10601771 (B.P.A.I. Aug. 10, 2012)

Ex Parte LeMay et al

Board of Patent Appeals and InterferencesAug 10, 2012

10601771 (B.P.A.I. Aug. 10, 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. 10/601,771 06/20/2003 Jessica E. LeMay 460.2174USU 7298 7590 08/10/2012 Charles N.J. Ruggiero, Esq. Ohlandt, Greeley, Ruggiero & Perle, L.L.P. 10th Floor One Landmark Square Stamford, CT 06901-2682 EXAMINER ZALUKAEVA, TATYANA ART UNIT PAPER NUMBER 3761 MAIL DATE DELIVERY MODE 08/10/2012 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 JESSICA E. LEMAY, KATHRYN G. BENNETT, KEITH EDGETT, DANE R. JACKSON and JAMSHID REJAI ________________ Appeal 2010-004810 Application 10/601,771 Technology Center 3700 ________________ Before JENNIFER D. BAHR, JOHN C. KERINS and MICHAEL L. HOELTER, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-004810 Application 10/601,771 2 STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from a final rejection of claims 1-6 and 8-73 (App. Br. 2). Claim 7 has been cancelled (App. Br. 16). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE CLAIMED SUBJECT MATTER The claimed subject matter pertains to a barrel of a tampon applicator, the barrel having a tapered insertion tip having a taper ratio greater than 1 to about 8. Independent claim 1 is illustrative of the claims on appeal and is reproduced below: 1. A tampon applicator comprising a barrel, said barrel having a tapered insertion tip with a plurality of petals, wherein the insertion tip has a taper ratio greater than 1 to about 8, wherein the taper ratio is a length of a projection of the insertion tip taper along a longitudinal axis of the barrel to a length of a projection of the insertion tip taper along a radius of the barrel at a base region of the plurality of petals, and wherein said plurality of petals each have a thickness of about 0.004 inches to about 0.022 inches, and wherein said plurality of petals have a substantially uniform thickness. REFERENCES RELIED ON BY THE EXAMINER Werner US 3,765,416 Oct. 16, 1973 Berger US 3,895,634 Jul. 22, 1975 Suga US 2001/0056253 A1 Dec. 27, 2001 "Taper" Oxford online dictionary, Feb. 2007 Appeal 2010-004810 Application 10/601,771 3 THE REJECTIONS ON APPEAL 1. Claims 1-6, 8-10, 13-22, 32-61, 63, 64 and 66-73 are rejected under 35 U.S.C. § 103(a) as being obvious over Suga and Berger (Ans. 3). 2. Claims 11, 12, 23-31, 62 and 65 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Suga, Berger and Werner (Ans. 6). ANALYSIS The Rejection of Claims 1-6, 8-10, 13-22, 32-61, 63, 64 and 66-73 as being obvious over Suga and Berger Each independent claim (i.e., claims 1, 37 and 72) requires a barrel applicator having a taper ratio1 at its insertion tip. The Examiner finds that Suga discloses an applicator barrel having the claimed taper ratio (Ans. 3). The Examiner further relies on Berger for disclosing the claimed thickness range but Appellants do not dispute these teachings of Berger (Ans. 3; App. Br. 10-11, Reply Br. 5). The Examiner concludes that one would be motivated to modify Suga with the thickness stated in Berger “to provide an easily-inserted apparatus” (Ans. 3-4). Appellants argue independent claims 1 and 37 together and repeat these arguments with respect to claim 72 (App. Br. 6, 11). Appellants 1 Independent claims 1 and 37 are similar in that they each define the taper ratio as a length of a projection of the insertion tip taper along a longitudinal axis of the barrel to a length of a projection of the insertion tip taper along a radius of the barrel at a base region of the insertion tip. Independent claim 72 defines the taper ratio as a ratio of the largest radius of the tapered barrel to a radius of the tapered barrel at a base region of the insertion tip. Independent claims 1 and 37 require the taper ratio to be “greater than 1 to about 8” while independent claim 72 requires a taper ratio “of about 1.2 to about 8.” Appellants disclose tapered insertion tip 24 having a base region radius CD (Spec. 5:15 to 6:5 and Fig. 2, see also 7:15 and Fig. 4). See also base region 48 (Fig. 5-6). Appeal 2010-004810 Application 10/601,771 4 contend that Suga does not disclose the claimed taper ratio and more specifically, that “Suga does not disclose or suggest any tapered2 applicator” (App. Br. 8). Appellants also address the Examiner’s annotated Figure 2 of Suga (see Ans. 9) stating that there is no support in Suga for such an annotation and that the Examiner relied on impermissible hindsight reconstruction for this annotation (App. Br. 8, see also Reply Br. 4). To show that Suga discloses the claimed taper ratio, the Examiner “maintains that tampon length A is equivalent to [the] length of projection of the insertion” (Ans. 9, see also Suga Fig. 2). We are not persuaded that Suga’s length A is equivalent as found by the Examiner because Suga teaches that dimension A is the full length of the enclosed tampon (Suga ¶ [0011] and Fig. 2) while the claims are directed to the longitudinal axis BD of the tapered insertion tip of the barrel (see App. Br. 9 and Fig. 2, see also Reply Br. 4, 5). The Examiner also finds that the barrel’s “taper projection length” equals the “tapered tampon length A” which equals 20-60 mm (Ans. 3). We are not apprised of the rationale by which the Examiner equates the barrel’s “taper projection length” with “tapered tampon length A” (Ans. 3). We also are not certain how the Examiner arrived at the finding that tampon length A equals 20-60 mm (Ans. 3; App. Br. 9). Suga’s Paragraph 11 provides numerical ranges for the dimensions of A and L in Figure 2, as well as grip region 22 “plus 40-60 mm” but the Examiner does not provide analysis as to how these ranges lead to the finding that length A equals 20- 60 mm (Ans. 3). 2Appellants and the Examiner agree on the meaning of “tapered” (see Spec. 2:16 “tapered, or non-hemispherical” and Ans. 8 “the applicator can be tapered or non-hemispherical”). Appeal 2010-004810 Application 10/601,771 5 In the alternative, the Examiner proffers an “Alternative projection length” (see Examiner’s annotated Fig. 2 at Ans. 9) stating that this alternative length could be employed to satisfy Appellants’ claimed taper ratio of “greater than 1” (or “about 1.2” for claim 72). Appellants contend that if this “alternative projection length” were used, the resulting ratio “would be much less than one” because the Examiner’s alternative length would be less than the claimed radius, not more (Reply Br. 5). The Examiner does not clarify how comparing this apparently smaller dimension (i.e., smaller than Suga’s dimension A) with the barrel’s radius would result in a taper ratio within the claimed range. Furthermore, Suga is silent regarding the relative dimensions of the insertion tip and we decline to scale drawings when there is no indication that they are drawn to precise proportions. Accordingly, and based on the record presented, we are not persuaded that the grounds for rejection can be sustained due to a lack of articulated reasoning with rational underpinning. We reverse the rejection of claims 1-6, 8-10, 13-22, 32-61, 63, 64 and 66-73. The Rejection of Dependent Claims 11, 12, 23-31, 62 and 65 as being unpatentable over Suga, Berger and Werner Each of these dependent claims depend directly or indirectly from either independent claim 1 or 37. We are not persuaded that the Examiner’s additional reliance on Werner cures the deficiency noted above and accordingly, we reverse the rejection of claims 11, 12, 23-31, 62 and 65. DECISION The rejections of claims 1-6 and 8-73 are reversed. Appeal 2010-004810 Application 10/601,771 6 REVERSED MP