Ex Parte Carlucci et al

Patent Trial and Appeal Board

Sep 28, 2012

10239599 (P.T.A.B. Sep. 28, 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.
10/239,599 09/23/2002 Giovanni Carlucci CM2305M 9369
27752 7590 09/28/2012
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
KIDWELL, MICHELE M
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
09/28/2012 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GIOVANNI CARLUCCI, ROBERTO D'ADDARIO, and
IVANO GAGLIARDI
____________

Appeal 2010-006603
Application 10/239,599
Technology Center 3700
____________

Before GAY ANN SPAHN, MICHAEL C. ASTORINO, and
WILLIAM A. CAPP, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 4-7 and 9. Claims 1-3 and 8 have been
cancelled. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2010-006603
Application 10/239,599

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REJECTIONS
The following Examiner’s rejections are before us for review.
Claims 4 and 9 are rejected under 35 U.S.C. § 102(b) as anticipated by
Hammons (US 5,647,863, issued Jul. 15, 1997).
Claim 5 is rejected under 35 U.S.C. § 102(b) as anticipated by or, in
the alternative, under 35 U.S.C. § 103(a) as unpatentable over Hammons.
Claims 6 and 7 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Hammons and Soga (US 5,364,381, issued Nov. 15, 1994).

CLAIMED SUBJECT MATTER
Claim 4 is the sole independent claim on appeal, is reproduced below1
with emphasis added, and is representative of the subject matter on appeal.
4. An absorbing article comprising a liquid
pervious topsheet, a liquid impervious backsheet,
and an absorbent structure intermediate said liquid
pervious topsheet and liquid impervious backsheet,
wherein said article is a sanitary napkin or a
pantiliner for use in the crotch region of an
undergarment, said absorbing article comprising a
pair of wings intended for folding around the
crotch portion of an undergarment, said wings are
comprised of integral extensions of said topsheet
and said backsheet, wherein each of said wings are
provided with at least one region of transparency.

1 Claim 4, as listed in the Claims Appendix of the Appeal Brief, is not a
correct version of the appealed claim. See Ans. 3, 9. The correct version of
appealed claim 4 was filed by the Appellants on July 8, 2004, and was
rejected by the Examiner in a Final Office Action mailed January 27, 2005.
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OPINION
The rejection of claims 4 and 9 as anticipated by Hammons
The Examiner found that Hammons’s absorbent article 20
corresponds with the absorbing article recited in claim 4, including “a pair of
wings [54] intended for folding around the crotch portion of an
undergarment . . . , said wings are comprised of integral extensions of the
topsheet [38] and the backsheet [40] (col. 16, lines 26-27).” Ans. 3-4, 6; see
also, Hammons, col. 3, ll. 45-47, and figs. 4-6. The Examiner’s finding is
based on two premises: first, that Hammons’s reference to Ahr '0452
includes the specific disclosure of Ahr '045’s transparent “web,” i.e., a
transparent topsheet; and second, that Hammons’s wings 54, i.e., the joined
extensions of topsheet 38 and backsheet 40 include “at least one region of
transparency” as recited in claim 4. Ans. 4, 6; see also Hammons col. 16, ll.
26-31.
The Examiner attempts to support the first premise by citing to
Hammons at column 5, line 63 to column 6, line 5. Ans. 4. The citation is
directed to a paragraph that describes “[a] preferred topsheet 38 compris[es]
an aperture formed film” and references Ahr '045 as describing a suitable
aperture formed film. Hammons, col. 5, l. 56 – col. 6, l. 1. The Examiner
also found that Ahr '045’s film or “web” is disclosed as transparent. Ans. 4,
6, Ahr '045, col. 11, ll. 41, 42; see also Ahr '045, col. 2, ll. 21-23, and col.
15, l. 54. Lastly, the Examiner found that “Hammons discloses . . . that the

