Ex Parte Carstens

Board of Patent Appeals and Interferences

Mar 29, 2010

11269255 (B.P.A.I. Mar. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JERRY EDWARD CARSTENS1
____________

Appeal 2009-005726
Application 11/269,255
Technology Center 3700
____________

Decided: March 29, 2010
____________

Before MICHAEL W. O’NEILL, DANIEL S. SONG, and
FRED A. SILVERBERG, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is RUSL, LLC. (App. Br. 3).
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The Appellant appeals under 35 U.S.C. § 134 from a Final Rejection
of claims 1-22. We have jurisdiction over this appeal under 35 U.S.C. § 6(b)
(2002).
The claimed invention is directed to an absorbent system that includes
a body conforming holder in the form of a wrap or tube that removably
holds at least one absorbent article in close bodily contact. Representative
independent claim 1 reads as follows (App. Br. 16, Claims App'x.):
1. An absorbent system comprising:
a) a body conforming, reusable, washable, textile holder
for removably holding at least one absorbent article in close
bodily contact, said holder being a wrap or tube constructed to
enclose a portion of the body where the absorbent article is to
be held, and comprising an elastic region comprising elastic
woven or knit material suitable for use in a reusable, washable
holder, said elastic region having a high stretch in both the
lateral and longitudinal directions as measured by having a
Holding Force (HF-4.0) of greater than about 0.1 kgf and a
Holding Force (HF-2.5) of less than about 1.0 kgf; and
b) at least one absorbent article capable of being
removably held in close bodily contact by said holder, said
article comprising a liquid pervious body facing side, a liquid
impervious side opposite the body facing side, and an absorbent
component between the liquid pervious side and the liquid
impervious side, wherein the liquid pervious side and the liquid
impervious side are arranged to form a unitary structure.

Independent claim 17 is similar to claim 1, but further specifically
recites that "the holder is a wrap comprising at least two cooperating
fastening materials affixed to opposed surfaces of the holder that can be
positioned to removably enclose a portion of the body where the absorbent
article is to be held." Independent claim 20 is also similar to claim 1 but
specifically recites that the holder is a tube.
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The evidence relied upon by the Examiner in rejecting the claims is:
Cramer US 5,860,945 Jan. 19, 1999

The Examiner rejected claims 1-22 under 35 U.S.C. § 102(b) as
anticipated by Cramer, or in the alternative under 35 U.S.C. § 103(a) as
unpatentable over Cramer.
In addition to the Appeal Brief, the Appellant relies on a Declaration
from the Appellant, Mr. Jerry E. Carstens, in further support of patentability
of the rejected claims (App. Br. 20-25, Evidence App'x.).

We REVERSE.

ISSUES
1. Whether the Examiner erred in finding that Cramer describes
each and every limitation of the claims.
2. Whether the Examiner erred in concluding that Cramer renders
obvious, the absorbent system having the recited absorbent article claimed.
FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Cramer describes an elastic thermal knee wrap 10 made of a
rectangular, flexible material 12 with a first end 14 and a second end
16, and an elastic portion 20 therebetween capable of being stretched
along a longitudinal axis 18 (col. 5, ll. 40-45).
2. In one embodiment, the wrap 10 of Cramer has two elastic
members which are a body-facing material 62 and an outer surface
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material 64 that may be made from various materials including woven
and knit fabrics (col. 6, ll. 28-42).
3. The wrap 10 of Cramer is provided with of hook members 32
and loop elements 102 to thereby provide a reclosable fastening
system for securing the wrap 10 around the user's knee (col. 7, ll. 64-
67).
4. The wrap 10 of Cramer also includes one or more thermal
packs 22 which may be received in a pocket 76 in a base material 70
and covered by a cover material 72, the base and cover materials
being made of any number of thermoplastic materials (col. 10, ll. 8-
25, 42-67).
5. Cramer also teaches that "[a]dditional water-holding materials
may also be added as appropriate[]" and identifies numerous different
suitable water-holding materials (col. 12, ll. 3-15).
6. Cramer also states:
Alternatively the layer of material may have elasticity in
a direction parallel to longitudinal axis 18 in addition to
elasticity in a direction transverse to longitudinal axis 18. The
addition of elasticity in a direction parallel to longitudinal axis
18 in the layer of material provides material 12 with the ability
to stretch and recover during the flexing of the knee which
minimizes gapping or wrinkling of wrap 10 during wear.
(Col. 14, ll. 26-34).

PRINCIPLES OF LAW
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described in a single prior
art reference." Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631
(Fed. Cir. 1987). "Anticipation requires the presence in a single prior art
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reference disclosure of each and every element of the claimed invention,
arranged as in the claim." Lindemann Maschinenfabrik GMBH v. American
Hoist & Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984). "A patent
applicant is free to recite features of an apparatus either structurally or
functionally." In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997).
Moreover, claims are to be given their broadest reasonable interpretation
consistent with the specification, reading claim language in light of the
specification as it would be interpreted by one of ordinary skill in the art. In
re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
"Section 103 forbids issuance of a patent when 'the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.'" KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The Court also noted that "[t]o facilitate review, this analysis should
be made explicit." KSR, 550 U.S. at 418, (citing In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006) ("[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")).

