11729702 (B.P.A.I. May. 18, 2012)

Ex Parte Tippey et al

Board of Patent Appeals and InterferencesMay 18, 2012

11729702 (B.P.A.I. May. 18, 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. 11/729,702 03/29/2007 Darold Dean Tippey 64129991US01 6383 23556 7590 05/18/2012 KIMBERLY-CLARK WORLDWIDE, INC. Tara Pohlkotte 2300 Winchester Rd. NEENAH, WI 54956 EXAMINER MARCETICH, ADAM M ART UNIT PAPER NUMBER 3761 MAIL DATE DELIVERY MODE 05/18/2012 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 DAROLD DEAN TIPPEY, ANDREW MARK LONG, THOMAS MICHAEL ALES III, and THOMAS DAVID EHLERT __________ Appeal 2011-001708 Application 11/729,702 Technology Center 3700 __________ Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and STEPHEN WALSH, Administrative Patent Judges. WALSH, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the rejection of claims directed to an absorbent article comprising a conductive element, a kit comprising an absorbent article, and a method of exposing internal conductive elements to an external surface of an absorbent article. The Patent Examiner rejected the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2011-001708 Application 11/729,702 2 STATEMENT OF THE CASE Claims 1-20 are on appeal. Claims 1 and 14 are representative and read as follows (emphasis added): 1. An absorbent article comprising, a liner and a outercover in facing relation; and at least one conductive element located between the liner and the outercover, wherein at least a portion of the conductive element is exposed through at least one of the liner and the outercover to define at least one external contact point and wherein the at least one external contact point defines a perimeter and wherein at least one of the liner and the outercover is sealed about the perimeter. 14. A method of exposing portions of internally positioned conductive elements to an external surface of an absorbent article, comprising, providing an outercover and liner in facing relation with a conductive element located therebetween; at least partially exposing a portion of the conductive element through the outercover to define at least one external contact point on an outer article surface; and sealing the outercover about a perimeter of the at least one external contact point by at least partially melting portions of the outercover. The Examiner rejected the claims as follows:  claims 1-6 and 8-13 under 35 U.S.C. § 103(a) as unpatentable over Huang1 and Long;2 and  claim 7 under 35 U.S.C. § 103(a) as unpatentable over Huang, Long, and Nissim;3  claims 14-16 and 18-20 under 35 U.S.C. § 103(a) as unpatentable over Huang, Long, and Herrin;4 and 1 Chien-Tung Huang et al., US 2004/0147888 A1, published July 29, 2004. 2 Andrew Mark Long, US 2006/0244614 A1, published Nov. 2, 2006. 3 Ofer Nissim et al., US 5,760,694, issued June 2, 1998. Appeal 2011-001708 Application 11/729,702 3  claim 17 under 35 U.S.C. § 103(a) as unpatentable over Huang, Long, Herrin, and Xie.5 OBVIOUSNESS The rejections will be treated together because the same issue is dispositive for each rejection. The Examiner’s position is that Huang disclosed the invention “substantially as claimed,” but was silent regarding an external contact point that defines a perimeter, and did not explicitly disclose a sealed perimeter formed about the exposed portion of its connecting member. (Ans. 4.) The Examiner found that “Long suggests that sealing the perimeter about conductive pad members maintains their structure and prevents short- circuiting (¶ [0064], pad members protected beneath layer). A sealed perimeter prevents short-circuiting and exposes the contacts for electrical connection with a sensor device,” and that “one would be motivated to modify Huang with the sealing as suggested by Long to maintain electrical contacts, prevent short circuits and expose the contacts to a sensor.” (Id. at 5.) Appellants disagree that Huang disclosed a portion of a conductive element being exposed because, according to Appellants, Huang exposed only a connecting member (23) attached to a conductive element, not the conductive element itself, and Huang’s connecting member 23 extends out of the end of the outer cover, not through the outer cover. (App. Br. 5-6.) This argument is unpersuasive in view of Huang’s Figures 5 and 6. Figure 5 4 Robert M. Herrin et al., US 5,788,797, issued August 4, 1998. 5 Alex J. Xie, US 4,768,023, issued Aug. 30, 1988. Appeal 2011-001708 Application 11/729,702 4 makes clear that conductive elements 201 and 202 are continuous to the end of connector 23. Figure 6 makes clear that the connective elements 201 and 202 necessarily pass through the outer layer. Appellants also dispute the rejection’s findings regarding Long’s disclosure. First, Appellants contend that Long’s ¶ 0064 does not disclose an external contact point of the conductive element having a perimeter where the outer cover is sealed about the perimeter, as required in claims 1-6 and 8-9, but rather merely states that it is advantageous to “[position] the pad members 104 and 106 below at least one layer of material.” Appellants respectfully submit the positioning the pad members below a layer of material is not the same as “sealing.” (Id. at 7.) Second, Appellants contend that Long’s pad members positioned on an exterior surface are not the conductive elements and do not suggest exposing the conductive element. (Id.) Third, Appellants contend that Long’s prong receiving members are not the conductive elements, and that none of Long’s prong embodiments described sealing a perimeter about an external contact point. (Id. at 7-8.) We agree with Appellants that the evidence supports these three contentions. That is, the rejection’s findings to the contrary are not supported by the evidence. As all the rejections rely on these unsupported findings, the rejections must be reversed. SUMMARY We reverse the rejection of claims 1-6 and 8-13 under 35 U.S.C. § 103(a) as unpatentable over Huang and Long. We reverse the rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable over Huang, Long, and Nissim. We reverse the rejection of claims 14-16 and 18-20 under 35 U.S.C. Appeal 2011-001708 Application 11/729,702 5 § 103(a) as unpatentable over Huang, Long, and Herrin. We reverse the rejection of claim 17 under 35 U.S.C. § 103(a) as unpatentable over Huang, Long, Herrin, and Xie. REVERSED lp