Ex Parte Drevik

Board of Patent Appeals and Interferences

Mar 21, 2012

10168984 (B.P.A.I. Mar. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte SOLGUN DREVIK
__________

Appeal 2011-000874
Application 10/168,984
Technology Center 3700
__________

Before DONALD E. ADAMS, ERICA A. FRANKLIN, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

BONILLA, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims directed to
an absorbent product comprising a compressible absorbent material layer
having a folded portion with the capacity to swell when wet. The Examiner
has rejected the claims as anticipated and obvious. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
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STATEMENT OF THE CASE
The claims are directed to an absorbent product comprising a
compressible absorbent material layer having at least one folded portion
along the longitudinal axis of the product, where the folded portion is
compressed and has the capacity to swell when subjected to wetting, thereby
at least partly reassuming its uncompressed shape.
Claims 1, 3, 5-10, 12-15, 17, 20, 22, 24-29, 31-34, 50, and 51 are on
appeal. Claims 1, 20, 50, and 51 are independent. Independent claim 1 is
representative and reads as follows (emphasis added):
1. An absorbent product having a longitudinal direction and a
transverse direction, two side edges extending essentially in the
longitudinal direction, two end edges extending essentially in the
transverse direction, and comprising:
a liquid-permeable surface layer, a liquid impermeable surface
layer, and an absorption body arranged between the surface layers, the
absorption body comprising a compressible absorbent material layer,
wherein the compressible absorbent material layer has at least
one folded portion having a longitudinal axis coinciding with the
longitudinal direction of the product and extending centrally along a
centre line extending in the longitudinal direction of the product, the
folded portion being at least partly compressed to define a planar
surface, as a result of which the compressible absorbent material layer
has a higher density within the region of the folded portion than in
regions of the compressible absorbent material layer which are located
outside the folded portion, the folded portion having the capacity to
swell when subjected to wetting, and then at least partly to reassume
its uncompressed shape, and
wherein said at least one folded portion defines a fold line, said
at least one folded portion includes a first surface and a second
surface, a first part of said first surface being bent about the fold line
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into an opposing orientation with a second part of said first surface
prior to being compressed to define the planar surface.
Claim 20 is similar to claim 1, except that the last wherein clause in
claim 20 reads:
wherein said at least one folded portion includes a first surface
and a second surface, said first surface and said second surface being
bent about a fold line such that both said first surface and said second
surface have a non-planar configuration prior to being compressed to
define the planar surface.
Claims 50 and 51 are similar to claims 1 and 20, respectively, except that
that claims 50 and 51 further recite:
wherein the first part of the first surface and the second part of
the first surface are compressed together, without any intervening
layers, into a strip.
Claims 12 and 31 depend on independent claims 1 and 20,
respectively, but further recite that “the longitudinal folded portion is
arranged so as to expand in the direction towards the liquid-permeable
surface layer.” Claims 13 and 32 also depend on independent claims 1 and
20, respectively, but further recite that “the longitudinal folded portion is
arranged so as to expand in the direction towards the liquid impermeable
surface layer.” Claims 14 and 33 depend on independent claims 1 and 20,
respectively, but further recite that the product further comprises “folded
portions which are arranged so as to expand in different directions.”
Appellant argues dependent claims 12, 13, 14, 31, 32, 33, and
independent claims 50 and 51 separately from independent claim 1.

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The claims stand rejected as follows:
• Claims 1, 5, 7-10, 12-14, 17, 20, 24, 26-29, 31-33, and 50-51 under
35 U.S.C. § 102(e) as anticipated by McFall et al. (U.S. Pat. No. 6,183,587,
issued Feb. 6, 2001).
• Claims 3, 6, 15, 22, 25, and 34 under 35 U.S.C. § 103(a) obvious
over McFall.
I.
Issue
Does McFall disclose, either expressly or inherently, each and every
element of claim 1?
