Ex Parte Dorschner

Board of Patent Appeals and Interferences

Sep 6, 2007

10034846 (B.P.A.I. Sep. 6, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LINDA M. DORSCHNER
____________

Appeal 2007-2409
Application 10/034,846
Technology Center 3700
____________

Decided: September 6, 2007
____________

Before DEMETRA J. MILLS, ERIC GRIMES,
and RICHARD M. LEBOVITZ Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 83-89, 91-92,
100-102 and 106-111, the only claims pending in this application. We have
jurisdiction under 35 U.S.C. § 6(b).
Appeal 2007-2409
Application 10/034,846

Representative claims follow.
107. A disposable absorbent article having a longitudinal axis, a
lateral axis, and a lateral centerline generally defining longitudinal front and
back regions of the article, said article having a front end and a back end,
said article comprising:
a liner adapted for contiguous relationship with a wearer's
body;
an outer cover in generally opposed relationship with the liner, the
outer cover having a length and a width and being stretchable along
substantially the entire length of the outer cover;
the article having a surface area defined at least in part by said outer
cover; and
an absorbent core disposed between the liner and the outer cover and
having a front edge, a back edge, and a surface area which is less than about
50% of the surface area of the article, the front edge of the absorbent core
being in a closer proximity to the front end of the article than the back edge
of the absorbent core is to the back end of the article, at least a portion of the
absorbent core being bonded to said outer cover.

109. A disposable absorbent article having a longitudinal axis, a
lateral axis, and a lateral centerline generally defining longitudinal front and
back regions of the article, said article having a front end and a back end and
comprising:
a liner adapted for contiguous relationship with a wearer's body, the
liner having a length and a width and being stretchable along substantially
the entire length of the liner;
an outer cover in generally opposed relationship with the liner;
the article having a surface area defined at least in part by said liner;
and
an absorbent core disposed between the liner and the outer cover and
having a front edge, a back edge, and a surface area which is less than about
50% of the surface area of the article, the front edge of the absorbent core
being in a closer proximity to the front end of the article than the back edge
of the absorbent core is to the back end of the article, at least a portion of the
absorbent core being bonded to said liner.

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Application 10/034,846

111. A disposable absorbent article having a longitudinal axis, a
lateral axis, and a lateral centerline generally defining longitudinal front and
back regions of the article, said article having a front end and a back end and
comprising:
a liner adapted for contiguous relationship with a wearer's body;
an outer cover in generally opposed relationship with the liner, at least
one of said liner and said outer cover being stretchable in at least one
direction, the article having a surface area defined at least in part by at least
one of said liner and said outer cover; and
an absorbent core disposed between the liner and the outer cover and
having a front edge, a back edge, and a surface area which is less than about
50% of the surface area of the article, the front edge of the absorbent core
being in a closer proximity to the front end of the article than the back edge
of the absorbent core is to the back end of the article, said at least one of said
liner and said outer cover extending beyond the front and back edges of the
absorbent core and being stretchable adjacent said front and back edges.

Cited References:
Roe US 5,904,643 May 18, 1999
Clear PCT WO 96/18367 June 20, 1996
Morman PCT WO 00/33913 Dec. 21, 1999
Divo EP 0 650 714 A1 May 3, 1995

Grounds of Rejection1
Claims 83-89, 91-92, and 106-111 under 35 U.S.C. § 102(b) as
anticipated by Clear.

1 The Answer on pp. 2-3 also notes that there are two additional grounds of
rejection not withdrawn by the Examiner but not under review on appeal as
they were not presented for appeal by Appellant in the Brief. These
grounds are a rejection of claim 90 for obviousness over Morman and Clear
(Answer 3) and a rejection of claim 93 for obviousness over Roe in view of
Divo.
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Appeal 2007-2409
Application 10/034,846

Claims 83-89, 91-92, 100-102, and 106-111 under 35 U.S.C. § 102(b)
as anticipated by Roe.
We reverse.

DISCUSSION
Anticipation - Clear
Claims 83-89, 91-92, and 106-111 under 35 U.S.C. § 102(b) as
anticipated by Clear. We select claim 107 as representative of the rejected
claims.
Claim 107 specifically requires, in addition to the other claimed
elements, that

the article have a surface area defined at least in part by
said outer cover; and an absorbent core disposed between the
liner and the outer cover and having a front edge, a back edge,
and a surface area which is less than about 50% of the surface
area of the article, the front edge of the absorbent core being in
a closer proximity to the front end of the article than the back
edge of the absorbent core is to the back end of the article, at
least a portion of the absorbent core being bonded to said outer
cover.

