Ex parte Feist

Board of Patent Appeals and Interferences

Feb 25, 2000

08389086 (B.P.A.I. Feb. 25, 2000)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte BARRY R. FEIST
____________
Appeal No. 1997-3342
Application No. 08/389,086
____________
HEARD: February 7, 2000
____________
Before COHEN, MCQUADE, and GONZALES, Administrative Patent
Judges.
GONZALES, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner's final
rejection of claims 1 through 9, which are all of the claims
pending in this application.
We REVERSE.
Appellant’s invention relates to absorbent articles, such
as diapers, having a Z-folded barrier cuff in the front and
Appeal No. 1997-3342
Application No. 08/389,086
We note the statement on page 3 of the answer that claims 1 and 21
stand rejected under 35 U.S.C. § 103(a) is a typographical error, as evident
from the final rejection (paper no. 16).
2
back waist regions. As explained at page 51 of the
specification
[t]he Z-folded barrier cuff design allows both
sufficient lateral spacing of the barrier cuffs for
the genitals in the front and for BM containment in
the back as well as sufficient cuff height in the
crotch area for good fit into the leg crease and
good containment of body exudates.
Claims 1 and 5, the only independent claims, are
illustrative of the subject matter on appeal and are
reproduced in an “Appendix” attached to the brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Robertson 5,026,364 Jun.
25, 1991
Vandemoortele et al. WO 93/09739 May 27,
1993
(Vandemoortele) (published International
application)
The following rejections are before us for review:
(I) claims 1 and 2 stand rejected under 35 U.S.C. §
102(b) as being anticipated by Vandemoortele;1
Appeal No. 1997-3342
Application No. 08/389,086
The reference to “Claims 5-9" at page 6, line 1 of the answer appears2
to be a typographical error and a reference to claims 5-7 was intended.
3
(II) claims 3 and 4 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Vandemoortele;
(III) claims 5 through 7 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Vandemoortele in view of
Robertson; and 2
(IV) claims 8 and 9 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Vandemoortele in view of
Robertson.
The full text of the examiner's rejections and the
responses to the arguments presented by appellant appear in
the answer (Paper No. 23, mailed September 2, 1999), while the
complete statement of appellant’s arguments can be found in
the brief (Paper No. 19, filed November 25, 1996).
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
Appeal No. 1997-3342
Application No. 08/389,086
See the affidavit attached to Paper No. 15, filed May 10, 1996.3
The present application was filed on February 14, 1995, as a4
continuation under former 37 CFR 1.62, based on prior application No.
08/071,899, filed on June 3, 1993.
4
examiner. As a consequence of our review, we make the
determinations which follow.
The appellant argues that the reference to Vandemoortele
is not prior art. Specifically, the appellant urges that the
affidavit of Barry R. Feist (the Feist affidavit) is3
sufficient under 37 CFR § 1.131 to antedate the reference to
Vandemoortele. We agree for the reasons set forth below.
Since Vandemoortele is not prior art to the claims under
appeal, it follows that the decision of the examiner to reject
claims 1 and 2 under 35 U.S.C. § 102(a) and claims 3 through 9
under 35 U.S.C. § 103 is reversed.4
The Feist affidavit does establish completion of the
article shown on page 42 of Exhibit A in this country before
the publication date of the Vandemoortele reference.
The examiner considered the Feist affidavit to be
insufficient for the following reasons.
First, the examiner considered that the Feist affidavit
did not establish reduction to practice of the article shown
Appeal No. 1997-3342
Application No. 08/389,086
As permitted by Office procedure, appellant has removed the dates on5
the notebook pages in Exhibit A. See Manual of Patent Examining Procedure
(MPEP) § 715.07 (7th ed., Jul. 1998).
5
on page 42 of Exhibit A prior to May 27, 1993, the effective
date of the Vandemoortele reference. We do not agree. The
affidavit unequivocally states at paragraph 2 that “[p]rior to
May 27, 1993, I had completed my invention as described and
claimed in the subject application in this country.” The
affidavit also states at paragraph 2b that “[t]he product
depicted in the laboratory notebook was made and tested prior
to May 27, 1993.” In support thereof, the affidavit is
accompanied by Exhibit A, a copy of pages 41 through 43 of
affiant’s laboratory notebook. Notebook page 42 contains a5
drawing in the upper right-hand corner of a diaper having “Z
fold at ends.” Immediately below this drawing is an end view
of the product showing the Z fold and the words “Z fold in
cuffs glued in place.” Page 43 of Exhibit A includes an entry
noting that
Ed Carlin and Dan Falcone modified some [illegible]
IBC Trimfit product to see how this cuff design
would work on [date redacted]. The cuff looked good
on the diaper so on [date redacted], we made one at
[illegible] (me & Jim Gajewski for his packet
orientation). Jim then tried it on his daughter
Appeal No. 1997-3342
Application No. 08/389,086
6
that evening overnight. It performed well by not
leaking. Fit was also good.
This showing, in our view, is sufficient to establish
reduction to practice prior to May 27, 1993.
Second, the examiner considered that the Feist affidavit
did not establish a reduction to practice of the absorbent
article set forth in the claims since the limitations set
forth in the last four lines of claim 1 and the waist cap
recited in claims 5 through 9 are not shown in Exhibit A.
Our review of the affidavit reveals that Exhibit A
clearly discloses a diaper having a Z folded barrier cuff
glued in place at the longitudinal ends of the diaper. The
end view of the diaper found on notebook page 42 shows glue
located between the three portions or legs of the Z folded
cuff. In our view, this is as much of the invention as is
shown by Figures 8 and 9 of Vandemoortele. Therefore, if the
examiner is correct and claim 1
reads on the diaper shown in Figures 8 and 9 of Vandemoortele,
it must also read on the diaper shown on page 42 of Exhibit A.
It logically follows that the Feist affidavit establishes a
Appeal No. 1997-3342
Application No. 08/389,086
7
reduction to practice of an article which falls within the
scope of claim 1.
As to the invention defined by claims 5 through 9, the
examiner has taken the position that it would have been
obvious to position a waistcap/waistband over one end of each
barrier cuff disclosed in Figures 8 and 9 of Vandemoortele in
view of the teaching of Robertson (answer, page 6).
Where the differences between the claimed invention and
the disclosure of the reference are so small as to render the
claims obvious over the reference, an affidavit or declaration
under 37 CFR § 1.131 is required to show no more than the
reference shows. In re Stryker, 435 F.2d 1340, 1341, 168 USPQ
372 (CCPA 1971). Since we have already determined, supra.,
that the Feist affidavit establishes reduction to practice of
an article which falls within the scope of claim 1 and shows
as much of the invention as is shown by Figures 8 and 9 of
Vandemoortele, it follows that the Feist affidavit is also
sufficient to overcome the standing 35 U.S.C. § 103 rejections
of claims 5 through 9.
Appeal No. 1997-3342
Application No. 08/389,086
8
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 and 2 under 35 U.S.C. § 102(a) and claims 3 through 9
under 35 U.S.C. § 103 is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. MCQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
vsh
Appeal No. 1997-3342
Application No. 08/389,086
9
David M. Weirich
Patent Dvision
The Procter & Gamble Company
Sharon Woods Technical Center
11450 Grooms Road
Cincinnati, OH 45242