Ex parte Cesco-Cancian

Board of Patent Appeals and Interferences

Dec 22, 1999

08167692 (B.P.A.I. Dec. 22, 1999)

Application for patent filed December 15, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ANNAMARIA CESCO-CANCIAN
_____________
Appeal No. 1998-2519
Application 08/167,6921
______________
ON BRIEF
_______________
Before CALVERT, COHEN and NASE, Administrative Patent Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
to 19, all the claims remaining in the application.
The claims on appeal are drawn to an absorbent garment,
and are reproduced in the appendix of the appellant’s brief.
Appeal No. 1998-2519
Application No. 08/167,692
All references herein to the examiner’s answer are to2
the answer mailed on July 6, 1999 (Paper No. 25).
2
The references applied in the final rejection are:
Weisman et al. (Weisman) 4,610678 Sep. 9, 1986
Widlund et al. (Widlund) WO 93/17648 Sep. 16, 1993
The appealed claims stand finally rejected on the
following grounds:
(1) Claims 1, 2, 4 to 13, 15, 16, 18 and 19, anticipated by
Widlund, under 35 U.S.C. § 102(a);
(2) Claims 3 and 14, unpatentable over Widlund in view of
Weisman, under 35 U.S.C. § 103;
(3) Claim 17, unpatentable over Widlund, under 35 U.S.C. §
103.
Considering first the rejection of claim 1, we note that
although the examiner states in the answer that the rejection2
is set forth in Paper No. 11 (the first rejection), neither in
Paper No. 11 nor in the answer does the examiner point out
where the specific claimed limitations are found in, or
compare any of the rejected claims feature by feature with,
Appeal No. 1998-2519
Application No. 08/167,692
3
the prior art relied on. See MPEP § 1208, p. 1200-17, item
10(c) and (e)(July 1998). Nevertheless, it appears that the
issue involved here is whether Widlund discloses the following
underlined limitations recited in the last paragraph of claim
1:
a tummy band formed of an elastic
material adapted to stretch in a first
direction and a second direction
substantially perpendicular to the first
direction, the tummy band operatively
joined to the outer cover adjacent at least
a portion of one of the waist region, the
tummy band elastically connecting one end
of the absorbent assembly and the outer
cover, the first direction being generally
parallel to the longitudinal axis of the
absorbent assembly.

The examiner seems to take the position that the
underlined limitations are readable on the regions 29, 30 of
Widlund, even though those regions are disclosed as being
essentially stretchable only in the transverse direction (page
14, lines 26 to 29; page 15, lines 4 to 8), because the
elastic threads 26 therein
can also stretch at an angle about the
child that is 45 degrees below a datum line
Appeal No. 1998-2519
Application No. 08/167,692
4
defined as the lateral line of the diaper’s
waist band about the child and can also
stretch in a direction 45 degrees above it,
thus Widlund satisfying this requirement.
[Paper No. 11, pages 2 to 3].
In response to appellant’s argument that such stretching at a
45 degree angle to the waist would not satisfy the requirement
of claim 1 that the first direction is “generally parallel to
the longitudinal axis of the absorbent assembly” (brief, page
7), the examiner asserts that the recited “longitudinal axis”
is not required to extend from the front waist to the rear
waist (answer, page 4).
We do not consider the examiner’s position to be well
taken. Even assuming that the examiner’s scenario of
stretching at
45 degree angles would satisfy the claim requirement that the
elastic material is adapted to stretch in substantially
perpendicular first and second directions, claim 1 recites
that the absorbent assembly has a longitudinal axis and
opposite longitudinally spaced ends, and the tummy band
elastically connects one end of the absorbent assembly and the
outer cover. Thus, since the ends are defined as
Appeal No. 1998-2519
Application No. 08/167,692
5
“longitudinally spaced,” the longitudinal axis of the
absorbent assembly must extend from the end connected to the
tummy band to the other end of the assembly; in the Widlund
device, this would be from end 22 to end 23, or approximately
along line II - II of Fig. 1. The elastic material 26 of
Widlund’s tummy band 29 or 30 does not stretch generally
parallel to this axis, and therefore does not meet claim 1.
On pages 3 and 4 of the answer, the examiner
alternatively argues that the elastic film disclosed by
Widlund at page 14, line 30 et seq., would satisfy the
bidirectional stretch limitation.
In order to anticipate a claim, a reference must disclose
every limitation of the claimed invention, either explicitly
or inherently. In re Schreiber, 128 F.3d 1473, 1477, 44
USPQ2d 1429, 1431 (Fed. Cir. 1997). In this case, Widlund
does not explicitly disclose that the “elastically stretchable
film” is stretchable in two, substantially perpendicular
directions, and therefore claim 1 is not anticipated unless
this property would be inherent.
A prior art reference does not anticipate by inherency
unless it necessarily functions in accordance with, or
Appeal No. 1998-2519
Application No. 08/167,692
6
includes, the claimed limitations. Atlas Powder Co. v. IRECO
Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1946-47 (Fed. Cir.
1999). Here, it is not apparent to us that an elastically
stretchable film as disclosed by Widlund would necessarily be
stretchable in two substantially perpendicular directions, and
in fact Widlund would tend to indicate that the disclosed film
is not, because, after disclosing suitable materials for the
film on page 15, lines 1
to 4, Widlund states in lines 4 to 8 that:
A similar elastically stretchable material
may also be disposed so that the
elastically stretchable regions 29, 30 are
essentially stretchable solely in the
transverse direction of the diaper.
Accordingly, we conclude that claim 1, and claim 2
dependent thereon, are not anticipated by Widlund.
Independent claim 4 contains limitations which are the
same as those underlined in the above-quoted last paragraph of
claim 1, and is not anticipated by Widlund for the same
reasons as are applicable to claim 1. Dependent claims 5 to 7
are likewise not anticipated.
Independent claims 8 and 13 recite, inter alia, that the
claimed suspension member or members are “adapted to stretch
Appeal No. 1998-2519
Application No. 08/167,692
7
in a direction generally parallel to the longitudinal axis of
the absorbent assembly.” As discussed above, the elastically
stretchable regions 29, 30 of Widlund are not disclosed,
explicitly or inherently, as being stretchable in the claimed
direction; therefore, neither these claims, nor dependent
claims 9 to 12, 15, 16, 18 and 19, are anticipated.
Rejection (1) will not be sustained.
Rejections (2) and (3)
These rejections will not be sustained, since neither
Weisman, nor the argument advanced by the examiner as to
claim 17, overcome the deficiencies of Widlund noted above.
Conclusion
The examiner’s decision to reject claims 1 to 19 is
reversed.
REVERSED
Appeal No. 1998-2519
Application No. 08/167,692
8

IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
)
IRWIN CHARLES COHEN ) BOARD OF
PATENT
Administrative Patent Judge )
) APPEALS AND
)
) INTERFERENCES
JEFFREY V. NASE )
Administrative Patent Judge )
IAC:lmb

Thomas M. Gage
Kimberly-Clark Corporation
401 North Lake Street
Neenah, WI 54956