Findings of Fact
1. McFall teaches an absorbent product having longitudinal and
transverse directions, where the product comprises a liquid-permeable
surface layer, a liquid impermeable surface layer, and an absorption body
arranged between the surface layers, where the absorption body comprises a
compressible absorbent material layer. (McFall, Figures 1, 2 and 24; see
also col. 6, l. 45 – col. 7, l. 31; col. 13, l. 58- 67; col. 12, ll. 18-26 and 51-56
(referring to a “compressed” region within the absorbent material).)
2. In this context, McFall teaches a compressible absorbent material
layer having at least one folded portion with a longitudinal axis coinciding
with the longitudinal direction of the product. (Id. at col. 12, ll. 4-37; see
also Figure 2.)
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3. McFall teaches a folded portion that is at least partly compressed to
define a planar surface. (Id. at Figures 1 and 7; see also col. 12, ll. 51-66;
col. 16, ll. 1-51.)
4. McFall teaches that the absorbent material “provides the unique
advantage that it dynamically adjusts to fit” to the wearer without action by
the wearer. (Id. at col. 16, l. 65 – col. 17, l. 12; col. 8, ll. 46-51 (stating that
the absorbent material “dynamically adjusts and conforms to changes in the
shape” of the wearer); see also Figure 24; col. 22, ll. 43-50.)
5. McFall teaches that a compressible absorbent material layer
(“absorbent material 42” or “absorbent material 44”) in the absorption body
(“tube of absorbent material 22”) “is capable of absorbing or retaining
liquids” and “may be a wide variety of liquid-absorbent materials commonly
used in sanitary napkins,” such as “creped cellulose wadding;” “absorbent
foams; absorbent sponges; superabsorbent polymers ….” (Id. at col. 9, ll.
46-61; see also Figures 1 and 2.)
6. McFall also teaches that a compressible absorbent material layer
(“absorbent material 3042” in Figure 30) can comprise a number of suitable
higher caliper materials, such as cotton or material comprising cellulose
fibers. (Id. at col. 24, ll. 38-60.)
7. McFall further discloses that the absorbent material 3042, shown in
Figure 30 in an inverted “V-shape,” may have:
a longitudinally-oriented compression line 3046 down the
center where it is folded. The absorbent material 3042 is
compressed to a caliper of about 1-2 mm in the region of the
compression line 3046. In addition to assisting the absorbent
material 3042 in folding, the compression line 3046 can aid in
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directing bodily exudates in the longitudinal direction to make
use of as much of the capacity of the absorbent material 3042 as
possible.
(Id. at col. 24, ll. 38-49; see also ll. 25-32.)
8. The instant Specification discloses that “[s]uitable compressible
absorbent fibre materials are, for example, fibre layers consisting essentially
of cellulose fibres such as cellulose fluff pulp, cotton, rayon or the like. …
Suitable compressible absorbent foamed materials are absorbent cellulose
foam, polyurethane foam or the like.” (Spec 7, l. 27- 8, l. 3.)
Principles of Law
An invention lacks novelty under 35 U.S.C. § 102 if each and every
element of the claim is described or disclosed, either explicitly or inherently,
in a single prior art reference. In re Schreiber, 128 F.3d 1473, 1477 (Fed.
Cir. 1997); Finnigan Corp. v. International Trade Comm'n, 180 F.3d 1354,
1365 (Fed. Cir. 1999). Such a reference is said to “anticipate” the invention.
A prior art reference without express reference to a claim limitation may
anticipate by inherency. In re Cruciferous Sprout Litig., 301 F.3d 1343,
1349 (Fed. Cir. 2002). To anticipate under the doctrine of inherency,
however, evidence must make clear that the missing descriptive matter is
necessarily present in the thing described in the reference. Dayco Products,
Inc. v. Total Containment, Inc., 329 F.3d 1358, 1369 (Fed. Cir. 2003).
