Ex Parte Clough et al

Board of Patent Appeals and Interferences

Jun 1, 2009

11212951 (B.P.A.I. Jun. 1, 2009)

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.
11/212,951 08/26/2005 Jane L. Clough 21449 9979
23556 7590 06/01/2009
KIMBERLY-CLARK WORLDWIDE, INC.
Catherine E. Wolf
401 NORTH LAKE STREET
NEENAH, WI 54956
EXAMINER
BUI, LUAN KIM
ART UNIT PAPER NUMBER
3728
MAIL DATE DELIVERY MODE
06/01/2009 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 JANE L. CLOUGH,
KELLIE M. GOODRICH, and DEAN M. WYDEVEN
__________

Appeal 2009-1539
Application 11/212,951
Technology Center 3700
__________

Decided1: June 1, 2009
__________

Before ERIC GRIMES, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a parcel
of disposable absorbent products. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

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).

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Statement of the Case
Background
“Typically, a bundle of diapers are individually bi-folded, compressed
and packed into a flexible plastic bag or the like. When traveling, users take
a few folded diapers out of the bag and may place them in a purse or bag for
later use” (Spec. 1, ll. 10-12). The Specification notes that “after being
removed from their original package, bi-fold diapers often unfold or possibly
expand to consume an even larger storage space” (Spec. 1, ll. 12-14).
The Claims
Claims 1-7, 9-14, and 16-20 are on appeal. Claims 8 and 15 are also
pending but have not been rejected (Office action mailed May 14, 2007,
page 6). We will focus on claims 1, 5, 13, 16, 17, and 18, which are
representative and read as follows:
1. A parcel of disposable absorbent personal-care
products selected from the group consisting of diapers, adult
incontinence products, training pants and feminine care
products designed to be worn on the lower torso, the parcel
comprising:
a first product comprising a pair of first surfaces, a
first body-facing surface and a first garment-facing surface;
and a first fold-line;
a second product comprising a pair of second
surfaces, a second body-facing surface and a second
garment-facing surface; and a second fold-line;
a stack comprising the first product and the second
product wherein one of the pair of first surfaces is in
contacting relationship with one of the pair of second
surfaces; and
an encasement adapted to have an open condition and
a closed condition; wherein the stack is disposed within the
encasement;
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whereby when the encasement is in a closed
condition, the first product is substantially folded at the first
fold line and the second product, is substantially folded at
the second fold line, and when the encasement is in an open
condition, the first and second products are at least partially
unfolded.

5. The parcel of claim 3 wherein the first shell member
comprises an inner surface and an outer surface, and an
accessory holder disposed on the outer surface.

13. An encasement for selectively dispensing absorbent
products for wear about the lower torso, the encasement
comprising:
a first shell member;
a second shell member mateable with the first shell
member to define an inner recess adapted to enclose a stack
of absorbent articles selected from the group consisting of
diapers, adult incontinence products, training pants and
feminine care products;
a stack holder adapted to dispense the absorbent
articles; and
a connector that attaches the first shell member to the
second shell member so that the encasement may be
selectively opened and closed.

16. The encasement of claim 13 wherein one of the first
shell member or the second shell member has an accessory
holder disposed on an exterior surface thereof.

17. A parcel comprising:
a plurality of disposable diapers, wherein the plurality
of disposable diapers comprise a stack of unfolded diapers;
an encasement adapted to have an open condition and
a closed condition;
wherein the stack is disposed within the encasement
so that when the encasement is in a closed condition, the
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stack is substantially folded, and when the encasement is in
an open condition, the stack is at least partially unfolded.

