10632258 (B.P.A.I. Jul. 12, 2012)

Ex Parte de Leon et al

Board of Patent Appeals and InterferencesJul 12, 2012

10632258 (B.P.A.I. Jul. 12, 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. 10/632,258 07/31/2003 Maria E. de Leon 19,245 5492 23556 7590 07/12/2012 KIMBERLY-CLARK WORLDWIDE, INC. Tara Pohlkotte 2300 Winchester Rd. NEENAH, WI 54956 EXAMINER BAKER, LORI LYNN ART UNIT PAPER NUMBER 3751 MAIL DATE DELIVERY MODE 07/12/2012 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 MARIA E. DE LEON, ANDREW M. LONG, and SHIRLEE A. WEBER ____________________ Appeal 2009-014020 Application 10/632,258 Technology Center 3700 ____________________ Before KEN B. BARRETT, CHARLES N. GREENHUT, and MICHAEL L. HOELTER, Administrative Patent Judges. BARRETT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Maria E. de Leon et al. (Appellants) seek our review under 35 U.S.C. § 134 of the final rejection of claims 1-4, 8, 11-19, 32, and 33. Claims 5-7, 9, 10, and 20-31 have been withdrawn. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2009-014020 Application 10/632,258 2 THE INVENTION Appellants’ claimed invention pertains to mats such as disposable toilet or potty training mats. Spec. 1. Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A disposable mat defining a longitudinal direction, a lateral direction and at least one edge, said disposable mat comprising: A first face; A second face opposite said first face; At least one line of weakness, said at least one line of weakness being configured to allow the separation of a removable portion from said disposable mat; and A holding mechanism configured to increase the resistance of said mat to movement when said first face of said mat is placed upon a planar surface. THE REJECTIONS The following Examiner’s rejections are before us for review: 1. Claim 33 is rejected under 35 U.S.C. § 102(b) as being anticipated by Frankel (US 5,375,271, iss. Dec. 27, 1994); and 2. Claims 1-4, 8, 11-17, 31, and 32 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Tsuneki (JP 2002-165729 A, pub. June 11, 2002) and Mason (US 5,379,558, iss. Jan. 10, 1995). The Examiner also rejected claims 18 and 19 under 35 U.S.C. § 103(a) as being unpatentable over Tsuneki, as modified in view of Mason, and Tokiko (JP 2002-209799 A, pub. July 30, 2002), and rejected claim 33 under 35 U.S.C. § 103(a) as being unpatentable over Tsuneki. Final Rej., mailed June 14, 2006, at 8-9. However, Appellants did not list these two Appeal 2009-014020 Application 10/632,258 3 rejections under the Grounds of Rejection to Be Reviewed on Appeal or present any arguments rebutting these rejections. App. Br. 2; cf. Ans. 2-3 (The Examiner noting this omission, and stating that the rejections have not been withdrawn.) As such, the Appellants have waived any argument of error, and we summarily sustain these two rejections. OPINION The rejection of claim 33 as being anticipated by Frankel Claim 33 recites a disposable mat having: At least one decorative graphic located on said second face, wherein said at least one decorative graphic has a decorative graphic theme and wherein said decorative graphic theme is related to the theme of article graphics of a disposable absorbent article. Appellants’ arguments concerning this recitation do not persuade us of error in the Examiner’s finding of anticipation. First, claim 33 calls for a disposable mat and not, as Appellants suggest (App. Br. 3), a mat in combination with a disposable absorbent article. Second, to the extent that the graphics (printed matter and/or ornamentation) are entitled to any patentable weight, we perceive no error in the Examiner’s finding that Frankel’s mat has a decorative graphic theme related to the theme of graphics on a diaper. See, e.g., Ans. 8 (referring to the fun-having animal). We sustain the rejection of claim 33 as anticipated by Frankel. Appeal 2009-014020 Application 10/632,258 4 The rejection of claims 1-4, 8, 11-17, 31, and 32 as being unpatentable over Tsuneki and Mason Appellants argue the rejected claims as a group. App. Br. 3-4. We select claim 1 as representative, and claims 2-4, 8, 11-17, 31, and 32 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Appellants’ primary arguments are based on a rigid application of the teaching-suggestion-motivation test. App. Br. 3-4. In particular, Appellants argue that “[t]he examiner has not pointed to a teaching, motivation, or suggestion, within the four comers of [the cited references to combine the references’ teachings.]” App. Br. 4. These arguments are based on outdated law, see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), and do not point to an error in the Examiner’s ultimate determination of obviousness. Appellants also unpersuasively argue that “[n]owhere do the combined references teach employing a line of weakness in a disposable mat, the line of weakness being configured to allow separation of a removable portion of the disposable mat.” App. Br. 4. Dependent claim 3 indicates that such a line of weakness includes that provided by perforations, which the Examiner correctly found to be taught by Mason. Ans. 4 (citing Mason, col. 3, ll. 61-65). We have considered all of Appellants’ arguments, but we agree with the Examiner’s conclusion that the subject matter of claim 1 would have been obvious to one of ordinary skill in the art. DECISION The decision of the Examiner to reject claims 1-4, 8, 11-19, 32, and 33 is affirmed. Appeal 2009-014020 Application 10/632,258 5 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED hh