Ex Parte Edgett et al

Board of Patent Appeals and Interferences

Jul 23, 2012

12122880 (B.P.A.I. Jul. 23, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/122,880 05/19/2008 Keith Edgett 1157-0009-1 9758
49698 7590 07/24/2012
MICHAUD-Kinney Group LLP
306 INDUSTRIAL PARK ROAD
SUITE 206
MIDDLETOWN, CT 06457
EXAMINER
CRAIG, PAULA L
ART UNIT PAPER NUMBER
3778
MAIL DATE DELIVERY MODE
07/24/2012 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 KEITH EDGETT, ROBERT JORGENSEN,
EUGENE DOUGHERTY JR., and YINKA ABDUL
____________

Appeal 2011-007952
Application 12/122,880
Technology Center 3700
____________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL

This appeal under 35 U.S.C. § 134 involves claims 1-11 (App. Br. 5;
Reply Br. 3; Ans. 2). We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to a tampon pledget. Claim 1 is representative
and is reproduced in the Claims Appendix of Appellants’ Brief.
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Application 12/122,880

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Claims 1-10 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Glassman.1
Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Glassman and Cassoni.2
We affirm.

The rejection over Glassman:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Glassman suggests “a tampon pledget [that] include[es] at least one
bottom pad and at least one top pad positioned on the bottom pad” (Ans. 3).
FF 2. For clarity, Glassman’s figures 5 and 7 are reproduced below:

“FIG. 5 is a plan view of a multilayered tampon pad” (Glassman, col. 2, l.
5). “FIG. 7 is a central sectional view of the FIG. 5 tampon pad, formed into
a cup-shape prior to compression” (id. at ll. 8-9).

1 Glassman, US 4,335,720, issued June 22, 1982.
2 Cassoni et al., US 2003/0225389 A1, published December 4, 2003.
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FF 3. Glassman suggests folding the top and bottom pads “to form the
pledget such that the bottom pad forms an inner core of the pledget and the
top pad forms an outer layer of the pledget (bottom pad includes layers 17
and 18; top pad is layer 16[)]” (Ans. 4).
FF 4. Glassman suggests that moisture absorbing material layers 16, 17,
and 18 are “laid one upon the other . . . with each layer differing slightly in
size” (Glassman, col. 2, ll. 43-45).
FF 5. Appellants’ Specification defines “pad lay-up ratio”:
[A]s the ratio of the area of one or more bottom pads 12 to the
area of one or more top pads 14. The area of one or more pads
is calculated in a single plane. Therefore, while stacking of
multiple pads may be done, it does not increase the calculated
area of the one or more pads.

(Spec. 5: ¶ [0022].)
FF 6. Examiner finds that “Appellant’s specification does not indicate the
range of lay-up ratios covered by the term ‘about’” (Ans. 5).
ANALYSIS
Appellants provide separate arguments for the following groups of
claims: I. Claims 1-4 and 7-10; and II. Claims 5 and 6. Claims 1 and 5 are
representative. 37 C.F.R. § 41.37(c)(1)(vii).

Claim 1:
Based on Glassman Examiner concludes that, at the time of
Appellants’ claimed invention, it would have been prima facie obvious to a
person of ordinary skill in this art to “modify Glassman to include the
bottom pad having a pad weight statistically greater than 50% of a total
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Application 12/122,880

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weight defined by the pledget” (Ans. 4). In support of this conclusion,
Examiner reasons that
[T]hree layers of similar size[d material] make up . . .
[Glassman’s] tampon pledget, two layers taken together would
be expected to have about 2/3 of the total weight of the pledget.
This suggests that the bottom pad material layers 17 and 18
combined [make up 2/3’s or 66.67% of the weight of
Glassman’s tampon pledget and therefore] have a weight
statistically greater than 50%.