Analysis
The claims at issue recite an absorbent product comprising a
compressible absorbent material layer that has at least one folded portion
along the longitudinal axis of the product, where the folded portion has
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certain features as recited in independent claims. See claims 1, 20, 50, and
51. The question, as raised by Appellant, is whether the McFall reference
teaches or suggests a compressible absorbent material layer having the
recited folded portion. (See, e.g., App. Br. 9-11.)
Appellant argues that McFall does not teach a folded portion that is
“at least partly compressed to define a planar surface” so it has a “higher
density” than other regions outside the folded portion. (App. Br. 13; claim
1.) Specifically, Appellant asserts McFall does not disclose an absorbent
material that is actually compressed in the first instance, and therefore
likewise fails to disclose a portion of an absorbent material having a higher
density. (App. Br. 14-15.)
We disagree. McFall expressly discloses a relevant compressible
absorbent material layer having at least one folded portion along the
longitudinal direction of the product. (FF 2.) McFall also expressly teaches
such a folded portion that is at least partly compressed to define a planar
surface. (FF 3, 7-8.) Consistently, Figures 1 and 2 of McFall indicate that
by virtue of the folding itself, the folded portion is at least partially
compressed to define a planar surface.
With regard to the folding and compression taught in McFall, we
agree with the Examiner that a “change in density” and specifically, an
increase in density, “is a natural property as a result of compression.” (Ans.
8.) Pending claims do not designate how much higher the density must be,
just that the folded portion has a “higher density” than regions of the
compressible absorbent material layer located outside the folded portion.
Because the folding itself necessarily increases the density of material at
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least to some extent, “a higher density” is an inherent feature of the folded
portion, as shown in McFall’s Figures 1, 2 or 8B, for example.
Appellant also emphasizes that the instant claimed invention “relates
to a dynamic product that changes shape via swelling,” thereby allowing the
absorbent product to “dynamically adapt[] its shape during use in relation to
the body of the wearer.” (App. Br. 9.) Appellant argues that the folded
portion disclosed in McFall does not have “the capacity to swell when
subjected to wetting, and then at least partly to reassume its uncompressed
shape,” as recited in independent claims. (App. Br. 9-10, 14-17.)
McFall discloses a compressible absorbent material layer that “is
capable of absorbing or retaining liquids,” where the material is cotton,
cellulose fibers, absorbent sponges, superabsorbent polymers, or other
material “commonly used in sanitary napkins.” (FF 5-6.) The reference also
teaches that the absorbent material “provides the unique advantage that it
dynamically adjusts to fit” to the wearer. (FF 4.)
While McFall does not use the term “swell” per se, it is clear that the
compressible absorbent material layer in McFall has the capacity to absorb
liquid and simultaneously “dynamically adjusts to fit” the wearer, i.e.,
expand or swell to conform “closely to the configuration of the wearer’s
body.” (FF4; see also McFall, col. 8, ll. 46-51 (stating that the absorbent
material is “highly resilient under wet and dry conditions so that it
dynamically adjusts and conforms to changes in the shape of the interlabial
space and does not collapse when subjected to pressure and/or when it is
wetted by bodily exudates.”); claim 1 (reciting a folded portion “having the
capacity” to swell).)
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Consistently, the instant Specification indicates that suitable materials
for the compressible absorbent material layer as recited in present claims
include cellulose fibers and cotton. (Spec. 7, ll. 29-31.) Thus, the
Specification provides evidence that materials such as cellulose fibers or
cotton have the inherent capacity to swell when subjected to wetting.
McFall teaches both cellulose fibers and cotton as examplary materials for
use in a compressible absorbent material layer. (FF 5-6.) Thus, such
absorbent material in McFall necessarily also has the “the capacity to swell
when subjected to wetting, and then at least partly to reassume its
uncompressed shape,” i.e., expand as it “dynamically adjusts to fit” to the
wearer when subjected to wetting. (See claim 1 and FF 4.)
Appellant also asserts that the element “at least partly to reassume its
uncompressed shape” is separate from the element of “having the capacity to
swell,” and the Examiner only focuses on the latter element. (Reply Br. 2-
3.) We disagree that the Examiner’s analysis is so limited. (Ans. 4.)
