Ex Parte Almberg et al

Board of Patent Appeals and Interferences

May 18, 2012

10684585 (B.P.A.I. May. 18, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte CHRISTIAN ALMBERG and LUCAS BACK
__________

Appeal 2010-005008
Application 10/684,585
Technology Center 3700
__________

Before FRANCISCO C. PRATS, JEFFREY N. FREDMAN, and STEPHEN
WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants request rehearing of the Decision on Appeal entered
March 27, 2012. The Decision affirmed rejections under §§ 102 and 103,
and entered new rejections under § 112, ¶ 2, and under § 101 for double
patenting. Appellants request reconsideration of the double patenting
rejection.
Appeal 2010-005008
Application 10/684,585

2
BACKGROUND
The Decision of March 27, 2012, rejected appealed claims 1-8 under
35 U.S.C. § 101 as claiming the same invention as that of claims 1-8 of prior
Patent No. US 6,726,670 B2. (Decision at 15.) In its Finding of Fact #12,
this Board found only two differences between the claim sets:
12. The differences between appealed and patented claims 1 are
that appealed claim 1 deletes the word “designed” and inserts a
comma.

(Id.) The Decision found these differences were nominal, the two claims did
not define different articles, and for similar nominal or formatting reasons,
the patented and appealed claims 2-8 correspondingly defined the same
article. (Id. at 16-17.)

ISSUE
Appellants contend that Finding of Fact #12 is erroneous, because it
failed to recognize a material difference between the patented and appealed
claims. (Request at 2.) Specifically, Appellants point out that:
Claim 1 of Patent No. US 6,726,670 B2 includes a recitation of:
a pair of opposed belt halves attached to said absorbent
structure at said rear end region of said rear panel,

Claim 1 of the appealed application includes a recitation of:
a pair of opposed belt halves comprising nonwoven material
attached to said absorbent structure at said rear end region of
said rear panel,

(Id.) Appellants explain:
[C]onsider a belted absorbent article with a pair of opposed belt halves
that are made of any suitable material or material combination that does
not comprise a nonwoven material. This belted absorbent article may
Appeal 2010-005008
Application 10/684,585

3
literally infringe patent claim 1, but will not literally infringe appealed
claim 1.

(Id. at 3, citing In re Vogel, 422 F.2d 438, 441 (CCPA 1970).) Thus,
Appellants contend that the rejection for statutory double patenting is in
error and should be withdrawn.
Appellants state that a terminal disclaimer obviating any obviousness-
type double patenting issues was approved by the Office on March 28, 2012.

DISCUSSION
We agree with Appellants’ analysis of the claims showing that
Finding of Fact #12 is erroneous. Appellants’ explanation demonstrates that
the claims do not satisfy the Vogel test for double patenting. The double
patenting rejection must be vacated.

SUMMARY
We grant the requested relief.
The rejection of claims 1-8 under 35 U.S.C. § 101 as claiming the
same invention as that of claims 1-8 of prior Patent No. US 6,726,670 B2 is
vacated.
GRANTED

lp