Ex parte AHR et al.

Board of Patent Appeals and Interferences

Nov 30, 1999

08422676 (B.P.A.I. Nov. 30, 1999)

Application for patent filed April 13, 1995. According to the1
appellants, the application is a continuation of Application No. 08/081,733,
filed June 23, 1993, now abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte NICHOLAS A. AHR and GARY D. LAVON
____________
Appeal No. 1998-2791
Application No. 08/422,6761
____________
ON BRIEF
____________
Before STONER, Chief Administrative Patent Judge and FRANKFORT
and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 28, 29, 31 through 34 and 36. Claim 35,
the only other claim pending in this application, stands
Appeal No. 1998-2791
Application No. 08/422,676
withdrawn from further consideration under 37 CFR § 1.142(b)
as being directed to a non-elected species.
We REVERSE.
Appeal No. 1998-2791 Page 3
Application No. 08/422,676
BACKGROUND
The appellants' invention relates to a disposable
absorbent article comprising an inflatable component and first
and second materials disposed on the article separated by a
breakable barrier, wherein the first and second materials are
combinable (by breaking of the barrier) to inflate the
inflatable chamber. An understanding of the invention can be
derived from a reading of exemplary claim 28, which appears in
the appendix to the appellants' brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Whyte 3,921,232 Nov. 25,
1975
Kato 4,781,645 Nov.
1, 1988
Lieberman 4,929,214 May
29, 1990
The following rejection is before us for review.
Claims 28, 29, 31-34 and 36 stand rejected under 35
U.S.C. § 103 as being unpatentable over Whyte in view of
Lieberman and Kato.
Reference is made to the brief (Paper No. 22) and reply
brief (Paper No. 25) and the non-final Office action mailed
Appeal No. 1998-2791 Page 4
Application No. 08/422,676
In lieu of repeating the explanation of the rejection, the answer on2
page 3 states “[s]ee page 2, lines 1-4 of the FINAL rejection, Paper No. 18.”
The final rejection, however, similarly refers to "page 3, line 11 - page 6,
line 12 of the last Office action, Paper No. 15." Such a procedure by the
examiner is inappropriate. The Manual of Patent Examining Procedure (MPEP)
§ 1208 (6th ed., Revision 3, Jul. 1997), as written at the time the answer was
mailed, expressly provided that incorporation by reference may be made only to
a single other action. That provision remains unchanged in the current MPEP
§ 1208 (7th ed., Jul. 1998).
March 25, 1996 (Paper No. 15), final rejection (Paper No. 18)
and answer (Paper No. 23) for the respective positions of the2
appellants and the examiner with regard to the merits of this
rejection.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we shall not
sustain the examiner's rejection.
Whyte discloses self-inflating structures comprising
plural compartments which are "individually inflated at the
point of use at the time of need as a dependent function of
being used" (column 1, lines 21-24). More particularly, Whyte
discloses absorbent structures, such as absorbent bed pads and
Appeal No. 1998-2791 Page 5
Application No. 08/422,676
As used by Whyte, "semipermeable" describes material which is3
substantially pervious to the liquid (bodily fluids) sought to be absorbed by
the absorbent material (31) and substantially impervious to gas evolved within
the pillows, as discussed infra (column 5, lines 58-61).
disposable diapers (40) which have low bulk prior to being
inflated while enabling, when inflated, the resilient
absorbent material (31) therein to absorb relatively large
quantities of liquid compared to the amount of liquid such
absorbent material could absorb if compressed under the weight
of a bed patient or a sitting or lying infant (column 5, lines
23-32). The diaper disclosed by Whyte (Figures 8-10)
comprises a laminated back sheet (200) including a
substantially impervious lamina (222) and a semipermeable3
lamina (223), an absorbent pad (31), a hydrophilic wicking
sheet (228) and a hydrophobic top sheet (229). Upon wetting
of the diaper from the upwardly facing side, the wicking sheet
distributes moisture across a relatively large surface of the
portions of lamina (223) defining self-inflatable pillows
(21). Such moisture permeates lamina (223) and reacts with
gas evolving material (24) comprising any of the materials
enumerated in column 3, lines 41-46, disposed within the
pillows (21) to cause release of carbon dioxide which then
Appeal No. 1998-2791 Page 6
Application No. 08/422,676
inflates the pillows (21). Thus, the body weight of the user
becomes supported by the inflated pillows (21) such that the
absorbent material (31) expands, whereby its absorption
capacity is increased.
We understand Whyte to disclose self-inflating absorbent
articles having a plurality of inflatable chambers which are
individually activated or inflated by absorption of bodily
fluids when in use. Although the articles are capable of
