Ex Parte Bell et al

Board of Patent Appeals and Interferences

Sep 12, 2009

10458571 (B.P.A.I. Sep. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ELIZABETH ELLEN BELL, EMILY JEAN BAUM,
and CARMEN JUDITH DIETZ
__________

Appeal 2009-005015
Application 10/458,571
Technology Center 3700
__________

Decided: September 14, 2009
__________

Before TONI R. SCHEINER, DEMETRA J. MILLS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1-26, all the claim pending. We have jurisdiction under 35 U.S.C.
§ 6(b).
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STATEMENT OF THE CASE
Claim 1 is representative of the subject matter on appeal:
1. An absorbent article having a longitudinal direction and a lateral
cross-direction, said article comprising a first pad section and a relatively
smaller second pad section which is operatively joined to the first pad
section;
said first pad section including a first topsheet, a first backsheet, a first
absorbent body located between said first topsheet and said first backsheet,
and a first region of a first garment-attachment mechanism located on a
garment-side surface of said first backsheet;
said second pad section including a second topsheet, a second
backsheet, a second absorbent body located between said second topsheet
and said second backsheet, and a second region of a second garment-
attachment mechanism located on a garment-side surface of said second
backsheet; wherein
said first pad section has a first longitudinal length and overlaps at
least a portion of a bodyside surface of said second pad section;
at least a portion of said first backsheet is configured to overlap at
least an adjacent portion of a bodyside of said second topsheet;
at least a portion of said first region of the first garment-attachment
mechanism operatively attaches said first pad section to said second pad
section;
said first pad section overlaps said second pad section by an overlap
length; said overlap length provides an overlap percentage defined by the
following equation

Overlap % = 100% * (overlap length) ÷ (first longitudinal length)

which is not more than about 60%; and
said absorbent article has a total absorbent capacity, and said first
absorbent body has an absorbent capacity which is at least about 55% of said
total absorbent capacity.

The Examiner relies on the following evidence:
Whitehead US 4,315,507 Feb. 16, 1982
Cook US 4,536,181 Aug 20, 1985
Darby US 5,683,373 Nov. 4, 1997
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The Examiner rejected the claims as follows:
• Claims 1-8, 11, 12, 15, and 17-26 under 35 U.S.C. § 102(b) as
anticipated by, or in the alternative under 35 U.S.C. § 103(a) as
unpatentable over Cook.

• Claims 9, 10, 13, and 14 under 35 U.S.C. § 103(a) as unpatentable
over Cook.

• Claim 16 under 35 U.S.C. § 103(a) as unpatentable over Cook and
Darby.

We affirm-in-part.

ANTICIPATION/OBVIOUSNESS
Issue
The Examiner rejected claims 1-8, 11, 12, 15, and 17-26 as
anticipated by, or obvious over Cook (Ans. 4-7). The issues raised by this
rejection are as follows:
With respect to claims 1 and 19: Has the Examiner established that
Cook describes or suggests a two pad absorbent article that is structurally
indistinguishable from the claimed absorbent article?
With respect to claim 12: Has the Examiner established that Cook
describes or suggests a two pad absorbent article where the second pad can
be used independently?
With respect to claims 25 and 26: Has the Examiner established that
Cook describes or suggests a two pad absorbent article where the largest
cross-direction width of the first pad is equal to the largest cross-direction
width of the second pad?

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Findings of Fact
FF1 Claim 1 is directed to an absorbent article comprising a first pad
and a second pad, each of which has a topsheet, a backsheet, an absorbent
body located between the topsheet and backsheet, and a garment attachment
mechanism on the backsheet. The first pad is larger than the second pad. At
least a portion of the garment attachment mechanism of the first pad
operatively attaches the first pad to the second pad, and the first pad overlaps
the second pad by an overlap percentage of no more than about 60%.
FF2 Cook describes a “sanitary napkin for feminine usage . . .
[comprising] a removable back panty shield which forms an optional
continuation of the sanitary napkin and provides additional protection for the
wearer” (Cook, col. 1, ll. 6-10).
FF3 Figures 6 and 7 of Cook, reproduced below, show the underside
(i.e., the garment side) of the sanitary napkin removably secured to the
shield:

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Figure 6 “shows the shield [10] removably secured to the sanitary napkin
[11]” and Figure 7 “is a section view, taken across the lines 7--7 of FIG. 6,
and showing how the thickness of the shield decreases towards its rearward
portion” (Cook, col. 2, ll. 33-37).
FF4 According to Cook, “[s]ubstantially any type of conventional
sanitary napkin available on the market may be used . . . Thus mini or maxi
pads may be used, and the length of the pad or napkin may be adjusted
relative to the shield to accommodate the individual user” (Cook, col. 3: ll.
8-13).
FF5 “[T]he shield is formed from substantially the same material as
that of the sanitary napkin” (Cook, col. 3, ll. 60-62), and “the forward
portion of the back panty shield 10 preferably has substantially the same
thickness as that of conventional sanitary napkin 11” (id. at col. 3, ll. 57-60),
but “it is ‘feathered’ or tapered rearwardly as shown . . . in FIG. 7. This
assures that sufficient protection will be obtained where needed, but that the
shield will not be bulky and obtrusive” (id. at col. 3, l. 68 to col. 4, l. 3).
FF6 “The rearward portion [of the shield] has a substantially greater
transverse width than the width of the forward portion, such that in plan
outline the shield flares outwardly substantially continuously from its
forward portion to its rearward portion” (Cook, col. 1, l. 67 to col. 2, l. 3).
This arrangement “provides additional protection for the wearer such as
during sleeping hours” (id. at col. 2, ll.7-9).
FF7 “The forward portion of the shield has . . . a transverse adhesive
strip [19], to facilitate a removable attachment to the sanitary napkin” (Cook,
col. 2, ll. 3-5).
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FF8 “The underside of the disposable shield 10 has a plurality of
relatively-thin substantially-parallel spaced-apart adhesive strips . . . 21, 22,
23, and 24 . . . Adhesive strips 21 and 22 form substantial continuations of
the adhesive strips 25 and 26, . . . on the underside of the conventional
sanitary napkin” (Cook, col. 3, ll. 19-25) so that “the combination of the
back panty shield 10 and the conventional sanitary napkin 11 may be
removably secured to the undergarment . . . of the wearer” (id. at col. 3, ll.
31-34).
FF9
In a preferred embodiment, the back panty shield 10 . . .
is approximately six inches long from its forward edge 13 to its
rearward edge 15. The conventional sanitary napkin is
generally rectangular in plan outline and is usually around eight
to ten inches long. When overlapped . . . [with] the back panty
shield, the overall length is approximately twelve to fourteen
inches long. Also, the transverse width of the rearward edge 15
of the shield is approximately eight inches. These dimensions,
of course, are illustrative only . . .

(Cook, col. 4, ll. 6-17).
Principles of Law
Claims directed to an apparatus must be distinguished from the prior
art on structural grounds. See In re Schreiber, 128 F.3d 1473, 1477-1478
(Fed. Cir. 1997). Merely stating an intended use for an apparatus is not
sufficient to distinguish the apparatus from the prior art. In re Sinex, 309
F.2d 488, 492 (CCPA 1962).
In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme
Court emphasized that “the [obviousness] analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
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a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id. at 418; see also id. at 421 (“A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.”). Moreover, “[t]he combination of familiar elements according
to known methods is likely to be obvious when it does no more than yield
predictable results.” Id. at 416.
Analysis and Conclusions of Law
Claims 1-8, 11, and 17-24
The Examiner finds that “Cook discloses an absorbent article
comprising: a sanitary napkin/first pad section 11 and a relatively smaller
back panty shield/second pad section 10” (Ans. 4). The Examiner finds that
a garment attachment mechanism located on backsheet (i.e., the garment-
side) of the first pad section “allows at least a portion of the first back sheet
to overlap at least an adjacent portion of a body side of the second [pad] top
sheet such that the first garment-attachment mechanism attaches first pad
section 11 to second pad section 10” (id.).
Appellants contend that
[T]he claim limitation of claim 1 that states that ‘at least a
portion of said first region of the first garment-attachment
mechanism operatively attaches said first pad section to said
second pad section’ is clearly not taught or suggested by Cook.
In fact, Cook is very specific that the adhesive 19 is located on
the shield or back pad to secure the first pad or sanitary napkin
to the shield.

(App. Br. 5). Appellants contend that “the garment adhesives on the
backsheet of the pad or sanitary napkin of Cook are [not] used to secure the
pad or sanitary napkin to the shield portion” (id. at 5-6).
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This argument is not persuasive. Cook teaches that both the sanitary
napkin and the shield have adhesive strips on the underside (garment side),
and that the length of the napkin can be adjusted relative to the shield to suit
the individual user (FF4, FF8). Clearly, the relative positions of the napkin
and the shield can be adjusted so that the adhesive strips on the garment side
of the napkin adhere to the top side of the shield. Whether Cook discloses
using the napkin and shield in this manner is irrelevant. As discussed above,
merely stating an intended use for a device is not sufficient to distinguish it
from a prior art device - the claimed device must be distinguished on
structural grounds. See e.g., Sinex, 309 F.2d at 492; Schreiber, 128 F.3d at
1477-1478. Appellants have not identified any structural element of claim 1
that is not met by Cook. Moreover, there is nothing in the claim that
precludes an additional adhesive mechanism on the topsheet of the shield.
Appellants argue that “claims 1 and 19 require that the first pad
section has a greater capacity than the second pad section,” and “this claim
limitation is also not suggested by Cook, contrary to the Examiner’s
assertions” (App. Br. 6).
This argument is not persuasive. Cook teaches that substantially any
type of conventional sanitary napkin available on the market can be used in
combination with the shield, including maxi pads (FF4), and the relative
dimensions of the napkin and shield can vary (FF9). “The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR, 550 U.S. at 416. There
is nothing unpredictable or unobvious about combining Cook’s shield with a
high capacity or super absorbent pad.
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The rejection of claims 1 and 19 as anticipated by, or obvious over
Cook is affirmed. Claims 2-8, 11, and 17, 18, and 20-24 fall with claims 1
and 19 as they were not separately argued. 37 C.F.R. § 41.37(c)(1)(vii)
(2006).
Claim 12 (and dependent claim 15)
Claim 12 specifies that the second pad section “can be independently
employed as a second reduced-size feminine care article.”
Appellants contend that Cook’s shield, the “second pad,” would be
unsuitable as an independent absorbent article because is has adhesive on the
body-facing side of the absorbent article.
We agree with Appellants on this point.
The rejection of claim 12, and claim 15 which depends from it, as
anticipated by, or obvious over Cook is reversed.
Claims 25 and 26
Claims 25 and 26 specify that the largest cross-direction width of the
first pad is equal to the largest cross-direction width of the second pad.
Appellants contend that Cook’s “second pad section is wider than the
first pad section at its widest point in the cross-direction” (App. Br. 7), and
there is no “teaching or suggesting [of] the limitations of claims 25 and 26”
(id.)..
We agree with Appellants on this point. Cook teaches that the flared
shape of the shield provides additional protection under certain
circumstances (FF6).
The rejection of claims 25 and 26 as anticipated by, or obvious over
Cook is reversed.