18. The parcel of claim 17 wherein the encasement
further comprises an accessory holder for containing
accessories.

The prior art
The Examiner relies on the following prior art references to show
unpatentability:
Medoff US 1,953,887 Apr. 3, 1934
Shikata US 4,661,102 Apr. 28, 1987
Kuske US 6,318,555 B1 Nov. 20, 2001
Tippey US 6,926,149 B2 Aug. 9, 2005
Ukitsu US 2003/0164321 A1 Sep. 4, 2003
Clare US 2005/0121348 A1 Jun. 9, 2005

The issues
A. The Examiner rejected claims 1-3, 6, 7, 10, 11, 13, and 14 under 35
U.S.C. § 102(b) as being anticipated by Medoff (Ans. 3-4).
B. The Examiner rejected claims 1-4, 6, 7, 10, 11, 13, and 14 under 35
U.S.C. § 103(a) as being obvious over Medoff, Tippey, and Clare (Ans. 5-6).
C. The Examiner rejected claims 5, 9, 12, and 16 under 35 U.S.C.
§ 103(a) as being obvious over Medoff, Tippey, Clare, and Ukitsu (Ans. 6).
D. The Examiner rejected claims 17, 19, and 20 under 35 U.S.C.
§ 103(a) as being obvious over Medoff, Shikata, and Kuske (Ans. 6-7).
E. The Examiner rejected claim 18 under 35 U.S.C. § 103(a) as being
obvious over Medoff, Shikata, Kuske, and Ukitsu (Ans. 6-7).
A. 35 U.S.C. § 102(b) over Medoff
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The Examiner rejected claims 1-3, 6, 7, 10, 11, 13, and 14 under 35
U.S.C. § 102(b) as being anticipated by Medoff (Ans. 3-4).
The Examiner finds that “Medoff discloses a parcel of disposable
absorbent personal care products such as cleansing tissues to be carried in
ladies’ handbags (page 1, lines 5-6 and 44) which is considered equivalent to
feminine care products as claimed” (Ans. 3). The Examiner finds that “since
the tissues are a highly absorbent feminine care product, the tissues can be
worn on the lower torso as desired” (Ans. 4).
Appellants contend that the “the Examiner makes a statement that
tissue type products can be inherently worn on the lower torso, but provides
no explanation how a sheet-like material such as a tissue is designed to be
worn on the lower torso of the body of an user. Therefore, the Examiner has
committed a reversible error by equating the tissue-type products of Medoff
with the Appellants[’] claimed absorbent personal care articles” (App. Br.
5).
In view of these conflicting positions, we frame the anticipation issue
before us as follows:
Have Appellants demonstrated that the Examiner erred in finding that
Medoff teaches a feminine care product “designed to be worn on the lower
torso”?
Findings of Fact (FF)
1. Claim 1 states that the parcel of disposable personal-care
products includes “feminine care products designed to be worn on the lower
torso” (Claim 1).
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2. The Specification states that the “absorbent article of the
present invention will be described in terms of a diaper adapted to be worn
by infants about the lower torso. It is understood that the absorbent article of
the present invention is equally applicable to other articles such as adult
incontinence products, training pants, feminine care products, and the like”
(Spec. 4, ll. 19-22).
3. Medoff teaches that the “article of the present invention is made
and sold preferably in connection with a package of 250 or more elongated,
oblated-S, cleansing tissues” (Medoff, col. 1, ll. 35-38).
4. Medoff teaches an encasement and stacked tissues as shown in
Figures 2 and 3, reproduced below:
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“Fig. 2 is a vertical, central cross-section of the compact . . . in closed
condition, and Fig. 3 is a perspective of another form in open, empty
condition” (Medoff, col. 1, ll. 31-34).
5. The Examiner finds that Medoff teaches a first tissue 10 with a
pair of first surfaces and a first fold line as well as a second tissue 10 with a
pair of second surfaces and a second fold line in a stack where the first tissue
and second tissue are in contact (Ans. 3-4, see Medoff, Fig. 2).
6. The Examiner finds that Medoff teaches that “when the
encasement is in a closed condition the first product is substantially folded at
the first fold line and the second product is substantially folded at the second
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fold line and when the encasement is in an open condition the first and
second products are at least partially unfolded” (Ans. 4).
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). Analysis of whether a claim is patentable over the
prior art under 35 U.S.C. § 102 begins with a determination of the scope of
the claim. We determine the scope of the claims in patent applications not
solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Am. Acad. Of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly interpreted claim
must then be compared with the prior art.
Analysis
Whether Medoff anticipates claim 1 depends upon whether the tissues
in the Medoff container are “feminine care products designed to be worn on
the lower torso” (Claim 1; FF 1). The Specification does not recognize
tissues as a type of feminine care product (FF 2).
The Examiner finds that the “products of Medoff such as cleansing
tissues are inherently capable to be worn on the lower torso since the
cleansing tissues of Medoff are made of cellulose which is the major
constituent of paper and textiles” (Ans. 4).
We disagree with the Examiner’s understanding of “feminine care
products” in this instance. The broadest reasonable interpretation of
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“feminine care products designed to be worn on the lower torso” must
require more than simply a tissue, or the “worn on the lower torso” language
is superfluous. We do not think the ordinary artisan would construe tissues
as “feminine care products” which are “worn” on the lower torso.
Conclusion of Law
Appellants have demonstrated that the Examiner erred in finding that
Medoff teaches a feminine care product “designed to be worn on the lower
torso”.
We reverse the rejection of claims 1-3, 6, 7, 10, 11, 13, and 14 under
35 U.S.C. § 102(b) as being anticipated by Medoff.
B. 35 U.S.C. § 103(a) over Medoff, Tippey, and Clare
The Examiner rejected claims 1-4, 6, 7, 10, 11, 13, and 14 under 35
U.S.C. § 103(a) as being obvious over Medoff, Tippey, and Clare (Ans. 5-6).
The Examiner finds that “Medoff discloses the parcel/encasement of
disposable absorbent personal care products such as cleansing tissues as
above having all the limitations of the claims” (Ans. 5). The Examiner finds
that “Tippey shows a package for disposable absorbent personal care
products selected from the group consisting of diapers, adult incontinence
garments, training pants, feminine napkins, adult incontinent pads, wet
wipes, facial tissue ... (column 1, lines 15-17)” (Ans. 5). The Examiner
finds that “Clare ‘348 teaches a package for holding a stack of folded
absorbent articles (12) selected from the group consisting of non-disposable
apparel, tissue products, infant diapers, feminine care products, incontinence
products, disposal apparel and the like” (Ans. 5).
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Appellants contend that “neither Tippey nor Clare teach placing
absorbent articles in a package such that the absorbent articles are in face-to-
face relationship, where the absorbent articles are folded when the package
is closed and in an partially unfolded condition when the package is open”
(App. Br. 5). Appellants also contend that “the Examiner does not address
why one skilled in the art would have found it obvious to place absorbent
personal care articles such as diapers, adult incontinence products, training
pants and feminine care products in a case such as that taught by Medoff”
(Ans. 6).
In view of these conflicting positions, we frame the obviousness issue
before us as follows:
Have Appellants demonstrated that the Examiner erred in finding that
it would have been obvious to package the absorbent products disclosed by
Tippey and Clare into the container of Medoff?
Findings of Fact
7. Medoff teaches that “[a]t the end of each section 1, a flap,
tongue or holder, 4, 4’ is hinged to overlie the elongated stack of cleansing
tissues . . . Means are provided of making the members 4 hold the pile
compactly down and in place when the compact is open” (Medoff, col. 2, ll.
72-79).
8. Tippey teaches that “many manufacturers are using compress
packaging to reduce the size and volume of their packages” (Tippey, col. 1,
ll. 7-8).
9. Tippey teaches that “[c]ompress packaging works especially
well for absorbent articles such as diapers, training pants, adult incontinence
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garments, feminine napkins, adult incontinent pads, wet wipes, facial tissue,
as well as other products that normally contain air” (Tippey, col. 1, ll. 14-
17).
10. Tippey teaches a container as shown in figure 4, reproduced
below:

“Fig. 4 is a perspective view of the package . . . after the opening mechanism
has been activated and the array of compressed articles have expanded
causing the expansion member to stretch outward” (Tippey, col. 2, ll. 4-7).
11. Clare teaches “a stack 10 of folded absorbent articles 12 for a
bundled package . . . Other flexible articles which are suitable for bundled
packages and which could be bundled into a package . . . include, but are not
limited to, non-disposable apparel, tissue products, infant diapers, feminine
care products, incontinence products, disposable apparel, and the like”
(Clare 2 ¶ 0032).
Principles of Law
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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 Co. v. Teleflex Inc., 550 U.S. 398, 418 (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 416. “If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability.” Id. at 417.
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). As noted by the Court in KSR, “[a] person
of ordinary skill is also a person of ordinary creativity, not an automaton.”
550 U.S. at 421.
Analysis
Claim 1
Medoff teaches a parcel of disposable tissues with first and second
products with two surfaces and fold lines which are in a stack in an
encasement or compact which can either be open or closed (FF 3-6). The
Examiner finds that Medoff teaches that “when the encasement is in a closed
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condition the first product is substantially folded at the first fold line and the
second product is substantially folded at the second fold line and when the
encasement is in an open condition the first and second products are at least
partially unfolded” (Ans. 4; FF 6).
Tippey teaches that packaging suitable for feminine napkins and adult
incontinent pads may also be used for wet wipes and facial tissue (see
Tippey, col. 1, ll. 14-17; FF 10). Clare teaches that “[o]ther flexible articles
which are suitable for bundled packages and which could be bundled into a
package . . . include, but are not limited to, non-disposable apparel, tissue
products, infant diapers, feminine care products, incontinence products,
disposable apparel, and the like” (Clare 2 ¶ 0032; FF 11).
Applying the KSR standard of obviousness to the findings of fact, we
find that the person of ordinary creativity would have predictably packaged
equivalent articles such as the tissues, infant diapers, and feminine care
products disclosed by Clare and Tippey in the tissue packaging encasement
disclosed by Medoff since the container of Medoff provides “more
convenience for the user to carry [the articles]” (see Ans. 6). Such a
combination is merely a “predictable use of prior art elements according to
their established functions.” KSR, 550 U.S. at 417.
We are not persuaded by Appellants’ argument that the “combined
teaching of Medoff with Tippey and/or Clare would not suggest placing the
absorbent personal care article in the container of Medoff in an[] unfolded
state” (App. Br. 6). With regard to motivation, in KSR, the Supreme Court
rejected the rigid application of the teaching, suggestion, and motivation test
by the Federal Circuit, stating that:
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The principles underlying [earlier] cases are instructive
when the question is whether a patent claiming the
combination of elements of prior art is obvious. When a
work is available in one field of endeavor, design incentives
and other market forces can prompt variations of it, either in
the same field or a different one. If a person of ordinary
skill can implement a predictable variation, § 103 likely bars
its patentability.

