Ex Parte Karapasha et al

Board of Patent Appeals and Interferences

May 31, 2012

10994075 (B.P.A.I. May. 31, 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.
10/994,075 11/19/2004 Nancy Karapasha 9839Q 1427
27752 7590 05/31/2012
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
ZALUKAEVA, TATYANA
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
05/31/2012 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 NANCY KARAPAHSA, JUTTA ELISABETH KREITER,
and DEAN JEFFREY DANIELS
__________

Appeal 2011-001297
Application 10/994,075
Technology Center 3700
__________

Before DEMETRA J. MILLS, FRANCISCO C. PRATS, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

BONILLA, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims directed to a
tampon applicator comprising an inner member having at least one
longitudinal protrusion. The Examiner has rejected claims as anticipated
and obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse, but
enter a new ground of rejection in relation to claims 19 and 20.

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STATEMENT OF THE CASE
Claims 1, 3-14, 19, and 20 are on appeal, with claims 1, 19 and 20
being independent. Claims 1 and 19 are representative and read as follows
(emphasis added).
1. A tampon applicator comprising:
a.) an outer member adapted to house a tampon, said outer member
having an outer surface, an insertion end, a gripper end, and an
indentation region, wherein said indentation region extends inwardly
from said outer surface and is disposed between said insertion end and
said gripper end;
i. said indentation region has a depth dimension D, said depth
dimension D is measured from the outer surface of the outer
member to a lowest point of the indentation region;
ii. said indentation region comprises raised portions having a
height dimension h3, wherein said height dimension h3 is measured
from an individual raised portion’s base to an individual raised
portion’s highest point, said height dimension h3 being less than or
equal to said depth dimension D;
b.) an inner member adapted to be received by the outer member
and comprising a first end having a diameter and a second end having
a diameter;
i. said first end is spaced a first distance from a first longitudinal
protrusion, said first longitudinal protrusion having a diameter
greater than the diameter of said first end, wherein said first
distance is from about 1 mm to about 7 mms;
ii. said second end is spaced a second distance from a second
longitudinal protrusion, said second longitudinal protrusion
having a diameter greater than the diameter of said second end,
wherein said second distance is from about 1 mm to about 7 mms.

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19. A tampon applicator comprising:
a.) an outer member adapted to house a tampon, said outer member
having an outer surface, an insertion end, a gripper end, and an
indentation region, wherein said indentation region extends inwardly
from said outer surface and is disposed between said insertion end and
said gripper end;
i. said indentation region has a depth dimension D, said depth
dimension D is measured from the outer surface of the outer
member to a lowest point of the indentation region;
ii. said indentation region comprises raised portions having a
height dimension h3, wherein said height dimension h3 is measured
from an individual raised portion’s base to an individual raised
portion’s highest point, said height dimension h3 being less than or
equal to said depth dimension D;
b.) an inner member adapted to be received by the outer member
and comprising a first end and a second end, wherein said second end
has a diameter, and is spaced a distance from a longitudinal
protrusion having a diameter, wherein the diameter of said
longitudinal protrusion is greater than the diameter of said second
end.
Independent claim 20 is similar to claim 19, but further recites in b.) in
relation to the inner member that the “first end is housed within said outer
member, wherein said second end has a diameter and is exposed.”
The claims stand rejected as follows:
• Claims 19 and 20 under 35 U.S.C. § 102(b) as anticipated by Kao.
1

• Claims 1, 3-11 and 13-14 under 35 U.S.C. §103(a) as obvious over
Kao, in view of Tallman,
2
Porat,
3
Gordon,
4
and Jaycox.
5

1
Kao Corporation, Masatake Dohzono et al., GB 2166656A, published May
14, 1986.
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• Claim 12 under 35 U.S.C. §103(a) as obvious over Kao, in view of
Tallman, Porat, Gordon, Jaycox, and further in view of Linares.
6

I.
Claims 19 and 20 under 35 U.S.C. § 102(b) as anticipated by Kao.
Issue
Does the Examiner establish a prima facie case of anticipation of
claims 19 and 20 based on the finding that Figure 3 of Kao discloses a
tampon applicator having an inner member comprising a second end and a
longitudinal protrusion, where “the diameter of said longitudinal protrusion
is greater than the diameter of said second end” as recited in claims 19 and
20?
Findings of Fact
1. Figure 1 of the instant Specification shows the following:

2
Tallman et al., US 3,139,886, issued Jul. 7, 1964.
3
Porat, US 6,248,089 B1, issued Jun. 19, 2001.
4
Gordon et al., US 2,879,769, filed May 11, 1956.
5
Jaycox, US 3,696,812, issued Oct. 10, 1972.
6
Linares et al., US 264,626 B1, issued Jul. 24, 2001.
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Figure 1 depicts a side cross-sectional view of a tampon applicator. “28”
points to a first end and “29” points to a second end of an inner member.
“30” and “31” point to longitudinal protrusions on the inner member. Outer
member “22” comprises an indentation region “33.”
2. Kao describes a tampon applicator comprising an outer member and
an inner member. Figure 3 shows an embodiment.

