Ex Parte Datta et al

Board of Patent Appeals and Interferences

Oct 30, 2008

10881465 (B.P.A.I. Oct. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte
PAUL JOSEPH DATTA and ROBERT EUGENE VOGT
__________

Appeal 2008-3854
Application 10/881,465
Technology Center 3700
__________

Decided: October 30, 2008
__________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and ERIC GRIMES,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a folded
diaper, which the Examiner has rejected as anticipated or obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.

Appeal 2008-3854
Application 10/881,465

BACKGROUND
The Specification discloses “an open absorbent garment that is folded
for packaging in a manner that prevents leg elastics from remaining folded
inward in a crotch region during product application” (Spec. ¶0001). An
“‘open absorbent garment’ refer[s] to diapers and other absorbent garments
that . . . do not have their front and back panels fastened, or attached to one
another, when in the packaged state. Open diapers and absorbent garments
require a caregiver to fasten the front waist region to the back waist region.”
(Id. at ¶0027.)
The Specification discloses “a folded absorbent garment having
strategically positioned fold lines to assure that materials are not folded over
in the crotch region, thereby preventing leakage channels that may be
formed from folding and/or adhesive that can accidentally bleed through and
tack the leg elastics down” (id. at ¶0014).
DISCUSSION
1. CLAIMS
Claims 1 and 3-40 are pending and on appeal. Claims 1, 12, and 22
are representative and read as follows:
1. A folded, open, absorbent garment, comprising:
an absorbent chassis including an absorbent core positioned between
an outer cover and a body side liner, the absorbent chassis defining a waist
opening and first and second leg openings when in a fastened position;
the absorbent chassis having a longitudinal length extending from a
front waist region to a back waist region, with each of two transversely
opposed distal edges of the back waist region folded onto a surface of the
absorbent chassis along respective longitudinal fold lines, and each of two
transversely opposed distal edges of the front waist region folded onto a
surface of the absorbent chassis along respective longitudinal fold lines, and
the absorbent chassis folded along at least one transverse fold line;
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wherein a width between the longitudinal fold lines in the back waist
region is less than the combined widths between each of the transversely
opposed distal edges of the back waist region and the respective longitudinal
fold line; and
the width between the longitudinal fold lines in the back waist region
is greater than a width between transversely opposed leg elastics in a crotch
region of the absorbent chassis, such that the transversely opposed leg
elastics are positioned between the longitudinal fold lines in at least a
portion of the garment.

12. The folded absorbent garment of Claim 1, wherein the garment is
packaged in the folded position.

22. A folded, open, absorbent garment, comprising:
an absorbent chassis including an absorbent core positioned between an
outer cover and a body side liner, the absorbent chassis defining a waist
opening and first and second leg openings when in a fastened position;
the absorbent chassis having a longitudinal length extending from a
front waist region to a back waist region, with each of two transversely
opposed distal edges of the back waist region folded onto a surface of the
absorbent chassis along respective longitudinal fold lines, and each of two
transversely opposed distal edges of the front waist region folded onto a
surface of the absorbent chassis along respective longitudinal fold lines, and
the absorbent chassis folded along at least one transverse fold line;
wherein the absorbent chassis has a crotch-to-waist ratio of about 0.55
or less with the crotch-to-waist ratio being a narrowest distance between
transversely opposed distal edges in a crotch region of the absorbent chassis
divided by an expanded width of the absorbent chassis between the
transversely opposed distal edges of the back waist region.

In claim 1, the first part of the wherein clause essentially requires that
the outside edges of the back waist region overlap in the folded diaper
(because the distance between the longitudinal folds is less than the
combined distance from each fold to its respective edge). The second part of
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the wherein clause essentially requires that the longitudinal folds be spaced
wider than the leg elastics in the crotch region.
2. ANTICIPATION
Claims 1, 3-8, and 40 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Sasaki.1 The Examiner finds that Sasaki discloses a diaper
comprising (among other features) an
absorbent chassis 18 having two transversely opposed distal
edges 24 of back region 7 folded onto surface of chassis along
discontinuous longitudinal fold lines 22 (page 3, paragraphs
0036-0037, page 4, paragraph 0048, figures 2-3), . . . wherein
the width between longitudinal fold lines 22 is less than the
combined distance between each of the distal edges 24 of back
waist region 7 (figure 2); and the width between longitudinal
fold lines 22 is greater than width between leg elastics 17b.
(Answer 3.)
Appellants argue that “Sasaki fails to disclose each of two
transversely opposed distal edges of the back waist region folded onto a
surface of the absorbent chassis along respective longitudinal fold lines”
(Appeal Br. 7). Appellants argue that “[e]lement number ‘22,’ which the
Examiner is calling a ‘longitudinal fold line,’ is used by Sasaki to denote the
side flaps” (id. at 8).
We will reverse this rejection. “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). In this case, we do not