KSR Int'l v. Teleflex Inc., 550 U.S. 398, 417 (2007). We find that the
ordinary artisan would have been predictably able to modify the Medoff
compact to hold infant diapers or sanitary napkins, as well as tissues, as
discussed by Tippey and Clare (FF 3-11).
Claim 13
We are not persuaded by Appellants’ argument that “none of the
references teach how the stack holder is adapted to dispense th[e] personal
absorbent personal care articles from the encasement or stack” (App. Br. 6).
Medoff teaches a device to hold the tissues in place noting that “[a]t the end
of each section 1, a flap, tongue or holder, 4, 4’ is hinged to overlie the
elongated stack of cleansing tissues . . . . Means are provided of making the
members 4 hold the pile compactly down and in place when the compact is
open” (Medoff, col. 2, ll. 72-79; FF 7). The ordinary practitioner would
expect that the flaps or holders of Medoff would function equally well in
dispensing infant diapers or sanitary napkins, as well as tissues. Appellants
have presented no evidence that these holders would not so function.
Conclusion of Law
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Appellants have not demonstrated that the Examiner erred in finding
that it would have been obvious to package the absorbent products disclosed
by Tippey and Clare into the container of Medoff.
We affirm the rejection of claims 1-4, 6, 7, 10, 11, 13, and 14 under
35 U.S.C. § 103(a) as being obvious over Medoff, Tippey, and Clare.
C. 35 U.S.C. § 103(a) over Medoff, Tippey, Clare, and Ukitsu
The Examiner rejected claims 5, 9, 12, and 16 under 35 U.S.C.
§ 103(a) as being obvious over Medoff, Tippey, Clare, and Ukitsu (Ans. 6).
The Examiner finds that “Ukitsu ‘321 shows a parcel comprising an
encasement having at least one accessory holder (6) disposed on an outer
surface of the encasement” (Ans. 6). The Examiner finds that “it would
have been obvious to one having ordinary skill in the art in view of Ukitsu
‘321 to modify the parcel/encasement of Medoff as modified so it includes
an accessory holder disposed on the outer surface of the first shell member”
(Ans. 6).
Appellants contend that “[w]hile Ukitsu et al. teaches an accessory
holder in a diaper bag, it is noted that the compact of Medoff does not have
an accessory holder and one is not suggested. Further, even if one skilled in
the art were to modify Medoff with an accessory holder, as suggested by the
Examiner, one skilled in the art would not arrive at the claimed invention”
(App. Br. 7).
In view of these conflicting positions, we frame the obviousness issue
before us as follows:
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Have Appellants demonstrated that the Examiner erred in finding that
it would have been obvious to include an accessory holder as shown by
Ukitsu on the container of Medoff, Tippey, and Clare?
Findings of Fact
12. Ukitsu teaches the container of figure 5, reproduced below:

