Ex Parte Conway

Board of Patent Appeals and Interferences

Jan 10, 2003

08853425 (B.P.A.I. Jan. 10, 2003)

1 Because the claims have been twice rejected, the board has
jurisdiction as discussed in Ex parte Lemoine, 46 USPQ2d 1432
(Bd. Pat. App. & Int. 1995).
1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte DAVID W. CONWAY
__________
Appeal No. 2002-0502
Application 08/853,425
___________
ON BRIEF
___________
Before OWENS, DELMENDO and JEFFREY T. SMITH, Administrative
Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the nonfinal third rejection of
claims 1-22, which are all of the claims in the application.1
Appeal No. 2002-0502
Application 08/853,425

2
THE INVENTION
The appellant’s claimed invention is directed toward an
absorbent barrier sheet and a method for making it. Claim 8,
which claims the absorbent barrier sheet, is illustrative:
8. An absorbent barrier sheet comprising:
an integral fabric web having a generally hydrophobic upper
portion at the top of the sheet, the fabric web having a lower
fluid-retaining portion in wicking communication with the upper
portion whereby the top of the sheet tends towards dry, the lower
fluid-retaining portion including a lower surface; and
a barrier material intimately connected to substantially the
entire lower surface of the fabric web lower portion whereby the
bottom of the sheet tends to be dry.
THE REFERENCES
Whyte 3,881,491 May 6, 1975
Korpman 4,886,511 Dec. 12, 1989
Heiman 5,290,269 Mar. 1, 1994
Osborn, III 5,383,869 Jan. 24, 1995
THE REJECTIONS
Claims 1-22 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Heiman in view of Osborn, Korpman or Whyte.
Appeal No. 2002-0502
Application 08/853,425

2 Claim 18, which is the broadest claim to a method for
forming an absorbent barrier sheet, is of comparable scope to
claim 8.
3
OPINION
We reverse the aforementioned rejections. We need to
address only claim 8, which is the broadest claim to an absorbent
barrier sheet.2
Rejection over Heiman in view of Osborn
Heiman discloses an absorbent barrier sheet comprising an
integral fabric having a hydrophobic upper portion which tends
toward dry, a lower fluid-retaining portion in wicking
communication with the upper portion, and a barrier sheet, which
tends to be dry, below the lower fluid-retaining portion (col. 7,
lines 21-27; col. 9, line 63 - col. 10, line 18; col. 11,
lines 27-45; col. 13, line 59 - col. 14, line 4). The appellant
acknowledges that the appellant’s integral fabric web is the same
as that of Heiman (specification, page 6, lines 3-9; brief,
page 6). Heiman’s absorbent barrier sheet differs from that of
the appellant in that Heiman’s barrier sheet is not intimately
connected to substantially the entire lower surface of the fabric
web lower portion. Instead, Heiman’s integral fabric web and
barrier sheet are held together by overcast stitching or the
Appeal No. 2002-0502
Application 08/853,425

3 The appellant’s barrier material is intimately connected
to the integral fabric web by extrusion coating or laminating the
barrier material onto the lower fluid-retaining portion of the
integral fabric web (specification, page 7, lines 6-17).
4
like, or by tape around their peripheral edges which is held in
place by stitching (col. 10, lines 26-48).3
Osborn discloses a sanitary napkin comprising an absorbent
means (13) which includes an absorbent core (34) between a liquid
permeable topsheet (25) and a liquid impermeable barrier
sheet (16) (col. 3, line 51 - col. 4, line 5). The absorbent
core preferably is made of hydrogel-forming material (col. 4,
lines 6-7). Osborn teaches (col. 4, lines 41-49):
The absorbent core 34 may be attached over the core’s
first or second major surfaces 46 and 49, respectively,
to adjacent members such as the topsheet 25 and barrier
sheet 16 by any of the means well known in the art,
such as by spray-gluing or lines or spots of adhesive.
Such attachment facilitates integrity and
recoverability of the absorbent materials in use so as
to maintain an optimum degree of absorbency.
The examiner argues that one of ordinary skill in the art
would have been led by Osborn to use an adhesive to attach
Heiman’s integral fabric web to the barrier sheet to facilitate
integrity of the absorbent barrier sheet and to reduce cost by
eliminating Heiman’s expensive binding and/or stitching
Appeal No. 2002-0502
Application 08/853,425

4 We have renumbered the pages of the examiner’s answer
consecutively.
5 Heiman prevents bunching up by use of a stiffener sheet
(col. 19, lines 1-20 and 40-48).
5
operations (answer, page 5).4 Improved integrity, the examiner
argues, would prevent bunching up, which Heiman indicates is
undesirable (answer, pages 3 and 5).5
In order for a prima facie case of obviousness of the
appellant’s claimed invention to be established, the prior art
must be such that it would have provided one of ordinary skill in
the art with both a suggestion to carry out the appellant’s
claimed invention and a reasonable expectation of success in
doing so. See In re Dow Chemical Co., 837 F.2d 469, 473, 5
USPQ2d 1529, 1531 (Fed. Cir. 1988). “Both the suggestion and the
expectation of success must be founded in the prior art, not in
the applicant’s disclosure.” Id. The mere possibility that the
prior art could be modified such that the appellant’s process is
carried out is not a sufficient basis for a prima facie case of
obviousness. See In re Brouwer, 77 F.3d 422, 425, 37 USPQ2d
1663, 1666 (Fed. Cir. 1996); In re Ochiai, 71 F.3d 1565, 1570,
37 USPQ2d 1127, 1131 (Fed. Cir. 1995).
Appeal No. 2002-0502
Application 08/853,425

