Ex Parte Rice et al

Patent Trial and Appeal Board

Jul 26, 2013

11020453 (P.T.A.B. Jul. 26, 2013)

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.
11/020,453 12/22/2004 Jonathan K. Rice KCX-1441 (19077) 5522
22827 7590 07/26/2013
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
ANDERSON, CATHARINE L
ART UNIT PAPER NUMBER
3778
MAIL DATE DELIVERY MODE
07/26/2013 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JONATHAN K. RICE, WALTER C. READE,
DANIEL L. ELLINGSON, RHONDA K. JOCH, BRENDA M.
NELSON, DENISE J. NELSON, JAIME M. VITENSE,
TIMOTHY P. CLARE, CONNIE J. WARSHALL,
and JOHN P. VUKOS
____________________

Appeal 2011-007415
Application 11/020,453
Technology Center 3700
____________________

Before CHARLES N. GREENHUT, PATRICK R. SCANLON, and
BART A. GERSTENBLITH, Administrative Patent Judges.

SCANLON, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1-3, 32, and 33, which are all of the pending
claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellants’ claimed invention is directed to “a system . . . for
dispensing diapers, and in particular . . . for unfolding and dispensing
diapers.” Spec. 1, ll. 5-6. Claim 1, reproduced below, is the sole
independent claim and illustrative of the claimed subject matter.
1. A system for unfolding and dispensing
diapers, the system comprising:
a dispenser; and
a plurality of folded diapers within the
dispenser, wherein each folded diaper includes a
single lateral fold parallel to longitudinal ends of
the diaper and dividing the diaper into a first
section and a second section that lies against the
first section, the diapers disposed in a stack within
the dispenser such that the longitudinal ends are
against a side wall of the dispenser;
an elongated dispensing opening defined in
a bottom portion of the side wall, the opening
having an orientation and length generally equal to
the length of the longitudinal ends of the diapers
and a width generally equal to the thickness of one
of the first or second sections of the diapers; and
wherein the dispenser opening is configured
to engage and retain the longitudinal end of one of
the first or second sections within the dispenser as
the other respective longitudinal end is pulled from
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the dispenser to unfold the lateral fold as the diaper
is removed from the dispenser.
REFERENCES
The Examiner relies upon the following prior art references:
McFarland
Young
US 4,598,528
US 5,666,787
Jul. 8, 1986
Sep. 16, 1997
REJECTIONS
The following rejections are before us on appeal:1
I. Claims 1-3, 32, and 33 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
II. Claims 1-3, 32, and 33 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over McFarland and Young.
ANALYSIS
Rejection I
Independent claim 1 recites an “opening having an orientation and
length generally equal to the length of the longitudinal ends of the diapers
and a width generally equal to the thickness of one of the first or second
sections of the diapers.” The Examiner finds that the claims do not comply
with the written description requirement because this subject matter is not

