Ex Parte Bell et alDownload PDFBoard of Patent Appeals and InterferencesSep 12, 200910458571 (B.P.A.I. Sep. 12, 2009) Copy Citation 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). Appeal 2009-005015 Application 10/458,571 2 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 Appeal 2009-005015 Application 10/458,571 3 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? Appeal 2009-005015 Application 10/458,571 4 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: Appeal 2009-005015 Application 10/458,571 5 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). Appeal 2009-005015 Application 10/458,571 6 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 Appeal 2009-005015 Application 10/458,571 7 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). Appeal 2009-005015 Application 10/458,571 8 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. Appeal 2009-005015 Application 10/458,571 9 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. Appeal 2009-005015 Application 10/458,571 10 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. Appeal 2009-005015 Application 10/458,571 11 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. Appeal 2009-005015 Application 10/458,571 12 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. 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