Moreover, the claim language itself recites that the compressible absorbent
material has the capacity to “at least partly” reassume an uncompressed
shape. This claim language does not require that the material be able to fully
reassume its uncompressed shape, or even how much of the original shape it
must reassume, but only that it do so at least partly. When looking at
McFall, one can see that any amount of swelling by the disclosed
compressible absorbent material upon absorption of liquid will necessarily
lead to the material reassuming an uncompressed state “at least partly.”
Thus, the absorbent material disclosed in McFall inherently has “the
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capacity” to swell when absorbing liquid, and “at least partly” reassume its
uncompressed state.
Appellant also argues that McFall fails to disclose or suggest the ideas
of “dynamically forming a liquid-receiving channel” or “increased
absorption capacity” within the folded portion. (App. Br. 10-11.) We note
that such “ideas” are not recited in the pending claims. An anticipation
analysis does not require us to consider whether McFall teaches or suggests
elements that are not recited in the claims.
Conclusion of Law
We agree with the Examiner that McFall expressly and/or inherently
discloses each and every element of claim 1. Because Appellant does not
separately argue claims 5, 7-10, 17, 20, 24, and 26-29, such claims fall
together with claim 1.
II.
Issue
Did the Examiner err in concluding that claims 3, 6, 15, 22, 25, and 34
are obvious over McFall?
Principles of Law
The ultimate question of obviousness is one of law, based upon
factual inquiries set forth in the Graham case: (1) the scope and content of
the prior art; (2) the differences between the prior art and the claims at issue;
(3) the level of ordinary skill in the pertinent art; and (4) objective evidence
of non-obviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). “An examiner bears the initial burden of presenting a prima facie
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case of obviousness.” In re Huai-Hung Kao, 639 F.3d 1057, 1066 (Fed. Cir.
2011). “Once the examiner establishes a prima facie case of obviousness,
the burden shifts to the applicant to rebut that case.” Id. If the applicant
presents rebuttal evidence, such as unexpected results or that the prior art
teaches away from the claimed invention, the Examiner must consider the
totality of the evidence to determine whether the obviousness rejection
should stand. Id.
Analysis
For the same reasons discussed above, we conclude that the elements
in claim 1 are expressly disclosed in McFall, or are rendered obvious by
virtue of what those skilled in the art would have known to be inherent
features of embodiments disclosed in McFall. For example, even if McFall
does not expressly use the term “swell” in relation to a compressible
absorbent material layer subjected to wetting, the concept of swelling (and
therefore at least partly reassuming an uncompressed shape) would have
been obvious to those skilled in the art reading McFall, especially in light of
a general understanding of how material “commonly used in sanitary
napkins” works. (See FF 5; see also Spec. 1, l. 23 - 2, l. 3, discussing prior
art EP patents.) Thus, McFall anticipates and renders obvious independent
claim 1.
Appellant does not argue dependent claims 3, 6, 15, 22, 25 and 34
separately, and therefore such claims stand or fall together. Appellant does
not argue claim 3 separately from claim 1, for example, and does not assert
the non-obviousness of including any specific element recited in the
dependent claims. For the reasons set forth above, McFall renders obvious
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the subject matter of claim 1. We therefore conclude that the Examiner has
established a prima facie case of obviousness regarding claim 3. The totality
of the evidence, including a complete lack of any evidence of secondary
considerations in support of non-obviousness, supports the finding of
obviousness by the Examiner.
Conclusion of Law
Appellant has identified no error, and we find no error, in the
Examiner’s prima facie case of obviousness. The rejection of claim 3, as
obvious in view of McFall, is affirmed. Because they are not separately
argued, claims 6, 15, 22, 25 or 34 fall together with claim 3.
III.
Issue
Does McFall anticipate dependent claims 12-14 and 31-33?