1 Sasaki et al., US 2003/0078556 A1, published April 24, 2003.
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agree with the Examiner’s finding that Sasaki discloses the longitudinal fold
lines recited in claim 1.
Sasaki’s Figure 2 is reproduced below (with unnecessary reference
numerals omitted):

The figure is said to show a partially cutaway plan view of the
disclosed diaper (Sasaki, ¶0016). The elements of the diaper include “thigh-
surrounding elastic members 16, 17 [which] respectively comprise
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transversely opposite lateral regions 16a, 17a . . . and intermediate regions
16b, 17b” (id. at ¶0030). The elements also include
side flaps 22 . . . [having] a free inner side region 22a, a free
outer side region 22b outside the free inner side region 22a and
fixed longitudinally opposite end regions 22c fixed to the front
and rear waist regions. . . . The free inner side region 22a and
the free outer side region 22b of the side flaps 22 are provided
with a plurality of stretchable elastic members 23.
(Id. at ¶0033.) Element 24 in the drawing indicates a “cross region”; i.e., a
region where the elastic members 16, 17 cross elastic members 23 (id. at
¶0034).
Sasaki’s Figure 1 is shown below (with unnecessary reference
numerals omitted):

The figure shows the ready-to-wear configuration of Sasaki’s diaper.
As shown in the figure, the elastic members 16, 17, and 23 cooperate to
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encircle the leg of the wearer. “Between each pair of the adjacent cross
regions 24 of these elastic members 16, 17, 23, a contractile force of the
elastic members 23 causes the free inner and outer side regions 22a, 22b of
the respective side flaps 22 to be tightly placed around the wearer’s thighs”
(id. at ¶0036).
We agree with Appellants that the Examiner’s finding that Sasaki’s
diaper includes “longitudinal fold lines 22” (Answer 3) is not supported by
the evidence, because element 22 of Sasaki’s diaper is a side flap that
comprises elastic members 23, not a fold line.
The Examiner takes the position, however, that the claim language
only requires “that at least a portion of any of the area that defines the front
and waist back regions are folded onto a surface of the absorbent chassis”
(Answer 7). The Examiner concludes that “[s]ince Sasaki discloses the flaps
22 are folded inward onto a surface of absorbent chassis 18 . . . and the flaps
are part of the front and waist back regions, the claim language has been
met” (id.).
We do not agree with this interpretation of the claims. Claim 1 states
that “each of two transversely opposed distal edges of the back [and front]
waist region [are] folded onto a surface of the absorbent chassis along
respective longitudinal fold lines.” With reference to Sasaki’s Figure 2, the
transversely opposed distal edges of Sasaki’s diaper are the edges that
descend vertically from the upper left-hand corner and upper right-hand
corner, not the side flaps 22 (which are not the distal edges of the waist
region).
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The Examiner has not shown that Sasaki discloses a product or
method meeting the limitations of claims 1, 3-8, and 40. We therefore
reverse the rejection of those claims as anticipated by Sasaki.
3. ANTICIPATION/OBVIOUSNESS
Claims 9-11, 13-17, 19-26, 28-35, and 37-39 stand rejected under 35
U.S.C. § 102(b) as anticipated by, or alternatively under 35 U.S.C. § 103(a)
as obvious in view of, Sasaki. The Examiner finds that “Sasaki discloses an
absorbent chassis that would inherently have elasticized-crotch-to-waist,
crotch-to-waist and absorbent-to-waist ratios” and therefore anticipates the
rejected claims (Answer 4).
Appellants argue that “Appellants’ recited values of elasticized-
crotch-to-waist, crotch-to-waist, and absorbent-to-waist ratios are not
disclosed or suggested by Sasaki” (Appeal Br. 10).
We will reverse the anticipation rejection. The Examiner has pointed
to no evidence that would support a finding that Sasaki’s diaper necessarily
has the crotch-to-waist ratio recited in claim 22, or the ratios recited in the
other rejected claims. “Inherency may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient to establish inherency.” Scaltech Inc. v.
Retec/Tetra, L.L.C., 178 F.3d 1378, 1384 (Fed. Cir. 1999). See also Cont’l
Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1268-69 (Fed. Cir.
