Ex parte COE et al.

Board of Patent Appeals and Interferences

May 28, 1998

08200251 (B.P.A.I. May. 28, 1998)

Application for patent filed February 23, 1994. 1
According to appellants, the application is a continuation of
Application 07/980,137, filed November 23, 1992, now
abandoned, which is a continuation of Application 07/731,589,
filed July 17, 1991, now abandoned.
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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journal and (2) is not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte LOUISE C. E. COE, LAURA J. ANDERSON,
MARK L. KASPAR, MARY L. McDANIEL, JOHN C. FAISON,
ANDREW E. DIAMOND, MARY C. WANEK, DAVID K. OSTEEN
and KENNETH Y. WANG
________________
Appeal No. 95-4526
Application 08/200,2511
________________
ON BRIEF
________________
Before McCANDLISH, Senior Administrative Patent Judge, STAAB
and McQUADE, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-4526
Application 08/200,251
-2-
This is a decision on an appeal from the final rejection
of claims 1-26, 28-30 and 37-63, all the claims pending in the
application. Upon further consideration, the examiner has
allowed claims 21-24, 40, 41, 50, 51, 58 and 59, and has
indicated that claims 17, 19 and 20 would be allowable if
rewritten in independent form including all of the limitations
of the base claim and any intervening claims. See page 4 of
the answer. Consequently, only claims 1-16, 18, 25, 26, 28-
30, 37-39, 42-49, 52-57 and 60-63 remain before us for review.
Appellants’ invention pertains to an absorbent article.
With reference to drawing Figure 1, the absorbent article
comprises an absorbent 12, a bicomponent cover 24 which
includes a first material 26 having openings 28 formed
therethrough and a second material 30 different from the first
material, and a separation means 18 positioned between the
first material 26 and the absorbent for dispersing fluid
downward away from the first material and outwardly along the
surface 14 of the absorbent. Independent claims 1 and 4,
copies of which are appended to appellants’ brief, are
illustrative of the subject matter in issue.
Appeal No. 95-4526
Application 08/200,251
We have not included the Mattingly patent listed on2
page 5 of the answer since the claims against which this
reference was cited in the final rejection have now been
allowed by the examiner.
Our understanding of this Japanese language reference3
is derived from a translation, of record in the application.
A copy of said translation is appended to this opinion.
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The references of record relied upon by the examiner in
support of rejections under 35 U.S.C. § 103 are:2
Nishino 4,676,786 Jun. 30,
1987
Matthews et al. (Matthews) 4,397,644 Aug. 9,
1983
Sukiennik et al. (Sukiennik) 4,908,026 Mar.
13, 1990
Sneyd Jr. et al. 2,180,162 Mar. 25,
1987
(British Patent Document)
Nosaki 122,727 Aug. 21,3
1989
(Japanese Patent Document)
The following rejections under 35 U.S.C. § 103 are before
us for review:
(a) claims 1-10, 25, 26, 28-30, 37, 38, 42-48, 52-56 and
Appeal No. 95-4526
Application 08/200,251
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60-63, unpatentable over Sukiennik in view of Nosaki;
(b) claims 8 and 9, unpatentable over Sukiennik in view
of Nosaki and further in view of Matthews;
(c) claims 11-16, 18, 39, 49 and 57, unpatentable over
Sukiennik in view of Nosaki and further in view of Nishino;
and
(d) claims 30, 45 and 54, unpatentable over Sukiennik in
view of Nosaki and further in view of Sneyd.
The examiner's rationale in rejecting the claims is set
forth in the final rejection and the answer.
The opposing viewpoints of appellants are found in the
brief and the reply brief. Appellants also rely on the
affidavit of Mark L. Kaspar under 35 U.S.C. § 132 (Paper No.
7, submitted August 18, 1994) in support of their position.
The Rejection based on Sukiennik and Nosaki
(rejection (a))
(1) Claims 1-3, 25, 26, 28-30, 37, 42-48, 52-56 and 60-63.
