Ex Parte Thorson et al

Board of Patent Appeals and Interferences

Jun 7, 2012

11373029 (B.P.A.I. Jun. 7, 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.
11/373,029 03/10/2006 Russell Evan Thorson 21,939 6651
23556 7590 06/08/2012
KIMBERLY-CLARK WORLDWIDE, INC.
Tara Pohlkotte
2300 Winchester Rd.
NEENAH, WI 54956
EXAMINER
KIDWELL, MICHELE M
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
06/08/2012 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 RUSSELL EVAN THORSON,
ROBERT LEE POPP, and JOSEPH DANIEL COENEN
__________

Appeal 2011-002166
Application 11/373,029
Technology Center 3700
__________

Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a method of
manufacturing distinct disposable articles on a single machine. The
Examiner entered a rejection for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Claims 17-21 stand rejected and appealed (see App. Br. 2-3). Claim
17, the only independent claim, is representative and reads as follows:

Appeal 2011-002166
Application 11/373,029

2
17. A method of manufacturing several distinct disposable absorbent
articles on a single machine, said method comprising the steps
of:
a) forming an absorbent assembly having at least one absorbent layer
and cutting said absorbent assembly into individual absorbent
assemblies each into a predetermined size and shape;
b) moving a bodyside liner into alignment with said individual
absorbent assemblies and applying an outer cover to said
individual absorbent assemblies to form a continuous web
having a primary stretch in a cross-direction;
c) adding at least one of the following components to either said
bodyside liner, said individual absorbent assemblies or to said
outer cover by activating certain applicators at a predetermined
time: a surge layer, a skin care formulation, at least one pair of
containment flaps, at least one pair of side panels, elastics
which will correspond to at least one of the following regions of
each of said individual absorbent articles: a crotch region, a
waist region and leg opening regions, at least one pair of ear
panels, and at least one fastener;
d) cutting a pair of leg openings in said web;
e) severing said continuous web in a cross-direction to form individual
absorbent articles;
f) folding said individual absorbent articles at least once;
g) stacking said folded absorbent articles into at least one orderly pile;
and
h) wrapping a package around said one or more orderly piles.

The sole rejection before us for review is the Examiner‟s rejection of
claims 17-21 under 35 U.S.C. § 103(a) as being obvious over Gundersen
1

and Lee
2
(Ans. 3-5).
DISCUSSION
The Examiner cited Gundersen as describing a process of making
several distinct absorbent articles on a single machine, substantially as

1
WO 95/32695 A1 (published December 7, 1995).
2
WO 99/23984 A1 (published May 20, 1999).
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Application 11/373,029

3
recited in claim 17, except for a stretchable web on the produced article,
which the Examiner concluded would have been obvious in view of the
material used by Gundersen, and also except for the claimed folding,
stacking, and wrapping steps, which the Examiner concluded would have
been obvious in view of Lee (Ans. 4-5).
Appellants argue that claim 17 recites “a method of manufacturing
several distinct disposable absorbent articles on a single machine” and
therefore “one advantage of the invention is providing the ability for
manufacturing at least three different absorbent articles on the same machine
without the need for assembling and/or disassembling additional equipment
on the machine” (App. Br. 3 (citing (Spec. 3:20-31 and 16:27-28)). In
contrast, Appellants argue, Gundersen does not disclose manufacturing at
least three different absorbent articles on a single machine, but instead “is
replete with references to the need for assembling, disassembling or
otherwise changing out working devices carried by carrier plates in a
framework in order to create different machines to produce different
products” (id. at 4).
We agree with Appellants that the Examiner has not made out a prima
facie case of obviousness as to claim 17.
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993).
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4
“[O]bviousness requires a suggestion of all limitations in a claim.”
CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003)
(citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)).
Here, claim 17 is directed to “[a] method of manufacturing several
distinct disposable absorbent articles on a single machine” (App. Br. 9). As
the Specification explains, “[b]y „several‟ it is meant that at least three
different kinds of disposable absorbent articles can be manufactured on the
single machine. For example, the apparatus 10 and the method can be used
to manufacture an infant diaper, a child training pant and/or an adult
incontinent undergarment” (Spec. 3).
As the Specification further explains, the machine used in Appellants‟
method has various applicator elements that can be activated and/or
deactivated so as to add a particular combination of desired components to
the absorbent assemblies and thereby produce a desired type of absorbent
article (see id. at 16). Thus, to use a single machine to manufacture different
kinds of absorbent articles as recited in claim 17, step (c) of the claim
requires the practitioner to activate certain applicators at a predetermined
time so as to add at least one of a number of various components to the
individual absorbent assemblies.
To address claim 17‟s requirement of producing several distinct
articles on a single machine, the Examiner found that “Gundersen sets forth
the teaching of programming the apparatus to perform various functions, as
desired, to result in size changes (i.e., distinct products) as set forth in col.
10, lines 58 – 65” (Ans. 5; see also id. at 7).
In reviewing Gundersen, however, we find neither a column 10, nor
that column‟s lines 58-65. We acknowledge that pages 8 and 10 of
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5
Gundersen do refer to “a central computer” that controls all of the working
devices in the production line that assembles the absorbent articles
(Gundersen 8, 10).
The Examiner does not, however, point us to any direct or inferential
teaching in Gundersen suggesting that the computer can be programmed to
allow the production line to produce absorbent articles of different sizes or
types, or that Gundersen‟s production line would be capable of actually
making absorbent articles of different sizes or types, without being
disassembled and reassembled with different parts, as Appellants argue. Nor
is any such teaching evident in either reference.
Thus, as the Examiner has not adequately explained how or why
Gundersen and Lee teach or suggest the use of a single machine to produce
distinct types of absorbent articles as required by claim 17, we reverse the
Examiner‟s rejection of that claim, and its dependents, as obvious over those
references.

REVERSED

cdc