(Id.)
For the foregoing reasons we are not persuaded by Appellants’
contention that Glassman’s hollow core tampon could not be maintained if
the bottom pad of the tampon pledges had a pad weight statistically greater
than 50% of a total weight defined by the pledget (App. Br. 10). For the
same reasons we are not persuaded by Appellants’ contention that
“Glassman did not have any motivation to develop and/or design pads of a
particular mass, thickness or volume” (id.). Simply stated, for the reasons
articulated by Examiner as set forth above, Glassman suggests the tampon
pledget of Appellants’ claim 1. Since Appellants’ claim 1 does not require a
particular fluid intake or absorption rate, we are not persuaded by
Appellants’ contentions relating to fluid intake rates/ absorption rates (Ans.
10-12; Reply Br. 7-8).
We recognize Appellants’ contention that “Glassman does not teach
or even remotely suggest any particular mass, weight, and/or thickness for
any or all of the layers of absorbent material” (Reply Br. 5; see also id. at 8
(“[T]he term ‘thin’ or ‘thick’ is not used in Glassman to describe any of the
moisture absorbing layers”)). Appellants appear to intimate that Glassman
somehow suggests that absorbing material layers 16, 17, and 18 are of a
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Application 12/122,880

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different mass, weight, and/or thickness (see generally Reply Br. 5-6). We
are not persuaded. As Appellants recognize Glassman suggests only that
layers 16, 17, and 18 differ slightly in size, we find no suggestion in
Glassman that these layers are made of different materials or that they have
different mass, weight, and/or thickness (Cf. Reply Br. 5-6).
For the reasons set forth by Examiner, we are not persuaded by
Appellants’ contentions regarding “the terms ‘bottom’ and ‘top’” (Reply Br.
7; Cf. FF 3).

Claim 5:
Based on Glassman, Examiner concludes that “material layers 16, 17,
and 18 of . . . [Glassman’s] tampon pledget differ only slightly in size, which
suggests a lay-up ratio of 1:1”, which “fall[s] within the range of ‘about
1:1.2’” (Ans. 5 (emphasis added); FF 5-6). In the alternative, Examiner
reasons that “[i]n light of Glassman’s figures and description of the top and
bottom pads as differing only slightly in size, it would have been obvious to
one of ordinary skill in the art at the time of the invention to modify
Glassman to include the tampon pledget defining a lay-up ratio between
about 1:1.2 to about 1:2:1” (Ans. 5-6).
While Appellants are correct in that Glassman does not expressly
teach a layup ratio, for the reasons set forth above we disagree with
Appellants’ contention that Glassman does not suggest a layup ratio of 1:1
(App. Br. 13). In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“‘[I]t is not inventive to
discover the optimum or workable ranges by routine experimentation.’”)
(quoting In re Aller, 220 F.2d 454, 456 (CCPA 1955)).
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For the reasons set forth above, Glassman suggests and/or renders
obvious a layup ratio within the scope of Appellants’ claim 5. Therefore, we
are not persuaded by Appellants’ contention that “Glassman cannot render
the present disclosure obvious, since Glassman was not aware of the
problem the present disclosure solved” (App. Br. 13).
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claims 1 and 5 under 35 U.S.C. § 103(a) as
unpatentable over Glassman is affirmed. Claims 2-4 and 7-10 are not
separately argued and fall together with claim 1. Claim 6 falls together with
claim 5. 37 C.F.R. § 41.37(c)(1)(vii).

The rejection over the combination of Glassman and Cassoni:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 7. Examiner relies on Glassman as set forth above (Ans. 7; FF 1-4).
FF 8. Glassman suggests a withdrawal cord (Ans. 7).
FF 9. “Glassman does not teach the withdrawal cord having an anti-wick
coating” (id.).
FF 10. Cassoni suggests a tampon comprising a “withdrawal cord with an
anti-wick coating” that “prevents body fluids from wicking along the cord
and contacting the inner surface of a woman’s undergarment” (id.).

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ANALYSIS
Based on the combined suggestion of Glassman and Cassoni,
Examiner concludes that, at the time of Appellants’ claimed invention, it
would have been prima facie obvious to a person of ordinary skill in this art
to “modify Glassman to include the withdrawal cord having an anti-wick
coating, as taught by Cassoni, to prevent body fluids from wicking along the
cord” (Ans. 7).
Having found no deficiency in Examiner’s reliance on Glassman to
suggest all of the limitations recited in Appellants’ claim 1, we are not
persuaded by Appellants’ contention that Cassoni “does not cure the
deficiencies in Glassman” with regard to claim 1 (App. Br. 15).
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claim 11 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Glassman and Cassoni is affirmed.

TIME PERIOD FOR RESPONSE
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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