Ex Parte Osborn et al

Board of Patent Appeals and Interferences

Jan 17, 2012

10860910 (B.P.A.I. Jan. 17, 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.
10/860,910 06/04/2004 Thomas Ward Osborn III 9660 1559
27752 7590 01/17/2012
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
KIDWELL, MICHELE M
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
01/17/2012 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 THOMAS WARD OSBORN III, DIANA LYNNE GANN,
CHARLES JOHN BERG JR., and JACQUELINE ANN DANIELS
__________

Appeal 2010-007403
Application 10/860,910
Technology Center 3700
__________

Before LORA M. GREEN, JEFFREY N. FREDMAN, and
ERICA A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
tampon applicator. The Patent Examiner rejected the claims as anticipated
and obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

Appeal 2010-007403
Application 10/860,910

2
STATEMENT OF THE CASE
Claims 1-13, 16-19, and 21-31 are on appeal. Claim 1 is
representative and reads as follows:
1. A tampon applicator for positioning a tampon inside a vaginal cavity,
said applicator comprising:

i. an outer member disposed co-axially with an inner member for
insertion of said tampon into said vaginal cavity, said outer member
having an insertion end, the insertion end adapted to be inserted first
into the vaginal cavity, and a second end opposite the insertion end;

ii. said inner member being slidable within said outer member, said inner
member having a first end adapted to contact said tampon and a
second end opposite the first end;

wherein at least 15% of a length of said tampon remains in said outer
member after 1250 grams of force has been applied to the second end of the
inner member to fully engage the inner member with said outer member to
define a remaining portion of said tampon, said remaining portion of said
tampon requiring a force of less than about 0.30 N to be removed from said
tampon applicator.

The Examiner rejected claims 1-13, 16-19, and 21-31 under 35 U.S.C.
§102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
obvious over Mackay.
1

Appellants have not argued claims 2-13, 16-19, and 21-31 separately,
therefore these claims stand or fall with claim 1. 37 C.F.R. 41.37(c)(1)(vii).

1
Patent No. US 6,358,223 B1 issued to Lisa Ann Mackay et al., Mar. 19,
2002.
Appeal 2010-007403
Application 10/860,910

3
The Issue
The Examiner found that Mackay disclosed a tampon applicator for
positioning a tampon, with said applicator comprising an outer member and
an inner member. (Ans. 3.) The Examiner found that “[w]hen the inner
member 25 is fully engaged with the outer member 23 (i.e. the inner member
is entirely contained within the outer member, as shown in figure 1) at least
35% of the length of the tampon remains in the applicator.” (Id.) The
Examiner also found that it was well known in the art that the normal length
of a tampon is about 2 inches, i.e., 50.8 mm long. (Id.) Additionally, the
Examiner found that Mackay taught that the unjoined portions of the tampon
divide from between about 5 mm to about 60 mm. (Id.) Therefore,
according to the Examiner, when Mackay‟s unjoined portions divide at 5
mm this would result in about 45 mm, or approximately 85%, of the tampon
remaining in the outer member when the inner member is fully engaged.
(Id. at 3-4.) The Examiner further found that this configuration of Mackay‟s
invention would allow for the claimed removal force, as shown in the chart
set forth on page 10 of Applicants‟ Specification. (Id. at 4.)
Alternatively, the Examiner found that a skilled artisan could
reasonably expect to use the same amount of removal force with Mackay‟s
applicator as the claimed invention because Mackay is directed to “a
conventional structure used for conventional purposes and would require at
least the same amount of removal force.” (Id.) Further, the Examiner found
that the force used may be modified based on the disclosure of various
lengths of unjoined portions being expelled, and doing so was within the
ordinary skill in the art. (Id.)
Appeal 2010-007403
Application 10/860,910