ANALYSIS
The Examiner rejects claims 1-22 as anticipated by Cramer, or in the
alternative, as obvious over Cramer (Ans. 4-5). As to anticipation, the
Examiner contends that Cramer discloses a structure that is substantially
identical to the claimed invention, and includes all of the structural
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limitations thereof (Ans. 4-5; see generally, FF 1, 3-5). The Examiner
further contends that Cramer inherently discloses the recited "Holding
Force" (Ans. 4). Alternatively, the Examiner rejects the claims as obvious
contending that "it is not inventive to discover the optimum or workable
ranges by routine experimentation." (Ans. 5.)
The Appellant sets forth numerous different arguments in support of
patentability (App. Br. 9-12). Based on our review of the record, the
dispositive issue is whether Cramer describes, or otherwise renders obvious,
an absorbent system including at least one unitary absorbent article and a
holder for removably holding the same in close bodily contact.
In particular, the Appellant contends that Cramer does not disclose an
absorbent article with a liquid pervious body facing side, a liquid impervious
side opposite the body facing side, and an absorbent component
therebetween, wherein the liquid pervious side and the impervious side are
arranged to form a unitary structure as recited by the rejected claims (App.
Br. 10). Moreover, the Appellant contends that Cramer does not disclose a
two-piece absorbent system comprising a holder that removably holds an
absorbent article (App. Br. 10).
With respect to the limitation requiring at least one absorbent article,
Examiner states:
Cramer teaches body facing materials and outer facing materials of a
variety of fabrics including liquid pervious and liquid impervious
materials (col. 10, lines 42-65). Cramer also teaches an absorbent
component between the body-facing and outer facing materials (col.
12, lines 2-15).
(Ans. 7.)
With respect to the limitation directed to removability of the absorbent
article, the Examiner states:
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However, what is claimed is that the absorbent is capable of being
removably held and the absorbent of Cramer is capable of being
removed. Cramer does in fact teach a pocket system which holds the
exothermic mixture in place. The absorbent material mentioned above
is part of the exothermic system.
(Ans. 7.)
Thus, as we understand the rejections, by citation to specific portions
of Cramer, the Examiner has taken the position that the recited "at least one
absorbent article " is satisfied by the "water-holding materials" of Cramer
(col. 12, lines 3-15; FF 5) when such material is provided between the base
and cover materials 70, 72 that may be liquid pervious or impervious (col.
10, ll. 42-67; FF 4).
However, we find the Examiner's articulated rejections problematic.
In particular, based on the Examiner's application of Cramer, we fail to see
how the holder of Cramer is capable of satisfying the functional recitation of
allowing "close bodily contact" of the least one absorbent article set forth in
the claims. We construe the claims as requiring the holder to be capable of
holding the recited "liquid pervious body facing side" of the absorbent
article so that actual contact with the body of the user can be attained (for
example, by being positioned as the outer-most layer, being received in a
pocket with one or multiple openings, etc.; see, e.g., Specification ¶¶ [0048],
[0054]).
In contrast, based on the Examiner's rejection, the holder of Cramer,
which we presume is satisfied by the various layers of the wrap, would not
be capable of holding the water-holding material in close bodily contact
since the water-holding material is between the base and cover materials 70,
72. To the extent that the Examiner intended to rely on the body-facing
material 62 and the outer surface material 64 (FF 2) as corresponding to the
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sides of the absorbent component to allow for close bodily contact, this
application of Cramer would raise the question of what constitutes the
positively recited holder of paragraph "a)" of independent claims 1, 17 and
20.
In addition, whereas the Examiner has noted that the claims recite
"absorbent article capable of being removably held" in paragraph "b)" of
independent claims 1, 17 and 20 (Ans. 7), we observe that the claims also
functionally recite that holder must be capable of "removably holding at
least one absorbent article" in paragraph "a)" as well, and such functional
limitation must be given weight. While such removable function could be
performed by the device of Cramer if the absorbent article is provided
outside of the base material 70 (or the body-facing material 62) as suggested
by the Examiner (Ans. 6), such a configuration would then not be positioned
between the material layers that "form a unitary structure" as required by the
claims.
In the above regard, while the record does not appear to indicate that
the Examiner is construing the recitation "at least one absorbent article" in
paragraph "a)" of the independent claims as being a different element from
the recitation "at least one absorbent article" in paragraph "b)" of the
independent claims, we find such a construction unreasonable in view of the
specification and claim structure.
Therefore, in view of the above, we do not agree with the Examiner
that Cramer anticipates the rejected claims. In addition, the Examiner has
not set forth a rational reason for modifying the device of Cramer to remedy
the above noted deficiencies of Cramer to result in the invention claimed.
KSR, 550 U.S. at 418. The remaining arguments between the Examiner and
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the Appellant are moot. Correspondingly, we do not sustain the Examiner's
obviousness rejection.

CONCLUSION
1. The Examiner erred in finding that Cramer describes each and
every limitation of the claims.
2. The Examiner has not set forth a rational reason for modifying
the device of Cramer to remedy the deficiencies of Cramer.

DECISION
1. The Examiner's rejection of claims 1-22 under 35 U.S.C.
§ 102(b) as anticipated by Cramer is REVERSED.
2. The Examiner's alternative rejection of claims 1-22 under 35
U.S.C. § 103(a) as unpatentable over Cramer is REVERSED.

REVERSED

KMF

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