With respect to Claims 107-111, the Examiner refers to Fig. 1 of
Clear, which is reproduced below.

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Appeal 2007-2409
Application 10/034,846

Figure 1 shows a configuration of the diaper assembly of Clear.
Referencing Figure 1, the Examiner finds that the surface area of core 28 is
less than or equal to "about" 50% of the surface area of the article, liner is
24, cover is 26 and "the terminology ‘about’ allows some leeway from the
dimension it describes." (Answer 5.) "With regard to the front edge being
closer to the front end than the back edge is to the back end, see page 13,
lines 12-15 and page 12, line 15-page 13, line 2, as well as the paragraph
bridging pages 6-7" where it is stated that the fit panel may be 1:5 to 2 times
the longitudinal length of the fit panel in the front region. (Answer 5.) With
regard to the stretchability of the cover along substantially the entire length
and/or width thereof, the Examiner refers to elements 32, 34 and 38 of Fig. 1
above, and the sentence in Clear bridging pages 12-13, page 13, line 17 and
page 14, lines 14-15, and 25-33 describing the elasticity of the fit region.
(Answer 5.)
Appellant contends that Clear does not disclose the position of the
front edge of the article and the position of the back edge of the absorbent
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Application 10/034,846

core relative to the back end of the article other than that the absorbent core
ends are certainly spaced inward from the front and back edges of the article.
(Br. 8.) Appellant argues that the
[o]nly evidence of record regarding the positions of the front
and back ends 52 of the article relative to the front and back
edges of the absorbent core 28 of the article of Clear et al. is
provided by Figures 1 and 2 thereof. In both embodiments the
front and back fit panels 38 are of equal length and the front
and back edges of the absorbent core are equidistant from the
respective front and back ends of the article.

(Br. 11.)

We agree with Appellant that upon careful review of Figures 1 and 2
of Clear, and Clear’s supporting specification, it reasonably appears that the
front and back edges of the absorbent core are equidistant from the
respective front and back ends of the article. While Clear does indicate that
the fit panel in the rear fit region may be 1:5 to 2 times the longitudinal
length of the fit panel in the front region (Clear, 13), what remains unclear is
whether when the length of the rear fit panel is increased, the longitudinal
center line (102 of Fig. 1) is similarly adjusted. We have no evidence of
record suggesting that the longitudinal center line or the core region of the
diaper is repositioned when the size of the rear fit panel is altered. The
Examiner did not provide any evidence of how the core would be placed
when the size of the rear panel is altered. Thus, there is no evidence that the
claimed arrangement of claim 107 would necessarily occur, following
Clear’s disclosure. Inherent anticipation requires that the claimed subject
matter “necessarily and inevitably” occur. See Schering Corp. v. Geneva
Pharmaceuticals, 339 F.3d 1373, 67 USPQ2d 1664 (Fed. Cir. 2003).
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Appeal 2007-2409
Application 10/034,846

The standard under § 102 is one of strict identity. "Under 35 U.S.C.
§ 102, every limitation of a claim must identically appear in a single prior art
reference for it to anticipate the claim." Gechter v. Davidson, 116 F.3d
1454, 1457, 43 USPQ2d 1030, 1032 (Fed. Cir. 1997). "Every element of the
claimed invention must be literally present, arranged as in the claim."
Richardson v. Suzuki Motor Co., Ltd., 868 F.2d 1226, 1236, 9 USPQ2d
1913, 1920 (Fed. Cir. 1989).
We do not find that Clear teaches an absorbent core wherein the front
edge of the absorbent core is in a closer proximity to the front end of the
article than the back edge of the absorbent core is to the back end of the
article. Thus, the rejection of the claims for anticipation over Clear is
reversed.

Anticipation – Roe

Claims 83-89, 91-92, 100-102 and 106-111 are rejected under
35 U.S.C. § 102(b) as being anticipated by Roe. We select claim 107 as
representative of the rejected claims.
The Examiner finds that
Figures 1 and 3-4, col. 4, lines 43-50, col. 6, lines 20-26 and 29-
35, col. 22, Table 1, Sample X, col. 22, lines 56 et seq, col. 23,
lines 5-9, col. 25, lines 19-45, [show] i.e. surface area of core
28 is less than or equal to "about" 50% of the surface area of the
article, liner is 24, cover is 26. … With regard to the front edge
being closer to the front end than the back edge is to the back
end, see col. 4, lines 43-50 and Figures 1 and 3-4. The surface
area of the portion of the core which extends into the front half
of the article has a surface area which is less than about 30% of
the surface area of the front half of the article, see again col. 23,
lines 5-9. It is noted the article includes both the chassis 22 and
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Application 10/034,846

the belt 32. …. With regard to the stretchability of the liner
and cover along substantially the entire length and/or width
thereof, or "adjacent" front and back edges of the core, see …
col. 4, lines 43-50, i.e. spaced but yet "adjacent", col. 10, lines
22-52 …, element 30, col. 11, lines 19-39, col. 25, lines 19-45
… i.e. the waist belt can include the cover and liner of the
chassis, the lateral edge in the first waist region as well as the
entire side edges can be elasticized.

