Ex Parte Fedyk et al

Board of Patent Appeals and Interferences

Jun 27, 2012

10179136 (B.P.A.I. Jun. 27, 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.
10/179,136 06/25/2002 Glen Charles Fedyk 8987 5810
27752 7590 06/27/2012
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
STEPHENS, JACQUELINE F
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
06/27/2012 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 GLEN CHARLES FEDYK,
NANCY KARAPASHA, and CHARLES JOHN BERG
____________

Appeal 2009-015194
Application 10/179,136
Technology Center 3700
____________

Before JOHN C. KERINS, GAY ANN SPAHN, and
WILLIAM V. SAINDON, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Glen Charles Fedyk et al. (Appellants) seek our review under 35
U.S.C. § 134 of the Examiner’s rejection of claims 1, 3, 4, and 6-10.
Appellants cancelled claims 2 and 5. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
Appeal 2009-015194
Application 10/179,136

2
The Claimed Subject Matter
The claimed subject matter is directed to “a tampon applicator having
a grip region for facilitating the insertion of a tampon into a body cavity.”
Spec. 1, ll. 8-9. Claims 1 and 9 are independent and claim 1, reproduced
below, is illustrative of the subject matter on appeal.
1. A tampon applicator comprising:
an elongate insertion member having a
length extending from an insertion end to a gripper
end opposite thereof, the gripper end comprising a
grip region dimensioned to substantially accept a
user's grip;
said grip region having a depth and
comprising a plurality of corrugations, a first
transition portion, and a second transition portion,
wherein said first transition portion provides
resistance to the movement of at least a user's
finger or thumb towards the gripper end, and said
second transition portion provides resistance to the
movement of at least a user's finger or thumb
towards the insertion end;
each of said plurality of corrugations
comprising a trough and a ridge wherein said
trough is concave and said ridge is convex,
wherein said trough and ridge are aligned along
their length with said length of said elongate
insertion member in said grip region;
said first transition portion being
substantially adjacent said gripper end and said
second transition portion being substantially
adjacent to said insertion end; and
wherein said first transition portion and said
grip region span a radial arc identified as angle
alpha (α) and said second transition portion and
said grip region span a radial arc identified as angle
beta (β).

Appeal 2009-015194
Application 10/179,136

3
Independent claim 9 is directed to a tampon and tampon applicator in
combination, and the tampon applicator recites the same subject matter as
recited for the tampon applicator of claim 1.

The Rejections
The following Examiner’s rejections are before us for review.
Claims 1, 8, 9, and 10 are rejected under 35 U.S.C. § 102(e) as
anticipated by Jackson (US 6,416,488 B1, issued Jul. 9, 2002). Ans. 4.
Claims 3, 4, 6, and 71 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Jackson. Ans. 5-6.

OPINION
Anticipation based on Jackson
The Examiner interprets Jackson as anticipating independent claims 1
and 9. Ans. 4 and 6-8. In particular, the Examiner finds that Jackson
discloses a tampon applicator having an insertion member 14 with insertion
end (expulsion end 24) and gripper end (distal end 22). Ans. 4. The
Examiner also finds that Jackson’s tampon applicator has a grip region
(finger grip tape 30) including
a first transition portion substantially adjacent to
the gripper end and capable of providing resistance
to the movement of at least a user’s finger or
thumb towards the gripper end; and a second
transition portion 28 substantially adjacent to the
insertion end and capable of providing a resistance

1 The Examiner listed claims 2-7 as being rejected under this ground of
rejection; however, since the Appellants cancelled claims 2 and 5, we
changed the claim listing to claims 3, 4, 6, and 7.
Appeal 2009-015194
Application 10/179,136

4
to the movement of at least a user’s finger or
thumb towards the insertion end.
Id.
Appellants contend that “Jackson . . . does not disclose all the
elements of claims 1, 8, 9, and 10.” Br. 4. In particular, Appellants assert
that “[a] review of . . . Jackson . . . does not provide any structure such as a
first transition portion” and “there is no first transition portion present on the
Jackson . . . tampon assembly.” Br. 6 and 7. Appellants also disagree with
the Examiner that Jackson’s preformed hinge or groove 28 can constitute the
second transition portion since the Examiner identified the finger grip tape
30 as the grip region and the preformed hinge or groove 28 is not a part of
the finger grip tape 30 or grip region as is required by the claim language
(i.e., “said grip region . . . comprising . . . a first transition portion, and a
second transition portion”). Br. 7. Thus, Appellants conclude that “Jackson
. . . does not disclose a first or second transition portion.” Id.
We agree with Appellants. The Examiner has failed to identify what
structure in Jackson is considered to constitute the first transition portion.
Although the Examiner alleges that Jackson has a first transition portion (see
Ans. 3), the Examiner has failed to identify exactly what structure of
Jackson constitutes the first transition portion, because the Examiner did not
list any reference numeral, figure number, column and line numbers from
the text of Jackson, or otherwise explain what structure of Jackson was
considered to constitute the first transition portion. See Ans. 3 and 5-7.
Additionally, with respect to the second transition portion, the Examiner
identifies Jackson’s preformed hinge or groove 28 as constituting the second
transition portion. See Ans. 3. However, Jackson’s performed hinge or
groove 28 is not a part of the grip region (finger grip tape 30) and thus,
Appeal 2009-015194
Application 10/179,136

5
Jackson’s preformed hinge or groove 28 does not satisfy the claim language
that the grip region comprises the second transition portion.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claims 1 and 9, and claims 8 and 10 dependent thereon,
under 35 U.S.C. § 102(e) as anticipated by Jackson.
Obviousness based on Jackson
The Examiner’s rejection of claims 3, 4, 6, and 7 relies upon the faulty
premise that Jackson discloses first and second transition portions. As we do
not agree with the Examiner that Jackson discloses first and second
transition portions, we do not sustain the Examiner’s rejection of claims 3, 4,
6, and 7 under 35 U.S.C. § 103(a) as unpatentable over Jackson.

DECISION
We reverse the Examiner’s decision to reject claims 1, 3, 4, and 6-10.

REVERSED

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