Ex Parte DAHL et al

Patent Trial and Appeal Board

May 25, 2018

14646927 (P.T.A.B. May. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/646,927 05/22/2015
105718 7590 05/30/2018
SCA Hygiene Products AB
c/o Buchanan Ingersoll & Rooney, PC
1737 King Street, Suite 500
Alexandria, VA 22314
FIRST NAMED INVENTOR
Dennis DAHL
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1018798-000816 1041
EXAMINER
SASS,SARAA
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
05/30/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DENNIS DAHL and
ANGELICA BURVALL 1
Appeal2018-002013
Application 14/646,927
Technology Center 3700
Before JOHN C. KERINS, MICHAEL L. HOELTER, and
SEAN P. O'HANLON, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-7, 9-14, 16, 21, and 22, which constitute all the
claims pending in this application. App. Br. 2. Claims 8 and 15 have been
canceled while claims 17-20 have been withdrawn. App. Br. 2. Appellants'
1 Appellants identify the real party in interest as SCA HYGIENE
PRODUCTS AB (which, we are informed, "is in the process of changing its
name to ESSITY AB"). App. Br. 2.
Appeal2018-002013
Application 14/646,927
counsel provided oral argument on May 15, 2018. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "relates to an absorbent article, such as
an incontinence pad, a sanitary towel, a pantyliner or the like." Spec. 1 :5---6.
Apparatus claim 1 is the sole independent claim, is illustrative of the claimed
subject matter, and is reproduced below:
1. An absorbent article comprising;
at least two stacked individual absorbent pads, wherein a
first of said absorbent pads is configured for being releasably
attached to an underwear of a user such that when the first
absorbent pad is releasably attached to the underwear, the first
absorbent pad is in direct contact with the underwear, and a
bottom surface of a second of said absorbent pads is configured
for being releasably attached to a top surface of said first
absorbent pad via one of a pressure-sensitive adhesive, ultrasonic
processing, hooks and loops, thermal bonding and mechanical
bonding,
wherein the second absorbent pad comprises at least one
side portion which has been folded upwardly and inwardly along
a substantially longitudinal fold line, such as to form a graspable
gripping flap for manual handling of the second absorbent pad
during removal thereof from the first absorbent pad, and wherein
the gripping flap is not attached to the first absorbent pad.
Roessler et al.
Pateras et al.
REFERENCES
us 5,458,591
US 2007 /0078425 Al
REJECTIONS ON APPEAL
Oct. 17, 1995
Apr. 5, 2007
Claim 21 is rejected under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement.
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Application 14/646,927
Claim 22 is rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention.
Claims 1-7, 9-14, 16, 21, and 22 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Roessler and Pateras.
ANALYSIS
The rejection of claim 21 as failing
to comply with the written description requirement
Claim 21 recites first and second absorbent "cores" arranged to
"overlap in a thickness direction." App. Br., Claims App'x 3. The
Examiner contends that the limitation "'overlap in a thickness direction' is
not recited in the Instant Specification and so presents new matter." Final
Act. 3. Appellants reference the submitted Specification wherein "an
absorbent core 6" is associated with "first absorbent pad 2." App. Br. 27;
see also Spec. 11 :29-12:2. Appellants also identify where Appellants'
Specification describes either "a relatively thin absorbent core" or "a
relatively thick absorbent core" associated with "second absorbent pad 3."
App. Br. 27-28; referencing Spec. 13:7-12. Nevertheless, Appellants'
Figures 1 and 2 illustrate pads 2 and 3 stacked one atop the other but with
the second absorbent pad 3 being illustrated "free from a separate absorbent
core." Spec. 11 :24--12:4. However, as above, Appellants' Specification
clearly states that second absorbent pad 3 may have either a thin or thick
core. See also App. Br. 28 ("when the second absorbent pad 3 ... includes a
second absorbent core and is stacked with the first absorbent pad 2 ... ").
Accordingly, in view of the stacked relationship of the two pads depicted in
Appellants' Figures, we do not agree with the Examiner's assessment that
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Application 14/646,927
Appellants' Specification lacks written description support for their
respective cores overlapping "in a thickness direction" as claimed.
Consequently, and based on the record presented, we do not sustain the
Examiner's rejection of claim 21 as failing to comply with the written
description requirement.
The rejection of claim 22
as being indefinite
The Examiner states, "[t]he claim 22 term 'approximately equal' is
indefinite since what is encompassed by a length being approximately equal
could not be readily determined." Final Act. 3. Appellants disagree stating,
"[i]t is well established that terms of degree are not necessarily indefinite."
App. Br. 28 ( citations omitted). Appellants further contend that one skilled
in the art would readily appreciate the three parts being "approximately
equal" in "longitudinal extension" ( as claimed) was "intended to produce a
small packaged absorbent article and that exact equality is not necessary to
achieve the objective." App. Br. 29. The Examiner replies, "the three
approximately equal parts indicated by Appellant are not equal in terms of
surface area, nor perimeter, nor width, nor dimension." Ans. 18. However,
as indicated above, the claims are directed only to approximate equality in
"longitudinal extension," not to "surface area, nor perimeter, not width" as
stated by the Examiner. See also Reply Br. 9. Further, because our
reviewing court has rejected the proposition that claims involving terms of
degree are inherently indefinite (see App. Br. 28), we are instructed, "a
patentee need not define his invention with mathematical precision in order
to comply with the definiteness requirement." Invitrogen Corp. v. Biocrest
