Ex Parte Carlbark et al

Board of Patent Appeals and Interferences

Nov 10, 2009

09529638 (B.P.A.I. Nov. 10, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte OLLE CARLBARK,
KENNETH STRANNEMALM, and EWA KOLBY FALK
__________

Appeal1 2009-003804
Application 09/529,638
Technology Center 3700
__________

Decided: November 10, 2009
__________

Before DONALD E. ADAMS, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 21-25.2 We have jurisdiction under 35
U.S.C. § 6(b).

1 Oral Hearing held October 7, 2009.
2 Claims 4-30 are pending, with claims 4-20 and 26-30 being indicated by
the Examiner as being allowable (App. Br. 2).
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STATEMENT OF THE CASE
Claim 21 is representative of the claims on appeal, and reads as
follows:
21. A garment comprising an absorbent part and two separate waist
belts which have a longitudinal direction, a cross-direction, longitudinally
extending edge parts and a longitudinally extending interior part that is
arranged between the longitudinally extending edge parts, wherein said belts
extend generally in said longitudinal direction, one end of each of the two
separate belts is permanently fastened directly or indirectly to the absorbent
part, and opposite ends of each of the two separate belts extend in respective
directions from said absorbent parts and are adapted to be fastened together
around a wearer of a garment, which belts have a stiffening material that
forms a stiffness that varies in the cross-direction of the belts, wherein the
stiffness that varies has an extension in the longitudinal direction, and
wherein a piece at an end of at least one of the belts is free from stiffening
material.

The Examiner relies on the following evidence:
New H1440 May 2, 1995
Herrin 5,706,524 Jan 13, 1998

We affirm.
ISSUE
The Examiner concludes that claims 21-25 are rendered obvious by
the combination of New and Herrin.
Appellants assert that there is no reason to combine the references as
suggested by the Examiner because New’s belt has an arcuate design so that
it is less noticeable when worn under clothes, and that design and purpose
would be destroyed by incorporating into it the elastics of Herrin.
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Thus, the issue on appeal is: Have Appellants demonstrated that the
Examiner erred in combining the elastics of Herrin with the belt of New to
arrive at the garment of claim 21?

FINDINGS OF FACT
FF1 The Examiner rejects claims 21-25 under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of New and Herrin (Ans. 3). As
Appellants do not argue the claims separately, we focus our analysis on
claim 21, and claims 22-25 stand or fall with that claim. 37 C.F.R. §
41.37(c)(1)(vii).
FF2 The Examiner finds that “New discloses all aspects of the claimed
invention with the exception of stiffening elements.” (Ans. 3.)
FF3 New discloses a belt for use with an absorbent garment (New, col. 2,
ll. 5-6). New teaches that the “belt is arcuate so that one laterally extending
edge . . . is longer than the other laterally extending edge” to provide “a
better fitting belt which more discretely conforms to the contours of the
wearer and is less noticeable under clothing.” (Id. Abstract.)
FF4 Figure 6 of New is reproduced below.
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Figure 6 shows a perspective view of the absorbent garment of New (id. at
col. 3, ll. 3-4).
FF5 Figures 9A and 9B of New are reproduced below.
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Figure 9A shows an embodiment of New, “in which a generally straight and
rectangular belt is provided with pieces of elastic material in the shape of
truncated triangle.” (Id. at col. 3, ll. 12-16.) Figure 9B shows “a top plan
view of the belt shown in FIG. 9A which illustrates the manner in which the
differential extensibility of the pieces of elastic provides the belt with one
edge having a length greater than the other edge.” (Id. at col. 3, ll. 17-21.)
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FF6 The Examiner relies on Herrin for teaching “a garment having waist
belts 30 that have a stiffening material 33, as shown in figure 4, that varies in
the cross-direction of the belts 30,” wherein the “stiffening material 33 is
extensible in the longitudinal direction.” (Ans. 3.)
FF7 The Examiner finds that Herrin teaches that the belts of Herrin
“provide good stretch and recovery characteristics, and are easy to attach.”
(Id.)
FF8 Herrin teaches “a disposable undergarment waistband and a method of
producing the waistband at high production speed that comfortably contacts
the skin of [the] wearer.” (Herrin, col. 2, ll. 45-48.) Herrin teaches further
that the waistband “has good stretching and recovery characteristics and . . .
easily attaches and detaches to a disposable undergarment panel.” (Id. at
col. 2, ll. 50-53.)
FF9 Figure 3 of Herrin is reproduced below.

Figure 3 shows a top plan view of an undergarment waistband according to
Herrin (id. at col. 4, ll. 63-65).
FF10 Herrin teaches that “it is also another object of the present invention to
provide a less expensive disposable undergarment waistband that can be
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readily produced in high volume” (id. at col. 2, ll. 54-56). Herrin teaches
further that the “first and second layers, for example, can inexpensively be
formed” (id. at col. 8, ll. 16-17).
FF11 The Examiner concludes that it would have been obvious to the
ordinary artisan “to construct the garment of New with the waist belts of
Herrin, to provide good stretch and recovery characteristics, and easy
attachment.” (Ans. 3.)

