Ex Parte Franke et al

Patent Trial and Appeal Board

Feb 14, 2017

10954656 (P.T.A.B. Feb. 14, 2017)

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.
10/954,656 09/30/2004 Mark Steven Franke 18073.2 (27839-2288) 4183
45736 7590 02/16/2017
Christopher M. Goff (27839)
ARMSTRONG TEASDALE LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
EXAMINER
MUROMOTO JR, ROBERT H
ART UNIT PAPER NUMBER
3765
NOTIFICATION DATE DELIVERY MODE
02/16/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
uspatents @ armstrongteasdale.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK STEVEN FRANKE, KATHLEEN IRENE RATLIFF,
HEATHER SCHENCK MORTELL, ROBERT LEE POPP, and
JOSEPH DANIEL COENEN
Appeal 2015-0011251
Application 10/954,6562
Technology Center 3700
Before JOHN C. KERINS, STEFAN STAICOVICI, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
1 This is Appellants’ second appeal before the Patent Trial and Appeal
Board. In the decision in the first appeal (2009-012057, hereafter
“Decision,” mailed June 17, 2011), the rejection under 35 U.S.C. § 103(a) of
claims 1, 2, 4—9, 11—13, 28, 29, and 37 was reversed and the rejection under
35 U.S.C. § 103(a) of claim 39 was affirmed. Decision 2, 3, and 7. Pursuant
to our authority under 37 C.F.R. § 41.50(b), we entered a new ground of
rejection of claim 1 under 35 U.S.C. § 103(a) as being unpatentable over
Rosch (US 6,115,847, iss. Sept. 12, 2000) and Rand (US 1,577,409, iss.
Mar. 16, 1926). Id. at 7.
2 According to Appellants, the real party in interest is Kimberly-Clark
Worldwide, Inc. Appeal Br. 1 (filed June 3, 2014).
Appeal 2015-001125
Application 10/954,656
STATEMENT OF THE CASE
Mark Steven Franke et al. (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision rejecting under 35 U.S.C. § 103(a)
claims 1, 4—9, 12, 13, 28, 29, 37, and 39 as being unpatentable over Rosch
and Rand.3 We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We REVERSE.
INVENTION
Appellants’ invention relates to “boxer shorts having side seams and a
contracted crotch region.” Spec., para. 2.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A pant made from a web, the pant comprising:
a boxer shorts garment shell, the garment shell including
a front region, a back region, a contracted crotch region, a front
waist edge, a back waist edge, non-refastenable side seams
connecting the front region to the back region, two leg openings
and hanging legs, at least a portion of each of the front region,
the back region, the contracted crotch region, and the hanging
legs comprising portions of the web; and
an absorbent structure attached to the garment shell,
wherein the absorbent structure is configured to fit close to the
body of the wearer, and the garment shell is configured to hang
loosely relative to the absorbent structure in the contracted
crotch region, the contracted crotch region being spaced from
the absorbent structure when worn by a user,
3 Claims 2, 3, 11, 14—26, 30—36, and 38 are canceled and claims 10 and
27 are withdrawn. Appeal Br. 3.
2
Appeal 2015-001125
Application 10/954,656
wherein the leg openings are formed from cuts along two
transversely opposed edges of the web, and the hanging legs
include no elasticization and no gathering around a full
periphery of the leg openings, wherein the cuts along the
transversely opposed edges of the web consist of slits.
ANALYSIS
The Examiner first finds that Rosch discloses, in the embodiment
presented in Figures 4 and 5, a “contracted crotch region,” as called for by
claim 1. See Final Act. 2-4 (transmitted Feb. 11, 2014). According to the
Examiner, “Rosch’s crotch section 149, is [a] mechanically non-elastically
formed contracted crotch region, in that the angle and size [o]f the area is
‘contracted!”] to provide a crotch depth for good fit.” Id. at 4.
Secondly, the Examiner sets forth “[a]n alternative interpretation . . .
[in which] area 149 [of Rosch’s trunk cover 114] is not a contracted crotch
area.” Id. Hence, the Examiner finds that Rosch discloses in the
embodiment presented in Figures 4 and 5 most of the limitations of claim 1,
but fails to disclose a “contracted crotch region.” Final Act. 2-4.
Nonetheless, the Examiner finds that Rand discloses “a contracted crotch
region 14, 15 that automatically provides means for gathering up the fullness
of the garment in the crotch, while allowing for expansion and contraction as
the garment is placed onto a user.” Id. at 4—5 (citing Rand, p. 2,11. 8—24).
The Examiner concludes that it would have been obvious for a person of
ordinary skill in the art to modify Rosch’s crotch section 149 with Rand’s
contracted crotch section 14, 15 in order “to provide a way to gather up the
fullness of the garment in the crotch section and make the garment more
form fitting.” Id. at 5.
3
Appeal 2015-001125
Application 10/954,656
With respect to the Examiner’s first position, Appellants argue that
“Rosch does not disclose, either expressly or inherently, a contracted crotch