1 Appellants also list the Examiner’s objection to new matter under 35
U.S.C. § 132(a) in the Grounds of Rejection to be Reviewed on Appeal
section of their Appeal Brief. App. Br. 3. However, that issue is reviewable
by petition under 37 C.F.R. § 1.181, and is not within the jurisdiction of the
Board. In re Mindick, 371 F.2d 892, 894 (CCPA 1967). See Manual of
Patent Examining Procedure (MPEP) §§ 706.01, 1002, and 1201.
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described in the Specification in such a way as to reasonably convey to one
of ordinary skill in the art that the inventors had possession of the claimed
invention at the time the application was filed. Ans. 3. Specifically, the
Examiner notes that Appellants’ Specification “discloses on page 4, lines 30-
31, the opening may have any shape or size, and on page 5, lines 1-2, the
shape of the opening will depend on the diaper,” but determines this does
not disclose “the length and width of the opening [being] generally equal to
the length and width of the diaper.” Id. The Examiner also finds that
“Figures 1 and 2 [of Appellants’ application] show an opening 33 that
appears longer and wider than the diaper 12,” and “it appears that the width
of the opening 33 is much larger than the thickness of the diaper.” Id. at 5.
In contrast, Appellants assert that their Figures 1 and 2 each “depicts a
dispenser 100 in which the opening 33 has a length generally equal to the
length of the longitudinal ends of the diapers 12 and a width generally equal
to the thickness of one of the first or second sections of the diapers 12.”
App. Br. 5. Appellants also argue that
having been informed that the shape of the opening 33
will depend in large part on the size, shape and type of
folds that are in the diaper 12, the person of ordinary skill
is informed that the opening will conform to the size,
shape and type of folds in the diaper.
Id. (citing Spec., 4, l. 30 – 5, l. 2).
We understand “longitudinal ends of the diapers” in light of the
Specification to mean the two edges of each diaper on opposing ends of the
diaper’s longitudinal or lengthwise dimension. Although not expressly
stated in Appellants’ written description, this interpretation is supported by
Figures 1 and 2, which show these edges as the edges of the diapers that pass
through the opening 33. Furthermore, we construe the term “generally
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equal,” in accordance with the plain and ordinary meanings of the words, to
mean roughly or approximately equal and to not require the compared
dimensions to be exactly equal.
Based on these interpretations, we agree with Appellants that Figures
1 and 2 show the length of the opening 33 (i.e., the longest dimension of the
opening 33 as shown in Figures 1 and 2) to be generally equal to the length
of the longitudinal ends of the diaper 12. We also agree that Figures 1 and 2
show the width of the opening 33 to be generally equal to the thickness of
either section 23, 24 of the diaper 12. Accordingly, we find that Figures 1
and 2 provide adequate written description for the claimed subject matter.
See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir. 1991)
(“drawings alone may provide a ‘written description’ of an invention as
required by § 112”).
The Examiner’s contention that Figures 1 and 2 appear to show the
opening 33 to be longer and wider than the diaper 12 (Ans. 5) does not
establish that the length and width of the opening are not “generally equal”
to the diaper’s longitudinal end length and thickness, respectively. The
opening 33 is shown to be only slightly longer and wider than the diaper 12,
and thus its length and width can be considered to be “generally equal” to
the corresponding dimensions of the diaper 12. We disagree with the
Examiner’s contention that “the width of the opening 33 is much larger than
the thickness of the diaper” (id.); rather, we view Figure 2 as showing the
opening 33 to be only slightly larger than the diaper thickness.
For the above reasons, we find by a preponderance of the evidence
that Appellants’ original disclosure demonstrates that Appellants had
possession of the claimed invention. We accordingly reverse the rejection of
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claims 1-3, 32, and 33 as failing to comply with the written description
requirement.
Rejection II
The Examiner finds that McFarland discloses the system of claim 1,
including a dispenser 110 having a diaper dispensing opening 112 as shown
in Figure 12, but does not disclose “the diapers being folded such that the
first and second sections lie against each other.” Ans. 4. The Examiner
further finds that Young discloses providing a plurality of folded diapers in a
dispenser and concludes it would have been obvious to one of ordinary skill
in the art to provide the dispenser of McFarland with diapers that are “folded
into first and second overlying sections . . . as taught by Young, to allow the
diapers to be closely stacked.” Id.
Appellants submit several arguments against this ground of rejection.2
First, Appellants assert that Figure 8 of McFarland fails to depict a stack of
folded articles, but simply illustrates a roll of articles in an unrolled state.
App. Br. 8-9. While stating that Figure 8 shows diapers to be “folded
generally in half,” the Examiner recognizes, as noted above, that McFarland
does not disclose “diapers being folded such that the first and second
sections lie against each other” and relies on Young as disclosing a stack of
folded diapers. Ans. 4. Appellants’ argument thus is not persuasive because
it addresses McFarland individually and fails to address the Examiner’s
proposed combination of McFarland and Young. One cannot show non-