Figure 3 depicts a cross-sectional view of an absorber inserted into a tampon
applicator, where the applicator comprises a “pushout member 5” (an inner
member) and a “cylinder 1” (an outer member). (Kao, page 1, ll. 109-115.)
Figure 3 above also includes three arrows not originally depicted in Kao’s
Figure 3. The left arrow points to the second end of pushout member 5, the
middle arrow points to hole 3 (discussed in Kao, but not identified in
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original Figure 3), and the right arrow points to the first end of pushout
member 5 housed within outer member 1.
3. Kao teaches that the “push-out member 5 has a small cylindrical
shape having an outer diameter which is smaller than the inner diameter of a
hole 3 in which the pull-out member 5 can slide.” (Id. at 1, l. 128 – 2, l. 1)
Principles of Law
“[I]t is well established that patent drawings do not define the precise
proportions of the elements and may not be relied on to show particular sizes
if the specification is completely silent on the issue” and the drawings are
not drawn to scale. Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222 F.
3d 951, 956 (Fed. Cir. 2000); Nystrom v. TREX Co., Inc., et al., 424 F.3d
1136, 1148-49 (Fed. Cir. 2005); In re Wright, 569 F.2d 1124, 1127 (CCPA
1977). Furthermore “[a]bsent any written description in the specification of
quantitative values, arguments based on measurement of a drawing are of
little value.” Wright, 569 F.2d at 1127. Hence, “speculative modeling
premised on unstated assumptions in prior art patent drawings cannot be the
basis for challenging the validity of claims reciting specific dimensions not
disclosed directly in such prior art.” Nystrom, 424 F.3d at 1149. On the
other hand, while “ʻ[p]atent drawings are not working drawings,’” that does
“not mean that things patent drawings show clearly are to be disregarded.”
In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972) (quoting In re Wilson, 312
F.2d 449, 454 (CCPA 1963)).
Thus, when determining whether a prior art figure drawing by itself
discloses a recited element in a claim for the purposes of a patentability
determination, it matters whether the drawings are drawn to scale, or
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whether the element can be readily determined by observing the drawing.
See also, e.g., Ex Parte Hideo Matsunaga et al., 2012 WL 260128, *3
(BPAI 2012).
Analysis
The Examiner finds that Figure 3 in Kao discloses a tampon
applicator having an inner member comprising a second end and a
longitudinal protrusion, where “the diameter of said longitudinal protrusion
is greater than the diameter of said second end” as recited in claims 19 and
20. (Ans. 4-5.) Specifically, the Examiner finds that “5 adjacent 6” (i.e.,
where the right-hand arrow in Figure 3 shown above (FF 2) points to a
portion of the pushout member 5, i.e., the right-hand “first” end of the
pushout member) corresponds to a “longitudinal protrusion” as recited in
claim 19. According to the Examiner, this longitudinal protrusion has a
diameter that is greater than the diameter of the left-hand “second” end of
the inner member (pushout member 5).
While we understand the Examiner’s position and agree with that
claim 19 does not preclude a first end from also corresponding to a
longitudinal protrusion, we agree with Appellants that applicable case law
indicates that the Examiner goes too far in finding that Figure 3 discloses the
diameters required in claims 19 and 20. (App. Br. 5.) As an initial matter,
as is nearly always the case with drawing figures in patent documents,
nothing in Kao indicates that Figure 3 is drawn to scale. Moreover, as noted
by Appellants, Kao provides no discussion or indication of what the
diameters of the two ends of the push-out member 5 might be, nor any
information about what the diameters may be in relation to each other. (Id.)
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Here, the Examiner draws measurement inferences from Figure 3 of
Kao itself, when Kao provides no relevant information regarding the
diameters of the ends of the inner member. We disagree with the Examiner
that figures in Kao “clearly show … relative size/dimensions of structures
therein.” (Ans. 9.) We find that the situation here does not correspond to a
case where the difference in the two diameters can be readily determined by
observing Figure 3.
Thus, we agree with Appellants that the Examiner’s position based on
measurements of Kao within the drawing “are of little value.” (Wright, 569
F.2d at 1127; App. Br. 5.) Because the Examiner has not established with
sufficient evidence that the prior art discloses the diameter of “the
longitudinal protrusion is greater than the diameter of said second end,” as
claimed, the anticipation rejection of claims 19 and 20 is reversed.
Conclusion of Law
We conclude that Figure 3 of Kao does not disclose a tampon
applicator having an inner member comprising a second end and a
longitudinal protrusion, where “the diameter of said longitudinal protrusion
is greater than the diameter of said second end” as recited in claims 19 and
20. Thus, we conclude that the Examiner does not establish a prima facie
case that Kao anticipates these two claims.
II.
Claims 1, 3-11 and 13-14 under 35 U.S.C. §103(a) as obvious over
Kao, in view of Tallman, Porat, Gordon, and Jaycox.
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Issue
Does the Examiner establish a prima facie case of obviousness of
claim 1 based on the finding that Kao, in view of Tallman, Porat, Gordon
and Jaycox, discloses or suggests an applicator having an inner member with
a first end spaced a first distance of about 1 mm to about 7 mm from a first
longitudinal protrusion, and a second end spaced a second distance of about
1 mm to about 7 mm from a second longitudinal protrusion, as recited in
claim 1, and therefore dependent claims 3-11 and 13-14?
Additional Findings of Fact
4. Figures 1 and 2 in Jaycox show the following:

Figure 1 of Jaycox depicts side view of a tampon applicator, and Figure 2
depicts an enlarged view of the applicator shown in Figure 1, including
aspects of inner member 14 located inside outer member 12.
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5. As disclosed in Jaycox, “two nibs 20 externally raised on opposite
sides of the internal tube 14 … give an effective interlock.” (Jaycox, col. 5,
ll. 26-30; see also id. at col. 3, ll. 37-39 (stating that “grooving 18 in addition
to providing a finger grip enhancement also serves to coact with raised nibs
20 to form an effective tube lock”).)
6. Jaycox also discloses that the “nibs are advantageously located on the
ejector tube 14 in an end zone one-eighth to three-fourths inch from the end
of the tube” and preferably are “one-half inch from the end.” (Id. at col. 5,
ll. 30-34.)
7. Jaycox states that the “over-all diameter of the tube 14 on opposite
sides is increased by about 0.005 to 0.03 inch when the nibs are included.”
(Id. at col. 5, ll. 38-41.)
8. Jaycox teaches that outer carrier tube 12 and an inner ejector tube 14
“commonly are about three inches long.” (Id. at col. 2, ll. 62-63.)
Principles of Law
The Examiner bears the initial burden, on review of the prior art or on
any other ground, of presenting a prima facie case of unpatentability. In re
Oetiker, 977 F.2d 1443, 1445 (1992). If the Examiner meets that initial
burden, the burden of coming forward with evidence or argument shifts to
the applicant. In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993). After the
applicant submits such evidence or argument, the PTO then determines
patentability “on the totality of the record, by a preponderance of evidence
with due consideration to persuasiveness of argument.” Oetiker, 977 F.2d at
1445. If the Examiner fails to establish a prima facie case of unpatentability
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in the first instance, however, the rejection is improper and must be reversed.
Id.; Rijckaert, 9 F.3d at 1532.
Analysis
Independent claim 1 differs from independent claims 19 and 20 in that
the inner member of claim 1 also requires a second longitudinal protrusion,
where the first longitudinal protrusion has a diameter greater than the
diameter of the first end and the second longitudinal protrusion has a
diameter greater than the diameter of the second end. Claim 1 also recites
that each end of the inner member “is from about 1 mm to about 7 mm”
from its corresponding longitudinal protrusion. The Examiner finds that
Kao, in view of Tallman, Porat, Gordon, and Jaycox, disclose or suggest
these elements. (Ans. 6.)
Kao, as discussed above, discloses two ends of an inner member as
shown in Figure 3, and potentially two protrusions at those same two ends
(where the end of the left-hand flared portion also corresponds to a
protrusion). That said, it cannot be the case that the diameter of a first
protrusion is greater than the diameter of a first end and the diameter of a
second protrusion is greater than the diameter of a second end. Regardless
of how one sees it, either the two ends/protrusions have the same diameter,
or at least one protrusion has a diameter that is smaller than its
corresponding end.
Thus, Kao does not disclose or suggest the end/protrusion diameter
aspect of claim 1. In addition, the Examiner also cites to nothing in Kao that
discloses or suggests any specific distance between an end and a protrusion
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in the inner member, as also required in claim 1. We find that Tallman,
Porat and/or Gordon do not make up for these deficiencies in Kao.
Unlike Kao, Tallman, Porat, and Gordon, however, Jaycox discloses
two ends of an inner member (14) and two protrusions (nibs 20), where the
diameter of each protrusion is greater than the diameter of its corresponding
end. (FF 4, 5, 7.) Moreover, unlike Kao, Tallman, Porat, and Gordon, the
Jaycox reference discloses a distance between an end and a protrusion in the
inner member. Jaycox refers to two protrusion, i.e., “two nibs 20 externally
raised on opposite sides of the internal tube 14” (inner member), where the
“nibs are advantageously located on the ejector tube 14 in an end zone one-
eighth to three-fourths inch from the end of the tube.” (FF 6.) One-eighth to
three-fourth inch corresponds to 3.175 mm to 19.05 mm. (Ans. 6) Thus,
Jaycox describes a range of distances between at least one protrusion (20)
and at least one end of the inner member (14) that covers at least a portion of
the range of distance (about 1 mm to about 7 mm) recited in claim 1.
The question then becomes whether Jaycox discloses a first end