“FIG. 5 is a perspective view of a diaper bag” (Ukitsu 1 ¶ 0021).
13. Ukitsu teaches that a “small bag 2 is detachably attached to the
front surface 1b of the bag body 1 . . . The cover 4 has a pocket 6 which is
opened and closed by a fastener 5” (Ukitsu 1 ¶ 0024).
Analysis
We are not persuaded by Appellants’ argument that “even if one
skilled in the art were to modify Medoff with an accessory holder, as
suggested by the Examiner, one skilled in the art would not arrive at the
claimed invention” (App. Br. 7). Appellants reiterate their argument that the
combination of Medoff, Tippey, and Clare do not suggest the use of
absorbent articles packaged as in claim 1. We have already decided that
claim 1 is obvious. We agree with the Examiner that “it would have been
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obvious to one having ordinary skill in the art in view of Ukitsu ‘321 to
modify the parcel/encasement of Medoff as modified so it includes an
accessory holder disposed on the outer surface of the first shell member to
allow the parcel/encasement for holding an additional item” (Ans. 6).
Conclusion of Law
Appellants have not demonstrated that the Examiner erred in finding
that it would have been obvious to include an accessory holder as shown by
Ukitsu on the container of Medoff, Tippey, and Clare.
D. 35 U.S.C. § 103(a) over Medoff, Shikata, and Kuske
The Examiner rejected claims 17, 19, and 20 under 35 U.S.C. § 103(a)
as being obvious over Medoff, Shikata, and Kuske (Ans. 6-7).
The Examiner finds that “Shikata ‘102 teaches a personal care product
designed to be worn on the lower torso comprising a diaper. Kuske ‘555
shows a package for holding diapers and the package having a window for
viewing the number of diapers contained therein” (Ans. 6).
Appellants contend that “there is no teaching in the references relied
upon to have the absorbent articles which at least partially unfold when the
package is opened. Shikata et al. does not remedy this deficiency of Medoff
and Kuske” (App. Br. 8).
In view of these conflicting positions, we frame the obviousness issue
before us as follows:
Have Appellants demonstrated that the Examiner erred in finding that
it would have been obvious to package the absorbent products disclosed by
Shikata and Kuske into the container of Medoff?
Findings of Fact
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14. Shikata teaches that “[d]isposable diapers are well-known
articles of manufacture which are designed to be worn by infants and
incontinent persons. Disposable diapers are worn about the lower torso of
the user” (Shikata, col. 1, ll. 14-17).
15. Kuske teaches a bag with a window, which “provides the
feature of permitting a user, caregiver, or the like, to visually see or perceive
a component, or portion thereof, of the article that they are purchasing,
which is particularly desirable when the articles are packaged in a bag”
(Kuske, col. 5, ll. 59-63).
16. Kuske teaches that the “purchaser also can see or determine the
size of the article, thereby providing a degree of confidence in proper fit.
This provides product visibility at the time of purchase which is important
both to the user and caregiver” (Kuske, col. 5, ll. 63-67).
17. The Examiner finds that it would have been obvious over
Shikata and Kuske “to modify the parcel/encasement of Medoff so the
products comprise diapers in lieu of tissues to allow the parcel/encasement
for holding various products” (Ans. 7).
Analysis
Medoff teaches a parcel of disposable tissues with first and second
products with two surfaces and fold lines which are in a stack in an
encasement or compact which can either be open or closed (FF 3-6). The
Examiner finds that Medoff teaches that “when the encasement is in a closed
condition the first product is substantially folded at the first fold line and the
second product is substantially folded at the second fold line and when the
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encasement is in an open condition the first and second products are at least
partially unfolded” (Ans. 4; FF 6).
Kuske teaches packaging diapers and teaches the use of a window in
the package (FF 15-17).
Applying the KSR standard of obviousness to the findings of fact, we
find that the person of ordinary creativity would have predictably packaged
equivalent articles such as the infant diapers of Kuske and Shikata in the
tissue packaging encasement disclosed by Medoff since the container of
Medoff provides “more convenience for the user to carry [the articles]” (see
Ans. 6). Such a combination is merely a “predictable use of prior art
elements according to their established functions.” KSR, 550 U.S. at 417.
We are not convinced by Appellants’ argument that because Kuske
teaches packaging of diapers and Medoff teaches tissues, “Medoff is actually
non-analogous art to the claimed invention of claims 17, 19, and 20” (App.
Br. 8). In Icon, the Federal Circuit explained that
A reference is reasonably pertinent if, even though it may be
in a different field from that of the inventor's endeavor, it is
one which, because of the matter with which it deals,
logically would have commended itself to an inventor's
attention in considering his problem.” In re Clay, 966 F.2d
656, 659 (Fed.Cir.1992). In other words, “familiar items
may have obvious uses beyond their primary purposes.”
KSR Int'l Co. v. Teleflex, Inc., --- U.S. ----, 127 S.Ct. 1727,
1742 (2007). We therefore have concluded, for example,
that an inventor considering a hinge and latch mechanism
for portable computers would naturally look to references
employing other “housings, hinges, latches, springs, etc.,”
which in that case came from areas such as “a desktop
telephone directory, a piano lid, a kitchen cabinet, a washing
machine cabinet, a wooden furniture cabinet, or a two-part
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housing for storing audio cassettes.” Paulsen, 30 F.3d at
1481-82.