PRINCIPLES OF LAW
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and
a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his
or her skill.

Id. at 417. It is proper to “take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.” Id. at 418. See also
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id. at 421 (“A person of ordinary skill is also a person of ordinary creativity,
not an automaton.”).
In addition,
A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was
taken by the applicant. The degree of teaching away will of
course depend on the particular facts; in general, a reference
will teach away if it suggests that the line of development
flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
“The fact that the motivating benefit comes at the expense of another
benefit … should not nullify its use as a basis to modify the disclosure of
one reference with the teachings of another. Instead, the benefits, both lost
and gained, should be weighed against one another.” Medichem S.A. v.
Rolabo S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006).

ANALYSIS
Appellants argue that the belt of New “is generally arcuate in shape
and has a curvilinear length” that allows it to fit better and discretely
conform to the contours of the user, making it less noticeable when worn
under clothing (App. Br. 7 (citing New, col. 10, ll. 17-19)). Appellants
assert that in contrast, Herrin “is concerned with a disposable undergarment
waistband having elastic elements that is easily and economically
produced.” (App. Br. 8.) Appellants argue further that the belts of Herrin
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do not attach to each other, but to the upper peripheral portion of the
undergarment panel, and the belts are purely rectangular in shape (id.).
Appellants argue further that there is no reason to combine the
references as suggested by the Examiner (id.). Appellants assert that New’s
belt has an arcuate design so that it is less noticeable when worn under
clothes, and that design and purpose “would be destroyed by incorporating
elastics in it.” (Id.) According to Appellants, the “purposes of New and
Herrin are diametrically opposed and by modifying the belts shown in New
to include the elastic strips of Herrin would defeat the advantages taught by
New.” (Id.) Appellants assert that as seen in Figures 7 and 8 of Herrin, the
waistbands are not to be adapted to be fastened together around the waist of
the user, and that even if one were to modify New using Herrin, they would
have included the elastic strips in the waist portion, and not in the belt
portion where they would be more conspicuous (id. at 9).
As to the embodiment as shown in Figure 9 of New, Appellants argue
that the rectangular embodiment as shown in Figure 9A is actually meant to
be arcuate when worn, as shown in Figure 9B (Reply Br. 5). According to
Appellants, if the elastics of Herrin were incorporated into the belt of New, it
would conflict with the elastics shown in the 9A/B embodiment of New, and
would interfere with New’s purpose of having an arcuate belt (id.). In
addition, Appellants assert, New already incorporates elastics, thus there
would be no reason to incorporate the elastics of Herrin (id. at 6).
Appellants’ arguments have been carefully considered, but are not
convincing. Both New and Herrin teach a waistband for an absorbent
undergarment, and thus both the waistband of Herrin and the belt of New
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serve the same purpose, as do the elastic of New and the elastic of Herrin—
to provide a comfortable fit to the wearer. While the arcuate shape provided
by the elastics of New may serve the purpose of making the belt less
noticeable when worn under clothing, it would be well within the level of
skill of the ordinary artisan to weigh the advantages of the arcuate shape of
the belt of against the advantages obtained the elastics used in the waistband
of Herrin, which may be more economically produced.
While the waistbands of Herrin are not adapted to be fastened together
around the waist of the user, the Examiner relies on New to teach that
feature. Herrin was relied upon to teach that it was known to use elastics, as
shown in Figure 3, in the waistband of a disposable undergarment, thus
providing the stiffening elements required by claim 21. As to Appellants’
argument that the ordinary artisan would have incorporated the elastic strips
in the waist portion, and not the belt portion, New teaches a belt, and we find
that in view of the disclosure of Herrin, it would have been obvious to the
ordinary artisan to incorporate the elastics into any part of the belt of New,
as well as to incorporate the elastics into the whole belt of New.
As to the embodiment shown in Figure 9 of New, while we agree that
the belt as taught by New would assume an arcuate shape when worn, the
elastics of Herrin, while arguably more conspicuous when worn under
clothing, would also provide the comfortable fit of New, and as discussed
above, Herrin provides evidence that the use of such elastics in a waistband
or belt of a absorbent undergarment was well known to the ordinary artisan.
Moreover, while Appellants argue that New already incorporates elastics so
that there would be no reason to incorporate the elastics of Herrin, if we
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were to accept that argument, it would essentially vitiate the obviousness
analysis, as once a problem is arguably solved, there would be no further
reason for any further modifications.

CONCLUSION OF LAW
We conclude that Appellants have not demonstrated that the Examiner
erred in combining the elastics of Herrin with the belt on new to arrive at the
garment of claim 21.
We thus affirm the rejection of claim 21 under 35 U.S.C. § 103(a) as
being rendered obvious by the combination of New and Herrin. As claims
22-25 stand or fall with that claim, we affirm the rejection as to those claims
as well.

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).

AFFIRMED
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RONALD L GRUDZIECKI
BURNS DOANE SWECKER & MATHIS
PO BOX 1404
ALEXANDRIA, VA 22313-1414