Ex Parte 6923789 et al

Board of Patent Appeals and Interferences

Aug 14, 2012

95001415 (B.P.A.I. Aug. 14, 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.
95/001,415 08/05/2010 6923789 ATB-docket 1393
7590 02/15/2013
Charles N.J. Ruggiero, Esq.
OHLANDT, GREELEY, RUGGIERO & PERLE, L.L.P.
10th Floor
One Landmark Square
Stamford, CT 06901-2682
EXAMINER
FLANAGAN, BEVERLY MEINDL
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
02/15/2013 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
____________

The Procter and Gamble Company
Requester

v.

Playtex Products, Inc.
1

Patent Owner and Appellant
____________

Appeal 2012-005563
Reexamination Control 95/001,415
Patent 6,923,789 B2
Technology Center 3900
____________

Before RICHARD E. SCHAFER, RICHARD M. LEBOVITZ, and
RAE LYNN P. GUEST, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

1
Playtex Products, Inc. is identified as the real party-in-interest in the Patent
Owner’s Appeal Brief, filed August 12, 2011 (hereinafter “App. Br.”), at 2.
Appeal 2012-005563
Reexamination Control 95/001,415
Patent 6,923,789 B2

2
On September 14, 2012, Patent Owner and Real Party in Interest, Playtex
Products, Inc., (hereinafter “Patent Owner”) of U.S. Patent 6,923,789 B2
(hereinafter, “the ’789 patent”) requested rehearing under 37 C.F.R. § 41.79 of our
decision of August 15, 2012 affirming the Examiner’s rejections of claims 1-52
under 35 U.S.C. § 103(a) as unpatentable over Voss
2
in view of Schoelling
3

(Request 1). Respondent and Third Party Requester, the Procter and Gamble
Company, did not participate in the appeal and has filed no comments under 37
C.F.R. § 41.79(c) in response to Patent Owner’s Request for Rehearing.
Concurrently with the Request for Rehearing, Patent Owner improperly
submitted additional evidence, namely the Declaration of Pankash Nigam. The
Request for Rehearing is not a time to rely upon new arguments and evidence that
could have been raised earlier. 37 C.F.R. § 41.79(b)(1) (2009) (“Arguments not
raised in the briefs before the Board and evidence not previously relied upon in the
briefs are not permitted in the request for rehearing except as permitted by
paragraphs (b)(2) and (b)(3) of this section.”). Accordingly, Nigam’s Declaration
is not timely submitted and was not considered.
The Decision stated that “the overall principle of operation of the tampon
applicator of Voss would not be affected by an ejection means compatible with a
reduced cross-sectional area finger grip, since the plungers of Voss and Schoelling
operate on the same principle, namely to push the tampon pledget out of the front
end of a tube” (Decision 10). Patent Owner contends that the Decision overlooked

2
J.A. Voss et al., US 3,433,225, issued March 18, 1969 (hereinafter “Voss”).

3
Hans-Werner Schoelling, US 5,453,085, issued September 26, 1995 (hereinafter
“Schoelling”).

Appeal 2012-005563
Reexamination Control 95/001,415
Patent 6,923,789 B2

3
an expressly stated objective of Voss, namely “to minimize the force required to
eject the tampon pledget from the applicator” and, accordingly, incorrectly
determined the intended purpose of Voss (Request 3-4).
We maintain that Patent Owner has defined the intended purpose of Voss
more narrowly than the evidence warrants (Decision 9). Patent Owner has
confused the inventor’s objective of a disclosed device with its principal of
operation and intended purpose. The modified device of Voss still would operate
according to the same principles as the unmodified device, i.e., as a applicator for
an ejectable pledget. See In re Mouttet, 686 F.3d 1322, 1322 (Fed. Cir. 2012)
(holding that the principal of operation was not the type of circuitry used in the
device, and that, even with different circuitry, the device could be used as a
programmable arithmetic processor). Specifically, the device would nonetheless
operate to eject the pledget through the end of the applicator and into a body cavity
pursuant to the operational principles common to tampon applicators, as evinced
by both Voss and Schoelling. This principle of operation would not be changed in
any way by replacing a preferred ejection means 30 of Voss with an ejection
means compatible with a finger grip having a reduced cross-sectional area at the
rearward end, such as that taught by Schoelling.
Moreover, as Patent Owner points out (Request 3), the objective of Voss “to
minimize the force required to eject the tampon pledget from the applicator,” upon
which Patent Owner relies, has to do with the manufacture and structure of the
closed front end of Voss and not the ejection means. Voss discloses that “most
hygienic devices [with closed front ends] require a large amount of force to open
and are clumsy to handle and use” (Voss, col. 1, ll. 59-67.) Thus, Voss remedies
this problem in that “[s]ince segments [of Voss’s closed front end] separate very
Appeal 2012-005563
Reexamination Control 95/001,415
Patent 6,923,789 B2

4
readily in a radial direction during expulsion of the hygienic medium from the
front end, they offer minimal resistance to the passage of the medium therefrom”
(Voss, col. 2, ll. 39-42). Patent Owner does not argue that the proposed
modification to the finger grip and ejection means would affect the readily
separated segments of the closed front end.
Even if the Patent Owner is correct that the ejection means must provide for
ejection of the device with minimal force of 8 to 12 ounces, Patent Owner provided
no meaningful evidence on appeal that an ejection means compatible with a
reduced cross sectional area finger grip, such as a structure similar to that of
Schoelling, would not be capable of ejecting a pledget with a force of 8 to 12
ounces. Moreover, such a position would be contrary to the express teaching of
Voss that “[t]he ejection means 30 may comprise any suitable means, such as a
stick or the like” and that the structure of ejection means of Figure 1 is only
“preferred” (Voss, col. 4, ll. 59-62).
Patent Owner’s arguments regarding “radial movement” were submitted
without any evidentiary support in Patent Owner’s Appeal Brief and, thus, were
not considered persuasive, as attorney argument cannot take the place of evidence
in the record (Decision 10). In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Similarly, Patent Owner’s new arguments regarding any alleged reconstruction
required are neither timely presented nor supported by any meaningful or timely
evidence (Request 5).
Patent Owner has not shown the reasoning provided in the Decision to be
untenable or that a change in the Decision is warranted.
Appeal 2012-005563
Reexamination Control 95/001,415
Patent 6,923,789 B2

5
Based on the foregoing, we have granted Patent Owner’s request to the
extent that we have reconsidered our decision, but we deny Patent Owner’s request
to alter our decision to affirm the Examiner’s rejection.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. §1.136(a)(1)(iv).

DENIED

PATENT OWNER:
CHARLES N.J. RUGGIERO, ESQ.
OHLANDT, GREELEY, RUGGIERO & PERLE, L.L.P.
10
TH
FLOOR
ONE LANDMARK SQUARE
STAMFORD, CT 06901-2682

THIRD-PARTY REQUESTER:

AMANDA T. BARRY
THE PROCTER & GAMBLE COMPANY
299 E. 6
TH
ST., SYCAMORE BUILDING – 4
TH
FLOOR
CINCINNATI, OH 45202