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OBVIOUSNESS: COOK
The Examiner rejected claims 9, 10, 13, and 14 under 35 U.S.C.
§ 103(a) as unpatentable over Cook. We have already determined that the
Examiner has not established that claim 12, from which claims 13 and 14
depend, would have been obvious over Cook.
The remaining issue is whether Appellants have established that the
Examiner erred in concluding that claims 9 and 10 would have been obvious
over Cook.
Appellants contend that “Cook does not teach or suggest all of the
Appellants’ claim limitations present in the independent claims. Because
claims 9, [and] 10 . . . depend from claim 1, and thus include all of the
limitations of claim 1, the limitations of claims 9, [and] 10 . . . are also not
taught by Cook” (App. Br. 8).
Appellants have not established that the Examiner erred in concluding
that claims 9 and 10 would have been obvious over Cook for the same
reasons discussed above in connection with claim 1.
The rejection of claims 9, 10, 13, and 14 as unpatentable over Cook is
affirmed with respect to claims 9 and 10, and reversed with respect to claims
13 and 14.
OBVIOUSNESS: COOK and DARBY
The Examiner rejected claim 16 as unpatentable over Cook and
Darby. The issue raised by this rejection is whether Appellants have
established that the Examiner erred in concluding that it would have been
obvious for one skilled in the art to use a sanitary napkin configured for
thong underwear as the sanitary napkin in Cook’s napkin/shield
combination.
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Findings of Fact
FF10 Claim 16 specifies that the “first pad section has a tapered
shape which is configured to provide an operative absorbent liner for a thong
undergarment.”
FF11 According to Cook, “[s]ubstantially any type of conventional
sanitary napkin available on the market may be used” in combination with
the shield, which forms an “optional continuation” of the napkin (see FF2,
FF4).
FF12 Darby provides evidence that sanitary napkins configured for
thong underwear are conventional.
Principles of Law
An “[e]xpress suggestion to substitute one equivalent for another need
not be present to render such substitution obvious.” In re Fout, 675 F.2d
297, 301 (CCPA 1982).
Analysis
Appellants contend that “one would not taper the sanitary napkin of
Cook to a thong shape, especially as the narrow portion of thong underwear
is in the rear portion” (App. Br. 9), “[g]iven the width of the Cook rear panty
shield, which is considerably wider than thong underwear” (id.).
This argument is not persuasive. Cook teaches that substantially any
conventional sanitary napkin can be used in combination with the shield
(FF4, FF11). Darby provides evidence that sanitary napkins designed for
thongs are conventional (FF12). The combination might not be ideal, but
Cook’s shield provides an optional extension of a conventional sanitary
napkin, and there is nothing unobvious about substituting one conventional
napkin for another conventional napkin in Cook’s absorbent article.
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Accordingly, the rejection of claim 16 as unpatentable over Cook and
Darby is affirmed.
SUMMARY
• The rejection of claims 1-8, 11, 12, 15, and 17-26 under 35 U.S.C.
§ 102(b) as anticipated by, or in the alternative under 35 U.S.C.
§ 103(a) as unpatentable over Cook is affirmed with respect to claims
1-8, 11, and 17-24, and reversed with respect to claims 12, 15, 25, and
26.

• The rejection of claims 9, 10, 13, and 14 under 35 U.S.C. § 103(a) as
unpatentable over Cook is affirmed with respect to claims 9 and 10,
and reversed with respect to claims 13 and 14.

• The rejection of claim 16 under 35 U.S.C. § 103(a) as unpatentable
over Cook and Darby is affirmed.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006).

AFFIRMED-IN-PART
LP

KIMBERLY-CLARK WORLDWIDE, INC.
CATHERINE E. WOLF
401 NORTH LAKE STREET
NEENAH, WI 54956