In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379-1380 (Fed. Cir.
2007). In packaging personal care products such as diapers, we find that an
inventor would reasonably have considered references which package other
personal care products such as tissues, such as Medoff.
E. 35 U.S.C. § 103(a) over Medoff, Shikata, Kuske, and Ukitsu
The Examiner rejected claim 18 under 35 U.S.C. § 103(a) as being
obvious over Medoff, Shikata, Kuske, and Ukitsu (Ans. 6-7).
We are not persuaded by Appellants’ argument that “even if one
skilled in the art were to modify Medoff with an accessory holder, as
suggested by the Examiner, one skilled in the art would not arrive at the
claimed invention” (App. Br. 9). Appellants reiterate their argument that the
combination of Medoff, Shikata, and Kuske do not suggest the use of
absorbent articles packaged as in claim 17. We have already decided that
claim 17 is obvious as discussed supra. We agree with the Examiner that “it
would have been obvious to one having ordinary skill in the art in view of
Ukitsu ‘321 to modify the parcel/encasement of Medoff as modified so it
includes an accessory holder disposed on the outer surface of the first shell
member to allow the parcel/encasement for holding an additional item”
(Ans. 7).
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SUMMARY
In summary, we reverse the rejection of claims 1-3, 6, 7, 10, 11, 13,
and 14 under 35 U.S.C. § 102(b) as being anticipated by Medoff.
We affirm the rejection of claims 1 and 13 under 35 U.S.C. § 103(a)
as being obvious over Medoff, Tippey, and Clare. Pursuant to 37 C.F.R.
§ 41.37(c)(1)(vii)(2006), we also affirm the rejection of claims 2-4, 6, 7, 10,
11, and 14, as these claims were not argued separately.
We affirm the rejection of claims 5, 9, 12, and 16 under 35 U.S.C.
§ 103(a) as being obvious over Medoff, Tippey, Clare, and Ukitsu.
We affirm the rejection of claims 17, 19, and 20 under 35 U.S.C.
§ 103(a) as being obvious over Medoff, Shikata, and Kuske. We affirm the
rejection of claim 18 under 35 U.S.C. § 103(a) as being obvious over
Medoff, Shikata, Kuske, and Ukitsu.
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)(2006).
AFFIRMED
lp

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