2 Ahr '045 (US 4,463,045, issued July, 31, 1984) is referenced at column 5,
line 65 to column 6, line 1 and column 6, lines 16-17 of Hammons. Ahr
'045 is not to be confused with Ahr (US 4,321,924, issued Mar. 30 1982)
cited by Hammons at col. 19, ll. 30-31, or Ahr (US 4,909,802, issued Mar.
20, 1990) cited by Hammons at col. 20, l. 38.
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wings of the invention comprise extensions of the topsheet thereby rendering
the wing transparent.” Ans. 4. This last finding is based on the
understanding that Hammons incorporates by reference Ahr '045’s
disclosure of a transparent film. See Ans. 7.
To incorporate subject matter by reference, a host document must
contain language “clearly identifying the subject matter which is
incorporated and where it is to be found.” In re De Seversky, 474 F.2d 671,
674 (CCPA 1973). “Put differently, ‘the host document must identify with
detailed particularity what specific material it incorporates and clearly
indicate where that material is found in the various documents.’” Callaway
Golf Co. v. Acushnet Co., 576 F.3d 1331, 1346 (Fed. Cir. 2009), citing to
Adv. Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir.
2000).
Although Hammons states “[t]he disclosures of all patents . . .
mentioned throughout this patent application are hereby incorporated by
reference herein” (Hammons, col. 22, ll. 16-22), Hammons does not identify
with specificity the transparency of Ahr '045’s apertured film. Hammons
discloses at column 5, line 63 to column 6, line 1:
A preferred topsheet 38 comprises an
apertured formed film. Apertured formed films are
preferred for the topsheet because they are
pervious to body exudates and yet non-absorbent
and have a reduced tendency to allow liquids to
pass back through and rewet the wearer's skin.
Thus, the surface of the formed film which is in
contact with the body remains dry, thereby
reducing body soiling and creating a more
comfortable feel for the wearer. Suitable formed
films are described in . . . U.S. Pat. No. 4,463,045
issued to Ahr et al. on Jul. 31, 1984.
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Hammons also discloses at column 6, lines 8-16:
Preferably, the topsheet 38 has a plurality of
apertures to permit liquids deposited thereon to
pass through to the core 42. An apertured
polyolefinic film topsheet 38 having about 5 to
about 60 percent open area, typically about 25
percent open area, and a thickness of about 0.01 to
about 0.05 millimeters prior to aperturing and
about 0.42 to about 0.51 millimeters after
aperturing is suitable. A particularly suitable
topsheet 38 may be made in accordance with . . .
U.S. Pat. No. 4,463,045 issued Jul. 31, 1984 to
Ahr, et al.
As such, Hammons’s disclosure is directed to the function and dimensions
of Ahr '045’s apertured film. Accordingly, we do not find that Hammons
incorporates by reference the transparent characteristic of Ahr '045’s
apertured film. Hence, the Examiner’s finding that “Hammons discloses a
transparent topsheet through incorporation of the Ahr ['045] reference” (Ans.
6) is incorrect.
Even if, arguendo, the extension of Hammons’s topsheet 38 included
Ahr '045’s transparent film we do not agree with the Examiner’s second
premise that such evidences Hammons’s “wings [54] to be provided with at
least one region of transparency,” as recited in claim 4. Rather, we agree
with the Appellants that a portion of both the topsheet and the backsheet is
required to be transparent to find that a wing includes “at least one region of
transparency.” App. Br. 4, 6. This is supported by the Specification at page
17, which defines a “transparent region of a product” as:
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1. having the property of transmitting rays of
light in such a way that written or printed
text/characters and colors located opposite the
transparent product can be clearly viewed by the
human eye.[; sic] and/or
2. having the property of transmitting rays of
light in such a way that the human eye may see
through the product.
In this case, the claimed term “wing” can replace the term “product” in the
definition of a “transparent region of a product.” As such, both Hammons’s
topsheet 38 and backsheet 40 must satisfy at least one of the above-quoted
definitions of the term “transparent region of a product”, i.e., “transparent
region of a wing,” in order for the Examiner’s finding that Hammons wings
54 include the integral extensions of topsheet 38 and backsheet 40 to be
correct. Since Hammons does not disclose that backsheet 40, or any portion
thereof, has a “transparent region,” we cannot agree with the Examiner that
Hammons anticipates all of the limitations of claim 4. As such, the
Appellants correctly contend that Hammons does not disclose “wherein each
of said wings are provided with at least one region of transparency,” as
recited in claim 4. App. Br. 3-6.
Thus, for the reasons provided above, the rejection of claims 4 and 9
as anticipated by Hammons is not sustained.
The rejection of claim 5 as anticipated by or, in the alternative,
as unpatentable over Hammons
Claim 5, recites “[a]n absorbing article according to Claim 4, wherein
each entire wing is transparent.”
At the outset, we note that the Examiner’s determination that
Hammons anticipates claim 5 relies on the erroneous findings discussed
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supra. Thus, the Examiner’s rejection of claim 5 as anticipated by
Hammons is not sustained.
Regarding the Examiner’s rejection of claim 5 under obviousness
grounds, the Examiner concluded that:
it would have been obvious to one of ordinary skill
in the art to modify the amount of the wing that is
provided as transparent since it has been held that
where the general conditions of a claim are
disclosed in the prior art, discovering the optimum
or workable range involves only a level of ordinary
skill in the art.
Ans. 4-5. The Examiner’s conclusion relies on a per se rule of obviousness.
See App. Br. 8. Reliance solely on a per se rule of obviousness is improper
because “[r]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007).
Moreover, we agree with the Appellants’ contention that “the Examiner has
not shown where the ‘general conditions’ are found in the prior art.” App.
Br. 8.
Lastly, the Examiner comments that “[l]ikewise, the benefits of
providing a transparent backsheet have been discussed and supported by the
Soga reference.” Ans. 7. Since Soga’s teachings, infra, have not been
included as evidence in the Examiner’s rejection of claim 5, the Examiner’s
comment is immaterial to this ground of rejection. Thus, the rejection of
claim 5 as unpatentable over Hammons is not sustained.

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The rejection of claims 6 and 7 as unpatentable over Hammons and Soga
Claim 6, recites “[a]n absorbing article according to Claim 4, wherein
said topsheet and said backsheet are transparent.” Claim 7 is dependent on
claim 6.
The Examiner rejects claim 6 in view of Hammons and Soga. Ans. 5.
This rejection also relies on the Examiner’s erroneous first premise and
unsubstantiated finding that Hammons discloses a transparent topsheet by
incorporating by reference Ahr '045’s apertured film as discussed supra.
Thus, for the reasons provided above, we cannot sustain the rejection under
35 U.S.C. § 103(a) of claim 6, and claim 7 dependent thereon, as
unpatentable over Hammons and Soga.

DECISION
We REVERSE the rejections of claims 4-7 and 9.

REVERSED

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