Considering the examiner’s foundation combination of
Sukiennik and Nosaki, both of which are mentioned on page 2 of
appellants’ specification in the “Background of the Invention”
Appeal No. 95-4526
Application 08/200,251
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section, Sukiennik pertains to a flow distribution system for
an absorbent pad. The pad of Sukiennik comprises an absorbent
30, a backing member 22, a fluid permeable cover 14 having a
first perforated longitudinal area 16 (column 3, lines 5-7)
and second unperforated areas flanking the first area (see,
for example, Figure 1), and a flow control layer 28 for
controlling dispersion of body fluid, said flow control layer
being positioned in an area generally corresponding to the
perforated area 16 (column 3, lines 19-24). Sukiennik teaches
at column 3, lines 33-38, that “[t]he flow zone control layer
28 is selected such that it will
preferentially transfer fluid along its length prior to
transferring the fluid to the absorbent 30. However, the
hairy fibers 54 on its lower side aids [sic, aid] in transfer
of fluid to the absorbent 30.”
Nosaki pertains to a sanitary napkin. With reference to
Figures 4 and 5, the sanitary napkin includes an absorbent 8,
a liquid permeable surface layer comprising an apertured
central band region 2 flanked by apertured band regions 3, and
an intermediate layer 11 (translation, page 3) between the
Appeal No. 95-4526
Application 08/200,251
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surface layer and the absorbent. Nosaki describes the band
regions 2 and 3 as follows: “said surface layer comprises a
first band region [2] having a hydrophobic plastic film with a
number of openings at least in the menstrual blood absorptive
opening region, and a second band region [3] having
hydrophobic nonwoven cloth with a number of openings”
(translation, page 2). The examiner has implicitly found, and
appellants do not dispute, that the material of the band
region 2 is different from the material of the band regions 3.
Independent claim 1 calls for an absorbent article
comprising, inter alia, a bicomponent cover including a first
material having openings formed therethrough and a
nonapertured second material, with the second material being
different from the first material. Independent claims 25, 26,
29, 30, 37, 42-46, 48, 52-54 contain similar limitations. In
explaining her
rejection of these claims based on the teachings of Sukiennik
and Nosaki, the examiner states that “the only modification
being made is to make Sukiennik’s cover from separate pieces
[of different materials?] instead of one whole sheet, as shown
Appeal No. 95-4526
Application 08/200,251
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in the Japanese ‘727 patent. The Examiner has never suggested
that the bicomponent cover should be completely covered with
apertures” (answer, pages 6-7).
While we appreciate that Nosaki’s liquid permeable
surface area is a “bicomponent” in the sense that the bands 2
and 3 are separate pieces made of different materials, we are
unable to agree with the examiner’s position that the
ordinarily skilled artisan would have focused exclusively on
this feature of Nosaki in modifying Sukiennik, as proposed by
the examiner. Where prior art references require a selective
combination to render obvious a claimed invention, there must
be some reason for the combination other than hindsight
gleaned from the invention disclosure, Interconnect Planning
Corp. v. Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed.
Cir. 1985). Here, the examiner’s motivation for the proposed
modification of Sukiennik is “to simplify the manufacturing
process” (final rejection, page 4).
We agree with appellants, however, that the proposed use of
multiple pieces in the fabrication of Sukiennik’s cover would
more likely complicate the manufacturing process thereof. In
Appeal No. 95-4526
Application 08/200,251
As explained on pages 12-13 of the specification of the4
present application: “Both the bicomponent cover 24 and the
separation means 18 are designed to minimize fluid transfer in
the upward or reverse direction. This feature, commonly
referred to as ‘a low rewet value,’ is important to providing
a dry feel to the cover 24.”
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the fact situation before us, we are unable to agree with the
examiner that one of ordinary skill in the art would have been
motivated by the teachings of Sukiennik and Nosaki to provide
a “bicomponent” cover in Sukiennik including a first material
having openings formed therethrough and a nonapertured second
material, with the second material being different from the
first material.
