Ex Parte Datta et al

Board of Patent Appeals and Interferences

Dec 6, 2011

10011085 (B.P.A.I. Dec. 6, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/011,085 12/07/2001 Paul Joseph Datta KCX-1533 (16401) 5199
22827 7590 12/06/2011
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
ZALUKAEVA, TATYANA
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
12/06/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte PAUL JOSEPH DATTA,
MICHAEL FRANCIS DRYMALSKI,
and KRISTI JO BRYANT
__________

Appeal 2010-009646
Application 10/011,085
Technology Center 3700
__________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
FRANCISCO C. PRATS, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a prefastened,
refastenable absorbent article, such as a disposable diaper. The Examiner
rejected that claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

Appeal 2010-009646
Application 10/011,085

2
STATEMENT OF THE CASE
Claims 1, 5-25, 27, 30, and 33-35 stand finally rejected and are on
appeal (App. Br. 2).
1
Claims 1 and 33, the independents, are representative
and read as follows:
1. A prefastened, refastenable absorbent article
comprising:
a chassis having a front waist region, a back waist region
and a crotch region intermediate the front waist region and the
back waist region, and defining an elasticized waist opening
having a relaxed waist opening diameter;
a first side seam including passive bonds connecting a
first edge portion of the front waist region to a first edge portion
of the back waist region;
a second side seam including passive bonds connecting a
second edge portion of the front waist region to a second edge
portion of the back waist region;
a first leg elastic member positioned along a first side
edge of the chassis at the crotch region; and
a second leg elastic member positioned along a second
side edge of the chassis at the crotch region, the first leg elastic
member and the second leg elastic member defining a crotch
elastic spacing between an outside edge of the first leg elastic
member and an outside edge of the second leg elastic member
at a narrowest spacing of the leg elastic members in the crotch
region,
wherein the crotch elastic spacing is less than the relaxed
waist opening diameter.

33. A pants shaped prefastened, refastenable
disposable absorbent article having a vertical axis, comprising:
an outer cover;
a bodyside liner;
an absorbent core positioned between the outer cover and
the bodyside liner;

1
Appeal Brief filed December 7, 2009.
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Application 10/011,085

3
a chassis defined by the outer cover, the absorbent core
and the bodyside liner, the chassis having a front waist region, a
back waist region and a crotch region intermediate the front
waist region and the back waist region;
a first side seam including passive bonds connecting a
first edge portion of the front waist region to a first edge portion
of the back waist region;
a second side seam including passive bonds connecting a
second edge portion of the front waist region to a second edge
portion of the back waist region;
a first leg elastic member positioned along a first side
edge of the chassis at the crotch region;
a second leg elastic member positioned along a second
side edge of the chassis at the crotch region;
a crotch elastic spacing defined by a lateral distance
between an outside edge of the first leg elastic member and an
outside edge of the second leg elastic member at a narrowest
spacing of the leg elastic members in the crotch region; and
an elasticized waist opening formed by the chassis
having a relaxed waist opening diameter greater than the crotch
elastic spacing.

The sole rejection before us for review is the Examiner‟s rejection of
claims 1, 5-25, 27, 30, and 33-35 under 35 U.S.C. § 103(a) as obvious over
Kline,
2
Buell,
3
and Romare
4
(Ans. 4-12).

OBVIOUSNESS
The Examiner found that Kline described an article having all of the
structural features recited in claim 1, “except for the side seams including
passive bonds” (Ans. 7). The Examiner noted however that Kline taught

2
U.S. Patent No. 5,897,545 (filed April 2, 1996).
3
U.S. Patent No. 3,860,003 (filed November 21, 1973).
4
GB 2 288 315 A (published October 18, 1995).
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Application 10/011,085

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“the desire to combine the benefits of both conventional and pull-on type
diapers in a single article including a fastening system strong enough to
maintain the diaper in a fastened configuration while being pulled on or off”
(id. (citing Kline, col. 3, ll. 36-39)).
The Examiner also found that Romare taught “a fastening system in
an article which combines both conventional and pull-on type diapers
features with passive bonds also to ensure the fastening system is
refastenable yet strong enough to maintain diaper fastened when used as a
pull-on type diaper” (Ans. 7). Based on these teachings, the Examiner
reasoned that an ordinary artisan would have considered it obvious to
“employ a fastening system/passive bonds as taught by [Romare] on
[Kline‟s] combination conventional/pull-on article . . . in view of the
recognition that such would better ensure the benefits of both types of
articles, i.e. strong fastening yet the ability to refasten, and the desire of such
by [Kline]” (id.).
Appellants contend, among other things, that the Examiner erred in
finding that the cited references teach or suggest an absorbent article having
the side seams recited in claims 1 and 33, which include passive bonds that
connect the first edge portions of the front waist region of the chassis to a
back edge portion (App. Br. 12-13 (citing Figures 1 and 3 of the instant
application)). Specifically, Appellants argue, Romare “does not disclose
passive bonds connecting edge portions along side seams, but rather glue
points 10 connecting the material 9 across the entire front 6 of the article”
(id. at 13).
The Examiner responds that the “claim language does not require
direct connection to the edge portions nor connection only at the edge
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Application 10/011,085

