylinder of Kao has an inner member receiving end 3, and an area 2 adjacent to that end (Ans. 5). FF16 The Examiner interprets “rim” as set forth above (id.). (See FF8, FF11). FF17 The Examiner finds further that the “area/multidirectional rim 2 includes a first region directed in a first direction, e.g. the curve or recess region to the right in Figure 8 directed to the point adjacent 1 or in the insertion direction, and a second region directed in a direction substantially opposite the first direction, e.g. the curve or recess region to the left in Figure 8 directed to a point adjacent 3 or in the removal direction.” (Ans. 5.) 9 Appeal 2009-1495 Application 11/187,096 ANALYSIS Appellants argue that the “outer member of the present invention comprises an inner member receiving end having a multi-directional rim extending continuously about the inner member receiving end with a first region and a second region, wherein the first region is directed in a first insertion direction and the second region is directed in a second removal direction, wherein the first direction is substantially opposite said second direction.” (App. Br. 4.) Kao, Appellants assert, only teaches that its disclosed tampon has a grip portion; Kao does not disclose an outer member that comprises a first region directed in a first insertion direction and a second region directed in a second removal direction (id.) Again, Appellants’ arguments are not convincing. As found by the Examiner, Figure 8 of Kao has a rim that has curves extending in opposite directions (FF17), and Appellants have not demonstrated how that finding of fact is in error. CONCLUSIONS OF LAW We find that Appellants have not demonstrated that the Examiner erred in finding that Kao discloses an outer member that comprises a first region directed in a first insertion direction and a second region directed in a second removal direction. We thus also affirm the rejection of claims 3-9 and 14-16 as being anticipated by Kao. 10 Appeal 2009-1495 Application 11/187,096 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 THE PROCTOR & GAMBLE COMPANY GLOBAL LEGAL DEPARTMENT – IP SYCAMORE BUILDING – 4TH FLOOR 299 EAST SIXTH STREET CINCINNATI, OH 45202 11 Copy with citationCopy as parenthetical citation