In light of the foregoing, we shall not sustain the
standing § 103 rejection of independent claims 1, 25, 26, 29,
30, 37, 42-46, 48, 52-54, or dependent claims 2, 3, 28, 55 and
60-63, based on the teachings Sukiennik and Nosaki.
Independent claim 47 requires that the first material in
conjunction with the separation means has a rewet value of4
less than 0.1 grams. In rejecting this claim, the examiner
concedes that the tests described in the Kaspar affidavit
“show[] that Sukiennik’s diaper has a rewet value which
exceeds 0.1 grams” (final rejection, page 5). Nevertheless,
Appeal No. 95-4526
Application 08/200,251
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the examiner has taken the position that the claimed subject
matter is not patentably distinguishable from the applied
prior art insofar as the rewet values are concerned because
“[a]pplicants have not been convincing in their attempt to
demonstrate the criticality of the 0.1 gram rewet value”
(final rejection, page 5). We cannot accept this position.
The examiner has advanced no convincing reasoning, and
none is apparent to us, as to why it would have been obvious
to one of ordinary skill in the art to modify the absorbent
pads of Sukiennik or Nosaki to meet the “rewet value of less
than 0.1 grams” requirement of claim 47. While Sukiennik
indicates generally that “rewetting” is a continuing problem
in the formation of absorbent articles for bodily excretions
(column 1, lines 23-26), it is not clear to us why the
ordinarily skilled artisan would make the selections of
material type, density and thickness necessary to arrive at a
rewet value that is low enough to fall within the claimed
range other than through exercise of hindsight knowledge
gleaned from first reading appellants’ disclosure. As to the
examiner’s comments regarding appellants’ alleged failure to
Appeal No. 95-4526
Application 08/200,251
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establish criticality of the claimed range, criticality,
whatever may be intended by that term, is not a requirement of
patentability under the patent statute, but is merely one of
the indicia suggestive of nonobviousness. See, for example,
In re Luvisi, 342 F.2d 102, 108, 144 USPQ 646, 651 (CCPA
1965). In short, the examiner’s position that the combined
teachings of Sukiennik and Nosaki would have led the
ordinarily skilled artisan to an absorbent article wherein the
first material in conjunction with the separation means has a
rewet value of less than 0.1 grams is, at best, speculative.
We therefore shall not sustain the standing § 103
rejection of claim 47 as being unpatentable over Sukiennik and
Nosaki. Furthermore, in that independent claims 46, 48 and
52-54 also recite that the first material in conjunction with
the separation means have a rewet value of less than 0.1
grams, the presence of this limitation constitutes an
additional reason for not sustaining the § 103 rejection
thereof based on Sukiennik and Nosaki.
Claim 56 depends from independent claim 4, discussed
below, and adds that the first material in conjunction with
Appeal No. 95-4526
Application 08/200,251
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the separation means “has a rewet value which is at least 10%
lower than the rewet value of said second material without
said
separation means.” In rejecting this claim, the examiner has
taken the position that
since Applicants’ bicomponent cover is of the same
nature as Sukiennik’s, as modified by the Japanese
patent, and Sukiennik’s separation layer is made of
the same materials as disclosed by Applicants’ [sic,
Applicants] (compare, for example, Sukiennik, column
5, lines 3-20 with page 6, lines 14-21 of the
instant application), it is reasonable to assume
that the rewet value of Sukiennik’s first material
in conjunction with the separation layer can be less
than that of the second material in conjunction with
the absorbent only . . . . [final rejection, page 4]
Given appellants’ discussion on page 3 of the reply brief
as to the various ways that the “bicomponent” cover teaching
of Nosaki could be applied in Sukiennik, and the Kaspar
affidavit test data which indicates that a flow control layer
made in accordance with the teachings of Sukiennik tends of
increase rather than decrease rewet value when used in
conjunction with a cover layer, there is no reasonable basis
for concluding that the modified Sukiennik’s absorbent article
Appeal No. 95-4526
Application 08/200,251
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would possess the characteristic called for in claim 56. As
with the rejection of claim 47, the examiner’s position is
speculative.