spaced a first distance of about 1 mm to about 7 mm from a first longitudinal
protrusion, and a second end spaced a second distance of about 1 mm to
about 7 mm from a second longitudinal protrusion, as also required in in
claim 1. We find that although Jaycox discloses one such distance in
relation to one end, it does not describe or suggest both distances in relation
to both ends of the inner member.
Specifically, one can readily observe in Figures 1 and 2 of Jaycox that
the distance between nibs 20 and one end of inner tube 14 (i.e., exposed left-
hand end in Figure 1) is longer than the distance between nibs 20 and the
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other end of the inner member (i.e., right-hand end housed within outer
member 12). Moreover, Jaycox expressly teaches that the inner and outer
member “commonly are about three inches long” (FF 8), which is consistent
with what is depicted in Figure 1 and 2 in relation to other disclosed
distances. Thus, Jaycox suggests that the distance between the exposed
(left-hand) end of the inner member and the nibs is larger than one-eighth to
three-fourth inches, e.g., greater than 2 inches, so that the entire length of the
inner tube is about 3 inches.
The teachings in Jaycox therefore do not suggest a distance between
the exposed (left-hand) end of inner member 14 and the nibs 20 as small as 1
mm to 7 mm (i.e., 0.0394 to 0.2756 inches). Specifically, if both ends of the
inner member are a distance of 7 mm (or less) from nibs 20, the inner
member itself would be less than 0.6 inches long, i.e., considerably less than
the three inches one would understand to be useful when maneuvering an
inner member in an applicator. It is unclear how an inner member shorter
than 0.6 inches long could work as intended in an applicator.
Thus, we find that all five references cited by the Examiner fail to
disclose or suggest two distances between two ends and two protrusions of
an inner member, respectively, where each distance is about 1 mm to about 7
mm, as recited in claim 1.
Conclusion of Law
We conclude that Kao, in view of Tallman, Porat, Gordon and Jaycox,
does not disclose or suggest an applicator having an inner member with a
first end spaced a first distance of about 1 mm to about 7 mm from a first
longitudinal protrusion, and a second end spaced a second distance of about
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1 mm to about 7 mm from a second longitudinal protrusion, as recited in
claim 1. Thus, we conclude that the Examiner does not establish a prima
facie case of obviousness of claim 1. Because pending claims 3-11 and 13-
14 depend on claim 1, we conclude that the Examiner also does not establish
a prima facie case of obviousness regarding these claims as well.
III.
Issue
Does the Examiner establish a prima facie case of obviousness of
claim 12 over Kao, in view of Tallman, Porat, Gordon, Jaycox (discussed
above), further in view of Linares?
Analysis
Claim 12, depends on claim 11, which in turn depends on independent
claim 1. Claim 12 recites a depth dimension of about 2.5 mm to about 3.5
mm in relation to an indentation region of the outer member, as recited in
claim 1. The Examiner states that Linares discloses this element. (Ans. 8.)
The Examiner does not indicate, however, that Linares discloses or
suggests that two distances between two ends and two protrusions of an
inner member, respectively, where each distance is about 1 mm to about 7
mm, as recited in claim 1. (Ans. 8 and 12.) In other words, the Examiner
does not establish that Linares provides teachings or suggestions with regard
to aspects of the inner member of claim 1 that are also lacking in Kao,
Tallman, Porat, Gordon, and Jaycox. Thus, for the same reasons discussed
above, the Examiner has not shown that Kao, in view of Tallman, Porat,
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Gordon, Jaycox, further in view of Linares, disclose the inner member of
claim 1.
Conclusion of Law
We conclude that the Examiner does not establish a prima facie case
of obviousness of claim 12 over Kao, in view of Tallman, Porat, Gordon,
Jaycox), further in view of Linares.
NEW GROUND OF REJECTION
Issue
Do disclosures in Kao in view of Gordon disclose or suggest the
applicator recited in claims 19 and 20, which includes an inner member
comprising a second end and a longitudinal protrusion, where “the diameter
of said longitudinal protrusion is greater than the diameter of said second
end,” thereby rendering claims 19 and 20 obvious over Kao in view of
Gordon?
Additional Findings of Fact
9. A side-by-side comparison of Figure 3 in Kao and Figure 1 in Gordon
is relevant:

Kao Gordon
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Figure 3 of Kao and Figure 1 of Gordon both depict a side cross-sectional
view of a tampon applicator comprising an inner member and an outer
member. Figure 1 of Gordon, depicted upside down to provide an easier
comparison, also includes knobs or protrusions 26.
Analysis
Although we do not sustain the rejections as articulated by the
Examiner in this appeal, we enter a new ground of rejection that disclosures
of Kao in view of Gordon support the conclusion that the subject matter of
claims 19 and 20 would have been obvious.
We agree with, and adopt, the findings by the Examiner that Kao
discloses the outer member of claims 19 and 20, as well as an inner member
comprising a first end housed within the outer member and an exposed
second end, where the second end is spaced a distance from a longitudinal
protrusion, as recited in claims 19 and/or 20. As discussed above, however,
Kao does not disclose an inner member where “the diameter of said
longitudinal protrusion is greater than the diameter of said second end,” as
also recited in claims 19 and 20.
A side-by-side comparison of two similar tampon applicators shown
in Figure 3 of Kao and Figure 1 of Gordon (FF 9) indicates one of ordinary
skill in the art would have had a reason to substitute the exposed part of the
inner member of Gordon, including the second end and knob protrusions 26,
in place of the exposed part of the inner member of Kao. Gordon’s exposed
part of the inner member, including knobs 26, would have provided
advantageous aspects as taught in Gordon, i.e., to “control the penetration of
the plunger [inner member] into the applicator, thereby allowing ready
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withdrawal and removal of the plunger.” (Gordon, col. 3, ll. 31-35.) If one
of ordinary skill in the art would have modified the Kao applicator in this
matter, the resulting applicator would have had an inner member where the
“the diameter of said longitudinal protrusion is greater than the diameter of
said second end,” as recited in claims 19 and 20.
Thus, one of ordinary skill in the art would have had a reason to make
a modified version of the applicator of Kao that included the only element of
claims 19 and 20 lacking in Kao itself. Unlike in Kao where one could not
have readily observed whether the protrusion at the first end had a diameter
larger than the second exposed end of the inner member, one would have
easily understood that a modified version of Kao’s applicator could have
protrusion knobs 26 with a diameter larger than the second end, as depicted
in Gordon. As taught in Gordon, knobs 26 could be formed by “forming an
enlarged portion thereat” in relation to the inner member, and the inner
member would not be flared at the second exposed end. (Id. at col. 3, ll. 35-
38.)
Conclusion of Law
We conclude that disclosures in Kao in view of Gordon describe or
suggest the applicator recited in claims 19 and 20, including an inner
member comprising a second end and a longitudinal protrusion, where “the
diameter of said longitudinal protrusion is greater than the diameter of said
second end,” thereby rendering claims 19 and 20 obvious over Kao in view
of Gordon.
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SUMMARY
We reverse the Examiner’s rejection of claim 19 and 20 as anticipated
by Kao. We also reverse the Examiner’s rejection of claims 1 and 3-14 as
obvious over cited prior art. Pursuant to our authority under 37 C.F.R. §
41.50(b), we enter a new ground of rejection against claims 19 and 20 as
being obvious over Kao in view of Gordon.
No inference should be drawn from the failure to make a new ground
of rejection of other claims. 37 C.F.R. § 41.50(b). Section 41.50(b)
provides that “[a] new ground of rejection pursuant to this paragraph shall
not be considered final for judicial review.” Section 41.50(b) also provides
that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE
DECISION, must exercise one of the following two options with respect to
the new grounds of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record . . .

REVERSED; 37 C.F.R. § 41.50(b)

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