6
Heiman uses a flexible stiffener sheet (40) to prevent or
minimize bunching (col. 19, lines 1-3 and 12-20). The examiner
has not established that Heiman and Osborn themselves would have
motivated one of ordinary skill in the art to use Osborn’s
adhesive instead of Heiman’s stiffener sheet. Also, Heiman’s
absorbent barrier sheet is for a washable, reusable incontinent
pad (col. 14, lines 63-66), whereas Osborn’s absorbent article is
not intended to be laundered but, rather, is to be discarded
after a single use (col. 3, lines 42-45). The examiner has not
established that one of ordinary skill in the art would have had
a reasonable expectation that Osborn’s adhesive would be suitable
in laundered article.
Moreover, the purpose of Heiman’s binding strip referred to
by the examiner (answer, page 3) is not only to hold layers 22
and 25 of an incontinent pad together, but to define the rounded
corners of the pad (col. 10, lines 26-46). The examiner has not
established that the applied references would have motivated one
of ordinary skill in the art to substitute adhesive for Heiman’s
binding tape and thereby forgo Heiman’s desired rounded corners.
Heiman’s layers 22 and 25 also can be held together by overcast
stitching or the like (col. 10, lines 47-48). The examiner,
however, has not established that Osborn’s teaching regarding
Appeal No. 2002-0502
Application 08/853,425

7
using adhesive to hold layers together in a single-use,
disposable article would have provided one of ordinary skill in
the art with a reasonable expectation of success in using the
adhesive to hold together layers of a washable, reusable article.
For the above reasons we conclude that the examiner has not
carried the burden of establishing a prima facie case of
obviousness of the appellant’s claimed invention over the
combined teachings of Heiman and Osborn.
Rejection over Heiman in view of Korpman
Korpman discloses a corrugated disposable diaper having
elastic strings between a fibrous batt and a liquid-impermeable
film, wherein the film has been applied in molten form by
extrusion (col. 2, lines 35-64; col. 3, lines 43-44; col. 4,
lines 16-18).
The examiner argues that it would have been obvious to one
of ordinary skill in the art to apply Heiman’s liquid-impervious
layer (22) by Korpman’s extrusion method to reduce cost by
eliminating Heiman’s expensive binding and/or stitching step for
holding liquid-impervious layer 22 and liquid-absorbing layer 25
together (col. 10, lines 21-48). As discussed above regarding
the rejection over Heiman in view of Osborn, however, the
examiner has not established that the applied references would
Appeal No. 2002-0502
Application 08/853,425

8
have 1) motivated one of ordinary skill in the art to forgo
Heiman’s rounded corners produced by Heiman’s binding method, and
2) provided one of ordinary skill in the art with a reasonable
expectation of success in using Korpman’s extruded film, which is
part of a disposable diaper, in Heiman’s washable, reusable
article.
Accordingly, we conclude that the examiner has not carried
the burden of establishing a prima facie case of obviousness of
the appellant’s claimed invention over Heiman in view of Korpman.
Rejection over Heiman in view of Whyte
Whyte discloses a self-inflating structure which can be
combined with an absorbent pad to form a disposable diaper or a
bed pad (col. 1, lines 4-8; col. 5, lines 25-34; col. 6,
lines 40-67). The structure includes a plain lamina (22) and an
embossed lamina (23) which are secured together by fusing or
thermowelding to form collapsed, inflatable pillows (21) (col. 2,
lines 47-65). An absorbent pad is secured to the embossed lamina
(col. 8, lines 4-5).
The examiner argues that Whyte is relied upon for lack of a
teaching of binding tape and/or edge stitching, and that without
a disclosed method of attaching the absorbent pad to the embossed
lamina, one of ordinary skill in the art would have had to look
Appeal No. 2002-0502
Application 08/853,425

9
to well known methods of attachment such as adhesive, fusion,
thermal bonding or extrusion (answer, page 9). The examiner
argues that one of ordinary skill in the art, having selected
those methods of attachment of Whyte’s absorbent pad to the
embossed lamina, would have used the methods to attach Heiman’s
liquid-absorbing layer to the liquid-impervious layer to reduce
cost by eliminating Heiman’s expensive binding and/or stitching
step (answer, page 5). The examiner, however, has not explained
why one of ordinary skill in the art would have been led by the
applied references to select adhesive, fusion, thermal bonding or
extrusion to attach Whyte’s absorbent pad to the embossed lamina,
let alone to make that selection and then use that method to bond
Heiman’s liquid-absorbing layer to the liquid-impervious layer.
The record indicates that the motivation relied upon by the
examiner for making these selections comes from the appellant’s
disclosure of his invention rather than coming from the applied
prior art and that, therefore, the examiner used impermissible
hindsight when rejecting the claims. See W.L. Gore & Associates
v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed.
Cir. 1983), cert. denied, 469 U.S. 851 (1984); In re Rothermel,
276 F.2d 393, 396, 125 USPQ 328, 331 (CCPA 1960). Hence, the
Appeal No. 2002-0502
Application 08/853,425

10
examiner has not established a prima facie case of obviousness of
the appellant’s claimed invention over Heiman in view of Whyte.
DECISION
The rejections of claims 1-22 under 35 U.S.C. § 103 over
Heiman in view of Osborn, Korpman or Whyte are reversed.
REVERSED
)
TERRY J. OWENS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ROMULO H. DELMENDO )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JEFFREY T. SMITH )
Administrative Patent Judge )
TJO/ki
Appeal No. 2002-0502
Application 08/853,425

11
Kurt L. Grossman
Herron & Evans
2700 Carew Tower
Cincinnati, OH 45202