We therefore shall not sustain the standing § 103
rejection of claim 56. Furthermore, in that dependent claims
60-63 also recite that the separation means has a rewet value
which is at
least 10% lower than the rewet value of the second material
without the separation means, the presence of this limitation
constitutes an additional reason for not sustaining the § 103
rejection thereof based on Sukiennik and Nosaki.
(2) Claims 4-10 and 38.
Unlike the majority of the independent claims on appeal,
independent claim 4 does not require the second material of
the bicomponent cover to be nonapertured. In addition, claim
4 does not set forth any particulars with respect to rewet
values. From our perspective, it would have been obvious to
one of ordinary skill in the art to provide a fluid control
Appeal No. 95-4526
Application 08/200,251
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layer of the type disclosed by Sukiennik at element 28 beneath
the first band region 2 of Nosaki but not the second band
regions 3 thereof, suggestion being found in Sukiennik’s
teaching that a flow control layer such as element 28 should
be located only in the middle portion of the pad (column 2,
lines 14-19) to (1) minimize side staining (column 1, lines
67-68), (2) give the wearer the perception that the absorbed
material is held in the center of the pad (column 2, lines 62-
65), and (3) provide uniform transfer of fluid into the
absorbent so as not to overload the center or
target area during early use of the pad (column 3, lines 1-4).
The resulting modified Nosaki pad would correspond to the pad
of claim 4 in all respects, in our view. In particular, the
modified Nosaki pad would include be a “bicomponent” cover as
claimed (see our above discussion of Nosaki), and a separation
means for controlling dispersion of fluid downwardly. In this
latter regard, the flow control layer 28 of Sukiennik
qualifies as a separation means for controlling dispersion of
Appeal No. 95-4526
Application 08/200,251
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body fluid downwardly in the z-direction, as broadly claimed,
in that it preferentially transfers fluid along its length
prior to transferring the fluid to the absorbent, and in that
hairy fibers on its lower side aid in transferring fluid to
the absorbent (column 3, lines 33-38).
For these reasons and based on the arguments and evidence
before us, the difference between the subject matter recited
in independent claim 4 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 one of ordinary skill in the art.
We therefore shall sustain the standing rejection of
independent claim 4 as being unpatentable over the combined
teachings of Sukiennik and Nosaki.
We also shall sustain the rejection of claims 5-10, which
depend from claim 4, as being unpatentable over the teachings
of Sukiennik and Nosaki, since appellants have not separately
argued the merits of these dependent claims with any
reasonable degree of specificity. See 37 CFR 1.192(c)(7) as
Appeal No. 95-4526
Application 08/200,251
In light of the test described in the Kaspar affidavit5
in the paragraph spanning pages 4 and 5, appellants’ statement
on page 16 of the brief that “[n]o single prior art references
teach [sic, reference teaches] rewet values below 1.7 grams .
. .” is not well taken.
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amended, effective April 21, 1995. See also In re Young, 927
F.2d 588, 590, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re
Wood, 582 F.2d 638, 642, 199 USPQ 137, 140 (CCPA 1978).
Independent claim 38 is similar to independent claim 4,
but adds that the first material in conjunction with the
separation layer “has a rewet value of less than 1.7 grams.”
In that the test described in the Kaspar affidavit in the
paragraph spanning pages 4 and 5 establishes that sanitary
napkins constructed in accordance with the flow control layer
teachings of Sukiennik have a rewet value of about 1.36 grams,
which is well within the claimed range, it is reasonable to
conclude that providing a flow control layer in accordance
with Sukiennik’s teachings in Nosaki would result in an
absorbent article that satisfies the rewet
requirement of claim 38.5
Appeal No. 95-4526
Application 08/200,251
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In light of the above, we also shall sustain the
rejection of claim 38 as being unpatentable over the teachings
of Sukiennik and Nosaki.