4
Appellants contend that the Examiner “has not set forth any evidence
that Mackay teaches or suggests the claimed lengths (or any length) that
would remain in the outer member after 1250 grams of force have been
applied to the inner member.” (App. Br. 5.) According to Appellants,
Mackay instead taught that its applicator has guides with guidance plates
“designed to substantially not move and/or move only within certain
minimal parameters, [such that] an expelling tampon, once it meets the
guides 28, will optimally be caused to expel directionally from the tampon
holder tube 22 by the angular surfacing of the guidance plates 29.” (Id.)
Appellants also assert that Mackay taught that guides “provide a resistance
to applied force to the tampon 40 as it is pushed through the tampon holder
tube 22” and that the guidance ridges are preferably “stiff enough to
substantially resist moving as the un-joined and/or semi-joined portions of a
tampon 40 expel therethrough.” (Id.)
Further, Appellants assert that contrary to the Examiner‟s finding,
Mackay‟s figure 1 “does not depict the „fully engaged‟ limitation of the
claims,” but instead shows that “the guides 28 operate to remain
substantially close to their pre-expelled position during the expulsion of part
of the tampon 40 from the tampon holder tube 22.” (Id. 5-6.) Thus,
Appellants assert that the Examiner “has not set forth any evidence that
removal of the remaining portion of the tampon after 1250 grams of force
have been applied to the inner member would require less than the claimed
amount of force.” (Id. at 5.)
Appellants submit the declaration of Dr. Osborn “[a]s evidence of
what Mackay teaches to one of ordinary skill in the art….” (Id. at 6.)
Appeal 2010-007403
Application 10/860,910

5
The issue is whether the preponderance of evidence on this record
supports the Examiner‟s finding that Mackay teaches the claimed tampon
applicator.
Findings of Fact
1. The Examiner‟s findings may be found at Ans. 3-5.
2. The Examiner relies on Figure 1 of Mackay, reproduced below:

Figure 1 depicts a perspective drawing of Mackay‟s tampon applicator 20
and tampon 40 being expelled therethrough. (Mackay col 5, ll. 10-11.)
3. Appellants do not dispute the Examiner‟s finding that Mackay‟s
tampon applicator 20 comprised an outer member 23 and an inner member
24. (See App. Br. 4-7; Ans. 3.)
4. The Specification defines the term “fully engaged” as occurring either
“when the second end of the inner member is flush with the second end of
Appeal 2010-007403
Application 10/860,910

6
the outer member or after 1250 grams of force has been applied to the end of
the inner member.” (Spec. 4, ll. 32-34)(emphasis added).
Principles of Law
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987).
While features of a product or apparatus may be recited either
structurally or functionally, claims directed to the product or apparatus must
be distinguished from the prior art in terms of structure rather than function.
In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997) (The absence of a
disclosure in a prior art reference relating to function did not defeat the
Board‟s finding of anticipation of a claimed apparatus because the structure
limitations at issue were found to be inherent in the prior art reference.).
Where, as here, the claimed and prior art products are identical
or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed
product.… Whether the rejection is based on „inherency‟ under
35 U.S.C. § 102, on „prima facie obviousness‟ under 35 U.S.C.
§ 103, jointly or alternatively, the burden of proof is the same,
and its fairness is evidenced by the PTO‟s inability to
manufacture products or to obtain and compare prior art
products.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
Analysis
After considering all the evidence and arguments, we conclude that
the record supports the Examiner‟s finding that Mackay anticipates the
claimed tampon applicator. In particular, we agree with the Examiner (Ans.
Appeal 2010-007403
Application 10/860,910

7
5) that the recitation in claim 1 requiring “at least 15% of a length of said
tampon remains in said outer member after 1250 grams of force has been
applied to the second end of the inner member to fully engage the inner
member with said outer member” is a functional recitation that does not
distinguish the prior art in terms of structure. The Specification defines the
term “fully engaged” as occurring either “when the second end of the inner
member is flush with the second end of the outer member or after 1250
grams of force has been applied to the end of the inner member.” (FF-4;
Ans. 6)(emphasis added). Thus, Mackay‟s applicator satisfies the functional
recitation of the claim when a user applies 1250 grams of force to the end of
the inner member and at least 15% of the length of the tampon remains in
the outer member. See Schreiber, 128 F.3d at 1477-78.
We agree with the Examiner that a skilled artisan would reasonably
expect Mackay‟s applicator to be capable of such function, because like the
claimed invention, Mackay was directed to a conventional tampon applicator
comprising an outer member and inner member as recited in claims. (FF-3;
Ans. 3-4, 7.) The Examiner has presented sufficient evidence to shift the
burden to Appellants to demonstrate that Mackay‟s applicator would not
have satisfied the functional limitations. See Best, 562 F.2d at 1255
(“Whether the rejection is based on „inherency‟ under 35 U.S.C. § 102, on
„prima facie obviousness‟ under 35 U.S.C. § 103, jointly or alternatively, the
burden of proof is the same, and its fairness is evidenced by the PTO‟s
inability to manufacture products or to obtain and compare prior art
products”). Appellants have not presented evidence to establish otherwise.
Appellants merely assert that Mackay‟s applicator comprised guides having
guidance plates designed to cause an expelling tampon to be expel
Appeal 2010-007403
Application 10/860,910

