Ex Parte Bewick-Sonntag et al

Board of Patent Appeals and Interferences

May 31, 2012

10422670 (B.P.A.I. May. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/422,670 09/08/2003 Christopher Phillip Bewick-Sonntag 8638R 9268
27752 7590 05/31/2012
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
ANDERSON, CATHARINE L
ART UNIT PAPER NUMBER
3764
MAIL DATE DELIVERY MODE
05/31/2012 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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte CHRISTOPHER PHILLIP BEWICK-SONNTAG
and THOMAS WARD OSBORN, III
__________

Appeal 2010-012546
Application 10/422,670
Technology Center 3700
__________

Before TONI R. SCHEINER, DEMETRA J. MILLS, and ERIC GRIMES,
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 2010-012546
Application 10/422,670

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STATEMENT OF THE CASE
The following claim is representative:
1. An absorbent pad having a periphery and formed from a first web of
fibrous material and a second web of fibrous material, the absorbent pad
comprising:
a. a top surface consisting essentially of a first layer, the first layer
consisting essentially of fibers from the first web of fibrous material;
b. a bottom surface consisting essentially of a second layer, the second
layer consisting essentially of fibers from the first web of fibrous
material;
c. a third layer comprising an absorbent portion comprising fibers
from the second web of fibrous material; and wherein,
d. the absorbent portion is disposed intermediate the first layer and the
second layer and extends to the periphery, the first and second layers
and absorbent portion being joined to one another at portions of the
first web that penetrate through the absorbent portion at a plurality of
discrete locations.

Cited References

The Examiner relies on the following prior art references:

Mesek et al. US 3,903,890 Sept. 9, 1975
Trombetta et al. US 5,785,697 Jul. 28, 1998
Roe et al. US 5,643,588 Jul. 1, 1997

Grounds of Rejection
 Claims 1, 3, and 9-10 are rejected under 35 U.S.C. § 102(b)
over Mesek.
 Claims 2, 4-5, 11-14, 18-24 and 28-31 are rejected under 35
U.S.C. § 103(a) over Mesek in view of Trombetta.
 Claims 6-8 are rejected under 35 U.S.C. § 103(a) over Mesek in
view of Roe.

Appeal 2010-012546
Application 10/422,670

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FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Answer at pages 3-
6. The following facts are highlighted.
1. Figure 4 of Appellants’ Specification is reproduced below.

Figure 4 shows first fibrous web layer (body contacting layer) 24,
second fibrous web layer (bottom surface) 26, and absorbent layer
22.
2. According to the Specification, page 5, ll. 6-12, the “first and
second layers [are] comprised of the same material, and both
having originated from the same precursor, nonwoven web.”
3. Figure 2 of Mesek is reproduced below.

Appeal 2010-012546
Application 10/422,670

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Figure 2
1
of Mesek shows paper-like densified layer 14 (col. 2, l.
61-63), batt 12 highly absorbent fibrous pad (col 2, ll. 43-51, col.
3, l. 6); and resin impregnated portion 16 of fibrous batt 12 (col. 3,
l. 28-44).
4. Mesek teaches “[a]t the surface of the batt [12] adjacent the
impervious sheet there is a paper-like densified layer 14 which is
an integral portion of the batt which serves to enhance its
strength.” (col. 2, ll. 52-55; Fig. 2.)

Discussion
ISSUE
Claims 1, 3, 9, and 10 are rejected as anticipated by Mesek.
The Examiner concludes that Mesek teaches each element claimed.
Appellants argue that Mesek discloses a pad of a single fibrous layer,
not a pad of three web layers, as claimed. (See App. Br. 4.)
The issue is: Does the cited prior art disclose a pad with first and
second layers, 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

1
The Examiner refers to Figure 3 in the Answer at page 3, but refers to the
reference numerals of Fig 2.
Appeal 2010-012546
Application 10/422,670

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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
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.

ANALYSIS
As each of the rejections before us are decided by the same dispositive
issue, we decide the rejections together.
Appellants argue that Mesek does not disclose every claimed element
as it does not disclose an absorbent pad formed from a first web and a
second web, as claimed. (App. Br. 4.) We are persuaded by Appellants’
argument.
The Specification discloses, and the claims require, that the first and
second layers of Appellants’ pad are comprised of the same material, “the
first web of fibrous material,” both having originated from the same
precursor, nonwoven web. (FF2.)
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Application 10/422,670

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Mesek discloses that the top surface 16 is comprised of a resin
impregnated fibrous batt (FF3), and the bottom surface 14 is composed of a
“paper-like densified layer” (col. 2, l. 53) made by moistening that surface
and compressing the batt between compression rollers (col. 2, ll. 3-8). The
first and second layers are not of the same fibrous material.
Thus, the Examiner has not provided evidence in the prior art of both
a top surface layer and a bottom surface layer “consisting essentially of
fibers from the first web of fibrous material,” as claimed.
The Examiner has pointed to nothing in the other cited references that
would make up for the deficiency of Mesek. The anticipation and
obviousness rejections are reversed.

CONCLUSION OF LAW
The cited references do not support the Examiner’s anticipation and
obviousness rejections, which are reversed.

REVERSED

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