Mfg., L.P., 424 F.3d 1374, 1384 (Fed. Cir. 2005) (citation omitted).
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Application 14/646,927
Accordingly, we agree with Appellants that one skilled in the art would
understand this claim limitation. Hence, based on the record presented, we
do not sustain the Examiner's rejection of claim 22 as being indefinite.
The rejection of claims 1-7, 9-14, 16, 21, and 22
as being unpatentable over Roessler and Pateras
Sole independent claim 1 is directed to a first absorbent pad ( of "at
least two" pads) "configured for being releasably attached to an underwear
of a user," and specifically, "the first absorbent pad is in direct contact with
the underwear." App. Br., Claims App'x 1. The Examiner relies primarily
on Roessler for disclosing "an absorbent article 20" having "at least two
stacked individual absorbent pads 21, 25." Final Act. 5. However, the
Examiner acknowledges, "Roessler fails to explicitly teach underwear"2 and
relies on Pateras for such teaching. Final Act. 6 (referencing Pateras ,r 39);
see also Ans. 10. The Examiner concludes that it would have been obvious
to combine their teachings so that Pateras' "garment-attachment
mechanism" would "help[] secure the article (Pateras 0072) and hold the
article in place (Pateras 0074)." Final Act. 6; see also Ans. 11 (it would
have been obvious "to add Roessler's absorbent article to the underwear
taught by Pateras" to "hold Roessler's article securely in place").
Appellants contend the Examiner erred by "failing to provide a
legally sufficient apparent reason for the proposed modification" of
combining Roessler and Pateras so as to achieve an absorbent pad in direct
contact with underwear. App. Br. 6. More specifically, Appellants contend,
2 Roessler teaches that the invention "may also be incorporated [] in
absorbent articles such as adult incontinency garments, feminine napkins,
children's training pants, or the like." Roessler 5:30-33.
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Application 14/646,927
the Examiner "fail[ ed] to provide any factual finding that the fastening
means of the Roessler diaper is insufficient and thus requires additional
securement means, such as that described in Pateras." Reply Br. 2.
It is clear that the Examiner is adding or combining Pateras' teaching
of fastening Pateras' article 20 about the crotch region of an undergarment to
Roessler's teaching of fastening a diaper to a user. Final Act. 6 (referencing
Pateras ,r,r 72, 74; Fig. 2); Ans. 10-11. Appellants, however, contend that
such a change to Roessler would render Roessler unsatisfactory for its
intended purpose because including Pateras' underwear fasteners would
compromise Roessler's seals about the legs of a user. App. Br. 10. Indeed,
Roessler discloses "an absorbent article with improved leakage-resistance"
and further that Roessler's diaper 20 "may include [] elastic members to
conform the shape of the diaper to the wearer and minimize the potential for
leakage." Roessler 3:21-22; 6:51-53; see also 6:66-7:2 (discussing "leg
elastic members 33" that function to "form a seal" against the legs of a user).
Hence, as per Appellants, changing Roessler to incorporate Pateras'
undergarment fastening teachings would disrupt this leg seal (by extending
Pateras' fasteners through the leg seal to the user's underwear) "thereby
rendering [Roessler's] disposable diaper 20 unsatisfactory for the intended
purpose in Roessler" (i.e., "improved leakage-resistance"). App. Br. 10.
There is merit to Appellants' contention. The Examiner is clearly
"add[ing] Roessler's absorbent article to the underwear taught by Pateras"
while also relying on Pateras' underwear fasteners to further "hold
Roessler's article securely in place." Ans. 11. The Examiner does not
address the effect Pateras' "garment side attachment" would have in
breaking or disturbing Roessler' s leg seal thereby permitting Roessler' s
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diaper to leak. Instead, the Examiner contends, "the elastic members in
Roessler minimize the potential for leaking" (Ans. 11 ), but the Examiner
does not explain how Pateras' fasteners, extending through Roessler's leg
openings, would fail to disrupt the leg seal achieved by Roessler. Nor does
the Examiner address the more basic reason why, if a user is already wearing
a diaper, Pateras' additional underwear layer is warranted at all.
Appellants also contend that even if an additional underwear layer is
employed with Roessler's diaper, the result would still not achieve the
limitation of a "first absorbent pad is in direct contact with the underwear"
as recited. See App. Br. 11; see also Reply Br. 2. This is because Roessler
discloses instead that liquid impervious backing "surface (24 []) would be in
direct contact with the underwear, if present." App. Br. 11 (see also id. at
12); Reply Br. 2 (see also id. at 3); Roessler Figs. 4, 5.
We are instructed that "rejections 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." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Here,
although the Examiner has made statements regarding the combination of
Roessler and Pateras (Final Act. 6, Ans. 11 ), such statements lack the
requisite articulated reasoning with rational underpinning ( as indicated
above) necessary to support a conclusion that Roessler and Pateras, when
combined as set forth by the Examiner, render claim 1 obvious.
Accordingly, and based on the record presented, we do not sustain the
Examiner's rejection of independent claim 1, and dependent claims 2-7, 9-
14, 16, 21, and 22, as being unpatentable over Roessler and Pateras.
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DECISION
The Examiner's rejection of claim 21 as failing to comply with the
written description requirement is reversed.
The Examiner rejection of claim 22 as being indefinite is reversed.
The Examiner's rejection of claims 1-7, 9-14, 16, 21, and 22 as being
unpatentable over Roessler and Pateras is reversed.
REVERSED
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