1991) (“To serve as an anticipation when the reference is silent about the
asserted inherent characteristic, such gap in the reference may be filled with
recourse to extrinsic evidence. Such evidence must make clear that the
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missing descriptive matter is necessarily present in the thing described in the
reference.”).
Because the Examiner has not shown by a preponderance of the
evidence that the prior art product inherently possessed the ratios recited in
the rejected claims, we reverse the rejection of claims 9-11, 13-17, 19-26,
28-35, and 37-39 as anticipated by Sasaki.
The Examiner also finds that “[a]lternatively, Sasaki does not
expressly disclose elasticized-crotch-to-waist, crotch-to-waist and absorbent-
to-waist ratio values. Elasticized-crotch-to-waist, crotch-to-waist and
absorbent-to-waist ratio values are result effective variables since they are a
result of the width of the absorbent chassis.” (Answer 5.) The Examiner
concludes that “it would be obvious to one of ordinary skill in the art at the
time the invention was made to modify Sasaki with the aforementioned
values, since it has been held that discovering an optimum value of a result
effective variable involves only routine skill in the art” (id.)
Appellants argue that “[s]ince Sasaki fails to disclose any specific
folding configurations, there is no motivation to adjust the proportionality of
the crotch region to facilitate a particular folded configuration” (Appeal Br.
10).
We will reverse the obviousness basis of the rejection as well. The
Examiner is correct that “discovery of an optimum value of a result effective
variable in a known process is ordinarily within the skill of the art.” In re
Boesch, 617 F.2d 272, 276 (CCPA 1980). One of the exceptions to this rule,
however, is when the parameter optimized was not recognized in the prior
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art as one that would affect the results. See In re Antonie, 559 F.2d 618, 620
(CCPA 1977).
Here, the Examiner has pointed to no evidence in the record that the
crotch-to-waist ratio (or elasticized-crotch-to-waist ratio or absorbent-to-
waist ratio) of disposable diapers was recognized as a result-affecting
variable by those of ordinary skill in the art. The Examiner therefore has not
established a prima facie case that those of ordinary skill in the art would
have considered it obvious to modify the crotch-to-waist ratio (or
elasticized-crotch-to-waist ratio or absorbent-to-waist ratio) of the diaper
disclosed by Sasaki, and thereby produce a diaper within the scope of claims
9-11, 13-17, 19-26, 28-35, and 37-39. We reverse the rejection of those
claims as obvious in view of Sasaki.
4. OBVIOUSNESS
Claims 12, 18, 27, and 36 stand rejected under 35 U.S.C. § 103(a) as
obvious in view of Sasaki and Suzuki.2 The Examiner finds that “Sasaki
does not expressly disclose the garment is packaged in a folded state”
(Answer 5) and cites Suzuki as teaching a “diaper 1 with longitudinal folds
packaged in its folded state (figure 3)” (id. at 6). The Examiner concludes
that “[o]ne would be motivated to modify the folded diaper of Sasaki to be
packaged in a folded state as taught by Suzuki for improved packaging
manufacturing since both references disclose folded absorbent diapers” (id.)
We will reverse this rejection as well. For the reasons discussed
above, we conclude that the Examiner has not shown that Sasaki teaches or
would have suggested an absorbent garment meeting the limitations of the

2 Suzuki et al., U.S. Patent 6,165,160, issued Dec. 26, 2000.
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independent claims on appeal. The claims rejected as obvious in view of
Sasaki and Suzuki are directed to the same absorbent garments, packaged in
a folded state. The Examiner has pointed to nothing in Suzuki that teaches
or would have suggested the limitations not taught or suggested by Sasaki.
Therefore, the Examiner has not established that the claimed absorbent
garments, whether packaged in a folded state or not, would have been prima
facie obvious to those of ordinary skill in the art. The rejection of claims 12,
18, 27, and 36 as obvious in view of Sasaki and Suzuki is reversed.
SUMMARY
We reverse all of the rejections on appeal.

REVERSED

cdc

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