being activated or inflated by purposefully wetting the top
faces thereof, such use of the articles is neither disclosed
nor suggested by Whyte.
Kato and Lieberman both disclose inflatable devices, such
as balloons, bags, dolls and the like (column 1, lines 7-10,
of Lieberman and column 1, lines 35-44, of Kato) comprising
gas (carbon dioxide) evolving material and an activator
material (such as water) disposed in a gas-permeable enclosure
within the inflatable device and separated from one another by
a breakable barrier. Upon rupturing the breakable barrier by
application of pressure from the hands of the user, the
activator material and gas evolving material combine and react
to evolve gas, whereby the device is inflated.
Appeal No. 1998-2791 Page 7
Application No. 08/422,676
The examiner recognizes that Whyte differs from the
invention recited in claim 28 in that it lacks at least "a
breakable barrier" separating the gas evolving material (24)
from the activator material (Paper No. 15, page 3), but
asserts that
[t]o employ a liquid impervious breakable packet
containing the liquid, i.e. and thus necessarily a
predetermined quantity or amount thereof, inside a
gas permeable envelope both of which are inside a
gas impermeable inflatable component as taught by
Lieberman and Kato on the Whyte device would be
obvious to one of ordinary skill in the art in view
of the recognition that such a feature would provide
a self inflating structure which is simplified in
structure, economically efficient and/or reliably
inflated while still providing the ability of
individual inflation at the point of use at the time
of need and the desirability of such in any self
inflating device and/or the Whyte device [Paper No.
15, page 4].
The test for obviousness is what the combined teachings
of the references would have suggested to one of ordinary
skill in the art. See In re Young, 927 F.2d 588, 591, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981). Indeed, a prima
facie case of obviousness is established where the reference
teachings would appear to be sufficient for one of ordinary
Appeal No. 1998-2791 Page 8
Application No. 08/422,676
skill in the art having those teachings before him to make the
proposed combination or modification. See In re Lintner, 458
F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972). Furthermore,
the conclusion that the claimed subject matter is prima facie
obvious must be supported by evidence, as shown by some
objective teaching in the prior art or by knowledge generally
available to one of ordinary skill in the art that would have
led that individual to combine the relevant teachings of the
references to arrive at the claimed invention. See In re
Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir.
1988).
Like the appellants, we note that Whyte discloses self-
inflating absorbent articles that are inflated by wetting of
the articles in use (i.e., absorbing excreted bodily fluids).
The Whyte articles do not require any deliberate action by the
person placing the articles under or on the bed patient or
infant to inflate them but, rather, are designed to inflate
automatically, in essence, upon wetting in use. Lieberman and
Kato, on the other hand, disclose devices which are inflated
only upon deliberate action by the user to rupture the
breakable barrier, without regard to whether the devices are
Appeal No. 1998-2791 Page 9
Application No. 08/422,676
externally wetted. While we appreciate that Lieberman and
Kato are directed broadly to the problem addressed by Whyte
(design of self-inflating articles using gas evolving
material), given the disparate operation of the self-inflating
mechanism of Whyte as compared with those of Lieberman and
Kato, it is not apparent to us why one of ordinary skill in
the art would have been led by the teachings of these
references to replace the self-inflating arrangement of Whyte,
requiring no deliberate inflating action by the user, with
self-inflating arrangements as taught by Lieberman and Kato.
As to the examiner's stated motivation for making the
proposed modification (Paper No. 15, page 4), the examiner has
not provided any factual support for the conclusion that the
proposed modification of Whyte would have yielded a more
simplified, economically efficient or reliably inflated
structure.
Accordingly, we shall not sustain the examiner's 35
U.S.C. § 103 rejection of claim 28, or claims 29, 31-34 and
36 which depend therefrom.
CONCLUSION
Appeal No. 1998-2791 Page 10
Application No. 08/422,676
To summarize, the decision of the examiner to reject
claims 28, 29, 31-34 and 36 under 35 U.S.C. § 103 is reversed.
REVERSED
BRUCE H. STONER, Jr. )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 1998-2791 Page 11
Application No. 08/422,676
JDB/pgg
Gerry S. Gressel
The Procter & Gamble Company
Winton Hill Technical Center
6100 Center Hill Avenue
Cincinnati OH 45224