11336513 (B.P.A.I. Jul. 20, 2012)

Ex Parte van Zuilekom

Board of Patent Appeals and InterferencesJul 20, 2012

11336513 (B.P.A.I. Jul. 20, 2012)

MOD PTOL-90A (Rev.06/08) APPLICATION NO./ CONTROL NO. FILING DATE FIRST NAMED INVENTOR / PATENT IN REEXAMINATION ATTORNEY DOCKET NO. 11/336,513 01/20/2006 Van Zuilekom, Linda Joy EXAMINER Brinks Hofer Gilson & Lione/Ann Arbor 524 South Main Street Suite 200 Ann Arbor, MI 48104 Parsley, David ART UNIT PAPER NUMBER 3643 MAIL DATE DELIVERY MODE 07/23/2012 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. UNITED STATES DEPARTMENT OF COMMERCE U.S. Patent and Trademark Office Address : COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov UNITED STATES PATENT AND TRADEMARK OFFICE _____________________________________________________________________________________ UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte LINDA JOY VAN ZUILEKOM __________ Appeal 2011-002676 Application 11/336,513 Technology Center 3600 __________ Before DONALD E. ADAMS, DEMETRA J. MILLS, and JEFFREY N. FREDMAN, Administrative Patent Judges. MILLS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134. The Examiner has rejected the claims for anticipation and obviousness. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2011-002676 Application 11/336,513 2 STATEMENT OF THE CASE Claim 1 is representative and reads as follows: 1. An absorbent article for use as a small animal toilet pad which comprises: a substantially flat base that includes an upper surface and a peripheral edge and comprises a liquid absorbent material; and at least one vertical panel that extends upward from a portion of the peripheral edge of the substantially flat base which portion of the peripheral edge is less than the entire peripheral edge of the peripheral edge of the substantially flat base and which at least one vertical panel includes an inner facing surface that faces the substantially flat base and comprises a liquid absorbent material, wherein said at least one vertical panel has a vertical height that is substantially greater than a thickness of the at least one vertical panel, the at least one vertical panel includes an exposed vertical surface for receiving and absorbing liquids and wherein at least end portions that are substantially aligned at an angle a from one another, wherein the angle a is 90° and, wherein each of: i) the upper surface of the substantially flat base can be folded onto itself, ii) the upper surface of the substantially flat base can be folded onto the inner facing surface of the at least one vertical panel, and iii) the inner facing surface of the at least one vertical panel can be folded onto itself, all without forming a sealed connection. Cited References The Examiner relies on the following prior art references: Valenta (translation) FR 2599585 Dec. 11, 1987 Yananton US 4,774,907 Oct. 4, 1988 Mack US 4,800,677 Jan. 31, 1989 Hodgson US 1,773,141 Aug. 19, 1930 Kamrath et al., US 5,715,772 Feb. 10, 1998 Grounds of Rejection  Claims 1-5, 7-10, 12-14 and 17-19 are rejected under 35 U.S.C. §102(b) as being anticipated by Valenta. Appeal 2011-002676 Application 11/336,513 3  Claims 3-6 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Valenta as applied to claim 1 above, and further in view of Yananton.  Claim 11 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Valenta as applied to claim 10, and further in view of Kamrath et al. or alternatively in view of Mack.  Claims 15-16 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Valenta as applied to claims 1 or 12 above.  Claim 20 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Valenta as applied to claim 1 above, and further in view of Mack. FINDINGS OF FACT The Examiner’s findings of fact are set forth in the Answer at pages 3- 9. The following facts are highlighted. 1. Valenta (translation, page 3) discloses a self-adhesive tape along the entire perimeter of an absorbent pad for an excrement receptacle. 2. Valenta discloses that when the lid of the receptacle is closed it places the adhesive portions of the tape in contact and to thereby hermetically seal the absorbent pad. (Translation, 3.) Appeal 2011-002676 Application 11/336,513 4 Discussion ISSUE The Examiner concludes that Valenta teaches each element claimed. Appellant argues that Valenta “is not taught or disclosed as being functionally capable of being folded so as to not form a sealed connection.” (App. Br. 8.) The issue is: Does the cited prior art teach an absorbent article wherein ii) the upper surface of the substantially flat base can be folded onto the inner facing surface of the at least one vertical panel, and iii) the inner facing surface of the at least one vertical panel can be folded onto itself, all without forming a sealed connection, as claimed? PRINCIPLES OF LAW In order for a prior art reference to serve as an anticipatory reference, it must disclose every limitation of the claimed invention, either explicitly or inherently. See In re Schreiber, 128 F.3d 1473, 1477(Fed. Cir. 1997). To anticipate, every element and limitation of the claimed invention must be found in a single prior art reference, arranged as in the claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). “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) (citations omitted). In order to determine whether a prima facie case of obviousness has been established, we consider the factors set forth in Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content Appeal 2011-002676 Application 11/336,513 5 of the prior art; (2) the differences between the prior art and the claims at issue; (3) the level of ordinary skill in the relevant art; and (4) objective evidence of nonobviousness, if present. Moreover, “obviousness 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)). ANALYSIS We do not find that the Examiner has provided sufficient evidence to support a prima facie case of anticipation of the subject matter of the pending claims over Valenta. Valenta (translation, page 3) discloses a self- adhesive tape along the entire perimeter of an absorbent pad for an excrement receptacle. Valenta discloses that when the lid of the receptacle is closed it places “the adhesive portions of the tape… in contact and to thereby hermetically seal the pad” (id.). Thus, Valenta discloses a pad which forms a sealed connection when folded onto itself. For this reason, Valenta does not anticipate the pending claims. With respect to the pending obviousness rejections, the Examiner provides no rationale as to why it would have been obvious to remove the tape seal of Valenta when the absorbent pad is folded onto itself. Thus we are constrained to also reverse the obviousness rejections which principally rely on Valenta. CONCLUSION OF LAW The cited prior art does not teach an absorbent article wherein ii) the upper surface of the substantially flat base can be folded onto the inner facing surface of the at least one vertical panel, and iii) the inner facing Appeal 2011-002676 Application 11/336,513 6 surface of the at least one vertical panel can be folded onto itself, all without forming a sealed connection, as claimed. The cited references do not support the Examiner’s anticipation and obviousness rejections. REVERSED alw