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portions, e.g. does not preclude across entire front, and/or the specifics of the
seams, e.g. does [not] require continuous seams/bonds” (Ans. 14). The
Examiner further argues that “the claim language . . . does not require any
specifics of the seams” and questions “where in the specification are „seams‟
explicitly defined and/or what specific structure is claimed but not taught by
the prior art?” (id.).
Appellants reply that, while the claims might not preclude the
presence of seams on the front of the claimed article, “nowhere does Romare
actually disclose a side seam. As illustrated and taught, the passive bonds in
Romare are positioned across the entire front of the article” (Reply Br. 4).
5

Thus, Appellants reason, a skilled artisan “would not determine that the
entire front of Romare illustrated would define a first and second „side seam‟
as disclosed and claimed by Appellants” (id. (citing Figures 1 and 3 of the
instant application)).
We find that Appellants have the better position here.
“In proceedings before the Patent and Trademark Office, the
Examiner bears the burden of establishing a prima facie case of obviousness
based upon the prior art.” In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir.
1992).
In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007), while the
Supreme Court emphasized “an expansive and flexible approach” to the
obviousness question, the Court also reaffirmed the importance of
determining “whether there was an apparent reason to combine the known

5
Reply Brief entered April 19, 2010. As the pages of the Reply Brief were
not numbered, we cite to the first page as page 1, and the remaining pages as
if they were numbered consecutively.
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elements in the fashion claimed by the patent at issue.” Id. at 418 (emphasis
added).
As the Court explained, “[R]ejections 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.” Id. (quoting In re Kahn, 441 F.3d 977, 988,
(Fed. Cir. 2006) (emphasis added).
As to claim language, the PTO must interpret terms in a claim using
“the broadest reasonable meaning of the words in their ordinary usage as
they would be understood by one of ordinary skill in the art, taking into
account whatever enlightenment by way of definitions or otherwise that may
be afforded by the written description contained in the applicant‟s
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
In addition to the Specification, Appellants‟ drawings may be
consulted to ascertain the meaning of claim terms. See Brookhill-Wilk 1,
LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1294, 1298 (Fed. Cir. 2003)
(“The ordinary and customary meaning of a claim term may be determined
by reviewing a variety of sources. Some of these sources include the claims
themselves; dictionaries and treatises; and the written description, the
drawings, and the prosecution history.” (citations omitted, emphasis added)).
Here, both of the independent claims on appeal, claims 1 and 33,
recite an absorbent article that has a first and second “side seam including
passive bonds connecting a first edge portion of the front waist region to a
first edge portion of the back waist region” (App. Br. 21, 24-25 (Claims
Appendix) (emphasis added)). As the Specification explains, “the
prefastened, refastenable side seams 68 on the diaper 20 may further include
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passive bonds 70 (which, themselves, are not refastenable) for maintaining
the diaper 20 in the prefastened condition, particularly when it is being
pulled over the hips of the wearer” (Spec. 38 (emphasis added); see also
Figures 1 and 3).
Thus, not only do the claims, by their terms, require the passive bond-
including seams to be on the side of the claimed article, the Specification
and drawings illustrate embodiments explaining that feature. We are
therefore not persuaded, as the Examiner argues, that the “side seam” feature
at issue can reasonably be interpreted as encompassing seams located at the
front of an absorbent article.
We are also not persuaded that the Examiner has pointed us to any
disclosure in any of the cited references that teaches or suggests the side
seam required by the claims. The structure in Kline cited by the Examiner
as corresponding to the claimed seam is formed by elements 30 or 31 of
Kline‟s article (Ans. 6). However, the seams formed by those elements are
at the front of the article (see, e.g., Kline, Figure 3), and we are not
convinced that it would be reasonable to interpret the side seam feature at
issue as encompassing seams positioned as shown by Kline.
We agree with the Examiner that the sparsely configured pattern of
welding or gluing points 10 on the front of the article could reasonably be
considered passive bonds (Romare 5; see also Figure 1). The Examiner
simply does not, however, direct us to any structure in Romare which is
considered to correspond to the claimed side seams that include those
passive bonds, nor has the Examiner clearly explained why any structure in
Romare would reasonably be encompassed by the claimed side seam feature.
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Application 10/011,085

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It is therefore unclear what structure in Romare, if any, is considered
by the Examiner to teach or suggest a seam at the side of an absorbent
article. Further, the Examiner has not explained why an ordinary artisan
would have considered it obvious to modify the articles described by Kline
or Romare by placing on those articles a side seam having the features
recited in claims 1 and 33.
In sum, given the plain language of the claims as well as the
supporting disclosure in the Specification and drawings, we do not agree
with the Examiner that the “side seam” features in claims 1 and 33 can
reasonably be interpreted as encompassing seams located at the front of an
absorbent article. As the Examiner has not explained why an ordinary
artisan would have modified the articles in the cited references to arrive at a
side seam having the features recited in claims 1 and 33, we agree with
Appellants that the Examiner has not made out a prima facie case of
obviousness as to those claims.
We therefore reverse the Examiner‟s obviousness rejection as to
claims 1 and 33, as well as their dependents.

REVERSED

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