Ex Parte Sieck et al

Patent Trial and Appeal Board

Mar 30, 2018

13302508 (P.T.A.B. Mar. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/302,508 11/22/2011
23556 7590 04/03/2018
KIMBERLY-CLARK WORLDWIDE, INC.
Patent Docketing
2300 Winchester Rd.
NEENAH, WI 54956
FIRST NAMED INVENTOR
Jason K. Sieck
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
64767588US01 8175
EXAMINER
JALLOW, EYAMINDAE CROSSAN
ART UNIT PAPER NUMBER
3721
NOTIFICATION DATE DELIVERY MODE
04/03/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
Kimberly dark. docketing@kcc.com
nan.dotts@kcc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON K. SIECK, BRADLEY SCHOON, BRIAN R. VOGT,
and STEPHEN A. KOLASINSKI
Appeal2017-005721
Application 13/302,508
Technology Center 3700
Before ANNETTE R. REIMERS, FRANCES L. IPPOLITO, and
PAUL J. KORNICZKY, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Jason K. Sieck et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner's decision to reject claims 1, 3, 32, and 33 under 35
U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement. Claims 4--31 have been withdrawn from consideration. Claim
2 has been cancelled. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 The Examiner indicates that "[c]laims 1, 3, 32 and 33 would be allowable if
rewritten to overcome the rejection(s) under 35 U.S.C. l 12(a) or 35 U.S.C.
112 (pre-AIA), 1st paragraph, set forth in this Office action and to include all
of the limitations of the base claim and any intervening claims." Final Office
Action 5 (emphasis omitted) (hereinafter "Final Act.") (mailed Nov. 5, 2015).
Appeal2017-005721
Application 13/302,508
CLAIMED SUBJECT MATTER
The claimed subject matter relates to "a method of folding a pant-like
disposable absorbent garment." Spec. 2:2-3, Figs. 8-14. Claims 1, 32, and
33 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A method of folding a pant-like disposable absorbent
garment, the method defining a machine direction, a cross-
machine direction, and a vertical direction generally
perpendicular to both the machine direction and the cross-
machine direction, the machine direction and the cross-machine
direction together defining a transport plane, the method
compnsmg:
providing said garment, said garment having a waist
opening and two leg openings, said garment defining a
longitudinal direction and a transverse direction, said garment
defining a first waist side region adjacent a first side edge, a
second waist side region adjacent a second side edge, a waist
center region positioned transversely between the first waist side
region and the second waist side region, and a crotch region
longitudinally adjacent the waist center region, the garment
further including an absorbent core;
providing a chute, the chute comprising a first side wall
and a second side wall, the chute defining a chute width
extending from the first side wall to the second side wall, the
chute defining a first end having a first opening and a second end
having a second opening, the chute extending from the first end
to the second end in the vertical direction;
transporting the garment in the machine direction, such
that the longitudinal and transverse directions of the garment lie
substantially within the transport plane;
positioning the garment over the first opening of the chute;
urging the garment into the chute;
transporting the garment in the vertical direction within
the chute; and
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Appeal2017-005721
Application 13/302,508
folding the garment along a longitudinally extending first
fold line so as to position the first waist side region over the waist
center region, the first fold line being adjacent the first side wall,
and folding the garment along a longitudinally extending second
fold line so as to position the second waist side region over the
waist center region, the second fold line being adjacent the
second side wall, wherein both such folding steps occur while
the garment is in the chute.
ANALYSIS
Enablement
The Examiner determines that "[t]he [S]pecification fails to disclose
how the garment is folded along the first and second fold line, after said
garment has entered the chute." Final Act. 5. In particular, the Examiner
determines that "it is ... unclear, how to perform the method that permits
the waist side regions ( 60, 62) to move from a 90 degree orientation to that
of 180 degrees, within the chute." Ans. 2. 2
When rejecting a claim under the enablement requirement of
section 112, the PTO bears an initial burden of setting forth a
reasonable explanation as to why it believes that the scope of
protection provided by that claim is not adequately enabled by
the description of the invention provided in the specification of
the application.
In re Wright, 999 F.2d 1557, 1561---62 (Fed. Cir. 1993). Here, the
Examiner fails to carry that burden. The rejection does not articulate why
the disclosure provides insufficient information to enable a skilled artisan to
make and use the invention without undue experimentation, such as by
analysis of the Wands factors. See Final Act. 5; see also Ans. 2-3; In re
Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
2 Examiner's Answer (hereinafter "Ans.") (mailed Oct. 27, 2016).
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Appeal2017-005721
Application 13/302,508
We note that there is no requirement that Appellants' Specification
must enable every possible embodiment on which a claim can possible
read. In this case, the Specification describes that ( 1) Figures 8-14 "show
garments 50 in various stages of folding while in a chute 100" (Spec.
13:19-20 (emphasis added); see also id. at 15:10) and (2) "[i]n certain
embodiments, both the first and second side walls 104, 106 (whether
stationary or non-stationary) comprise vacuum holes through which vacuum
forces are imparted .... " (id. at 13:13-15) (emphasis added). The
Specification further describes that:
The transverse folding of the first and second waist side
regions 60, 62 in the chute 100 can be accomplished by any of a
variety of techniques. For example, folding the garment along
the first and second fold lines 61, 63 can be accomplished via the
use of protruding folding blades. For example, as the garment
50 travels in the vertical direction 26 within the chute 100, a pair
of folding blades can protrude into each trough through slots
present in respective side walls 104, 106. The motion of the
blades is configured to make contact with the waist side regions
60, 62, and to fold the waist side regions 60, 62 over the waist
center region 64. In an alternative example, folding the garment
along the first and second fold lines is accomplished via a pair
of compressed streams or blasts of air, such as compressed blasts
of air blown into the chute 100 from orifices present in the side
walls 104, 106.
Spec. 15:25-16:2 (emphasis added); see also Br. 5---6. 3 Upon review of
Appellants' disclosure, a skilled artisan would be enabled to "make or use
the [subject] invention" without resorting to undue experimentation. See
Ans. 2-3; see also Br. 5---6.
3 Appeal Brief (hereinafter "Br.") (filed Apr. 5, 2016).
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Appeal2017-005721
Application 13/302,508
Accordingly, we do not sustain the Examiner's rejection of claim 1, 3,
32, and 33 under 35 U.S.C. § 112, first paragraph, for lack of enablement.
Drawing Objection
The Examiner also objected to the drawings on the ground that "[t]he
specification only discloses that the garment is folded, but it fails to show
how the two flaps are folded 90 degrees from their original position." See
Final Act. 3. Ordinarily, an objection is reviewable by petition under 37
C.F.R. § 1.181 and a rejection is appealable to the Patent Trial and Appeal
Board. When the issue of new matter presented is the subject of both an
objection and a rejection, the issue is appealable. See Manual of Patent
Examining Procedure§ 608.04(c) (9th ed., Rev. 07.2015, Nov. 2015)
(providing that "where the alleged new matter is introduced into or affects
the claims, thus necessitating their rejection on this ground, the question
becomes an appealable one, and should not be considered on petition even
though that new matter has been introduced into the specification also"). In
this case, to the extent that the objection to the drawings in the Final Office
Action turns on the same issue(s) as the rejection under 35 U.S.C. § 112,
first paragraph, our decision with respect to the rejection is dispositive as to
the corresponding objection.
DECISION
We REVERSE the decision of the Examiner to reject claims 1, 3, 32,
and 33 under 35 U.S.C. § 112, first paragraph, for lack of enablement.
REVERSED
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