8
directionally from the tampon holder tube or that the guides provide a
resistance to applied force to the tampon as it is pushed through the tampon
holder tube. (See App. Br. 5.)
Appellants also assert that Mackay‟s figure 1 “does not depict the
„fully engaged‟ limitation of the claims.” (App. Br. 5.) In support of this
contention, Appellants submit the declaration of Dr. Osborn. (Id. at 6.)
While we recognize Dr. Osborn‟s apparent expertise in the field of feminine
care products (see Osborn Dec. ¶¶ 1-2) we do not find that his statements
and conclusions carry persuasive weight. In particular, we are not persuaded
by Dr. Osborn‟s “opinion that less than 15 % of a length of a tampon would
remain in the structure of Mackay when the plunger is fully engaged with
the outer member.” (Id. at ¶ 5.) According to Dr. Osborn, a skilled artisan
would not consider Mackay‟s Figure 1 as disclosing a plunger, i.e., inner
member, fully engaged with the outer member. (Id. at ¶¶ 15, 18, 21.) After
acknowledging the Specification definition of the term “fully engaged” (id.
at ¶ 16) Dr. Osborn states that “it is my opinion that one ordinarily skilled in
the art would understand that „fully engaged‟ in the context of the invention
further means that the plunger has been fully plunged to a maximum
predetermined length along the outer member, such that an amount of the
tampon is left in the outer member that can be easily removed from the outer
member by the user‟s body without additional plunging.” (Id. at ¶
17)(emphasis added). Thus, we are not persuaded by the foregoing opinions
of Dr. Osborn as they are based upon an improperly limited definition of the
term “fully engaged” that excludes the scenario wherein “1250 grams of
force has been applied to the end of the inner member,” as described in the
Specification.
Appeal 2010-007403
Application 10/860,910

9
Dr. Osborn‟s declaration also states that it is his “opinion that the
tampon shown in Figure 1 of Mackay could not be removed from the partial
expulsion position of Figure 1 without further plunging and/or application of
force greater than the claimed force to pull the tampon from the applicator
and past the guides.” (Id. at ¶ 22.) According to Dr. Osborn, “[i]t is not
clear how this force to pull the tampon from the applicator and past the
guides would be applied within the user‟s body except by further plunging.”
(Id.) Thus, Dr. Osborn‟s opinion again relies on his improperly limited
definition of the term “fully engaged,” i.e., “that the plunger has been fully
plunged” and that the tampon remaining in the outer member can be
removed from the “outer member by the user‟s body without additional
plunging.” (See id. ¶ 17.) Dr. Osborn provides no experimental data, no
physical or mathematical calculations, or any other type of factual evidence
to support his opinion. Consequently, this opinion by Dr. Osborn also
carries no persuasive weight. See, e.g., In re Am. Acad. of Sci. Tech Ctr.,
367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the
declarations and conclude that the lack of factual corroboration warrants
discounting the opinions expressed in the declarations.” (citations omitted)).
Indeed, the claims do not require a “force to pull the tampon from the
applicator” or otherwise exclude “further plunging” as the force applied to
remove the remaining portion of the tampon from the applicator.
Accordingly, we conclude that the preponderance of the evidence of
record supports the Examiner‟s finding that Mackay teaches the claimed
invention. See Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d at
631. Further, because “„anticipation is the epitome of obviousness,” In re
McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002) (citation omitted) we
Appeal 2010-007403
Application 10/860,910

10
affirm the Examiner‟s alternative rejection of the claims under 35 U.S.C. §
103(a) as being rendered obvious by Mackay.

CONCLUSIONS OF LAW
The preponderance of evidence on this record supports the
Examiner‟s finding that Mackay anticipates the claimed tampon applicator
and therefore the preponderance of evidence on this record also supports a
conclusion of obviousness.

SUMMARY
We affirm the rejection of claims 1-13, 16-19, and 21-31 under 35
U.S.C. §102(b) as anticipated by or, in the alternative, under 35 U.S.C.
§103(a) as obvious over Mackay.

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

alw