Inasmuch as the basic thrust of our affirmance of the §
103 rejection of claims 4-10 and 38 based on Sukiennik and
Nosaki differs from the rationale advanced by the examiner, we
hereby designate our affirmance to be a new ground of
rejection pursuant to 37 CFR § 1.196(b) to allow appellants a
fair opportunity to react thereto (see In re Kronig, 539 F.2d
1300, 1302-03, 190 USPQ 425, 426-27 (CCPA 1976).
The Rejections based on Sukiennik and Nosaki
and Other Prior Art
((rejections (b), (c) and (d))
Claims 8 and 9 depend from claim 6 and stand additionally
rejected as being unpatentable over Sukiennik in view of
Nosaki and further in view of Matthews (rejection (b)).
Appellants have not argued this rejection separate from the
rejection of these claims based on Sukiennik and Nosaki,
instead merely arguing that Matthews does not overcome the
deficiencies of the basic combination.
Accordingly, we shall sustain this additional rejection
Appeal No. 95-4526
Application 08/200,251
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of claims 8 and 9 for the reasons stated above, our affirmance
once again being designated a new ground of rejection pursuant
to 37 CFR § 1.196(b).
Claims 11-16, 18, 39, 49 and 57 stand rejected as being
unpatentable over Sukiennik in view of Nosaki and further in
view of Nishino (rejection (c)), and claims 30, 45 and 54
stand rejected as being unpatentable over Sukiennik in view of
Nosaki and further in view of Sneyd (rejection (d)). Each of
these claims calls for an absorbent article comprising, inter
alia, a bicomponent cover including a first material having
openings formed therethrough and a nonapertured second
material, with the second material being different from the
first material. We have carefully reviewed the Nishino and
Sneyd references additionally applied by the examiner against
these claims but find nothing therein which makes up for the
deficiencies of the basic combination of Sukiennik and Nosaki
noted above with respect to this claim limitation.
Accordingly, we shall not sustain the standing § 103
rejection of claims 11-16, 18, 39, 49 and 57 based on
Sukiennik, Nosaki and Nishino (rejection (c)), or the standing
Appeal No. 95-4526
Application 08/200,251
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§ 103 rejection of claims 30, 45 and 54 based on Sukiennik,
Nosaki and Sneyd (rejection (d)).
Summary
The rejection of claims 1-10, 25, 26, 28-30, 37, 38, 42-
48, 52-56 and 60-63 as being unpatentable over Sukiennik in
view of Nosaki (rejection (a)) is reversed as to claims 1-3,
25, 26, 28-30, 37, 42-48, 52-56 and 60-63, but is affirmed as
to claims 4-10 and 38.
The rejection of claims 8 and 9 as being unpatentable
over Sukiennik in view of Nosaki and Matthews (rejection (b))
is affirmed.
The rejection of claims 11-16, 18, 39, 49 and 57 as being
unpatentable over Sukiennik in view of Nosaki and Nishino
(rejection (c)) is reversed.
The rejection of claims 30, 45 and 54 as being
unpatentable over Sukiennik in view of Nosaki and Sneyd
(rejection (d)) is reversed.
In each instance, our affirmance is designated a new
ground of rejection pursuant to 37 CFR § 1.196(b).
Appeal No. 95-4526
Application 08/200,251
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The decision of the examiner is affirmed-in-part.
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides, “A new ground of rejection shall
not be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellants,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (37
CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Appeal No. 95-4526
Application 08/200,251
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART; 37 CFR § 1.196(b)
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
)
)
LAWRENCE J. STAAB ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 95-4526
Application 08/200,251
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Thomas J. Connelly
Kimberly-Clark Corporation
Patent Department
401 North Lake Street
Neenah, WI 54956