as recited in claim 1.” Reply Br. 1—2.
Claims are construed with an eye toward giving effect to all terms in
the claim. Bicon Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006).
Here, the Examiner’s interpretation of the phrase “contracted crotch region”
as covering a region of the claimed boxer shorts where “the angle and size
[o]f the area is ‘contracted,[’]” in effect renders meaningless, or superfluous,
the term “contracted.” See Final Act. 4. The “crotch region” of boxer shorts
constitutes a region where the angle and the size of the region is already
reduced (contracted), and thus, the Examiner’s interpretation renders the
term “contracted” superfluous as it does not further modify the phrase
“crotch region.” See e.g., Rosch, Fig. 4. Moreover, Appellants’
Specification describes contracted crotch region 26 as formed “elastically or
inelastically” by using a strip 106 that is either an “elastic capable of delayed
retraction” or “a heat-shrinkable material,” respectively. See Spec., paras.
72, 110. In other words, Appellants’ Specification describes strip 106 as
providing crotch region 26 with its “contracted” feature. In contrast, Rosch
does not disclose using any extraneous material to form crotch region 149,
but merely illustrates a region of boxer shorts 114 where the angle and the
size of the region is reduced. Hence, we agree with Appellants that Rosch’s
trunk cover 114 does not “include[] a contracted crotch region as recited in
claim 1.” Appeal Br. 6—7.
Appellants further argue that the combined teachings of Rosch and
Rand fail to disclose “a pant having a garment shell that is configured to
hang loosely relative to an absorbent structure in a contracted crotch region
4
Appeal 2015-001125
Application 10/954,656
of the garment shell and the contracted crotch region being spaced from the
absorbent structure when worn by a user.” Appeal Br. 6. According to
Appellants, Rand’s purpose is “to obviate the hanging down of the seat or
‘baggy’ effect between the child’s legs” and considers “bagging between the
legs as being a ‘fault’ or ‘a serious defect’.” Id. at 7—8 (citing Rand, p. 1,11.
29-31 and 24-44). Therefore, Appellants assert that a person of ordinary
skill in the art “would have been discouraged from using Rand in
combination with Rosch ... to arrive at a pant having a garment shell that
hangs loosely in the crotch region as recited in claim 1.” Id. at 8. In other
words, Appellants contend that “Rand teaches away from claim 1.” Id. at 7.
As to the Examiner’s second position, we do not agree that upon
modifying Rosch’s crotch section 149 to include Rand’s elastic and
contracted crotch region 14, 15, absorbent structure 160 is spaced from
crotch region 149 such that trunk 114 “hang[s] loosely relative to the
absorbent structure” 160. See Ans. 2; see also Final Act. 4—5.
Rand discloses that:
[SJhirring 14, either with or without the aid of the elastic strip
15, serves to advantageously gather or draw up the sheet rubber
material between the legs of the child so that a snug fit is
automatically produced in the seat to cover the underlying
diaper, without any bagging which produces discomfort in the
child as well as an undesirable fullness in the pants.
Rand, p. 2,11. 9—17 (emphasis added). Hence, because Rand’s
shirring/elastic strip 14, 15 draws up the material such that a “snug fit” is
produced in the “seat to cover the underlying diaper,” when modifying
Rosch’s crotch section 149 to include Rand’s elastic and contracted crotch
region 14, 15, a snug fit will likewise be produced in the seat to cover
5
Appeal 2015-001125
Application 10/954,656
Rosch’s underlying absorbent structure 160. We thus agree with Appellants
that because Rand discloses that elastic strip 15 “eliminat[es] all looseness or
bagging of the garment” the “gathered and form-fitting crotch section” of
Rosch’s trunk 114, as modified by Rand, “would not be spaced from the
absorbent structure [160] when worn by a user as recited by claim 1
Appeal Br. 8; Reply Br. 3 (citing Rand, p. 1,1. 86, p.2,11. 13—15 and 42-44).
Finally, we appreciate the Examiner’s point that a space is provided
between Rosch’s crotch region 149 and absorbent structure 160. See Ans. 4;
see also Rosch, Fig. 5. However, because Rand discloses producing a “snug
fit” in the “seat. . . without any bagging,” the Examiner’s determination that
contracted crotch region 149 of Rosch’s trunk 114, as modified by Rand,
likewise exhibits looseness relative to absorbent structure 160, requires
speculation on the Examiner’s part. See Ans. 4. Therefore, the Examiner’s
legal conclusion of obviousness is not supported by sufficient factual
evidence, and thus, cannot stand. See In re Warner, 379F.2d 1011, 1017
(CCPA 1967).
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 103(a) of claims 1, 4—9, 12, 13, 28, 29, 37, and
39.
SUMMARY
The Examiner’s decision to reject claims 1, 4—9, 12, 13, 28, 29, 37,
and 39 is reversed.
REVERSED
6