(Answer 6-7.)

The standard under § 102 is one of strict identity. "Under 35 U.S.C.
§ 102, every limitation of a claim must identically appear in a single prior art
reference for it to anticipate the claim." Gechter v. Davidson, 116 F.3d
1454, 1457, 43 USPQ2d 1030, 1032 (Fed. Cir. 1997). "Every element of the
claimed invention must be literally present, arranged as in the claim."
Richardson v. Suzuki Motor Co., Ltd., 868 F.2d 1226, 1236, 9 USPQ2d
1913, 1920 (Fed. Cir. 1989).
We do not find the Examiner has established a prima facie case of
anticipation of the claimed subject matter. Appellant argues that Roe fails to
teach a stretchable cover. (Br. 15.) We agree with Appellant that Roe fails
to teach a stretchable outer cover being stretchable in at least one direction,
as claimed.
According to the Specification, “the term ‘stretch,’ or ‘stretchable’
refers to a material that is either elastic or extensible. That is the material is
capable of being extended, deformed, or the like, without breaking, and may
or may not significantly retract after removal of an extending force.”
(Specification 5.) The term "extensible" refers to a “property of a material
where upon removal of an extending force, it provides substantially
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Application 10/034,846

permanent deformation and/or does not exhibit a significant retractive
force.” (Id.)
Figure 1 of Roe is reproduced below:

Figure 1 of Roe shows the diaper assembly having elastic leg cuffs
(30) and a stretchable waist band (32). (Roe, col. 6, lines 20-28.) Roe
further describes that its backsheet (outer cover) is flexible, meaning
compliant, and will readily conform to the general shape of the contours of
the body. (Roe, col. 9, lines 15-30). Element 30 of Roe depicts the elastic
leg cuffs which run the entire length of the diaper.
The present Specification states that the outer cover includes a
stretchable fabric layer which can provide an elongation from about 10 to
about 200 percent. (Specification 17.) The stretchable outer cover can also
provide for substantially permanent deformation of about 10 to 100 percent.
(Id.) Furthermore, the extensible outer cover may include necked fabrics,
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Application 10/034,846

creped fabrics, crimped fabrics, extensible fiber fabrics, bonded-carded
fabrics, micro-pleated fabrics, or polymer films. (Specification 18.) Thus,
the stretchability of the outer cover of the claimed disposable absorbent
article is attributed to a property of the material comprising the outer cover.
In addition, the Specification indicates that in the claimed disposable
absorbent article the leg elastics are adhered to the outer cover in a stretched
position, and thus are not part of the outer cover material. (Specification 9.)
While Roe describes that the back sheet or outer cover can be made of
a flexible material that is conforming to the shape of the body, and also
describes elastic leg cuffs running the entire length of the back sheet, there is
no evidence before us that the actual material comprising the back sheet or
outer cover is elastic or extensible. The back sheet of Roe, on the other
hand, may comprise a woven or non-woven material, or polymeric films
such as thermoplastic films of polyethylene or polypropylene. (Roe, col. 9,
ll. 15-30.) Thus there is no suggestion that the films or woven or non-woven
materials of Roe are extensible, as they are merely stated to be flexible.
In view of the above, we conclude that Roe does not describe a
stretchable outer cover as claimed and the rejection of claims 83-89, 91-92,
100-102 and 106-111 is reversed.

CONCLUSION
In summary, we reverse the anticipation rejection of the claims over
Roe and Clear.

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Appeal 2007-2409
Application 10/034,846

Other Issue for Consideration
While we do not find that Roe discloses an outer cover which is
stretchable in at least one direction, we recommend that the Examiner
consider whether it would have been obvious to include a stretchable outer
cover in a disposable absorbent article such as a diaper in view of the
disclosures of Morman and Divo (of record). Morman discloses that it is
known to use extensible and retractable necked laminate materials in diapers
and training pants. (Morman 1.) Divo discloses a topsheet or backsheet of a
diaper including a composite elastic member. (Divo, cols. 6 and 8.)
Upon return of the Application to the Examiner it is recommended
that the Examiner consider whether a rejection of the claims for obviousness
over Roe in view of Morman and/or Divo is warranted.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REVERSED

pgc

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