2 Appellants advance no argument in connection with claims 2, 3, 32, and 33
other than their dependence from claim 1. App. Br. 11. We thus take claim
1 as representative pursuant to 37 C.F.R. § 41.37(c)(1)(vii) (2011), and
claims 2, 3, 32, and 33 stand or fall with claim 1.
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obviousness by attacking references individually where the rejection is based
on a combination of references. See In re Keller, 642 F.2d 413, 426 (CCPA
1981).
Appellants also argue that Figure 12 of McFarland “clearly illustrates
the slot 112 as having a width that is substantially greater than the thickness
of the article being removed.” App. Br. 10. To support this assertion,
Appellants point to the curled up side edges 24, 26 shown in Figure 3 of
McFarland as evidence that the slot 112 must have “a much greater width
than merely the thickness of the diaper.” Reply Br. 5.
We do not find these arguments persuasive. First, we do not agree
that Figure 12 shows the opening 112 to have a width that is substantially
greater than the thickness of the diaper or pad 116. Instead, we view Figure
12 as showing that the opening 112 is only slightly wider than the thickness
of the diaper 116. As noted above, the claim language “generally equal”
does not require the opening’s width to be exactly equal to the diaper
thickness but only that the dimensions are roughly or approximately equal,
which is shown in Figure 12. In addition, other embodiments of McFarland,
such as those depicted in Figures 11 and 15, show a diaper snugly passing
through an opening.
Second, we also disagree that McFarland’s curled up side edges 24,
26 necessarily mean the opening 112 must be much wider than the diaper
thickness. Figures 3 and 4 show a pad 10 assuming a shape (with
upstanding baffles 42 and 44) “that results when the elastics 24 and 26 relax
and contract.” McFarland, col. 4, ll. 22-26. Figures 1 and 2, which show the
pad 10 in a flat configuration without upstanding baffles, depict the pad 10
with “the elastics 24 and 26 in [an] extended condition.” McFarland, col. 4,
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ll. 20-21. Regarding the Figure 12 embodiment, McFarland does not
disclose that the elastics in the portion of the diaper or pad 116 being
withdrawn from the dispenser 110 are necessarily in the fully contracted
state depicted in Figures 3 and 4. Rather, Figure 12 shows this portion of the
diaper 116 to be pulled at least partially flat such that the elastics would be
more extended similar to the elastics 24 and 26 in Figures 1 and 2. See also
McFarland, fig. 10 (showing the portion of the pad pulled away from the roll
96 to be substantially flatter than the pads rolled on the roll 96). As such,
the upstanding or curled up edges of the diaper being pulled through the
opening 112 are not likely to be fully upstanding as shown in Figures 3 and
4. But even if the edges were fully upstanding as the diaper is pulled
through the opening 112, the length of these upstanding edges relative to the
diaper thickness, as depicted in Figure 4, would not require the width of the
slot to be more than “generally equal” to the diaper thickness.
Appellants further argue that it is not logical to combine McFarland
and Young in the manner proposed by the Examiner because McFarland
discloses “dispensers for various embodiments of rolled articles.” App.
Br. 10; see also Reply Br. 4. However, the proposed modification of
McFarland is the simple substitution of one known mechanical element for
another (i.e., a stack of diapers for a roll of diapers) that produces
predictable results. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416
(2007) (“when a patent claims a structure already known in the prior art that
is altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result”). In
stating that the proposed modification would allow the diapers to be closely
stacked (Ans. 4), the Examiner provides adequate reasoning based on
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rational underpinnings to explain why one of ordinary skill would have been
led to make the modification.
In addition, we are not persuaded by Appellants’ argument that
combining McFarland and Young would render McFarland unsatisfactory
for its intended purpose. App. Br. 11. Although McFarland discloses that
the side edges of the diaper or pad can wrap around the ends of the roll of
diapers (see McFarland, fig. 10), there is no indication that this feature is
critical to all embodiments of McFarland, particularly given the fact that the
diaper is pulled away from the roll as it is withdrawn through the dispenser
opening (see McFarland, fig. 12). Furthermore, as correctly noted by the
Examiner, providing McFarland with folded diapers would not destroy the
intended function because the diapers would resume the curled configuration
once unfolded upon being dispensed. Ans. 6.
Appellants also argue that the Examiner improperly relies on Young
because this reference “really deals with tissues and is limited to a plurality
of separated sheets.” Reply Br. 4. This argument is not persuasive. While it
is true that the bulk of Young’s disclosure discusses tissues, both the title
and claims of Young explicitly refer to diapers. Moreover, the reference
also states “[t]he present invention may also be used with other compressible
articles, such as diapers, sanitary napkins, gauze or cotton pads, table
napkins, etc.” Young, col. 10, ll. 12-14 (emphasis added).
In view of the above, we sustain the rejection of claim 1, and of
claims 2, 3, 32, and 33 grouped therewith, under 35 U.S.C. § 103(a) as being
unpatentable over McFarland and Young.
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DECISION
We reverse the Examiner’s rejection of claims 1-3, 32, and 33 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
We affirm the Examiner’s rejection of claims 1-3, 32, and 33 under 35
U.S.C. § 103(a) as being unpatentable over McFarland and Young.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136 (a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

rvb