Analysis
As discussed above, McFall anticipates claim 1. Claims 12-14 each
depend on claim 1. Claims 31-33 each depend on claim 20. Independent
claim 1 and independent claim 20 are very similar. Appellant argues each of
claims 12-14 and 31-33 separately, but does not argue any differences
between the claims as they relate to differences between independent claims
1 and 20.
Claims 12 and 31 both recite that “the longitudinal folded portion is
arranged so as to expand in the direction towards the liquid-permeable
surface layer.” As discussed above regarding claim 1, McFall describes a
folded portion that swells, i.e., expands, when subjected to wetting. (See,
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e.g., McFall, col. 16, l. 65 – col. 17, l. 1 (stating that the absorbent material
“provides the unique advantage that it dynamically adjusts to fit” to the
wearer’s shape); FF 4.) Likewise, McFall also discloses the use of materials
such as cellulose fibers or cotton in the absorbent material, also described in
the instant Specification as “having the capacity” to swell. (FF 5-6, 8; see
also, Spec. 2, l. 25 - 3, l. 3; 7, ll. 29-31.) In other words, the compressible
absorbent material in McFall necessarily has the capacity to swell toward the
liquid permeable surface layer, i.e., toward the body, thereby allowing the
material to “dynamically adjust to fit” the shape of the wearer.
Claims 13 and 32 both recite that “the longitudinal folded portion is
arranged so as to expand in the direction towards the liquid impermeable
surface layer.” Again, as discussed above, McFall describes a folded portion
that absorbs liquid and swells, i.e., expands, when subjected to the wetting.
Such swelling would necessarily cause the material to expand in multiple
directions, not just a single direction. Thus, such swelling would necessarily
include expansion of the absorbent material in the direction towards the
liquid impermeable surface layer, i.e., away from the wearer.
Claims 14 and 33 both recite that the product further comprises
“folded portions which are arranged so as to expand in different directions.”
As discussed above, the absorption of liquid and concurrent expansion of the
absorbent material would necessarily occur in multiple, i.e., different
directions, especially with regard to embodiments disclosed in McFall
showing multiple and/or alternatively angled fold lines in a folded portion
(see, e.g., McFall, Figures 2, 8B, 23-25, 27-31). Moreover, McFall
describes how the compression line in the folder portion “can aid in
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directing bodily exudates in the longitudinal direction” (FF 7), thereby
teaching absorption, and therefore swelling, in a direction other than simply
upward as the material “dynamically” adjusts to fit the wearer.
Conclusion of Law
We agree with the Examiner that McFall anticipates dependent
claims 12-14 and 31-33.
IV.
Issue
Does McFall anticipate independent claims 50 and 51?
Analysis
Claims 50 and 51 are similar to claims 1 and 20, respectively, except
that claims 50 and 51 further recite that “the first part of the first surface and
the second part of the first surface are compressed together, without any
intervening layers, into a strip.” Appellant asserts that McFall does not
teach this recited element. (App. Br. 21.)
As noted by the Examiner, Figures 1 and 7 in McFall show the same
strip, where the first part of the first (bottom) surface and the second part of
the first (bottom) surface are compressed together, without any intervening
layers. We also note that Figures 8B and 30 in McFall also shows cross-
sections of such a strip having no intervening layers. (See also FF 7.) Thus,
McFall expressly discloses the element recited in both claims 50 and 51.
Appellant does not argue any differences between independent claims
1 and 20, or any differences between independent claims 50 and 51. As
discussed above, McFall anticipates claim 1. Thus, for the reasons discussed
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above regarding claim 1 and here in this section, every element in claim 50
or 51 is expressly or inherently disclosed in McFall.
Conclusion of Law
We agree with the Examiner that McFall anticipates independent
claims 50 and 51.
SUMMARY
We affirm the rejection of claims 1, 5, 7-10, 12-14, 17, 20, 24, 26-29,
31-33, and 50-51 under 35 U.S.C. §102(e) as anticipated by McFall. We
likewise affirm the rejection of claims 3, 6, 15, 22, 25, and 34 under 35
U.S.C. §103(a) obvious over McFall.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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